Ex Parte REID et al

Patent Trials and Appeals Board

Apr 10, 2019

13840921 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/840,921 03/15/2013
120561 7590
Bayer CropScience LP
1 Bayer Drive
Indianola, PA 15051
04/12/2019
FIRST NAMED INVENTOR
Byron L. REID
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.
2912939-062002 9841
EXAMINER
CLARK, AMYL YNN
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
04/12/2019 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):
us-patents@bayer.com
docketing@mmwvlaw.com
uspoccs@bayer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BYRON L. REID, ROBERT B. BAKER, NANGGANG N. BAO,
DEBORAH A. KOUFAS, GERALD J. KENT, and PETER BAUR
Appeal2017-008957 1
Application 13/840,921
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a pesticidal
composition. The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants state that "[t]he real party in interest is BAYER CROP
SCIENCE LP, 2 T.W. Alexander Drive, Research Triangle Park, North
Carolina 27709, by virtue of the Assignment recorded at reel/frame number
031180/0151." Br. 3.
Appeal2017-008957
Application 13/840,921
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner's rejection of
claims 53, 61, and 62 under 35 U.S.C. § I03(a) as being unpatentable over
Ishaque, 2 Lowell, 3 and Plasticizer. 4 Ans. 2-6.
Claim 53 is illustrative and reads as follows:
53. A pesticidal composition comprising an active ingredient
comprising fipronil, ethiprole, and/or tebufenpyrad and an
adjuvant comprising dibutyl sebacate, wherein the adjuvant is
present in an amount sufficient to stabilize said composition.
Br. 11.
OBVIOUSNESS
The Examiner's Prima Facie Case
The Examiner cited Ishaque as disclosing insecticide-containing
expandable polystyrene foams for use in the construction industry as
insulation material. Ans. 2. The Examiner found that Ishaque described
using fipronil and ethiprole as the insecticides in the foams. Id. ( citing
Ishaque ,r 60). The Examiner found that Ishaque also described including
plasticizers in the polystyrene foams. Id. ( citing Ishaque ,r 85).
The Examiner found that Ishaque differs from Appellants' claims 53,
61, and 62 in that Ishaque did not describe including dibutyl sebacate in its
compositions. See id.
As evidence that, despite that difference, the subject matter recited in
Appellants' claims would have been obvious to an ordinary artisan, the
2 US 2011/0002998 Al (published Jan. 6, 2011).
3 US 3,579,612 (issued May 18, 1971).
4 https://web.archive.org/web/20071114141824/http:/len.
wikipedia.org/wiki/Plasticizer (last accessed by Examiner Feb. 24, 2016).
2
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Application 13/840,921
Examiner cited Lowell for its teaching that it was known in the art to use
dibutyl sebacate as a plasticizer when producing high impact polystyrene
compositions. Id. at 3 ( citing Lowell 2:56-62).
Based on the combined teachings of Ishaque and Lowell, the
Examiner reasoned that an ordinary artisan "would have been motivated to
choose dibutyl sebacate considering that this is a well-known, suitable
plasticizing agent for polystyrene according to Lowell. Thus, there would
have been a reasonable expectation of success in using dibutyl sebacate as
the plasticizing agent for the EPS [expandable polystyrene] oflshaque." Id.
Lastly, the Examiner cited the Plasticizer article as evidence that the
requirement in Appellants' claim 53, for the dibutyl sebacate to be present in
an amount sufficient to stabilize the composition, encompasses the amount
of dibutyl sebacate when used as a plasticizer:
[P]lasticizers do lend at least some amount of flexibility
( as opposed to, e.g., brittleness) and durability to a plasticized
product and therefore, the use of dibutyl sebacate as a
plasticizer in the insecticidal [polystyrene] beads of Ishaque et
al. (and the amount of dibutyl sebacate used as a plasticizer)
would have offered durability to such a bead and subsequently
inherently provided 'stability' to such a composition absent
evidence to the contrary.
Id. at 4 ( citing Plasticizer 2).
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
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Application 13/840,921
Having carefully considered the evidence and arguments advanced by
Appellants and the Examiner, Appellants do not persuade us that the
preponderance of the evidence fails to support the Examiner's conclusion of
obviousness as to claims 53, 61, and 62 over Ishaque, Lowell, and
Plasticizer.
As the Supreme Court explained in KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398 (2007), "when a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
In the present case, claim 53 recites a pesticidal composition that may
contain as few as two ingredients: (1) an active ingredient which may be
fipronil, ethiprole, and/or tebufenpyrad, and (2) dibutyl sebacate as an
adjuvant ingredient. Br. 11.
Claim 53 specifies that the dibutyl sebacate adjuvant "is present in an
amount sufficient to stabilize said composition." Id.
Turning to the cited prior art, Ishaque discloses that "[p ]olymer foams
are used by way of example in the construction industry as insulation
material both above and below ground." Ishaque ,r 2. However,
"[ c ]onsumption by insects, in particular termites, can substantially damage
these foams." Id.
To address that problem, Ishaque discloses:
a process for the production of insecticide-modified bead
material composed of expandable polystyrene (EPS) by
extrusion, comprising the steps of ...
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a) mixing, in a mixer, to incorporate a blowing agent and
an insecticide ... into a polymer melt which comprises at least
one polystyrene (PS), based on a vinylaromatic monomer, ...
b) discharging the polymer melt comprising blowing
agent, and ...
c) pelletizing the polymer melt comprising blowing
agent.
Ishaque ,r,r 8-11.
Ishaque discloses that, "[ f]or the purposes of the invention,
polystyrene (PS) is used as a collective term for homo- and copolymers
composed of styrene, of other vinylaromatic monomers, and, if desired, of
further comonomers" and "includes by way of example ... high-impact
polystyrene, HIPS, comprising, for example, polybutadiene rubber or
polyisoprene rubber." Id. ,r 16
As the Examiner found, and as required by Appellants' claim 5 3,
Ishaque discloses that the insecticide added to the polystyrene composition
may be "at least one insecticide from the group of the phenylpyrazoles, in
particular fipronil (IV), ... ethiprole (V) . . . . Fipronil is particularly
preferred." Id. ,r,r 60-62.
Although Ishaque' s compositions appear to differ from the
compositions recited in Appellants' claim 53 in not expressly including
dibutyl sebacate in the compositions, as the Examiner found, Ishaque
discloses that its insecticide-containing polystyrene compositions may
contain "further additives. According to the invention, the term additives is
used as a collective term for auxiliaries used during the polymerization
reaction, preferably during the suspension polymerization reaction, examples
being ... plasticizers." Id. ,r 85.
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Application 13/840,921
As the Examiner found, Lowell discloses that, "[i]n the preparation of
high impact polystyrene by bulk prepolymerization of a rubber in a styrene
followed by aqueous suspension polymerization using water-soluble
suspending agents" (Lowell 1: 11-14 ), "there may be added other materials,
for example plasticizers or lubricants such as dibutyl sebacate." (id. at 2:58-
60).
In addition, as the Examiner found, the Plasticizer article explains:
Plasticizers for plastics are additive[ s ], most commonly
phthalates, that give hard plastics like PVC the desired
flexibility and durability. They are often based on esters of
polycarboxylic acids with linear or branched aliphatic alcohols
of moderate chain length. Plasticizers work by embedding
themselves between the chains of polymers, spacing them apart
(increasing of the "free volume"), and thus significantly
lowering the glass transition temperature for the plastic and
making it softer.
Plasticizer 1.
The Plasticizer article lists dibutyl sebacate as a plasticizer. Id. at 2.
Given Ishaque's teaching that it was useful to include a plasticizer in
its fipronil/ethiprole-containing high-impact polystyrene compositions, and
given Lowell's teaching that dibutyl sebacate was a useful plasticizer for
inclusion in high-impact polystyrene compositions, Appellants do not
persuade us (see Br. 6-8), that the Examiner erred in finding that an ordinary
artisan had motivation for, and a reasonable expectation of success in, using
dibutyl sebacate as a plasticizer in Ishaque's fipronil/ethiprole-containing
high-impact polystyrene compositions. The reasonable expectation of
dibutyl sebacate use as a suitable plasticizer is found particularly in light of
the Plasticizer article's disclosure that plasticizers improve the durability of
polymer products. Appellants do not persuade us, therefore, that the
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Examiner erred in finding that the combination of insecticides and di butyl
sebacate recited in Appellants' claim 53 would have been obvious.
