FMC Corporation

Patent Trials and Appeals Board

Sep 23, 2020

2020001043 (P.T.A.B. Sep. 23, 2020)

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.
15/294,225 10/14/2016 Timothy M. Martin 60980-USA-DIV2 6241
48219 7590 09/23/2020
PATENT DEPT.
FMC CORPORATION
2929 WALNUT STREET
PHILADELPHIA, PA 19104
EXAMINER
PRYOR, ALTON NATHANIEL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
patents@fmc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY M. MARTIN
Appeal 2020-001043
Application 15/294,225
Technology Center 1600
Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
MICHAEL A. VALEK, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 9–13, 15, 16, and 18–24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as FMC
Corporation. Appeal Br. 2. (The Appeal Brief lacks page numbers. We
refer to the first page as page 1, with the rest of the pages numbered
consecutively.)
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STATEMENT OF THE CASE
“Formulations of insecticides combined with fertilizers are desirable
in agricultural and related endeavors due to the multiple benefits conveyed
by just one application in a single piece of equipment. One application of
such a combination or formulation provides nutrients for the plant growth,
while eliminating or controlling unwanted insects . . . .” Spec. ¶ 3.
However, according to the Specification, “problems with the physical
stability of such mixtures have caused application and efficacy issues.” Id.
¶ 4. Further according to the Specification, “it has now been found that a
new insecticidal composition significantly improves physical stability when
used to prepare an insecticidal liquid fertilizer.” Id. ¶ 8.

CLAIMED SUBJECT MATTER
The claims are directed to an insecticidal composition. Claim 1 is
illustrative:
1. An insecticidal composition consisting essentially of:
a) bifenthrin present in an amount of from about 5 wt% to about
40 wt% of the composition;
b) a polymeric dispersant selected from the group consisting of
polyacrylic acids, polymethacrylic acids, copolymers thereof, salts
thereof, and combinations thereof present in an amount of from about
0.1 to about 30 wt% of the composition;
c) optionally a suspension agent selected from the group consisting of
attapulgite clay, fumed silica, and combinations thereof,
d) optionally a freeze-thaw stabilizer, and
e) optionally, a preservative.
Appeal Br. 13 (Claims App.).
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REJECTION(S)
A. Claims 1–4, 9–13, 15, 16, and 18–24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Jadhav.2 Non-Final Act.3 6.
B. Claims 1–4, 9–13, 15, 16, and 18–24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Kabanov.4 Non-Final Act. 3.
C. Claims 1–4, 9–13, 15, 16, and 18–21 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–10
of U.S. Patent No. 8,937,054. Non-Final Act. 10.
D. Claims 1–4, 9–13, 15, 16, and 18–24 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–12
of U.S. Patent No. 9,481,613. Non-Final Act. 10.

OPINION
A. Obviousness rejection over Jadhav (claims 1–4, 9–13, 15, 16, and
18–24)
1. Issue
The Examiner finds that Jadhav teaches “stable insecticidal
compositions comprising bifenthrin” and further “suggest[s] that surfactants
including polyacrylic acid can be added to the composition.” Non-Final Act.
6. The Examiner finds that Jadhav’s exemplified combinations discloses
weight percentages of pesticide and surfactant / dispersant within the ranges
recited in instant claim 1 and that “the only thing being optimized is the

2 Jadhav et al., US 2009/0203746 A1, published Aug. 13, 2009 (“Jadhav”).
3 July 13, 2018 Office Action (“Non-Final Act.”).
4 Kabanov et al., US 2010/0016392 A1, published Jan. 21, 2010
(“Kabanov”).
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choice of pesticide and choice of surfactant.” Id. at 7. Accordingly, the
Examiner concludes that Jadhav renders the claimed invention obvious. Id.
Appellant contends that Jadhav “discloses synergistic combinations of
a chloronicotynyle and a pyrethroid (e.g., bifenthrin)” and thus does not
render obvious, and in fact teaches away from, the claimed composition
“consisting essentially of” certain recited ingredients including bifenthrin,
but not chloronicotynyle. Appeal Br. 10–11.
The issue with respect to this rejection is whether a composition
comprising chloronicotynyle in addition to components recited in the claims
renders obvious a composition “consisting essentially of” the recited
components.
2. Findings of Fact
1. The Specification teaches that “[m]ixtures containing
insecticide compositions and liquid fertilizers have been practiced in the art,
but problems with the physical stability of such mixtures have caused
application and efficacy issues.” Spec. ¶ 4.
2. The Specification teaches that, “[i]n accordance with the
present disclosure, it has now been found that a new insecticidal
composition significantly improves physical stability when used to prepare
an insecticidal liquid fertilizer.” Id. ¶ 8.
3. The Specification provides exemplary compositions 1-1 to 1-4,
each of which includes bifenthrin, an acrylic homopolymer, and a surfactant.
Id. ¶¶ 29–32.
4. Claims 13 and 15 on appeal depend directly or indirectly from
claim 1 and further recites that the composition comprises at least one
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additive selected from the group consisting of, among others, surfactants.
Appeal Br. 14 (Claims App.).
5. The Specification describes tests of the physical stability of
exemplary compositions 1-1 and 1-2 conducted by mixing the composition
with a liquid fertilizer and comparing their stability with a known
formulation (TALSTAR® 2EC) of bifenthrin also mixed with the same
liquid fertilizer. Table 1 from the Specification is reproduced below:

