Lipotec Laboratories, LLCDownload PDFPatent Trials and Appeals BoardOct 25, 20212021000985 (P.T.A.B. Oct. 25, 2021) Copy Citation 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. 15/545,005 07/20/2017 Kenneth L. Watkin 428191-000003 8680 128166 7590 10/25/2021 DLA Piper LLP (US) Boston Attn: Patent Group 11911 Freedom Dr. Suite 300 Reston, VA 20190 EXAMINER PALENIK, JEFFREY T ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): BostonIPDocketing@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH L. WATKIN1 Appeal 2021-000985 Application 15/545,005 Technology Center 1600 Before DONALD E. ADAMS, ERIC B. GRIMES, and TAWEN CHANG, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to seed and plant treatment methods, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE “Curcumin (diferuloylmethane) is the active yellow pigment in turmeric.” Spec. 1:10. “The role of curcumin has been extensively explored 1 Appellant identifies the real party in interest as Lipotec Laboratories LLC. Appeal Br. 3. “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-000985 Application 15/545,005 2 for human medicinal purposes” but “[l]ittle attention has been focused on the use of curcumin for the treatment of plant diseases and plant protection from pests.” Id. at 1:14–16. “Curcumin . . . is not generally soluble in water making its utilization difficult.” Id. at 1:17. The Specification discloses “a formulation comprising curcumin and one or more solvents. A solvent of the invention can be . . . a polar protic solvent . . . or polar aprotic solvent,” among other things. Id. at 5:16–20. “Examples of polar protic solvents include ammonia, t-butanol, n-propanol, ethanol, methanol, acetic acid, and water.” Id. at 5:33 to 6:2. “Examples of polar aprotic solvents include acetone, N,N-dimethylformamide (DMF), acetonitrile, dimethyl sulfoxide (DMSO).” Id. at 5:25–26. The Specification states that “[f]ormulations of the invention can be used as an antifungal, antipesticidal, and insecticidal seed, nut, cereal or grain coating.” Id. at 28:3–4. “The method includes coating the cereals, grains, seeds and nuts with a formulation comprising a solvent and curcumin . . . . The solvent can be a polar aprotic solvent, e.g., dimethyl sulfoxide (DMSO) or a polar protic solvent, e.g., water.” Id. at 28:7–12. Claims 2, 3, 6, 8, 9, 13, and 15–28 are on appeal. Claim 8, reproduced below, is illustrative: 8. A method of coating a cereal, seed, nut, or grain comprising: (i) (a) combining curcumin with a polar aprotic solvent to form a curcumin solution; or (b) combining finely ground curcumin with a polar protic solvent to form a curcumin solution; and (ii) coating the cereal, seed, nut, or grain with the curcumin solution. Appeal 2021-000985 Application 15/545,005 3 OPINION Claims 2, 3, 6, 8, 9, 13, and 15–28 stand rejected under 35 U.S.C. § 103 as obvious based on Dairiki2 and Navarro.3 Final Action4 4. The Examiner finds that Dairiki discloses a composition that includes five components, referred to as components (a) through (e). Id. at 5. Component (a) is a solvent such as dimethyl sulfoxide. Id. (Component (b) is an alcohol or glycol that is not relevant to Appellant’s claims. Dairiki ¶ 79.) Component (c) is a physiologically active ingredient, preferably an agrochemical active ingredient. Final Action 5. Component (d) is water. Id. The Examiner finds that Dairiki defines component (e) as a dye, which can be a natural colorant such as turmeric oleoresin. Id. The Examiner also finds that Dairiki “discloses that the turmeric oleoresin colorant is alternatively called curcumin.” Id. The Examiner finds that Dairiki “additionally teaches that the prepared agrochemical active composition will be used on seeds [and] plants.” Id. at 6. The Examiner concludes that Dairiki’s teachings “guide the ordinarily skilled artisan to a teaching which applies (coats) the prepared agrochemical composition to seeds and/or plants as is recited by instant claim 8.” Id. The Examiner finds that Navarro would have provided a skilled artisan with motivation to “select curcumin (turmeric oleoresin) from the different dye compounds disclosed by Dairiki.” Id. at 7. The Examiner finds that Navarro “teaches . . . that ‘[o]ne of the plant species which has been recognized for its pest control [attributes] (as well as for its special 2 Dairiki et al.; US 2009/0069386 A1; Mar. 12, 2009. 