Ex Parte Ishaque et al

Patent Trial and Appeal Board

Oct 19, 2016

13124979 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/124,979 04/19/2011
123223 7590 10/21/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Michael Ishaque
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.
074014-0400-US (286566) 1265
EXAMINER
COUGHLIN, DANIEL F
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ISHAQUE, OLAF KRIHA,
KLAUS HAHN, and DANIELA LONGO
Appeal2015-004303
Application 13/124,979
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 16-26 (Br. 3;
Final Act. 3).2 Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify "the real party in interest [as] BASF SE" (Br. 2; Final
Act. 3).
2 Pending claims 27-30 stand "withdrawn from consideration" (Br. 3).
Appeal2015-004303
Application 13/124,979
STATEMENT OF THE CASE
Appellants' "invention relates to a process for the preparation of
insecticide-modified foam preforms of extruded polystyrene foam (XPS
prefors )" (Spec. 1 ). Claims 16, 19, and 23 are representative and reproduced
below.
16. A process for the production of insecticide-modified
extruded polystyrene foam (XPS) preforms, comprising the
steps
(a) heating polystyrene (PS) until a polymer melt is
formed,
(b) introducing a blowing agent into the polymer melt to
form a foamable melt, and
( c) foaming the foamable melt to give an XPS preform,
wherein at least one insecticide from the group of the
phenylpyraxoles, chlorfenapyr and hydramethylnone is
introduced into the polymer melt in at least one of steps (a)
and/or (b).
(Br. 14.)
(Id.)
19. The process according to claim 16, wherein the at least one
insecticide is incorporated into the polymer melt in the form of
an aqueous formulation.
23. The process according to claim 16, wherein the insecticide
is fipronil.
(Id. at 15.)
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Application 13/124,979
The claims stand rejected as follows:
Claims 16-18 and 23-26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Alcott, 3 Nickell,4 and Michihiko. 5
Claims 19-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Alcott, Nickell, Michihiko, and Ishaque. 6
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Alcott discloses a process for preparing
insecticide-modified extruded polystyrene foam (XPS) preforms that
comprises heating polystyrene (PS) until a polymer melt is formed,
introducing a blowing agent into the polymer melt to form a foamable melt,
and foaming the foamable melt to give an XPS preform, wherein "at least
one insecticide (a pyrethroid compound) [is] dispersed in the polymer matrix
[] by mixing [the insecticidal compound] with the polymer [] before the
polymer is contacted with a blowing agent for foaming into sheet form"
(Final Act. 5-6, citing Alcott 2:59---60, 3:4--13, and 3: 57---61; see Br. 8
("Alcott relates to the production of XPS (preforms)" comprising
"pyrethroids") ).
3 Alcott et al., US 6,156,328, issued Dec. 5, 2000.
4 Nickell et al., US 2007/0011958 Al, published Jan. 18, 2007.
5 Michihiko et al., JP 2000-001564, published Jan. 7, 2000 (see translation
mailed with PT0-892 on Dec. 19, 2012).
6 Ishaque et al., WO 2009/080464 A2, published July 2, 2009.
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Application 13/124,979
FF 2. Alcott discloses that "[v]arious additives may be incorporated in the
[] foam structure," including "additives with insecticidal repellant and/or
synergistic properties" (Alcott 5: 34--40; Final Act. 6).
FF 3. Examiner finds that Alcott fails to "disclose an insecticide-modified
polystyrene foam wherein the insecticide is [at least one insecticide from the
group of the phenylpyraxoles, chlorfenapyr and hydramethylnone, such as]
fipronil" (Final Act. 6; see Br. 8).
