OMS INVESTMENTS, INC

Patent Trials and Appeals Board

Dec 8, 2021

2021004748 (P.T.A.B. Dec. 8, 2021)

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.
15/103,208 09/15/2017 Patrick MWONYA 54936.004831 2428
143845 7590 12/08/2021
ULMER & BERNE LLP
ATTN: ALICIA PICKERING
312 Walnut Street
SUITE 1400
CINCINNATI, OH 45202
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/08/2021 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):
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK MWONYA, MARCUS BERTIN,
ROBERT M.A. RADABAUGH, and
JOHNATHON CLARK RAISTLIN NEWTON
____________

Appeal 2021-004748
Application 15/103,208
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1, 3, 6, 8, 10–14, 16–23, 25, 26, and 67 (Appeal Br.
1). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “OMS
Investments, Inc.” (Appellant’s January 22, 2021, Appeal Brief (Appeal Br.)
1).
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Application 15/103,208

2
STATEMENT OF THE CASE
Appellant’s disclosure relates to “[g]ranular compositions including
sulfonylurea herbicides and carrier herein, and methods of manufacture and
use thereof” (Spec. ¶ 1). Appellant’s claim 1 is reproduced below:
1. A composition comprising:
a substrate comprising a fertilizer and cellulose fiber; and
a coating distributed substantially uniformly onto the
substrate, the coating comprising metsulfuron-methyl and a
carrier comprising polybutene,
wherein the substrate has a pH of 7.0-10.0, and
wherein degradation of metsulfuron-methyl is reduced
compared to a composition comprising metsulfuron-methyl
without said substrate.
(Appeal Br. 21.)

Claims 1, 3, 6, 8, 10–14, 16–23, 25, 26, and 67 stand rejected under
35 U.S.C. § 103 as unpatentable over the combination of Devic,2 Tocker,3
Miller,4 and Radabaugh.5

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Devic et al., US 7,635,404 B1, issued Dec. 22, 2009.
3 Tocker, US 5,441,923, issued Aug. 15, 1995.
4 Miller, US 3,961,932, issued June 8, 1976.
5 Radabaugh et al., US 2008/0103048 A1, published May 1, 2008.
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FACTUAL FINDINGS (FF)
FF 1. Devic discloses “[b]lends of fertilizer granules and highly absorbent
cellulosic granules carrying one or more pesticidal or other active
ingredients that resist the formation of actives dust or segregation of the
granules and that ensure even and efficient application of both the fertilizer
and the active ingredients” (Devic, Abstr.; see id. at 2:51–55 (Devic
discloses that its compositions comprise “blends of fertilizer granules and
highly absorbent cellulosic granules carrying one or more active
ingredients,” such as “herbicides”); Final Act.6 5).
FF 2. Devic discloses that “[p]referred carrier granules used in the
compositions of the present invention are agglomerated cellulosic granules
sold by Kadant Grantek, Inc. of Green Bay, Wis. under its trademark
BIODAC®” (Devic 4:48–51; see also Final Act. 5–6; cf. (Spec. ¶ 34
(Appellant discloses that its cellulose fiber may be BIODAC®”))).
FF 3. Devic discloses “encapsulated slow release fertilizers have been
developed using solvent-applied polymer coatings” (Devic 5:18–20; see id.
at 5:58–61 (Devic discloses that “the cellulosic granules and the fertilizer
granules will first be uniformly blended and then the blend will be sprayed
with the liquid pesticide or other actives ingredient”); see Final Act. 6).
FF 4. Examiner finds that Devic does “not expressly teach the use of a
metsulfuron-methyl . . . active” (Final Act. 7).
FF 5. Tocker discloses “[w]ater-soluble or water-dispersible granular
compositions prepared by coating a water-soluble sulfonylurea herbicide or
a water-soluble or water-dispersible form of a sulfonylurea herbicide on a

6 Examiner’s June 25, 2020, Final Office Action.
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granular substrate using a water-soluble polyethylene glycol binder, and a
method for controlling undesired vegetation” (Tocker, Abstr.; see id. at
2:59–66 (Tocker discloses that preferred herbicides are “selected from the
class of herbicidal sulfonylureas,” such as “metsulfuron”); see Final Act. 7).
FF 6. Examiner finds that the combination of Devic and Tocker does “not
expressly teach the use of a water-absorbent component selected from
magnesium sulfate, clay, [specifically] silica, precipitate silica, calcium
silicate, or calcium sulfate in an amount of 0.01-10%,” as required by
Appellant’s “claims 16-20” and relies on Miller to make up for this
deficiency in the combination of Devic and Tocker (Final Act. 7–8).
FF 7. Radabaugh “relates to methods for producing granular composite
compositions including at least two pesticidally active ingredients in
combination such as an insecticidally active ingredient and a herbicidally
active ingredient and to the composite combination products produced”
(Radabaugh ¶ 3; see also id. ¶ 20, 33 (Radabaugh discloses “composite
products containing at least one insecticidally active pyrethroid ingredient
and at least one other active ingredient such as at least one herbicidally
active ingredient,” such as “[m]etsulfuron [m]ethyl”); id. ¶¶ 18, 32
(Radabaugh discloses that “A wide variety of small grain or powdered
pesticidally active agents may be employed for use as the granular active
agents to be adhered to the outer surface of the spray coated granular
substrate,” “such as a standard fertilizer granule,” wherein “[e]xamples of
some of such granular active agents are pesticides including herbicides,
insecticides fungicides and the like.”); id. at Abstr.; see generally Ans. 8).
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FF 8. Radabaugh discloses that its “non-cyano containing pyrethroid
compositions are dissolved in a suitable non-polar solvent such as a
polybutene” (Radabaugh ¶ 26; see generally Ans. 8; Radabaugh Decl. 7 ¶ 6).
FF 9. Radabaugh declares that “a known problem with sulfonylurea
herbicides,” such as metsulfuron, “is the tendency to degrade in certain
environments. In particular, the sulfonylurea compound has a labile
sulfonamide bridge susceptible to hydrolysis in the presence of water,”
which “can affect the ability of a consumer to use the herbicide” (Radabaugh
Decl. ¶ 4; see also id. (Radabaugh declares that “[c]ompositions as recited in
the pending claims are surprisingly shelf-stable over extended periods of
time and are not prone to degradation”).
FF 10. Radabaugh declares that “the Radabaugh reference does not provide
motivation to use polybutene in an effort to prevent degradation of
metsulfuron-methyl” and “would not lead one skilled in the art to a
reasonable expectation of success that polybutene would prevent
degradation of metsulfuron-methyl based on the disclosure that it improved
the solubility of some non-cyano containing pyrethroid compositions”
(Radabaugh Decl. ¶ 7; see also id. ¶ 8).
ANALYSIS
Based on the combination of Devic, Tocker, Miller, and Radabaugh,
Examiner concludes that, before the effective filing date of Appellant’s
claimed invention, it would have been prima facie obvious to modify Devic
composition, which comprises blends of fertilizer granules and highly
absorbent cellulosic granules carrying one or more active ingredients, such

