Ex Parte Vermeer et al

Patent Trial and Appeal Board

Aug 19, 2016

13086565 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/086,565 04/14/2011 Ronald VERMEER
26111 7590 08/22/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2400.4290001/JMC/L-Z 4430
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
MAILDATE DELIVERY MODE
08/22/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD VERMEER, PETER BAUR, OLIVER GAERTZEN,
CHRISTIAN NAGEL, and MATTHIAS HAAS 1
Appeal2014-008206
Application 13/086,565
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to oil-based
suspension concentrates used in the application of agrochemicals. The
Examiner rejected all claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Bayer Intellectual Property
GmbH. (App. Br. 3.)
Appeal2014-008206
Application 13/086,565
STATEMENT OF THE CASE
Background
The Specification explains that "there continues to be a demand for
formulations, in particular suspension concentrates, which can be used for
dormancy spraying and which avoid ... disadvantages of the prior art."
(Spec. 2). The Specification discloses oil-based "suspension concentrates of
agrochemical active substances which are suitable as dormancy sprays and
with which the deposition rate of the formulation on the plants is preferably
improved in comparison with the prior art." (Id.) These formulations
contain "(a) at least one agrochemical active substance which is solid at
room temperature; (b) at least one oil, selected from the group consisting of
mineral oils and/or liquid paraffins," "( c) at least one emulsifier" and"( d) at
least one triglyceride." (Id. at 2-3).
The Claims
Claims 1, 4---6, 8-10, and 19-21 are on appeal. Claim 1, the sole
independent claim, is illustrative and reads as follows:
1. A suspension concentrate, comprising:
(a) at least one agrochemical active substance which is solid at
room temperature, selected from the group consisting of a
neonicotinoid, a pyrethroid, and a ketoenol;
(b) at least one oil selected from the group consisting of a
mineral oil, a liquid paraffin, and a combination thereof;
( c) at least one emulsifier; and
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Application 13/086,565
( d) at least one triglyceride comprising a saturated fatty acid
having a chain length of between 6 and 12 carbon atoms.
The Issue
The Examiner rejected claims 1, 4---6, 8-10, and 19-21under35
U.S.C. § 103(a) as being unpatentable over Taranta2 in view of Jones. 3
The issue with respect to these rejections is whether a preponderance
of the evidence of record supports the Examiner's conclusion that Taranta
and Jones suggest the method required by claim 1.
OBVIOUSNESS
The Examiner finds that Taranta teaches suspensions of pesticides in
combination with a surfactant (emulsifier) and an oil. (Taranta, pp. 1-2, 8-
9; Ans. 3). The Examiner notes Taranta indicates a variety of oils may be
used, including mineral oils, paraffin oils and triglycerides, in particular fatty
acids of 8-22 carbon atoms in length. (Taranta, pp. 6-7; Ans. 3). The
Examiner finds Taranta "specifically indicates that neonicotinoids ... may
suitably serve as the pesticide to be included in the suspension compositions
described ... " (Taranta, pp. 11, 18; Ans. 3).
The Examiner acknowledges that Taranta does not teach a specific
embodiment that discloses together all of the components of the claimed
composition and that while Taranta suggests "combining mineral or paraffin
2 WO 2008/061899 A2, published May 29, 2008.
3 US 2008/0069785 Al, published Mar. 20, 2008.
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Application 13/086,565
oil, neonicotinoid, surfactant, and triglyceride components to provide a
pesticidal suspension,"
Taranta does not specify that a suitable triglyceride for
inclusion in such pesticidal compositions is either glycerol
trioctanoate (a triglyceride consisting of esters arising from
eight carbon fatty acids; also known as octanoic acid or caprylic
acid), glycerol tridecanoate (a triglyceride consisting of esters
arising from ten carbon fatty acids; also known as decanoic acid
or capric acid), or combinations thereof.
(Ans. 4--5).
To supplement Taranta's disclosures, the Examiner cites Jones as
teaching that caprylic/capric acid triglyceride (commonly known as octanoic
and decanoic acid triglycerides) is "known to be useful as an oil in pesticidal
formulations for agricultural products ... [and] acknowledged as suitably
providing additional pesticidal activity to compositions into which it has
been incorporated. [0059---60; 0085]." (Id. at 5).
