Ex Parte Sun

Patent Trial and Appeal Board

Sep 18, 2018

13580230 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/580,230 08/21/2012 Jinxia Susan Sun
141081 7590 09/18/2018
MCDONNELL BOEHNEN HULBERT & BERGH OFF LLP/ AkzoNobel
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
ACAl 1038-US-Pl 1580
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
09/18/2018 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 JINXIA SUSAN SUN
Appeal2017---008905
Application 13/580,230
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to an
herbicidal formulation. The Examiner rejected the claims as obvious under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellant identifies the Real Party in Interest as Akzo Nobel Chemicals
International B.V. (see App. Br. 1).
2 We have considered and herein refer to the Specification of Aug. 21, 2011
("Spec."); Final Office Action of Mar. 11, 2016 ("Final Act."); Appeal Brief
of Sept. 23, 2016 ("App. Br."); Examiner's Answer of Mar. 27, 2017
("Ans."); and Reply Brief of May 25, 2017 ("Reply Br.").
Appeal2017---008905
Application 13/580,230
Statement of the Case
Background
"Many pesticides require the addition of an adjuvant to the spray
mixture to provide wetting and penetration on plant foliar surface" (Spec.
1: 10-11 ). "It is well known in the art that a specific pesticide requires
specific adjuvants for enhanced efficacy" (Spec. 1: 16-17). "The present
invention is directed to [an] herbicidal formulation comprising at least one
auxin type herbicide and at least one adjuvant, wherein said adjuvant
comprises a blend of an alcohol ethoxylate and ethoxylated quaternary
surfactant" (Spec. 3: 11-13). "This blend has demonstrated significantly
enhanced efficacy for auxin type herbicides, such as the best well known
herbicide of this type like 2, 4-D and Dicamba, compared to the individual
components when used alone" (Spec. 1 :5-7).
The Claims
Claims 1-8, 10, 14, and 16-19 are on appeal. Claim 1 is
representative and reads as follows:
1. A herbicidal formulation consisting essentially of at least
one auxin type herbicide and an effective amount of at least one
adjuvant composition, wherein said adjuvant composition [is] a
blend of at least one alkoxylated alcohol surfactant and at least
one alkoxylated quaternary ammonium surfactant.
The Rejection
The Examiner rejected claims 1-8, 10, 14, and 16-19 under 35 U.S.C.
§ I03(a) as obvious over Pallas3 in view of Wright4 (Final Act. 3-10) .
•
3 Pallas et al., US 2003/0087764 Al, published May 8, 2003.
4 Wright et al., WO 2006/033988 Al, published Mar. 30, 2006.
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Application 13/580,230
The Examiner finds that Pallas teaches using "surfactant mixtures
comprised of cationic surfactant and nonionic surfactant to stabilize the
herbicidal composition and to improve weeds control" (Ans. 7). The
Examiner finds that "Pallas also teaches that the preferred cationic
surfactants can be alkoxylated alcohol surfactants and the preferred
alkoxylated quaternary ammonium surfactants can be PEG 15 C12_18-tallow
methyl ammonium chloride, which read on the claimed surfactants
combination". (Ans. 7).
The Examiner acknowledges that "Pallas does not explicitly mention
the stability effect obtained by the surfactants combination of the
ethoxylated alcohol (as nonionic surfactant) and the alkoxylated quaternary
ammonium chloride (as cationic surfactant)" (Ans. 7).
The Examiner finds that Wright "teaches an aqueous herbicidal
composition useful for controlling the growth of unwanted plant[s], wherein
the preferred composition can comprise one or more herbicide[ s ]" such as
glyphosate and "other herbicides" including "2,4-D, 2,4-DB, dicamba [or],
MCPA" (Ans. 8). The Examiner finds that "Wright also teaches that when
concentrate formulations are desired, a high proportion of surfactant
combinations can be employed" (Ans. 8).
The Examiner finds that a "nonionic surfactant component comprising
an alkoxylated alcohol" can "preferably, [be] combined with additional
surfactants to maintain sufficient solubility of various components and to
enhance stability of the composition" and that "the suitable stability
enhancing surfactants that can be used with the nonionic alkoxylated alcohol
surfactants are dialkoxylated quaternary ammonium salt surfactants" (Ans.
8).
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Application 13/580,230
The Examiner finds that Wright "also teaches that the preferred
surfactant combinations, i.e. the cationic and non-ionic surfactants are
known to enhance the effectiveness of herbicides by facilitating foliar
contact with the herbicides and subsequent translocation" (Ans. 9).
