Ex Parte 6210459 et al

Patent Trial and Appeal Board

Jun 7, 2016

95002388 (P.T.A.B. Jun. 7, 2016)

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.
95/002,388 09/15/2012 6210459 19626.0006.RXUS00 2485
7590 06/07/2016
HOVEY WILLIAMS LLP
10801 MASTIN BOULEVARD
SUITE 1000
OVERLAND PARK, KS 66210
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/07/2016 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
____________

SHELL OIL COMPANY
Requester and Appellant

v.

SPECIALTY FERTILIZER PRODUCT, LLC
Patent Owner and Respondent
____________

Appeal 2015-001671
Reexamination Control 95/002,388
Patent 6,210,459 C11
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON REHEARING

This decision on rehearing is in response to Third Party Requester’s
Request for Rehearing Pursuant to 37 C.F.R. §41.79 for Correction of

1 US Patent 6,210,459 B1, issued April 3, 2001, to John Larry Sanders, was
subject to Ex Parte Reexamination 90/011,759, for which an Ex Parte
Reexamination Certificate 6,210,459 C1 was issued on October 4, 2012
(hereinafter the “’459 patent”). Claims 2, 4, 6, 8–10, 12, 14–16, and 45–156
of Reexamination Certificate 6,210,459 C1 are subject to Inter Partes
Reexamination in this proceeding.
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Typographical Errors, filed August 18, 2015, which seeks correction of the
claim identified in the new grounds of rejection on page 21 of the original
decision, mailed July 28, 2015 (“Decision”). Indeed, the new grounds of
rejection of the Decision included a typographical error in that the first
rejection inadvertently omitted claims 50-59 and the second rejection
inadvertently omitted claim 149. Accordingly, we amend the New Grounds
of Rejection I and II from page 21 of the Decision as follows (with brackets
showing deletion and underlining showing additions):
I. Claims 2, 4, 6, 8, 9, 12, 14–16, 45–[49]59, 72–86, 99–113,
126–131, 137–139, 143,145–148, 150–152, and 154–155 under
35 U.S.C. § 103(a) as obvious over Bexton, in view of one of
Norton, Sharples, or Barber (Grounds 1, 2, and 4);
II. Claims 10, 132–136, 140–142, 144, 149, 153, and 156 under
35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton,
Sharples, or Barber, and Jones (Grounds 5 and 6);
This decision on rehearing is also in response to Patent Owner’s
Request for Rehearing Pursuant to 37 C.F.R. § 41.79, filed August 27, 2015
(“Request”). In rendering this decision on rehearing, we also considered
Requester Comments in Opposition to Patent Owner’s Request, filed
September 28, 2015 (“Comments”).
Patent Owner contends that the Board misapprehended or overlooked
the following:
(1) legal precedent regarding consideration of the breadth of prior art
disclosures in obviousness analysis (Request 2-3);
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(2) the reliability of the Hutter Declaration in light of his being an
interested party and the errors identified therein (Request 3-9);
(3) the plot relied upon in our Decision was based on back-
calculations made using the Sanders claim limitations as starting
points, which is improper hindsight analysis (Request 9-10);
(4) Patent Owner was denied due process as being unable to directly
cross-examine Requester’s declarants in this proceeding (Request
10-13);
(5) the Board’s analysis of Patent Owner’s evidence of commercial
success ignores an aspect of novelty of the invention recited in the
claims, namely that the granules produce “lower pH portions
within the soil” (Request 18); and
(6) the Board’s commercial success analysis erred by requiring Patent
Owner to establish commercial success vis-à-vis the closest prior
art in an instance where the closest prior art was not a marketed
product, in contrast to accepted principles of law that the
commercial success is presumed to be due to the patented
invention. Request 16-19.
Breadth of Prior Art Disclosure
We find no error in our discussion on pages 13-16 of the Decision
discussing why the breadth of the prior art range of ammonium sulfate in
Bexton is distinguishable from the cases cited by Patent Owner where the
breadth suggests a lack of predictability because Bexton “teaches
components that would perform predictably when the concentrations are
routinely varied.” Decision 16.
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Reliability of Hutter Declaration
Patent Owner has not shown that our Decision relied upon erroneous
facts provided in the Hutter Declaration. The Decision cites to the Hutter
Declaration twice.2 The first noting Requester’s support for finding
Bexton’s sole example teaching “the use of a greater concentration of
ammonium sulfate (60-90% by weight) than elemental sulfur (1-40% by
weight).” Decision 8. Patent Owner has shown no error with respect to this
finding, and Hutter’s observation appears to be consistent with the teachings
of Bexton. See Bexton 14:1-5.
The second citation to Hutter’s Declaration is in support of a finding
that Sharples teaches a ratio of ammonium phosphate to ammonium sulfate
of 2:1. Decision 9. Again, Hutter’s testimony appears to be consistent with
the teachings of Sharples. See Sharples 4:23-25, Example V. Patent Owner
does not dispute this fact, but rather argues that the disclosed ratios are
directed to powdered products and not granulated products. Request 8. We
find no error because the rejection did not rely on Sharples for describing a
granulated product, as a granulated product is described in Bexton. See
Decision 6 and 8-9. Moreover, the Decision stated that
We need not even reach the particular ratio of ammonium
sulfate to ammonium phosphate taught by Norton, Barber, and
Sharples as being particularly known in the art, because the
skilled artisan would have been able to determine a composition
having optimum amounts of elemental sulfur, ammonium