(Id.).
Given the references' teachings, the Examiner concludes:
It would have been prima facie obvious to have used
caprylic/capric acid triglyceride, also known as
octanoic/decanoic acid triglycerides or glycerol trioctonate or
glycerol tridecanoate, as the triglyceride of the Taranta
compositions in the amounts suggested by the Taranta
disclosure, in combination with either paraffin or mineral oil,
and surfactants.
The Examiner finds that an ordinarily skilled artisan would have been
so motivated "because caprylic/capric acid triglyceride is recognized by
Jones as a particular species of the generic triglyceride suitable for use in
pesticides as taught by Taranta." (Id.). Accordingly, the Examiner finds the
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Application 13/086,565
skilled artisan would recognize that including caprylic/capric acid would
"improve[ e] the pesticidal effect of additional agents with which it may be
combined." (Id.) The Examiner cites "an expectation of some benefit" in
the pesticidal effect of the resulting composition from the proposed
modification as the rationale for combining the references. (Id. at 5---6).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a prima
facie case ofunpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We select claim 1 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv). Appellants' arguments do
not persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 1. To the contrary,
we adopt as our own the Examiner's findings, reasoning, and conclusion that
claim 1 would have been prima facie obvious over the combination of cited
references. We address Appellants' arguments below.
Appellants argue that the Examiner has not established a prima facie
case of obviousness because "Taranta does not direct a person of ordinary
skill in the art to a triglyceride comprising a saturated fatty acid having a
chain length of between 6 and 12 carbon atoms." (App. Br. 6-7). Instead,
Appellants argue, "the Cs to C22 fatty acids disclosed in Taranta are not
triglycerides, but fatty acids." (Id. at 6). Appellants cite to Taranta's "single
formulation example, which uses com oil" and not triglycerides as a further
reason Taranta would not lead a person of ordinary skill to the claimed
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compositions. (Id. at 7). Appellants argue Jones does not remedy the
deficiencies in Taranta because "none of the examples of Jones disclose the
use of caprylic/capric acid triglyceride." (Id.)
The Examiner responds that the disclosures of Taranta and Jones are
not limited to their explicit examples, but should be considered for what they
"would reasonably suggest to the skilled artisan, including alternative or
non-preferred embodiments." (Ans. 6, citing MPEP § 2123). The Examiner
cites to the Supreme Court's decision in KSR International Co. v. Teleflex,
Inc., 550 U.S. 398 (2007) for the proposition that to establish a primafacie
case of obviousness, the Examiner must provide reasoning, supported by
rational underpinnings, as to why a skilled artisan would arrange art-known
elements in the manner claimed. (Ans. 6). The Examiner notes that the
proper question is whether sufficient reasoning has been articulated "to
support the assertion that a skilled artisan would choose to use a triglyceride
containing a fatty acid having a chain length of either 8 or 10 carbon atoms."
(Id. at 8).
Appellants' arguments do not persuade us that an ordinary artisan
lacked a reason to include the caprylic/capric acid triglyceride taught by
Jones in the composition taught by Taranta. As the Supreme Court
explained in KSR:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that is was obvious under § 103.
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(KSR v. Teleflex, 550 U.S. at 421).
In the instant case, as to the art-recognized "demand for formulations
in particular suspension concentrates, which can be used for dormancy
spraying" acknowledged by Appellants in their Specification (p. 2), Taranta
discloses that
it is desirable for many applications in plant protection to
provide a formulation, which is capable of keeping more than
one active dispersed, [] or which is capable of keeping a couple
of actives in suspension and at least one oil emulsified in the
same medium.
(Taranta 1 :36-39).
