Zelam Limited

Patent Trials and Appeals Board

Jun 3, 2021

2020005557 (P.T.A.B. Jun. 3, 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.
15/515,193 03/29/2017 Hemant Kumar LZAS107PCTUS
LP2442USPC00
9981
22827 7590 06/03/2021
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
06/03/2021 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEMANT KUMAR, DAVID LEO PRESS,
GORDON WILLIAM HARRIS, WALLACE JAMES RAE, and
CHRISTOPHER MOLLOY1
Appeal 2020-005557
Application 15/515,193
Technology Center 1600
Before DEBORAH KATZ, JOHN G. NEW, and ROBERT A. POLLOCK,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL

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 Zelam Limited.
App. Br. 1.
Appeal 2020-005557
Application 15/515,193
2
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–3 and 5–17 as unpatentable under 35
U.S.C. § 103 as being obvious over the combination of Tandt et al. (US
2003/0161856 A1, August 28, 2003) (“Tandt”) and Scher et al. (US
4,956,129, September 11, 1990) (“Scher”).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to a solid, particulate
insecticidal formulation in the form of a granule, a bait, or a tablet for
mechanical incorporation into or onto soil, comprising a volatile insecticidal
active ingredient that is microencapsulated and combined with a bulking
agent and a disintegrating agent. Abstr.
REPRESENTATIVE CLAIM
Independent claim 1 is representative of the claims on appeal and
recites:
1. A solid particulate insecticidal formulation which is
formulated to be mechanically incorporated into or onto soil, the
formulation comprising:

i. a microencapsulated volatile insecticide selected from
insecticidal active ingredients having:

(a) a vapour pressure at 25°C in the range from about 1
mPa to about 1,000 mPa; and

(b) a water solubility at 25°C less than about 100 mg/Litre;
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ii. a bulking agent; and

iii. a disintegrating agent;

wherein the insecticidal formulation is a granule, a ready for use
bait, or a tablet.
App. Br. 19.
ISSUES AND ANALYSIS
We decline to adopt the Examiner's findings of fact, reasoning, and
conclusion that the appealed claims are prima facie obvious over the
combined cited prior art, and we enter a new ground of rejection. We
address below the arguments raised by Appellant.

Issue 1
Appellant argues that the Examiner erred because the claims are
limited “to a solid that is not suspended in a liquid and that is instead
incorporated in a mainly dry form into or onto soil.” App. Br. 9.

