Ex Parte Terada et al

Patent Trial and Appeal Board

Apr 13, 2017

12439701 (P.T.A.B. Apr. 13, 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.
12/439,701 03/03/2009 Takatoshi Terada Q112340 6537
23373 7590 04/17/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
04/17/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKATOSHI TERADA and MANABU TAGAMI
Appeal 2016-002429
Application 12/439,701
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a
powdery pesticidal composition and method. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Statement of the Case
Background
“A powdery pesticidal composition comprising the conventional
powdery coated pesticide which is coated with a thermosetting resin has bad
flowability, and therefore . . . may clog” (Spec. 1:24 to 2:4).
1 Appellants identify the Real Party in Interest as SUMITOMO CHEMICAL
COMPANY, LIMITED (see App. Br. 2).
Appeal 2016-002429
Application 12/439,701
“According to the present inventors, good flowability of a powdery
pesticidal composition is attained by mixing a particular calcium carbonate
micropowder with a powdery coated pesticid[e] which is coated with a
thermosetting resin” (Spec. 2:7—11).
The Claims
Claims 1—4 are on appeal. Claim 1 is representative and reads as
follows:
1. A powdery pesticidal composition comprising a mixture
of a coated pesticide having a volume median diameter of 10 to
150 pm in which a powdery agrichemical is coated with a
the [r] mo setting resin, and a calcium carbonate micropowder
having a bulk density of 0.6 g/ml or less, wherein the weight
ratio of the coated pesticide to the calcium carbonate
micropowder is in the range of 100:1 to 100:30.
The issue
The Examiner rejected claims 1—4 under 35 U.S.C. § 103(a) as
obvious over Inoue,2 Winston,3 Knight,4 and Baibulatov5 (Ans. 3—5).
The Examiner finds Inoue teaches “granular pesticidal compositions
in which a solid pesticidal core is coated with a thermosetting resin” with
particle diameters that “range from 0.1-5 mm (100 um to 5000 um)” (Ans.
3). The Examiner acknowledges that Inoue “fails to teach providing calcium
carbonate . . . wherein the bulk density of the calcium carbonate is 0.6 g/mL
2 Inoue et al., US 2002/0054897 Al, published May 9, 2002 (“Inoue”).
3 Winston, A., US 5,443,835, issued Aug. 22, 1995 (“Winston”).
4 Knight et al., US 5,030,379, issued July 9, 1991 (“Knight”).
5 Baibulatov et al., RU 2229442 C2, published May 27, 2004, abstract only
(“Baibulatov”).
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Appeal 2016-002429
Application 12/439,701
or less and wherein the weight ratio of the coated pesticide to the calcium
carbonate micropowder is in the range of 100:1 to 100:30” (Id.).
The Examiner finds Winston teaches pesticides including “calcium
carbonate so as to improve the free-flowing properties of the overall
formulation” (Ans. 3). The Examiner finds Knight teaches “high bulk
density powders, with a bulk density between 400-500 kg/m3 (0.4-0.5
g/mL), have improved flow and dispensing properties” (Ans. 4). The
Examiner finds Baibulatov teaches “calcium carbonate for use as fillers, ft
is taught that the bulk density of the calcium carbonate ranges between 120-
600 kg/m3 (0.12-0.60 g/mL; math not shown)” (Ans. 4).
The Examiner finds it obvious “to combine Winston, Knight and
Baibulatov with fnoue, such that the powdery pesticidal formulation of
fnoue could be modified to include calcium carbonate with a bulk density of
between 0.12-0.60 g/mL wherein the resulting formulation exhibits
improved flowability over the composition lacking calcium carbonate” (Ans.
4). The Examiner finds “Winston suggests the calcium carbonate be present
in an amount of 5% by weight [of] the composition which corresponds to a
weight ratio of 1:19” (Ans. 5).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the prior art renders claim 1
obvious?
Findings of Fact
1. fnoue teaches “a granular pesticidal composition coated with a
thermosetting resin. Also, the present invention relates to the granular
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Appeal 2016-002429
Application 12/439,701
pesticidal composition in which the thermosetting resin is a polyurethane
resin” (Inoue 13).
2. Inoue teaches “a granule having a diameter from 0.1 to 5 mm,
preferably from 0.5 to 3 mm” (Inoue 1196).
3. Winston teaches a “typical dry pulverulent composition is free-
flowing and has an average particle size diameter in the range between about
1-600 microns. An invention pesticide composition can be in the form of a
dusting powder which optionally can include a solid diluent such as . . .
calcium carbonate” (Winston 3:6—11).
4. Winston teaches “[illustrative of inert diluents are . . . calcium
carbonate . . . The inert diluent can be selected to function additionally as a
free-flow agent” (Winston 6:6—10).
5. Knight teaches “that high bulk density powders having
improved flow and dispensing properties and low levels of insoluble matter
can be prepared by coating the particles of a detergent base powder with a
relatively large amount of finely divided zeolite powder, and then spraying
on a liquid binder comprising nonionic surfactant” (Knight 1:3 5—41).
6. Baibulatov teaches “preparation of product having commercial
value . . . which as well can be used in preparation of fillers. . . . Precipitated
calcium carbonate contains 0.002-0.006% chlorine, has whiteness 95.0-
98.0% and bulk density 120-600 kg/m3” (Baibulatov, abstract; emphasis
omitted).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
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Application 12/439,701
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Appellants contend:
Neither Knight nor Baibulatov contains any reason at all to add
calcium carbonate having the presently recited bulk density to a
pesticidal composition. At best, Knight and Baibulatov may,
arguendo, stand for the fact that calcium carbonate having the
presently recited bulk density simply existed. However, mere
acknowledgment that an element of the presently claimed
invention existed is not enough to support an obviousness
rejection.
(App. Br. 17).
The Examiner responds:
An ordinarily skilled person is not an automaton, but rather is
creative and inquisitive and would desire to find simple
improvements to the formulations of the art. If such a result
was the finding that when calcium carbonate powder having the
claimed bulk density is added to the formulation of Inoue
yielded a powder having improved flow properties and
dispensability, then this would have been the product of
common sense and ordinary skill, not one of innovation.
(Ans. 7).
We find that Appellants have the better position. While Winston
reasonably renders obvious the use of calcium carbonate as a solid diluent
for pesticides such as the polyurethane coated pesticide of Inoue (FF 1—4),
the Examiner provides no reason why the ordinary artisan would have
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Appeal 2016-002429
Application 12/439,701
selected the particular bulk calcium carbonate of Baibulatov as the diluent in
a pesticide composition (FF 6). The Examiner has not established a reason
why it would have been obvious to try to use Baibulatov’s calcium
carbonate, based on either the teachings of the references or the knowledge
of the ordinary artisan. Instead, the Examiner simply relies upon the
creativity and inquisitive nature of the ordinary artisan, without specific
reasoning for the combination.
We also agree with Appellants that Baibulatov is not analogous art,
because it is neither from the same field of endeavor as Inoue, Winston, or
Knight, nor is there any indication that the teaching of the particular calcium
carbonate density in Baibulatov would have been pertinent to concerns about
the flowability of a powdery pesticidal compound that forms the basis of the
Examiner’s rejection. “A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Here, the zeolite in Knight is
coated onto the particles (FF 5), not used as a diluent as in Winston (FF 3—
4). We are not persuaded that the evidence demonstrates an inventor
concerned with flow properties in pesticides using diluents would look to the
density of active agent particles coated with zeolite to identity desirable bulk
densities of zeolite diluents mixed with active agent particles, or look to
Baibulatov for the specific calcium carbonate particle for incorporation into
the pesticide.
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Appeal 2016-002429
Application 12/439,701
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the prior art renders claim 1 obvious.
SUMMARY
In summary, we reverse the rejection of claims 1—4 under 35 U.S.C.
§ 103(a) as obvious over Inoue, Winston, Knight, and Baibulatov.
REVERSED
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