Ex Parte Narayanan et al

Patent Trial and Appeal Board

Oct 31, 2012

10926510 (P.T.A.B. Oct. 31, 2012)

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.
10/926,510 08/26/2004 Kolazi S. Narayanan FDN-2839 9761
7590 10/31/2012
Attn: William J. Davis, Esq.
INTERNATIONAL SPECIALTY PRODUCTS
Legal Department, Building No. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
FUBARA, BLESSING M
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
10/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KOLAZI S. NARAYANAN, DOMINGO JON,
and JAYANTI PATEL
__________

Appeal 2011-013483
Application 10/926,510
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
matrix composition, a stable microemulsion comprising the matrix
composition, and a method of delivering an active ingredient to a desired site
which comprised applying the stable microemulsion. The Patent Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
The Specification states that the prior art patents “require a large
amount of N-alkyl pyrrolidones including N-methyl pyrrolidone for
increased loading of the active ingredients.” (Spec. 1.) The Specification
states that “[f]urthermore, the use of the hydrophobic solvents disclosed in
[Narayanan ‘5161] … limits the type of active ingredients and the loading
depending on the solubility of the active ingredients in the hydrophobic
solvent chosen.” (Spec. 2.) “Accordingly,” the Specification states, “it is an
object of this invention to provide a matrix composition for new and
improved stable microemulsion concentrates which does not require N-
methyl pyrrolidone in concentrates containing a high loading of different
active ingredients.” (Id.)
Claims 1, 6-8 and 10-13 are on appeal. Independent claim 1 and
dependent claim 13 are representative and read as follows:
1. A matrix composition consisting essentially of, by wt.,
(a) 5-30% C8-C18 alkyl pyrrolidone,
(b) 5-60% an organic solvent which is soluble in (a) and more
hydrophilic than (a), wherein the solvent is selected from the group
consisting of propylene carbonate, propylene glycol, reduced vinyl
pyrrolidone dimer, gamma-butyrolactone, N,N dimethyl imidazolidone,
cyclohexanone, methyl ethyl ketone, benzophenone, a benzyl benzoate, ester
of a long chain carboxylic acid with greater than 4 carbon atoms or esters
with an alkyl group wherein the alcohol segment has more than 4 carbon
atoms, an alcohol having greater than 6 carbons, and mixtures thereof;
(c) 30-70% of a non-ionic emulsifier,
(d) 1-15% of an EO/PO/EO copolymer,
(e) 0- 5% of a branched alkyl ethoxylated phosphoric acid, wherein
said matrix composition contains no N-methyl pyrrolidone; and

1 Patent No. US 6,541,516 B1 issued to Kolazi S. Narayanan et al., Apr. 1,
2003.
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(f) 1- 30% of an active ingredient selected from the group consisting
of a biocide, an organic solvent, a fragrance, a personal care active, a water-
insoluble monomer, an olefinic hydrocarbon and mixtures thereof.

13. A matrix composition according to claim 1 wherein the organic
solvent comprises reduced vinyl pyrrolidone dimer.

The Examiner rejected the claims as follows:
• claims 1, 6-8, 11 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Narayanan ‘516;
• claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Narayanan ‘516 and Namite;2 and
• claims 1 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Narayanan ‘516 and Narayanan ‘529.3

OBVIOUSNESS
I. The Rejection over Narayanan ‘516
A. Independent claim 1
The Examiner’s position is that Narayanan ‘516 disclosed a
microemulsion composition or stable emulsion concentrate comprising each
component recited in claim 1 of the claimed invention. (Ans. 3.) Regarding
the claimed amounts of each component, the Examiner found that the ranges
disclosed in Narayanan ‘516 “intersect points within the recited ranges in a
manner that render obvious the recited ranges.” (Id. at 6.) In particular, the
Examiner found that Narayanan ‘516 taught that its composition may

