Ex Parte Xing et al

Patent Trial and Appeal Board

Sep 4, 2018

12063577 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/063,577 07/15/2010 Baozhong Xing
25764 7590 09/06/2018
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
419661. 000668 8785
EXAMINER
SMITH, JENNIFER A
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAOZHONG XING,
LESLIE L. CARSTENS, and NICK P. WYNNYK
Appeal2017-009920
Application 12/063,577
Technology Center 1700
Before GEORGE C. BEST, JULIA HEANEY, and SHELDON M. McGEE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 5-10, 13, 14, 17, 23, 25, and
47 of Application 12/063,577 under 35 U.S.C. § 103(a) as obvious. Final
Act. 2-3 (September 22, 2016). Appellants seek reversal of this rejection
pursuant to 35 U.S.C. § 134(a). 1 We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Agrium, Inc. is identified as the real party in interest. Appeal Br. 3.
Appeal2017-009920
Application 12/063,577
BACKGROUND
The '577 Application describes controlled release fertilizers (CRFs)
having improved mechanical handling durability and processes for preparing
such fertilizers. Spec. 1.
Claim 1 is representative of the '577 Application's claims and is
reproduced below from the Claims Appendix.
1. A controlled release fertilizer material comprising
a particulate plant nutrient rounded by at least one coating
compnsmg
the reaction product of a mixture consisting essentially of
a polyol having an equivalent weight from 29 to
150,
an isocyanate,
a wax, and
an epoxidized fatty acid triglyceride oil,
and optionally, a castor oil.
Appeal Br. 10 ( emphasis, paragraphing, and indentation added).
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 5-10, 13, 14, 17, 23, 25, and 47 are rejected under 35
U.S.C. § I03(a) as unpatentable over the combination of Byers2 and
Motojima. 3 Final Act. 2-3.
2 US 2005/0197390 Al, published September 8, 2005.
3 JP 08-231301, published September 10, 1996. By mutual agreement, the
Examiner and Appellants cite US 5,827,540, issued October 27, 1998, as the
English-language equivalent. See Appeal Br. 14.
2
Appeal2017-009920
Application 12/063,577
DISCUSSION
Claims 1 and 4 7 are the only independent claims on appeal.
Appellants present a single set of arguments for reversal of the rejection of
all pending claims. We select claim 1 as representative of the appealed
claims. The remaining claims will stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner rejected the appealed claims as unpatentable over the
combination of Byers and Motojima. Final Act. 2---6. In so doing, the
Examiner found that Byers describes or suggests a CRF comprising a
particulate plant nutrient surrounded by a coating. Id. at 3. The Examiner
further found that Byers's coating comprises the reaction product of a
mixture of a thioester compound, a polyol, castor oil, an isocyanate, and
organic additives such as waxes and fatty acids. Id. (citing Byers ,r,r 38, 60,
431, and 433). The Examiner also found that Motojima is directed to an
agricultural granular material with a coating comprised of an epoxidized
vegetable oil, wax, and a pesticide. Id. (citing Motojima Abstract). The
Examiner explained that
[i]t would have been obvious to one of ordinary skill in the art,
at the time of Applicants' invention, to include an epoxy
compound such as epoxidized fatty acid vegetable oil as a
coating to the fertilizer material of the Byers reference in order
to avoid decomposition of the agrochemicals [Abstract] when
Motojima demonstrates the epoxy compound for suppression of
the decomposition of agrochemical components [Column 1,
lines 14-20] and increased stability [Column 1, lines 48-52].
Id. at 3--4 (bracketed material in original); see also Answer 3.
Appellants argue that the combination of Byers and Motojima is
improper. Appeal Br. 7. In particular, Appellants point out that Motojima
describes the use of the epoxidized fatty acid oil as a way to prevent
3
Appeal2017-009920
Application 12/063,577
decomposition of the pesticidally active ingredient and to maintain the
pesticide in a stabilized condition even during prolonged storage. Id. ( citing
Motojima col. 1, 11. 48-57). Thus, Appellants contend that because Byers
does not include a pesticidal ingredient, a person of ordinary skill in the art
would not have had a reason to include Motojima's epoxidized fatty acid oil
in Byers's coating composition. Id.
In response to this argument, the Examiner further explained:
It is believed that the teachings of Motojima would not
limit one of ordinary skill in the art to the use of the epoxidized
fatty acid oil to only compositions with pesticidal ingredients,
as argued by Appellants. Any or all of Byer 's [sic] controlled
release fertilizer ingredients would benefit from the use of an
epoxidized fatty acid oil to maintain a stabilized coating
condition especially when the fertilizer materials are intended to
be stored for a long period of time.
Answer 6 ( emphasis added).
We are persuaded by Appellants' argument that the Examiner has not
established a proper motivation to combine Byers and Motojima by a
preponderance of the evidence. The additional explanation provided by the
Examiner in the Examiner's Answer is based upon an incorrect reading of
Motojima. Motojima specifically teaches that the epoxidized fatty acid oil
serves to prevent degradation of the pesticide included in the coating
composition. E.g., Motojima col. 1, 11. 42-50; col. 4, 11. 48-56; Table I.
This degradation is caused by the strong acidic or strong basic properties of
the plant nutrient ingredient encapsulated by the coating. See id. col. 1, 11.
12-18. The Examiner does not point us to any evidence in the record, nor
have we been able to find any, that Motojima's use of an epoxidized fatty
acid oil stabilizes any part of the coating composition other than the
pesticide. Because Byers does not describe the inclusion of a pesticide in its
4
Appeal2017-009920
Application 12/063,577
coating composition, the Examiner erred by finding that a person of ordinary
skill in the art would have been motivated to combine Motojima with Byers
for the proffered reason.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1,
5-10, 13, 14, 17, 23, 25, and 47 of the '577 Application.
REVERSED
5