FMC Corporation

Patent Trials and Appeals Board

Dec 13, 2021

2021001639 (P.T.A.B. Dec. 13, 2021)

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. 15/436,984 02/20/2017 Robert M. Herrick 60475-USA-CON2 5124 48219 7590 12/13/2021 PATENT DEPT. FMC CORPORATION 2929 WALNUT STREET PHILADELPHIA, PA 19104 EXAMINER BROWN, COURTNEY A ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 12/13/2021 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): patents@fmc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT M. HERRICK, MARK WALMSLEY, CHARLES A. STAETZ, HUI S. YANG. D. CRAIG HEIM, HYLSA GARCIA, and NANCY HILTON Appeal 2021-001639 Application 15/436,984 Technology Center 1600 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3-8. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as FMC Corporation. Appeal Br. 2. We note that Appellant has not numbered the pages of the Appeal Brief. Page citations are to the pages as they appear sequentially in the Brief. Appeal 2021-001639 Application 15/436,984 2 We affirm. CLAIMED SUBJECT MATTER The claims are directed to insecticidal compositions. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An insecticidal and miticidal composition comprising bifenthrin and a cyano-pyrethroid selected from the group consisting of acrinathrin, cycloprothrin, deltamethrin, tralomethrin, fenvalerate, cyfluthrin, beta-cyfluthrin, flucythrinate, alpha-cypermethrin, beta-cypermethrin, thetacypermethrin, zeta-cypermethrin, cyphenothrin, cyhalothrin, esfenvalerate, fluvalinate and fenpropathrin wherein the ratio of bifenthrin to cyano- pyrethroid is from 1/99 to 99/1. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ager US 4,997,970 Mar. 5, 1991 Staetz et al. US 8,153,145 B2 Apr. 10, 2012 Staetz et al. US 8,349,344 B2 Jan. 8, 2013 Herrick et al. US 9,107,416 B2 Aug. 18, 2015 Herrick et al. US 9,596,857 B2 Mar. 21, 2017 Kohn US 2004/0048833 A1 Mar. 11, 2004 Ballard, et al. WO 03/053345 A2 July 3, 2003 REJECTIONS The Examiner has rejected the claims as follows2: 2 Claims 1, 2, and 4 were rejected on the grounds of non-statutory obviousness-type double patenting over application 13/617,906. Final Act. 5-6. Application 13/617,906 has been abandoned rendering that rejection moot. Appeal 2021-001639 Application 15/436,984 3 Claims 1, 4, and 7 have been rejected on the grounds of non-statutory obviousness-type double patenting over claims 1 and 2 of US 8,153,145 B2. Claim 1 has been rejected on the grounds of non-statutory obviousness-type double patenting over claim 1 of US 8,349,344 B2.3 Claims 1, 4, and 5 have been rejected on the grounds of non-statutory obviousness-type double patenting over the claims of US 9,107,416 B2.4 Claims 1 and 3-7 have been rejected on the grounds of non-statutory obviousness-type double patenting over the claims of US 9,596,857 B2.5 Claims 1, 3-6, and 8 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Kohn in view of Ager. Claims 1 and 7 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Kohn in view of Ballard. OPINION Obviousness-Type Double Patenting On appeal, Appellant contended that the form of the rejections was in error in that the rejection included cancelled claim 2. Appeal Br. 2-3. In addition, Appellant stated that it would file a terminal disclaimer is patentable subject matter were found. Id. 3 The rejection also included claim 2, however, claim 2 has been cancelled. Appeal Br. 3. In the Answer, the Examiner restated the rejection to remove claim 2. Ans. 3-8. 4 The rejection originally cited application 12/158,487 which has now issued as US 9,107,416 B2. Thus, this rejection is no longer provisional. See also note 3 above. 5 The rejection originally cited application 14/662,480 which has now issued as US 9,662,480 B2. Thus, this rejection is no longer provisional. See also note 3 above. Appeal 2021-001639 Application 15/436,984 4 In the Answer the Examiner restated the obviousness-type double patenting rejections to remove reference to cancelled claim 2. Ans. 3-8. Since Appellant has not presented any substantive response to the obviousness-type double patenting rejections, we summarily affirm those rejections. Obviousness based on Kohn combined with Ager The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of claims 1, 3-6, and 8 would have been obvious to one of ordinary skill in the art at the time the invention was made over Kohn combined with Ager. The Examiner finds Kohn teaches pesticide compositions comprising at least one pyrethrin or synthetic pyrethroid including esfenvalerate, zeta- cypermethrin, and bifentrin. Final Act. 11-12. The Examiner finds that Kohn also teaches that the composition may comprise a mixture of synthetic pyrethroids. Id. at 12. With respect to the ratios of the pyrethroids, the Examiner finds that it would have been obvious to one skilled in the art to start with a ratio of 1:1 which falls within the range recited in the claims. Id. at 14. Appellant contends that the references fail to teach all of the limitations of the claims. Appeal Br. 3-4. Appellant contends that the references fail to teach the recited ratios of components and that the Examiner erred in finding that one skilled in the art would start with a 1:1 ratio of components. Id. at 4. Appellant contends that the Examiner has improperly used hindsight in finding that one skilled in the art would start with a 1:1 ratio. Id. at 5. Appellant contends that the Examiner has failed to advance any evidence that one skilled in the art would start with a 1:1 ratio Appeal 2021-001639 Application 15/436,984 5 and Appellant has not had a chance to test the validity of that evidence. Id. at 6. Appellant contends that Kohn does not teach or suggest limiting the synthetic pyrethroids to the ones recited in the claims. Appeal Br. 7-11. Appellant contends that developing the claimed composition from the teachings of the references would require undue experimentation. Appeal Br. 8-10. We adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established a prima facie showing that the subject matter of the claims would have been obvious over Kohn combined with Ager to a person of ordinary skill in the art at the time the invention was made. Appellant has not produced evidence showing, or persuasively argued, that the Examiner’s determinations on obviousness are incorrect. Only those arguments made by Appellant in the Brief have been considered in this Decision. Arguments not presented in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). We have identified claim 1 as representative; therefore, all claims fall with claim 1. We address Appellant’s arguments below. Appellant contends that the references fail to teach all of the elements of the claims, specifically, the recited ratios of the components. Appeal Br. 4-6. Appellant contends that the Examiner has filed to produce any evidence to support the Examiner’s contention that one skilled in the art would have started with a 1:1 ratio of the pyrethroid compositions. Id. We are not persuade by this argument. As the Examiner explained When faced with constituting a mixture, one of ordinary skill in the art would have been motivated to start at a 1:1 ratio, a ratio Appeal 2021-001639 Application 15/436,984 6 which falls within the presently claimed range of ratios, with a reasonable expectation of success and as a starting point for performing routine optimization procedure. In the instant case, bifenthrin and the claimed cyano- pyrethroids were known in the art to be useful in combination for pest control. Therefore, it would have been obvious to combine these components in a 1:1 ratio towards the optimization of the process of making an insecticidal and/or miticidal composition. Ans. 10. “Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning. . . . [U]se of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009). Moreover, Kohn suggests the mixture of two or more pyrethroids. Kohn ¶ 30. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellant contends that the Examiner’s finding that one skilled in the art would start with a ratio of 1:1 is based on the impermissible use of hindsight. Appeal Br. 5. We are not convinced that the Examiner has engaged in the improper use of hindsight. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971). Appeal 2021-001639 Application 15/436,984 7 As discussed above, the Examiner’s findings with respect to the starting ratio is properly based on commons sense. Appellant has not pointed to nor do we discern any knowledge gleaned solely from Appellant’s disclosure. Appellant contends that the references fail to provide sufficient guidance as to which pyrethroids should be combined so as to place the invention in the hands of one skilled in the art without undue experimentation. Appeal Br. 7-11. Appellant contends that Kohn does not exemplify any combination of pyrethroids other than a general statement that synthetic pyrethroids may be mixed together. Id. at 8. Appellant contends that Kohn lists 37 different synthetic pyrethroids which could be combined in up to 75,000 different mixtures. Id. at 9-10. Appellant contends that without any additional guidance in Kohn, the teachings of Kohn would require undue experimentation to fond the combinations recited in the present claims. We are not persuaded by Appellant’s argument. While Kohn lists 37 different synthetic pyrethroids, it also states “[i]n one embodiment of the present invention, particularly preferred synthetic pyrethroids are tefluthrin, lambda cyhalothrin, bifenthrin, permethrin and cyfluthrin.” Kohn ¶ 31. This preferred group includes bifenthrin and two of the cyano-pyrethroids recited in the claims. We find that the preference for these compounds coupled with Kohn’s teaching that the pyrethroids can be mixed together would motivate one skilled in the art to prepare combinations of these compounds and one skilled in the art would have a reasonable expectation of success in making the combination. See Ans. 17-18. Indeed, in Corkill, an obviousness rejection was affirmed in light of prior art teachings that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected Appeal 2021-001639 Application 15/436,984 8 the zeolites of the claims from among ‘thousands’ of compounds.” In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Based on the foregoing, we conclude that a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of claims 1, 3-6, and 8 would have been obvious to one of ordinary skill in the art at the time the invention was made over Kohn combined with Ager. Obviousness Based on Kohn Combined with Ballard Appellant’s arguments with respect to this rejection mirror those discussed above. Appeal Br. 12. For the reasons stated above, we affirm this rejection. CONCLUSION The Examiner’s rejections are affirmed. More specifically, The rejection of claims 1, 4, and 7 on the grounds of non-statutory obviousness-type double patenting over claims 1 and 2 of US 8,153,145 B2 is affirmed. The rejection of claim 1 on the grounds of non-statutory obviousness- type double patenting over claim 1 of US 8,349,344 B2 is affirmed. The rejection of claims 1, 4, and 5 on the grounds of non-statutory obviousness-type double patenting over the claims of US 9,107,416 B2 is affirmed. The rejection of claims 1 and 3-7 on the grounds of non-statutory obviousness-type double patenting over the claims of US 9,596,857 B2 is affirmed. The rejection of claims 1, 3-6, and 8 under 35 U.S.C. § 103(a) as unpatentable over Kohn in view of Ager is affirmed. Appeal 2021-001639 Application 15/436,984 9 The rejection of claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over Kohn in view of Ballard is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 7 Obviousness-type double patenting, US 8,153,145 B2 1, 4, 7 1 Obviousness-type double patenting, US 8,349,344 B2 1 1, 4, 5 Obviousness-type double patenting, US 9,107,416 B2 1, 4, 5 1, 3-7 Obviousness-type double patenting, US 9,596,857 B2 1, 3-7 1, 3-6, 8 103(a) Kohn, Ager 1, 3-6, 8 1, 7 103(a) Kohn, Ballard 1, 7 Overall Outcome 1, 3-8 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED