10784343 (B.P.A.I. Aug. 29, 2012)

Ex Parte Volgas et al

Board of Patent Appeals and InterferencesAug 29, 2012

10784343 (B.P.A.I. Aug. 29, 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. 10/784,343 02/23/2004 Greg Volgas 00306-00355-US 2346 23416 7590 08/29/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER PRYOR, ALTON NATHANIEL ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 08/29/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte GREG VOLGAS, JOHNNIE R. ROBERTS, and FLAVIOUS JOHNSON __________ Appeal 2011-009335 Application 10/784,343 Technology Center 1600 __________ Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge McCOLLUM. Concurring Opinion filed by Administrative Patent Judge FREDMAN. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a microemulsion-forming-concentrate and methods for its preparation and use. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-009335 Application 10/784,343 2 STATEMENT OF THE CASE Claims 91 and 94-104 are pending and on appeal (App. Br. 3). We will focus on claim 91, which is set forth in Appendix A to the Appeal Brief (id. at 23-24). Claim 91 is directed to a “microemulsion-forming- concentrate consisting of a herbicide compound in acid form and at least one surfactant . . .” (id. (emphasis added)). Claims 91 and 94-104 stand rejected under 35 U.S.C. § 103(a) as obvious over Agrochemicals Handbook 1 in view of Surfactants textbook 2 (Ans. 3). The Examiner relies on the Agrochemicals Handbook for teaching “the herbicidal acid form of 2,4-D and dicamba” (id. at 3-4). The Examiner acknowledges that the Agrochemicals Handbook “does not teach or suggest the addition of a surfactant to either acid herbicide” (id. at 4). The Examiner relies on the Surfactants textbook for disclosing “that surfactants are essential components of herbicide products, aiding in the dilution and shelf life of the herbicide” (id.). The Examiner finds that the Surfactants “textbook teaches that the use of nonionic surfactants such as alkylphenol ethoxylates, long chain alkanol ethoxylates and ethylene oxide/propylene oxide block copolymers . . . is common in pesticide and herbicide formulations” and “that in the pesticide and herbicide formulations such surfactants when combined with herbicide or pesticide produce an emulsion” (id.). 1 Royal Soc‟y of Chemistry, AGROCHEMICALS HANDBOOK A0111 & A0133 (3d ed. 1991). 2 Hewin Int‟l, SURFACTANTS AND OTHER ADDITIVES IN AGRICULTURAL FORMULATIONS 5 & 20-25 (1999). Appeal 2011-009335 Application 10/784,343 3 The Examiner concludes that it “would have been obvious to add said surfactant or surfactants to 2,4-D or dicamba in acid form . . . in order to enhance the shelf life and to aid the dilution of the herbicide” (id.). The Examiner finds that this “combination of references would result in an invention consisting of the claimed herbicide and claimed surfactant only” (id.). FINDINGS OF FACT 1. The Specification states: “Many agricultural formulations contain water-soluble salts of chlorinated carboxylic acid herbicides. These salts . . . are generally not as active as their acid equivalents. For example, (2,4-dichlorophenoxy)acetic acid („2,4-D‟) acid is known to be more herbicidally active than the dimethylamine salt of 2,4-D.” (Spec. 1: 14-18.) 2. The Specification also states: [M]any of the chlorinated carboxylic acid herbicides are sold to the end users as esters because these esters are more active than the corresponding amine formulation. For instance, it is generally known that 2,4-D ester formulations are more effective as herbicides than 2,4-D amine formulations. The esters, however, are more likely to volatilize even after deposition onto target areas. After volatilization, these esters can cause significant damage to off-target plants. (Id. at 1: 18-23.) 3. In addition, the Specification states that it “would be preferable . . . to apply the herbicides as acids,” but that “they are not significantly soluble in water” (id. at 2: 5-6). Appeal 2011-009335 Application 10/784,343 4 4. The Specification also states: Surfactants are used in most agricultural formulations to enhance the ease of application. . . . [M]any pesticide formulations use hydrophobic solvents, requiring the use of surfactants to emulsify the hydrophobic solvent and pesticide into water. Surfactants have also been used both as adjuvants and formulation components to enhance the effectiveness and spreading ability of applied sprays. (Id. at 3: 3-7.) 5. In addition, the Specification states that the inventors “have surprisingly discovered that many chlorinated carboxylic acid herbicides can be dissolved into surfactants” (id. at 3: 11-12). 6. Pesticides and Formulation Technology 3 states that “[e]mulsifiable concentrates consist of an oil-soluble active ingredient dissolved in an appropriate oil-based solvent to which is added an emulsifying agent” (Pesticides and Formulation Technology 15). 7. Auxiliaries for Agrochemical Formulations 4 states that “[e]mulsifiable concentrates usually contain: • active ingredients • emulsifiers • stabilizers, stickers, pH buffer etc... • solvents and cosolvents.” (Auxiliaries for Agrochemical Formulations 3-2.) 3 Andrew Martin et al., PURDUE PESTICIDE PROGRAMS: PESTICIDES AND FORMULATION TECHNOLOGY (2001). 4 Rhone-Poulenc, AUXILIARIES FOR AGROCHEMICAL FORMULATIONS (date unknown). Appeal 2011-009335 Application 10/784,343 5 8. Formulation Science 5 states that “[e]mulsifiable concentrates (EC) have problems of toxicity, phytotoxicity and flammability that are caused by organic solvents and synthetic surface-active agents used in EC” (Formulation Science 55). In an effort to improve these formulations, Formulation Science states to “[u]se water; solidify; change solvents or emulsifiers” (id. at 57). ANALYSIS It is undisputed that 2,4-D and dicamba in acid form were known herbicides (Ans. 3-4; App. Br. 12; Findings of Fact (FF) 1-3). It is also undisputed that it was known to include surfactants in herbicide formulations (Ans. 4; FF 4). However, the question raised in this appeal is whether the evidence of record supports the Examiner‟s conclusion that a formulation consisting of one or both of these herbicides and one or more of the claimed surfactants would have been obvious. Appellants have presented evidence indicating that emulsifiable concentrates include a solvent (FF 6-8). The Examiner has not presented evidence that the claimed surfactants were known solvents or evidence or even reasoning indicating that it would have obvious to exclude a known solvent from a herbicide formulation. Thus, we agree with Appellants that a preponderance of the evidence of record does not support the Examiner‟s conclusion that a composition consisting of one or both of the claimed 5 Kozo Tsuji, Recent Trends in Pesticide Formulations, FORMULATION SCIENCE (1997). Appeal 2011-009335 Application 10/784,343 6 herbicides and one or more of the claimed surfactants would have been obvious. We therefore reverse the obviousness rejection. REVERSED alw Appeal 2011-009335 Application 10/784,343 7 CONCURRING FREDMAN, Administrative Patent Judge. I concur with the Majority‟s decision to reverse the Examiner‟s obviousness rejection, but I write separately because I do not agree with the reasoning of the Majority. The Examiner has established, as the Majority acknowledges, that the specific herbicide and surfactants were known in the prior art (FF 1-4). The Examiner also provides a reason, consistent with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), to combine a surfactant with an herbicide, specifically “to enhance the shelf life” (Ans. 4). This reason has basis in the Surfactants textbook reference (see Ans. 4). The Majority finds, however, that the use of “consisting of” alone renders the claims unobvious since “Examiner has not presented evidence that the claimed surfactants were known solvents or evidence or even reasoning indicating that it would have obvious to exclude a known solvent from a herbicide formulation” (Majority Opinion, Supra). I am not persuaded by this reasoning, since the mere inclusion of “consisting of” alone does not, in my view, require evidence showing a reason to exclude other elements from an obvious composition. I concur, however, because I agree with Appellants that the finding that the acid form of the pesticide may be dissolved into surfactants alone is reasonably characterized as an unexpected result, consistent with the teaching that “[w]e have surprisingly discovered that many chlorinated carboxylic acid herbicides can be dissolved into surfactants” (Spec. 3, ll. 11- Appeal 2011-009335 Application 10/784,343 8 12). The Examiner provides no evidence that any herbicide was previously dissolved into a surfactant, that surfactants were ever previously used as solvents, and in particular, no evidence that the active acidic form would remain acidic and functional when dissolved into surfactants, but not other hydrophilic solvents, as taught by the Specification. I conclude that this unexpected result overcomes the prima facie case of obviousness presented by the Examiner, and for that reason, I concur in the reversal. alw