Id. ¶ 34. Table 1 shows the “ppm of bifenthrin in sample over time” from 0
minutes to 50 minutes. Id. The Specification states that “[t]he test data [in
Table 1] indicate that the compositions of Example 1 are homogenous
throughout the test, indicating good physical stability, whereas the
comparison formulation is not homogenous and has poor physical stability
when mixed with high phosphorus aqueous-based liquid fertilizer.” Id. ¶ 35.
6. Jadhav teaches “[a] synergistic insecticidal composition . . .
containing a Chloronicotynyle compound and a Pyrethroids compound,”
wherein “[t]he Chloronicotynyle compound is provided in an amount
preferably ranging from 0.1% to 5.0% by weight of the . . . composition,”
“[t]he Pyrethroids compound is provided in an amount preferably ranging
from 1 to 60% by weight of the . . . composition,” and the “composition also
preferably includes 35 to 98.90% by weight of conventional agriculturally
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acceptable carrier(s) and/or excipients.” Jadhav Abstract; see also id. ¶¶ 12,
19, claim 1.
7. Jadhav teaches that the amounts of the chloronicotynyle and
pyrethroids compounds in the composition “may vary accordingly to
prevailing conditions such as the particular compounds present, insect pest
attack strength, type of pests, application timing, weather conditions, soil
conditions, mode of application, topographical character, target crop and the
like.” Id. ¶ 12.
8. Jadhav teaches that the pyrethroids compound is preferably
selected from a group consisting of, among other things, bifenthrin. Id.
¶¶ 12, 19; see also id. at claim 1.
9. Jadhav teaches that its composition “optionally includes
surfactant(s) which are preferably non-ionic, cationic and/or anionic in
nature and surfactant mixtures which have good emulsifying, dispersing and
wetting properties, depending on the nature of the active ingredient to be
formulated.” Id. ¶ 14.
10. Jadhav teaches that examples of surfactants that may be used
include, among other things, salts of polyacrylic acids. Id. ¶ 14.
11. Jadhav claims “a synergistic insecticidal composition”
comprising “a) imidacloprid in an amount ranging from 0.1 to 5% by weight
of the composition, b) bifenthrin in an amount ranging from 1.0 to 60% by
weight of the composition, and c) a conventional agriculturally acceptable
carrier or excipient in an amount ranging from 35% to 98.90% by weight of
the composition,” wherein the composition further comprise(s) a surfactant,
and wherein the surfactant may be, among other things, a salt of polyacrylic
acids. Id. at claim 9.
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12. Jadhav teaches that “[f]ollowing the right use of the synergistic
insecticidal composition with a formulation having a multi-pesticide
components, such as pesticide mixture, formulations prepared with extra
care of physical compatibility by purposefully specially selecting solvents,
carriers and the surfactants, thickeners, stabilizers, etc. exhibits better pest
management.” Id. ¶ 53.
13. The Examiner finds, and Appellant has not disputed, that
Jadhav teaches example formulations comprising surfactants – i.e.,
wetting/dispersing agent Lisapol-D and emulsifier Rhodocal 65 BR & Igepol
– in an amount of 13% w/w and 10% w/w, respectively. Id. ¶¶ 67, 69, 71,
73, 75, and 77.
3. Analysis
Jadhav discloses a composition comprising bifenthrin in an amount
ranging from 1.0 to 60% and salts of polyacrylic acids as a surfactant. FF6,
FF8–FF11. Jadhav also teaches that its composition may include 35 to
98.90% by weight of conventional agriculturally acceptable carrier(s) and/or
excipients, and further teaches example formulations comprising surfactants
in amounts of 10 and 13% w/w. FF6, FF13. Thus, we agree with the
Examiner that Jadhav would have reasonably suggested to a skilled artisan
an insecticidal composition containing the two non-optional ingredients (i.e.,
bifenthrin and a polymeric dispersant selected from the group consisting of
polyacrylic acids, polymethacrylic acids, copolymers thereof, salts thereof,
and combinations thereof) recited in claim 1, in amounts encompassing or
encompassed by the recited weight percentage ranges. We also find that
Appellant has failed to show that the additional component required by
Jadhav’s prior art composition (i.e., a chloronicotynyle compound), “would
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materially change the characteristics of [Appellant’s] invention.” MPEP
§ 2111.03(III). We therefore agree with the Examiner that Jadhav renders
claim 1 obvious.
Appellant contends that “[t]he appellants’ claims are being . . .
redrafted to include a chloronicotynyle compound,” which Appellant
contends to be “clear error by the examiner, particularly in view of the
limiting claim language of the preamble.” Appeal Br. 10. In particular,
Appellant contends that, since the Examiner “has already alleged that if a
chloronicotynyle compound is included the novelty of the claim is negated,”
the Examiner “should [be] prevent[ed] . . . from re-interpreting and
mischaracterizing the claim as it was written.” Id. at 11. Appellant similarly
contends that “[t]here is no suggestion or teaching of the combination of a
chloronicotynyle compound with bifenthrin within the . . . [S]pecification,
and therefore it is not a reasonable interpretation of the claims to require a
combination of bifenthrin and a chloronicotynyle compound.” Id.
Appellant contends that, in fact, “[i]n view of the requirement of Jadhav for
combinations of a chloronicotynyle compound and a pyrethroid that are
synergistic, Jadhav teaches away from the claimed invention with its
restrictive claim language.” Id. at 12.
We are not persuaded. Appellant’s arguments appear to be based on
an understanding that Jadhav could render claim 1 obvious only if claim 1 is
interpreted to require a chloronicotynyle compound. However, claim 1
recites the transitional phrase “consisting essentially of.” “The phrase
‘consisting essentially of’ in a patent claim represents a middle ground
between the open-ended term ‘comprising’ and the close-ended phrase
‘consisting of,’” and “consisting essentially of” “has long been understood to
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permit inclusion of components . . . that . . . do not ‘materially affect the
basic and novel properties of the invention,’” even if the claim does not
recite, and therefore does not require, the inclusion of such components. AK
Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1239 (Fed. Cir. 2003).
Moreover, “[i]f an applicant contends that additional steps or materials in the
prior art are excluded by the recitation of ‘consisting essentially of,’
applicant has the burden of showing that the introduction of additional steps
or components would materially change the characteristics of applicant’s
invention.” MPEP § 2111.03(III). Simply citing the inclusion of an
additional component in the prior art composition, as Appellant does in this
case, does not satisfy this burden.
Appellant does contend that Jadhav teaches that “the combination of a
pyrethroid such as bifenthrin with a chloronicotynyle compound results in a
synergistic combination, which clearly is a change to the basic character of
the claimed combination.” Appeal Br. 11.
However, whether a component that is not recited may be included in
a claim using the transitional phrase “consisting essentially of” depends on
whether they “materially affect the basic and novel properties of the
invention,” not whether they result in a change to any property of the
invention. AK Steel Corp., 344 F.3d at 1239 (emphasis added).
Appellant fails to specify in its arguments what it considers to be the
basic and novel properties of the invention, and its arguments are
unpersuasive on that basis alone.
In any event, to the extent such properties exist, the Specification
suggests “physical stability when used to prepare an insecticidal liquid
fertilizer” to be the basic and novel property of the invention. Spec. ¶¶ 4
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(stating that “problems with the physical stability of . . . mixtures [containing
insecticide compositions and liquid fertilizers] have caused application and
efficacy issues”), 8 (stating that “it has now been found that a new
insecticidal composition significantly improves physical stability when used
to prepare an insecticidal liquid fertilizer”); AK Steel Corp., 344 F.3d at
1239–1240 (identifying “good wetting” as the basic and novel property of
the invention because “[t]he specification clearly states that good wetting is
the goal of the invention as well as what distinguishes it from the prior art”).
While synergism may increase the insecticidal effectiveness of
Jadhav’s compositions, Appellant fails to explain, much less provide
persuasive evidence to show, why an increase in insecticidal effectiveness
would materially affect the physical stability of the composition when used
to prepare an insecticidal liquid fertilizer. Indeed, we note that dependent
claims 13 and 15, which depend from claim 1, explicitly recite a
composition further comprising at least one additive selected from a group
consisting of, among other things, biocides. Appeal Br. 14 (Claims App.).
Thus, Appellant does not persuaded us that synergistic insecticidal
effectiveness through the inclusion of a chloronicotynyle compound (i.e., a
biocide), without more, materially affects the basic and novel properties of
the invention of claim 1.
Finally, Appellant contends that “[s]ynergy cannot be predicted, and
thus, Jadhav[, which teaches synergistic combinations,] does not have
predictive value.” Appeal Br. 11. Appellant also contends that “[n]o person
of ordinary skill would assume that bifenthrin and a chloronicotynyle are
completely interchangeable for patent or other purposes” merely because
they are both insecticides. Id.
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These arguments do not persuade us that the Examiner erred in
rejecting claim 1 over Jadhav. Bifenthrin need not be interchangeable with a
chloronicotynyle compound in order for Jadhav to render claim 1 obvious,
because, based on the record in front of us, the “consisting essentially of”
phrase of claim 1 permits the inclusion of a chloronicotynyle compound in
the claimed composition in addition to the required bifenthrin and polymeric
dispersant. Likewise, it is unclear what Appellant contends Jadhav must be
able to predict in order to render claim 1 obvious. To the extent Appellant’s
argument is that a skilled artisan, reading Jadhav, would not have had a
reasonable expectation of success at arriving at the claimed invention, we
are not persuaded because Jadhav explicitly teaches the combination of
bifenthrin, a chloronicotynyle compound, and a salt of polyacrylic acids for
use as an insecticidal composition. FF6, FF8–FF11.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Jadhav. Claims 2–4, 9–13, 15, 16, and 18–24, which are not
separately argued, fall with claim 1.5
B. Obviousness rejection over Kabanov (claims 1–4, 9–13, 15, 16,
and 18–24)
1. Issue
The Examiner finds that, with respect to claim 1, Kabanov teaches
“stable pesticidal aggregate compositions comprising actives, including

