Ex Parte Wilson et al

Patent Trial and Appeal Board

Jun 14, 2016

12767970 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121767,970 04/27/2010
117219 7590 06/16/2016
DAS/Maschoff Brennan
1389 Center Drive
Suite 300
Park City, UT 84098
FIRST NAMED INVENTOR
Stephen L. Wilson
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.
Dl833.10003US02 4705
EXAMINER
HAGHIGHATIAN, MINA
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@mabr.com
kclark@mabr.com
khuser@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN L. WILSON, LEI LIU, JAMES D. THOMAS,
RAYMONDE. BOUCHER, JR., JAMES E. DRIPPS,
MARGARET S. KEMPE, JOHN M. ATKINSON, and
DOUGLAS J. LINSCOTT
Appeal2014-004572
Application 12/767,970
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
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).
We Affirm.
Appeal2014-004572
Application 12/767,970
STATEMENT OF CASE
The following claims are representative.
1. A composition, comprising at least one macrocyclic lactone
insecticide and at least one metal oxide, wherein the composition exhibits
enhanced pesticidal activity levels compared to a composition dissimilar only
in not having the at least one metal oxide.
8. The composition of claim 7, which includes at least 2% by weight
based on total weight of the composition of the at least one macrocyclic
lactone insecticide, from about 5% to about 7 5% by weight based on total
weight of the composition of the at least one metal oxide and from about 2 %
to about 80% by weight based on total weight of the composition of the at
least one proteinaceous material.
10. The composition of claim 7, further comprising at least one
polymeric material including at least one member selected from the group
consisting of polyvinyl alcohol, polyvinyl pyrrolidone, a latex, a terpene
polymer, a polysaccharide, and polyvinyl acetate.
12. The composition of claim 1, further comprising at least one
polymeric material including at least one member selected from the group
consisting of polyvinyl alcohol, polyvinyl pyrrolidone, a latex, a terpene
polymer, a polysaccharide, and polyvinyl acetate.
14. A composition, comprising at least one macrocyclic lactone
insecticide and iron oxide, wherein the composition exhibits enhanced
pesticidal activity levels compared to a composition dissimilar only in not
having the iron oxide.
17. The composition of claim 14, which includes from about 5% by
weight based on total weight of the composition of the at least one
macrocyclic lactone insecticide and from about 5% to about 60% by weight
based on total weight of the composition of the at least one metal oxide.
18. A composition, comprising:
from about 5% to about 35% by weight based on total weight of the
composition of spinetoram;
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Application 12/767,970
from about 5% to about 60% by weight based on total weight of the
composition of ferric oxide; and
from about 2% to about 12% by weight based on total weight of the
composition of a polymeric material, wherein the polymeric material includes
polyvinyl pyrrolidone.
Cited References
Joshi US 2004/0161473 Al
Thompson et al. US 6,927 ,210 B 1
Wilson et al. US 2007/0104750 Al
Grounds of Rejection
Aug. 19, 2004
("Joshi")
Aug. 9, 2005
("Thompson")
May 10, 2007
("Wilson")
1. Claims 1-9 and 14--17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilson in view of Joshi.
2. Claims 10-13 and 18-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over \X/ilson in vie\'l/ of Joshi and Thompson.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3-16. The following facts are highlighted.
1. "Joshi discloses an embodiment, wherein the beneficial material
comprises metal oxides (i.e., oxides of Magnesium) as well as
noble metal oxides. Examples of the foregoing comprise AgO;
Mg02, CuO. In certain embodiments, the metals Ag, Au, Pt, Cu,
Al, Pd, Rh, Ir, Ru, Zn, Rb, Mg, Ca, Sn may be selectively
combined with organic insecticide materials, including but not
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Application 12/767,970
limited to Deet and Spinosad (see [0041])." Ans. 4--5, emphasis
original.
2. "Joshi further discloses that the beneficial material comprises a
photoactive compound associatable with the substrate, such as
Ti02, Fe203 and compounds of Fe203 and other oxides, silver and
copper oxides, ZN oxides, etc (see [0017] and [0018])." Ans. 4.
