Ex Parte LiuDownload PDFPatent Trial and Appeal BoardJan 27, 201612189377 (P.T.A.B. Jan. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/189,377 08/1112008 25212 7590 01/29/2016 DOW AGROSCIENCES LLC 9330 ZIONSVILLE RD INDIANAPOLIS, IN 46268 FIRST NAMED INVENTOR Lei Liu 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. 64604A US 6933 EXAMINER CHUI, MEI PING ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 01129/2016 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEI LIU Appeal2013-005198 Application 12/189,377 Technology Center 1600 Before DEMETRA J. MILLS, MELANIE L. McCOLLUM and TA WEN CHANG, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal2013-005198 Application 12/189,377 STATEMENT OF CASE The Specification discloses that the "invention concerns a novel stable emulsion composition that hinders interactions across the oil-water interface between ingredients in the oil phase and those in the aqueous phase." Spec. 1. Agricultural applications for the emulsion are specifically disclosed. Id. The Specification additionally discloses that known causes of formulation instabilities include physical instabilities such as Ostwald ripening. Id. According to the Specification, the emulsion is stabilized by a mixture of polymeric surfactants, and [ t ]he first polymeric surfactant is comprised of an ABA block copolymer having a hydrophilic portion of polyethylene oxide (PEG) and a hydrophobic portion of 12-hydroxystearic acid. A preferred example of such a polymeric surfactant is the commercial surfactant Atlox™ 4912 (trademark of Uniqema), having a molecular weight of about 5,000. Spec. 4, 7. The following claims are representative. 1. A stable oil-in-water emulsion which comprises: a) a discrete oil phase comprising oil active ingredients, oil-soluble active ingredients, oil adjuvant or oil solvent, which can react or interact with ingredients in the continuous aqueous phase to cause a chemical or a physical instability; b) a continuous aqueous phase comprising water, and water soluble or water dispersible ingredients; c) a first polymeric surfactant comprising an ABA block copolymer having a hydrophilic portion of polyethylene oxide (PEG) and a hydrophobic portion of 12-hydroxystearic acid in an amount from about 1 g/L to about 200 g/L, and a second 2 Appeal2013-005198 Application 12/189,377 polymeric surfactant comprising a polyalkylene glycol ether in an amount from about 1 g/L to about 200 g/L; and d) optionally, other inert formulation ingredients. 3. The emulsion of Claim [ 1 in which the chemical instability is hydrolysis of an oil-soluble ester herbicide by the interaction with the aqueous phase,] which comprises: a) a discontinuous oil phase comprising from about 1 g/L to about 700 g/L of triclopyr butoxyethyl ester; b) a continuous aqueous phase comprising from about 100 g/L to about 990 g/L of water and from about 1 g/L to about 300 g/L of a salt of aminopyralid; c) from about 1 g/L to about 200 g/L of a first polymeric surfactant comprising an ABA block copolymer having a hydrophilic portion of polyethylene oxide (PEG) and a hydrophobic portion of 12-hydroxystearic acid, and from about 1 g/L to about 200 g/L of a second polymeric surfactant comprising a polyalkylene glycol ether; and d) optionally, other inert formulation ingredients. 5. The emulsion of Claim [ 1 in which the physical instability is crystal growth due to Ostwald Ripening,] which comprises: a) a discontinuous oil phase comprising from about 1 g/L to about 700 g/L of methyl soyate; b) a continuous aqueous phase comprising a dispersion of from about 1 g/L to about 500 g/L of penoxsulam, from about 1 g/L to about 500 g/L of diflufenican and from about 200 g/L to about 990 g/L of water; c) from about 1 g/L to about 200 g/L of a first polymeric surfactant comprising an ABA block copolymer having a hydrophilic portion of polyethylene oxide (PEG) and a 3 Appeal2013-005198 Application 12/189,377 hydrophobic portion of 12-hydroxystearic acid, and from about 1 g/L to about 200 g/L of a second polymeric surfactant comprising a polyalkylene glycol ether; and d) optionally, other inert formulation ingredients. Cited References Mulqueen et al. Schrof et al. Tank et al., WO 95/07614 US 2004/0266626 Al US 2007 /0027034 Al March 23, 1995 Dec. 30, 2004 Feb. 1, 2007 Grounds of Rejection 4--22. 1. Claims 1-2 and 4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mulqueen. 2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mulqueen in view of Tank. 3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mulqueen in view of Tank and Schrof. FINDINGS OF FACT The Examiner's findings of fact are set forth in the Answer at pages PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F .2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). The Board "determines the scope of claims in patent 4 Appeal2013-005198 Application 12/189,377 applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A prior art patent disclosed a genus of 1200 effective combinations of compounds, including claimed combination. The Federal Circuit held that "disclos[ ure of] a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). 5 Appeal2013-005198 Application 12/189,377 Rejection 1 We agree with the Examiner's fact finding, statement of the rejection and responses to Appellant's arguments as set forth in the Answer. We find that the Examiner has provided evidence to support a prima facie case of obviousness. We provide the following additional comment to the Examiner's argument set forth in the Final Rejection and Answer. Br. 3. Appellant argues, among other things, that the Examiner failed to establish a prima facie case of obviousness and thereby erred in rejecting claims 1-5 under 35 USC§ 103(a) because the cited references fail to demonstrate (or even suggest) the claimed composition comprising a first polymeric surfactant comprising an ABA block copolymer having a hydrophilic portion of polyethylene oxide (PEG) and a hydrophobic portion of 12-hydroxystearic acid in an amount from about 1 g/L to about 200 g/L, and a second polymeric surfactant comprising a polyalkylene glycol ether in an amount from about 1 g/L to about 200 g/L. Appellant further argues that Mulqueen et al. identifies a large number of polymeric stabilizers (page 10, line 34 through page 13, line 4), including ABA block type surfactants made by esterifying 12- hydroxystearic acid with polyalkylene glycols. However, the preferred stabilizers listed at page 12, line 13 through page 13, line 4 do not recommend ABA block type surfactants made by esterifying 12- hydroxystearic acid with polyalkylene glycols. Similarly, Mulqueen et al. identifies polyalkylene glycol ether as a nonionic surfactant useful in preparing oil-in-water emulsions, but does not identify polyalkylene glycol ether as a preferred surfactant. ... 6 Appeal2013-005198 Application 12/189,377 Br. 4. The Examiner responds arguing that This argument is not persuasive because the claimed ABA block type surfactant and the claimed polyalkylene glycol ether surfactant as set forth above are definitively disclosed by MulQueen at multiple locations in the reference (see MulQueen: page 12, lines 15-23; page 13, lines 29-33). MulQueen also definitively exemplifies or lists the claimed polyhydroxystearic acid PEG ester and the ethoxylated alcohol or ethylene oxide/propylene oxide block copolymer as the suitable stabilizer and surfactant materials use in the examples (see MulQueen: page 22, lines 5-8 & 30-31 ). It should be noted that the instant specification discloses that an example of the polyalkylene glycol ether (the second polymeric surfactant) as claimed can be the surfactant ethylene oxide-propylene oxide block copolymer or alcohol alkoxylate (see instant specification: page 7, lines 16-20). Therefore, MulQueen clearly specifically suggests the ABA block copolymer surfactant and the polyalkylene glycol ether surfactant as claimed are suitable ingredients for the oil-in-water emulsion, even [though] Mul Queen may not expressly refer [to] them as the preferred one. Importantly, MulQueen does not teach away [from] us[ing] or select[ing] this ABA block copolymer surfactant made by esterification of 12-hydroxystearic acid with polyalkylene glycol (e.g. polyhydroxystearic acid PEG ester) and this polyalkylene glycol ether (e.g. ethoxylated alcohol or ethylene oxide/propylene oxide block copolymer) for the oil-in- water emulsion. Ans. 10-11. We find that the Examiner has the better argument. The disclosure of a multitude of effective combinations in Mulqueen does not render any particular formulation less obvious. Merck & Co. Inc., 874 F.2d at 807. In addition, Appellant has presented no evidence, and points to no evidence of record, that other oil-in-water combinations in Mulqueen would 7 Appeal2013-005198 Application 12/189,377 not have provided one of ordinary skill in the art with results similar to that of the combination of ABA polymer and PEG surfactants. With no evidence, Appellant has not established that one of ordinary skill in the art would find that other combinations in Mulqueen would provide unpredictable results. No reply Brief has been filed according to Patent Office records. Furthermore, Mulqueen discloses that the stabilizer may be selected from ATLOX 4912 (Example X, page 22, line 30), which is the same ABA block polymer disclosed in the Specification (Spec. 7). Appellant argues that Rather than reducing the interfacial tension between the aqueous phase and the dispersed phase to reduce the tendency for droplet coalescence as described by Mulqueen, the unique combination recited by claim 1 of first and second polymeric surfactants, increases the phase barriers by building a rigid interface between the oil and aqueous phases to minimize the phase interactions