Ex Parte Qin et al

Patent Trial and Appeal Board

May 4, 2016

12609404 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/609,404 10/30/2009
25212 7590 05/06/2016
DOW AGROSCIENCES LLC
9330 ZIONSVILLE RD
INDIANAPOLIS, IN 46268
FIRST NAMED INVENTOR
KuideQin
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.
67676 us 8293
EXAMINER
HIRT,ERINE
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUIDE QIN, HOLGER TANK,
STEPHEN L. WILSON, LEI LIU,
DAVID G. OUSE, andMEI LI
Appeal2013-010632
Application 12/609,404
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a method
to reduce spray drift during the application of a pesticide. The Examiner
rejected the claims as anticipated and as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm the obviousness rejection.
1 Appellants identify the Real Party in Interest as Dow AgroSciences LLC.
(see Br. 1).
Appeal2013-010632
Application 12/609,404
Statement of the Case
Background
"Agricultural spraying by economical and available technologies uses
hydraulic spray nozzles that inherently produce a wide spectrum of spray
droplet sizes. The potential for these spray droplets to drift from the initial,
desired site of application is found to be a function of droplet size" (Spec. 1,
11. 8-11). "The negative consequences of off-target movement can be quite
pronounced. Some herbicides have demonstrated very sensitive
phytotoxicity to particular plant species" (Spec. 1, 11. 23-25). "It has now
been found that by incorporating a self-emulsifiable ester into an agricultural
spray mixture that spray drift during application can be reduced" (Spec. 2, 11.
11-12).
The Claims
Claims 1-8 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A method to reduce spray drift during the application of a
pesticide which comprises incorporating into the pesticidal
spray from about 0.01 to about 5 percent vol/vol of a self-
emulsifiable ester or mixture thereof.
The Issues
A. The Examiner rejected claims 1-8 under 35 U.S.C. § 102(b) as
anticipated by Bell2 (Final Act. 2-3).
B. The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
obvious over W orthley3 (Final Act. 4--7).
2 Bell et al., WO 03/022048 Al, published Mar. 20, 2003.
3 Worthley et al., US 6,797,673 Bl, issued Sept. 28, 2004.
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Application 12/609,404
A. U.S.C. § 102(b) over Bell
The Examiner finds that "Bell teaches novel adjuvants for use in
agrochemical formulations ... The adjuvants disclosed are self-emulsifiable
alkoxylate esters ... These adjuvants bring a number of advantages
including reduced spray drift" (Final Act. 3).
The issue presented is: Does the evidence of record support the
Examiner's conclusion that Bell teaches a self-emulsifiable ester as required
by claim 1?
Findings of Fact
1. The Specification teaches that:
Self-emulsifiable esters (SEEs) used in the present invention
are characterized as molecules that combine oil (hydrophobic),
hydrophilic nonionic, and, optionally, anionic functionality in a
single molecule that can form uniform stable emulsions in an
aqueous phase .... Uniform, stable aqueous emulsions can be
formed with these SEEs without the use of additional
emulsifiers or oils by little to moderate agitation of the SEE and
water mixture.
(Spec. 3, 11. 11-18).
2. Bell teaches:
An agrochemical composition comprising a herbicide or
fungicide and an adjuvant having the formula (I)
Ri- (CO)m- 0 -[-R20-]n - R3 (I)
wherein Ri is a C16 to C20 straight or branched chain alkyl or
alkenyl group, R2 is ethyl or isopropyl, n is from 8 to 30 and m
is 0 or 1 and when R2 is ethyl, R3 is a C1 to C7 alkyl group and
when R2 is isopropyl, R3 is hydrogen or a C1 to C7 alkyl group.
(Bell 2, 11. 11-17).
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Application 12/609,404
3. Bell teaches that "[a]ttempts to use these materials to emulsify a
simple oil such as decane into water showed that separation into two phases
occurred even after vigorous shaking" (Bell 3, 11. 10-12).
4. Bell teaches that "oleyl 10 EO end-capped butyl ether is an oily
liquid which emulsifies readily in water whilst the uncapped oleyl 10 EO
equivalent forms viscous liquid crystals on contact with water" (Bell 3, 11.
30-32).
Principles of Law
"Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." MEHL/Biophile Int 'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
Appellants contend that
Bell does not disclose a self-emulsifiable ester so defined and
recited by claim 1. Additionally, Bell teaches that propoxylated
oleyl and isostearyl alcohols and acids (as well as their end-
capped equivalents) lack surfactant properties and do not
contain any hydrophobic moiety. Attempts to use these
materials to emulsify an oil such as decane into water showed
that separation into two phases occurred even after vigorous
shaking.
(Br. 3--4).
