Ex Parte Yang et alDownload PDFBoard of Patent Appeals and InterferencesFeb 15, 201211535450 (B.P.A.I. Feb. 15, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte KIM W. YANG, DENNIS LEE MURPHY, CASEY SHANE WHITE, MARIA N. PARFENOVA, JOE DOYLE McDANIEL, and JINREN KO __________ Appeal 2012-002644 Application 11/535,450 Technology Center 1600 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and FRANCISCO C. PRATS, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 4, 16, 17, 56-60, 62, and 63, directed to a lignin-pesticide complex formulated as a feed-through product. The claims have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2012-002644 Application 11/535,450 2 STATEMENT OF THE CASE The Specification discloses lignin-pesticide complexes “formulated as feed-through products to control insect infestation on livestock and pets” (Spec. ¶ 8). According to the Specification, “an intermolecular interaction (e.g., hydrogen bond) between the lignin and the pesticide” (id. at ¶ 27) “protect[s] pesticides such as methoprene against intestinal absorption and enzyme and microbial digestion in an animal and allow[s] the pesticide to pass through the animal into its manure, where it is released and bioavailable for effective pest control” (id.). As a result: (1) the side-effects (e.g., toxicity) associated with feed-through products are prevented, reduced and/or eliminated because the lignin-pesticide complexes are resistant to destruction in the stomach and intestinal absorption; and (2) lower doses of pesticide can be used in feed-through products because substantially more pesticide is found in the manure, thereby creating an economical means for using expensive pesticides. (Id.) Claims 1, 4, 16, 17, 56-60, 62, and 63 are pending and on appeal. Claims 10-15, 18-26, and 30-55 are also pending, but have been withdrawn from consideration; claims 2, 3, 5-9, 27-29, and 61 have been canceled. Claims 1 and 57 are representative of the subject matter on appeal: 1. A lignin-pesticide complex free of non-hydrogen bonded pesticide, said complex formulated as a feed-through product comprising: a lignin, wherein said lignin is an alkali lignin; a pesticide, wherein said pesticide is methoprene and wherein said lignin and said pesticide are associated as a non-covalent bonded complex through hydrogen bonding and the amount of pesticide in the complex is about 0.01% w/w to about 2% w/w, wherein said lignin-pesticide complex is substantially free of non-associated pesticide; and wherein said lignin-pesticide complex is free of non-hydrogen bonded pesticide and is formulated as a feed-through product. Appeal 2012-002644 Application 11/535,450 3 57. A feed-through formulation for controlling a manure breeding insect on an animal, wherein the feed-through formulation is free of non- hydrogen bonded pesticide, said formulation comprising: an alkali lignin; and an insect growth regulator (IGR) pesticide selected from the group consisting of methoprene and diflubenzuron, wherein said alkali lignin and IGR pesticide are associated as a non-covalent bonded complex through hydrogen bonding and the amount of pesticide in the complex is about 0.01% w/w to about 2% w/w, wherein said feed-through formulation passes through said animal into an excrement, wherein said lignin-pesticide complex is free of non-hydrogen-bonded pesticide and is formulated as a feed-through formulation. The Examiner relies on the following evidence: Dimitri et al. US 3,929,453 Dec. 30, 1975 Miller et al. US 4,166,107 Aug. 28, 1979 Methoprene Pesticide Fact Sheet, Environmental Protection Agency pp. 1-9 (2001). Claims 1, 4, 16, 17, 56-60, 62, and 63 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dimitri and Miller, “as evidenced by the Methoprene Pesticide Fact Sheet” (Ans. 5-11). We reverse. Issue The Examiner finds that Dimitri discloses “lignin-pesticide complexes comprising a biologically active agent dispersed throughout an alkali lignin in a ratio of 0.1:1 to 10:1 (9.09-90.9% w/w active agent), wherein the biologically active agent . . . is entrapped by the lignin macromolecular matrix or held by