Ex Parte Zhang et al

Patent Trial and Appeal Board

May 17, 2016

12071707 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/071,707 02/25/2008
26853 7590 05/18/2016
COVINGTON & BURLING, LLP
Attn: Patent Docketing
One CityCenter
850 Tenth Street, NW
Washington, DC 20001-4956
FIRST NAMED INVENTOR
Jun Zhang
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.
038184.0045-USOl 2929
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
MAILDATE DELIVERY MODE
05/18/2016 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 JUN ZHANG and HURNY ROMAN 1
Appeal2014-003531
Application 12/071,707
Technology Center 1600
Before LORA M. GREEN, FRANCISCO C. PRATS, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1Appellants state the real party-in-interest is Osmose Inc. App. Br. 5.
Appeal2014-003531
Application 12/071,707
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 4-46, 49, and 61 as unpatentable
under 35 U.S.C. §103(a) as being obvious over Richardson et al. (US
2006/0086841 Al, April 27, 2006) ("Richardson").
We have jurisdiction under 35 U.S.C. § 6(b)
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a method for producing
micronized solid particles through a two-step process. The solid particles of
the invention comprise metals or metal compounds and/or organic biocides.
The invention is further directed to a wood preservative composition and
wood comprising the solid particles of the invention, which may be diluted
to the target concentration \"1ith or \"1ithout addition of a co=biocide and
vacuum/pressure impregnated into a variety of wood species, including
refractory wood species, to effectively preserve the material from fungal and
insect attack. Abstract
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal, and recites:
1. A method comprising the steps of:
a) providing a solid particle
b) contacting the solid particle with a first grinding media;
c) milling the solid particle to produce a first milled particle;
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d) contacting the first milled particle with a second grinding
media; and
e) milling the first milled particle to produce a second milled
particle,
wherein the solid particle comprises a metal or metal compound.
App. Br. 21.
ISSUES AND ANALYSIS
We adopt the Examiner's findings and conclusions that Appellants'
claims are primafacie obvious over the combined cited prior art. We
address the arguments raised by Appellants on appeal below.
Issue 1
Appellants contend the Examiner erred in finding Richardson teaches
or suggests a two-step milling method in which the solid particle comprises
a metal or metal compound. App. Br. 10.
Analysis
Appellants argue that, in contrast to Appellants' claimed invention,
Richardson relates to the milling of organic biocides, such as chlorothalonil,
which are softer and easier to mill in comparison with metals or metal
compounds. App. Br. 11. According to Appellants, Richardson neither
teaches nor suggests the special challenge of milling metals or metal
compounds, nor is there any teaching of a proposed method to overcome
such a challenge. Id. Rather, Appellants assert, the teachings of Richardson
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are focused on one-step milling of organic biocides, predominantly
chlorothalonil. Id.
Appellants contend the only mention of double-milling in Richardson
is in paragraph [0072] as an alternative method. App. Br. 11. Appellants
argue that it is not evident from the disclosure of paragraph [0072] whether
metals or metal compounds are contemplated for double-milling by
Richardson. Id. Rather, Appellants suggest that paragraph [0072] refers to
double-milling of chitosan, an organic polysaccharide, which Appellants
contend confirms that the alternate double-milling procedure is for organic
biocides. Id. Appellants argue that this would be consistent with the overall
teachings of Richardson. Id.
Appellants dispute the Examiner's finding that paragraph [0072],
when combined with Richardson's teaching that a milled organic biocide
can be combined with a milled inorganic biocide, at least suggests
Appellants' claimed invention. App. Br. 12 (citing Richardson iJ 40).
Appellants admit the latter paragraph teaches "the milled particulate organic
biocide" may be combined with "another milled inorganic particulate
biocide," but argue that it neither teaches nor suggests that metals or metal
compounds should be double-milled. Id.
The Examiner finds that, as Appellants admit, Richardson teaches, in
an alternate procedure, biocides can be double-milled, citing, e.g.,
paragraphs [0070]-[0074] of Davison et al. (2004/0176477 Al, September
9, 2004) ("Davison"), which the Richardson explicitly incorporates by
reference. Ans. 3--4. The Examiner finds Davison teaches the milling media
in the first milling step can have a diameter of about 0.5 to 1 mm, preferably
0.5 to 0.8 mm, whereas the milling media in the second milling step can
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Application 12/071,707
have a diameter of about 0.1 to 0.4 mm, preferably about 0.3 mm. Id. at 4
(citing Davison ii 72). The Examiner points out that, when considering the
teachings of a prior art reference, the whole reference is considered,
including the examples. Id. (citing MPEP § 2123).