5 We note that claims 22–24 use the transitional phrase “comprising” rather
than “consisting essentially of.” Appeal Br. 15 (Claims App.). Thus,
Appellant’s arguments in the Appeal Brief, which relate to the use of the
transitional phrase “consisting essentially of,” are not applicable to these
claims.
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bifenthrin[,] plus polymers including acrylic acid[ and] methacrylic acid.”
Non-Final Act. 3 (citation omitted). The Examiner finds that Kabanov
therefore renders obvious the claims on appeal.
Appellant concedes that Kabanov discloses “a stable pesticidal
aggregate composition that includes . . . (a) a polymer having at least three
similarly charge[d] electrostatic moieties; (b) an amphiphilic surfactant
having at least one electrostatically charge[d] moiety of opposite charge to
the polymer; and (c) a pesticide.” Appeal Br. 4. However, Appellant
contends that Kabanov only “provides a laundry list of species[,] agents[,]
and excipients that fall into . . . (a), (b), or (c),” and argues that “[p]roviding
a laundry list of components that could potentially be combined into a
composition is not enough to render an invention obvious.” Id.
Appellant argues that Kabanov does not provide a reason to use
bifenthrin in its composition. Appeal Br. 8. Appellant argues that, while
Kabanov “does provide an example of bifenthrin with a polymeric
dispersant . . . [that] is a polymethacrylic acid derivative,” this example does
not provide a skilled artisan with a reason to use the disclosed dispersant,
with a reasonable expectation of success, and in fact teaches away from it.
Id. at 5.
Appellant also contends that Kabanov does not teach or suggest the
“percentages of each of the components in the composition” that are recited
in the instant claims. Appeal Br. 6–7. Appellant further contends that “[t]he
preamble of the instant claims uses the restrictive language ‘consisting
essentially of,’” while “Kabanov requires at least one component (the
amphiphilic surfactant) that is not explicitly included within the appellants’
claim.” Id. at 7. Appellant contends that “Kabanov teaches away from the
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claimed invention by requiring a surfactant/dispersant combination.” Id. at
8.
The issue with respect to this rejection is whether Kabanov suggests a
composition consisting essentially of bifenthrin and a recited polymeric
dispersant in an amount within the range recited in claim 1.
2. Findings of Fact
14. Kabanov teaches “a substantially water-insoluble pesticidal
aggregate produced from a mixture comprising: (a) a polymer having at least
three similarly charged electrostatic moieties; (b) an amphiphilic surfactant
having at least one electrostatically charged moiety of opposite charge to the
polymer; and (c) a pesticide.” Kabanov Abstract, ¶ 2.
15. Kabanov teaches that “[p]articularly preferred pesticides” that
“may be employed to produce the aggregates of [its] invention” include
bifenthrin. Id. ¶ 66.
16. Kabanov teaches that polymers useful its invention “may be or
may contain polyion, polyanion, or polycation polymer segments” and that
“[e]xamples of polyanions and polyanion blocks and segments include but
are not limited to polymers and their salts comprising units deriving from
one or several monomers including,” among others, acrylic acid and
methacrylic acid. Id. ¶ 71; see also id. ¶ 83 (stating that “[p]referred
polymers include . . . polyacrylic acid polymers”), claim 15 (reciting
pesticidal aggregate wherein polymer component is selected from a group
consisting of, among other things, linear polyacrylic acid polymers).
17. Kabanov teaches that its compositions may be formulated as
wettable powders, water-dispersible granules, emulsifiable concentrates and
flowable formulations, and suspension concentrates, wherein the pesticide
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contents may range, respectively, from 5–80%, 10–70% w/w, 5–95% or 10–
50% by weight of the composition, and 8–50% w/w. Spec. ¶¶ 100–104.
Kabanov teaches that its compositions may be formulated as concentrates
where the aggregate may form upon dilution or after application. Id. ¶ 97,
98, 102, 103. Kabanov teaches that the pesticidal composition of its
invention “may be applied either as water-diluted sprays, or dusts, or
granules to the areas in which suppression of pests is desired,” that “[t]hese
formulations may contain as little as 0.1% to as much as 35% or more by
weight of pesticide,” and that “[c]oncentrates may be diluted in water, e.g.,
100–1000 times, to form stable aqueous dispersion, e.g., stable for 24
hours.” Id. ¶ 119.
18. Kabanov teaches that
the polymers and surfactants used in the aggregates of
this invention are selected to be suitable for the
properties, such as the pKa or hydrophobicity of the
pesticide in order to produce an aggregate and to produce
the desired properties for a given application. The rate of
release of the pesticide may also be changed through
variation of the surfactant to polymer ratio and/or
variation of pKa of polymer, and or through variation of
the hydrophobicity of the surfactant.
Id. ¶ 95.
19. Kabanov teaches that “[t]he pesticidal aggregates of [its]
invention may be formulated and/or applied with one or more second
compounds” and that “[s]econd compounds include . . . fertilizers.” Id.
¶¶ 107–108.
20. Kabanov provides an example, Example 29, that teaches the
preparation of aggregates of Ethacryl M, bifenthrin, and Arquad surfactant.
Id. ¶ 199.
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21. Ethacryl M is “a sodium salt of polyacrylic copolymer of comb-
branched structure with polyol pendant groups.” Id. ¶ 199. Appellant has
not disputed that Ethacryl M meets the limitations in claim 1 relating to a
polymeric dispersant.
22. Example 29 of Kabanov teaches mixing 0.224 mL of 4%
solution of Arquad 18-50 solution in ethanol with 0.14 mL of Ethacryl M
solution in ethanol (4%) and 0.005 mL of aqueous solution of NaOH (4%),
adding to the mixture various amounts of 0.5% solution of bifenthrin in
ethanol, evaporating the ethanol until white powder-like residues were left in
the vials, and rehydrating the solid compositions in 2.5 mL of water. Id.
¶ 199. Example 29 of Kabanov evaluates the dispersion stability of the
compositions having the following components:

