Ex Parte Bratz et al

Patent Trial and Appeal Board

Jun 14, 2016

10043241 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/043,241 01114/2002 Matthias Bratz
26474 7590 06/16/2016
NOV AK DRUCE CONNOLLY BOVE+ QUIGG LLP
1875 EYE ST NW
SUITE 1100
WASHINGTON, DC 20006-5409
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
42044 Cont. 1890
EXAMINER
QAZI, SABIHA NAIM
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
tom.pavelko@novakdruce.com
DCDocket@novakdruce.com
re nee.tisdale@novakdruce.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS BRATZ
and KARL-FRIEDRICH JAGER1
Appeal2014-005382
Application 10/043,241
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to solid
mixtures containing sulfonylureas and adjuvants, which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
"Sulfonylureas (hereinafter referred to as 'SUs') are a group of highly
active herbicides which are widely used in crop protection." (Spec. 1, 11. 9-
11.) "It is further known from the literature that SU formulations are
1 Appellants identify the Real Party in Interest as BASF SE. (Br. 2.)
Appeal2014-005382
Application 10/043,241
problematic with respect to stability of the active ingredients since, under
unfavorable conditions, they may decompose over time with loss of the
desired herbicidal activity." (Id. at 1, 1. 45 through 2, 1. 1.) According to the
Specification, "[ s ]urprisingly, it was found that the use of
alkylpolyglycosides as wetting agents in SU solid formulations results in a
pronounced stabilization of the active ingredient in comparison to other
wetting agents (for example ethoxylated fatty amines or alcohol
ethoxylates)." (Id. at 2, 11. 42--46.)
Claims 10-17, 19, 20, and 22-31 are on appeal and stand rejected as
unpatentable under 35 U.S.C. § 103(a) over Townson et al. (US 5,888,934,
issued Mar. 30, 1999) ("Townson"). Claim 10 is representative and reads:
10. A solid mixture comprising
a) a sulfonylurea herbicide,
b) an alkylpolyglycoside, and
c) optionally one or more further active compounds,
\vith the proviso that said fhrther active compound ( c) is
different from aminophosphoric acids.
(Br. 23 (Claims App'x).)
On appeal we determine whether the Examiner established by a
preponderance of the evidence that claims 10-17, 19, 20, and 22-31 would
have been obvious over Townson.
DISCUSSION
In order to compare the claims to the prior art, we begin with claim
construction. Claim 10 - the only independent claim on appeal - is to a
solid mixture with at least two ingredients: a SU herbicide and an
alkylpolyglycoside ("APG"). The mixture of claim 10 may optionally
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Application 10/043,241
include other active ingredients so long as the additional ingredient is not an
aminophosphoric acid. Glyphosates are known herbicides and among the
aminophosphoric acids expressly identified in the Specification. (Spec. 14,
11. 41--43.) Thus, claim 10 and the dependent claims cannot include a
glyphosate as an additional herbicide.
The Examiner finds that claim 10 would have been obvious over
Townson. According to the Examiner, Townson
teaches herbicidal compositions comprising alkylpolyglycoside
and sulfonylurea in solid form. The reference also teaches that
additional herbicides are added to alkyl polyglycoside
compositions for complimentary [sic] action in particular
application, see lines 13-21 in column 8. The reference teaches
that compositions containing alkylpolyglycoside enhances the
activity of herbicide, see lines 31-33 in column 1.
( 41212013 Final Act. 7.) The Examiner further finds "the term 'comprising'
and 'optional' in present claims allows other components to be added. As in
present claims [part] ( c) in claim 10 is optional and drawn to addition of any
active compound other than amino phosphoric acids." (Id. at 8; Ans. 5.)
Appellants argue the Examiner failed to provide adequate reasoning to
explain why the skilled artisan would have modified the teachings of
Townson to create a mixture within the scope of the claims. (Br. 14--15.)
According to Appellants,
the pertinent question is not whether the teaching of Townson
suggested the combination of an SU and an APG but, rather
whether the reference or any other reason would have prompted
one of ordinary skill to combine an SU and an APG in a solid
mixture, in particular one which does not comprise an
aminophosphoric acid such as glyphosate.
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Application 10/043,241