2 The Decision also notes Hutter in footnote 16, particularly contrasting a
lack of any evidence on the part of Patent Owner that the fertilizer
compositions of Bexton do not create lower pH portions inherently when
applied to the soil as granules. Decision 17.
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phosphate, ammonium sulfate, and trace micronutrients by
routine experimentation.
Decision 16. Accordingly, our reliance on the teachings of Sharples was not
particularly crucial to our decision.
Plot presented in the Second Rush Declaration
The Decision references the plot “first presented by the Patent Owner
(see Second Rush Decl. 9, ¶ 15a).” Decision 10. The Decision does not
reference the allegedly erroneous plot submitted by the Hutter Declaration.
See Request 5-7. Patent Owner does not dispute that the plot in the Second
Rush Declaration is an accurate representation of the scope of the teaching
of amounts of ammonium sulfate and elemental sulfur from Bexton
(represented by the largest trapezoid defined by four bold lines) or the scope
of the amounts of ammonium sulfate and elemental sulfur recited in the
claims (represented by the small pentagon in the lower left of the plot). See
Decision 10-11, RAN 9, Second Rush Decl. 8-10, and Request 5-7 and 9-10.
We are not persuaded that the Rush plot constitutes hindsight analysis.
Rather, the plot is a graphical interpretation of an aspect of the claims in
dispute as compared to a graphical interpretation of the teachings of the prior
art. Nor is the plot particularly or significantly relied upon in the Decision.
Rather, the Decision turns on our determination that a skilled artisan would
have had predictable results from using “any amount” of elemental sulfur
and ammonium sulfate within the broadest ranges disclosed in Bexton for
the purposes described therein. See Decision 13.
Due Process
We decline to address the due process issues raised on appeal in this
case and again on request for rehearing. See Patent Owner’s Respondent
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Brief (“PO Res. Br.”) 11, n. 3; Request 10-13. A lack of ability for direct
cross-examination generally does not generate due process violations in inter
partes reexamination cases. See Abbott Laboratories v. Cordis Corp., 710
F.3d 1318, 1328 (Fed. Cir. 2013) (“35 U.S.C. § 24 only empowers a district
court to issue subpoenas for use in a proceeding before the PTO if the PTO’s
regulations authorize parties to take depositions for use in that proceeding.
We therefore hold that section 24 subpoenas are not available in inter partes
reexamination proceedings.”).
Commercial Success
Patent Owner contends that the Board erred in finding that “nothing
rebuts that merely having these elements in any amount would result in the
same success.” Request 17. Patent Owner points to precedent presents
evidence of commercial success of a product “disclosed and claimed in the
patent . . . it is presumed that the commercial success is due to the patented
invention.” Id. (quoting Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299,
1312 (Fed. Cir. 2006)). Moreover, Patent Owner argues that this
presumption should be give considerable weight because Patent Owner’s
evidence is unrebutted by the Requester. Id. Patent Owner further argues
that the Board’s reasoning “makes it impossible to establish commercial
success in instances where no one has chosen to sell what the Board deems
to be the closest prior art.” Id. at 18-19.
Patent Owner has the burden of persuasively showing that the novel
parts of the invention that are determined prima facie obvious over the prior
art, i.e., the specific concentrations of elemental sulfur and ammonium
sulfate, are nonetheless actually not obvious. Any presumption does not
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attach to the patented invention unless Patent Owner can show both that
product asserted to be commercially successful is the claimed invention and
that the commercial success is attributable to aspects of the invention not
readily available in the prior art. J.T. Eaton & Co., Inc. v. A. Paste & Glue
Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“If Eaton can demonstrate that
the commercial success of its product derives from the claimed invention