The Examiner finds that one of ordinary skill in the art would be
motivated to
select the particular surfactants combination, comprised of the
mixture of nonionic ethoxylated alcohol surfactant and cationic
ethoxylated quaternary ammonium surfactant, because ...
Wright teaches that when a concentrate formulation is desired,
the above cationic and nonionic surfactants can be used in
combination in higher proportions to maintain sufficient
solubility of various components and to enhance stability of the
composition
(Ans. 9).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner's conclusion that Pallas and Wright renders the
claims obvious?
Findings of Fact
"A herbicidal formulation consisting essentially of at least one auxin
type herbicide and an effective amount of at least one adjuvant composition"
1. Pallas teaches "an aqueous herbicidal concentrate composition
comprising a water-soluble herbicide dissolved in an aqueous medium, and a
surfactant component" (Pallas ,r 42).
2. Pallas teaches that herbicide "compositions that are preferred
for use in compositions of the invention include ... dicamba, ... 2,4-D, 2,4-
DB ... [ and] MCP A" (Pallas ,r 61 ). Pallas exemplifies, in Example 152, a
"mixed active composition comprising about 35.7 wt% a.e. of the potassium
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Application 13/580,230
salt of glyphosate and about 3.1 wt% a.i. of 2,4-D ... and the listed
surfactant (Surf.) and stabilizer (Stab.) components" (Pallas ,r 377).
3. Wright teaches "an aqueous herbicidal composition" with a
"nonionic" "alkoxylated" "surfactant" (Wright ,r 11 ).
4. Wright teaches that examples of additional "herbicidal active
ingredients that may be included in the herbicidal compositions include,
without limitation, water-soluble forms of phenoxy herbicides such as (2,4-
dichlorophenoxy)acetic acid (2,4-D), 4-(2,4-dichlorophenoxy)butanoic acid
(2,4-DB) and ( 4-chloro-2-methylphoenoxy)acetic acid (MCP A), as well as
dicamba" (Wright ,r 39).
5. The Specification teaches that "2,4-D and Dicamba are
presently preferred auxin type herbicides" (Spec. 7:21) and the MCP A is an
auxin type herbicide (Spec. 7: 10).
"wherein said adjuvant composition a blend of at least one
alkoxylated alcohol swfactant and at least one alkoxylated quaternary
ammonium surfactant"
6. Pallas teaches that the "surfactant component comprises at least
one cationic surfactant and at least one nonionic surfactant, and is present in
a concentration sufficient to provide acceptable temperature stability of the
composition" (Pallas ,r 42).
7. Pallas teaches that "preferred nonionic surfactants included
alkoxylated alcohols" (Pallas ,r,r 133, 142).
8. Pallas teaches that the cationic surfactant can be alkoxylated
"quaternary ammonium salts" (Pallas ,r,r 71, 105-108).
9. Wright teaches that the "preferred nonionic surfactants include
alkoxylated alcohols" (Wright ,r 34).
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10. Wright teaches that "when formulating concentrates, it may be
advantageous to employ higher proportions of a surfactant component and/or
surfactants or surfactant combinations different from those used in the
preparation of R TU formulations and adapted to maintain sufficient
solubility of the various components" (Wright ,r 53).
11. Wright teaches that examples of "types of suitable surfactants
and surfactant combinations that may be used in the surfactant component
when formulating concentrate compositions of the present invention include
the previously described nonionic surfactant component comprising an
alkoxylated nonaromatic alcohol" (Wright ,r 53).
12. Wright teaches that examples "of suitable stability enhancing
surfactants that may be used either alone or in combination with the
nonionic alkoxylated nonaromatic alcohol surfactants include alkyl
polyglucosides (APGs ), and dialkoxylated quaternary ammonium salt
surfactants" (Wright ,r 53; cf ,r 54).
Principles of Law
A prima facie case for obviousness require "a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Ans. 3-16; FF 1-12) and agree that the combination of Pallas and Wright
renders the claims obvious. We address Appellant's arguments below.
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Application 13/580,230
Appellants contend "the claims as pending recite the transitional
phrase of 'consisting essentially of,' thus limiting the scope of the claims to
auxin herbicides" (App. Br. 2; cf Reply Br. 2-3).
We do not find this argument persuasive because the Specification
does not define "consisting essentially of'. While Appellants point to
teachings in the Specification regarding the combination of ingredients (see
Reply Br. 2, citing Spec. 4:13-16), Appellants do not identify a disclosure in
the Specification that distinguishes or limits the elements that are the basic
and novel characteristics of the claims. Therefore, "consisting essentially
of' will be treated as comprising. See, e.g., PPG Industries v. Guardian
Industries, 156 F.3d 1351, 1355 (Fed. Cir. 1998) ("PPG could have defined
the scope of the phrase 'consisting essentially of for purposes of its patent
by making clear in its specification what it regarded as constituting a
material change in the basic and novel characteristics of the invention.").
Even if we were to treat "consisting essentially of' as limiting, it is
clear that inclusion of glyphosate does not alter the basic and novel
properties of the invention as contemplated by the Specification because
original claim 10 expressly includes glyphosate as one of the herbicides that
may be included in the inventive composition (see Spec. 12:25).
Appellant contends that teachings regarding "adjuvants for glyphosate
herbicides are not pertinent to the preparation of formulations of auxin
herbicides" (App. Br. 3).
We do not find this argument persuasive. Even assuming arguendo
that this statement is true, both Pallas and Wright teach herbicide
compositions comprising auxin type herbicides and surfactants (FF 1-5).
Therefore, the Examiner is not applying teachings from glyphosate
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herbicides to auxin type herbicides, but rather applying Wright's teachings
about compositions with auxin-type herbicides (FF 3-5, 11, 12) to similar
compositions comprising auxin-type herbicides with surfactant disclosed by
Pallas (FF 1, 2, and 6-8).
Appellant contends that "Pallas is directed to glyphosate herbicide
formulations and fails to provide any motivation to select the claimed
surfactant and auxin herbicide combination" and asserts that a "passing
reference to auxin herbicides (namely 2,4-D) in a patent application that is
otherwise devoted entirely to glyphosate simply does not direct one skilled
in the art to the create an auxin herbicide formulation of the type claimed in
the currently pending claims" (App. Br. 3). Appellant similarly contends
that "Wright suffers from exactly the same deficiency as Pallas - it fails to
teach an auxin type herbicide formulation as claimed" (App. Br. 4).
We do not find this argument persuasive because the "use of patents
as references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain." In re Heck, 699
F.2d 1331, 1333 (Fed. Cir. 1983). Therefore, the teachings of Pallas and
Wright are "not limited to the specific invention disclosed." In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006).
Moreover, Pallas clearly contemplates the use of auxin-type
herbicides in herbicidal compositions with surfactants, specifically
identifying such compositions, among others, in a list of desirable
components (FF 2). Further Pallas exemplifies a composition comprising
the auxin-type herbicide 2,4-D in a composition comprising surfactant
components (FF 2). Similarly, Wright teaches the use of auxin-type
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herbicides in herbicidal compositions (FF 3, 4). Therefore, we agree with
the Examiner that Pallas and Wright would have provided the ordinary
artisan reason to form compositions that include auxin-type herbicides
including 2,4-D with surfactants (see Ans. 12; FF 1--4).
Appellant also argues that there is no motivation to choose auxin,
because Pallas teaches a "catch-all compilation of over fifty herbicides"
(App. Br. 3).
We do not find this argument persuasive because even if Pallas
provides a "catch-all compilation" of different herbicides, the disclosure of
"a multitude of effective combinations does not render any particular
formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989). "[P]icking and choosing may be entirely proper
in the making of a 103, obviousness rejection." In re Arkley, 455 F.2d 586,
587 (CCPA 1972). Pallas teaches that any of these herbicides can be used
alone or in combination and teaches many different auxins (2,4-D, 2,4-DB,
dicloroprop, MCP A, MCPB, mecoprop, dicamba, clopyralid, picloram,
triclopyr and quinclorac) in a list of different herbicides that can be used
(Pallas ,r,r 59---62). These compounds were known to have herbicidal
properties and were taught to be preferred herbicides (FF 3).
Appellant contends Wright "is directed entirely to glyphosate
formulations, with only a passing reference to other co-herbicides like 2,4-D
which exist only in combination with glyphosate as the primary herbicide,
but never by themselves without glyphosate" and Wright is relied upon to
teach a stability effect that is not claimed (App. Br. 4--5). Appellant also
argues that one cannot extrapolate from glyphosate to auxin type herbicides
(Reply Br. 5-6).
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We do not find this argument persuasive. As explained above, the
claims read on the combination of the elected surfactant with a mixture that
has both glyphosate and an auxin type herbicide. Pallas and Wright both
teach compositions with surfactant in combinations that include glyphosate
and auxin type herbicides (FF 1-5). Therefore, no extrapolation would have
been required because the ordinary artisan would have selected surfactants
with the stability improvements disclosed by Wright in order to improve the
stability of the glyphosate in the mixture (FF 11-12) that also contained the
auxin type herbicide (FF 2). That the prior art has a different reason or
motivation than Appellant to combine the herbicides and surfactants of
Pallas and Wright to obtain a composition identical to that required by the
claims is of no moment as long as there is a sufficient reason to make the
combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("[T]he
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.").
Appellant then contends that Wright teaches away by stating that "it
has been observed that combining such a nonionic surfactant with a cationic
surfactant ( e.g. tallowamine ethoxylate) tends to compromise the fast
development of symptoms in treated plants" (App. Br. 5; citing Wright ,r
37).
We are not persuaded. In Medichem, the court stated that
obviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine ...
"The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullify its use as a basis to
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Application 13/580,230
modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be
weighed against one another" ... Where the prior art contains
"apparently conflicting" teachings (i.e., where some references
teach the combination and others teach away from it) each
reference must be considered "for its power to suggest solutions
to an artisan of ordinary skill .... consider[ing] the degree to
which one reference might accurately discredit another."
(Medichem, S.A. v. Rolabo, S.L., 437 F.2d 1156, 1165 (Fed. Cir. 2006).
As we weigh the benefits here, we recognize that while Wright does
state that combining such a nonionic surfactant with a cationic surfactant
( e.g. tallowamine ethoxylate) tends to compromise the fast development of
symptoms in treated plants, Wright also explicitly states that
[ d]ue to the somewhat limited solubility characteristic of
pelargonic acid as well as other fatty acids and derivatives and
the optional inorganic ammonium salt at higher concentrations
in aqueous formulations, when formulating concentrates, it may
be advantageous to employ higher proportions of a surfactant
component and/ or surfactants or surfactant combinations
different from those used in the preparation of R TU
formulations and adapted to maintain sufficient solubility of the
various components. Examples of the types of suitable
surfactants and surfactant combinations that may be used in the
surfactant component when formulating concentrate
compositions of the present invention include the previously
described nonionic surfactant component comprising an
alkoxylated nonaromatic alcohol, preferably combined with
additional surfactants to enhance stability of the concentrate.
(Wright if 53).
Therefore, while Wright acknowledges that this combination may
compromise fast development, Wright also recommends using the
combination to enhance stability. Similar to Medichem, Wright teaches
advantages and disadvantages of the combination of surfactants.
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Furthermore, Wright is aware of the disadvantages but nonetheless still
recommends use of the combination for improved stability (FF 10-12 ).
Thus, we find, on balance, the ordinary artisan would have found Wright
supportive of the combination in order to improve stability and because an
"obvious composition does not become patentable simply because it has
been described as somewhat inferior to some other product for the same
use." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellant argues that the "combination of surfactants possess a
surprising and unexpected result of increased efficacy over the individual
surfactant components and other surfactants known in the art. See Table 1"
(App. Br. 6; cf. Reply Br. 5 "there is nothing in Wright from which the
ordinary artisan could have predicted that the combination of at least one
alkoxylated alcohol surfactant and at least one alkoxylated quaternary
ammonium surfactant would enhance the efficacy of auxin-type herbicides
to a significantly greater degree than when using only one of such
surfactants alone, or do so to the degree reported by the applicant.")
We find these arguments unpersuasive because there is no indication
that Appellant compared the results to the closest prior art of Pallas. See In
re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art."). Appellant
presented no comparison with the exemplary composition of Pallas that
included an auxin type herbicide, glyphosate, and surfactants (see FF 2).
Moreover, Appellant has not demonstrated that the increase in efficiency
over individual surfactants was unexpected. See In re Soni, 54 F.3d 746,
750 (Fed. Cir. 1995) ("It is well settled that unexpected results must be
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established by factual evidence. Mere argument or conclusory statements
... [do] not suffice.") Instead, Appellant's counsel asserts an unexpected
result but does not point to evidence in the Specification or other sources
that supports this position.
Appellant argues that "the considerable time lapse between the Pallas
reference (published in 2003) and the Applicant's 2010 filing date is
evidence of the long-felt yet unmet need for the claimed herbicidal
formulations" (App. Br. 6).
We find this unpersuasive because "the mere age of the references is
not persuasive of the unobviousness of the combination of their teachings,
absent evidence that, notwithstanding knowledge of the references, the art
tried and failed to solve the problem" In re Wright, 569 F.2d 1124, 1127,
( CCP A 1977). Appellant has provided no evidence addressing this point.
Soni, 54 F.3d at 750.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that Pallas
and Wright render the claims obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 as obvious over the
combination of Pallas and Wright. Pursuant to 37 C.F.R. § 4I.37(c)(l), we
also affirm the rejection of claims 2-8, 10, 14, and 16-19 as these claims
were not argued separately.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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