Ex Parte Baseeth et alDownload PDFPatent Trial and Appeal BoardJul 28, 201713603617 (P.T.A.B. Jul. 28, 2017) 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. 13/603,617 09/05/2012 Shireen Baseeth SI.0117.US02 1039 54245 7590 08/01/2017 ARCHER DANIELS MIDLAND COMPANY 4666 FARIES PARKWAY DECATUR, IL 62526 EXAMINER ARNOLD, ERNST V ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 08/01/2017 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): patent @ adm. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIREEN BASEETH and BRUCE SEBREE Appeal 2016-006398 Application lS/603,6171 Technology Center 1600 Before FRANCISCO C. PRATS, RYAN H. FLAX, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method of dispersing a compound in an aqueous solution. The Examiner rejected the claims on appeal as obvious under 35 U.S.C. § 103(a). We affirm. STATEMENT OF THE CASE The Specification discloses: “[t]his invention is directed towards a process for producing biobased and bio-degradable microemulsions comprising agricultural adjuvants, compositions and uses thereof. The 1 According to Appellants, the real party in interest is Archer-Daniels- Midland Company. App. Br. 3. Appeal 2016-006386 Application 13/603,617 invention also relates to methods of using such microemulsions to disperse a compound in water.” Spec. 12. Claims 12, 15 and 17—26 are on appeal.2 Claim 12 is illustrative and reads as follows: 12. A method of dispersing a compound in an aqueous solution, the method comprising: obtaining a microemulsion comprising: an organic acid selected from the group consisting of propionic acid, methyl acetic acid, acetic acid, lactic acid, fumaric acid, succinic acid, and combinations of any thereof; crude lecithin; vegetable fatty acids; water; and a co-surfactant selected from the group consisting of sorbitan monostearate, polyoxyethylene ester of rosin, polyoxyethylene dodecyl mono ether, polyoxyethylenepolyoxypropylene block copolymer, polyoxyethylene monolaurate, polyoxyethylene monohexadecyl ether, polyoxyethylene monooleate, polyoxyethylene mono(cis- 9-octadecenyl)ether, polyoxyethylene monostearate, polyoxyethylene monooctadecyl ether, polyoxyethylene dioleate, polyoxyethylene distearate, polyoxyethylene sorbitan monolaurate polyoxyethylene sorbitan monooleate, polyoxyethylene sorbitan monopalmitate, polyoxyethylene sorbitan monostearate, polyoxyethylene sorbitan trioleate, polyoxyethylene sorbitan tristearate, polyglycerol ester of oleic acid, polyoxyethylene sorbitol hexastearate, polyoxyethylene monotetradecyl ether, polyoxyethylene sorbitol hexaoleate, tail- oil, hexaester with sorbitol, ethoxylated castor oil, ethoxylated soybean oil, ethoxylated polyoxyethylene sorbitol tetraoleate, fatty acids, mixed esters with glycerol and polyethylene glycol, C9-C16 ethoxylated derivatives of any thereof, and combinations of any thereof; 2 As discussed below, Appellants have canceled claims 1—3, 5, 6, 8, 9, and 11. 2 Appeal 2016-006386 Application 13/603,617 mixing the microemulsion and a compound selected from the group consisting of a biocide, pesticide, herbicide, fungicide, and miticide in water, thus dispersing the compound in the aqueous solution; wherein the microemulsion is a clear, isotropic, thermodynamically stable liquid. Reply Br. 4. The Examiner rejected claims 1—3, 5, 6, 8, 9, 11, 12, 15 and 17—26 under 35 U.S.C. § 103(a) as obvious over the combination of Rowley,3 Herold,4 Ahlnas,5 and Weed Control.6 ANALYSIS The Examiner found that Rowley disclosed stable microemulsion formulations containing lecithin, at least one surfactant, a crop protection product (including, e.g., glyphosate salt), an acidifying agent such as lactic or propionic acid, oils, and carboxylic acids. Final Act. 4.7 The Examiner also found that Rowley disclosed vegetable fatty acids. Id. at 8. The Examiner acknowledged that Rowley did not disclose the specifically recited co-surfactants of claim 12, but found that Ahlnas and Herold supplied this element. Id. at 17. The Examiner found that Herold disclosed a microemulsion comprising an herbicide dissolved in surfactant and that Ahlnas disclosed 3 Rowley et al., US Patent Publication No. 2007/0078057 Al, published Apr. 5, 2007 (“Rowley”). 