Ex Parte Zen

Board of Patent Appeals and Interferences

Jan 26, 2007

10663843 (B.P.A.I. Jan. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHIGEKAZU ZEN
__________

Appeal No. 2007-0180
Application No. 10/663,843
__________

ON BRIEF
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Before SCHEINER, GREEN, and LEBOVITZ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to a pesticidal emulsifiable concentrate. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 134. We affirm.
DISCUSSION
Claims 1 and 4-10, which are all the pending claims in the instant
application, are on appeal and stand rejected under 35 U.S.C. § 103. Br. 4. The
patentability of the claims has been argued as a group. We select claim 1 as
representative of the claims for the purpose of deciding this appeal. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal No. 2007-0180 Page 2
Application No. 10/663,843

Claim 1 reads as follows:
1. A pesticidal emulsifiable concentrate comprising (a) 1 to 60% by
weight of a pyrethroid compound, (b) 2 to 15% by weight of at least
one surfactant and (c) 15 to 90% by weight of at least one aromatic
ester solvent represented by the formula:
Ar-X-COOR [1]
wherein R represents non-aromatic group having 1 to 6 carbon atoms;
Ar represents an aromatic group; and X represents a single bond or an
alkylene group having 1 to 6 carbon atoms.

Evidence relied upon
The Examiner relies upon the following reference as evidence of
unpatentability:
Schmitt US Pat. 5,398,300 Feb. 14, 1995
Pallaske DE 4142134A (Abstract only) Jun. 24, 1993
Mukai JP 53-075330 (Abstract only) Jul. 4, 1978

Obviousness under 35 U.S.C. § 103
Claims 1 and 4-10 stand rejected under 35 U.S.C. § 103(a) as obvious over
Schmitt in view of Pallaske and Mukai.
Schmitt teaches a composition for protecting sawn timber again wood-
discoloring fungi comprising a combination of two fungicides which are phenol
and iodopropargyl derivatives. Schmitt, col. 1, ll. 4-6; col. 1, l. 52 to col. 2, l. 6. In
addition to the fungicides, the composition can contain emulsifiers, solvent, and
insecticides. Col. 2, ll. 61-66; col. 3, ll. 27-28; col. 4, l. 22; col. 7, l. 24-43. See
Answer 3 to 4.
Schmitt states that emulsifiers can be mixtures of nonionic and ionic
emulsifiers which are present in 5-25% by weight. Col. 3, ll. 23-24; col. 8, l. 44-

Appeal No. 2007-0180 Page 3
Application No. 10/663,843

45, 60-61. Answer 4: 9-10. These values overlap with the amounts recited in
claim 1 of “(b) 2 to 15% by weight of at least one surfactant.”
Preferred solvents are described by Schmitt as dibutyl phthalate and butyl
benzoate. Col. 3, ll. 9-12. Example 1 describes the use of butyl benzoate as a
solvent (col. 5, l. 35), which is a solvent recited in instant claim 5 (“wherein the
aromatic ester solvent (c) [of claim 1] is . . . butyl benzoate”). The solvents can be
present in amounts of “more than 20% by weight,” which are overlapping with
claim 1 (“(c) 15 to 90% by weight of at least one aromatic ester solvent”).
Schmitt’s composition can also contain an insecticide, preferably a
phosphoric ester, carbamates, pyrethroid, or nitroimine. Col. 4, ll. 22-48; col. 8, ll.
25, 30 (listing the pyrethroids cypermethrin and permethrin). Answer 4: 2-3.
The insecticide can be present in 0.001 to 10% by weight. Col. 4, ll. 52-53.
Answer 4: 3-4. The amounts of insecticide in Schmitt’s composition overlap with
the amounts which are recited in claim 1 (“(a) 1 to 60% by weight of a pyrethroid
compound”).
The Examiner states that the difference between the claimed invention and
Schmitt is that Schmitt does not “explicitly exemplify a combination of a
pyrethroid, surfactant, and an aromatic solvent such as butyl benzoate” as required
by claim 1. Answer 4: 16-18. However, the Examiner asserts that butyl benzoate
[an “aromatic ester solvent”] is described (col. 3, l. 12) as preferred. Answer 4.
The Examiner states that use of a pyrethroid in Schmitt’s composition would have
been obvious because Schmitt explicitly suggests the addition of other fungicides
or insecticides “for the purpose of increasing the spectrum of action or to achieve
specific effects” and lists pyrethroids in its claimed composition (col. 8, ll. 8-30).
Answer 4-5; See also Schmitt, col. 3, ll. 27-32.

Appeal No. 2007-0180 Page 4
Application No. 10/663,843

The Examiner asserts that Pallaske and Mukai “provide additional
motivation” to have utilized the pyrethroids “cypermethrin or permethrin by
disclosing their known use in wood protection against wood damaging insects. One
having ordinary skill in the art would therefore have been amply motivated to
further protect Schmitt’s sawn timber against insect damage by including a
pyrethroid insecticide such as cypermethrin or permethrin.” Answer 5 and
6: 13 to 7: 4. Summarizing Schmitt’s disclosure, the Examiner concludes that it
“clearly disclose[s] such a formulation type [as claimed] in that the corresponding
ingredients are all disclosed in claim-recited concentration amounts wherein
concentrated emulsions are disclosed (column 2, lines 41-44).” Id.
Appellants assert that the error in the rejection of the claims is that the
Examiner failed to establish a prima facie case of obviousness. Br. 9, “The Error
in the Rejection.” They argue that “Schmitt describes that many additive
compounds including pyrethroids, may be added to the composition; however, it
does not exemplify a formulation comprising additive compounds, let alone a
pesticidal emulsifiable concentrate comprising pyrethroids.” Br. 11.
There is no requirement under 35 U.S.C. § 103 that a prior art reference
“exemplify” the claimed subject matter. Obviousness under 35 U.S.C. § 103 asks
“‘not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was made.’”
In re Lamberti, 545 F.2d at 750, 192 USPQ at 280.” Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807-8, 10 USP2d 1843, 1846 (Fed. Cir. 1989). “All the
disclosures in a reference must be evaluated . . . a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651, 176
USPQ 196, 198 (CCPA 1972).

Appeal No. 2007-0180 Page 5
Application No. 10/663,843

Here, the Examiner has rejected the claims as obvious in view of Schmitt. It
is not necessary that the prior art reference describe a specific example of the
claimed subject matter, only that it would have fairly suggested it to the skilled
person. We find that the Examiner has set forth a sound rationale for his
conclusion that the claimed subject matter is prima facie obvious in view of
Schmitt and the secondary references. See Answer 4: 16 to 6: 20. The Examiner
has pointed to disclosure in Schmitt of the same ingredients recited in claim 1, in
overlapping amounts,1 and has explained why the skilled worker would have been
motivated to choose them. In addition, the Examiner has explained that the choice
of a pyrethroid as required in claim 1 would have been obvious to the person of
ordinary skill in the art for its known wood-protecting activity. Answer 5 and
6: 13 to 7: 4. Appellants have not identified any defect in this reasoning.
“When the PTO shows prima facie obviousness, the burden then shifts to the
applicant to rebut it. In re Dillon, 919 F.2d 688, 692 [16 USPQ2d 1897] (Fed. Cir.
1990) (en banc). Rebuttal may take the form of ‘a comparison of test data showing
that the claimed compositions possess unexpectedly improved properties . . . that
the prior art does not have, that the prior art is so deficient that there is no
motivation to make what might otherwise appear to be obvious changes, or any
other argument . . . that is pertinent.’ Id. at 692-93 (citations omitted).” In re
Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1954 (Fed. Cir. 2005). Appellants
assert that “any prima facie case of obviousness has been overcome by unexpected

1 When there is a range disclosed in the prior art, and the claimed invention
overlaps or falls within that range, there is a presumption of obviousness. In re
Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); Iron
Grip Barbell Co. v. USA Sports, 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228
(Fed. Cir. 2004).

Appeal No. 2007-0180 Page 6
Application No. 10/663,843

superiority of the present invention.” Br. 9. This evidence is presented in “Test
Example 2” of the specification. Answer 7. We concur with the Examiner that
that the data in Test Example 2 is not probative of “unexpected superiority” for at
least the reasons set forth by the Examiner, i.e., the test formulation described in
the example is not within the scope of the claimed subject matter. Answer 7-8.
For the foregoing reasons, the rejection of claim 1 is affirmed. Because
Appellants have not provided separate reasons for patentability, claims 4-10 fall
with claim 1.
TIME PERIOD
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

Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Lora M. Green )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard M. Lebovitz )
Administrative Patent Judge )

Appeal No. 2007-0180 Page 7
Application No. 10/663,843

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