Ex Parte Tsuboi et al

Patent Trial and Appeal Board

Jun 13, 2013

11146800 (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINICHI TSUBOI, SHINZABURO SONE,
TORU OBINATA, OTTO EXNER,
and MICHAEL SCHWAMBORN
___________

Appeal 2011-006484
Application 11/146,800
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-006484
Application 11/146,800

2
This is an appeal1 under 35 U.S.C. § 134(a) from the Final Rejection
of claims 7, 8, 15, 16, and 20.2 An oral argument was held on April 23,
2013. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to the compound Imidacloprid, used as
an insecticide (Spec. 3-4) and as a treatment for soil against termite
infestation (Spec. 5).

Exemplary Claim
Claim 7 is the pending independent claim and is reproduced below
with disputed limitations in italics:
7. A method of protecting a technical material exposed to soil from
termites that

infest technical materials, said method comprising

applying to the soil, either before or after the technical material
contacts the soil, a composition comprising

an insecticide wherein the composition is applied in a termiticidally
effective amount sufficient to protect said technical material from said
termites that infest technical materials, said insecticide having the
formula (I)

1 Appellants represent that the Real Party-in-Interest is Bayer CropScience
AG. (App. Br. 3.)
2 Claims 1-6, 9-14, and 17-19 were cancelled.
App
App

1

2

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Appeal 2011-006484
Application 11/146,800

4
claim 7, and specifically Shiokawa fails to disclose the disputed limitation
“applying to the soil, either before or after the technical material contacts the
soil.”
The Examiner finds that because the termites are known to attack
and destroy wood and wood composites, the application of imidacloprid
to an insect habitat such as wood (claim 28 of Shiokawa) would
necessarily protect wood products against attack by insects especially
when imidacloprid is applied on wood (insect habitat). (Ans.
21.) However, claim 7 is directed to the application of imidacloprid to
soil surrounding wood, but not directly to wood. Shiokawa is insufficient
to anticipate claim 7, because Shiokawa discloses the application of
imidacloprid to an insect’s habitat and does not specifically disclose
application of imidacloprid to soil surrounding wood. Thus, we do not
agree with the Examiner that Shiokawa renders claim 7 unpatentable
under 35 U.S.C. § 102 (b).
Accordingly, we do not sustain the rejection of independent claim 7
under 35 U.S.C. § 102 (b). Claims 8, 15, and 20 depend on claim 7 and
therefore incorporate the same relevant limitation. Therefore, we do not
sustain the rejection of claims 8, 15, and 20 under 35 U.S.C. § 102 (b).

ISSUE 2
35 U.S.C. § 103(a) Rejection of Claims 7, 8, 15, 16, and 20
We are not persuaded by Appellants’ arguments (App. Br. 19-20) that
Shiokawa, in view of Elbert, does not render claim 7 unpatentable, because
the disputed limitation “applying to the soil, either before or after the
Appeal 2011-006484
Application 11/146,800

5
technical material contacts the soil” would have been obvious in light of the
combined references.
Appellants first contend that Shiokawa and Elbert do not render the
claims obvious because the combined references fail to teach “technical
materials” as recited in claim 7. (App. Br. 19.) Appellants contend that the
term “technical material” should be construed to only encompass items such
as “wood, paper, leather, or textile” and should not encompass items such as
grains or other “foodstuff.” (App. Br. 9, 19.) According to Appellants,
Shiokawa does not teach the use of imidacloprid on or around wood, paper,
leather, or textile, because Shiokawa is directed to protecting “stored
products,” such as foodstuff or stored grains. (App. Br. 9.)
However, the Examiner finds that Shiokawa teaches the use of
imidacloprid to protect “technical material” such as wood, because
Shiokawa is not limited to stored products such as food stuff, and
specifically states “the active compounds are distinguished by an excellent
residual action on wood and clay as well as a good stability to alkali on
limed substances.” (Ans. 25, emphasis in original, citing to Shiokawa, col.
54, ll. 18-21.) We agree with the Examiner’s findings.
Appellants also contend that the combination of Shiokawa and Elbert
does not render the claims obvious because both references are directed to
application of imidacloprid to crops, and specifically “imidacloprid is
introduced into the plants themselves through foliage (e.g., via foliar
application) or roots (e.g., via application to soil), and insects are exposed to
imidacloprid when they ingest plant material.” (App. 19-20.) According to
Appellants, both Shiokawa’s and Elbert’s suggested application of
imidacloprid to soil adjacent to plants is solely for the purpose of systemic
Appeal 2011-006484
Application 11/146,800