Id. ¶ 199. Kabanov teaches that the dispersion containing 0.4, 0.2, and 0.12
mg/mL of bifenthrin was stable for at least 24 hours, 2 days, and 3 days,
respectively. Id. ¶ 199.
3. Analysis
We agree with the Examiner that claim 1 is rendered obvious by
Kabanov.
In particular, Kabanov teaches a pesticidal composition comprising
(1) a polymer having similarly charged electrostatic moieties, including
polymers of acrylic acid and methacrylic acid, (2) an amphiphilic surfactant
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having at least one oppositely charged moiety to the polymer, and (3) a
pesticide such as bifenthrin. FF14–16. In Example 29, Kabanov
specifically provides example compositions rehydrated in water and
consisting of bifenthrin, Ethacryl M (a salt of polyacrylic copolymer),
Arquad surfactant, and NaOH. FF20–FF22. Thus, Kabanov teaches a
pesticidal composition containing the two non-optional ingredients (i.e.,
bifenthrin and a polymeric dispersant selected from the group consisting of
polyacrylic acids, polymethacrylic acids, copolymers thereof, salts thereof,
and combinations thereof) recited in claim 1. Furthermore, although
Kabanov’s compositions contain at least one additional ingredient (i.e., an
amphiphilic surfactant having at least one oppositely charged moiety to the
polymer), Appellant fails to show that this additional component “would
materially change the characteristics of [Appellant’s] invention.” MPEP
§ 2111.03(III). Thus, Kabanov teaches a composition “consisting essentially
of” bifenthrin and a polymeric dispersant selected from the group consisting
of polyacrylic acids, polymethacrylic acids, copolymers thereof, salts
thereof, and combinations thereof, as recited in claim 1.
As to the recited range of ingredient amounts (i.e., “about 5 wt% to
about 40 wt%” bifenthrin and “about 0.1 to about 30 wt%” of the polymeric
dispersant), we note that Kabanov teaches that the pesticide content of its
compositions may range from, e.g., 10–50% by weight, which overlaps the
percentage weight range of bifenthrin recited in claim 1. FF17. As
explained by our reviewing court, “[a] prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329–30 (Fed.
Cir. 2003). Moreover, to the extent Kabanov does not explicitly teach the
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recited range of ingredient amounts,6 it teaches that the amounts of pesticide
and polymer to be used in the composition depend on, e.g., the type of
formulation and the desired properties for a given application, such as
stability and rate of release of the pesticide. FF18, FF22 (showing that
concentration of bifenthrin affects physical stability of composition). Thus,
we further determine that the amounts of bifenthrin and polymeric dispersant
are result-effective variables. “[D]iscovery of an optimum value of a result

