Ex Parte Shirley et al

Patent Trial and Appeal Board

Aug 24, 2018

13588535 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/588,535 08/17/2012 Ian Malcolm Shirley
26748 7590 08/28/2018
Syngenta Crop Protection LLC
Patent Department
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
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.
70593-US-REG-C-NAT-l 4893
EXAMINER
FISHER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
08/28/2018 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):
global.patents@syngenta.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN MALCOLM SHIRLEY, MICHAEL JOHN BEAN,
CATHERINE JULIA PIPER, JOHN MARTIN SILVERTHORNE,
IAN DAVID TOVEY, and PATRICK JOSEPH MULQUEEN 1
Appeal2017-001935
Application 13/588,535
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a coating
composition. According to the Specification, the coating compositions are
used to protect substrates from pests and pest damage. (Spec. ,r 1.)
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is Syngenta Crop
Protection, LLC. (Appeal Br. 3.)
Appeal2017-001935
Application 13/588,535
STATEMENT OF THE CASE
Claims on Appeal
Claims 30, 32, 37, 39--46, and 57 are on appeal. 2 (Claims Appendix,
Appeal Br. 32-33.) Claim 30 is illustrative and reads as follows:
30. A coating composition comprising an aqueous dispersion
of a pesticidally effective amount of at least one
microencapsulated pesticide selected from lambda cyhalothrin,
fipronil and thiamethoxam and a film-forming effective amount
of at least one latex polymeric film-forming, water-insoluble
binder; wherein the composition has a minimum film forming
temperature (MFFT) of from O to 50 degrees Celsius and a
coating prepared from the composition is substantially water-
impermeable according to ASTM D 870-2 at 20 degrees Celsius.
Examiner's Rejections
1. Claims 30, 32, 37, and 41 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Masaru3 and Igari. 4 (Final Act. 3-5.)
2. Claims 39, 40, and 44 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Masaru, Igari, and Smith. 5 (Id. at 6-7.)
3. Claims 42 and 43 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Masaru, Igari, and Puglisi. 6 (Id. at 7-8.)
4. Claim 46 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
2 Claims 1-29, 31, 36, 47, 54--56, and 58 are cancelled, and claims 33-35,
38, and 48-53 are withdrawn. (Final Office Action dated April 29, 2015
("Final Act."), at 2.)
3 Masaru et al., JP 10-059811, published March 3, 1998 (English language
Abstract and machine translation of record) ("Masaru").
4 Igari et al., US 2001/0008874 Al, published July 19, 2001 ("Igari").
5 Smith et al., US 5,834,006, issued Nov. 10, 1998 ("Smith").
6 Puglisi et al., US 6,329,319 Bl, issued Dec. 11, 2001 ("Puglisi").
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unpatentable over Masaru, Igari, Smith, and Rase. 7 (Id. at 8-9.)
5. Claim 57 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Masaru, Igari, and Jeffries. 8 (Id. at 9-10.)
6. Claims 30, 32, 37, 41, 44, and 45 stand rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over Masaru and Lo. 9 (Id. at 10-13.)
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes. Additional findings may also be found in this Decision, the Final
Action, and the Examiner's Answer.
FF 1. Masaru discloses a termite controlling agent-containing dispersion
comprising a microcapsule enclosing allyl isothiocyanate ( a pesticide) and a
binder in an aqueous medium, wherein the dispersion can be coated.
(Masaru Abstract; Final Act. 3.)
FF 2. The Specification defines "latex" as "any polymeric product produced
as an aqueous suspension emulsion polymerization process and includes
within its scope both synthetic latexes and natural latexes." (Spec. ,r 14.)
FF 3. The Specification states that "the binder is a latex ... [ and] is selected
so that the coating that is formed from the aqueous coating composition has
a resultant MFFT or film formation temperature of the cured composition
within a pre-selected range, thereby providing a coating which is
substantially water-impermeable," and "[s]uitable latexes for use in the
7 Rase et al., US 5,169,631, issued Dec. 8, 1992 ("Rase").
8 Jeffries et al., EP 0238184 Al, published Sept. 23, 1987 ("Jeffries").
9 Lo et al., US 6,419,942 Bl, issued July 16, 2002 ("Lo").
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composition comprise polymers and copolymers of styrene, alkyl styrenes."
(Spec. ,r,r 35-36.)
FF 4. Masaru teaches that the binder may be an aqueous emulsion of a
synthetic resin that may be acrylic styrene copolymerization resin. (Masaru
Abstract, ,r 58; Final Act. 3--4.)
FF 5. Igari teaches a microencapsulated product that includes a core
material such as an insecticide, and teaches fipronil as an example
insecticide. (Igari Abstract, ,r 23; Final Act. 4.)
