Ex Parte Tanedani

Board of Patent Appeals and Interferences

Jun 15, 2010

10964897 (B.P.A.I. Jun. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TOSHIYUKI TANEDANI
__________

Appeal 2010-003364
Application 10/964,897
Technology Center 1600
__________

Decided: June 15, 2010
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 3-5, 7, and 8. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2010-003364
Application 10/964,897

STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A herbicidal composition which comprises a protoporphyrinogen
oxidase inhibiting herbicidal active ingredient, a water-soluble herbicidal
active ingredient, a water-soluble anionic surfactant, a
polyoxyalkylenehydrocarbylamine, a water-immiscible organic solvent in
which the protoporphyrinogen oxidase inhibiting herbicidal active ingredient
cannot be substantially dissolved, a thickener and water, wherein the water-
soluble herbicidal active ingredient is N-phosphonomethylglycine or its salt,
the water-soluble anionic surfactant is a salt of ligninsulfonic acid, and the
protoporphyrinogen oxidase inhibiting herbicidal active ingredient is
suspended in the water dissolving the water-soluble herbicidal active
ingredient as solid fine particles.

Claims 1, 3-5, and 7 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sato,1 Agbaje,2 and Geary.3 (Ans.
4.) As Appellant does not argue the claims separately, we focus our analysis
on claim 1, and claims 3-5 and 7 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by the combination of Sato, Agbaje, and Geary, as further combined
with Aven.4 (Ans. 8.)
We affirm.

1 Sato, WO 01/22814 A1, published Apr, 5, 2001.
2 Agbaje, US 6,165,939, issued Dec. 26, 2000.
3 Geary, US 2,858,250, issued Oct. 28, 1958.
4 Aven, US 6,165,940, issued Dec. 26, 2000.
2
Appeal 2010-003364
Application 10/964,897

ISSUE
Has the Examiner established by the preponderance of the evidence
that claim 1 is rendered obvious by the combination of Sato, Agbaje, and
Geary?
If yes, has Appellant presented evidence of unexpected results, that
when weighed with the evidence of obviousness, are sufficient to
demonstrate the unobviousness of the claimed invention?

FINDINGS OF FACT
FF1 The Specification teaches:
The present invention provides a herbicidal composition
comprising a protoporphyrinogen oxidase inhibiting herbicidal
active ingredient and a water-soluble herbicidal active
ingredient that is a stable aqueous flowable formulation.
Namely, in the herbicidal composition of the present invention,
the protoporphyrinogen oxidase inhibiting herbicidal active
ingredient is suspended in water containing a water-soluble
herbicidal active ingredient, and the herbicidal composition is
excellent in the suspension stability.

(Spec. 1-2.)
FF2 We adopt the Examiner’s findings of fact as to the rejection of claims
1 and 3-7 and the rejection of claim 8 as our own. (See Ans. 4-13.) We also
specifically note the following findings of fact.
FF3 Geary is drawn to a pesticidal composition that may be used either as
a dust or a spray. (Geary, col. 1, ll. 62-63.)
FF4 Geary teaches further that the “use of readily water dispersible lignin
sulfonic acids in pesticidal compositions has of course been known for a
long time.” (Id. at col. 2, ll. 28-30.)
3
Appeal 2010-003364
Application 10/964,897

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.
The burden of demonstrating unexpected results rests on the party
asserting them, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art; that difference must be shown to
be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). It is well settled that results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “[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). Moreover, a
showing of unexpected results must be commensurate in scope with the
breadth of the claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
4
Appeal 2010-003364
Application 10/964,897