In response to Appellants' argument that Richardson fails to teach the
special challenge of milling metals or metal compounds, the Examiner finds
that the fact that Appellants have recognized another advantage which would
flow naturally from following the suggestion of Richardson (and Davison)
cannot be the basis for patentability when the differences would otherwise
be obvious. Ans. 5 (citing Ex parte Obiaya, 227 USPQ 58, 60 (BP AI
1985)). The Examiner finds Richardson recognizes that it would be an
advantage in the art to provide a pesticide formulation of fairly uniformly
sized submicron organic pesticide particles and, further, that:
[i]t would be an advantage in the art to provide a method to
routinely and predictably: 1) prepare a pesticide formulation of
fairly uniformly sized submicron organic pesticide particles; 2) a
pesticide formulation of fairly uniformly sized submicron
organic pesticide particles with sub-micron sparingly soluble
inorganic biocidal particles; and 3) a method of manufacturing
the aforesaid formulations that will allow the formulation to have
commercial application in the fields of a) foliar applications, b)
wood preservative treatments, c) turf applications, and d) non-
fouling paints and coatings
Id. at 6 (quoting Richardson ii 24).
The Examiner further finds Richardson teaches the particulate organic
biocide is, in many embodiments, combined with one or more other organic
biocides and/or particulate sparingly soluble biocidal inorganic salts, and
that these inorganic biocidal salts can be milled, for example, using the same
procedures and importantly the same milling media described for the organic
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pesticides. Id. at 6-7. The Examiner finds, by way of example, that
Richardson teaches that particulate copper (I) oxide is useful and is readily
milled by the processes of their invention. Id. at 7 (citing Richardson ii 100).
Moreover, the Examiner finds, Richardson teaches the term "sparingly
soluble" as it applies to inorganic salts is meant to include salts with a Ksp in
pure water of between about 10-12 to about 10-24 for salts with only one anion,
and from about 10-14 to about 10-27 for salts with two anions and that
preferred inorganic biocidal salts include copper salts, zinc salts, and tin
salts, or combinations thereof. Id. (citing Richardson ii 4 7). The Examiner
finds that, in other embodiments, Richardson teaches inorganic biocidal salts
can include silver salts and that the most preferred inorganic biocidal salts
are copper salts, preferably sparingly soluble copper salts, including copper
hydroxide, basic copper carbonate, basic copper chloride (copper
oxychloride ), and basic copper sulfate. Id.
We are not persuaded by Appellants' arguments. Richardson teaches
that: "the processes of this invention produce slurries or suspensions of
particulate biocidal material. This material may be dried into a wettable
powder, often with the addition of surface active agents and/or fillers, where
fillers may include dissolvable buffering agents." Richardson ii 69.
Richardson then teaches, in the same paragraph:
Another exemplary dissolvable biocide granule comprises: 1)
about 50-75% of a first finely-divided (submicron), essentially
water-insoluble biocide, such as is produced by the processes of
this invention; 2) optionally about 7-15% of a second particulate
biocide, which may be a biocidal inorganic salt; 3) about 2-20%
of a stabilizer and/or dispersing agent; 4) about 0.01-10% of a
wetting agent; 5) about 0-2% of an antifoaming agent; 6) about
0-10% of a diluent; and optionally 7) about 0-2% of a chelating
agent.
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Id. (emphasis added). Richardson thus teaches that the biocide granule of
the invention consists of both a particulate organic biocide and a particulate
biocidal inorganic salt, i.e., a metal compound (see infra). Richardson then
teaches:
In an alternate procedure, the biocide can be double-
milled, e.g., as used to mill chitosan in paragraphs [0070]-[0074]
of [Davison], the disclosure of which is incorporated by
reference herein. In one such embodiment, for example, the
milling media in the first milling step can have a diameter of
about 0.5 to 1 mm, preferably 0.5 to 0.8 mm, while the milling
media in the second milling step can have a diameter of about
0.1-0.4 mm, preferably about 0.3 mm.