physical-chemical forces of van der Waal’s, hydrogen bonding or ion association” (Ans. 5). The Examiner notes that Dimitri teaches that the lignin matrix protects the pesticide against degradation by sunlight, rain, and microorganisms (id. at 7). The Examiner concedes that Appeal 2012-002644 Application 11/535,450 4 Dimitri “differ[s] from the instant claims in that the pesticides methoprene and diflubenzuron are not exemplified . . . [and] the weight percent of pesticide . . . [9.09 to 90.9%] is larger than the claimed weight percent from about 0.01 to 2%” (id. at 6). However, the Examiner finds that Miller discloses “a bolus for oral administration (i.e. feed through composition)” containing an insect growth regulator, e.g., methoprene or diflubenzuron, in “amounts as low as 1 part by weight up to 15 parts by weight” (id. at 7). The Examiner notes that Miller teaches that “pesticides often suffer from photodegradation, evaporation and losses due to rubbing and grooming” (id.). Based on these teachings, the Examiner concludes that it would have been obvious for one of ordinary skill in the art “to include methoprene or diflubenzuron in the alkali lignin composites as taught by Dimitri” (id.), “to help prevent methoprene or diflubenzuron losses via photodegradation, evaporation and losses due to rubbing and grooming” (id.). The Examiner also concludes that it would have been obvious “to decrease the relative amount of the pesticide in [Dimitri’s] lignin complex . . . because Miller teaches that amounts from 1 to 15 parts by weight methoprene and diflurobenzuron are effective at controlling dung breeding insects in livestock in feed through compositions (id. at 8). Appellants contend that Dimitri does not teach or suggest a feed- through composition, much less one containing about 0.01% w/w to about 2% w/w methoprene or diflubenzuron (App. Br. 6). Appellants contend that “a skilled artisan would have no motivation to decrease the amount of pesticide [in the composition] as is currently claimed” (id. at 7-8), because Dimitri teaches that “one of the key reasons the composites form a Appeal 2012-002644 Application 11/535,450 5 successful pesticide controlled release system is that the rate of release can be controlled by the ratio of pesticide to lignin matrix” (id. at 7), and “the claimed ratio is well outside the ratio disclosed by Dimitri” (id.). Appellants further contend that Miller “provide[s] no motivation to modify the pesticide content in the complexes of Dimitri . . . to arrive at the presently claimed feed-through product” (id. at 9). Appellants contend that Miller “do[es] not teach or even suggest the use of lignin” (id. at 8), and its “blending of an insect growth regulator with . . . wax and fat . . . [and a] high-density insoluble, non-toxic metallic compound” (id.) “represent[s] a totally different technology and mechanism of feed-through administration” (id.) compared to Dimitri and to the instant invention. The issue raised by this appeal is whether the Examiner has established that one of ordinary skill in the art would have had a reason to formulate a methoprene or diflubenzuron-lignin composition wherein the methoprene or diflubenzuron is present in an amount of about 0.01% w/w to about 2% w/w, given the teachings of Dimitri and Miller. Findings of Fact 1. Claim 1 is directed to a hydrogen-bonded lignin-methoprene complex, free of non-hydrogen-bonded methoprene, wherein the amount of methoprene in the complex is about 0.01% w/w to about 2% w/w. 2. Dimitri discloses a “controlled-release pesticidal system[ ] which maintain[s] maximum and effective activity over prolonged periods of time under normal plant environmental conditions” (Dimitri, col. 2, ll. 29- 31). The system comprises “a composite having a biologically active agent [e.g., a pesticide] interspersed throughout an alkali lignin matrix” (id. at col. 2, ll.4-11), wherein the “[t]he biologically active agent is either entrapped by Appeal 2012-002644 Application 11/535,450 6 the lignin macromolecular matrix or held by physical-chemical forces of van der Waal’s, hydrogen bonding or ion association” (id. at col. 3, ll. 19-22). 