We acknowledge, but are unpersuaded by, Appellants' contention that
"[ t ]here is simply no indication that sebacates could stabilize the active
ingredient of ethiprole, fipronil or tebufenpyrad." Br. 8. As noted above,
and as the Examiner contends, the Plasticizer article provides evidence,
unrebutted by Appellants, that adding a plasticizer to Ishaque' s compositions
would increase the durability of the overall composition See Plasticizer 1
("Plasticizers ... give hard plastics like PVC the desired flexibility and
durability.") ( emphasis omitted). The Examiner explained that the amount
of that plasticizer added to increase the durability of Ishaque' s composition
would, because of the properties of the chemical composition, result in a
stabilizing effect to the insecticides contained therein irrespective of whether
the references teach such an effect, and the Appellants do not off er any
rebuttal evidence to contradict that position. Accordingly, Appellants do not
persuade us that the Examiner erred in determining that the amount of
dibutyl sebacate recited in Appellants' claim 53 encompasses the
plasticizing amount suggested by the cited prior art.
Moreover, as the Supreme Court has explained, "[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." KSR, 550 U.S. at 419. Thus, in the present case, even
if it were true that Appellants' purpose of combining di butyl sebacate and
the claim-recited insecticides (stabilization) was distinguishable from the
motivation discussed above supplied by the cited references (plasticizing),
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that alleged difference would not demonstrate the unobviousness of the
composition recited in Appellants' claim 53.
We are also unpersuaded by Appellants' citation of the Specification
at page 4, lines 23-24, and original claim 15, as evidence that "in contrast to
the assumption by the Office, an amount of dibutyl sebacate used as a
plasticizer is not equivalent to an amount of dibutyl sebacate sufficient to
stabilize the composition of the instant claims." Br. 8.
Unlike original claim 15, appealed claim 53 does not recite that the
dibutyl sebacate is in an amount that provides negligible ability to function
as a plasticizer. See id. at 11. Appealed claim 53, therefore, does not
exclude the amount of dibutyl sebacate suggested by the prior art.
We acknowledge the Specification's statement that, "[i]n one
embodiment, the adjuvant is in an amount so as to provide negligible ability
to function as a plasticizer." Spec. 4:21-22.
It is well settled, however, that "while 'the specification [ should be
used] to interpret the meaning of a claim,' courts must not 'import[ ]
limitations from the specification into the claim.' ... [I]t is improper to
'confin[ e] the claims to th[ e] embodiments' found in the specification." In
re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007)
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
( alteration in original) ( citations omitted). We are not persuaded, therefore,
that Appellants' claim 53 should be interpreted to exclude the plasticizing
amounts of dibutyl sebacate suggested by the cited references, based on the
statement in the Specification cited by Appellants.
In sum, for the reasons discussed, Appellants do not persuade us that
preponderant evidence fails to support the Examiner's conclusion of
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obviousness as to Appellants' claim 53 in light of Ishaque, Lowell, and
Plasticizer. We, therefore, affirm the Examiner's obviousness rejection of
claim 53 over Ishaque, Lowell, and Plasticizer.
Appellants' claim 61 recites "[t]he composition of claim 53, wherein
the active ingredient comprises ethiprole." Br. 12.
As noted above, Ishaque discloses including ethiprole in its
insecticide-containing polystyrene compositions. Ishaque ,r 60.
Accordingly, for essentially the reasons discussed above as to Appellants'
claim 53, Appellants do not persuade us that the combination of Ishaque,
Lowell, and Plasticizer fails to suggest the composition recited in
Appellants' claim 61. Accordingly, we affirm the Examiner's rejection of
claim 61 over Ishaque, Lowell, and Plasticizer.
Appellants' claim 62 recites "[a] method for controlling or preventing
a pest infestation comprising administering the composition of claim 53 to a
place in need thereof." Br. 12.
As the Examiner found, Ishaque discloses using its insecticide-
containing polystyrene compositions "in particular [as] insulation material,
in the construction industry, in particular for the protection of buildings from
termites." Ishaque ,r 12. Appellants do not persuade us, therefore, that the
combination of Ishaque, Lowell, and Plasticizer fails to suggest the method
recited in Appellants' claim 62. Accordingly, we affirm the Examiner's
rejection of claim 62 over Ishaque, Lowell, and Plasticizer.
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SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 53, 61, and 62 under 35 U.S.C. § 103(a) as being unpatentable over
lshaque, Lowell, and Plasticizer.
TIME PERIOD
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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