RichardsoniJ 72 (emphasis added). It is by no means certain, in this passage,
that the term "biocide" as used by Richardson is meant to exclude biocidal
inorganic salts and refers only to organic biocide particles. Appellants point
to no teaching of Richardson that explicitly prohibits or teaches away from
the double-milling of inorganic salts. Davison is directed to a method of
double-milling chitosan, a polysaccharide, that:
preferably comprises at least two size reduction steps wherein the
mean size of the medium of the first step is at least three times
the mean size of the medium of the second step and wherein
preferably the size of the screen apertures in each step is smaller
than the corresponding mean size of the medium and at least
twice the mean size of the starting micro-sized chitosan.
Davison iJ 16; see also iii! 72-74. Finally, the passage of Richardson quoted
by the Examiner teaches:
The particulate organic biocide is, in many embodiments,
combined with one or more other organic biocides and/or
particulate sparingly soluble biocidal inorganic salts. These
inorganic biocidal salts can be milled, for example, using the
same procedures and importantly the same milling media
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described for the organic pesticides. For instance, particulate
copper (I) oxide is useful and is readily milled by the processes
of this invention.
Richardson iJ 100.
Richardson, and by incorporation Davison thus teaches: ( 1) that
biocides can be composed of both organic biocides and biocidal inorganic
salts; (2) "biocides" can be double-milled by methods known in the art; (3)
inorganic biocidal salts can include copper-based compounds that are easily
milled by the processes of this invention, which includes the double-milling
process taught by Davison and incorporated by reference into Richardson.
The standard for obviousness under§ 103(a) is "what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). We agree with
the Examiner's conclusion that the teachings of Richardson would suggest to
a person of ordinary skill that inorganic biocidal salts (including copper (I)
oxide) can be formed into part of a biocide particle using the double-milling
process taught by Davison and Richardson, particularly since Richardson
explicitly teaches that copper (I) oxide can be easily milled.
Issue 2
Appellants argue the Examiner erred because Richardson does not
enable a two-step milling method "wherein the solid particle comprises a
metal or metal compound." App. Br. 13.
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Application 12/071,707
Analysis
Appellants contend Richardson is principally directed to the single-
milling of organic biocides, particularly chlorothalonil, which, Appellants
assert, are generally easier to mill than metals and metal compounds. App.
Br. 14. Appellants admit paragraph [0072] of Richardson teaches, by
reference, the milling of chitosan, which is not a metal or a metal compound,
and that paragraph [0040] of Richardson teaches organic and inorganic
biocides may combined with each other, but contend that neither of these
paragraphs, nor any other teaching of Richardson, discloses double-milling
of metal or a metal compound. Id. Therefore, argue Appellants, the
teachings of Richardson are insufficient to inform those skilled in the art
how to perform Appellants' claimed method. Id.
The Examiner responds that Richardson, via Davison, teaches and
enables a double-milling technique. Ans. 5. The Examiner also finds
Richardson teaches the particulate organic biocide is, in many embodiments,
combined with one or more other organic biocides and/or particulate,
sparingly soluble biocidal inorganic salts, such as copper (I) oxide and that
these inorganic biocidal salts can be milled using the same milling media
described for the organic pesticides. Id. at 6 (citing Richardson iJ 100).
We agree with the Examiner. As we have related supra, Richardson
explicitly teaches copper (I) oxide is a preferred biocidal metal compound
that "is readily milled by the processes of this invention." Richardson iJ 100.
The processes taught by Richardson include, by reference, the double-
milling process of Davison, which we find enables that method. See
Davison, iii! 72-74; Examples 1-5. We therefore affirm the Examiner's
rejection of the claims on this ground.
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Issue 3
Appellants argue the Examiner erred because there is no motivation,
in view of the teachings of Richardson, to double-mill metals or metal
compounds, as required by the claims. App. Br. 14.
Analysis
Appellants argue there is no acknowledgement in Richardson, which
is focused on single-milling, of the special challenge of milling metals or
metal compounds, much less any disclosure of a proposed method to
overcome such a challenge. App. Br. 14. Appellants assert that one of
ordinary skill in the art, upon reading the teachings of Richardson, would not
have found any suggestion to double mill metals or metal compounds, and
would not have been motivated to double mill metals or metal compounds.
Id.
Appellants further allege the Examiner has improperly relied upon
hindsight analysis in concluding the claims on appeal are obvious over
Richardson. App. Br. 15. Appellants contend the concept that difficult-to-
mill metals and metal compounds should be double-milled comes rather
from the disclosures of Appellants' Specification. Id. Appellants allege that
it is improper hindsight to use Appellants' own disclosure and claims as a
road map, taking the position that Richardson suggests double milling of
metals or metal compounds because a single paragraph in Richardson
mentions double milling of organic biocides while another paragraph states
that organic and inorganic biocides can be combined. Id. (citing Crown
Operations International, Ltd v. Solutia Inc., 289 F.3d 1367, 1376 (Fed. Cir.
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2002); Grain Processing Corp. v. American Maize-Products Corp., 840 F.2d
902, 907 (Fed. Cir. 1988)).
Appellants also find fault with the Examiner's reliance upon In re
McLaughlin, which, Appellants speculate, the Examiner relied upon because
it is included in the guidance set forth in MPEP § 2145. App. Br. 15 (citing
443 F.2d 1392 (C.C.P.A. 1971)). Appellants argue the MPEP does not
provide any guidance as to how to actually conduct (or respond to) an
analysis consistent with McLaughlin, which Appellants note is a case
decided by the predecessor to the Federal Circuit over four decades ago,
particularly after the Supreme Court's decision in KSR Int 'l Co. v. Teleflex,
Inc. 550 U.S. 398 (2007). Id. at 15-16.
We are not persuaded. As we have related supra, Richardson
explicitly teaches copper (I) oxide can be easily milled by the methods
taught by Richardson including, by specific reference, the double-milling
method of Davison.
Nor are we persuaded by Appellants' critique of McLaughlin, which,
although admittedly a bit long in the tooth, remains good law. McLauglin
holds that:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
443 F.2d at 1395. The test for proving hindsight analysis set forth by
McLaughlin is thus readily apparent.
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Appellants have not shown that the Examiner relied on improper
hindsight for the reasons provided supra, i.e., that Richardson teaches
copper (I) oxide, a metal compound, can be easily milled using the methods
taught, including double-milling. It may be true, as Appellants, contend,
that Richardson does not teach how to overcome the difficulties of how to
double-mill hard-to-mill metals, but the scope of the claims is not limited to
such difficult-to-mill metals.
Moreover, with respect to KSR, the Supreme Court has held that, to
support a finding of obviousness, "there must be some articulated reasoning
[on the part of the Examiner] with some rational underpinning." KSR, 550
U.S. at 418. We have explained supra why we have found that the
Examiner has provided just such articulated, rationally-based reasoning. We
consequently affirm the Examiner's rejection of claims 1, 4--46, 49, and 61.
Issue 4
Appellants also argue claim 39 separately. App. Br. 16. Claim 39
recites: "The method of claim 16, wherein milling time to produce the
second milled particles is reduced compared to a milling method comprising
only one milling step." Id. at 24. Appellants argue the Examiner erred
because Richardson neither teaches nor suggests the limitation of claim 39.
Analysis
Appellants contend their Specification explains and describes
"remarkable" results, demonstrating that significantly less time is needed to
achieve a certain mean particle size of a metal or metal compound using a
two-step grinding process when compared to a one-step grinding process.
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App. Br. 16 (citing Spec. Examples 1, 3 ). Appellants point to Example 1,
and its accompanying table, which they argue shows that, for copper
carbonate, one can achieve a mean particle size of 0.11 µms in less than half
of the grind time in a two-step grinding process than is required for a one-
step process. Id.
Appellants also point to Example 2, which Appellants argue shows
that the two-step grinding process require 210 minutes to achieve a mean
copper carbonate particle diameter of 0.08 µm, whereas the one-step process
required 1080 minutes to achieve the same result. App. Br. 17. Appellants
argue Example 3 of the Specification shows similar results. Id.
Appellants take issue with the Examiner's finding that paragraph
[0082] of Richardson renders the limitation of claim 39 obvious. App. Br.
17-18. Appellants cite two reasons why the Examiner has allegedly erred:
( 1) the cited paragraph of Richardson relates to milling of organic biocides;
and (2) Appellants have alleged the Examiner has confused the claim term
"mean particle size"2 for Richardson's "particle size distribution." Id. With
respect to the former, Appellants argue the Examiner has not established that
paragraph [0082]'s recitation of a "change in particle size distribution per
hour of milling becomes exceedingly small as the milling time increases"
applies to metals or metal compounds. Id.
With respect to the latter, Appellants contend Richardson repeatedly
emphasizes the importance of particle size distribution, as opposed to mean
2 Claim 16, from which claim 39 depends, recites, "The method of claim 1,
wherein a plurality of second milled particles are produced in step e, and the
second milled particles have a mean particle size of between 0.005 and 0.20
microns." App. Br. 22.