7 Declaration of Robert Radabaugh, signed June 1, 2020.
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as a pesticide and herbicide, to include Tocker’s metsulfuron as the
herbicide and Radabaugh’s pyrethroid pesticide compositions, which “are
dissolved in a suitable non-polar solvent such as a polybutene” (Final Act.
9–11; see FF 1–8). We find no error in Examiner’s prima facie case of
obviousness.
Appellant contends that the combination of Devic, Tocker, Miller, and
Radabaugh “does not provide motivation to use polybutene in an effort to
prevent degradation of metsulfuron-methyl” (Appeal Br. 17 (citing
Radabaugh Decl. ¶ 7); see also Reply Br. 2–3). We are not persuaded.
Appellant’s claim 1, reproduced above, requires that degradation of
metsulfuron-methyl is reduced compared to a composition comprising
metsulfuron-methyl without substrate. The substrate set forth in Appellant’s
claim 1 does not comprise polybutene, but instead comprises a fertilizer and
cellulose fiber. Thus, Appellant’s claim 1 is not directed to a composition
where the polybutene prevents degradation of metsulfuron-methyl, but rather
recites that the substrate is the compositional element that results in the
reduced degradation. Appellant’s claim 1, like the prior art relied upon by
Examiner, requires a coating on the substrate, wherein the coating comprises
metsulfuron-methyl and a carrier comprising polybutene (cf. FF 1–3 (Devic
discloses slow release fertilizers comprising uniformly blended cellulosic
granules and the fertilizer granules sprayed with active ingredients, such as
pesticide and herbicide); FF 7–8 (Radabaugh discloses granular composite
compositions comprising a herbicide and a non-cyano containing pyrethroid
dissolved in a suitable non-polar solvent, such as polybutene, and sprayed
onto a fertilizer granule)).
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In addition, Devic makes obvious the substrate of Appellant’s claim 1,
which comprises a fertilizer and cellulose fiber, where Devic’s preferred
cellulose fiber, “BIODAC®,” is the same as that disclosed in Appellant’s
Specification (FF 1–3). Thus, the composition made obvious by the
combination of Devic, Tocker, Miller, and Radabaugh necessarily results in
the requirement of Appellant’s claim 1, wherein degradation of metsulfuron-
methyl is reduced compared to a composition comprising metsulfuron-
methyl without the substrate, as recited in Appellant’s claim 1. We find no
evidence on this record to support a contrary conclusion. For the foregoing
reasons, we are not persuaded by Appellant’s contention that
“[c]ompositions as recited in the pending claims are surprisingly shelf-stable
over extended periods of time and are not prone to degradation” (Appeal Br.
18). At best, Appellant articulated an advantage that would flow naturally
from the combination of prior art relied upon by Examiner. “The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.” Ex parte
Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that “[c]ontrary to the Examiner’s position, Mr. Radabaugh says
the Radabaugh reference would not lead one skilled in the art to a reasonable
expectation of success that polybutene would prevent degradation of
metsulfuron-methyl based on the disclosure that it improved the solubility of
some non-cyano containing pyrethroid compositions” (Appeal Br. 17). For
the same reasons, we are not persuaded by Appellant’s contention that
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[a]s evidenced by the Radabaugh Declaration, the Radabaugh
reference would not give one skilled in the art a reasonable
expectation of success that polybutene would prevent
degradation of metsulfuron-methyl based on the disclosure that
the interaction between a tackifying solution, which included
polybutene as a solvent for a non-cyano containing pyrethroid
composition, and a small grain or powdered pesticidally active
ingredient enhanced physical stability and provided a shielding
effect.
(Id. at 18; see also Reply Br. 3.)
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103
as unpatentable over the combination of Devic, Tocker, Miller, and
Radabaugh is affirmed. Claims 3, 6, 8, 10–14, 16–23, 25, 26, and 67 are not
separately argued and fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 6, 8,
10–14,
16–23, 25,
26, 67
103 Devic, Tocker,
Miller, Radabaugh
1, 3, 6, 8,
10–14,
16–23, 25,
26, 67

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) (2019).

AFFIRMED