Ex Parte Hüffer et al

Patent Trial and Appeal Board

Apr 13, 2017

13533083 (P.T.A.B. Apr. 13, 2017)

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.
13/533,083 06/26/2012 Stephan Hiiffer 401074US99 5502
22850 7590 04/17/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/17/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN HUFFER, FRANK-PETER LANG,
ALEJANDRA GARCIA MARCOS, ALEXANDER WISSEMEIER, and
WOLFGANG STAFFEL
Appeal 2016-004992
Application 13/533,0831
Technology Center 1600
Before JEFFREY N. FREDMAN, RACHEL H. TOWNSEND, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a process for
fertilizing plants. The Examiner entered final rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants identify the Real Party in Interest as BASF SE, Ludwigshafen,
Germany. Br. 2.
Appeal 2016-004992
Application 13/533,083
STATEMENT OF THE CASE
Background
The Specification provides that fertilizers are used “to improve the
essential mineral content” of soils. Spec. 1:29—31.
However, it is observed that, in many cases, only fractions of the
minerals supplied to the soil are indeed taken up into plants. A
considerable fraction of the minerals supplied, in contrast, is not
taken up but enters the groundwater, where in particular nitrates
and phosphates are undesired. Excess fertilizer application,
therefore, is not acceptable.
Id. at 1:31-34.
The Specification discloses “the use of aqueous formulations
comprising (A) one or more aminocarboxylates, selected from among
methylglycine diacetate (MGDA) and its alkali metal salts and glutamic
diacetate (GLDA) and its alkali metal salts, to be applied to plants or the
ground or growth substrates.” Id. at 1:23—27.
The Claims
Claims 7, 9, 21, 22, 24, and 27 are on appeal. Sole independent claim
7 is illustrative and reads as follows:
Claim 7: A process for fertilization plants, the process
comprising manually or mechanically applying a formulation to
a ground or a plant,
wherein the formulation comprises:
at least one aminocarboxylate selected from the group
consisting of a methylglycine diacetate, a methylglycine
diacetate alkali metal salt, a glutamic diacetate, and a glutamic
diacetate alkali metal salt
at least one inorganic compound selected from the group
consisting of an inorganic phosphate, an inorganic phosphite,
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Application 13/533,083
an inorganic nitrate, an ammonium salt, and a potassium salt;
and
optionally water.
Br. 10 (Claims Appendix 1).
The Issue
The Examiner rejected claims 7, 9, 21, 22, 24, and 27 under 35
U.S.C. § 103(a) as obvious over Bersworth2 in view of Tamura.3 Ans.
2.
The Examiner finds that Bersworth discloses a process for “fertilizing
plants comprising applying a formulation to a plant, wherein the formulation
comprises i) an ammonium phosphate fertilizer, and ii) 25 wt% of a
chelating agent alkali metal salt (i.e. such as NaEDTA) capable of chelating
heavy metal ions; and the formulation can be in the form of granules.” Id.
The Examiner finds that Bersworth does not “explicitly disclose that the
chelating agent capable of chelating heavy metal ions is methylglycine
diacetate alkali metal salt, or that the applied formulation contains water and
can be applied ‘mechanically.’” Id. at 3.
The Examiner finds that Tamura discloses “a process for facilitating
heavy metal uptake by plants comprising spraying (i.e. mechanically
applying) a formulation comprising methylglycine diacetate alkali metal salt
(i.e. a chelating agent capable of chelating heavy metal ions); wherein the
2 Frederick C. Bersworth and Albert E. Frost, US 3,076,701, issued Feb. 5,
1963 (“Bersworth”)
3 Tamura et al., US 2008/0071130 Al, published Mar. 20, 2008 (“Tamura”)
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Application 13/533,083
formulation can be in the form of powder, granules, or aqueous solution (i.e.
contains water).” Id.
The Examiner concludes that it would be obvious to “combine the
respective teachings of Bersworth el al. and Tamura el al., [], to devise
Appellants’ claimed method of fertilizing plants” because the skilled artisan
would readily know that diammonium hydrogen phosphate is a
common ammonium phosphate fertilizer; and since Tamura et
al. disclose that methylglycine diacetate alkali metal salt is
preferable to EDTA as a chelating agent, as the biodegradable
methylglycine diacetate alkali metal salt exhibits roughly the
same chelating ability as EDTA without the drawbacks of
remaining in the soil and causing secondary environmental
contamination . . . and that the methylglycine diacetate alkali
metal salt can be sprayed (i.e. “mechanically applied”) in
aqueous solution (i.e. further contains water). . . one of ordinary
skill in the art would be motivated to employ methylglycine
diacetate alkali metal salt as the chelating agent in the
formulation of Bersworth et al., and to spray the formulation on
plants in aqueous solution form, with the reasonable expectation
that the resulting method will conveniently and evenly apply the
formulation to render heavy metal nutrients in soil available to
plants without causing secondary environmental contamination.
Id. at 3^4.
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that claim 7 is obvious over the
cited prior art?
Findings of Fact
FF1. Bersworth discloses “ammonium phosphate fertilizers containing
chelating agents and/or metal chelates. ... for solubilizing and rendering
trace elements present in the soil available to plants.” The composition “of
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Application 13/533,083
ammonium phosphates contain[s] chelating agents and/or metal chelates,
such that iron and other essential trace elements are made available to plants
in the form of their chelates.” Bersworth 1:57—69.
FF2. Bersworth discloses that
to eliminate formation of insolub[l]e salts during ammoniation of
production acids and mixtures of acids[,] a chelating agent
capable of forming a soluble, stable chelate with the heavy metal
ions present, iron and aluminum in particular, is added thereto in
[an] amount sufficient to chelate all the metal present. The effect
is not only to keep the metals in solution during the ammoniation
but also to render them available to plants as part of the fertilizer
produced.
Id. at 1:70-2:6.
FF3. Bersworth discloses that alkali metal, for example
“ethylenediaminetetraacetic acid and its alkali metal salts added may be
[added] in stoichiometric ratio to the heavy metal contaminants present, but
preferably is in excess.” Id. at 2:27—34.
FF4. Bersworth discloses:
The utilization of an excess of chelating agent or
precursors of chelating agents, the nitriles, over and above that
required to react with the heavy metal contaminants present
serves to improve the ammonium phosphate fertilizer produced,
because the excess chelating agent serves to solubilize and render
available to plants trace mineral nutrients normally present in the
soil in insoluble form and, hence, unavailable to the plant.
The preformed metal chelates of the trace metal elements
may also be added to the production phosphoric acid alone or
in conjunction with a stoichiometric or excess quantity of
chelating agent. Typical preformed chelates which may be added
are those of manganese, magnesium, zinc, iron, molybdenum,
etc. Ammonium phosphate fertilizers containing the preformed
trace metal chelates when applied to the soil effect a more rapid
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Application 13/533,083
elimination of trace element deficiencies than do such
compositions which contain chelating agents and little or no
metal chelates.
Id. at 2:54—72.
FF5. Bersworth discloses preparation of an ammonium phosphate fertilizer
containing EDTA in granular form. Id. at 3:20—34. “Application of the
finished fertilizer to chlorotic com plants completely eliminated the iron
deficiency within 4 weeks.” Id. at 3:42-44.
FF6. Bersworth discloses:
The ammonium fertilizer (phosphate, nitrate, sulfate or mixture)
may also be prepared by forming the composition and spraying
preformed metal chelates onto the material before granulating or
pelleting it. A typical product of this kind would contain, for
example, equal parts of ammonium sulfate, ammonium
dihydrogen phosphate, a small amount of a potassium salt and
about 0.01 to 1 percent by weight of each of the preformed
chelates of iron, zinc and copper. The exact metals to be used
may vary as agricultural conditions require.
Id. at 4:9—18.
FF6. Claim 5 of Bersworth recites “An ammonium phosphate fertilizer in
accordance with claim 4, which contains from about 0.01 percent to 25
percent of the said chelating agent.” Id. at 8:27—29.
FF7. Tamura discloses:
A method of cleaning a contaminated soil which performs
cleaning of a soil containing heavy metals in a shorter term than
before and, at the same time, utilizes phytoremediation having
little influence on the environment. The object is attained by
absorbing heavy metals by a plant . . . and, at the same time,
adding a biodegradable chelating agent to a contaminated soil in
order to assist the absorption. And, a biodegradable chelating
agent having the high heavy metal dissolving out ability not only
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Application 13/533,083
enhances the cleaning efficacy but also reduces secondary
influence on the environment.