FF 6. The Examiner finds that Smith teaches latex-based compositions that
can comprise an insecticide, and that the latex polymer comprises particles
in the range of0.03 to 20 microns (preferably 0.1 to 10 microns), and that
adjuvants such as freezing point depressants and thickening agents can be
added to the compositions. (Final Act. 6-7, citing Smith Abstract, col. 4, 11.
63---65, and col. 8, 11. 10-18.)
FF 7. The Examiner finds that Puglisi teaches a seed coating composition
which entraps active ingredients, such as pesticides and insecticides, and that
includes a polymer, such as vinyl monomers and acrylate monomers (multi-
and bi-functional monomers), and that such compositions strongly adhere
and provide a uniform coating. (Final Act. 8, citing Puglisi Abstract, col. 2,
11. 8-13, col. 3, 11. 40-53, and col. 4, 11. 8-13.)
FF 8. The Examiner finds that Rase teaches a topical antimicrobial
composition, having microcapsules containing an antimicrobial agent such
as triclosan. (Final Act. 9, citing Rase Abstract, col. 2, 11. 15-20.)
FF 9. The Examiner finds that Jeffries teaches a microencapsulated
pesticide formulation which also includes a non-encapsulated pesticide, and
that "the inclusion of non-encapsulated pesticide provides an immediate
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dose of such pesticide even before the encapsulated pesticide becomes
available." (Final Act. 9, citing Jeffries Abstract and 3, 11. 17-20.)
FF 10. The Examiner finds that Lo teaches water-dispersible compositions
containing microencapsulated pesticides, including microencapsulation of
lambda-cyhalothrin (an insecticide and termiticide). (Final Act. 11-12,
citing Lo Abstract and claim 4.)
DISCUSSION
We adopt the Examiner's findings, analysis, and conclusions,
including with regard to the scope and content of and motivation to combine
the prior art, as set forth in the Final Action and Answer, except with respect
to Rejection No. 4 (claim 46). We discern no error in the rejections of
claims 30, 32, 37, 39-45, and 57 as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejections under 35 U.S.C. § 103(a).
Analysis
Rejection No. 1
We limit our consideration to claims 30 and 37 because claims 32 and
41 were not argued separately. Claims 3 2 and 41 fall with claim 3 0.
Examiner's Position
Regarding claim 30, the Examiner concludes that
it would have been obvious to a person of ordinary skill in the art
at the time that the invention was made to substitute fipronil as
the pesticide of Masaru [] while utilizing a synthetic resin such
as acrylic styrene copolymerization resin as taught by Masaru []
One would be motivated to do so with a reasonable expectation
of success as Igari [] teaches the microencapsulation of
hydrophobic materials including insecticides such as fipronil.
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Alternatively, it would have been obvious to one of ordinary skill
in the art at the time the invention was made to combine the
teachings of Masaru [] and Igari [] to form a microencapsulated
composition with allyl isothiocyanate and fipronil. One would
have been motivated to do so with a reasonable expectation of
success as "[i]t is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful
for the same purpose, in order to form a third composition to be
used for the very same purpose .... [T]he idea of combining them
flows logically from their having been individually taught in the
prior art." In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069,
1072 (CCPA 1980).
(Final Act. 4--5.)
Regarding the film forming and water impermeable recitations in
claim 30, the Examiner finds that a person of ordinary skill would expect
that the use of the same materials would result in the same properties as
claimed. (Id. at 5, 14; see also Ans. 4--5.)
As to claim 37, the Examiner finds that Masaru's teachings of acrylic
resins, acrylic styrene copolymer resins, and vinylidene chloride satisfies the
latex polymer claim limitation. (Final Act. 5, citing Masaru ,r 58.)
Appellants 'Arguments
Claim 30
Appellants argue that Masaru teaches "microcapsules comprising a
core of gel-like polyurethane resin containing allyl isothiocyanate, not a core
comprising gel-like polyurethane resin in combination with fipronil alone or
fipronil in combination with allyl isothiocyanate." ( Appeal Br. 11.)
According to Appellants, Masaru does not suggest use of any other core
materials other than gel-like polyurethane and allyl isothiocyanate. (Id.)
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We are not persuaded. The test for obviousness is "what the
combined teachings of the references would have suggested to those of
ordinary skill in the art," and nonobviousness cannot be established by
attacking references individually where ( as here) the Examiner bases the
rejection on a combination of references (Masaru and Igari). See In re
Keller, 642 F.2d 413,425 (CCPA 1981).
Appellants argue that Masaru "teaches away" because "the removal of
allyl isothiocyanate from the microcapsules of Masaru, and substitution of
fipronil therefor, significantly changes the principle of operation of the
teaching ofMasaru." (Appeal Br. 11.) We are not persuaded. Rather than
teaching away, the rejection includes the mere substitution of one pesticide
for another pesticide known in the field, yielding predictable results. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Moreover, that
substitution does not change Masaru's principle of operation as a termite
controlling agent-containing dispersion. (Masaru Title.)