3. Dimitri teaches that “the active agent and the alkali lignin matrix form[ ] a composite such that, upon diffusion or through degradation or dissolution of the lignin, the active agent, i.e., pesticide, is released to the soil, or to the plant or other system on which it is being placed” (Dimitri, col. 3, l. 65 - col. 4, l. 2). 4. According to Dimitri, “[o]ne of the key reasons why the composites form a successful pesticide controlled release system is that the rate of release can be controlled by the ratio of pesticide to lignin matrix and by the particular lignin matrix used” (Dimitri, col. 4, ll. 54-58). Specifically, “[t]he weight ratio of pesticide to lignin may be from about 0.1:1 up to 10:1 [about 9.09% up to 90.9% pesticide] by weight, preferably 0.25:1 to 1:1 [20% to 50% pesticide]” (id. at col. 4, ll. 58-60). 5. Miller discloses orally administered “bolus formulations that release insect growth regulators into the digestive tract of cattle in sufficient quantities for control of flies over a 13-24-week period” (Miller, col. 3, ll. 4- 7). 6. Miller’s bolus formulation, in the form of “a large pill” (Miller, col. 2, l. 66), is made by blending an insect growth regulator, e.g., methoprene or diflubenzuron, with a combination of wax, fat, and a high- density, insoluble, non-toxic metallic compound which acts as an inert filler and also increases the density of the formulation (id. at col. 2, ll. 63-67; col. 3, ll. 19-40). 7. Miller’s “bolus is formulated to have a specific gravity >1.5 in order that it might be retained in the reticulum [the second compartment of Appeal 2012-002644 Application 11/535,450 7 the stomach] of the cattle. The digestive activities within the reticulum erode the bolus causing release of the insect growth regulator” (Miller, col. 3, ll. 7-11). 8. Miller’s formulation comprises: (a) about 4-17 parts by weight monostearin (b) about 4-10 parts by weight carnuba wax (c) about 70-75 parts by weight Barium Sulfate (d) about 1-15 parts by weight insect growth regulator (Miller, col. 3, ll. 24-27.) Discussion The Examiner has not established that the teachings of Dimitri and Miller would have provided a reason for one of ordinary skill in the art to formulate a methoprene or diflubenzuron-lignin composition wherein the methoprene or diflubenzuron is present in an amount of about 0.01% w/w to about 2% w/w. First, Dimitri itself provides no reason to reduce the amount of pesticide in its composite as the reference teaches that one of the key reasons the composite successfully achieves controlled release “to the soil, or to the plant or other system on which it is being placed” and remains effective “over prolonged periods of time under normal plant environmental conditions” is the disclosed ratio range (FFs 2-4). Second, we don’t agree that one of ordinary skill in the art would have found the weight percent of pesticide in Miller’s formulation to be relevant to Dimitri’s lignin-pesticide composites. Miller’s high-density bolus formulation, made up of wax, fat, and a metallic compound, is physically very different from Dimitri’s lignin-pesticide composite. Additionally, Miller’s bolus is ingested by cattle and remains in the reticulum due to the Appeal 2012-002644 Application 11/535,450 8 high density of the metallic compound, whereupon digestive action in the reticulum gradually erodes the bolus and releases the pesticide to the environment (FFs 6-8). One the other hand, the Examiner has not established that Dimitri’s composite is fed to livestock at all, rather Dimitri teaches that it is applied directly to the environment, where the pesticide is released upon diffusion through or degradation or dissolution of the lignin (FF3). Therefore, we agree with Appellants that neither Dimitri nor Miller would have provided a reason for one of ordinary skill in the art to substantially reduce the relative amount of pesticide in Dimitri’s pesticide- lignin composite. The rejection of claims 1, 4, 16, 17, 56-60, 62, and 63 as unpatentable over Dimitri and Miller is reversed. REVERSED alw Copy with citationCopy as parenthetical citation