Tamura Abstract.
FF8. Tamura discloses that the prior art teaches a method of
“effectively cleaning up a soil by selecting a plant excellent in the
ability to absorb heavy metals, planting it into a contaminated soil is
introduced, and, in the known publication 3, a method of adding a
chelating agent to a soil to promote dissolution of heavy metals is
introduced.” Id. at| 8.
FF9. Tamura discloses
a soil cleaning method of performing cleaning by absorbing a
contaminating substance contained into a contaminated soil by a
plant (phytoremediation), said method of cleaning heavy metals
containing soil comprising adding a biodegradable chelating
agent promoting absorption of heavy metals by the Fagopyrum
plant to the contaminated soil, wherein the contaminating
substance is heavy metals.
Id. 115.
FF10. Tamura discloses a “biodegradable chelating agent [that is] one
or two or more kinds selected from methylglycine diacetate (MGDA),
ethylenediamine succinic acid (EDDS), L-glutamic acid diacetate
(GLDA) and L-aspartic acid diacetate (ASDA) as well as a salt
thereof are used” and that it is “desirable to use methylglycine
diacetate and/or a salt thereof as the biodegradable chelating agent.”
Id. at 1116-17.
FF11. Tamura discloses an “extremely low” fear of secondary
contamination because “the biodegradable chelating agent is degraded
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Application 13/533,083
with microorganisms or enzymes in a soil, and hardly remains in the
earth.” Id. at | 51.
FF12. Tamura discloses that because “ethylenediamine tetraacetic
acid (EDTA) which has been previously known to have the high lead
dissolving out ability is [not ]degradable, it remains in a soil, and may
cause secondary environmental contaminants] EDTA is not
preferable.” Tamura discloses that “biodegradable chelating agents
exhibiting] approximately the same lead dissolving out ability as that
of the EDTA [are] methylglycine diacetate (MGDA), ethylenediamine
succinic acid (EDDS), and L-glutamic acid diacetate (GLDA).” Id. at
11 54, 55.
FF13. Tamura discloses “[t]he biodegradable chelating agent can be
added to a soil by a method of spraying or sprinkling granules,
powders or an aqueous solution directly to a soil.” Id. at | 58.
FF14. Tamura discloses that chelating agents include “methylglycine
diacetate (MGDA), ethylenediamine succinic acid (EDTS),”
“disodium ethylenediamine tetraacetate (EDTA2Na) [and] trisodium
methylglycine diacetate (MGDA3Na).” Id. at || 52, 68.
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Application 13/533,083
Wrigley found a “strong case of obviousness based on the prior art
references of record. [The claim] recites a combination of elements that were
all known in the prior art, and all that was required to obtain that
combination was to substitute one well-known ... agent for another.” Wm.
Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1364 (Fed.
Cir. 2012).
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art (Final Act.4 2—8; FF 1—14) and agree that the claimed process
for fertilizing plants would have been obvious over the teachings of
Bersworth and Tamura. We address Appellants’ arguments below.
Appellants argue that the claimed alkali metal salt “is only mentioned
tangentially in lines 28 and 33 of column 2” of Bersworth. Id. at 5. This
argument is not persuasive as “[i]t is well settled that a prior art reference is
relevant for all that it teaches to those of ordinary skill in the art.” In re
Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Bersworth discloses the
claimed heavy metal as one of a limited number of options disclosed for use
in the invention. FF3. Therefore, one of skill in the art would understand
the claimed heavy metal was suitable for use in forming a “soluble, stable
chelate with [] heavy metal ions.” FF2.
Appellants argue that because Tamura describes
how to remove heavy metal compounds from plants ... A person
skilled in the art would not have considered Tamura when
confronted with the task of fertilization [and that even if Tamura
4 Examiner’s Final Action, mailed November 5, 2014.
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Application 13/533,083
were considered] the person of skill would not have combined
the two references because of the disincentive from Tamura of
potentially poisonous heavy metal compounds such as uranium
compounds - would be provided into the ground.