that result in crystal formation or precipitation. One of ordinary skill in the art seeking to prevent cr;stal formation in an oil-in \~1ater emulsion due to the interaction of ingredients in the different phases that cause a chemical or a physical instability would not be led to select a combination of a non-preferred stabilizer and a non-preferred surfactant from the many mentioned by Mulqueen et al. whose solution was to reduce interfacial tension rather than form a rigid interface between the phases. Picking and choosing elements from such large lists without any further motivation within Mulqueen is only possible through the impermissible use of hindsight and is not a basis for establishing a prima facie case of obviousness. Br. 4. We are not persuaded. We agree with the Examiner that MulQueen clearly suggests that the inclusion of the stabilizers/ surfactants into the emulsion can prevent or depress migration of the non-aqueous materials (i.e. oily pesticidal 8 Appeal2013-005198 Application 12/189,377 actives) transport through the continuous aqueous phase. It should be noted that the instant claims are drawn to a stable oil- in-water emulsion comprising a combination of a first and a second polymeric surfactants, a continuous aqueous phase, and a discrete oil-phase containing an oil constituent as active component, wherein the oil constituent can react or interact with ingredients in the continuous aqueous phase to cause a chemical instability (which is hydrolysis) or a physical instability (Ostwald ripening). For the physical instability is Ostwald instability as claimed, MulQueen clearly teaches a two phase (oil-in-water) dispersion pesticidal formulation comprising: (i) a continuous aqueous phase and (ii) a discontinuous phrase, wherein said discontinuous comprises a non-aqueous material capable of transport through the continuous aqueous phrase to cause Ostwald ripening of the dispersion, and wherein the discontinuous phase further comprises a stabilizer in an amount sufficient to depress migration of the non-aqueous material through the aqueous phase, and thereby diminish or prevent Ostwald ripening of the dispersion. Therefore, MulQueen clearly teaches a similar oil-in-water emulsion capable of overcome[ing] the same physical instability (Ostwald ripening) as presently claimed. For the chemical instability is hydrolysis of an oil-soluble ester herbicide present in the oil-phase (the discrete phase) by the interaction with the aqueous phase as claimed, it should be noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties appellant discloses and/ or claims are necessarily present. ... Ans. 11-12. Moreover, the motivation to combine references (or disclosures in a single reference) does not have to be identical to the applicants to establish obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). 9 Appeal2013-005198 Application 12/189,377 Appellant has failed to rebut the Examiner's prima facie case of obviousness with sufficient argument or evidence, and the obviousness rejection is affirmed. Re} ections 2 and 3 With respect to rejections 2 and 3, the Examiner additionally relies on Tank and Schrof for the disclosure of specific pesticides and herbicides in dependent claims 3 and 5. With regard to claim 5, Appellant argues that neither Mulqueen, Tank, nor Schrof, nor their combination teach, suggest, or make obvious that diflufenican has enough solubility in methyl soyate that rapid crystal growth is a problem in oil-in-water emulsions and that such as problem can be solved by the judicious selection of a first polymeric surfactant comprising an ABA block copolymer having a hydrophilic portion of polyethylene oxide (PEG) and a hydrophobic portion of 12-hydroxystearic acid and a second polymeric surfactant comprising a polyalkylene glycol ether. Br. 6-7. A similar argument is presented for claim 3. Id. As indicated above, the motivation to combine references does not have to be identical to the applicants to establish obviousness. In re Kemps, 97 F.3d at 1430. Thus, it is not necessary that the cited references disclose that rapid crystal growth is a problem in oil-in-water emulsions and that such as problem can be solved in the manner solved by Appellant. The Examiner has provided a sufficient reason, or motivation to combine the references, i.e., to provide stable aqueous dispersions and diminish or prevent Ostwald ripening of the dispersion. Mulqueen, abstract. Appellant having made no additional arguments with respect to rejections 2 and 3, these rejections are affirmed for the reasons of record. 10 Appeal2013-005198 Application 12/189,377 CONCLUSION OF LAW The cited references support the Examiner's obviousness rejections, which are affirmed for the reasons of record. All pending claims fall. TIME PERIOD 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 11 Copy with citationCopy as parenthetical citation