2 Patent Application Publication No. JP 360,163,805 A by Yoshihiro Namite
et al., published Aug. 20, 1985.
3 US Patent No. 5,298,529 issued to Kolazi S. Narayanan, Mar. 29, 1994.
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comprise inert excipients such as cyclohexanone, octanol and other polar
solvents at an amount between about 0.5 and about 5% by weight, meeting
the solvent of claim 1(b). (Id.) According to the Examiner, “the narrower
range 0.05 and about 5% of the solvent anticipates that broader range of %
solvent recited in 1(b).” (Id. at 6.) The Examiner found that because
Narayanan ‘516 disclosed ranges for the amount of each component it is an
indication that those amounts may vary, and thus the composition could be
optimized to provide the desired composition to achieve an effective
fungicide or pesticide treatment. (Id.)
Appellants contend that the use of the transitional phrase “consisting
essentially of” in the claimed invention excludes the hydrophobic oil that
composition of Narayanan ‘516 additionally requires. (App. Br. 9.)
According to Appellants, the Specification “provides evidence that the
presence of hydrophobic solvents would materially affect the novel and
basic characteristics of the claimed invention since the hydrophobic solvent
would limit the type of active ingredients and the loading that could be
obtained with the composition.” (Id.)
Additionally, Appellants assert that Narayanan ‘516 disclosed that its
inert excipients, i.e., organic solvents, “may comprise between about 0.05
and about 5 wt.% of the total diluted composition,” which percentages are
based on different compositions than recited by the claimed invention, i.e.,
wt.% of the matrix composition, such that no overlap of the ranges exists at
5 wt.%. (Id. at 10.)
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellants’ assertion that the use of the
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transitional phrase “consisting essentially of” in the claimed invention
excludes the hydrophobic oil that composition of Narayanan ‘516
additionally requires. (Reply Br. 4.) According to Appellants, the
Specification “clearly establishes the basis to conclude that the presence of
hydrophobic solvents in the composition would materially affect the basic
and novel properties of the invention” by stating that “the use of the
hydrophobic solvents disclosed in 6,541,516 and 6,187,715 limits the type of
active ingredients and the loading depending on the solubility of the active
ingredients in the hydrophobic solvent chosen.” (Id.)(quoting Spec. 2).
We disagree with Appellants. At most, we find that the Specification
statement relied upon by Appellants teaches that the selection of a
hydrophobic solvent must be informed by the type of active ingredient
incorporated into the composition and its desired loading. Upon our review
of the Specification as a whole, we do not find any disclosure that the use of
hydrophobic solvents should be avoided, or that their use would materially
affect the basic and novel properties of the composition. Accordingly, we
agree with the Examiner’s position that the claim phrase “consisting
essentially of” does not exclude hydrophobic oil because the Appellants
have not established that the presence of this component materially affected
the basic and novel properties of the composition. (See Ans. 9-11.)
We remain unpersuaded of nonobviousness by Appellants’ assertion
that the Examiner compared the wt. % range of its inert excipients (organic
solvents) disclosed by Narayanan ‘516 in terms of the total diluted
composition with the range recited in the claimed invention based upon the
matrix composition. (App. Br. 10.) What is missing from Appellants’
argument is some evidence that any difference in the calculation of prior
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art’s disclosed range would have rendered the claimed range of organic
solvent nonobvious, e.g., that the claimed range and the prior art range were
not close enough such that one skilled in the art would not have expected
them to have the same properties. See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003).
Accordingly, we affirm the obviousness rejection of claim 1.
Appellants have not raised additional arguments for the rejections of
dependent claims 6-8 and 10-12. Therefore, claims 6-8 and 10-12 fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
B. Dependent claim 13
Claim 13 recites, in part, “the organic solvent comprises reduced vinyl
pyrrolidone dimer.” (App. Br. 14, Claims App’x.) The Examiner found that
one solvent can be used in place of the other for effective microemulsion.
(Ans. 5.) According to the Examiner, cyclohexanone and reduced
vinylpyrrolidone are equivalent organic solvents, and both are listed in the
group recited in independent claim 1, such that it would be obvious to
substitute one for the other. (See id. at 13.)
Appellants do not contend that cyclohexanone and reduced
vinylpyrrolidone are not equivalent organic solvents. Rather, Appellants
assert that the Examiner has not provided “some articulated reasoning with
some rational underpinning to support the legal conclusion” that it would
have been obvious to substitute reduce vinyl pyrrolidone dimer for one of
the organic solvents disclosed by Narayanan ‘516. ( App. Br. 10, Reply Br.
6.)
We are not persuaded by Appellants’ argument as it is prima facie
obvious to simply substitute one known element for another. See KSR Int’l
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Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). Such a substitution
amounts to no more than a predictable variation that can be implemented by
a person of ordinary skill in the art. Id.
Accordingly, we affirm the obviousness rejection of dependent claim
13.
II. The Rejections over Narayanan ‘516 in further view of Namite
and Narayanan ‘516 in further view of Narayanan ‘529
Regarding the separate rejections of claims 1 and 10 over Narayanan
‘516 in further view of Namite and the rejection of claims 1 and 12 over
Narayanan ‘516 in further view of Narayanan ‘529, Appellants assert only
that the additionally cited references fail to remedy the shortcomings of
Narayanan ‘516. (Id. at 11.) Accordingly, we affirm these rejections for the
reasons discussed regarding the rejection of claim 1 over Narayanan ‘516.

SUMMARY
We affirm each of the obviousness rejections.

AFFIRMED

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