6 We note that Composition 33C in Kabanov’s Example 29 contains 2.24
mg/mL of Ethacryl M, 0.08 mg/mL NaOH, 4.48 mg/mL Arquad 18-50, and
0.4 mg/mL bifenthrin. FF22. Prior to hydration, therefore, the composition
would appear to contain 5.56% by weight of bifenthrin (i.e., 0.4 mg
bifenthrin divided by 7.2 mg, the total weight of the components in 1 mL)
and 31.1% by weight of Ethacryl M (i.e., 2.24 mg Ethacryl M divided by 7.2
mg). This would fall within the ingredient ranges recited in claim 1 (i.e.,
“about 5 wt% to about 40 wt%” bifenthrin and “about 0.1 to about 30 wt%”
of the polymeric dispersant) or render the ranges obvious. In particular,
while the 31.1% Ethacryl M contained in Composition 33C is slightly
outside of the recited range of 0.1 to about 30 wt%, the Federal Circuit has
explained that “a prima facie case of obviousness exists when the claimed
range and the prior art range do not overlap but are close enough such that
one skilled in the art would have expected them to have the same
properties.” In re Peterson, 315 F.3d at 1329. Moreover, the Specification
states that, “[w]here guidance from the experience of those of ordinary skill
is lacking, guidance from the context is lacking, and where a more specific
rule is not recited . . . , the ‘about’ range shall be not more than 10% of the
absolute value of an end point or 10% of the range recited, whichever is
less.” Spec. ¶ 9. The different between the amount disclosed in Kabanov,
31.1%, and the recited 30%, is not more than “10% of the absolute value of
an end point or . . . range recited.” In any event, as discussed above, the
recited ingredient amount ranges are prima facie obvious because such
amounts are result-effective variables; thus, we need not rely only on the
specific ingredient amounts in Example 29 in Kabanov.
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effective variable in a known process is ordinarily within the skill of the art.”
In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Accordingly, we find that Kabanov suggests all of the limitations of
claim 1 and renders it obvious. We address Appellant’s arguments below.
Citing to Pfizer Inc. v. Mylan Pharmaceuticals Inc., 71 F. Supp. 3d
458 (D. Del. 2014), Appellant first argues that Kabanov only provides “a
laundry list of components that could potentially be combined into a
composition,” which is “not enough to render [the] invention obvious.”
Appeal Br. 4; see also id. at 6.
We are not persuaded. The Federal Circuit has held that “disclos[ing]
a multitude of effective combinations does not render any particular
formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (finding that prior art disclosing 1200 effective
combinations rendered claim obvious); see also Sinclair & Carroll Co. v.
Interchemical Corp., 325 U.S. 327, 335 (1945) (“Reading a list and selecting
a known compound to meet known requirements is no more ingenious than
selecting the last piece to put into the last opening in a jig-saw puzzle. It is
not invention.”). Thus, the fact that Kabanov lists a number of pesticides
and polymers that may be used in its compositions do not render the use of a
particular combination of pesticide and polymer (e.g., the bifenthrin and
acrylic / methacrylic acid polymer combination) in Kabanov’s composition
less obvious. Moreover, as discussed above, Kabanov provides example
compositions in Example 29 that includes both of the two required
ingredients in claim 1 (i.e., bifenthrin and a claimed polymer dispersant).
FF20–FF22.
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Appellant’s citation to Pfizer is inapposite. Unlike in the present case
and Merck, where the claimed compounds and their combination were both
taught by the prior art and only routine optimization was necessary to arrive
at the claimed invention, in Pfizer only an analog to the claimed compounds
was disclosed in a prior art reference relating to generic preparation for a
large number of potential compounds in a class. 71 F. Supp. 3d at 468. The
court in Pfizer stated that, “given the sheer volume of possible combinations
and the additional subsequent chemical alterations necessary to arrive at
the claimed compound, the court cannot say that one skilled in the art would
have had a reason to alter [the analog] as [defendant] Mylan suggests.” Id.
at 469.
Appellant’s reliance on the Pfizer court’s analysis regarding lead
compounds — i.e., “compounds known in the art that would have served as
logical ‘starting points[] for further development efforts’” — is misplaced
for similar reasons. Pfizer, 71 F. Supp. 3d at 469. In the instant case,
Kabanov itself provides the reason for, and reasonable expectation of
success in, combining the claimed ingredients.
Appellant argues that Example 29 of Kabanov teaches away from the
invention because “(1) bifenthrin is dissolved only with the aid of an organic
solvent (ethanol); and (2) bifenthrin is not stable in the mixture, since it is
disclosed by Kabanov that bifenthrin crystallizes from the dispersion after as
little as 24 hours.” Appeal Br. 5. Appellant argues that, in view of such
disclosures, a skilled artisan would not have been motivated to use the
disclosed polymeric dispersant or have a reasonable expectation of success
in using such a dispersant. Id.
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We are not persuaded. As an initial matter, Appellant does not
explain why dissolving bifenthrin in ethanol would teach away from the
combination of bifenthrin and a claimed polymer dispersant, especially since
Example 29 of Kabanov explicitly teaches combining bifenthrin with a
claimed polymeric dispersant. Moreover, while the bifenthrin, Ethacryl M,
and Arquad 18-50 were all initially dissolved in ethanol, after the ingredients
were mixed, the ethanol was evaporated and the solid compositions
rehydrated in water. FF22.
Similarly, Appellant provides no persuasive evidence that bifenthrin is
not stable in Kabanov’s mixture for purposes of use as a pesticide because it
may crystallize after 24 hours. In this regard, we note that Example 29
teaches that Kabanov’s dispersion containing 0.4 mg/mL of bifenthrin was
stable at least 24 hours. FF22. In contrast, the comparative physical
stability analysis performed in the Specification, which is alleged to
“indicat[e] good physical stability” for the inventive compositions, was
tested only over a 50 minute period. FF5. In other words, Appellant’s
Specification demonstrates that “good stability” within the context of the
presently claimed invention includes that shown over periods of less than 24
hours.
Appellant further contends that a skilled artisan would not necessarily
look to Kabanov to find a solution to make a stable aqueous dispersion of
bifenthrin,7 because bifenthrin is non-ionic and Kabanov teaches that “the