ANALYSIS
According to Appellant, the Examiner has engaged in improper
hindsight, as the “Examiner is combining different-natured inventions.”
(App. Br. 10.) Appellant argues that both Sato and Agbaje are directed
towards liquid formulations having an aqueous phase, whereas Geary is
directed to a solid formulation, which Geary teaches may then be diluted
with water before use. (Id. at 9.) In addition, Appellant asserts, Sato and
Agbaje are drawn to formulations that have both water-insoluble and water-
soluble ingredients, whereas the active ingredients in Geary are generally
water-insoluble. (Id.) Thus, according to Appellant, Sato and Agbaje
contain water insoluble as well as water soluble active ingredients, such as
glyfosate, whereas Geary excludes glyfosate as an active ingredient. (Id.)
Appellant argues further that “the spray composition of Geary corresponds
to the diluted liquid of the compositon of Claim 1 with water, and does not
correspond to the claimed composition of Claim 1 itself.” (Reply Br. 4-5.)
Moreover, Appellant argues that Geary does not contain a water-immiscible
organic solvent. (App. Br. 9.) Thus, Appellant asserts, “Geary relates to a
very different type of formulation from Sato [ ] and Agbaje [ ], and one
skilled in the art would not have been motivated to combine the teaching of
Geary with the teachings of Sato [ ] and Agbaje [ ].” (Id.)
Appellant’s arguments have been considered, but are not convincing.
Geary teaches that lignin sulfonic acid is readily water dispersible, and that
its use in pesticidal compositions has been known for a long time. (Note that
Geary was issued in 1958.) Thus, it was known in 1958 that lignin sulfonic
acid could be used in a variety of different pesticidal compositions. In
5
Appeal 2010-003364
Application 10/964,897

addition, Geary teaches that the compositions may be used as a dust or a
spray. Thus, we agree with the Examiner that it would have been obvious to
the ordinary artisan to use a salt lignin sulfonic acid as taught by Geary in
the composition taught by Sato and Agbaje as set forth by the Examiner.
(See, e.g., Ans. 8; see also id. at 13-15.)
To the extent that Appellant is arguing that the composition of claim 1
is drawn to a liquid concentrate, wherein the composition of Geary is only a
liquid immediately before application, there is nothing in claim 1 that limits
it to a concentrate. Moreover, the rejection as set forth by the Examiner is
combining a salt lignin sulfonic acid as taught by Geary to the composition
taught by Sato and Agbaje. As noted above, because Geary teaches that the
use of lignin sulfonic acid and its salts was well known and that lignin
sulfonic acid and its salts are known to be readily water dispersible, the
ordinary artisan would have had a reasonable expectation of success of
adding a salt of lignin sulfonic acid to the composition taught by Sato and
Agbaje to arrive at the composition of claim 1.
Appellant argues further that “[n]one of the references teach or
suggest the unexpectedly superior results provided by the present invention.”
(App. Br. 10.) Specifically, Appellant asserts that “in the herbicidal
composition of the present invention, the protoporphyrinogen oxidase
inhibiting herbicidal active ingredient is suspended in water containing a
water-soluble herbicidal active ingredient, and the herbicidal composition is
excellent in the suspension stability.” (Id. at 9-10 (citing paragraph bridging
pages 1-2 and the Examples in the Specification).)
6
Appeal 2010-003364
Application 10/964,897

While Appellant argues that the claimed compositions have
unexpected suspension stability, they present no evidence comparing the
claims composition to the compositions of the closest prior art
demonstrating the purported unexpected results. Specifically, Examples 1,
2, and 3 in the Specification are production examples, and the Specification
states that:
Each l00ml of the herbicidal compositions of the present
invention obtained by Production examples 1-3 was charged
into a glass screw tube and allowed to stand at 40°C for one
month. After that, all of the herbicidal compositions of the
present invention were observed to be homogeneous and not
separated.

(Spec. 12.) But, as noted by the Examiner (Ans. 15), there is no comparison
of the above findings to the compositions of the closest prior art.
As to the rejection of claim 8, Appellant argues that Aven does not
make up the deficiencies of Sato, Agbaje, and Geary. We thus affirm for the
reasons set forth above with respect to claim 1.

CONCLUSION OF LAW
We conclude that the Examiner has established by the preponderance
of the evidence that claim 1 is rendered obvious by the combination of Sato,
Agbaje, and Geary. We conclude further that Appellant has not presented
evidence of unexpected results, that when weighed with the evidence of
obviousness, are sufficient to demonstrate the unobviousness of the claimed
invention.
We thus affirm the rejection of claims 1, 3-5, and 7 under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Sato, Agbaje, and
7
Appeal 2010-003364
Application 10/964,897

Geary. We also affirm the rejection of claim 8 stands under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Sato, Agbaje, and
Geary, as further combined with Aven.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

cdc

SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON DC 20037

8