and is attributable to something disclosed in the patent that was not readily
available in the prior art, it is entitled, on the record in this case, to the
presumption that the commercial success of its product is attributable to its
patented invention.); Ormco, 463 F.3d at 1312 (“[I]f the commercial success
is due to an unclaimed feature of the device, the commercial success is
irrelevant. So too if the feature that creates the commercial success was
known in the prior art, the success is not pertinent.”) (footnotes omitted);
Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983)
(holding claims obvious despite purported showing of commercial success
when patentee failed to show that “such commercial success as its marketed
system enjoyed was due to anything disclosed in the patent in suit which was
not readily available in the prior art”). See also Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (“When the
thing that is commercially successful is not coextensive with the patented
invention—for example, if the patented invention is only a component of a
commercially successful machine or process—the patentee must show prima
facie a legally sufficient relationship between that which is patented and that
which is sold.”).
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In this case, as explained in the Decision, the prior art describes
fertilizers comprising the claimed salts, elements, and micronutrients. Patent
Owner has not persuasively demonstrated that the commercial success is due
to the broad ranges of these components in claim 4, rather than just due to
the presence of the components themselves, which were known in the cited
prior art to be beneficial in a soil nutrient composition. In other words,
Patent Owner has not established that the commercial success is a result of a
claimed feature which was not “readily available” in the prior art, e.g.,
through routine optimization.
Requester need not provide additional evidence of obviousness when
the rebuttal evidence presented by Patent Owner is not deemed persuasive to
overcome the prima facie case of obviousness. Yet, Requester did provide
argument and evidence to rebut Patent Owner’s contention. See Req. App.
Br. 41-42 (citing the “Peacock I” and “Peacock II” patents) and Req. App.
Br. 43 (arguing commercial success is due to unclaimed features of the
invention, namely the presence of ammonium phosphate as a major
component of the invention). In particularly, Requester argued, similar to
the Board’s determination, that
in view of the strong showing of prima facie obviousness
discussed above, even if nexus were shown, it carries no
weight. Tokai Corp v. Easton Enterprises, 632 F.3d 1358, 1370
(Fed. Cir. 2011) (“Even if [the patentee] could establish the
required nexus, a highly successful product alone would not
overcome the strong showing of obviousness”) quoting Media
Technologies Licensing, LLC v. Upper Deck Co., 596 F.3d
1332 (Fed. Cir 2010).
Req. App. Br. 43. Thus, Patent Owner cannot assert that its evidence of
commercial success was “unrebutted” by Requester.
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Patent Owner further contends that the recited invention included
another novel aspect over Bexton, namely “lower pH portions within the
soil.” Request 18. Patent Owner has presented no persuasive evidence to
support a finding that this aspect of the invention is novel, as discussed in
detail in the Decision. See Decision 17, n. 16.
Patent Owner has not shown the reasoning provided in the Decision to
be untenable or that a change in the Decision is warranted.
Based on the foregoing, we have granted Patent Owner’s request to
the extent that we have reconsidered the Decision, but we deny Patent
Owner’s request to alter our decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).

REQUESTER’S REQUEST IS GRANTED; PATENT OWNER’S
REQUEST IS DENIED

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Reexamination Control 95/002,388
Patent 6,210,459 C1

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PATENT OWNER:
HOVEY WILLIAMS LLP
10801 Mastin Boulevard
Suite 1000
Overland Park, KS 66210

THIRD-PARTY REQUESTER:
NOVAK DRUCE & QUIGG, LLP (NDQ REEXAMINATION GROUP)
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002