6
uptake of the active compound by the adjacent plants in a field of crops.
(App. Br. 9, 20.) Appellants, therefore, conclude that Shiokawa, alone or in
combination with Elbert, does not teach or suggest applying imidacloprid to
soil adjacent to or underlying technical materials as a method of protecting
technical materials. (App. Br. 20.)
However, the Examiner finds that Shiokawa’s application of
imidacloprid to an insect habitat, such as to soil, would necessarily protect
wood products against attack by insects. (Ans. 25.) The Examiner further
finds that one skilled in the art would find ample motivation from the prior
art to use the claimed compound imidacloprid known for its insecticide
properties, to protect materials such as paper, leather, polymers or textiles
from the target insects of the present application with a reasonable
expectation that said compound would be effective so that these products
would be protected from insects. (Ans. 28.) We agree.
Accordingly, we affirm the rejection of independent claim 7 under
35 U.S.C. § 103 (a). Claim 8 was not argued separately, but is limited to one
of the compounds defined by claim 7, and therefore we affirm the rejection
of claim 8 under 35 U.S.C. § 103 (a).
Appellants contend that neither Shiokawa, nor Elbert teach the
protection of technical materials as recited in claims 15 and 16. (App. Br.
21-22.) Claim 15 depends from claim 7, but recites the additional limitation
that the technical material is “wood, a composite wood material, paper,
leather, a leather product, a synthetic polymer, a natural polymer, a textile,
or a combination thereof.” Claim 16, also depending from claim 7, recites
that the technical material is “wood or a composite wood material.”
Appeal 2011-006484
Application 11/146,800

7
As discussed above, the Examiner finds that Shiokawa teaches the use
of imidacloprid to protect “technical material” such as wood, because
Shiokawa is not limited to stored products such as food stuff, and
specifically states “the active compounds are distinguished by an excellent
residual action on wood and clay as well as a good stability to alkali on
limed substrates.” (Ans. 25, emphasis in original, citing to Shiokawa, col.
54, ll. 18-21.) The Examiner further finds that “one skilled in the art would
find ample motivation from the prior art to use the claimed compound
imidacloprid known for its insecticide properties, to protect materials such as
paper, leather, polymers, or textiles from the target insects.” (Ans. 27.) We
agree with the Examiner’s findings. Therefore, we affirm the rejection of
claims 15 and 16 under 35 U.S.C. § 103 (a).
Appellants finally contend that neither Shiokawa, nor Elbert teach the
use of imidacloprid against the pests specified in claim 20. (App. Br. 22-
23.) Claim 20 depends from claim 7, but recites that the termites are
selected from the group consisting of Coptotermes spp. and Reticulotermes
spp. The Examiner finds that Shiokawa teaches the use of imidacloprid as
an insecticide against Isopterous insects, such as Coptotermes formosanus.
(Ans. 13.) Coptotermes formosanus falls within the scope of claim 20,
thereby rendering the claim obvious. We agree with the Examiner.
Therefore, we affirm the rejection of claim 20 under 35 U.S.C. § 103 (a).

ISSUE 3
Double Patenting Rejection of Claims 7, 8, 15, 16, and 20
As we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed (see 37 C.F.R.
Appeal 2011-006484
Application 11/146,800

8
§ 41.50(a)(1)), and we decline to address the Examiner’s double patenting
rejection.
DECISION
The Examiner’s decision to reject claims 7, 8, 15, 16, and 20 under 35
U.S.C. § 103(a) is affirmed.
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).

AFFIRMED

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