Ex Parte Iuchi et al

Patent Trial and Appeal Board

Feb 5, 2019

13320568 (P.T.A.B. Feb. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/320,568 11/15/2011
23373 7590 02/07/2019
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Seiji Iuchi
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.
Ql26545 8398
EXAMINER
PIPIC,ALMA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
02/07/2019 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI LUCHI and RIE TAKABE
Appeal2018-003732
Application 13/320,568
Technology Center 1600
Before FRANCISCO C. PRATS, ERICA A. FRANKLIN and
ROBERT A. POLLOCK, Administrative Patent Judges.
POLLOCK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1 and 3-9. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to the production of microencapsulated
pesticides having delayed or controlled release characteristics. See Spec.,
Abstract, 2:1-7; 3:20-23. The process entails an initial step of holding at a
temperature of 20 to 60°C for 3 hours or more a mixture of (1) a pesticidal
compound ( e.g., clothiandin), (2) a compound within the scope of formula
1 Appellants identify Sumitomo Chemical Co., Ltd. as the Real Party-in-
Interest. App. Br. 2.
Appeal2018-003732
Application 13/320568
(I) ( e.g., methyl 0-acetylricinoleate ), and (3) a polyisocyanate .. See e.g., id.
at 2: 11-3: 17.
"The pesticidal compound is usually dissolved or suspended in the
compound represented by formula (I). Id. at 10:7-8. "When the pesticidal
compound is a solid pesticidal compound .... the solid pesticidal compound
is suspended in the compound represented by formula (I)." Id. at 10: 15-
11 :4. "When the solid pesticidal compound is suspended in the compound
represented by formula (I), the particle size of the solid pesticidal compound
suspended in the compound represented by formula (I) is usually 10 µm or
less, preferably in the range of 1 to 5 µm in terms of volume median
diameter." Id. at 12:8-13; see also e.g., 28:4--25 (adjusting the diameter of
clothianidin particles suspended in methyl 0-acetylricinoleate by milling or
grinding).
Claim 1, the sole independent claim before us, recites:
1. A method for producing a microcapsule, which comprises the
steps of:
(1) first keeping an organic suspension phase mixture of a
pesticidal compound, a compound represented by formula (I)
and a polyisocyanate at 20 to 40°C for 3 hours or more:
~~)
oa,,,;,:::l~t: u;, ·-X -;csq1 J ··· <>· ,, !fl
wherein X represents -CH2-CH2- or-CH=CH-, R 1 represents
a Cl---C4 alkyl group, and R2 represents a Cl---C4 alkyl group;
(2) then adding the organic suspension phase mixture to an
aqueous phase containing water and a polyol or a polyamine to
obtain a second mixture, and mixing the second mixture to
produce liquid droplets in water; and
2
Appeal2018-003732
Application 13/320568
(3) then forming a film of polyurethane or polyurea around the
droplets,
wherein the weight ratio of the pesticidal compound to the
compound represented by formula (I) is from 10: 100 to
100: 100;
wherein the weight ratio of water is in a range from 0.8 to 2
times the weight of the mixture obtained in the step (1 ).
Claims 3 and 4 further define the compound of formula I; claims 5-7
further define the pesticidal compound ( e.g., clothianidin in claim 7); and
claim 9 defines the keeping period as "5 hours or more." Claim 8 is directed
to a microcapsule produced by the method of claim 1.
The Examiner rejects claims 1 and 3-9 under pre-AIA 35 U.S.C.
§ 103 (a) as unpatentable over the combination of Gimeno2 and Tanedani. 3,4
Fin. Rej. 3-10; Ans. 2-9.
ANALYSIS
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the combination of prior art references or would have been obvious based on
the knowledge of those of ordinary skill in the art. In re Fine, 83 7 F .2d
1071, 1074 (Fed. Cir. 1988). "[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
2 Gimeno and Gimeno, WO 03/051116 Al, published June 26, 2003.
3 Tanedani, WO 2007/069461 Al, Published June 21, 2007 (published in
Japanese).
4 We refer herein to the English-language equivalent of Tanedani, US
2009/0142406 Al, Published June 4, 2009.
3
Appeal2018-003732
Application 13/320568
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
quoted with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007). "Where the legal conclusion [ of obviousness] is not supported by
facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
As an initial matter, we adopt the Examiner's description of the cited
art as set forth on pages 3 through 5 of the Answer. We do not, however,
find sufficient support for the Examiner's reasoning with respect to the
"keeping" limitation of claim 1, "first keeping an organic suspension phase
mixture of a pesticidal compound, a compound represented by formula (I)
and a polyisocyanate at 20 to 40°C for 3 hours or more."
Briefly, we note that Gimeno discloses a method for the
microencapsulation of insecticides that have limited solubility in organic
solvents (i.e., less than 1 OOg/1 in Solvesso 200 at room temperature) such as
clothianidin and deltamethrin Gimeno. Abstract, 4:7-17. As noted by the
Examiner, "Gimeno does not teach the compound of formula (I)." See Ans.
4. In Example 1, Gimeno discloses a method of encapsulating deltramethrin
that includes the step of "dissolving [] deltramethrin in Solvesso 200 to
obtain 25% concentration," and ultimately forming an oil phase further
containing toluedediisocyanate and polyarylpolyphenyliscocyanate.
Gimeno, 10:20-27. According to Gimeno, "[t ]he oil phase is maintained at
a temperature of about 50°C prior to emulsification [ with a water phase], but
no longer than 6 hours." Id. at 11: 1-2.
Tanedani also discloses a method for making microencapsulated
pesticides. Tanedani, Abstract. The Examiner reasonably finds that
Tanedani's method involves "(a) pulverizing a solid pesticide in a fatty acid
ester of formula (I) to form a suspension, (b) mixing the resulting suspension
4
Appeal2018-003732
Application 13/320568
