Ex Parte Walter et alDownload PDFPatent Trial and Appeal BoardAug 22, 201814661538 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/661,538 03/18/2015 James Walter 111801 7590 08/24/2018 FMC I Fox Rothschild LLP 2929 Walnut Street Philadelphia, PA 19104 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. 60948-USA 6968 EXAMINER PRYOR, AL TON NATHANIEL ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): ipdocket@foxrothschild.com Andrea.Small@fmc.com patents@fmc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES WALTER, GUOZHI WANG, KUMAR VANKA Y ALA, and ELIZABETH E. WOLFF 1 Appeal2017-008569 Application 14/661,538 Technology Center 1600 Before TONI R. SCHEINER, FRANCISCO C. PRATS, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants state that the real party-in-interest is FMC Corporation. App. Br. 2. Appeal2017-008569 Application 14/661,53 8 SUMMARY Appellants file this appeal under 35 U.S.C. § I34(a) from the Examiner's Final Rejection of claims 1-20 as unpatentable under 35 U.S.C. § I03(a) as being obvious over the combination of Chan et al. (US 5,075,058, December 24, 1991) ("Chan 1"), Chan (US 2007/0014825 Al, January 18, 2007) ("Chan 2"), Chen et al. (US 4,948,787, August 14, 1990) ("Chen"), and Koper et al. (US 2009/0098016 Al, April 16, 2009) ("Koper") or M.L. Sattler et al., Removal of Carbonyl Sulfide Using Activated Carbon Adsorption, 56 J. AIR & WASTE MGMT. Assoc. 219-24 (2006) ("Sattler"). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to microparticles comprising (a) a water-soluble solid organothiophosphate, (b) one or more odor-absorbing components, and ( c) one or more odor-masking components, as well as a method of making the microparticles, and odor-reduced insecticidal formulations comprising the microparticles. Spec. Abstr. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A microparticle comprising: (a) a pyrethroid; (b) a water-soluble solid organothiophosphate insecticide; 2 Appeal2017-008569 Application 14/661,53 8 ( c) one or more odor-absorbing components; and (d) one or more odor-masking components App. Br. 7. ISSUES AND ANALYSES We decline to adopt the Examiner's findings, reasoning, or conclusion establishing that Appellants' claims 1-7 are prima facie obvious over the combined cited prior art. We adopt the Examiner's findings, reasoning, or conclusion establishing that Appellants' claims 8-20 are prima facie obvious over the combined cited prior art. We address the arguments raised by Appellants below. A. Claims 1-7 Issue Appellants argue these claims together. App. Br. 3. Appellants argue that the Examiner erred because the cited prior art neither teaches nor suggests a microparticle comprising one or more odor-absorbing components and one or more odor-masking components. Id. Analysis The Examiner finds that Chan 1 teaches an insecticide pellet ( or particle) composition comprising ORTHENE® (acephate, an organothiophosphate insecticide) plus other insecticides including pyrethroid insecticides such as deltamethrin. Final Act. 2 (citing Chan 1 col. 5, 11. 3- 22). The Examiner finds Chan 1 does not teach the pellet comprising a 3 Appeal2017-008569 Application 14/661,53 8 fragrance; however, the Examiner finds Chan 2 teaches a granular bait composition comprising odor masking surfactants, odor masking fragrances and one or more toxicants. Id. (citing Chan 2 ,r,r 42, 43, Abstr.). The Examiner finds Chan 2 teaches that the one or more toxicants can include acephate ( organothiophosphate ), cyfluthrin, deltamethrin, and permethrin. Id. (citing Chan 2 ,r 22, Table 1, claims 11, 17, 19). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to modify the invention/pellet of Chan 1 to include the fragrant and odor masking surfactant taught by Chan 2 because it was known in the art that the compositions comprising organothiophosphate have a bad odor, which can be reduced with fragrances as taught by Chan 2. Final Act. 2-3. Appellants argue that Chan 1 teaches that its pellets have lengths in the range of from 3 to 25 mm and diameters in the range of from 1.5 to 7 mm. App. Br. 3 ( citing Chan 1 col. 6, 11. 26-31 ). Appellants contend that their Specification discloses that microparticles constitute a population of particles of which 90% or more have a particle size of less than 250 µm. Id. Appellants argue that Chan 1, upon which the Examiner relies, therefore fails to provide the required microparticle element. Id. The Examiner responds that Chan 1, Chan 2, and Chen are all directed to particles or pellets. Ans. 4. We agree with Appellants that the combined cited prior art fails to teach or suggest the claim term "microparticles." Appellants' Specification provides no express definition of the claim term "microparticle" but provides a number of exemplary embodiments. Specifically, Appellants' Specification discloses that: 4 Appeal2017-008569 Application 14/661,53 8 As used herein, "D50" refers to the particle size below which 50% of the particles in the population fall. Accordingly, "a D50 particle size of less than about 250 microns in diameter" means that at least 50% of the microparticles of the formulation are less than about 250 microns in diameter. Similarly, as used herein "D90" refers to the particle size below which 90% of the particles in the population fall. Accordingly, "a D90 particle size of less than about 250 microns in diameter" means that at least 90% of the microparticles of the formulation are about 250 microns or less in diameter Spec. 8. The Specification further discloses that: "In a specific embodiment the microparticle population has a particle size defined by D90 of between about 1 and about 250 microns" and that: "In another embodiment, the pyrethroid-on-carrier has a particle size D90 of less than about 20 microns." Spec. 3, 6. Appellants' Specification further discloses exemplary microparticle sizes with D90s of: "less than about 400 microns," "less than about 250 microns," "less than about 50 microns," and "less than about 20 microns." Spec. 3, 6, 9. Appellants' Specification thus discloses embodiments of its microparticles in which at least 90% of the particles are less than 400 µm at most and less than 20 µm at minimum. By contrast, Chan 1 teaches with respect to its pellets: As the extrusion product exits the extruding orifice, the product is cut to appropriate size, usually about 3 mm to 10 mm in length. Useful pellets will be extrudates of about 3 mm to 25 mm in length with diameters from about 1.5 mm to 7 mm. Spherical pellets are also useful having diameters of about 1 mm to 5 mm. Chan 1 col. 6, 11. 26-32. Chan 1 thus teaches pellets that are, at minimum, 5 Appeal2017-008569 Application 14/661,53 8 almost an order of magnitude greater than that of the largest D90 particles disclosed by Appellants' Specification. The Examiner points to no teaching or suggestion in Chan 2 or Chen that their disclosed particles are within a size range that overlaps, or even approaches, the ranges disclosed in Appellants' Specification, nor can we discern any such teachings. We consequently agree with Appellants that the combined cited references neither teach nor suggest microparticles, and we reverse the Examiner's rejection of claims 1-7. Because we find this issue dispositive with respect to claims 1-7, we do not reach Appellants' additional arguments (see App. Br. 4---6) with respect to these claims. B. Claims 8-20 Issue 1 Appellants argue that the Examiner erred because there is no suggestion in the art that would lead a person of ordinary skill to combine the references cited by the Examiner. App. Br. 4. Analysis Appellants argue that Chan 1 teaches that a pelletized structure of the insecticidal composition that was previously described in the prior art was successful in mitigating the odor of the odiferous active compounds, specifically Orthene®. App. Br. 4 ( citing Chan 1 col. 2, 11. 56-60). According to Appellants, Chan 1 thus teaches that the odor problem was mitigated by the use of such pellets. Id. Appellants therefore contend that it follows that the problem addressed in Chan 1 was not the issue of odor, as 6 Appeal2017-008569 Application 14/661,53 8 found by the Examiner, but instead was the problem actually stated in Chan 1, viz., to deliver a mixture of Orthene® with other actives at a higher concentration than previously attained. Id. Appellants assert that, given an objective reading of the actual problem faced by Chan 1 together with the teachings of Chan 2, a person of ordinary skill in the art would not look to Chan 2 to fix the non-existent odor problem of Chan 1, as reasoned by the Examiner. App. Br. 4. Appellants contend that there does not seem to be a common thread through the references that would suggest the combination of the references; rather, the references disclose disparate teachings. Id. Furthermore, argue Appellants, there is no suggestion in any one reference that a method of the other reference would be additive or, in combination, would provide the Appellants' claimed invention. Id. The Examiner responds that, regardless of the disparate method for treating odor in Chan 1 and Chan 2, each reference teaches treating and/or removing unpleasant odor. Ans. 5. Therefore, the Examiner finds that the treatment and/or removal of odors, in addition to the references having the same active compounds, would have motivated a person of ordinary skill to combine the references. Id. We are not persuaded by Appellants' argument. Chan 1 expressly teaches that: "ORTHENE® has a characteristically mercaptan [i.e., sulfur] odor (believed to be organothio compounds) which is compounded by the problems with dust." Chan 1 col. 1, 11. 