3. Joshi discloses that, "In other embodiments, substrate 12 may
comprise insecticide formulations (in a paste, putty, epoxy spray or
tar form) for topical application, i.e. a fluid or semi-solid of
varying viscosity (FIG. 2), wound healing devices, i.e. bandages
(FIG. 3), prosthetic devices, i.e. limbs, eyes, etc. (FIG. 4) and other
implantable devices." Joshi i139.
PRINCIPLES OF LAW
In making our determination, \'l.;e apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"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).
"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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Application 12/767,970
Rejection 1
We select claim 1 as representative of claims which are not separately
argued in the Brief, and we specifically address separately argued claims
herein. We agree with the Examiner's fact finding, statement of the
rejection, and responses to Appellants' arguments as set forth in the Final
Rejection and Answer. We find that the Examiner has provided evidence to
support a prima facie case of obviousness. We provide the following
additional comment to the Examiner's argument set forth in the Final
Rejection and Answer.
Claim 1 essentially requires two elements, a macrocyclic lactone
insecticide and a metal oxide. Claim 1 includes the open ended transitional
phrase "comprising" and thus the claimed composition is open to other
elements. Claim 1 does not specify that the composition is a liquid
composition, and therefore the composition may be attached to a substrate,
in a liquid form, or other solid form.
Joshi discloses a composition comprising a metal oxide which may be
selectively combined with organic insecticide materials, including but not
limited to Deet and Spinosad. Joshi i-f 41; Ans. 4--5. Thus, Joshi alone
would appear to meet each of the limitations of claim 1, and Joshi provides a
specific suggestion to combine a metal oxide with an insecticide, such as
spinosad.
Appellants contend that, "Joshi does not disclose that spinosad is
included in a composition with at least one metal oxide. Indeed, Joshi
provides no indication that the listed metals which are selectively combined
with spinosad are also part of an oxide." App. Br. 7.
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Application 12/767,970
We are not persuaded. Joshi states that a metal oxide may be
selectively combined with an insecticidal material such as spinosad. Joshi
i-f 41; Ans. 4--5. Nothing more is required to meet the claim. Appellants
provide no evidence showing that one of ordinary skill in the art reading
Joshi i-f 41 would not have combined a metal oxide with spinosad.
Appellants further contend that, "[ n ]one of these characteristics is
suggestive that any of the beneficial materials 10 disclosed in Joshi will
serve as 'activity enhancing agents or additives' to the pesticidally active
ingredients disclosed in Wilson." App. Br. 10. Joshi provides a specific
suggestion to combine beneficial materials such as a metal oxide with an
insecticide such as spinosad. While Wilson is not required to support the
rejection, Wilson similarly discloses a spinosad, spinosyns and spinetoram
pesticides in combination with beneficial agents such as activity enhancing
agents. Wilson, pp. 2, 7. One of ordinary skill in the art would have
recognized from Joshi that a metal oxide could be combined \'l1ith the
spinosad of Wilson in the same manner it is combined with the spinosad of
Joshi.
Appellants present additional arguments regarding Wilson with
respect to claim 1. App. Br. 8-9. As there is no deficiency in Joshi with
respect to claim 1, these arguments with respect to Wilson are moot. We
affirm the rejection of claim 1.
Appellants argue that claims 2-9 are also patentable for the reasons
given for claim 1. App. Br. 13. Having found no deficiency with respect to
the rejection of claim 1, we also affirm the rejections of claims 2-9.
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Appellants further argue with respect to claim 8, that
Notably missing from any Office Action is a discussion or
analysis of how the prior art accounts for the features of claim
8; indeed, the language of claim 8 regarding the claimed weight
percentages does not appear in any Office Action. Moreover,
since none of the cited references discloses a composition that
includes the elements of claim 8, the weight percentages set
forth therein have also not been accounted for absent some
explanation by the Examiner.
App. Br. 13.
We are not persuaded. The Examiner argued in the Answer that
Appellant's next argument is that Office Action provides
no discussion of the weight percentages of components. The
argument is not persuasive because 1) Wilson et al clearly
discloses percentages of the pesticidal active agent, the activity
enhancing agent and other components of the formulation, 2)
Where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. In re Aller, 220 F.
2d 454, 105 USPQ 233 (CCPA 1955).