FF 4. Nickell discloses the manufacture of
insect controlling plastic building materials [] by first blending
one or more plastic resins[, such as polystyrene,] with one or
more insect controlling chemical agents[, such as fipronil,] to
form a blended plastic resin/insect controlling chemical agent
material [that] is then utilized to manufacture[, inter alia,]
insulating foams [] and the like utilizing conventional
manufacturing techniques
(Nickell, Abstract; id. i-fi-16 (while "Fipronil is preferred, other insect
controlling chemical agents may be used [] if desired. The insect controlling
chemical agent is preferably added to the resin [] prior to the manufacturing
steps [] employed to convert the resin into the desired plastic product") and
19 ("Insect controlling plastic foam manufactured in accordance with
[Nickell's] invention may be utilized as insulation"); Final Act. 6; see Br. 9
("Nickell discloses insect barriers comprising a thermoplastic resin
containing fipronil").)
FF 5. Nickell's "plastic foam insulation [is] preferably manufactured
utilizing a blend of one or more plastic resins and one or more insect
controlling chemical agents" (Nickell i131; Final Act. 6).
FF 6. Examiner relies on Michihiko to disclose "a molded foam exhibiting
termite-proof effects comprising fipronil, wherein the insecticidal ingredient
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Appeal2015-004303
Application 13/124,979
is incorporated into expandable polystyrene beads [] before foaming with a
blowing agent" (Final Act. 7, citing Michihiko, Abstract; see Spec. 1: 19-24
(Michihiko discloses "Polystyrene[] as polymer matrix[, wherein] [f]ipronil
is incorporated by applying to the surface of the prefoamed foam particles,
or by applying to the blowing agent-comprising granules")).
FF 7. Examiner finds that Michihiko discloses "the superior
physiochemical properties of fipronil, such as ... an environmentally
advantageous low vapor pressure, which ... reduce[s] the likelihood of
[fipronil] vaporizing from the foam material into [a building] structure"
when compared to, inter alia, "a pyrethriod [insecticidal] system" (Final
Act. 7; Michihiko ,-r 3).
FF 8. Examiner finds that the combination of Alcott, Nickell, and
Michihiko fails to suggest a "process[] for the preparation of insecticidal
foam preforms wherein insecticidal components are incorporated into
polymer melts in the form of an aqueous formulation" (Final Act. 9).
FF 9. Examiner finds that Ishaque
Discloses a process for the production of insecticide-modified
bead material composed of expandable polystyrene comprising
the steps of mixing [an aqueous suspension of] at least one
insecticide, such as a phenylpyrazole, chlorfenapyr, or
hydramethylnon, [including fipronil,] and a blowing agent into
a polymer melt comprising a polystyrene polymer, discharging
the resulting materbatch melt by extrusion, pelletizing the melt
[], foaming the pellets into a block mold, and cutting the foam
blocks to give foam sheets.
(Final Act. 9, citing Ishaque, Abstract; id. at 26: 1, 2, and 7-31.)
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Application 13/124,979
ANALYSIS
The combination of Alcott, Nickell, and Michihiko:
Based on the combination of Alcott, Nickell, and Michihiko,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious "to prepare insecticide-modified
polystyrene foams containing one or more insecticides, wherein one of the
insecticides is a pyrethoid compound, according to [Alcott's] process[]" and
an "additional insecticide is fipronil" as suggested by Nickell and Michihiko
(Final Act. 7; FF 1-7).
Claim 16:
Appellants recognize that Alcott discloses a method of preparing XPS
foams that comprise pyrethroid insecticides (FF 1 ). Alcott further discloses
that other insecticides, in addition to pyrethroid insecticides, may be
included in Alcott's XPS foams (FF 2). Appellants recognize that "Nickell
discloses insect barriers comprising a thermoplastic resin containing
fipronil," but contend that while "Nickell discloses polystyrene" foams,
"Nickell does not disclose ... XPS foams" (Br. 9; see FF 4--5). In addition,
Appellants contend that because "Nickell does not show that the
incorporation of fipronil into thermoplastic resins actually works, a person of
ordinary skill in the art would not have assumed the replacement of
pyrethroids in Alcott with fipronil would have a reasonable chance of
success to lead to an improvement over Alcott" (Br. 10). In this regard,
Appellants contend that "Michihiko relates to the EPS process (prefoamed
foam particles)[, wherein] fipronil is applied to the surface of the foam
particles, not to the polymer" and "there is nothing in Michihiko that would
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Application 13/124,979
teach the person of ordinary skill in the art, or would make it obvious to try,
to employ fipronil in the process of Alcott" (id.). We are not persuaded.
While Alcott does not disclose the use of fipronil, Nickell and
Michihiko make clear that fipronil is useful in the production of insect
modified foams (FF 3-7). Thus, in combination, Nickell and Michihiko
provide the reason or motivation to include fipronil in Alcott's insect
modified XPS foam and a reasonable expectation of producing an insect
modified XPS foam according to Alcott's method of making XPS foam (FF
1-7). In this regard, we recognize that Michihiko discloses the advantage of
fipronil over Alcott's pyrethroid insecticide (FF 7). Therefore, we are not
persuaded by Appellants' contention that a person of ordinary skill in this art
would not have found it prima facie obvious to include fipronil in Alcott's
XPS foams, because Nickell does not specifically disclose XPS foams and
Michihiko relates to the application of fipronil to the surface of foam
particles (Br. 9-10). We also do not find Appellants' argument that the
structure of the pyrethroids disclosed in Alcott are "markedly different
from" fipronil (Br. 8) and that "Nickell does not show that the incorporation
of fipronil into thermoplastic resins actually works" (Br. 10) persuasive of
non-obviousness. "The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Appellants' arguments do not establish that fipronil would lose its
insecticidal activity if it were included, as are other insecticides, in Alcott's
method of producing insect modified XPS foam.
Appellants contend that Table 5 of their Specification supports a
conclusion that XPS preforms containing fipronil exhibited an
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Application 13/124,979
"unexpectedly superior effect" against termites than Alcott's pyrethroid XPS
preforms (Br. 10-11 ). We are not persuaded. As discussed above, the
combination of Alcott, Nickell, and Michihiko makes obvious Appellants'
process for the production of XPS preforms comprising fipronil and
provides a reason why a person of ordinary skill in this art would make use
of fipronil in a building material such as an insecticide-modified XPS
preform (see FF 7). Appellants' evidence of unexpected results relates to the
properties of the fipronil insecticide compared to the pyrethroid insecticide,
deltamethrin (see Appellants' Specification 22: Table 5). Specifically, that
fipronil is a more effective agent against termites compared to deltamethrin.
Appellants fail, however, to provide persuasive evidence or argument to
support a conclusion that their method of producing an insecticide-modified
XPS preform changes the properties of fipronil in such a way that it becomes
more effective against termites than what a person of ordinary skill in this art
would have reasonably expected when fipronil is incorporated into
insecticide-modified XPS preforms as suggested by the combination of
Alcott, Nickell, and Michihiko (see FF 1-7).
Claim 23:
Appellants' claim 23, adds to claim 16 that the insecticide be fipronil.
For the foregoing reasons, we recognize, but are not persuaded by
Appellants' contentions relating to Appellants' claim 23. (Br. 11-12).
The combination of Alcott, Nickell, Michihiko, and Ishaque:
Based on the combination of Alcott, Nickell, Michihiko, and Ishaque,
Examiner concludes that, at the time Appellants' invention was made, it
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Application 13/124,979
would have been prima facie obvious "to prepare insecticide-modified
polystyrene foams, wherein the insecticide is fipronil ... and wherein the
insecticide is added to the polymer melt in the form of an aqueous solution"
(Final Act. 10).
Having found no deficiency in Examiner's combination of Alcott,
Nickell, and Michihiko, we are not persuaded by Appellants' contention that
Ishaque fails to make up for Appellants' alleged deficiency in the
combination of Alcott, Nickell, and Michihiko.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 16 and 23 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Alcott, Nickell, and Michihiko is
affirmed. Claim 17, 18, and 24--26 are not separately argued and fall with
claim 16.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Alcott, Nickell, Michihiko, and Ishaque is affirmed.
Claims 20-22 are not separately argued and fall with claim 19.
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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