7 We note that claim 1 does not require an aqueous composition, although
dependent claims 10–12, 15, 18, and 21 recite a composition of claim 1
further comprising an aqueous-based liquid fertilizer and claims 22–24
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primary reason for the invention described therein is to provide a water-
insoluble pesticidal aggregate that can be applied to an area and not be
washed away or into the ground in its ionic form.” Appeal Br. 8 (emphasis
added). We are not persuaded because Kabanov in fact teaches bifenthrin as
a particularly preferred pesticide for its composition and also teaches
example formulations containing bifenthrin in water. FF15, FF20–FF22.
Appellant next contends that Kabanov does not teach or suggest the
claimed percentages of the components in the composition. Appeal Br. 5–7.
Appellant argues that “[t]here is no reasonable interpretation of Kabanov
that would provide an expectation that the claimed percentages can be
obtained, i.e., no reasonable expectation of a successful result can be gleaned
from the teaching of Kabanov.” Id. at 6.
We are not persuaded for the reasons already discussed above:
Kabanov teaches pesticide amounts for its compositions that overlap the
weight percentage range recited in claim 1, FF17, and further evidences that
the amounts of pesticides and polymers are result-effective variables. FF17,
FF18, FF22. Neither has Appellant shown that the claimed ranges of
ingredient amounts are critical, e.g., that compositions having ingredient
amounts within the claimed ranges exhibit unexpected properties.
Appellant contends that “[i]t is only required that the [claimed] range
[of ingredient amounts] have support in the specification” and that “there is
no requirement to show the criticality of the claimed range for water and
bifenthrin” or to show “that the appellants’ claims are operational over the