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particle size. App. Br. 18. By way of Example, Appellants point to
paragraph [0055] of Richardson, which states that "tight particle size
distributions [are] beneficial in all applications and can be as important as, if
not more important than, the mean particle size." Id. According to
Appellants, the point of Richardson in this respect is that, even if a desired
mean particle size has been achieved in an organic biocide, an incorrect
particle size distribution can still result in problems, such as when
attempting to inject the organic biocide into wood. Id. Thus, Appellants
argue, several batches of biocide may each have the same mean particle size,
and yet not have the same particle size distribution; therefore, Appellants
contend, whatever the "change in particle size distribution per hour of
milling" may be, this teaching provides no useful information with respect to
the mean particle size of the second-milled metal or metal compound
particles, or on the time it takes to produce particles of the required diameter.
Id.
Consequently, Appellants argue, the Examiner's finding that" a
second milling step which produces a mean smaller particle size ... would
require a shorter milling time because the change in particle size distribution
per hour of milling becomes exceedingly larger as the milling time
decreases" does not logically follow from the teachings of Richardson. Id.
(quoting Final Act. 8).
Finally, Appellants criticize the Examiner's finding that Richardson's
teaching that the "change in particle size distribution per hour of milling
becomes exceedingly small as the milling time increases" necessarily
requires that the change in particle size distribution per hour of milling
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becomes exceedingly larger as the milling time decreases. 3 Id. (quoting
Richardson ii 82; citing Final Act. 8).
The Examiner responds that Richardson teaches a preferred milling
procedure which includes wet milling, which is typically done at mill
settings between about 1000 rpm and about 4000 rpm. Ans. 13. The
Examiner also finds Richardson teaches that faster revolutions provide
shorter milling times to reach the minimum product particle size. Id. (citing
Richardson ii 71). Finally, the Examiner finds Richardson teaches that the
change in particle size distribution per hour of milling becomes exceedingly
small as the milling time increases. Id. (citing Richardson ii 82).
We are not persuaded by Appellants' arguments. Appellants contend
that Richardson neither teaches nor suggests the "milling time to produce the
second milled particles is reduced compared to a milling method comprising
only one milling step," as required by claim 39. We have related supra, why
we agree with the Examiner's finding that Richardson, via Davison, teaches
a first and second milling steps of a metal or metal compound. Appellants
adduce to no evidence or argument to suggest that the reduced milling time
of the two-step process does not flow naturally from, or is not inherent to,
the two-step milling process. See In re Best, 562 F.2d 1252, 1255 (C.C.P.A.
1977) ("Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
3 We do not agree. If, as Richardson teaches, the change in particle size
distribution decreases with increased milling time (see Richardson ii 82),
logically, it necessarily follows that, for shorter milling times, the particle
size distribution is larger.
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products do not necessarily or inherently possess the characteristics of his
claimed product").
Appellants contend that the results presented in their Examples 1-3
are "remarkable," by which term we suppose that Appellants are arguing
their results are "unexpected." But unexpected with respect to what?
Evidence of unexpected properties may be in the form of a direct or indirect
comparison of the claimed invention with the closest prior art which is
commensurate in scope with the claims. See In re Boesch, 617 F .2d 2 72,
276 (C.C.P.A. 1980). MPEP §§ 716.02(d)-716.02(e). However, Appellants
adduce no evidence or declaration to demonstrate that the art at the time of
Appellants' invention would lead a person of ordinary skill in the art to not
expect the overall duration of milling time to be shorter in a two-step process
than in a single-step process.
Moreover, even if we assume, arguendo, that the milling process to
reach a targeted particle size is shortened by a two-step process is, in fact, an
unexpected result, we are not persuaded that this makes claim 39 patentably
distinct over the prior art. Although secondary considerations must be taken
into account, they do not necessarily control the obviousness conclusion.
Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988).
Rather, unexpected results must also be "commensurate in scope with the
degree of protection sought by the claimed subject matter." In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005). Furthermore, unexpected results that are
probative of nonobviousness are those that are "different in kind and not
merely in degree from the results of the prior art." Iron Grip Barbell Co. v.
USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (citation omitted).
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We are not persuaded that the reduced milling duration of Appellants'
two-step milling process represents the "difference in kind, rather than a
difference in degree," required to render claim 39 patentably distinct over
the teachings of Richardson. We consequently affirm the Examiner's
rejection of claim 39.
DECISION
The Examiner's rejection of claims 1, 4-46, 49, and 61 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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