Ex Parte Sims

Board of Patent Appeals and Interferences

Feb 1, 2011

10939747 (B.P.A.I. Feb. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVEN R. SIMS
__________

Appeal 2010-005674
Application 10/939,747
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-005674
Application 10/939,747

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STATEMENT OF THE CASE
The following claim is representative:
1. A synergistic insecticide composition comprising:

a) an ethoxylated surfactant of the formula:

wherein R is a linear alkyl group of from approximately 9 to 15 carbon atoms
and X has an average value from about 1 to 3; and

b) a nicotinoid insecticide.

Cited References

The Examiner relies on the following prior art references:

Gans et al. US 2003/0040504 A1 Feb. 27, 2003
Sembo et al. US 6,479,542 B2 Nov. 12, 2002

Grounds of Rejection
1. Claims 1-3, 8 and 33 are rejected under 35 U.S.C. §103(a) for obviousness
over Gans in view of Sembo.

FINDINGS OF FACT
1. “Gans is directed to ectoparasiticidal composition. The composition is
taught to require an insecticide capable of killing ectoparasites and a
detergent, preferably Laureth-4 (RN: 9002-92- 0) (see [0013], [0112], and
claim 39; see instant claims 1-3). Laureth-4 possesses the elected ethoxylated
surfactant structure (see STN search).” (Ans. 3.)
2. “Gans fails to include a nicotinoid insecticide in their ectoparasiticidal
composition.” (Ans. 3.)
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3. “Sembo is drawn to ectoparasite control composition. It is taught that
imidacloprid, a nicotinoid insecticide can be utilized in liquid compositions to
control ectoparasites (see column 1, lines 13-15; see instant claims 1 and 8).”
(Id.)
4. The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to combine the
teachings of Gans with Sembo with a reasonable expectation for success in
arriving at a composition comprising Laureth-4 and a nicotinoid, such as
imidacloprid, capable of controlling insect population. . . . [B]ecause Gans is
directed to formulating insecticide compositions but fails to explicitly mention
nicotinoids, it would have been obvious to substitute a functionally
equivalent insecticide such as imidacloprid into their composition as both
Gans and Sembo are directed to the same field of endeavor (i.e.
insect/ectoparasite controlling compositions). Thus, it would have been within
the purview to one of ordinary skill in the art to combine the references and
arrive at a composition comprising Laureth-4 and a nicotinoid insecticide. . . .
The resultant composition with synergistic properties would have been a
necessary result of their combination.” (Ans. 3-4.)

Discussion
ISSUE
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to combine the
teachings of Gans with Sembo with a reasonable expectation for success in
arriving at a composition comprising Laureth-4 and a nicotinoid, such as
imidacloprid, capable of controlling insect population.” (Ans. 3.)
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Appellant argues that the Examiner has failed to establish a prima facie
case of obviousness. (See App. Br. 3.) Appellant argues that the Office has
failed to give sufficient weight to Appellant’s evidence of synergy. (See App.
Br. 5.)
The issues are: Has the Examiner set forth a prima facie case of
obviousness and, if so, has Appellant provided sufficient evidence of
unexpected results from the combination of an ethoxylated surfactant and a
nicotinoid insecticide, as claimed?
PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or argument
shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993)
(citations omitted). In order to determine whether a prima facie case of
obviousness has been established, we consider the factors set forth in Graham
v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; (3)
the level of ordinary skill in the relevant art; and (4) objective evidence of
nonobviousness, if present.
“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
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“Synergism, in and of itself, is not conclusive of unobviousness in that
synergism might be expected.” In re Kollman, 595 F.2d 48, 55 fn. 6 (CCPA
1979). Expected beneficial results are not evidence of nonobviousness. See In
re Skoner, 517 F.2d 947, 950 (CCPA 1975). “[W]e attribute no magic status
to synergism per se since it may be expected or unexpected.” In re
Huellmantel, 324 F.2d 998, 1003 (CCPA 1963).
ANALYSIS
Appellant argues that the Examiner has failed to establish a prima facie
case of obviousness. (See App. Br. 3.) Appellant argues that the Office has
failed to give proper weight to Appellant’s evidence of synergy. (See App.
Br. 5.)
The Examiner relies on Gans for the disclosure of the synergistic
combination of an ectoparasiticidal composition and a Laureth-4 detergent.
(See Gans, page 2, paragraph 13.) “Gans fails to include a nicotinoid
insecticide in their ectoparasiticidal composition.”(Ans. 3.) “Sembo is drawn
to ectoparasite control composition. It is taught that imidacloprid, a nicotinoid
insecticide can be utilized in liquid compositions to control ectoparasites (see
column 1, lines 13-15; see instant claims 1 and 8).” (Id.) We agree that it
would have been prima facie obvious to substitute one ectoparasiticidal
compound for another. Appellant has not established with appropriate
evidence that one of ordinary skill in the art would not have expected
equivalency in ectoparisiticidal compositions, especially in view of Gans’
teaching in paragraphs [0052] and [0067]-[0069] that a variety of insecticides
can be used in its composition. The Examiner has established a prima facie
case of obviousness on the evidence before us.
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Nor are we persuaded by Appellant’s evidence of synergistic results.
Synergism is not necessarily unexpected. In re Huellmantel, 324 F.2d at
1003. Appellant has not provided a sufficient basis for concluding that the
degree of synergism shown for the claimed combination would have been
unexpected.
Appellant generically claims all nicotinoid insecticides. The
Specification’s Table 2 (page 8) shows synergy in the combination of
pyrethrum and Tomadol 23-1 surfactant with a synergistic ratio of 2.4. Table
2 of the Specification shows that a combination of imidacloprid nicotinoid
insecticide in combination with Tomadol 23-1 had a synergistic ratio of 3.3.
Thus the pyrethrum and nicotinoid would appear to have similar synergistic
ratios. Gans suggests the combination of pyrethrum (pyrethrin) and a
surfactant recited in the claims (see Gans [0013], [0067]. Appellant has not
shown that the combination of a nicotinoid insecticide and the recited
surfactant provides unexpected results compared to the prior art.
Table 2 also shows a pyrrole insecticide, chlorfenapyr, with Tomadol
23-1 has a synergy of 7.9, while clothianidin, a nicotinoid, has a synergistic
ratio of 6.7. Thus the pyrrole and nicotinoid would appear to have similar
synergistic ratios. Appellant has not shown that the levels of synergy for the
nicotinoids claimed would have been unexpected when combined with a
surfactant such as that disclosed by Gans and as claimed. “Synergism, in and
of itself, is not conclusive of unobviousness in that synergism might be
expected.” In re Kollman, 595 F.2d 48, 55 fn.6 (CCPA 1979). Expected
beneficial results are not evidence of nonobviousness. See In re Skoner, 517
F.2d 947, 950 (CCPA 1975). For the generic class of nicotinoids, Appellant
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has not established that such synergy would have been unexpected. The
obviousness rejection is affirmed.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection.

TIME PERIOD
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

alw

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