recites an insecticidal composition comprising, respectively, at least about
50 wt%, 55 wt%, and 60 wt% of water.
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full scope of the claims.” Appeal Br. 9–10. Appellant contends that,
furthermore, “the prior art provides the evidence that changing the
parameters of the claims does have implications on such things as stability.”
Id.
We are not persuaded. As discussed above, Kabanov teaches
pesticide amounts in its composition that overlap with the recited ingredient
amounts and also suggests that amounts of pesticides and polymeric
dispersants are result-effective variables. Thus, Kabanov renders claim 1
prima facie obvious. The Federal Circuit has explained that
“[o]ne way for a patent applicant to rebut a prima facie
case of obviousness is to make a showing of ‘unexpected
results,’ i.e., to show that the claimed invention exhibits
some superior property or advantage that a person of
ordinary skill in the relevant art would have found
surprising or unexpected.” In re Soni, 54 F.3d 746, 750,
34 USPQ2d 1684, 1687 (Fed.Cir.1995). When an
applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a
range that is within or overlaps with a range disclosed in
the prior art, the applicant must “show that the [claimed]
range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art
range.” In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed.Cir.1990).
In re Geisler, 116 F.3d 1465, 1469–1470 (Fed. Cir. 1997).
As for Appellant’s argument that “the prior art provides the evidence
that changing the parameters of the claims does have implications on such
things as stability,” we note that what is needed to rebut the prima facie case
of obviousness is to show the criticality of the claimed range, not merely
that the parameter at issue affects the property of the composition. See, e.g.,
In re Dill, 604 F.2d 1356, 1361 (CCPA 1979) (“The evidence presented to
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rebut a prima facie case of obviousness must be commensurate in scope with
the claims to which it pertains.”).
Appellant contends that the Examiner has erroneously ignored the
“use of the restrictive and limiting claim language ‘consisting essentially
of.’” Appeal Br. 9. Appellant contends that Kabanov “requires a
combination of a polymeric dispersant acting in concert with an amphiphilic
dispersant[/surfactant]” and that “[t]he claimed invention does not claim
such a combination,” which in fact teaches away. Appeal Br. 6, 7.
We are not persuaded. As discussed above with respect to the
rejection over Jadhav, claim 1 uses the transitional phrase, “consisting
essentially of,” which permits inclusion of components not listed in the
claim that do not “materially affect the basic and novel properties of the
invention.” AK Steel Corp., 344 F.3d at 1239. Appellant has not
persuasively shown that the inclusion of the surfactant taught in Kabanov
would materially affect such properties of the invention. MPEP
§ 2111.03(III) (explaining that Appellant has the burden of showing that
additional steps or materials in the prior art would “materially change the
characteristics of applicant’s invention”).
Appellant concedes that “surfactants are not excluded by necessity
from the claimed invention” and that, in fact, certain claims depending from
claim 1 (e.g., claims 13 and 15) explicitly recite a composition that further
comprises at least one additive selected from the group consisting of, among
others, surfactants. Appeal Br. 7–8. However, Appellant contends that the
Specification teaches “the preferred use of an anionic surfactant in cases
where a charged surfactant species is specified” and that Kabanov “clearly
teaches away from the combination of either: (a) an anionic polymeric
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dispersant and an anionic surfactant . . . (b) a neutral polymeric dispersant
and an anionic surfactant.” Id. Appellant further contends that “the
patentability of the dependent claims is not negated if the base claims are not
obvious.” Id.
We are not persuaded. We agree that the Specification teaches
preferred anionic surfactants. Spec. ¶ 17. However, given their broadest
reasonable interpretation, Appellant’s claims are not limited to combinations
of anionic or neutral polymeric dispersants and anionic surfactants; thus,
contrary to Appellant’s apparent argument, Kabanov does not teach away
from the claims. Importantly, as discussed above, Appellant does not point
to any persuasive evidence that the surfactants taught in Kabanov, including
that used in Example 29, would materially affect the basic and novel
properties of the invention.
Independent claim 22 recites an insecticidal composition comprising
the same ingredients recited in claim 1 and further comprising “at last about
50 wt% water, based on the weight of the composition.”8 Claims 23 and 24
depend from claim 22 and recite, respectively, a composition comprising at
least about 55 wt% and 60 wt% water. Appellant argues with respect to
claims 22–24 that the concentration of water and the concentration of
bifenthrin taught by Kabanov are each outside of the claimed limits. Appeal