and water to prepare a liquid droplet, and ( c) forming a coating film around
the liquid droplet." Ans. 4. With respect to step (a) of this method,
Tanedani Production Example 3 discloses a suspension of pulverized
clothianidin particles in methyl 0-acetylricinoleate, a compound within the
scope of formula (I). See Tanedani ,r 54. Although the suspension is
subsequently mixed with an aqueous component to form a dispersion (which
is then heated), Tanedani is silent with respect to keeping the suspension
itself at any particular temperature or for any length of time before
combining with the aqueous component. See id. ,r,r 54--56.
In rejecting the appealed claims, the Examiner states, inter alia, that it
would have been obvious to modify Gimeno' s Example 1 by replacing
deltamethrin with clothianidin because Gimeno teaches clothianidin as a
suitable insecticide for encapsulation, and by replacing Solvesso 200 with
methyl 0-acetylricinoleate as taught by Tanedani. See Ans. 5. In support,
the Examiner states that, "[i]t would have been reasonable to interpret
Gimeno to include solutions and suspensions of insecticide in oil" because
(1) Gimeno teaches the use of insecticides with a solubility of 50g/l or less,
which encompasses those with solubility approaching zero, and (2) because
"[t]he passage in Gimeno starting on page 2 line 23 stat[ing] that 'When
more liquid enters, the saturated solution is maintained as long as a reservoir
of insoluble material remains inside the microcapsule' . . . would have
interpreted this statement to mean that insoluble (i.e., suspended) insecticide
dissolves to maintain a saturated oil solution inside the microcapsule." Id. at
6-7. The Examiner further finds the claimed temperature range obvious
"because a temperature range of 20 to 40°C is close enough to about 50°C
[ as taught in Gimeno] that a person of ordinary skill in the art would have
5
Appeal2018-003732
Application 13/320568
expected that the two temperature ranges have the same effect on the oil
phase in the method of making microcapsules." Id. at 7-8.
Appellants respond, however, that the Examiner's reasoning is flawed
because Gimeno's Example 1 "discloses keeping an organic solution at a
temperature of 60°C [ sic 50°C] for no longer than 6 hours so as to dissolve
into solution the active compound therein. However, if a suspension-
forming active compound were substituted for the solution-forming
compound, a person having ordinary skill in the art would have had no
reason to have kept such a suspension at 60°C [ sic 50°C] for no longer than
6 hours because the reason for doing so (forming a solution) would not
exist." App. Br. 6. In support, Appellants submit the February 3, 2017,
Declaration under 37 C.F.R. § 1.132 of Ai Rusu, as evidence that one of
ordinary skill in the art would have understood that the heating step in
Gimeno's Example 1 was initiated to dissolve the insecticide in the organic
solvent, and demonstrating that, using the concentrations set forth in
Gimeno' s Example 1, deltamethrin dissolved in Solvesso 200 within 10
minutes at 50°C. See Rusu Deel. 2--4. Thus, we understand Appellants'
argument to mean that the temperature of about 50°C which Gimeno
maintains during the oil phase was the temperature first applied to dissolve
the active compound to obtain the concentrate used in the oil phase.
Accordingly, we agree with Appellants that it would not have been
obvious to have applied and kept that temperature prior to emulsification
when using a compound that does not require the Gimeno's first dissolving
step. See App. Br. 8.
We also find unsupported by record evidence the Examiner's
statement that the temperature range of the "keeping" step in claim 1 was
6
Appeal2018-003732
Application 13/320568
obvious in view of the 50°C of Gimeno' s Example 1, "because a
temperature range of 20 to 40°C is close enough to about 50°C that a person
of ordinary skill in the art would have expected that the two temperature
ranges have the same effect on the oil phase in the method of making
microcapsules." See Ans. 7-8. And whereas the Rusu Declaration
demonstrates that the deltamethrin in Gimeno' s Example 1 would have been
completely dissolved at 50°C, the appealed claims expressly require
"keeping an organic suspension phase mixture of a pesticidal compound, a
compound represented by formula (I) and a polyisocyanate at 20 to 40°C for
3 hours or more." Appeal Br. 11. Thus, on the record before us, we agree
with Appellants "this is not a situation in which the temperature disclosed in
Gimeno provides for the same result as recited in the present claims." Id. at
8.
We are also unpersuaded by the Examiner's reliance on Gimeno' s
description of the properties of certain microencapsulated insecticides to
support the conclusion that one of ordinary skill in the art would read
Gimeno as encompassing a "keeping" step with oil phases of both solutions
and suspensions. See Ans. 6-7. The referenced passage recites:
When the microcapsule contains a material of low solubility, a
saturated solution is formed inside the microcapsule. When
more liquid enters, the saturated solution is maintained as long
as a reservoir of insoluble material remains inside the
microcapsule. During this period of time the concentration
gradient across the capsule wall, and hence the release rate is
constant. Hence, the release kinetics of the microcapsule are
"zero-order", by analogy with chemical reactions.
Gimeno 2:23-29 ( citations omitted). The Examiner does not explain, nor do
we discern, the relevance of the properties of the finished product to the
7
Appeal2018-003732
Application 13/320568
initial manufacturing step of combining an insecticide with an inorganic
solvent.
For the reasons set forth above, we find that the Examiner has failed
to establish a prima facie case of obviousness.
SUMMARY
For the reasons above, we do not sustain the Examiner's decision
rejecting claims 1 and 3-9 of Application 13/320,568.
REVERSED
8