Appellants argue that the only guidance for combining select portions
of Masaru and Igari "has been gleaned from Appellants' original
specification, not the prior art." (Appeal Br. 12.) We are not persuaded.
Rather than using hindsight, the Exarniner points to specific disclosures in
the prior art that describe the limitations of Appellants' claimed coating
composition. (Final /\ct 3----5.) \Ve therefore find that the Examiner's
obviousness conclusion is based on sufficiently aiiiculated reasoning that
overcomes any concerns about hindsight bias. See KSR, 550 U.S. at 418; see
also Ans. 4.
Appellants contend that Masaru and Igari provide no reason or
suggestion that would have led one skilled in the art to have combined their
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respective teachings as done so by the Examiner. (Appeal Br. 12-13.) We
are not persuaded. KSR makes clear that "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." KSR, 550 U.S. at 417 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Here, claim 30
constitutes the mere rearrangement of old components ( e.g., substitution of
one pesticide for another), yielding predictable results. Moreover, the fact
that fipronil may be selected from many possible pesticides ( as Appellants
assert) does not render claim 30 any less obvious. See Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious").
Appellants argue that "Masaru and Igari fail to disclose, teach or
suggest a composition having 'a minimum film forming temperature
(MFFT) of from Oto 50 degrees Celsius' and that 'a coating prepared from
the composition is substantially water-impermeable according to ASTM D
870-2 at 20 degrees Celsius."' (Appeal Br. 13.) Furthermore, according to
Appellants, the Examiner has not provided any facts or technical reasoning
that the disclosed compositions inherently possess the claimed "MFFT" and
"water-impermeability" properties. (Id. at 14.)
We are not persuaded. As the Examiner explains, a person of
ordinary skill in the art would expect that using the same materials would
result in the claimed properties. (Final Act. 5, 14--15; Ans. 4--5.)
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
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applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product. .
. . Whether the rejection is based on 'inherency' under 35 U.S.C.
§ 102, on 'prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (cited at Ans. 5).
On this record, Appellants have not met their burden of rebutting the
Examiner's reasonable assertion of inherency or prima facie obviousness.
Claim 37
Claim 37 recites the coating composition according to claim 30
"wherein the latex polymer comprises a polymer selected from polymers of
styrene, alkyl styrenes" followed by a list of additional possible compounds.
(Appeal Br. 32.) The Examiner points to Masaru's teaching that its latex
binder may be acrylic styrene copolymerization resin. (FF 4.) As the
Examiner explains, "the claim [37] requires a polymer of styrene with no
further limitations on the structure, which is met by the acrylic styrene
copolymerization resin taught by Masaru." (Ans. 6.)
Appellants argue that "the phrase 'acrylic styrene copolymerization
resin' as used in ... Masaru refers to copolymers formed from acrylic acid
monomers and styrene monomers. Such copolymers are not recited in
Appellants' claim 3 7. Further, such copolymers do not suggest the polymers
recited in Appellants' claim 3 7." ( Appeal Br. 15.) We are not persuaded,
and agree with the Examiner that the term "polymers of styrene" reasonably
reads on the "acrylic styrene copolymerization resin" taught by Masaru.
Notably, claim 37 does not recite polymers of styrene consisting entirely of
styrene monomers.
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Rejection No. 2
The Examiner concludes that it would have been obvious, in
combination with Masaru and Igari, to select a particle size as taught by
Smith, as well as adding adjuvants such as freezing point depressants and
thickening agents, as further taught by Smith. (Final Act. 6-7; FF 6.)
Appellants essentially rely on prior arguments, and contend that Smith does
not cure the deficiencies noted in the response to Rejection No. 1 and that
Masaru does not guide one skilled in the art to make the combination.
(Appeal Br. 16-17.) Accordingly, we affirm Rejection No. 2 (claims 39, 40,
and 44) for failing to address the rejection beyond mere conclusory
statements. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e
hold that the Board reasonably interpreted Rule 41.3 7 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.").
Rejection No. 3
We limit our consideration to claim 42 because claims 42 and 43 were
not argued separately. Claim 42 recites that the composition according to
claim 3 0 "further comprises at least one multi-functional monomer."
(Appeal Br. 33.) Claim 43 falls with claim 42.
The Examiner concludes that it would have been obvious to add
multi-functional monomers as taught by Puglisi to the composition of
Masaru and Igari, and that one would be motivated to do so with a
reasonable expectation of success because Puglisi teaches that such
compositions strongly adhere and provide a uniform coating. (Final Act. 8;
FF 7.)
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Appellants argue that "[g]iven the divergent subject matter, it is
difficult for Appellants to understand what would have motivated one skilled
in the art, given the teaching of Masaru ... to seek out the teaching of
Puglisi directed to seed coating compositions," and that the only guidance is
based on hindsight. (Appeal Br. 19.) Appellants further argue that, even if
the proposed combination is proper, the combination "does not suggest to
one skilled in the art to incorporate at least one multi-functional monomer
into Masaru's disclosed composition, but instead to utilize at least one multi-
functional monomer to form a polymer within Masaru's disclosed
composition." (Id.)
We are not persuaded. Puglisi teaches the desirable use of multi-
functional monomers in coating compositions. (Final Act. 7-8; Ans. 6; FF
7 .) Furthermore, rather than using hindsight, the Examiner points to specific
disclosures in the prior art that describe the limitations of Appellants'
claimed coating composition. (Final Act 7----8.) \Ve therefore find that the
Examiner's obviousness conclusion is based on sufficiently articulated
reasoning that overcomes any concerns about hindsight bias. See KSR, 550
U.S. at 418.
Appellants' argument that the proposed combination suggests "to
utilize at least one multi-functional monomer to form a polymer within
Masaru's disclosed composition" rather than incorporate at least one multi-
functional monomer into Masaru's disclosed composition is unpersuasive
because claiming that the composition comprises at least one multi-
functional monomer includes the utilization of the multi-functional
monomer to form a polymer within the composition (i.e., the composition
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comprises the multi-functional monomer because the monomer is included
in the polymer within the composition).
Rejection No. 4
Claim 46 recites "[a] coating composition according to claim 44,
wherein the antimicrobial agent is triclosan." (Appeal Br. 33.) Claim 44
depends from claim 30 and recites "further comprising at least one additive
selected from antimicrobial agents" and other listed additives, such as
thickeners and freeze-thaw stabilizers. (Id.)
The Examiner points to Rase (FF 8) to conclude that it would have
been obvious to substitute triclosan for the allyl isothiocyanate of Masaru, 10
based on the contention that Rase "teaches that triclosan can be
microencapsulated in a composition and both triclosan and allyl
isothiocyanate have antibacterial properties." (Final Act. 9.) Appellants
argue that "it is difficult for Appellants to understand what would have
motivated one skilled in the art, given the teaching of Masaru directed to the
above-described specific termite controlling agents, to seek out the teaching
of Rase directed to topical antimicrobial compositions for use on skin."
(Appeal Br. 20-21.)
We find that Appellants have the better position. Rase is directed to
topical antimicrobial compositions. (Rase Title.) We agree with Appellants
that the Examiner does not articulate a sufficient reason with some rational
underpinning to support the rejection. See KSR, 550 U.S. at 418.
Accordingly, the rejection of claim 46 is reversed.
1° Claim 46, as dependent from claims 44 and 30, recites adding triclosan to
the composition, not substituting triclosan in place of the pesticide.
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Rejection No. 5
Claim 57 recites the composition according to claim 30 "which further
comprises at least one non-microencapsulated pesticide." (Appeal Br. 33.)
The Examiner concludes that it would have been obvious to add a non-
encapsulated pesticide, as taught by Jeffries, to the composition of Masaru
and Igari. (Final Act. 10; FF 9.) Appellants essentially rely on prior
arguments, and contend that Jeffries does not cure the deficiencies noted in
the response to Rejection No. 1 and that Masaru does not guide one skilled
in the art to make the combination. (Appeal Br. 21-23.) Accordingly, we
affirm Rejection No. 5 (claim 57) for failing to address the rejection beyond
mere conclusory statements. See Lovin, 652 F.3d at 1357.
Rejection No. 6
Rejection No. 6 is similar to Rejection No. 1, but the Examiner relies
on Lo's teaching of lambda-cyhalothrin as the pesticide rather than Igari's
teaching of fipronil. (Final Act. 10-13; FF 10.) Appellants also advance
arguments regarding claims 30 and 37 similar to those advanced in
connection with Rejection No. 1 (compare Appeal Br. 11-15 with Appeal
Br. 26-30), and we also find those arguments unpersuasive for the reasons
set forth above. Claims 32, 41, 44, and 45 fall with claim 30.
Accordingly, for the reasons of record and as set forth above, we
affirm the rejections of claims 30, 32, 37, 39--45, and 57, and reverse the
rejection of claim 46.
Conclusions of Law
A preponderance of evidence of record supports the Examiner's
rejection of claims 30, 32, 37, 39--45, and 57 under 35 U.S.C. § 103(a), but
fails to support the rejection of claim 46 under 35 U.S.C. § 103(a).
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SUMMARY
We affirm the rejections of claims 30, 32, 37, 39-45, and 57.
We reverse the rejection of claim 46.
TIME PERIOD FOR RESPONSE
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-IN-PART
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