(Id. at 15 (emphasis omitted).) Appellants further argue the proposed
modification is inconsistent with Townson's teachings: "[m]ost notably, it is
necessary to omit the aminophosphoric acid, i.e., the glyphosate component,
which is a mandatory constituent of Townson's mixture. Since the focus of
Townson's teaching is exclusively on glyphosate compositions ... the
reference clearly cannot be deemed to suggest such a modification." (Id. at
16.) For at least these reasons, Appellants' argument goes, "[t]he Examiner
has not established, and the reference in fact fails to support, a prima facie
case that the subject matter of appellants' claims was obvious under Section
103(a)." (Id. at 17.)
Appellants' arguments are persuasive. Like the present application,
Townson teaches herbicidal compositions. Yet Townson teaches glyphosate
compositions and mixtures of glyphosates with APGs. (See, e.g., Townson
Abstract; col. 1, 11. 6-7; col. 2, 11. 4--12; col. 20, claim 1.) Townson teaches
its compositions may include "one or more additional compounds which
possess biological activity, for example, herbicides, fungicides, insecticides
... and plant growth regulators." (Id. at col. 8, 11. 13-17.) SUs are listed
among twenty-eight "[e]xamples of useful complementary herbicides." (Id.
at col. 8, 1. 21 to col. 9, 1. 45.) But nowhere does Townson teach or suggest
an herbicidal composition of SU and APGs that excludes glyphosate.
In order to modify Townson's teachings to arrive at the claimed
subject matter, the skilled artisan would, at minimum, need to include an SU
herbicide and remove all glyphosate. The Examiner has not, however,
provided "articulated reasoning with some rational underpinning" - based
on Townson or otherwise - why the skilled artisan would make these
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Application 10/043,241
changes. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
The Examiner emphasizes that Townson describes other herbicides
and teaches these other herbicides may be included in compositions "for
complimentary action." (4/2/2013 Final Act. 13.) The fact that Townson
describes other herbicides as "complementary" and having "complementary
action" (Townson col. 8, 11. 18-21) suggests these add to the existing
herbicidal effect of the glyphosate, not that the other herbicides are
alternatives to the glyphosate in Townson's compositions. And the
Examiner has provided no explanation why the person of ordinary skill in
the art would have removed the glyphosate from Townson's compositions.
Indeed, the Examiner says next to nothing about Townson's glyphosate
except, in responding to Appellants' argument, to state that "Applicants
claims contain 'comprising' which allows other ingredients to be added."
(Ans. 13.) But this ignores element (c) of claim 10, which elsewhere the
Examiner acknowledged meant that if ingredients other than SU and APG
are included in the mixture, the other ingredient cannot be an
aminophosphoric acid, such as glyphosate. ( 41212013 Final Act. 8.)
As to the Examiner's finding that Townson "teaches that
compositions containing alkylpolyglycoside enhances the activity of
herbicide," the Examiner has not adequately explained how this supports the
rejection. (Id. at 7.) The portion of Townson cited by the Examiner actually
states that "[i]n EP 0526443 there is disclosed a composition comprising a
glyphosate herbicide, an[] activity enhancing alkylpolyglycoside and a foam
moderating acetylenic diol." (Townson col. 1, 11. 31-33.) The Examiner has
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Application 10/043,241
not explained how this limited disclosure that is seemingly specific to
glyphosate justifies the finding that APGs enhance the activity of herbicides
generally, or specifically SU herbicides.
For the above reasons, we conclude the Examiner did not establish by
a preponderance of the evidence that claim 10 (along with claims 11-17, 19,
20, and 22-31 because of their dependency on claim 10) would have been
obvious over Townson. Because we conclude the Examiner did not
establish a prima facie case that the appealed claims would have been
obvious, we decline to reach the issue of whether the data in the
Specification (e.g., Table 3) evidences unexpected results as argued by
Appellants. (See, e.g., Br. 17-21.)
SUMMARY
We reverse the rejection of claims 10-17, 19, 20, and 22-31 as
unpatentable under 35 U.S.C. § 103(a) over Townson.
REVERSED
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