Analysis
The Examiner finds that Tandt teaches agrochemical suspensions
including solid particles of an insecticide and a dispersing agent. Ans. 4
(citing Tandt Abstr., ¶¶ 2, 27, 37). The Examiner finds that the insecticide
may be microencapsulated in urea or melamine formaldehyde polymers. Id.
(citing Tandt ¶ 33). The Examiner finds that the microencapsulated
insecticide may be combined with a solid support, filler, and diluent. Id.
(citing Tandt ¶ 32). The Examiner finds that the solid support, filler, and
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diluent may include bulking agents, e.g., clays, starches, and calcium
carbonates; disintegrating agents, e.g., microcrystalline cellulose; binding
agents, e.g., polyvinyl pyrrolidone, polyvinyl alcohol, and gelatin; dispersing
agents, e.g., lignosulfonates; and rheology modifiers, e.g., magnesium
silicates and cellulose. Id. at 8 (citing Tandt ¶¶ 24, 29, 32, 37). The
Examiner finds that Tandt’s “preferred formulations comprise 20–90%
active, 5–8% dispersing agent (dispersing agents), 3–8% polymeric
dispersant (binding agents) and 5–50% solid support (bulking agents,
rheology modifiers and disintegrating agents combined) (%w/w of the
suspension).” Id. at 4–5 (citing Tandt ¶¶ 41–42).
The Examiner acknowledges that Tandt does not teach a
microencapsulated volatile insecticide. Ans. 5. The Examiner finds that
Scher teaches formulations of volatile insecticides microencapsulated in
urea-formaldehyde shells that can be dried and stored. Id. at 5–6 (citing
Scher Abstr., col. 10, ll. 34–47). The Examiner finds that Scher teaches
specific microencapsulated volatile insecticides, including: terbufos,
diazinon, disulfoton, phorate, fenitrothion, fenthion, pirimiphos-methyl. Id.
at (citing Scher col. 3, ll. 25–38, col. 4, ll. 1–67). The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art to use
Scher’s microencapsulated volatile insecticides in Tandt’s formulations
because both references teach encapsulating active agents in urea-
formaldehyde capsules. Id. at 6.
Appellant argues that “claim 1 is directed to a solid particulate
insecticidal formulation which is formulated to be mechanically
incorporated into or onto soil … where the insecticidal formulation is a
granule, a ready for use bait, or a tablet.” App. Br. 7–8 (emphasis omitted).
Appellant argues that the terms “granule,” “ready for use as bait,” and
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“tablet” each refer to a cohesive, solid formulation, and “not merely a solid
particle of a single component.” Id. at 8.
Appellant argues further that the Specification expressly disclaims
alternative granule formulations. See App. Br. 8–9. For example, Appellant
cites to the Specification for disclosing that
the Granule formulation type (GR) of the present invention is
intended for soil incorporation and therefore is distinct from and
not to be confused with other granule formulation types
including Water dispersible granule (WG), Water soluble
granule (SG) and Emulsifiable granule (EG), all of which are
formulated for the purpose of introducing the pesticidal active
ingredient into water (by dispersing, dissolving, or emulsifying
as an oil-in-water emulsion, respectively).
Id. at 8 (citing Spec. p. 9, ll. 27–32) (emphases omitted). Appellant further
cites to the Specification for disclosing:
Soil incorporation as used in herein excludes introducing water
dispersible granules, water soluble granules or emulsifiable
granules into water and then spraying the dilution into or onto
soil. In particular, the composition is a granule for incorporation
into or onto soil. It is not a granule for use with water or any
other form of granule.
Id. at 8–9 (citing Spec. p. 10, ll. 1–4) (emphasis omitted). Appellant argues
that the claims therefore exclude water dispersible formulations as taught by
Tandt. Id. at 9–10, 14–15.
We begin our analysis with construing the claims. The preamble of
claim 1 recites “[a] solid particulate insecticidal formulation which is
formulated to be mechanically incorporated into or onto soil.” App. Br. 19.
Our reviewing court has held that “where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
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purpose or intended use for the invention, the preamble is not a claim
limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The
preamble of claim 1 recites a purpose or intended use for the formulation,
viz., that it is “to be mechanically incorporated into or onto soil.” At the
same time, the claim body defines a structurally complete formulation,
including various components in the form of a granule, a ready for use bait,
or a tablet. Accordingly, we find that the intended use of the formulation—
“to be mechanically incorporated into or onto soil”—is not limiting upon the
claim.
We must next construe the claim term “granule.” Our reviewing court
has held that “[a]bsent claim language carrying a narrow meaning, the PTO
should only limit the claim based on the specification or prosecution history
when those sources expressly disclaim the broader definition.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). We find that the Specification
includes this type of express disclaimer. Specifically, the Specification
discloses:
Granule (GR): a free-flowing solid formulation of a defined
granule size range ready for use;
….

Note also that the Granule formulation type (GR) of the present
invention is intended for soil incorporation and therefore is
distinct from and not to be confused with other granule
formulation types including Water dispersible granule (WG),
Water soluble granule (SG) and Emulsifiable granule (EG), all
of which are formulated for the purpose of introducing the
pesticidal active ingredient into water (by dispersing, dissolving,
or emulsifying as an oil-in-water emulsion, respectively).

Soil incorporation as used in herein excludes introducing water
dispersible granules, water soluble granules or emulsifiable
granules into water and then spraying the dilution into or onto
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soil. In particular, the composition is a granule for incorporation
into or onto soil. It is not a granule for use with water or any
other form of granule.

Spec. p. 9–10 (emphasis added). The Specification thus provides an express
definition of the term “granule” and expressly distinguishes the claimed
granule from any other granule “for use with water or any other form of
granule.” Accordingly, we interpret the claimed granule as distinguishable
from a granule in a liquid suspension. SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1341, 58 USPQ2d 1059, 1062-63
(Fed. Cir. 2001) (“Where the specification makes clear that the invention
does not include a particular feature, that feature is deemed to be outside the
reach of the claims . . ., even though the language of the claims, read without
reference to the specification, might be considered broad enough to
encompass the feature in question.”)

Issue 2
Appellant argues that the Examiner erred in finding that the cited prior
art teaches a granule formulation including microencapsulated volatile
insecticide, bulking agent and disintegrating agent. App. Br. 9–14.

Analysis
Appellant argues that Tandt teaches particles of agrochemical
ingredients suspended in an aqueous or liquid oil-based medium. App. Br.
10. Appellant argues that because Tandt teaches liquid suspensions, Tandt
does not teach a granule formulation including the claimed components. Id.
at 10–11. For example, Appellant argues that Tandt’s solid support “is not
present to make the formulation into a solid, instead, the solid support is
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used to disperse an active ingredient in water that is not dispersible in water
without the solid support.” Id. at 11. Appellant argues further that Tandt’s
disintegrating agent “would begin disintegration of the microencapsulated
solid while in the liquid suspension.” Id. at 14. With respect to dependent
claims 13 and 15, Appellant argues further that Tandt does not teach a
formulation including a dispersing agent and rheology modifier in the
amounts claimed. See id. at 15–17.
The Examiner responds, finding that “Tandt teaches that granular
formulations of the suspension concentrate are assessed for dispersibility.”
Ans. 7 (citing Tandt ¶ 55). The Examiner finds further that Tandt teaches
dispersing agents selected from lignosulfonates and polymeric dispersants.
Id. at 8 (citing Tandt ¶ 37). The Examiner cites to Tandt’s example of
suspension formulations for teaching the claimed amounts of the
components. See id. at 4 (citing Tandt ¶ 42).
We find Appellant’s argument persuasive. Although, we agree with
the Examiner that Tandt teaches a “granular formulation” in paragraph 0055,
Tandt’s granules are part of liquid suspensions further including additional
components. For example, Tandt teaches that the polymer or lignosulfonate
dispersants are part of the liquid suspension rather than a granular
formulation in combination with the agrochemical active. See Tandt ¶ 42.
Likewise, Tandt teaches the amounts of the components as a total of the
liquid suspension rather than a granular formulation. See id. Because
Tandt’s granules are part of a liquid suspension and are thus expressly
disclaimed by the instant Specification, we do not sustain the Examiner’s
rejection.

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Application 15/515,193
9
NEW GROUND OF REJECTION
We here enter a new ground of rejection. Independent claim 1 is
rejected under 35 U.S.C. § 103 as obvious over Heier et al., US 6,797,277
B2, issued September 28, 2004 (“Heier”),2 Scher and Tandt. As discussed
above, the combination of Tandt and Scher teach formulations containing
microencapsulated volatile insecticide. Heier teaches extruded granules
including an active ingredient micro-encapsulated with a plastic or polymer,
a solid carrier, and a binder. Heier col. 2, ll. 50–61. The active ingredient
may be a pesticide, e.g., an insecticide. Id. at col. 3, ll. 33–42. Heier teaches
that the plastic or polymer encapsulating coating “effectively seals off the
active ingredient, thereby reducing volatilization and its detrimental effects.”
Id. at col. 2, ll. 15–28. Accordingly, Heier suggests microencapsulating
volatile active ingredients. Moreover, Heier teaches that “[t]he granules are
well suited for aerial application to crop fields.” Id. at col. 3, ll. 13–14.
In another example, Heier teaches extruded granules containing a
uniform composition of active ingredient, solid carrier, binder, and
dispersant. Id. at col. 5, ll. 55–67. Although Heier teaches that a dispersant
may not be required or desirable for slow utilization of an insecticide,
uniformly mixing the dispersant with the granule as opposed to coating the
exposed portion of the granule slows the rate of disintegration. Id. at col. 5,
ll. 15–27, 61–65. Heier teaches a specific formulation for extruded granules
containing 80% bulking agent, 16% active ingredient, 1% binder, and 1%
dispersant. Heier col. 6, ll. 25–37. Heier teaches that one of ordinary skill
in the art would have recognized the practical working ranges for each

2 Heier is discussed in the Specification at page 3 and was made of record in
the Information Disclosure Statement submitted on March 19, 2017.
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Application 15/515,193
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ingredient, and modified the amounts based on the desired performance
characteristics. Id. at cols. 6–7, ll. 47–19.
A person of ordinary skill in the art would have been motivated to
combine Tandt and Scher’s microencapsulated volatile insecticides with
Heier’s solid carrier granules because Heier teaches the granules
significantly reduced volatility of the active compound. Heier col. 8, ll. 51–
63. The person of ordinary skill in the art would have likewise incorporated
Tandt’s bulking agents, disintegrating agents, and binders to further modify
the formulations as known in the art. Accordingly, we conclude that it
would have been prima facie obvious for one of ordinary skill in the art to
combine the teachings of Heier, Tandt, and Scher resulting in the
formulation recited by claim 1.
We have entered the new ground for only the independent claim and
leave it to the Examiner to evaluate the patentability of the other claims in
view of this reference alone or in combination with other newly found or
previously cited references.3
CONCLUSION
We reverse the Examiner’s rejection of claims 1–3 and 5–17 under 35
U.S.C. § 103. We enter a New Ground of Rejection for claim 1.

REVERSED, 37 C.F.R. § 41.50(b)

3 For example, CN 101 100 229 A (cited in the International Search Report
for International Application No. PCT/NZ2015/050171).
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. …

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. …

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
DECISION SUMMARY

Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Grounds
1–3, 5–
17
103 Tandt, Scher 1–3, 5–
17

1–3, 5–
17
103 Heier, Tandt, Scher 1
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Overall
Outcome
1–3, 5–
17
1