Taranta thus explains that agricultural compositions of the kind
disclosed are desirable in plant protection. Taranta teaches all of the
elements of the claimed composition, including the use of triglycerides:
The oil ( d) can be selected from the group consisting of mineral
oils and synthetic oils and vegetable (plant) and animal oils, e.g.
mixtures of Cs to C22 fatty acids. Examples are mineral oil
fractions of medium to high boiling point ... paraffin oils ...
fats and oils of vegetable or animal origin, such as mono-, di-
and triglycerides. . . . Preferred oils are any kind of mineral oil
... but also beef tallow oil, sperm oil, hering [sic herring] oil,
castor oil, which are mixtures of natural occuring [sic
occurring] C8 to C22 fatty acids
(Taranta 6:31-7: 12) (emphasis added).
Taranta does not identify the specific triglyceride used in Appellants'
compositions.
As the Examiner finds, however, Jones expressly teaches
caprylic/capric acid triglyceride as "useful as an oil in pesticidal
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formulations for agricultural products" (Ans. 5) and suitable for combination
with existing compositions for additional pesticidal benefit. (Jones, i-fi-159-
60, 85).
Given the teachings of Taranta and Jones regarding the components of
agricultural compositions, we are not persuaded that an ordinary artisan
lacked a reason to include the caprylic/capric acid triglyceride taught by
Jones in the compositions taught by Taranta.
Appellants next argue their invention "possesses superior properties,
as demonstrated in the specification, which are sufficient to rebut any prima
facie case of obviousness." (App. Br. 8). Appellants cite to the
Specification's Examples I to III as demonstrating "enhanced activity when
compared to examples not containing at least one triglyceride comprising a
saturated fatty acid having a chain length of between 6 and 12 carbon
atoms."
We are not persuaded that these data reflect the superior properties
sufficient to overcome the strong case of obviousness stated by the
Examiner. To begin, Appellants have not explained why the comparisons
they advance are comparisons to the closest prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[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 particular,
Appellants do not explain adequately why compositions lacking triglyceride
(App. Br. 8; Reply Br. 7-8) would be the closest prior art, given Jones's
disclosure of a specific embodiment that comprises caprylic/capric
triglycerides encompassed by claim 1. (Jones i-fi-159, 82-94).
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Furthermore, Appellants' data comparing the deposition on apple
buds (Example I) reflect only a slight improvement of 10%, which was
identified in the Specification as "improved over the standard." (Spec. 24:7-
10). However, Appellants have not shown, or even argued, that this slight
change was unexpectedly superior to the prior art. See In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005) (a "32--43% increase in stress-rupture life,
however, does not represent a 'difference in kind' that is required to show
unexpected results.") (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir.
1996)); see also In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel not an adequate substitute for actual evidence).
Accordingly, we do not find Appellants' argument that the results of Table 1
are superior to be persuasive.
In addition to the issues discussed above, as to Appellants' data
disclosed in Example II regarding increased efficacy against mulberry scale
(Spec. 24: 11-25:5), Appellants have not pointed to evidence that the slightly
superior pesticidal results demonstrated are greater than would have
reasonably been expected based on the teachings of Taranta and Jones,
especially in light of Jones' teaching of the additive pesticidal effect of
triglycerides to existing compositions. (Jones, i-f 60 (disclosing that its fatty
components "can be blended with active( s) to provide a synergistic effect[]
and enhanced duration of the pest-combatting action, relative to the active(s)
alone"). "Expected beneficial results are evidence of obviousness of a
claimed invention. Just as unexpected beneficial results are evidence of
unobviousness." In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
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Accordingly, the results identified by Appellants as superior do not
overcome the strong case of obviousness based on the express teachings of
Taranta and Jones. See Newell Companies, Inc. v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988) (finding alleged unexpectedly superior results
were ultimately insufficient to overcome the conclusion of obviousness
based on findings of fact). Cf Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) (secondary consideration of unexpected results "does
not overcome the strong showing of obviousness in this case").
Conclusion of Law
For the reasons discussed, Appellants' arguments do not persuade us
that a preponderance of the evidence fails to support the Examiner's prima
facie case of obviousness as to claim 1. Claims 4---6, 8-10, and 19-21 have
not been argued separately and therefore fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the Examiner's obviousness rejection of claims 1, 4---6, 8-
10, and 19-21 over Taranta and Jones.
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).
AFFIRMED
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