Br. 5.
This argument is not persuasive as Tamura does not disclose “how to
remove heavy metal compounds from plants.” Rather Tamura discloses a
method of cleaning contaminated soil using plants that absorb heavy metals
(phytoremediation). FF7. The phytoremediation process is assisted by
inclusion of a chelating agent such as MGDA or EDDS. FF10. Thus,
Tamura teaches that plants can absorb heavy metal compounds from soil,
particularly when assisted by the disclosed chelating agents. FF7—12.
In that context, the question of whether Tamura is analogous art is
determined by whether the reference is “either ... in the field of the
applicant’s endeavor or, if not, then . . . [is] reasonably pertinent to the
particular problem with which the inventor was concerned.” In re Oetiker,
977 F.2d 1443, 1447 (Fed. Cir. 1992). Here, the inventors were concerned
with how to fertilize plants and, in particular, how to maximize uptake of
trace minerals by plants. We agree with the Examiner that Tamura is
analogous art because Tamura, like Bersworth is “concerned with promoting
heavy metal dissolution in soil and heavy metal absorption from soil into
plant[s]” and “achieve this end by applying a chelating agent to the soil” to
facilitate absorption by the plants. Ans. 5. Indeed, Tamura addresses
maximizing heavy metal uptake for the purposes of phytoremediation. FF8.
Appellants next argue that “EDTA raises significant environmental
concerns when subjected to the ground” and, therefore, the skilled artisan
“would refrain from applying any such complexing agents to the ground or
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Application 13/533,083
plants due to such concerns.” Br. at 5—6. As a result, Appellants argue, “the
teachings of removing heavy metals from the soil has no nexus to providing
something beneficial to the plant.” Id. at 6.
This argument is not persuasive because Tamura acknowledges the
environmental concern with EDTA and consequently teaches that using
EDTA is not preferable. FF12. Instead, Tamura teaches, it is “desirable to
use methylglycine diacetate and/or a salt thereof as the biodegradable
chelating agent” which has “approximately the same lead dissolving out
ability as that of the EDTA” and that in doing so, there is an “extremely
low” fear of secondary contamination because “the biodegradable chelating
agent is degraded with microorganisms or enzymes in a soil, and hardly
remains in the earth.” FF10—12.
Appellants further argue that unexpected results as discussed in the
Huffer Declaration5 are sufficient to rebut the Examiner’s prima facie case
of obviousness. Br. 6. Appellants argue:
Dr. Huffer analyzed stability constants for MGDA and EDTA
and concluded that EDTA should have provided better results in
mobilizing cations from the soil compared to MGDA and thus
should have provided better results. Moreover, even though
MGDA has a weaker stability of the respective complexes than
E[D]TA, MGDA was shown to be more efficient in transferring
potassium and phosphate to the plants.
Id. The Appellants argue this data shows “a significant and unexpected
effect whereby the greater uptake shown in the data would naturally result in
a fertilizing effect to the physical plant(s).” Id. at 6—7. According to
5 Declaration under 37 C.F.R. 1.1.32 of Stephan Huffer, dated January 2014.
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Application 13/533,083
Appellants, this improved efficiency “would not have been reasonably
predictable from the teachings of Bersworth and Tamura and moreover in
light of the stability constants discussed in the [Hiiffer] Declaration.” Id. at
8.
Mr. Hiiffer provides the following Tables in support of his
Declaration:
Table I Cwi^a^idcm.)
FJ
k26' [wt-H] | p2Oj dosage complexirtg agent in ]
fertilizer solution [itiraol] j
1.73 ] 0 53 50.5 1
R2________
EF.3
1.26 j 0,50
......................o/?f”
52,5 ]
405 !
EF.4 1.64 0.61 42.5 1
V-F S 1.53 ] 0.55 * \
V-F.6
V-F.7
1.30 | 034
1.51 | 0.5 i " 3$$
Table 1 lists the result of analysis after treating tomato plants with 13.3 ml of
fertilizer solution for 35 days.
Table 2 lists the result of analysis after treating tomato plants with 13.3 ml of
fertilizer solution for 70 days.