8 We note that, because claims 22–24 use the transitional phrase
“comprising” rather than “consisting essentially of,” Appeal Br. 15 (Claims
App.), Appellant’s arguments in the Appeal Brief relating to the use of the
transitional phrase “consisting essentially of,” are not applicable to these
claims.

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Br. 6; see also Appeal Br. 9 (arguing that “there is no requirement to show
the criticality of the claimed range for water and bifenthrin”).
As an initial matter, we note that Appellant has not properly argued
claims 22–24 separately by providing a separate subheading as required by
rule. 37 C.F.R. § 41.37(c)(1)(iv) (stating that, “[u]nder each heading
identifying the ground of rejection being contested, any claim(s) argued
separately or as a subgroup shall be argued under a separate subheading
that identifies the claim(s) by number”) (emphasis added). In any event, as
to Appellant’s arguments regarding the claimed wt% range of bifenthrin, we
are not persuaded for the same reasons set forth above in our analysis with
respect to the same limitation in claim 1. With respect to the limitations that
the composition comprises at least about 50 wt%, 55 wt%, or 60 wt% water,
we note that Kabanov teaches that its compositions may be formed as
concentrates and diluted in water, e.g., 10–100 times, to form stable aqueous
dispersion. FF17. Thus, we find Kabanov teaches wt% water in the
composition, like wt% of bifenthrin, to be a result-effective variable.
“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d at
276. Neither has Appellant provided persuasive evidence that the claimed
range of concentrations for water is critical.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Kabanov. Claims 2–4, 9–13, 15, 16, and 18–24, which are not
separately argued, fall with claim 1.9

9 As discussed above, claims 22–24 were not properly separately argued
under the rules and, in any event, Appellant’s arguments regarding those
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C. Nonstatutory double patenting rejections
Appellant offers no arguments with respect to the double patenting
rejections and states only that, “[i]f allowable subject matter should be
found, the appellants will be willing to submit terminal disclaimers as
appropriate.” Appeal Br. 12. Appellant also did not file a terminal
disclaimer to moot these rejections. Therefore, the obviousness-type double
patenting rejections (Rejections C and D) are summarily affirmed. See
MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it . . . .”).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–13,
15, 16,
18–24
103 Jadhav 1–4, 9–13,
15, 16, 18–24

1–4, 9–13,
15, 16,
18–24
103 Kabanov 1–4, 9–13,
15, 16, 18–24

1–4, 9–13,
15, 16,
18–21
Obviousness-
type Double
Patenting
US 8,937,054 1–4, 9–13,
15, 16, 18–21

1–4, 9–13,
15, 16,
18–24
Obviousness-
type Double
Patenting
US 9,481,613 1–4, 9–13,
15, 16, 18–24

claims are unpersuasive for the same reasons discussed above regarding
claim 1.
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–4, 9–13,
15, 16, 18–24

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED