Ex Parte Ueda et al

Board of Patent Appeals and Interferences

May 1, 2009

11272830 (B.P.A.I. May. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/272,830 11/15/2005 Nobuhito Ueda Q90036 3481
23373 7590 05/01/2009
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
LEVY, NEIL S
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
05/01/2009 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NOBUHITO UEDA and TOSHIRO OHTSUBO
__________

Appeal 2009-1541
Application 11/272,830
Technology Center 1600
__________

Decided1: May 1, 2009
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a solid pesticidal
formulation. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery) or Notification
Date (electronic delivery).
Appeal 2009-1541
Application 11/272,830

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Statement of the Case
The Claims
Claims 1-5 are on appeal. Claims 1 and 3 are representative and read
as follows:
1. A solid pesticidal formulation enveloped in a water
soluble substance where the solid pesticidal formulation
comprises at least one water soluble hydroxyl compound
selected from the group consisting of alkanols, ethylene
glycol, propylene glycol, butylene glycol, alcoholamines,
lactic acid and hydroxyfatty acid esters and the solid
pesticidal formulation is a formulation selected from
wettable powders, water dispersible granules and water
soluble formulations.

3. The solid pesticidal formulation enveloped in a water
soluble substance according to claim 1, wherein the water
soluble hydroxyl compound is ethylene glycol.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Huang et al US 5,639,465 Jun. 17, 1997
Surgant US 4,544,693 Oct. 1, 1985

The issue
The Examiner rejected claims 1-5 under 35 U.S.C.
§ 103(a) as being obvious over Huang and Surgant (Ans. 3-4).
The Examiner finds that “Huang, (see claim 1) provides the instant
ethylene glycol impregnated granular pesticides, herbicides that can be
applied to rice paddies (claim 14), but are not enveloped in a water soluble
substance” (Ans. 3). The Examiner finds that Surgant “provides packaging
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of water-soluble envelops which do avoid dust and exposure hazard
(abstract),yet permit release of pesticide in water” (Ans. 4). The Examiner
finds that “[o]ne in the pesticide and herbicide delivery arts would have
found it obvious at the time of the instant invention, to place a hazardous
solid pesticidal agricultural chemical granular formulation, inclusive of
herbicide, in the envelopes of SURGANT in order to avoid exposure to the
applicators & handlers” (Ans. 4).
Appellants contend that “the Examiner does not provide any reason
why the solid formulation of Huang et al should be used for the Surgant
formulation” (App. Br. 9). Appellants contend that “[t]here are countless
documents for solid formulations. The Examiner has not explained why the
solid formulations described in Huang et al is selected and adopted for the
enveloped formulation. Thus, the Examiner’s rejection is based on
hindsight” (App. Br. 9).
Appellants contend that “[p]rior enveloped pesticidal formulations
were not sufficiently stable, and they may degenerate after preserving for a
long time. The problem is solved by the present invention” (App. Br. 10).
Appellants therefore contend that “the present invention provides
unexpected results” (App. Br. 11).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding it obvious to modify the pesticidal
formulation of Huang by placement of the formulation in a water soluble
packing film as taught by Surgant?
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Findings of Fact (FF)
1. Huang teaches “a granular pesticidal composition . . .
comprising a) from about 10 to about 20 % by weight of a thiocarbamate
herbicide pesticide; b) a component selected from one or more of ethylene
glycol, diethylene glycol, propylene glycol or dipropylene glycol; the
remainder comprising kaolin or montorillonite clay” (Huang, col. 3, l. 62 to
col. 4, l. 5).
2. Huang teaches that “[i]t would be desirable to produce a
product with higher attrition resistance and correspondingly less dust
formation resulting from normal handling including bagging, shipping and
loading” (Huang, col. 1, ll. 19-22).
3. Huang teaches that “[s]uch a product would have improved
qualities in terms of less worker exposure hazard to the pesticide due to the
formation of smaller amounts of dust” (Huang, col. 1, ll. 22-25).
4. Surgant teaches that “[m]any agricultural chemicals are
formulated as wettable powders or dusts” (Surgant, col. 1, ll. 5-6).
5. Surgant teaches that “[i]n using these materials, the users may
breath or be exposed to dust particles of the agricultural chemicals. Thus, it
is highly desirable to package such materials in such a way as to reduce or
eliminate user exposure to the agricultural chemical” (Surgant, col. 1, ll.
6-10).
6. Surgant teaches that “[o]ne way of accomplishing this desirable
aim is the use of a packaging material which would contain the wettable
powder or dust agricultural chemical formulation while at the same time
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being easily disposed of and made out of relatively inexpensive materials”
(Surgant, col. 1, ll. 10-15).
7. Surgant teaches that “[o]ne type of packaging which would fill
this need is a water-soluble film which could be made into a water-soluble
bag” (Surgant, col. 1, ll. 16-18).
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 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 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. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.
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“[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). Also
See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“The Board also
correctly reasoned that the showing of unexpected results is not
commensurate in scope with the degree of protection sought by the claimed
subject matter”).
Analysis
Claim 1
Huang teaches a solid pesticidal formulation which comprises at least
one water soluble hydroxyl compound including ethylene glycol or
propylene glycol (FF 1). Huang teaches that it is desirable to reduce dust
and worker exposure to the pesticidal formulation (FF 2-3). Surgant also
teaches that it is desirable to reduce dust and worker exposure to pesticidal
formulations (FF 4-5). Surgant teaches that one way to reduce dust and
exposure is by placing the pesticidal formulation in a water soluble film (FF
6-7).
Applying the KSR standard of obviousness to the findings of fact,
there are strong reasons to envelop the pesticidal formulation of Huang in
water soluble films as expressly taught by Surgant. Such a combination is
merely a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellants’ argument that “the Examiner
does not provide any reason why the solid formulation of Huang et al should
be used for the Surgant formulation” (App. Br. 9). In fact, the Examiner has
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provided several specific reasons to put the pesticide of Huang in the film of
Surgant, including reducing dust and minimizing worker exposure (FF 2-5).
Further, with regard to motivation, in KSR, the Supreme Court rejected the
rigid application of the teaching, suggestion, and motivation test by the
Federal Circuit, stating that:
The principles underlying [earlier] cases are instructive
when the question is whether a patent claiming the
combination of elements of prior art is obvious. When a
work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in
the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its
patentability.

KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). We find that the
ordinary artisan would have been predictably able to modify the Huang
pesticide by enveloping it in the water soluble film of Surgant in order to
reduce dust levels and minimize worker exposure (FF 1-7).
We are not convinced by Appellants argument that based upon the
comparisons shown in Tables 1, 3, and 4, “the present invention provides
unexpected results” (App. Br. 10-11). The data in Examples 2, 6, and 8 and
in Reference Examples 1, 3, and 4 shows a comparison of solid pesticidal
formulation with and “without the ethylene glycol, enveloped in the water
soluble film” (App. Br. 10). However, the prior art of Huang teaches the
pesticidal formulations with ethylene glycol (FF 1), so Appellants’ evidence
that a formulation without ethylene glycol would function differently fails to
compare the claims to Huang, who is the closest prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“when unexpected
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results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
Further, the claims are not commensurate in scope with the disclosure
of the Specification as discussed above, since the claims encompass
envelopment in any “water soluble substance” while the examples are
limited to pesticides “enveloped in . . . Solblon KC#30” (Spec. 15 ¶ 33). In
every example, Solblon KC#30 was used as the water soluble substance in
which the pesticide was enveloped, but the claims broadly encompass any
water soluble substance whatsoever. The Examples relied upon by
Appellants also only shows the use of a limited set of water soluble
compounds including ethylene glycol, derivatives, glycerin and isobutyl
alcohol, and do not demonstrate results for any other water soluble hydroxyl
compounds. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“The
Board also correctly reasoned that the showing of unexpected results is not
commensurate in scope with the degree of protection sought by the claimed
subject matter”).
Claim 3
Appellants argue that the Examples “show that in a combination of a
solid pesticidal formulation and a water soluble envelope, a composition of
the solid pesticidal formulation in which ethylene glycol is present leads to
improved and unexpected results” (App. Br. 11). We are not persuaded,
since as discussed above, the examples are neither compared to the closest
prior art of Huang, who teaches the use of ethylene glycol (see FF 1), nor are
the examples commensurate in scope with the claim, which encompasses
any water soluble substance and one water soluble hydroxyl compound.
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Application 11/272,830

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Conclusion of Law
The Examiner did not err in finding it obvious to modify the pesticidal
formulation of Huang by placement the formulation in a water soluble
packing film as taught by Surgant.
SUMMARY
In summary, we affirm the rejection of claims 1 and 3 under 35
U.S.C. § 103(a) over Huang and Surgant. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 4, and 5,
as these claims were not argued separately.
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
LP

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