INCOTEC HOLDING B.V.

Patent Trials and Appeals Board

Sep 3, 2020

15346189 - (D) (P.T.A.B. Sep. 3, 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.
15/346,189 11/08/2016 AMY NICOLE BUENO CDA-171US 4084
23122 7590 09/03/2020
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
PEEBLES, KATHERINE
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMY NICOLE BUENO,
TERRY EUCLAIRE MEYER, and RENIL JOHN ANTHONY

Appeal 2020-000755
Application 15/346,189
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, DEBORAH KATZ, and
JOHN A. EVANS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 1, 3, 4, 6, 7, and 17–20 under 35 U.S.C.
§ 103 as obvious and under non-statutory obviousness-type double-
patenting. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject the claims. 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 Incotech
Holding B.V. Appeal Br. 1.
Appeal 2020-000755
Application 15/346,189

2
STATEMENT OF THE CASE
Claims 1, 3, 4, 6, 7, and 17–20 stand rejected by the Examiner. Final
Office Action (“Final Act.”; dated Apr. 29, 2019). The rejections as follows:
1. Claims 1, 6, and 17–20 under 35 U.S.C. § 103 as obvious in view
of Arthur et al. (US 2013/0165487 A1, published June 27, 2013 (“Arthur
’487”), Arthur et al. (US 2009/0143447 A1, published June 4, 2009 (“Arthur
’447”), Kober et al. (US 2004/0102322 A1, published May 27, 2004)
(“Kober”), and Reichert et al. (WO 2013/158284 A1, published Oct. 24,
2013) (“Reichert”). Final Act. 3.
2. Claims 3 and 4 under 35 U.S.C. § 103 as obvious in view of Arthur
’487, Arthur ’447, Kober, Reichert, and Reus et al. (US 8,685,886 B2,
issued Apr. 1, 2014) (“Reus”). Final Act. 6.
3. Claim 7 under 35 U.S.C. § 103 as obvious in view of Arthur ’487,
Arthur ’447, Kober, Reichert, and Lloyd (US 4,149,869, issued Apr. 17,
1979) (“Lloyd”). Final Act. 7.
4. Claims 1, 3, 4, 6, and 17–20 on the ground of non-statutory
obviousness-type double-patenting as obvious in view of claims 1–21 of
U.S. Patent No. 8,685,886 as evidenced by Kozuki (US 2009/0239750 A1,
issued Sept. 24, 2009), Arthur ’487, and Reichert. Final Act. 11.
5. Claim 7 on the ground of non-statutory obviousness-type double
patenting as obvious in view of claims 1–21 of U.S. Patent No.
8,685,886 as evidenced by Kozuki, Arthur ’487, Reichert, and Lloyd. Final
Act. 14–15.
6. Claims 1, 3, 4, 6, 7, and 17–20 provisionally rejected on the ground
of non-statutory obviousness-type double patenting as obvious in view
Appeal 2020-000755
Application 15/346,189

3
claims 1–17 of co-pending Application No. 15/774,845 in view of Reus.
Final Act. 15.
Independent claim 1 is representative and reproduced below:
1. An aqueous seed coating composition comprising a Fischer-
Tropsch wax, at least one pigment, an optional surface active
agent and one or more biologically active ingredients,
wherein the wax is in the form of an aqueous emulsion,
wherein the aqueous seed coating composition comprises
4% by weight or less polymeric binder other than wax, and
wherein the amount of wax is 5–10 % by weight based
on the total weight of the composition.

OBVIOUSNESS REJECTIONS
The Examiner found that Arthur ’487 describes a seed coat
composition comprising Michem Lube 156P, which is carnauba wax
emulsion.2 Final Act. 4. The Examiner acknowledged that Arthur ’487 does
not disclose a Fischer-Tropsch wax as claimed. Id. However, the Examiner
found that Reichert discloses that “both carnauba wax and Fischer-Tropsch
wax were known in the art as coating substances for seeds that act as
lubricants,” which the Examiner identified as the “slip agent[s]” in Arthur
’487 and Arthur ’447. Id. The Examiner determined it would have been
obvious to one of ordinary skill in the art at the time the application was
filed to use the Fischer-Tropsch wax of Reichert in place of the carnauba
wax emulsion of Arthur ’487 because the agents “were known to serve the
same purpose.” Id.
The claim further requires that the wax emulsion is present in the
amount of “5–10 % by weight based on the total weight of the composition.”

2 Arthur ’447 was cited by the Examiner to establish that the wax in Arthur
’487 is carnauba wax.
Appeal 2020-000755
Application 15/346,189

4
The Examiner found that Arthur ’487 discloses examples of compositions
comprising up to 4.4% by weight of composition. Final Act. 5. While the
value of 4.4% does not overlap with the claim range, the Examiner found it
sufficiently close to render it obvious, citing Titanium Metals Corporation of
America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985), to support this
determination. Final Act. 5. The Examiner also found that the value of 4.4%
was not an upper limit disclosed by Arthur ’487, but rather an example of an
amount of wax emulsion that can be present in the seed coating. Id. at 8–9.
The Examiner stated that this amount would provide a starting point to
optimize the concentration of wax in the seed coat composition. Id. at 9.
The Examiner also cited Kober as evidence that Arthur ’487 made the
subject matter of dependent claim 6 obvious to one of ordinary skill in the
art. Final Act. 5.
Appellant argues that the Examiner did not provide evidence that it
would have been obvious to one of ordinary skill in the art to make a seed
coating with the claimed amount of wax. Appeal Br. 4. Appellant also
argues that the Examiner just speculates that increasing the amount of the
wax would not have a pronounced effect on the formulation. Id. Appellant
contends that Arthur ’447 and Reichert “fail to disclose or suggest an
amount of wax is 5-10 % by weight based on the total weight of the
composition described therein.” Id.
The Examiner responded that Reichert discloses that wax lubricant
agents, when used in the seed coating, decrease the emission of seed dust
comprising insecticides and pesticides when the seeds are planted. Ans. 17
(citing Reichert ¶ 16). The Examiner also found that Reichert discloses its
disclosed seed coating comprising a wax improves seed flow by providing
Appeal 2020-000755
Application 15/346,189

5
seed lubricity. Id. (citing Reichert ¶ 18). Based on these teachings in
Reichert, the Examiner explained that it would have been obvious to one of
ordinary skill in the art to optimize the amount of wax (“slip agent” in
Arthur ’487 and Arthur ’447; “lubricant” in Reichert) in the seed coating to
achieve the desired level of seed dust reduction and lubricity. Id. at 18.
Appellant did not respond to these findings.
The Examiner’s evidence is sufficient to establish the obviousness of
the claimed subject matter.
Reichert establishes that the purpose of using wax in the seed coating
is to reduce seed dust and increase lubricity. Reichert applies different
amounts of the seed coating to the seed (Reichert ¶ 36), providing a reason
to optimize the coating amounts applied to the seed to achieve these desired
results. As found by the Examiner, neither Arthur ’487 (e.g., see ¶ 70, claim
13) or Reichert impose (e.g., see ¶¶ 6, 15) a limit on how much wax is
present in the compositions and therefore the specific examples in Arthur
’487, as found by the Examiner, are exemplary, and not restrictive.3

3 Arthur ’447 further discloses that, in its seed treatment composition, the
slip agent can be present in an amount of 0–5% by weight of the total
formulation. Arthur ’447 ¶ 103. This amount overlaps or is close to the
claimed amount of 5–10% by weight. It is well established that, when there
is a range disclosed in the prior art, and the claimed invention overlaps or
falls within that range, there is a presumption of obviousness. In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron Grip Barbell Co. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). Even if the ranges do not
precisely overlap, prima facie obviousness is established when they “are so
close that prima facie one skilled in the art would have expected them to
have the same properties,” shifting the burden to the applicant to show they
are different. Titanium Metals, 778 F.2d at 783.
Appeal 2020-000755
Application 15/346,189

6
Accordingly, we conclude that Appellant did not demonstrate error in
the Examiner’s rejection.4 The obviousness rejection of claim 1 is affirmed.
Claims 6 and 17–20 fall with claim 1 because separate reasons for their
patentability were not provided. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant did not provide separate arguments for claims 3, 4, and 7
rejected based on additional publications (rejections and 4). These claims
fall with claim 1, as well.

OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTIONS
Appellant requested that the obvious-type double patenting rejection
be held in abeyance until patentable subject matter is indicated. Appeal Br.
5, n.1. However, because the rejections are pending and no substantive
arguments were made, we summarily affirm the obviousness-type double-
patenting rejections for the reasons set forth by the Examiner.

4 We review appealed rejections for reversible error based on the arguments
and evidence Appellant provides for each issue Appellant identifies. 37
C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a
prima facie case, “it has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections”)).

Appeal 2020-000755
Application 15/346,189

7
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 17–20 103 Arthur ’487,
Arthur ’447,
Kober, Reichert
1, 6, 17–20
3, 4 103 Arthur ’487,
Arthur ’447,
Kober, Reichert,
Reus
3, 4
7 103 Arthur ’487,
Arthur ’447,
Kober, Reichert,
Lloyd
7
1, 3, 4, 6,
17–20
101 Obviousness-type
double patenting
1, 3, 4, 6,
17–20

7 101 Obviousness-type
double patenting
7
1, 3, 4, 6, 7,
17–20
101 Obviousness-type
double patenting
1, 3, 4, 6, 7,
17–20

Overall
Outcome
1, 3, 4, 6, 7,
17–20

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)(1)(iv).

AFFIRMED