The Examiner responds that Bell's "disclos[ure] that oleyl lOEO end-
capped butyl ether is an oily liquid which emulsifies readily as an adjuvant
for use with agricultural actives does anticipate the instant claims" (Ans. 4).
We find that Appellants have the stronger position. While the
Examiner disclaims reliance upon inherency (see Ans. 4), the Examiner does
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Appeal2013-010632
Application 12/609,404
not set forth a prima facie case that the EO end-capped butyl ether of Bell
necessarily forms a uniform stable aqueous emulsion, a defined requirement
of self-emulsifiable esters in the Specification (FF 1, 4). On the contrary,
Bell provides evidence that suggests that at least some of the compositions
do not form stable emulsions (FF 3).
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Bell teaches a self-emulsifiable ester as required by claim 1.
B. U.S.C. § 103(a) over Worthley
The Examiner finds that "Worthley teaches drift reduction
compositions comprising a viscosity modifying agent ... [that] is a self-
emulsifying ester, specifically methoxylated fatty acid esters" (Final Act. 5).
The Examiner finds that "Worthley does not specifically teach ethoxylated
fatty acid esters as drift reducing self-emulsifiable esters. However,
methoxylation is merely a homolog derivation of claimed ethoxylated fatty
acid esters" (Id.).
The Examiner finds the claims obvious because "it is known that
compounds which are homo logs (compounds differing regularly by the
successive addition of the same chemical group, e.g., by - CH2- groups) are
generally of sufficiently close structural similarity that there is a presumed
expectation that such compounds possess similar properties" (Final Act. 6).
The issue presented is: Does the evidence of record support the
Examiner's conclusion that Worthley renders obvious a self-emulsifiable
ester as required by claim 1?
Findings of Fact
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Application 12/609,404
5. Worthley teaches "agents added to agricultural chemicals to be
sprayed to crops for the purpose of reducing drift of the chemicals away
from the target agricultural acreage" (Worthley, col. 1, 11. 13-16).
6. Worthley teaches that the "drift control agent of the present
invention comprises lecithin, a methyl ester and a nonionic surfactant"
(Worthley, col. 4, 11. 25-26).
7. Worthley teaches that the "preferred viscosity modifying agent
of the present invention are methyl esters. The most preferred viscosity
modifying agent is methyl soyate" (Worthley, col. 5, 11. 3-5).
8. Worthley teaches that a "most preferred embodiment of the
drift control composition of the present invention is made according to this
Example I in which 50.00 grams lecithin, 25.00 grams methyl soyate and 25
grams Tomadolâ„¢ 1-5 were blended to a homogenous mixture" (Worthley,
col. 5, 11. 56-60).
9. Worthley teaches that "[ e ]ffective drift control agents need to
be relatively resistant to high shear process conditions created by pumping
solutions at high pressure through spray nozzles, atomizers and nebulizers"
(Worthley, col. 1, 11. 61-64).
10. Worthley teaches that the "methylated seed oil component of
the present invention is included in the drift control agents of the present
invention to make the lecithin mixture less viscous and easier to pump and
stir during the spraying process" (Worthley, col. 4, 1. 66 to col. 5, 1. 2).
Principles of Law
The analysis for obviousness of chemical variations is based on a long
line of Federal Circuit and CCP A decisions. In an en bane decision in In re
Dillon, the Federal Circuit noted:
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Application 12/609,404
In briet: the cases establish that if an examiner considers that he
has found prior art close enough to the claimed invention to
give one skilled in the relevant chemical art the motivation to
make close relatives (homo logs, analogs, isomers, etc.) of the
prior art compound(s), then there arises what has been called a
presumption of obviousness or a prima facie case of
obviousness. In re Henze, 181F.2d196 ... (CCPA 1950); In re
Hass, 141F.2d122, 127, 130 ... (CCPA 1944). The burden
then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in
fact that, when the invention is looked at as a whole. In re
Papesch, 315 F.2d 381 ... (CCPA 1963). The cases of Hass
and Henze established the rule that, unless an applicant showed
that the prior art compound lacked the property or advantage
asserted for the claimed compound, the presumption of
unpatentability was not overcome.
In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990).
Subsequent Federal Circuit cases have articulated a two-part inquiry
into whether a claimed chemical compound would have been obvious.
Under this "lead compound analysis," \'l.;e must first "determine[] \'l1hether a
chemist of ordinary skill would have selected the asserted prior art
compounds as lead compounds, or starting points, for further development
efforts." Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1291 (Fed. Cir.
2012). "The second inquiry in the analysis is whether the prior art would
have supplied one of ordinary skill in the art with a reason or motivation to
modify a lead compound to make the claimed compound with a reasonable
expectation of success." Id. at 1292. The court in Otsuka stated that "mere
structural similarity between a prior art compound and the claimed
compound does not inform the lead compound selection." Id. The court,
however, did not indicate that this approach is required in all cases involving
chemical compounds. See id. at 1291 ("Our case law demonstrates that
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Application 12/609,404
whether a new chemical compound would have been prima facie obvious
over particular prior art compounds ordinarily follows a two-part inquiry.")
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of Worthley (Final Act. 4--7; FF 5-9) and agree that the
claims are rendered obvious by Worthley. We address Appellants'
arguments below.
Appellants contend that "Worthley does not disclose a self-
emulsifiable ester as recited by claim 1" (App. Br. 5). Appellants contend
that the "Office Action correctly notes that Worthley does not specifically
teach ethoxylated fatty acid esters as drift reducing self-emulsifiable esters.
However, the Office Action also incorrectly asserts that 'methoxylation is
merely a homo log derivation of claimed ethoxylated fatty acid esters"' (Br.
6). Appellants contend that:
(Id.).
What is missing from the analysis provided in the Office Action
is consideration of why a skilled artisan would have had (1) a
reason to actually make the asserted modifications and (2) an
expectation that the required structural changes would have
resulted in the asserted properties. Such consideration is
required to establish a prima facie case of obviousness of a
chemical compound.
The Examiner responds that "one of ordinary skill in the art
could readily modify the amount of the methylated fatty acid ester
in order to effectively control drift of pesticides as these agents
were already known in the art as viscosity modifying agents which
were useful in controlling spray drift of pesticides" (Ans. 6).
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Application 12/609,404
We conclude that the evidence supports the position of the Examiner.
Appellants do not dispute that ethoxylated fatty acid esters satisfy the
requirements of self-emulsifiable esters (see Br. 6), instead arguing that
there is no reason to modify the methoxylated fatty acid esters of Worthley
into ethoxylated fatty acid esters.
Dillon supports the Examiner's obviousness conclusion, because the
Examiner has established a prima facie case that Worthley teaches a
methoxylated fatty acid ester for use in reducing spray drift of agricultural
chemicals (FF 5-8) and has established that this compound differs from the
compound required by claim 1 by substitution of ethyl for methyl, an
adjacent homologue (see Ans. 6). See In re Papesch, 315 F.2d 381, 387
(CCPA 1963) ("The compound of plaintiffs' claim 3 is the next adjacent
homologue of the compound of plaintiffs' c[l]aim 2 ... ethyl in place of
methyl".) Appellants provide no evidence demonstrating that methyl soyate
"lacked the property or advantage asserted for the claimed compound"
because methyl soyate functions as a drift control agent (FF 6) resulting in a
conclusion that "the presumption of unpatentability was not overcome." See
Dillon, 919 F .2d at 696.
Even if we limit our consideration to a "lead compound analysis" test,
the first test part is satisfied because the Examiner has established that
methyl soyate would have been selected as a lead compound because the
"most preferred viscosity modifying agent is methyl soyate" (FF 7).
Regarding the second part of the test, Worthley teaches that
"[ e ]ffective drift control agents need to be relatively resistant to high shear
process conditions" (FF 9) and that the "methylated seed oil component of
the present invention is included in the drift control agents of the present
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Application 12/609,404
invention to make the lecithin mixture less viscous and easier to pump and
stir during the spraying process" (FF 10). Thus, Worthley provides reasons
to modify the lead compound in order to improve resistance to high shear
process conditions and to reduce viscosity of the lecithin mixture for ease of
pumping (FF 910). These reasons provide a basis to "form the ethoxylated
fatty acid esters [that] would obviously lead to compounds which would also
reduce spray drift (i.e. solving the problem of the instant claims and the prior
art) and function as emulsifiers/viscosity modifiers" (Final Act. 9).
Appellants provide no evidence that there would not have been a
reasonable expectation of success in replacing the methyl group with the
adjacent homologue ethyl group (Br. 6). Kubin stated that, "[r]esponding to
concerns about uncertainty in the prior art influencing the purported success
of the claimed combination, this court [in 0 'Farr ell] stated: ' [ o ]bviousness
does not require absolute predictability of success ... all that is required is a
reasonable expectation of success."' In re Kubin, 561F.3d1351, 1360 (Fed.
Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988).
Here, there is a reasonable expectation of success in using the adjacent ethyl
homologue in the place methyl soyate.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Worthley renders obvious a self-emulsifiable ester as required by claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1-8 under 35 U.S.C.
§ 102(b) as anticipated by Bell.
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Appeal2013-010632
Application 12/609,404
We atlirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious over Worthley. Claims 2-8 fall with claim 1. 37 C.F.R.
§ 41.37(c)(iv).
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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