12439692 - (D) (P.T.A.B. Aug. 4, 2020)

Jeffrey Fowler

Patent Trials and Appeals BoardAug 4, 2020

12439692 - (D) (P.T.A.B. Aug. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/439,692 05/21/2010 Jeffrey Fowler 71258-US-REG-ORG-P 6484 26748 7590 08/04/2020 Syngenta Crop Protection LLC Patent Department PO Box 12257 9 Davis Drive Research Triangle Park, NC 27709-2257 EXAMINER HIRT, ERIN E ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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): global.patents@syngenta.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________ Ex parte JEFFREY FOWLER _________________ Appeal 2020-000679 Application 12/439,692 Technology Center 1600 _________________ Before RICHARD M. LEBOVITZ, DEBORAH KATZ, and JOHN A. EVANS, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-000679 Application 12/439,692 2 Appellant1 seeks our review2, under 35 U.S.C. § 134(a), of the Examiner’s decision to reject claims 1, 3, 7, 9–10, 13, 17–18, 20–23 and 27– 30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Examiner rejects claims 1, 3, 7, 9–10, 13, 17–18, 20–23, and 27– 30 under 35 U.S.C. § 103(a) as obvious over Dookhith,3 Nakama,4 Binks,5 Binks II,6 Lee,7 and Brants.8 (See Final Act. 2–10.) Appellant’s specification is directed to oil-in-water (“o/w”) emulsions for delivery of pesticides. (Spec. ¶ 1.) Appellants’ claim 1 recites: A liquid pesticidal emulsion composition comprising (a) an aqueous continuous phase; 1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Syngenta Crop Protection, LLC. (Appeal Br. 3.) 2 We consider the Final Office Action issued September 26, 2017 (“Final Act.”), the Appeal Brief filed March 26, 2018 (“Appeal Br.”), and the Examiner’s Answer issued on July 25, 2018 (“Ans.”). 3 Dookhith and Linares, “Stabilized Oil-in-Water Emulsions or Suspoemulsions Containing Pesticidal Substances in Both Oil and Water Phases,” U.S. Patent 5,206,021, issued April 27, 1993. 4 Nakamura et al., “Complex and Emulsified Composition,” U.S. Patent 5,866,040, issued February 2, 1999. 5 Binks et al., “Particulate Emulsifiers, Emulsions and Uses Thereof,” International Patent Application Publication WO 2004/096422 A1, published November 11, 2004. 6 Binks and Whitby, “Silica Particle-Stabilized Emulsions of Silicone Oil and Water: Aspects of Emulsification,” Langmuir, 20:1130-1137 (2004). 7 International Patent Application Publication WO 98/09525, published March 12, 1998. 8 Brants and Graham, “Use of N-(Phosphonomethyl) Glycine and Derivatives Thereof,” U.S. Patent 6,083,878, issued July 4, 2000. Appeal 2020-000679 Application 12/439,692 3 (b) at least one colloidal solid selected from carbon black, metal oxides, metal hydroxides, metal carbonates, metal sulfates, silica, and clays, and wherein said at least one colloidal solid does not comprise a polymer; and (c) a dispersed oil emulsion phase comprising (i) a pesticidally effective amount of a pesticidally active ingredient selected from metolachlor, acetochlor, and S- metolachlor; and (ii) at least one Ostwald ripening[9] inhibitor selected from an iso-paraffin fluid, and wherein said Ostwald ripening inhibitor functions to inhibit Ostwald ripening, and wherein if the composition further comprises an additional emulsifier the composition comprises less than 0.5 weight% of the additional emulsifier. (Appeal Br. 37.) The Examiner cites Dookhith for its teaching of o/w emulsion compositions that include pesticides in the dispersed oil phase, where the oily phase is emulsified or dispersed in an aqueous continuous phase by an emulsifying system and the emulsions are further stabilized by a colloidal solid, specifically the metal oxide titanium dioxide. (See Final Act. 4, citing abstract; 5:48–59). The Examiner finds that Dookhith does not teach isoparaffin as an Ostwald ripening inhibitor, as required in claim 1. (See Final Act. 5.) To cure this deficiency, the Examiner cites Nakama for its teaching: “When the fatty acid is difficult to dissolve in the oily substance, the 9 We understand “Ostwald ripening” to be a phenomenon wherein small crystals or sol particles dissolve and redeposit onto larger crystals or sol particles over time. There is no dispute over the meaning of the term. Appeal 2020-000679 Application 12/439,692 4 emulsification efficiency can be increased by adding a solvent such as isoparaffin to the mixture.” (See Nakamura 6:6–8; see Final Act. 5.) We agree with Appellant that Nakamura does not contribute to the obviousness of the claimed composition because Dookhith’s pesticidal o/w emulsion does not contain a fatty acid. (See Appeal Br. 23.) The Examiner fails to provide a sufficient explanation of how Nakama's disclosed emulsifying complex, which is formed from an ampholytic and/or semi- polar surfactant reacted with the carboxyl group portion of a higher fatty acid, is relevant to either Dookhith’s disclosure or Appellant’s claimed composition. (See id.) Although the Examiner cites the teaching in Dookhith that useful solvents may be “of aromatic/paraffinic nature” (Dookhith 10:35–36), the Examiner fails to explain how such solvents are either the same as the isoparaffin taught in Nakama, disclose or suggest the claimed iso-paraffin, or are used in Dookhith to provide an Ostwald ripening inhibitory effect. (See Ans. 6.) The Examiner finds it would have been obvious to one of ordinary skill in the art to select isoparaffins to use as solvents in the composition of Dookhith because pesticides including herbicides, etc. often have reduced solubility in compositions and if one of ordinary skill in the art would want to ensure they stay in solution and as isoparaffins have been shown to increase the solubility of components into the oil phase and they are alkane/branched alkane solvents which are appropriate solvents for formulating the agricultural o/w emulsions as taught by Dookhith. (Ans. 6.) The Examiner concludes that isoparaffins would be appropriate because they have been shown to increase solubility, without explaining why they would be appropriate in compositions such as those taught in Dookhith. Appeal 2020-000679 Application 12/439,692 5 Dookhith teaches that “[i]t is clearly obvious from the above [referring to the discussion in the previous three columns why it is not easy to identify the different properties and characteristics necessary for an emulsifying system] that this emulsion technology is very complex, very specific and thus very unpredictable.” (Dookhith 5:36–38.) Given this unpredictability of the art, without an articulated reason why those of ordinary skill in the art would have considered the use of iso-paraffin in a pesticide emulsion system to be obvious from a teaching regarding fatty acids, we are not persuaded that Nakama cures any deficiency of Dookhith. Similarly, we are not persuaded that the substitution of one of the pesticides recited in Appellant’s claim 1 for the pesticides taught in Dookhith would have been obvious. The Examiner finds that alachlor, which is taught in Dookhith, has “a very closely related structure” to acetochlor, recited in claim 1, but fails to explain why even closely related structures can be substituted in emulsions that Dookhith acknowledges are “very complex, very specific and thus very unpredictable.” (Dookhith 5:36– 38.) Although the Examiner cites Lee as teaching that two of the pesticides recited in Appellant’s claim 1, metolachlor and S-metolachlor were known to be combinable (see Final Act. 6; Ans. 6–7), we are not persuaded that this teaching would indicate to one of ordinary skill that either could be substituted for the pesticides of Dookhith to achieve a liquid pesticidal emulsion composition as Appellant claims. Lee teaches combining glyphosate salt with other herbicides to allow for synergistic weed control, but it is not clear why one of ordinary skill in the art would have looked to Appeal 2020-000679 Application 12/439,692 6 teachings about herbicide compositions for substitutions of pesticides. (See Appeal Br. 23.) For at least these reasons, we do not agree with the Examiner that the cited prior art renders Appellant’s claimed compositions obvious. Conclusion Upon consideration of the record and for the reasons given, we reverse the Examiner’s rejection. In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 3, 7, 9–10, 13, 17–18, 20–23, 27– 30 103 Dookhith, Nakama, Binks, Binks II, Lee, Brants 1, 3, 7, 9–10, 13, 17–18, 20–23, 27– 30 REVERSED