3 Navarro et al.; US 2005/0208157 A1; Sept. 22, 2005. 4 Office Action mailed Dec. 17, 2019. Appeal 2021-000985 Application 15/545,005 4 medicinal and nutritional attributes) is Turmeric (Curcuma longa L.)’ and that ‘turmeric oleoresins consist of curcuminoids, essential oil, and other related compounds.’” Id. at 8 (citing Navarro ¶ 6). The Examiner finds that Navarro also teaches that its “pest control composition will also comprise a carrier, either solid or liquid,” and “[s]uitable liquid carriers . . . include sulfoxides such as dimethyl sulfoxide.” Id. at 7. The Examiner concludes that, based on Navarro, the skilled artisan would have had clear motivation to select turmeric oleoresin (curcumin) from the list of disclosed dye compounds for component (e). . . . Selecting this “dye” would have presented said artisan with more than a reasonable expectation of conferring upon the practiced composition a level of pest control which would enhance that which is already provided by component (c). Id. We agree with the Examiner that the cited references would have made obvious the method of Appellant’s claim 1 to a person of ordinary skill in the art. Dairiki states that, “for the formulations of agricultural chemicals (pharmaceutical compositions) or the like, in some cases, dyes are added to the formulations from the viewpoint of easier discrimination of formulations, prevention of misingestion, or the like.” Dairiki ¶ 2. “Such dyes are organic colorants, which are generally unstable against light or heat.” Id. ¶ 3. Dairiki discloses a “liquid composition . . . [that] provides excellent dye stability against light and/or heat.” Id. ¶ 40. Dairiki describes compositions that include components (a) through (e). See, e.g., id. ¶¶ 59– 64. Component (a) is “a solvent having no nitrogen atom and having a carbonyl or sulfonyl group in the molecule,” preferably “selected from the Appeal 2021-000985 Application 15/545,005 5 group consisting of lactones, sulfoxides, cyclic ketones, and cyclic carbonate esters.” Id. ¶¶ 72, 74. “Examples of the sulfoxides include dimethyl sulfoxide, diethyl sulfoxide,” etc. Id. ¶ 76. Component (b) is an alcohol or glycol that is not relevant to Appellant’s claims. Id. ¶ 79. Component (c) is “a physiologically active agent. . . . Examples thereof include an agrochemical active ingredient, and a pharmaceutically active ingredient, and among them, preferred is the agrochemical active ingredient. The physiologically active ingredients may be used alone or in combination of two or more kinds thereof.” Id. ¶¶ 90–91. Dairiki states that the agrochemical active agent can be “a sterilizer, an insecticide, an acaricide, a plant growth regulator, a herbicide, a rodenticide, an anti- microbial agent, an anti-fungal agent, an anti-algae agent, and the like.” Id. ¶ 92. Dairiki states that “[t]he liquid composition of the present invention containing an agrochemical active ingredient as the component (c) is . . . then used on seeds, plants, water surfaces, or soil.” Id. ¶ 152. Component (d) is water. Id. ¶ 102. Component (e) is a dye. Id. ¶ 105. Dairiki states that “[t]he dye that is used in [its] liquid composition . . . is not particularly limited,” and can be any of fifteen types of dye, including “a natural colorant.” Id. ¶ 109. “Preferable examples of the natural colorant include at least one selected from the group consisting of . . . a Turmeric oleoresin colorant,” among others. Id. ¶ 125. See also id. ¶¶ 126–127 (“More specific examples of these natural colorants include . . . a Turmeric oleoresin colorant (curcumin).”). Dairiki states that “[t]he amount of the component (e) to be blended is not particularly limited, . . . but it is preferably 0.001 to 1 part by weight, Appeal 2021-000985 Application 15/545,005 6 more preferably 0.005 to 0.5 parts by weight, based on 100 parts by weight of the composition.” Id. ¶ 128. The Examiner finds that Dairiki does not disclose the concentration of curcumin recited in dependent claims 6, 20, and 26, but that the recited concentration range would have been obvious based on Navarro. Final Action 7. Appellant does not dispute this conclusion. See Appeal Br. 5–17, Reply Br. 3–6. The Examiner finds that Navarro also provides “motivation to . . . select curcumin (turmeric