INCOTEC HOLDING B.V.

Patent Trials and Appeals Board

Mar 18, 2021

2020004690 (P.T.A.B. Mar. 18, 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.
15/318,897 12/14/2016 HENRICUS ANTONIUS MARIA REUS CDA-172US 8801
23122 7590 03/18/2021
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENRICUS ANTONIUS MARIA REUS,
JANTIEN GLAS, JÉRÔME SYLVAIN GARNIER, and
PIETER WILHELMUS JOHANNES SAMUELS
____________

Appeal 2020-004690
Application 15/318,897
Technology Center 1600
____________

Before DONALD E. ADAMS, ROBERT A. POLLOCK, and
RYAN H. FLAX, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1, 5–11, 18–24, 29, and 30 (Final Act.2 2).3 We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Incotec
Holding B.V.” (Appellant’s December 5, 2019, Appeal Brief (Appeal Br.)
1).
2 Examiner’s November 14, 2019, Final Office Action.
3 Appellant’s pending claims 12–15, 17, 25, 28, 31, and 32 stand withdrawn
(see Final Act. 2).
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STATEMENT OF THE CASE
Appellant’s disclosure
relates to a method for coating plant seed, to a seed coating
composition, to a coated plant seed, to a use of one or more
water-insoluble polymers with a Tg[4] of at least 35 °C, to a
method of preparing a seed coating composition, to a method of
preparing coated seed, to coated seed, to a use of an abrasive
material primer or plasma, and to an apparatus for coating of
seed.
(Spec. 1.)
Appellant’s claim 1 is reproduced below:
1. A method for increasing the wear resistance of coated plant
seed, comprising applying to said seed a seed coating
composition comprising one or more water-insoluble polymers
with a Tg of at least 35 °C and one or more additional polymers
with a Tg of less than 10 °C,
wherein the seed coating composition has a Minimum
Film Forming Temperature (MFFT) at least 10 °C lower than
the Tg of the one or more water-insoluble polymers with a Tg of
at least 35 °C, and
wherein said seed coating composition comprises at least
2.0 wt.% of acrylic water-insoluble polymers with a Tg of at
least 60 °C.
(Appeal Br. 6.)

Grounds of rejection before this Panel for review:

4 According to Appellant’s December 14, 2016 Specification, “[t]he glass
transition temperature (Tg) is known for many polymers and can if necessary
be determined according to for instance ASTM E1356-08 (2014) ‘Standard
Test Method for Assignment of the Glass Transition Temperatures by
Differential Scanning Calorimetry’” (Spec. 5).
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Claims 1, 5–11, 18, 20, 24, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Asrar5 and Overbeek.6
Claims 19 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Asrar, Overbeek, and Krapivina.7
Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Asrar, Overbeek, and Otani.8
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Asrar discloses:
A method of improving germination rate in pesticide-treated
plant seeds involves forming a pesticide-free polymer coating
on a plant seed before treating the seed with a pesticide, where
the type of polymer and the coating thickness are designed to
block phytotoxic contact of the pesticide with the seed while
allowing sufficient transfer of oxygen to maintain the seed's
viability and sufficient transfer of moisture under
environmental conditions normally encountered by the seed
after planting to enable its germination; and then treating the
coated plant seed with a pesticide.
(Asrar, Abstract; see also id. ¶ 3 (Asrar “relates to a method of protecting
seeds that are to be treated with a phytotoxic agent, and in particular, to a
method for improving the germination rate of phytotoxic agent-treated
seeds.”); Ans.9 4.)

