Ex Parte Asrar et al

Board of Patent Appeals and Interferences

Apr 5, 2010

11113857 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAWED ASRAR, YIWEI DING, MICHAEL E. SEITZ, and
RONALD J. BRINKER
__________

Appeal 2009-009668
Application 11/113,857
Technology Center 1600
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Decided: April 6, 2010
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Before ERIC GRIMES, JEFFREY N. FREDMAN, and STEPHEN
WALSH, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to controlled
release microcapsules, which the Examiner has rejected for anticipation,
obviousness, and obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 129, 131-141, and 143-152 are on appeal. The claims subject
to each rejection have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 129 is representative and
reads as follows:
129. An agriculturally active microcapsule comprising an organic
core material, the core material comprising an agricultural active and being
encapsulated in a shell having a pre-selected release rate with respect to the
agricultural active, wherein the shell is formed by an interfacial
polymerization of a polyisocyanate with a first polyamine and a second
polyamine, wherein a ratio of the first polyamine to the second polyamine is
selected and controlled to release the agricultural active from the
microcapsule at the pre-selected rate when the microcapsule is exposed to
natural environmental conditions.

Issue
The Examiner has rejected claims 129, 131, 132, 134, 137, 138, 141,
143, 144, 146, 149, and 150 under 35 U.S.C. § 102(b) as anticipated by
Keishin1 (Ans. 3). The Examiner has rejected claims 133, 135, 136, 139,
140, 145, 147, 148, 151, and 152 under 35 U.S.C. § 103(a) as obvious based
on Keishin (Ans. 6), and has rejected claims 129, 131-141, and 143-152 for
obviousness-type double patenting based on claims 36-91 of Seitz,2
combined with Keishin (Ans. 8).
Appellants rely on the same argument with respect to all of the
rejections to distinguish the claimed product from the prior art. Since the