Although there is some discrepancy between the identification of
samples in Mr. Hiiffer’s Declaration6 and the Specification, we ascertain the
6 Mr. Hiiffer declares the experiments were conducted “in accordance with
chapter II. 1 of our application” but using 13.3 ml of fertilizer solution
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Application 13/533,083
following about these data. Samples F.l, F.2, EF.3, EF.4, and V-F.5 contain
varying amounts of the tripotassium salt of methylglycinediacetate (A.l) as
well as other compounds, or water alone. V-F.6 contained water alone and
V-F.7 contained an amount of EDTA different from any of compounds F.l,
F.2, EF.3, EF.4, and V-F.5, and water. See generally Spec. p. 13—14 and
Hiiffer Declaration p. 2.
Mr. Hiiffer declares that
[j]udging from the stability constants (log K) for complex
formation of MGDA and EDTA, EDTA should have provided
better results in mobilizing cations from soil compared to
MGDA, and EDTA should have provided better results in
preventing immobilization of cations, and less potassium and/or
less phosphate were to be expected in the plants. . . . Although
MGDA has a weaker stability of the respective complexes than
EDTA it is more efficient in transferring potassium and
phosphate to the tomato plants. This was not to be expected
when comparing the stability constants.
Id. at 2—3.
We are not persuaded that the Hiiffer Declaration provides evidence
of unexpected results. First, the content of chelating agent EDTA in
comparative formulation V-F.7 does not contain an “inorganic compound
selected from the group consisting of an inorganic phosphate, an inorganic
phosphite, an inorganic nitrate, an ammonium salt, and a potassium salt” as
required by claim 7; accordingly, the comparison is not commensurate in
derived from comparative formulation V-F.7 instead of 10 ml.
Accordingly, we assume the reference to “comparative formulation V-F.5”
at the top of page 2 should read “comparative formulation V-F.5” as
indicated by subheading 1.7. See generally Spec. p. 13—14.
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Application 13/533,083
scope with the claimed invention. Moreover, the amount of chelating agent
EDTA in comparative formulation V-F.7 is not identical to the amount of
MDGA in any sample, precluding a direct comparison of the effects of
MDGA and EDTA. Thus, it is not possible to determine whether the
claimed increased effect of MDGA in comparison to EDTA is a ‘“difference
in kind’ that is required to show unexpected results,” rather than merely a
difference in degree, which is not sufficient to support an argument of
unexpected results. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(stating that a “32-43% increase in stress-rupture life, however, does not
represent a ‘difference in kind’ that is required to show unexpected results”
where the prior art teaches that limiting certain ingredients will have a
positive effect on factors related to an improved stress-rupture life). Tamura
teaches that where amounts of EDTA or MGDA are increased, both show
increased chelating ability. (Tamura Fig 3.) Accordingly, we do not find
persuasive Appellants’ argument that the results of Tables 1 and 2 are
unexpected in light of our findings of fact (FF 1—14) regarding the teachings
of the prior art, including that MDGA is a “desirable” chelating agent.
Appellants further argue the Examiner impermissibly applies
hindsight in refusing to consider “any property, benefit, or characteristic of
the invention Applicant wishes to discuss in rebuttal” and in “requiring
comparison of the results of the invention with the results of the invention.”
Br. 8. According to Appellants,
the knowledge available to one of ordinary skill (as established
in the submitted Declaration) clearly teaches that with respect to
the different stability constants, one would have been motivated
to use EDTA for the purposes of Bersworth and lead one away
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from the use of MGDA, contrary to the Examiner’s position and
contrary to the invention claimed.
Id. at 8—9.
We are not persuaded. As the Examiner found, the teachings of
Bersworth and Tamura suggest a process for fertilizing plants using the
claimed formulation, thereby rendering the appealed claims obvious. See
FF1—14. Appellants’ evidence of secondary considerations in the form of
Dr. bluffer’s Declaration of unexpected results, is unpersuasive as addressed
above. Absent other evidence of secondary considerations, which
Appellants have not provided, we are unpersuaded that the Examiner has
unduly rejected evidence or arguments submitted by Appellants.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that claim 7 is obvious over the cited prior art. Claims 9, 21, 22,
24, and 27 have not been argued separately and therefore fall with claim 7.
37 C.F.R. §41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of all claims.
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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