Stoller Enterprises, Inc.Download PDFPatent Trials and Appeals BoardOct 18, 20212021000963 (P.T.A.B. Oct. 18, 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. 16/027,997 07/05/2018 Ritesh Bharat Sheth 9043.P024US 5761 86602 7590 10/18/2021 Yancy IP Law, PLLC 5904 Jane Way Alexandria, VA 22310 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 10/18/2021 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 RITESH BHARAT SHETH, JERRY HERMAN STOLLER, and ROBERT RICHARD SHORTELL1 Appeal 2021-000963 Application 16/027,997 Technology Center 1600 Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, 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 an agricultural formula, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Stoller Enterprises, Inc. Appeal Br. 1. “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-000963 Application 16/027,997 2 STATEMENT OF THE CASE “The present invention generally relates to a synergistic agricultural formula including at least one diacyl or diaryl urea and at least one plant growth regulator (PGR) to produce a highly pronounced increase in plant growth, development and yield in plant cells and whole plant culture.” Spec. ¶ 2. In a preferred embodiment, the diacyl or diaryl urea is N,N'-diformylurea. Id. ¶ 24. Claims 1–3 and 6–22 are on appeal. Claim 1, 18, and 22, the independent claims, are illustrative and are reproduced below: 1. An agricultural formula comprising 0.1 to 30 wt. % of at least one diacyl or diaryl urea and 0.001 to 99.9 wt % of at least one plant growth regulator selected from the group consisting of auxins, cytokinins, and gibberellins: wherein said auxins, cytokinins, and gibberellins are the only plant growth regulators in said formula; and wherein the combination of the at least one diacyl or diaryl urea and the at least one plant growth regulator provides synergy. 18. An agricultural formula consisting essentially of, at least one diacyl or diaryl urea, at least one plant growth regulator selected from the group consisting of ethylene, auxins, cytokinins, gibberellins, abscisic acid, brassinosteroids, jasmonates, salicylic acids, peptides, polyamines, nitric oxide, strigolactones, precursors, derivatives and mixtures thereof, water, and less than 5 wt.% oil and surfactants, wherein said at least one diacyl or diaryl urea and said at least one plant growth regulator are the only agriculturally active ingredients; and wherein the combination of the at least Appeal 2021-000963 Application 16/027,997 3 one diacyl or diaryl urea and the at least one plant growth regulator provides synergy. 22. An agricultural formula consisting of, at least one diacyl or diaryl urea, at least one plant growth regulator selected from the group consisting of ethylene, auxins, cytokinins, gibberellins, abscisic acid, brassinosteroids, jasmonates, salicylic acids, peptides, polyamines, nitric oxide, strigolactones, precursors, derivatives and mixtures thereof, water, and less than 5 wt.% oil and surfactants, wherein said at least one diacyl or diaryl urea and said at least one plant growth regulator are the only agriculturally active ingredients; and wherein the combination of the at least one diacyl or diaryl urea and the at least one plant growth regulator provides synergy. OPINION Claims 1–3 and 6–22 stand rejected under 35 U.S.C. § 103 as obvious based on Rees.2 Final Action3 3. The Examiner finds that Rees teaches synergistic compositions “comprising an antioxidant, a radiation manager and a plant strengthener. . . . Other embodiments include a composition comprising a plant strengthener and an antioxidant.” Id. at 4. The Examiner finds that “diformyl urea is preferred as the antioxidant” and “[t]he concentration of the antioxidant ranges from 1 to about 10% w/w” in Rees’ compositions. Id. 2 Rees et al., US 2013/0116119 A1, published May 9, 2013. 3 Office Action mailed Jan. 9, 2020. Appeal 2021-000963 Application 16/027,997 4 The Examiner also finds that “[e]xemplary plant strengtheners include plant hormones, preferably auxins. . . . Other exemplary plant hormones are gibberellins . . . [and] also include cytokinins.” Id. at 4–5. The Examiner finds that Rees teaches that “[p]lant[] strengtheners preferably have concentrations ranging from 5–500 g/L of the composition.” Id. at 5. The Examiner concludes that it would have been obvious to “include the plant [strengtheners4] in a range from 0.001–99.9 wt.% of the formulation . . . since Rees et al. teaches that the total amount of actives range from 0.1–99 wt.% of the formulation.” Id. at 6. With respect to claims 18 and 22, the Examiner concludes that it would have been obvious to “include the surfactants and oil in an amount less than 5 wt.% of the formulation . . . since Rees et al. teaches that the total amount of actives range from 0.1–99% of the formulation.” Id. at 6–7. We agree with the Examiner that the compositions of Appellant’s claims 1, 18, and 22 would have been obvious to a person of ordinary skill in the art based on Rees, which discloses, in one embodiment, “compositions comprising: (i) an antioxidant; (ii) a radiation manager; and one or more of (iii) a plant strengthener, or (iv) a plant growth regulator.” Rees ¶¶ 7–12. Rees states that its “[c]ompositions . . . can be used to effectively improve plant growth under a condition of reduced water irrigation.” Rees ¶ 43. In another embodiment, Rees discloses “compositions comprising: (iii) a plant strengthener; and (i) an antioxidant.” Id. ¶¶ 49–51. Rees states 4 The Examiner actually refers to “plant growth regulators,” but Rees calls plant hormones “plant strengtheners,” and uses “plant growth regulator[s]” to refer to other agents. See Rees ¶¶ 185, 191. Appeal 2021-000963 Application 16/027,997 5 that “[e]xemplary antioxidants . . . include mono- and/or di-acyl urea containing derivatives.” Id. ¶ 157. “Exemplary di-acyl urea containing antioxidants also include N',N'-di-substituted ureas.” Id. ¶ 158. “A particular exemplary N',N'-di-substituted acyl urea that can be included in compositions presented herein is N',N'-diformyl urea.” Id. ¶ 159. Rees discloses that, “[i]n an embodiment, compositions presented herein comprise from about 1.2% to about 4% (w/w) N,N-diformyl urea.” Id. ¶ 165. Rees states that “exemplary plant strengtheners that can be included in the present compositions are plant hormones.” Id. ¶ 185. “Exemplary plant hormones include native and synthetic auxins, such as indole, indole-3- butyric acid,” etc. Id. ¶ 186. “Exemplary plant hormones include gibberellins, such as, for example, gibberellin A1, A3 (gibberellic acid),” etc. Id. ¶ 187. “Exemplary plant hormones also include cytokinins, such as, for example, zeatin, kinetin,” etc. Id. ¶ 188. Finally, Rees states that its compositions “comprise at least one plant strengthener (iii) at concentrations ranging from about 5 active grams to about 500 active gram per total liter of composition.” Id. ¶ 189. Rees discloses that, “[i]n an embodiment, the present compositions impart, facilitate, and/or result in synergistic effects.” Id. ¶ 223. “As an example, . . . the combination of (iii)+(i)[5] . . . allow[s] synergistically increased effects which far and unexpectedly exceed the effects which can be achieved with the individual active substances.” Id. ¶ 225. Specifically, Rees states that, “the ability of combinations according to the invention to 5 Rees’ “(iii)” refers to its plant strengthener component, and “(i)” refers to its antioxidant component. See, e.g., Rees ¶¶ 49–51 or ¶¶ 143–147. Appeal 2021-000963 Application 16/027,997 6 improve plant quality, density, color, or plant cell turgidity is considerably higher than the sum of the activities of the individual active compounds. . . . Thus, an unforeseeable true synergistic effect is present, and not just an addition of activities.” Id. ¶ 226. Based on these disclosures, the compositions of Appellant’s claims 1, 18, and 22 would have been obvious to a person of ordinary skill in the art. Specifically, with regard to claim 1, it would have been obvious to use diformyl urea (a diacyl or diaryl urea) as the antioxidant and an auxin, cytokinin, or gibberellin as the plant strengthener, because Rees expressly suggests those components and expressly suggests a composition containing only a plant strengthener and an antioxidant as active agents. Rees, ¶¶ 49– 51, 159, 185–188. It would also have been obvious to use concentrations of diformyl urea and an auxin, cytokinin, or gibberellin within the ranges recited in claim 1 because Rees discloses an embodiment comprising 1.2–4 wt% diformyl urea, and suggests using a plant strengthener at a concentration of 5–500 grams per liter. See id. ¶¶ 165, 189. Assuming the density of Rees’ composition is about the same as that of water, 5–500 grams per liter corresponds to 5–500 grams of active agent per 1000 grams of composition, or a concentration of about 0.5–50 wt%. Thus, Rees suggests concentrations for both its antioxidant and plant strengthener that are within the ranges recited in claim 1. “[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). See also In re Peterson, 315 F.3d 1325, 1329 (Fed. Appeal 2021-000963 Application 16/027,997 7 Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Rees also would have provided the skilled artisan with a reasonable expectation that the combination of an antioxidant such as diformyl urea and a plant strengthener such as an auxin, cytokinin, or gibberellin would provide synergy. Specifically, Rees states that “the combination of (iii)+(i) . . . allow[s] synergistically increased effects which far and unexpectedly exceed the effects which can be achieved with the individual active substances. . . . [A]n unforeseeable true synergistic effect is present, and not just an addition of activities.” Rees ¶¶ 225–226. With regard to claims 18 and 22, as discussed above, Rees discloses compositions comprising a plant