1 Keishin et al., JP 09-249505, Sept. 22, 1997. Citations are to the English
translation of record.
2 Seitz et al., US 5,925,595, July 20, 1999.
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same issue is dispositive with respect to each of the rejections, we will
consider them together.
The Examiner finds that Keishin discloses microcapsules comprising
a shell surrounding a core with an agricultural active (Ans. 3). The
Examiner finds that the “composition of the shell in the prior art is of the
same components as the shell disclosed in the instant invention. For this
reason it is inherent that the shell of the prior [art], like the shell in the
instant claims, would be non-porous and therefore release the active or
herbicide in a controlled release manner.” (Id.) The Examiner concludes
that the claims that are not anticipated would have been obvious because
Keishin would have suggested their additional limitations (id. at 6), and that
the claims on appeal are not patentably distinct from those of Seitz because
the differences would have been obvious based on Keishin (id. at 8).
Appellants contend that Keishin does not disclose that its polyamines
are present in a ratio that is “selected and controlled to release an active at a
pre-selected rate” (Appeal Br. 8), and therefore does not anticipate or make
obvious the claimed microcapsules, either alone (id. at 11-12) or combined
with the claims of the Seitz patent (id. at 13).
The issue with respect to each of the rejections on appeal is: Does the
claim language stating that the polyamines in the claimed microcapsule are
in a ratio “selected and controlled to release the agricultural active from the
microcapsule at [a] pre-selected rate” distinguish the claimed product from
the prior art?
Findings of Fact
1. Appellants do not dispute that “Keishin discloses a microcapsule
having a core containing an agricultural active” (Appeal Br. 8).
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2. Keishin discloses that the core of its microcapsule is surrounded by
a polyurea film formed by interfacial polymerization of a polyisocyanate and
a polyfunctional amine (Keishin, abstract and ¶ 4).
3. Keishin discloses that more than one polyfunctional amine can be
used (id. at ¶ 16) and provides a working example in which ethylenediamine
and diethylenetriamine were used to form the polyurea film (id. at ¶ 21).
4. The Specification discloses that “[p]olyamines (i.e. polyfunctional
amines) that are useful in the present method . . . include, but are not limited
to, diethylene triamine, triethylene tetramine, tetraethylene pentamine,
iminobispropylamines, amine epoxy adducts, alkyldiamines from ethylene
diamine to hexamethylene diamine,” etc. (Spec. 46, ¶ 294).
5. The Specification discloses that “[i]t has been found that the
release rate of an agricultural active in the core of a microparticle having a
polyurea shell, can be modulated by varying the ratio of the equivalents of a
triamine such as Jeffamine T-403 and the equivalents of a tetramine such as
triethylene tetramine” (id. at 47, ¶ 297).
6. The Specification states that “[w]hen a blend of a triamine and a
tetramine is added to the reaction, it is preferred that the ratio of the number
of functional groups supplied by the triamine relative to the number of
functional groups supplied by the tetramine that is used is between about
100:0 to 0:100” (id. at 47, ¶ 296).
7. The Specification provides two working examples in which
different ratios of triethylene tetramine (TETA) and Jeffamine T-403 were
used to form microcapsules; the TETA/Jeffamine T-403 ratio was varied
between 0/100 and 100/0 (id. at 59-60, Figs. 9 and 10).
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8. Based on the examples, the Specification concludes that “the
release rate decreases when the concentration of TETA in the . . .
polymerization reaction increases, i.e., when the equivalents ratio between
TETA and Jeffamine T-403 increases” (id. at 59, ¶ 348).
9. The Specification states that “the Jeffamine T-403 molecule with a
molecular weight of 440 has three amine groups whereas TETA with a
molecular weight of 162 has four amine groups” (id.).
10. The Specification states that
[i]t is believed that the density or the permeability of the shell
will depend on the composition of the polyurea. Since TETA
with four amine groups is a much smaller molecule than
Jeffamine T-403 with three amine groups, it is believed that the
polyurea shell made with higher TETA concentration will have
the more condensed shell therefore provide slower release rate.
(Id. at 60-61, ¶ 350.)
Principles of Law
“[A] reference may anticipate even when the relevant properties of the
thing disclosed were not appreciated at the time.” Abbott Labs. v. Baxter
Pharm. Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006). “The general
principle that a newly-discovered property of the prior art cannot support a
patent on that same art is not avoided if the patentee explicitly claims that
property.” Id. at 1368.
“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. . . . [The] fairness [of the burden-shifting] is
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evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
Keishin discloses microcapsules comprising a core containing an
agricultural active surrounded by a polyurea shell formed by interfacial
polymerization of a polyisocyanate and two polyamines. As the Examiner
has pointed out (Ans. 5), any mixture of two polyamines will include a
particular ratio of the polyamines.
Appellants argue, however, that “Keishin does not disclose a
composition having a first and second polyamine ratio selected and
controlled to release an active at a pre-selected rate” (Appeal Br. 8).
Appellants argue that “Keishin expressly discloses a microcapsule that
controls the release rate by controlling different variables and there is no
teaching . . . that the ratio of polyamines in the microcapsule shell control or
affect the active’s release at any predetermined rate” (id.).
Appellants contend that “although the Examiner correctly reasons that
multiple polyamines must be present in some ratio, this reasoning does not
support the conclusion that such a random ratio serves to release the active at
a pre-selected rate. The ratio present in Keishin could very well be at a
value such that the polyamines are functionally inert with respect to the
release rate.” (Id. at 10.) Appellants argue that the Examiner’s citation of
the Specification’s preferred triamine:tetramine ratio – any value between
100:0 and 0:100 – is inapposite, “because Keishin employs a diamine and a
triamine, not a triamine and tetramine, and there is no indication that any
ratio disclosed in Keishin would effectively control the release at a pre-
selected rate” (Reply Br. 5).
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Appellants’ argument does not persuade us that the disputed limitation
results in a structural difference between the claimed and prior art products.
The Specification states that the polyurea shell affects the release rate
because the permeability of the shell depends on the composition of the
polyurea: a polyurea made using a polyamine that is relatively small and has
a relatively large number of amine groups will be more condensed than a
polyurea made using a polyamine that is relatively large and has a relatively
small number of amine groups (FF 10).
While the Specification only specifically refers to triethylene
tetramine and Jeffamine T-430, the effect described in the Specification is
generic to other polyamines, because any polyamine will have a molecular
weight and a number of amine groups, and therefore will affect the
permeability of a shell made with that polyamine and a polyisocyanate.
Appellants have pointed to no evidence that the mixture of polyamines
disclosed by Keishin does not result in a polyurea shell having a particular
permeability and, therefore, a particular release rate.
It is true that Keishin does not disclose that its mixture of polyamines
produces a polyurea with a particular release rate. Based on the
Specification’s discussion of the effect of polyamines on the permeability of
polyureas (FF 10), however, it is reasonable to conclude that the effect of a
polyamine (or a mixture of polyamines) on release rate is an inherent
property of the polyamine (or mixture of polyamines) in a polyurea.
Therefore, the act of selecting the polyamines and polyamine ratio in
Keishin will inherently result in a particular release rate which is
“preselected” based on the choices made in the selection process. An old
product does not become patentable based on new recognition of its inherent
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properties. See Abbott Labs., 471 F.3d at 1367 (“[A] reference may
anticipate even when the relevant properties of the thing disclosed were not
appreciated at the time.”).
Appellants do not dispute that Examiner’s conclusion that Keishin
would have made obvious the additional limitations of the claims rejected
under 35 U.S.C. § 103, or that a person of ordinary skill in the art would
have considered it obvious, based on Keishin, to modify the product claimed
by Seitz by including a second polyamine in its polyurea shell. Rather,
Appellants rely on the same argument addressed above to rebut the double
patenting and obviousness rejections. For the reasons discussed above, the
argument is not persuasive.
Conclusion of Law
The claim language stating that the polyamines in the claimed
microcapsule are in a ratio “selected and controlled to release the
agricultural active from the microcapsule at [a] pre-selected rate” does not
distinguish the claimed product from the prior art.
SUMMARY
We affirm the rejection of claims 129, 131, 132, 134, 137, 138, 141,
143, 144, 146, 149, and 150 as anticipated by Keishin; the rejection of
claims 133, 135, 136, 139, 140, 145, 147, 148, 151, and 152 as obvious
based on Keishin; and the rejection of claims 129, 131-141, and 143-152 for
obviousness-type double patenting based on claims 36-91 of Seitz,
combined with Keishin.
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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).

AFFIRMED

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CHARLES E. DUNLAP
MERIDIAN, SUITE 1700
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