58---60. Chan 1 further teaches that: "One possible alternative to a powdered OR THENE® is in the form of a pellet: a cylindrically shaped solid. Pellets practically eliminate the dust problems and reduce the surface area-to-weight ratio which mitigates the 7 Appeal2017-008569 Application 14/661,53 8 odor problem," but that: "Attempts to manufacture technical assay (approximately 97% active ingredient) ORTHENE® pellets from the dry ORTHENE® technical powder have heretofore been unsuccessful." Id. at col. 2, 11. 56-68. Chan 1 thus teaches that a pellet form may help mitigate the problem of ORTHENE®'s unpleasant odor, but that such pellets (as opposed to existing granular forms) have not been successfully made. Chan 1 further teaches that: "Optionally, solid and/or liquid additives may be included in the dry mixture .... Small amounts of deodorants and anti-foam agents may also be used as additives." Chan 1 cols. 4--5, 11. 62-2. Chen teaches that: "Mercaptan odors in a thiophosphate compound or formulation are suppressed by treatment of the compound during preparation of the formulation with treatment agents selected from iodine, and alkali and alkaline earth metal hydroxides, hypochlorites and iodates." Chen Abstr. Chan 1 thus suggests the use of deodorants to suppress the mercaptan odor of ORTHENE® and Chen teaches deodorants used for the suppression of such mercaptan odors. Chan 2 teaches the use of insecticides, including acephate (the active ingredient of ORTHENE®). Chan 2 ,r 22. Chan 2 further teaches that the odor of acephate can be masked by the use of surfactants: "If the odor of the active insecticide is offensive or malodorous, the active insecticide is impregnated in a water or oil soluble surfactant." Chan 2 ,r 43. We consequently agree with the Examiner that a person of ordinary skill in the art would have been motivated to combine the teachings of Chan 1, Chan 2, and Chen to minimize the unpleasant mercaptan odor of the insecticide. 8 Appeal2017-008569 Application 14/661,53 8 Issue 2 Appellants argue that the Examiner erred because the cited prior art references are nonanalogous art. App. Br. 4. Analysis Appellants contend that their claimed invention is directed to providing an insecticidal composition without, or with significantly reduced, odor caused by the active insecticidal component. App. Br. 4. Appellants argue that they have addressed the problem by: ( 1) reducing the size of the particles comprising the insecticide; and (2) by including an odor reducing component and an odor masking component. Id. at 5. Appellants argue that Chan 1 does not address the same problem, because the odor of the Chan 1 composition was ostensibly mitigated by the use of pellets. App. Br. 5. Appellants assert that Chan 2 does not address the problem of minimizing odor with the effect of reducing the effect of the odor on humans, but is focused on baiting insects to the insecticide in a manner that will provide a delayed killing effect, and kill the nest of insects. Id. According to Appellants, Chan 2 provides an odor-reducing component so that insects are not repelled. Id. Appellants also argue that Koper and Sattler are similarly nonanalogous art. We are not persuaded by Appellants' argument. Two separate tests define the scope of analogous prior art: "( 1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Chan 1 and Chan 2, as we have explained, are both directed to the use of 9 Appeal2017-008569 Application 14/661,53 8 acephate (Orthene®) as an insecticide and to omitting the unpleasant odor of the insecticide by the use of deodorant or an odorant-masking compound, respectively. Chen is similarly directed to the use of organothiophosphate insecticides (such as acephate) and teaches the use of specific deodorant compounds to suppress the unpleasant mercaptan smell of these insecticides. See Chen Abstr., col. 1, 17-20. Nor are we persuaded by Appellants' argument that Chen teaches reducing the mercaptan odor of organothiophosphate pesticides to prevent repelling insects. Chen teaches that: Organothiophosphate insecticides are well known and widely used for crop protection.. . . An unfortunate aspect of many of these compounds is a mercaptan odor... . Regardless of the mechanism by which the mercaptan odor is produced, it is undesirable from an environmental point of view as well as for handling and field application purposes .... The result in any case is a formulation which is initially free of mercaptan odor and in which the timewise development of mercaptan odor is inhibited if not eliminated entirely. Chen col. 1, 11. 11-55. Similarly, Chan 1 teaches: Furthermore, ORTHENE® has a characteristically mercaptan odor (believed to be organothio compounds) which is compounded by the problems with dust. Chan 1 col. 1, 11. 56-60. We find that a plain reading of the references indicates that the mercaptan odor of organothiophosphate compounds is unpleasant to humans, rather than insects, and reducing the odor is desirable for "handling and field application purposes." Chen col. I, 11. 33-34. Furthermore, it follows logically that if these compounds, with their inherent mercaptan odor, are very successful as pesticides, then the mercaptan odor 10 Appeal2017-008569 Application 14/661,53 8 must not be repellent to insects. Appellants point to no evidence supporting their interpretation of the teachings of Chen, and make only a bare assertion that it is so. Such attorney argument is not persuasive. See In re Schulze, 346 F.2d 600, 602 (C.C.P.A. 1965) ("Argument in the brief does not take the place of evidence in the record"). Consequently, we agree with the Examiner that Chan 1, Chan 2, and Chen are all in the same field of endeavor, viz., the use of organothiophosphate compounds as insecticides and the mitigation of their unpleasant odors. Koper and Sattler are also directed to the suppression or removal of mercaptan-based odors, and are therefore reasonably pertinent to the particular problem with which the inventor is involved. We consequently reject Appellants' argument that the references are not combinable because they are nonanalogous art. Issue 3 Appellants argue the Examiner erred by impermissibly using hindsight analysis in finding that the claims are primafacie obvious over the combined cited prior art. App. Br. 5. Analysis Appellants argue that a person of ordinary skill in the art would have to have been somehow guided to select from the diverse teachings of the references in a manner that would produce the claimed invention. App. Br. 5. According to Appellants, the guidance to combine the references is absent from the Examiner's findings and conclusion without using the 11 Appeal2017-008569 Application 14/661,53 8 Appellants' claims as the reason and motivation to combine the references without impermissibly using hindsight. Id. We are not persuaded. 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. In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellants point to no limitation of their claims that could have been gleaned using knowledge coming only from Appellants' Specification and not from the teachings of the prior art. Rather, Appellants make merely an allegation of hindsight reasoning, unsupported by any evidence of record. We accord such arguments little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Issue 4 Appellants argue that the combined cited prior art teaches away from the claimed invention. App. Br. 5-6. Analysis Appellants argue that Koper teaches away from the use of activated carbon for the removal of odor. App. Br. 5. According to Appellants, Koper teaches that use of activated carbon is ineffective, and teaches the use of 12 Appeal2017-008569 Application 14/661,53 8 highly porous nanocrystalline metal oxide and metal hydroxide particles to achieve a desirable result. Id. at 5---6. Appellants argue further that Sattler teaches that the activated carbon removes a contaminant from the treated material, and that the contaminated activated carbon is then removed and kept separate from the treated material. App. Br. 6. Appellants assert that this teaches away from the claimed invention, in which the odor-absorbing component is combined with the odorant in the final composition. Id. Finally, Appellants argue that Chen teaches a method of chemically treating odor-causing mercaptans to remove them, rather than by including components to absorb and/or mask the odor, which is a teaching away from the claimed invention. App. Br. 6. The Examiner responds that Koper and Sattler are cited to demonstrate that activated carbon can be employed in a variety of circumstances to reduce mercaptan odor. Ans. 6-7. The Examiner therefore concludes that it would have been obvious to a person of ordinary skill in the art to add activated carbon to the combined composition of Chan 1, Chan 2, and Chen to aid odor reduction issues associated with pyrethroid and/ or organothiophosphate compositions. Id. We are not persuaded by Appellants' arguments. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Koper and Sattler teach the suppression of mercaptan odors using metal oxides or activated carbon in other applications, but do not expressly or implicitly discourage a person of ordinary skill in the art from employing them to suppress the mercaptan odors in organothiophosphate pesticides. 13 Appeal2017-008569 Application 14/661,53 8 Similarly, Chen is expressly directed to suppressing the mercaptan odor of organothiophosphate pesticides. Appellants point to no teaching or suggestion of Chen that would discourage or divert a person of ordinary skill in the art from applying its teachings to the teachings of Chan 1 and Chan 2. We consequently affirm the Examiner's rejection of claims 8-20. DECISION The Examiner's rejection of claims 1-7 under 35 U.S.C. § 103(a) is reversed. The Examiner's rejection of claims 8-20 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. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 14 Copy with citationCopy as parenthetical citation