strengthener (e.g., an auxin, gibberellin, or cytokinin) and an antioxidant (e.g., diformyl urea) as the only active agents, and states that this combination provides synergy. Rees also discloses that its compositions “can optionally comprise . . . carriers . . . and/or formulation auxiliaries conventionally used in plant formulations.” Rees ¶ 198. Rees discloses that carriers include both water and oil solvents, and that optional additives include surfactants. Id. ¶¶ 199–200. Based on these disclosures, it would have been obvious to formulate Rees’ antioxidant-and-plant-strengthener composition to include water, because Rees suggests that suitable carriers include water. And it would have been obvious to exclude both oil solvents and surfactants, because Rees discloses that those components are optional, and therefore not necessary components of its composition. Rees therefore makes obvious a composition Appeal 2021-000963 Application 16/027,997 8 containing 0% oil and surfactants, which is “less than 5 wt.%,” as recited in claims 18 and 22. Appellant argues that “the Examiner has not considered the limitation added to the claims providing ‘wherein the combination of the at least one diacyl or diaryl urea and the at least one plant growth regulator provides synergy’.” Appeal Br. 7. See also id. at 16 (“It is the Examiner’s burden to show that synergy of the claimed compounds would reasonably be expected based on the prior art.”). This argument is unpersuasive, because the Examiner found that Rees expressly states that its formulations are synergistic. Final Action 4; see also Rees ¶ 225–226. Appellant also argues that claim 1 requires that auxins, cytokinins, and gibberellins are the only plant growth regulators in the formula, and “the Examiner did not provide any reasons as to why one of skill in the art would select from only these hormones among the laundry list disclosed in Rees.” Appeal Br. 8. Appellant presents similar arguments with respect to claims 6 and 7. Id. at 8–10. Similarly, with respect to claim 8, Appellant argues that “the Examiner has not considered the limitation ‘wherein said at least one diacyl or diaryl urea and said at least one plant growth regulator are the only agriculturally active ingredients’.” Id. at 10. With respect to claims 13 and 20, Appellant argues that “the Examiner has not considered the limitation ‘wherein said formula only includes plant growth regulators selected from the group consisting of indole-3-butyric acid, indole-3-acetic acid, gibberellic acid, and kinetin’.” Id. at 11. Finally, with respect to claims 18 and 22, Appellant argues that “the Examiner has not considered the limitation consisting essentially of” a list of plant growth regulators that Appeal 2021-000963 Application 16/027,997 9 includes auxins, cytokinins, and gibberellins, “‘wherein said at least one diacyl or diaryl urea and said at least one plant growth regulator are the only agriculturally active ingredients.’” Id. at 11–12. These arguments are all unpersuasive. The Examiner found that Rees discloses an embodiment of its composition comprising a plant strengthener and an antioxidant [0049–51]. Exemplary plant strengtheners include plant hormones, preferably auxins, such as, indole-3-butyric acid and indole-3-acetic acid [0185–186]. Other exemplary plant hormones are gibberellins such as gibberellic acid [0187]. Exemplary plant hormones also include cytokinins such as kinetin [0188]. Final Action 4–5. Thus, because Rees discloses auxins (such as indole-3-butyric acid), cytokinins (such as kinetin), and gibberellins (such as gibberellic acid) as functionally equivalent plant strengtheners, it would have been obvious to a person of ordinary skill in the art to use any of these plant hormones in Rees’ composition comprising a plant strengthener and an antioxidant. We conclude that the Examiner has adequately supported a prima facie case of obviousness with respect to claims 1, 6–8, 13, 18, 20, and 22. Appellant also argues, with respect to claim 1, that “the Examiner has not explained why it would have been ‘routine optimization’ to select the claimed compounds in the claimed amounts to achieve the claimed property.” Appeal Br. 12. Appellant makes the same argument with respect to the amount of oil and surfactants recited in claims 18 and 22. Id. at 13. These arguments are unpersuasive. With regard to selecting the compounds recited in claim 1, as discussed above, Rees discloses auxins, cytokinins, and gibberellins as functionally equivalent plant strengtheners, Appeal 2021-000963 Application 16/027,997 10 thus making the choice of one of these obvious for use in Rees’ composition comprising a plant strengthener and an antioxidant. With regard to the amounts recited in claim 1, as also discussed above, Rees discloses an embodiment comprising 1.2–4 wt% diformyl urea (Rees ¶ 165), and suggests using a plant strengthener at a concentration of 5–500 grams per liter (id. ¶ 189), which corresponds to a concentration of approximately 0.5–50 wt%. Thus, Rees also would have made obvious the amounts of diacyl or diaryl urea and plant hormone(s) recited in claim 1. Appellant argues that “the total number of possible combination of antioxidants (141) + radiation manager (98) + plant strengthener (110) + plant growth regulator (30) (assuming only one compound is selected from each group) is very large.” Appeal Br. 13. Appellant calculates that “the total combination[s] would be at least 141 x 98 x 110 x 30 = 45,599,400 combinations.” Id. at 13–14. Appellant argues that “[s]uch [a] large number of possible combinations leads away from a conclusion that the prior art discloses a ‘a [sic] finite number of identified, predictable solutions’.” Id. at 14. This argument is also unpersuasive. First, Rees discloses an embodiment comprising only an antioxidant and a plant strengthener (Rees ¶¶ 49–51), and the number of potential radiation managers and plant growth regulators is irrelevant to that embodiment. Thus, according to Appellant’s calculation, the number of potential combinations for that embodiment is 141 x 110, or 15,510. In addition, Rees expressly discloses an embodiment comprising 1.2–4% (w/w) diformyl urea and discloses auxins, cytokinins, and gibberellins as suitable plant strengtheners for use in its composition. Id. Appeal 2021-000963 Application 16/027,997 11 ¶¶ 165, 185–188. Thus, Rees would have made obvious the combination recited in Appellant’s claim 1. Appellant also argues that “Rees’ own disclosure appears to show that the addition of plant strengtheners in the form of di- and mono-potassium salts of phosphorous acid are not predictable.” Appeal Br. 20. Appellant cites Rees’ results with its composition 10, which contained a plant strengthener (potassium salts of phosphorus acid), an antioxidant (diformyl urea), and a radiation manager (pigment green 7), and its comparative formula (e), which contained the same plant strengthener and antioxidant, but no radiation manager. Id. at 17–19. This argument is also unpersuasive. Regardless of Rees’ results with one specific plant strengthener (di- and mono-potassium salts of phosphorus acid) in combination with diformyl urea, Rees states that “the combination of (iii) [plant strengthener] + (i) [antioxidant] . . . allow[s] synergistically increased effects which far and unexpectedly exceed the effects which can be achieved with the individual active substances (i), (ii), (iii) or (iv), applied in isolation.” Rees ¶ 225. This disclosure is sufficient to provide a skilled artisan with a reasonable expectation that combining a plant strengthener, such as an auxin, a cytokinin, or a gibberellin, with an antioxidant such as diformyl urea would result in synergistically increased effects. Appellant has not pointed to evidence in the record showing that the combinations recited in the instant claims provide unexpectedly superior results compared to the closest prior art. Finally, Appellant argues that, with respect to claim 18, paragraph 22 of the Specification states “the ‘basic and novel characteristics’ that the Appeal 2021-000963 Application 16/027,997 12 present invention is set to achieve. These characteristics are not obvious or evident from Rees which seeks to ‘improve plant growth under a condition of reduced water irrigation’ using a radiation manager.” Appeal Br. 21–22. Appellant also argues, “[w]ith respect to claim 22, Applicant has provided a ‘closed’ transition term. Rees requires a radiation manager to the disclosed composition.” Id. at 22. These arguments are unpersuasive. First, Rees expressly discloses compositions that include an antioxidant and a plant strengthener, but not a radiation manager. See Rees ¶¶ 49–51. Thus, Rees does not require a radiation manager in its compositions. Second, with respect to the “consisting essentially of” transitional phrase of claim 18, Appellant’s Specification states that “[t]he basic and novel characteristics of the present invention are a benefit to crop system management and crop yield in the agriculture and horticultural industries.” Spec. ¶ 22. Similarly, Rees states that “the ability of combinations according to the invention to improve plant quality, density, color, or plant cell turgidity is considerably higher than the sum of the activities of the individual active compounds.” Rees ¶ 226 (emphasis added). Thus, Rees’ composition reasonably appears to share the same characteristics as the composition of Appellant’s claim 18. In summary, we affirm the rejection of claims 1, 18, and 22 under 35 U.S.C. § 103 based on Rees. Because they were not argued separately, claims 2, 3, 6– 17, and 21 fall with claim 1, and claims 19 and 20 fall with claim 18. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000963 Application 16/027,997 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–22 103 Rees 1–3, 6–22 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