Ex Parte Krapp et al

Patent Trial and Appeal Board

Feb 16, 2017

12376320 (P.T.A.B. Feb. 16, 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.
12/376,320 02/04/2009 Michael Krapp 074012-0116-US-286410 5676
123223 7590 02/21/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
HOLT, ANDRIAE M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KRAPP, RAINER BERGHAUS,
MATTHIAS BRATZ, ELMAR KIBLER, and
HERVE R. VANTIEGHEM1
Appeal 2015-007595
Application 12/376,320
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and RACHEL H.
TOWNSEND, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to herbicide-
containing concentrate, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 17, 21, 30, 31, and 33—38 are on appeal. Claim 17 is the only
independent claim and reads as follows (emphasis added):
1 Appellants identify the Real Party in Interest as BASF SE. (Appeal Br. 2.)
Appeal 2015-007595
Application 12/376,320
17. A non-aqueous active compound concentrate comprising
a) from 10 to 100 g/1 of at least one 4-benzoyl-substituted
pyrazole compound of the formula I or one of its salts
in which R1 and R5 are each methyl; R3 is methylsulfonyl; R2 is 4,5-
dihydroisoxazol-3-yl; and R4 and R6 are hydrogen,
b) from 400 to 700 g/1 of 2-chloro-N-(2,4-dimethyl-3-thienyl)-N-
(2-methoxy-1 -methylethyl)acetamide, and
c) from 10 to 200 g/1 of at least one surfactant S selected from a
mixture of at least one anionic surfactant and at least one nonionic
surfactant,
where the components a), b) and c) are present dissolved in a mixture
of organic solvents containing at least 95% by weight, based on the solvent
mixture, of
dl) at least one aprotic polar organic solvent having a
miscibility with water at 25°C and 1 bar of at least 50 g/1, which is
selected from the group consisting of dimethyl sulfoxide, N-
methylpyrrolidone, N-ethylpyrrolidone, and mixtures thereof, and
d2) at least one organic solvent having a solubility in water at
25°C and 1 bar of less than 5 g/1, which is a hydrocarbon solvent;
in which the anionic surfactant is selected from the group consisting
of compounds comprising at least one SO3 group or one PO4 group and at
least one aliphatic hydrocarbon radical having 8 to 22 carbon atoms or an
araliphatic hydrocarbon radical having 10 to 24 carbon atoms and in which
the nonionic surfactant comprises, as main component, at least one poly-C2-
C3-alkylene glycol ether compound, where the weight ratio of apolar protic
[sic, aprotic polar] solvent to hydrocarbon solvent is from 1:10 to 10:1, and
where the total amount of organic solvent is from 300 to 600 g/1.
Components a) and b) of the claimed composition are known as
topramezone and dimethenamid, respectively. (Spec. 1: 46-47, 4:41—45.)
o R
2
Appeal 2015-007595
Application 12/376,320
DISCUSSION
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Sievemich2 and Aven.3 (Ans. 2.) The
Examiner finds that Sievemich discloses synergistic mixtures comprising
two herbicides, where topramezone and dimethenamid are particularly
preferred. {Id. at 3 4.) The Examiner finds that Sievemich discloses that
hydrocarbons and N-methylpyrrolidone are suitable inert auxiliaries for use
in its composition, and that Sievemich also discloses suitable surfactants.
{Id. at 4—5.)
The Examiner finds that Aven teaches an emulsifiable concentrate for
crop protection active agents, including dimethenamid, that comprises an
organic solvent, a polar aprotic solvent, and a surfactant system that includes
a nonionic surfactant and an anionic surfactant. {Id. at 6.) The Examiner
concludes that it would have been obvious to modify Sievemich’s
composition to include the solvent mixture and surfactants disclosed by
Aven. {Id. at 7—9.)
Appellants argue, among other things, that the “claimed concentrate
requires that component dl) and component d2) of the recited solvent
mixture account for at least 95% of the total solvent present in the
concentrate” and the Examiner has not shown where this limitation is
disclosed in the references. (Appeal Br. 18.) Appellants point out that Aven
discloses that its composition also includes adjuvants, which are described as
alcohol ethoxylates and therefore would be recognized by a person of
2 Sievemich et al., US 6,534,444 Bl, issued March 18, 2003.
3 Aven, EP 1023833 A2, published August 2, 2000.
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Appeal 2015-007595
Application 12/376,320
ordinary skill in the art as common organic solvents. (Id. at 18—19.)
Appellants argue that “Aven’s adjuvants, which are present from 150 to 500
g/1, when combined with Aven’s teaching of the inclusion of 80 to 300 g/1 of
an aprotic polar solvent and 150 to 400 g/1 of an organic hydrocarbon
solvent, describe a concentrate in which there exist at least three very
different classes of co-solvents.” (Id. at 19.) Appellants argue that, when
the amounts of all three solvents are considered, the percentage of organic
solvent and polar aprotic solvent is less than 95% of the total solvent. (Id.)
The Examiner agrees that “Aven does teach that one or more
adjuvants are used in the formulation and that these adjuvants are selected
from known solvents.” (Ans. 12.) The Examiner reasons, however, that the
claims “use the transitional phrase ‘comprising’ which indicates that other
components can be added to the formulation. Therefore, it would have been
obvious to the skilled artisan that other solvent classes can be added to the
formulation.” (Id. at 13.) That is, “the instant claims do not indicate that the
polar solvent and the organic solvent have to be 95% by weight of all
solvents present,” only that the polar aprotic solvent(s) and organic
solvent(s) are made up of at least 95% of one of the specific solvents or type
of solvents listed in the claim. (Id.)
We agree with Appellants, however, that the Examiner’s claim
interpretation is broader than is reasonable based on the claim language read
in light of the Specification. The disputed limitation reads as follows:
“where the components a), b) and c) are present dissolved in a mixture of
organic solvents containing at least 95% by weight, based on the solvent
mixture.” The claim thus requires that the topramezone, dimethenamid, and
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Appeal 2015-007595
Application 12/376,320
surfactants (components a), b), and c)) are “dissolved in a mixture of organic
solvents,” where the mixture contains at least 95%, by weight of the solvent
mixture, components dl) and d2). The plain meaning of the claim language
is that the solvent mixture in which components a), b), and c) are dissolved
contains at least 95% of components dl) and d2). Although the Examiner is
correct that another solvent can be present (Ans. 13), the claim language
limits such other solvent(s) to no more than 5% of the solvent mixture.
Aven discloses an emulsifiable concentrate that contains, among other
things, “150 to 500 g/1 of one or more adjuvants,” “optionally one or more
organic solvents,” and “a water-miscible polar aprotic solvent.” (Aven | 6.)
Aven states that “[sjuitable adjuvants [] are selected from the group
consisting of alcohol alkoxylates and water-immiscible N-alkyl-
pyrrolidones, preferably N-C3 15 alkyl-pyrrolidones, in particular N-octyl-
pyrrolidone or N-dodecyl-pyrrolidone.” (Id. 129.)
The Examiner finds that Aven’s “adjuvants are selected from known
solvents.” (Ans. 12.) Thus, Aven’s compositions contain at least 150 g/1 of
adjuvant/solvent. Aven discloses specific embodiments that contain up to
400 g/1 of organic solvent and 80 to 300 g/1 of polar aprotic solvent. (Aven
H 50—51.) These compositions thus can contain no more than 82% of
combined organic solvent and polar aprotic solvent.4 Even Aven’s broadest
description of its composition still requires at least 150 g/1 of adjuvant(s) (id.
| 6), and in order for that amount to be no more than 5% of the total solvent,
4 400 g/1 organic solvent plus 300 g/1 polar aprotic solvent plus 150 g/1 of
adjuvant is 850 g/1 of total solvents, of which 700 g/1 is organic solvent or
polar aprotic solvent; 700/850 = 0.82.
5
Appeal 2015-007595
Application 12/376,320
the amount of organic solvent and polar aprotic solvent would have to be at
least 3000 g/1, which is much more than is used in any of Aven’s specifically
described embodiments. (See id. at || 50-51, 62—78.)
In summary, we agree with Appellants that the Examiner has not
shown that the limitation of “components a), b) and c). . . dissolved in a
mixture of organic solvents containing at least 95% by weight, based on the
solvent mixture,” of components dl) and d2) would have been obvious to a
person of ordinary skill in the art based on the cited references. We
therefore reverse the rejection on appeal.
REVERSED
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