Ans. 14. Wilson discloses that
The amount of pesticidally active ingredient within
the composition of the present invention will vary depending
upon the actual pesticidally active ingredient, the application
of the pesticidally active ingredient, the relative amounts of
active ingredient and activity enhancer, and the appropriate
application levels which are well known to those skilled in
the art. In general, the pesticidally active ingredient is
present in the composition of the present invention in an
amount of from 0.1, generally from 1, preferably from 5,
more preferably from 10, even more preferably from 15 and
most preferably from 20 to 99, generally to 90, preferably to
85, more preferably to 80 and most preferably to 75 weight
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Application 12/767,970
percent based on the total weight of the composition of the
pesticidally active ingredient, the activity enhancer, and
solvent.
Wilson i-f 16. Appellants have not established with appropriate evidence that
it would have been beyond the skill of one of ordinary skill in the art to
discover the optimum workable ranges of spinosad and the beneficial agent,
metal oxide, in view of the amounts of combined pesticide and activity
enhancing beneficial agents of Wilson i-f 16 and Joshi. The rejection of
claim 8 is affirmed. For similar reasons, the rejection of claim 1 7 is also
affirmed.
With respect to claim 14, Appellants contend that "those skilled in the
art would not modify Wilson in the manner suggested to arrive at the subject
matter of independent claim 14." App. Br. 14. We are not persuaded.
Wilson is not required to meet the rejection of claim 14. Joshi suggests the
combination of a spinosad with a beneficial material such as a metal oxide.
Joshi further discloses that the beneficial material may be a photoactive
material such as Fe203. FF2. The rejection of claim 14 is affirmed.
Rejection 2
Claims 10-13 and 18-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilson in view of Joshi and Thompson.
We select claim 18 as representative of claims which are not
separately argued, and we specifically address separately argued claims
herein. We agree with the Examiner's fact finding, statement of the
rejection and responses to Appellants' arguments as set forth in the Answer.
We find that the Examiner has provided evidence to support a prima facie
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Application 12/767,970
case of obviousness. We provide the following additional comment to the
Examiner's argument set forth in the Final Rejection and Answer.
The Examiner finds that
The combined references lack specific disclosure on addition of
the polymeric material of claims 10, 12 and 18. This deficiency
is cured by Thompson et al.
Thompson et al teach a stable ectoparasiticidal aqueous
suspension formulation of a spinosyn (see Abstract). It is
disclosed that the spinosyns were known to have some
ectoparasiticidal activity, i.e., they had in vitro activity against
mosquito larvae, black blowfly larvae and adult stable flies. For
these studies, the spinosyns were administered in aqueous
polyvinyl pyrrolidone or in polyethylene glycol (U.S. Pat. No.
5,571,901, col. 26-32) (see col. 1, lines 28-36). It is also
disclosed that examples of mineral thickeners include mixed
metal hydroxides (see col. 5, lines 39-41 ).
Thompson et al also teach an aqueous suspension
formulation containing 100 g/L of spinosad and a polyvinyl
acetate is prepared. The polyvinyl acetate acts as a
sticker/binder component to increase the formulation's
adhesion to hair ....
Ans. 6-7.
Appellants argue that, "those skilled in the art would appreciate that
propylene glycol is not a polymeric material as the Examiner asserts," (App.
Br. 1 7) and that "the Examiner has not provided any discussion or rationale
supporting the conclusion that substituting or combining polymeric materials
would provide any added benefit." App. Br. 18.
We are not persuaded. The Examiner relies on Thompson for the
disclosure of the use and combination of spinosyns with polyvinyl
pyrrolidone or polyvinyl acetate. Ans. 6-7. Joshi discloses that spinosyns
may be combined with a substrate, including fluids. The aqueous substrates
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Application 12/767,970
of Thompson which include polyvinyl pyrollidone, are fluids. Appellants
have come forth with no evidence that one of ordinary skill in the art would
not have combined spinosyns, such as spinetoram, with polyvinyl
pyrrolidone in view of Thompson's disclosure as combined with Wilson and
Joshi. Nor have Appellants provided any evidence with respect to secondary
considerations of patentability.
The rejection of claim 18 is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed for the reasons of record and herein. All pending,
rejected claims fall.
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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