5 Asrar et al., US 2004/0118040 A1, published June 24, 2004.
6 Overbeek et al., US 6,730,733 B2, issued May 4, 2004.
7 Krapivina et al., US 5,281,315, issued Jan. 25, 1994.
8 Otani et al., US 5,918,413, issued July 6, 1999.
9 Examiner’s April 3, 2020, Answer.
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FF 2. Asrar discloses a surface treatment, i.e. “coating [that is
preferably] . . . applied to the seed in the form of a film of a liquid
suspension, dispersion or emulsion” (Asrar ¶ 42; see also Ans. 4).
FF 3. Asrar discloses that “after the coating is cured-the polymer coating
contains a polymer, or blend of polymers, in an amount of over 10% by
weight” (Asrar ¶ 47; see Ans. 4).
FF 4. Asrar discloses that its coating polymer has “a minimum film-
forming temperature (MFT) that is lower than a temperature that would
harm the seeds being coated,” preferably “a [MFT] of lower than 55° C.,
more preferred of lower than 30° C., and even more preferred of lower than
25° C” (Asrar ¶ 51; see Ans. 4 (citing Asrar ¶ 52) (Examiner finds that Asrar
exemplifies “polymers includ[ing] hydroxypropyl/methylcellulose, water-
insoluble polymers including vinyl acetates and polyvinyl acetates.”).)
FF 5. Asrar discloses that its “coated and treated seeds . . . can be
overcoated with one or more coatings applied after the seeds have been
treated with the phytotoxic agent,” wherein the “later coatings can contain
dyes, binders, absorbents, and other useful materials, . . . applied for the
purpose of[, inter alia,] abrasion resistance” (Asrar ¶ 87; see Ans. 5).
FF 6. Asrar discloses:
Coatings of 21 different polymers and one wax emulsion were
formed on corn seeds by the method described above. Table 1
lists the different polymers that were tested and describes the
chemical makeup of the polymer, the pH of the polymer
emulsion, the average particle size of the solids in the emulsion,
the glass transition temperature of the polymer (Tg), the
minimum film-forming temperature of the polymer (MFT), and
the type of surfactant (if any) that was provided with the
emulsion by the manufacturer. It was noticed that the MFT was
roughly related to the Tg for the polymers for which this data
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was available, but that these values did not always correlate
precisely.
(Asrar ¶ 104; see also Ans. 4 (citing Asrar ¶ 148) (Examiner finds that
Asrar’s Table 1 discloses a number of polymers including “Vinac XX-210
which has a Tg of 35 and Flexbond289 which [h]as a Tg of 85.”); see Ans.
4–5 (Examiner finds that although Asrar does not exemplify polymer
combinations “with different Tg values,” “blends of polymers are
encompassed by Asrar”).)
FF 7. Examiner finds that Asrar fails to disclose “the ratio of wax to water
insoluble polymers is 1:50 to 1:1” or “the ratio of acrylic polymers with Tg
of at least 60 degrees Celsius to total acrylic polymers with a Tg less than
10 degrees Celsius is 10:1 to 1:5 and preferably 5:1 to 1:2” (Ans. 5).
FF 8. Overbeek “relates to certain dual-cure polymer compositions, their
use in coating, and coatings derived therefrom” (Overbeek 1:2–5; see id. at
17:34–40 (Overbeek’s “aqueous dispersions may e.g. be used . . . for the
provision of films. . . . However, they are particularly useful and suitable for
providing the basis of protective coatings for wooden substrates”)).
FF 9. Overbeek discloses:
There is an ongoing demand to provide aqueous polymer
compositions suitable for coatings which have an excellent
balance of properties, such as for example good dispersion
stability of the components of the compositions, good chemical
and solvent resistance of coatings formed from the
compositions, and a combination of facile film formation
MFT, (i.e. low minimum film forming temperature MFT,
preferably ambient temperature or below) as well as good
hardness and blocking resistance in coatings formed from the
composition at low or no coalescent aid requirement in the
composition (these being organic solvents or plasticisers which
assist film formation but may be undesirable for environmental
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reasons) [and that its] . . . aqueous compositions hav[e] such an
excellent balance of properties.
(Overbeek 1:6–21; see id. at 2:29–32 (Overbeek discloses that its
composition has an MFT of “preferably less than 35° C., and is particular
ambient temperature or below,” wherein “ambient temperature is . . . a
temperature within the range 10 to 25° C.); see also Ans. 5.)
FF 10. Overbeek discloses an:
Aqueous polymer composition suitable for coating which
comprises the following components dispersed in water: (1) a
combination of an acrylic polymer(s) A and an acrylic
polymer(s) B where polymer(s) A has a Tg of not more than
30° C. and polymer(s) B has a Tg of at least 35° C. . . . and
wherein one or both of polymers A and B bear crosslinker
functional groups capable of imparting ambient-temperature
crosslinkability to component (1) in a coating formed from the
composition via the formation of non-radically-formed covalent
bonds; and (2) a self-dispersible, ionically stabilised polymer
having olefinically unsaturated bond functionality capable of
imparting radiation-curability (preferably uv-radiation
curability) thereto in a coating formed from the composition.
(Overbeek Abstr.; see Ans. 5.)
FF 11. Overbeek discloses for:
[A]crylic polymers A and B of component (1). An acrylic
polymer(s) A having a Tg of not more than 30° C. is
termed . . . a “soft” polymer for convenience, while an acrylic
polymer(s) B having a Tg of at least 35° C. (more preferably at
least 45° C.) is termed . . . a “hard” polymer for convenience.
Preferably a soft acrylic polymer has a Tg within the range of
from -60 to 30° C . . . and a hard acrylic polymer preferably has
a Tg within the range of from 35 to 125° C . . . . The Tg of the
hard polymer should be at least 25° C. higher than that of the
soft polymer . . . . The weight ratio of soft to hard acrylic
polymers is preferably within the range of from 30/70 to 90/10,
more preferably from 40/60 to 80/20.
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(Overbeek 6:57–7:5; see Ans. 5.)
FF 12. Examiner finds that the combination of Asrar and Overbeek “do[es]
not teach plasma treatment of seeds with plasma selected from nitrogen,
oxygen and other gases” and relies on Krapivina to make up for this
deficiency (Ans. 8 (citing Krapivina Abstr. and 2:43–56)).
FF 13. Examiner finds that the combination of Asrar and Overbeek “do not
teach abrasive particles that are harder than the seeds which have a particle
size of 30-750 microns or applying a primer 10-80% particulate material
with a size of 1-10 microns and further applying a coating layer with plant
protective products and a binder” and relies on Otani to make up for this
deficiency (Ans. 10 (citing Otani Abstr., 2:15–24 and 4:1–15)).
ANALYSIS
The combination of Asrar and Overbeek:
Based on the combination of Asrar and Overbeek Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie obvious “to include a wax and a polymer having a Tg of at least 35 in a
ratio of 1:50 to 1:1 with a reasonable expectation of success,” because
“optimizing combinations of polymer coating and wax within the ranges of
3:7 to 9:10 were known at the time of the present invention” (Ans. 6; see FF
1–11).
Appellant contends that “[o]ne skilled in the art seeking to modify the
method of protecting seeds as described by Asrar would not look to the
disclosure of Overbeek,” because “Overbeek is clearly not from the same
field of endeavor as Asrar or the claimed invention” and “is not reasonably
pertinent to the . . . problem Asrar or . . . [Appellant’s] intend to solve”
(Appeal Br. 4). In this regard, Appellant contends that “Asrar is directed to
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a method of protecting seeds treated with a phytotoxic agent,” whereas
“Overbeek is directed to an aqueous dispersion that is particularly useful for
wood substrates, in particular wooden floors, plastics, paper, leather and
metal substrates” and “is completely silent with respect to coating
agricultural seeds” (id. at 3–4; see also id. at 4 (Appellant contends that “the
preferred substrates in Overbeek are wood, plastics, paper, leather and metal,
and not seeds”); Reply Br. 2–3 and 5). We are not persuaded.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658–59 (Fed. Cir. 1992). The evidence on this record, supports a
finding that Asrar and Overbeek both relate to the field of coatings, i.e.
polymer film coatings, and are, thus, from the same field of endeavor (see
generally FF 2–6 and 8–11). For the same reason, Asrar and Overbeek are
also reasonably pertinent to the particular problem with which the inventor is
involved, i.e. a material for use as a coating (id.).
Further, we are not persuaded by Appellant’s contention regarding
Overbeek’s “preferred substrates” (see Appeal Br. 4; see also Reply Br. 3
and 5). Although Overbeek discloses that its compositions “are particularly
useful and suitable for providing the basis of protective coatings for wooden
substrates,” Overbeek more broadly discloses that its compositions are
useful as film coatings (see FF 8). See In re Lamberti, 545 F.2d 747, 750
(CCPA 1976) (A reference’s disclosure is not limited only to its preferred
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embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art.).
We recognize Appellant’s contentions, presented in its Reply Brief,
regarding the “U.S. Classification,” “wear resistance,” and “resistance
against abrasion” (Reply Br. 3–5). These contentions were not presented in
Appellant’s Appeal Brief. “[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative).
We further note that Appellant failed to establish an evidentiary basis
on this record to support a finding that the coating method made obvious by
the combination of Asrar and Overbeek would not exhibit the same “wear
resistance” and “resistance against abrasion” as the Appellant’s claimed
method (see Appeal Br. 6; cf. Reply Br. 4–5). See In re Prindle, 297 F.2d
251, 254 (CCPA 1962) (“mere recognition of . . . latent properties [in the
prior art] does not render the otherwise obvious [invention] unobvious”); see
also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious”). Further,
where
the claimed and prior art products are identical or substantially
identical . . . the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is
based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the
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PTO’s inability to manufacture products or to obtain and
compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted).
Further, to the extent that Appellant intimates that its claimed
invention exhibits unexpected results, we find no comparison of the method
set forth in its claim 1 against the closest prior art on this record. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”).

The combination of Asrar, Overbeek, and Krapivina:
Based on the combination of Asrar, Overbeek, and Krapivina,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious “to plasma treat seeds with oxygen or
nitrogen with a reasonable expectation of success . . . to improve plant yield
because Krapivina teaches that plasma treatment with oxygen and/or
nitrogen gas plasma is used prior to seed planting to improve yield at low
temperatures” (Ans. 9; see FF 1–12).
Having found no error in the combination of Asrar and Overbeek, we
are not persuaded by Appellant’s contention that Krapivina “fail[s] to
remedy the deficiencies of Asrar and Overbeek” (Appeal Br. 5; see also
Reply Br. 6).

The combination of Asrar, Overbeek, and Otani:
Based on the combination of Asrar, Overbeek, and Otani, Examiner
concludes that, at the time Appellant’s invention was made, it would have
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been prima facie obvious “to include 0.1-25% particulate materials in a
range of 10-30 microns into seed coatings with a reasonable expectation of
success . . . to improve water absorption to help seeds germinate” (Ans. 10;
see FF 1–11 and 13).
Having found no error in the combination of Asrar and Overbeek, we
are not persuaded by Appellant’s contention that Otani “fail[s] to remedy the
deficiencies of Asrar and Overbeek” (Appeal Br. 5; see also Reply Br. 6).

CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Asrar and Overbeek is affirmed. Claims 5–11, 18,
20, 24, 29, and 30 are not separately argued and fall with claim 1.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Asrar, Overbeek, and Krapivina is affirmed. Claim
22 is not separately argued and falls with claim 19.
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Asrar, Overbeek, and Otani is affirmed. Claim 23 is
not separately argued and falls with claim 21.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–11,
18, 20, 24,
29, 30
103 Asrar, Overbeek 1, 5–11,
18, 20,
24, 29, 30

19, 22 103 Asrar, Overbeek,
Krpivina
19, 22
21, 23 103 Asrar, Overbeek,
Otani
21, 23
Overall
Outcome
1, 5–11,
18–24,
29, 30

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