oleoresin) from the different dye compounds disclosed by Dairiki.” Final Action 7. We agree. Navarro states that “[o]ne of the plant species which has been recognized for its pest control attributes . . . is Turmeric (Curcuma longa L.). . . . The turmeric oleoresins consist of curcuminoids, essential oil and other related compounds.” Navarro ¶ 6. Navarro also discloses that “a solid residue of turmeric oleoresins, remaining after the removal of the essential oil by liquid extraction, is highly effective at preventing pest infestation by antifeedant activity.” Id. ¶ 16. Navarro discloses “a pest control composition which includes an effective amount of at least one compound selected from the group consisting of ar-turmerone, a sesquiterpene alcohol and a turmeric oleoresin solid residue.” Id. ¶ 23. “Preferably, the pest control composition further comprises a carrier, such as a liquid carrier or a solid carrier.” Id. ¶ 118. Navarro states that a “suitable liquid carrier may include,” among others, “amides (e.g. dimethyl formamide etc.)[,] sulfoxides (e.g. dimethyl sulfoxide, etc.), acetonitrile, ketones (e.g. acetone, . . . , etc.), natural oils, and/or water.” Id. ¶ 120. Appellant’s Specification states that polar aprotic Appeal 2021-000985 Application 15/545,005 7 solvents include dimethyl formamide, dimethyl sulfoxide, acetonitrile, and acetone. Spec. 5:23–26. In view of the above disclosures, it would have been obvious to a person of ordinary skill in the art to select the “Turmeric oleoresin colorant (curcumin)” suggested by Dairiki for use in its disclosed method of treating seeds. Dairiki, ¶¶ 127, 152. Both Dairiki and Navarro provide a reason to choose Turmeric oleoresin colorant (curcumin) as the dye in Dairiki’s composition, because Dairiki teaches that dyes are used for “easier discrimination of formulations, prevention of misingestion, or the like,” and that “[t]he dye that is used in the liquid composition of the present invention is not particularly limited.” Dairiki ¶¶ 2, 109. In other words, any of the dyes disclosed by Dairiki will serve its intended purpose; they are all functionally equivalent. Navarro provides further reason to choose Turmeric oleoresin colorant (curcumin) from Dairiki’s disclosed dyes, because Navarro teaches that turmeric oleoresins contain “curcuminoids, essential oil and other related compounds, and that “a solid residue of turmeric oleoresins, remaining after the removal of the essential oil by liquid extraction, is highly effective at preventing pest infestation by antifeedant activity.” Id. ¶¶ 6, 16. Thus, a skilled artisan would have reasonably expected that Turmeric oleoresin colorant (curcumin) would not only serve the purpose Dairiki intended for a dye but would also have the beneficial effect of preventing pest infestation of treated seeds. Finally, it would have been obvious to combine Dairiki’s Turmeric oleoresin colorant (curcumin) with a polar aprotic solvent such as dimethyl sulfoxide (DMSO) because Dairiki suggests DMSO as a suitable solvent for Appeal 2021-000985 Application 15/545,005 8 use as component (a) in its composition, and Navarro discloses that DMSO (and other polar aprotic solvents) are suitable carriers for its pest control composition, which contains turmeric oleoresin solid residue. See Dairiki ¶ 74; Navarro ¶¶ 23, 118, 120. Thus, we conclude that the method of claim 8 would have been prima facie obvious to those of ordinary skill in the art based on the teachings of Dairiki and Navarro. Appellant argues that “neither Dairiki nor Navarro teach the use of curcumin. Instead, . . . they both teach the use of turmeric oleoresin. Turmeric oleoresin is the organic extract of turmeric, that contains 37–55% curcuminoids and up to 25% volatile oil. . . . While turmeric oleoresin can comprise curcumin, it is not curcumin.” Appeal Br. 5–6. See also id. at 14 (“Navarro does not teach or suggest the use of curcumin as presently claimed, but as a ‘turmeric oleoresin solid residue.’”); Reply Br. 3 (“[T]urmeric oleoresin is an impure product and cannot be considered the same as curcumin in its isolated form.”); id. at 6 (“Navarro does not teach or suggest that curcumin has insecticidal properties. Instead, Navarro teach[es] that turmeric oleoresin has insecticidal properties. Navarro does not teach or suggest which single component or combination of components of turmeric oleoresin has insecticidal properties.”). These arguments are unpersuasive. Appellant’s claim 8 does not recite “purified” curcumin, or curcumin of a specified degree of purity. Thus, combining a product that contains curcumin with a polar aprotic solvent meets the broadest reasonable interpretation of “combining curcumin with a polar aprotic solvent,” as recited in claim 8. The Examiner explained this Appeal 2021-000985 Application 15/545,005 9 same interpretation of claim 8. Ans. 5. Appellant’s Reply Brief did not address the Examiner’s claim interpretation. See Reply Br. 3–6. Appellant argues that “neither Dairiki nor Navarro teach or suggest a method including, inter alia, combining curcumin with a polar aprotic solvent to form a curcumin solution or combining finely ground curcumin with a polar protic solvent to form a curcumin solution.” Appeal Br. 6. Appellant also argues that “[n]either Dairiki nor Navarro teach or suggest coating a cereal, seed, nut, or grain with a curcumin solution.” Id. For the reasons previously discussed, we disagree with Appellant on these points, and conclude that Dairiki and Navarro, when considered together, would have suggested all of the limitations of claim 8. Appellant also argues that “Dairiki teaches that turmeric oleoresins can be used as one of hundreds, if not thousands, unlimited, different genera and species of dyes in a composition comprising at least 4 other ingredients selected from thousands of types of ingredients” and “[t]here are no valid specific rationales for why a person of skill in the art would choose one specific dye component (out of hundreds, if not thousands, of unlimited dye components) of a multi-component composition.” Appeal Br. 14. Appellant also argues that Dairiki’s claim 11, which the Examiner points to as a more focused suggestion of turmeric oleoresin colorant, “depends from claims reciting hundreds, if not thousands, unlimited, different genera and species of dyes, [and] there is nothing in claims that particularly points one of ordinary skill in the art to the use of curcumin in the claimed methods.” Id. at 17. This argument is unpersuasive. As discussed above, Dairiki states that dyes are used in agricultural and pharmaceutical compositions for “easier Appeal 2021-000985 Application 15/545,005 10 discrimination of formulations [and] prevention of misingestion.” Dairiki ¶ 2. Dairiki also states that “[t]he dye that is used in [its] liquid composition . . . is not particularly limited.” Id. ¶ 109. A skilled artisan would have reasonably understood from these disclosures that any of the dyes that are disclosed by Dairiki would serve the intended purpose, and thus the disclosed dyes are functional equivalents. Based on this understanding, any of the disclosed dyes would have been an obvious choice for use in Dairiki’s composition. Appellant argues that its position is supported by Ex parte Lajoie, Appeal No. 95-0124 (BPAI Oct. 20, 1997). Appeal Br. 15. Appellant states that Ex parte Lajoie “concerned a formulation containing a fungicide and an insecticide” (citing “[c]laim 42”), and states that the opinion “focused on the prior art’s disclosure of the water-soluble polyhydroxy compatibility enhancing ingredient o-dihydroxybenzene.” Id. However, although Ex parte Lajoie has Appeal Number 95-0124 and was mailed October 20, 1997, it does not include a claim 42 and the representative claim was directed to “[a] dietary fatty acid salt product for ruminants.” Ex parte Lajoie, slip opinion at 1–2. Thus, the cited case does not support Appellant’s argument (and, in any event, is nonprecedential). Finally, Appellant argues that its position is also supported by the non-precedential Board decision Ex parte Senderoff, Appeal No. 2003-0338 (BPAI Nov. 19, 2003). Reply Br. 5. We decline to consider this argument, however, because it was not raised in the Appeal Brief and does not appear to address any new position advanced by the Examiner in the Answer. Thus, the argument is untimely. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which Appeal 2021-000985 Application 15/545,005 11 was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 6, 8, 9, 13, 15–28 103 Dairiki, Navarro 2, 3, 6, 8, 9, 13, 15–28 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation