Ex Parte Alexander

Board of Patent Appeals and Interferences

Jul 10, 2012

11632381 (B.P.A.I. Jul. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK ALEXANDER
__________

Appeal 2011-011894
Application 11/632,381
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-18 under 35 U.S.C. §103(a). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 1-18 are on appeal, and can be found in the Appendix of the
Appeal Brief (App. Br. 16-21). The invention is directed to agricultural
formulations for the treatment of plants. Claims 1 and 12 are the
independent claims on appeal, and read as follows:
1. An agricultural formulation comprising at least one agricultural
active, and at least one agricultural adjuvant, wherein said adjuvant
comprises at least one phosphate 2-propylheptanol, phosphate 2-
propylheptanol alkoxylate, or mixtures therof.

12. An adjuvant for agricultural formulations, wherein said
adjuvant comprises at least one phosphated 2-propylheptanol,
phosphated 2-propylheptanol alkoxylate, or mixtures thereof.

The following ground of rejection is before us for review:
The Examiner has rejected claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Vellaire
1
in view of Stauffer.
2
As Appellants do not argue
the claims separately, we focus our analysis on claims 1 and 12, and claims
2-11 and 13-18 stand or fall with these claims. 37 C.F.R. § 41.37(c)(1)(vii).
ISSUE
Does the evidence of record support the Examiner’s conclusion that
the combination of Vellaire and Stauffer render obvious the composition of

1
Vellaire et al., US 2,871,155, published Jan. 27, 1959.
2
Stauffer Chemical Company, GB 1,142,425, published Feb. 5, 1969.
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Application 11/632,381

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claims 1 and 12?

FINDINGS OF FACT
FF1. Stauffer disclosed alkyl phosphate surfactants as emulsifiers (Stauffer
1, ll. 7-8).
FF2. Stauffer disclosed alkyl phosphate surfactant having the general
formula:

(Stauffer 3, ll. 1-5) “wherein the R is an alkyl group containing from 3 to 20
carbons . . . and M is an alkali metal ion . . . and x is 1 or 2.” (Id.at 2, ll. 25-
30) “R is an alkyl group selected from pentyl, 2-ethylhexyl, . . . propyl
heptyl, . . .” (Id.at ll. 45-50). When alkali metal salts are used the
preference is for sodium because of availability and cost (Id. at 3, ll. 1-5)
FF3. Stauffer disclosed two different spelling possibilities for the same
compound: 2-ethylhexyl (Stauffer 2, l. 49; claim 5) and 2-ethyl hexyl
(Stauffer 4, l. 46).
FF4. “The adjuvant of the invention can effectively be utilized as a
dispersant, emulsifier, hydrotrope, wetting agent, compatibility agent and/ or
the like in agricultural formulations.” (Spec. 3, ll. 2-4)
FF5. Vellaire disclosed a method of protecting foliage plants comprising
the application of cycloheximide combined with an alkyl phosphate
surfactant (Vellaire, col. 5, l. 45 – col. 6 l. 1(claim 7).)
FF6. The agricultural active agent includes cycloheximide (Spec. 19, l. 4).
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ANALYSIS
The Examiner’s statement of rejection may be found at pages 4-6 of
the Answer.
In making an obviousness rejection the Examiner must first identify
the scope and content of the prior art. Graham v John Deere Co. 383 U.S. 1,
17 (1966). Thus we first turn to the prior art. Stauffer discloses alkyl
phosphate surfactants, specifically listing propyl heptyl as one of the R
group constituents (FF2). This genus encompasses phosphated 2-
propylheptanol.
3
Vellaire discloses a method of protecting foliage plants
comprising the application of cycloheximide combined with an alkyl
phosphate surfactant (FF5).
Once the scope and content of the prior art have been determined, the
next step is to identify the difference between the prior art and the claimed
invention. Graham, 383 U.S. at 17. Stauffer does not disclose agricultural
formulations or formulations with an agricultural active ingredient. Vellaire
does not disclose phosphated 2- propylheptanol adjuvants (Ans. 6).
Once the differences between the prior art and the claimed invention
have been identified, the next step is to identify motivation or a reason why
persons of ordinary skill in the art would have been prompted to combine the
prior art to have made the claimed invention. KSR Int’l Co. v. Teleflex Inc.
550 U.S. 398, 418 (2007) Stauffer discloses alkyl phosphate surfactants that
provide excellent surfactant properties, are readily available and relatively
low in cost (Ans. 7). Vellaire discloses formulating an agricultural

3
There are only four possible species in the propyl heptyl genus.
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composition comprising cycloheximide and alkyl phosphate surfactant
(FF5).
The ordinary artisan would have been motivated to use the low cost
alkyl phosphate surfactants of Stauffer in the formulation of Vellaire in order
to keep the cost of the agricultural formulation low (Ans. 7). The Examiner
finds that the claimed elements were known in the prior art (Ans. 8). As
such, combining the known elements with the known method (FF5) would
have achieved a predictable result rendering the invention obvious (Ans. 8).
Appellant contends that there is a typographical error in Stauffer.
Specifically, Appellant alleges that there should be a coma between propyl
and heptyl. “[P]ropyl heptyl does not make sense, in fact, C3 (propyl) + C7
(heptyl) = C10, which is decyl, and decyl is already identified as a possible
R specie” (App. Br. 12).
We are not persuaded by this argument. Stauffer discloses 2-
ethylhexyl and 2-ethyl hexyl (FF5). These alternative spellings refer to the
same compound. Here the typesetter simply made an error by the addition
of a space between propyl heptyl, just like with 2-ethyl hexyl.
Appellant contends that Stauffer is directed to a generic disclosure
rather than specifically disclosing phosphate 2-propylhelptyl alcanols (App.
Br. 12).
We are not persuaded by this argument. If the members of the class
(genus) can be “at once envis[ioned],” then the class can anticipate a claim
to a single member (species). In re Petering, 301 F.2d 676, 681(CCPA
1962). Stauffer may be directed to generically claiming phosphated propyl
heptyl alcanols, because there are only four possible structural formulas that
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fall within this genus all members can be immediately envisioned by one of
ordinary skill. We find that Stauffer renders obvious the composition of
claim 12.
Appellant contends that Vellaire and Stauffer are non-analogous art.
Specifically, the alkyl phosphate surfactants of Stauffer are emulsifiers for a
different purpose than those protective surfactants, i.e., emulsifiers,
disclosed by Vellaire (App. Br. 13, 14).
We are not persuaded by this argument. A chemical composition and
its properties are inseparable. In re Papesch, 315 F.2d 381, 391 (CCPA
1963). The Specification indicates that the claimed adjuvant can be utilized
as an emulsifier (FF4). Even if Stauffer uses the emulsifiers for a different
purpose in a different type of application, this would not mean they do not
work as an emulsifier in the composition of Vellaire. We find that Stauffer
and Vellaire render obvious the composition comprising an agricultural
active and adjuvant as claimed in claim 1.

CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Vellaire and
Stauffer renders obvious the agricultural composition of independent claims
1 and 12. We thus affirm the rejection of claims 1 and 12 under 35 U.S.C. §
103(a) as being obvious, as claims 2-11 and 13-18 stand or fall with that
claim, we affirm the rejection as to those claims as well.

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PETITIONABLE MATTER
Appellant contends that the Examiner's refusal to enter an After Final
Amendment is improper (App. Br. 4), and that the Final Rejection was made
prematurely (Reply Br. 2). We direct the Appellant's attention to MPEP
§ 1201, which states:
The line of demarcation between appealable matters for the Board of
Patent Appeals and Interferences (Board) and petitionable matters for the
Director of the U.S. Patent and Trademark Office (Director) should be
carefully observed. The Board will not ordinarily hear a question that
should be decided by the Director on petition, and the Director will not
ordinarily entertain a petition where the question presented is a matter
appealable to the Board.

(MPEP § 1201, 8
th
ed.)
In the present case, Appellant has not filed a petition to resolve the
Examiner's premature holding of finality. Any question as to prematureness
of a Final Rejection should be raised, if at all, while the application is still
pending before the primary Examiner. It is reviewable by petition under 37
C.F.R. § 1.181 and thus not within the jurisdiction of the Board.
With regard to the refusal to enter an After-Final Amendment, a
refusal to enter an amendment is a petitionable matter under 37 C.F.R.
§ 1.181 and not within the jurisdiction of the Board. 37 C.F.R. § 1.127
(2011); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403-1404 (CCPA 1971).)

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connections with
this appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

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