4 Herold et al., US Patent Publication No. 2006/0205601 Al, published Sept. 14, 2006 (“Herold”). 5 Ahlnas et al., US Patent No. 5,482,529, issued Jan. 9, 1996 (“Ahlnas”). 6 National Research Council (U.S.) Committee on Plant and Animal Pests, Subcommittee on Weeds, Weed Control, National Academies 243 (1968) (“Weed Control”). 7 Office Action mailed August 15, 2014 (“Final Act.”). 3 Appeal 2016-006386 Application 13/603,617 fertilizer preparations in the form of emulsion suspensions. Final Act 10, 14. The Examiner further found that Herold “directs the skilled artisan to fatty acid ethoxylates” and that Ahlnas taught to add “the ester of a polyol and a fatty acid, or a derivative of the ester such as an oily or fatty monoglyceride thereof.” Id. at 19. The Examiner concluded that since Rowley “already suggests] . . . adding acids and surfactants and Herold et al. and Ahlnas et al. teach various acids known for use with microemulsions as well as conventional surfactants” it would have been obvious to select the specific surfactants disclosed in Herold and Ahlnas. Id. at 19. The Examiner notes that this is “merely judicious selection of known acids or surfactants” and that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose.” Id. (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Ans. 2—8; Final Act. 2—23) and agree that the methods recited in the appealed claims would have been obvious over Rowley, Herold, Ahlnas, and Weed Control. We address Appellant’s arguments below. Claims 1—3, 5, 6, 8, 9, and 11 After the submission of their Appeal Brief, Appellants submitted an amendment cancelling claims 1—3, 5, 6, 8, 9, and 11. Reply Br. 1; see also Amendment 2 (filed October 27, 2015). Claims 1—3, 5, 6, 8, 9, and 11 are therefore canceled. See 37 C.F.R. § 41.33 (b)(1) (amendments filed after an appeal brief may be admitted to cancel claims “where such cancellation does not affect the scope of any other pending claim in the proceeding”). In view 4 Appeal 2016-006386 Application 13/603,617 of their cancellation, we do not substantively address arguments directed to these claims. Claims 12, 15 and 17—26 Appellants contend that Rowley does not disclose “crude lecithin” as required by claim 12 or “lecithin that has not been de-oiled” as required by claim 21. Appellants argue that the Examiner “erred in asserting that Rowley et al. discloses crude lecithin since the statements and working examples in Rowley et al. show[] that only de-oiled lecithins were able to form microemulsions.” App. Br. 10; see also, Reply Br. 2. We are not persuaded. Rowley expressly defines lecithin for use in its microemulsions as including unmodified — i.e. “crude” — lecithin. Rowley 33 (“Commercially, lecithin or unmodified lecithin refers to a complex product derived from animal or plant tissues that is commonly used as a wetting and emulsifying agent in a variety of commercial products.”); see also, id. at 137 (“Examples of modified or unmodified lecithin that can be used in the present invention include but are not limited to soy hydroxylated lecithin, soy acetylated lecithin, soy enzyme modified lecithin, and unmodified egg yolk lecithin.”). Rowley, thus, clearly contemplates using crude lecithin in its microemulsions. To the extent Appellants contend that crude lecithin would not work in Rowley’s microemulsions, it was their burden to provide evidence rebutting the presumption that Rowley enabled what it disclosed. In re Sasse, 629 F.2d 675, 681(CCPA 1980); see also In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). Here, Appellants have not directed us to evidence in the record to persuasively rebut the presumption that Rowley 5 Appeal 2016-006386 Application 13/603,617 enabled microemulsions that use crude lecithin. Moreover, a reference must be considered for all that it discloses, not merely the exemplified or preferred subject matter. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.”) (citations omitted). Claims 15 and 24 require that the herbicide be a salt. Appellants argue that Herold teaches away from using the salt form of an herbicide by requiring that its herbicides be in acid form and discussing the advantages of the acid form. App. Br. 12; see also. Reply Br. 2. We are not persuaded. Rowley discloses that “[m]any herbicides and pesticides have limited water solubility and significant [a]mounts of organic solvents must be used to effectively formulate them.” Rowley 1126. This results in “heightened environmental and toxicological concerns.” Id. Rowley also discloses that glyphosate, the active ingredient in Monsanto’s Roundup™ herbicide is “typically formulated as a salt, predominately the isopropylamine or potassium salt” in order to “improve the water solubility.” Id. at 1122. We agree with the Examiner that these teachings would have directed the skilled artisan to salts of glyphosate as a means for improving its water solubility. Final Act. 9. Herold uses the acid form of an herbicide in its microemulsions and, in the passage cited by Appellants (see Reply Br. 2 n. 3), discloses: the use of a herbicide compound in acid form, especially applied directly to a plant, and especially in a herbicide composition having an acidic and a relatively low pH (e.g., below 7, 6, or 5, 6 Appeal 2016-006386 Application 13/603,617 or below the pKa of a herbicide compound, or lower) can effect improvements in plant control. Herold 122. This is not sufficient to establish a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that a reference teaches away from a claimed invention if it “criticize[s], discredits], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention). As the statement in Herold regarding the advantages of the acid form of herbicides does not include any criticism of the salt form, we find that it does not constitute a teaching away. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists.”). Moreover, while Herold does not employ herbicide salts in its emulsions, Herold expressly notes in the background section of its disclosure that salt and ester forms of herbicides have been used in microemulsions rather than acid forms because they were considered to be “most easily dispersed or suspended in a microemulsion.” Herold 1 6. Appellants argue that claims 19 and 21 are non-obvious because they require a specific order of mixing. We are not persuaded because, as the Examiner explains (see Final Act. 22), the selection of any particular order of performing known process steps is generally prima facie obvious in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946); see also In re Gibson, 39 F.2d 975, 976-77 (CCPA 1930) (selection of any order of mixing ingredients is prima facie obvious). Here, Appellants have not directed us to any evidence that the order of mixing the emulsion led to new or unexpected results. Finally, Appellants argue that Ahlnas discloses emulsions rather than microemulsions and thus the person of ordinary skill would not “look to 7 Appeal 2016-006386 Application 13/603,617 combine the teachings of ordinary emulsions of Ahlnas et al. with the microemulsions of Rowley et al. and Herold et al.” App. Br. 12. We are not persuaded because, even if we were to credit Appellants’ argument, Appellants do not explain how the absence of Ahlnas changes the Examiner’s analysis so as to render the methods of the non-cancelled claims — i.e. claims 12, 15, and 17—26 —non-obvious. See generally, App. Br. 5— 12; Reply Br. 1—3. We note that the Examiner found each of the individual elements recited in claim 12 to be present in Rowley and Herold. See, Final Act. 4—14. Accordingly, we affirm the Examiner’s rejection of claims 12, 15 and 17—26 as obvious over Rowley, Herold, Ahlnas and Weed Control. SUMMARY For these reasons and those set forth in the Examiner's Answer, the Examiner’s final decision to reject claims 12, 15 and 17—26 is affirmed. Claims 1—3, 5, 6, 8, 9, and 11 are cancelled. 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation