Martin, Timothy M. et al.

Patent Trials and Appeals Board

Dec 6, 2019

14502251 - (R) (P.T.A.B. Dec. 6, 2019)

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.
14/502,251 09/30/2014 Timothy M. Martin 60932-USA 9591
111801 7590 12/06/2019
FMC / Fox Rothschild LLP
2929 Walnut Street
Philadelphia, PA 19104
EXAMINER
FISHER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
Andrea.Small@fmc.com
ipdocket@foxrothschild.com
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, SHAWN GRANT, NEIL DESTEFANO,
ADAM PRESTEGROD, and MICHAEL HARPER
__________

Appeal 2018-006739
Application 14/502,2511
Technology Center 1600
__________

Before JOHN E. SCHNEIDER, RACHEL H. TOWNSEND, and DAVID
COTTA, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered on August
14, 2019 (“Decision”). That Decision affirmed-in-part the rejections made
by the Examiner in the Final Rejection of June 5, 2017. Relevant here are
the obviousness rejections based on Burke and Burke II. The rejection of
claims 1, 43–52, 76–78, 81, and 832 under 35 U.S.C. § 103 as being

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.)
2 We inadvertently included recitation of claims 42, 44, and 47 in our
Decision, but note that those claims had been canceled prior to the Appeal
and were not under review. We note further that we inadvertently included
recitation of claim 86 in addressing the obviousness rejection over Ping and
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unpatentable over Burke and Burke II was affirmed, as was the rejection of
claim 53 under 35 U.S.C. § 103 as being unpatentable over Buke, Burke II,
and Barnett. The remaining rejections of the claims for obviousness were
reversed.3
Appellant filed a Request for Rehearing (“Request”) pursuant to 37
C.F.R. § 41.52 on October 11, 2019. We have jurisdiction under 35 U.S.C.
§ 6(b).
A request for rehearing “must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board,” and must comply with 37 C.F.R. § 41.52(a)(1).
We have considered Appellant’s Request on the merits; because it
fails to establish that the Board misapprehended or overlooked a point of
fact or law, we deny the relief requested.
DISCUSSION
Appellant contends that the reasoning offered to affirm the
Examiner’s rejection was tantamount to a new ground of rejection because
the Examiner never “declared different surfactants in general as ‘result-
effective’” but rather relied on the ranges of the prior art being “close
enough [that] one skilled in the art would have expected them to have the
same properties” and that two Federal Circuit decisions rendered after the

Burke, but claim 86 had also been canceled prior to the Appeal and, thus,
was also not under review.
3 Appellant contends that we also affirmed the rejection of claim 41 as
being obvious under 35 U.S.C. 103 over Burke, Burke II, and Barnett.
(Request 2.) That is plainly incorrect. (See Decision 21–23, 26.)
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filing of the Appeal are relevant to the new ground. (Request 2–4 (emphasis
omitted).) We do not find Appellant’s argument persuasive.
First, we limit our analysis to claim 1 as Appellant did not argue the
claims separately in the Appeal. (See Decision at 21.) As relevant to the
Appellant’s argument, claim 1 requires (a) “one or more foaming agents in a
total of about 5% to about 30% by weight,” (b) “one or more foam
stabilizers in a total of about 1% to about 15% by weight,” and (c) “water,
up to about 45% by weight based on the total weight of the liquid
agricultural formulation.” (Dec. 2–3.)
In the Final Office Action, the Examiner stated:
Burke et al. teaches ready-to-use foamable pesticide
compositions . . . compris[ing] a diluent, a particulate pesticide
suspended in the diluent, a thickening agent and a surfactant
system . . . [and] the thickening agent can be selected from a
group that includes xanthan gum (a foam stabilizer as
evidenced by instant claim 52) and is present from about 0.05%
to about 1% by weight of the composition . . . .
Burke et al. does not teach that the foaming agent is from
5 to 25% . . . by weight based on the total weight of the liquid
agricultural formulation.
Burke II teaches ready-to-use foamable pesticide
compositions that contain a pesticide dispersed in a
composition containing water, a co-solvent, surfactant and
propellant (see abstract). Burke II teaches the rate at which the
foam breaks may generally be controlled by selecting the
amount of surfactant included in the composition with higher
amounts of surfactant corresponding to lower foam breaking
rates (see [0169]). Burke II teaches that the composition
includes from about 0.5% to about 15% surfactants by weight
of the composition (see [0176]).
. . .
It would have been obvious to a person of ordinary skill
in the art before the effective filing date of the claimed
invention to utilize from about 0.5% to about 15% surfactants
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by weight of the composition as taught by Burke II in the
composition of Burke et al. One would be motivated to do so
with a reasonable expectation of success as Burke II teaches the
rate at which the foam breaks may generally be controlled by
selecting the amount of surfactant included in the composition
with higher amounts of surfactant corresponding to lower foam
breaking rates (see [0169]).
(Final Action 7–9.) In the Answer, the Examiner, in response to Appellant’s
argument that Burke II teaches away from the invention, notes that
Burke II specifically teaches that 1) the rate at which the
foam breaks may generally be controlled by selecting the
amount of surfactant included in the composition with higher
amounts of surfactant corresponding to lower foam breaking
rates and 2) the length of time the composition foams may also
be increased by using hydrocarbon propellants or by using
thickening agents such as, for example, xantham gum (see
[0169]). Burke et al. (the primary reference), includes xantham
gum that is present from about 0.05% to about 1 % by weight
of the composition. Xantham gum is specifically taught by
Burke II as a thickening agent that can be included to increase
the length of time the composition foams, and is taught by
Burke et al. to be present in the same amount as instantly
claimed (“one or more foam stabilizers in a total of about 1% to
about 15% by weight[”]) in claim 1,
(Ans. 7.) The Examiner, in response to Appellant’s argument that the
Examiner’s conclusion is based upon improper hindsight reasoning, further
states:
It would have been obvious to a person of ordinary skill in the
art before the effective filing date of the claimed invention to
utilize from about 0.5% to about 15% surfactants by weight of
the composition as taught by Burke II in the composition of
Burke et al. One would be motivated to do so with a reasonable
expectation of success as Burke II teaches the rate at which the
foam breaks may generally be controlled by selecting the
amount of surfactant included in the composition with higher
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amounts of surfactant corresponding to lower foam breaking
rates (see [0169]).
(Ans. 9.)
The Examiner relied upon an amount disclosed in the prior art being
close enough to the claimed amount to address the requirement that the
formulation have about 45% by weight water. In particular, the Examiner
stated in the Final Office Action:
Further, a person of ordinary skill in the art would reasonably
expect a formulation with about 50% by weight of diluent
(water) as taught by Burke et al. to have the same properties as
one with about 45% by weight as instantly claimed. A prima
facie case of obviousness exists where the claimed ranges and
prior art ranges do not overlap but are close enough that one
skilled in the art would have expected them to have the same
properties. Titanium Metals Corp. of Amer. v. Banner, 778
F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
(See Final Action 9.)
Moreover, the Examiner repeated the foregoing in the Answer and
further noted:
Appellant argues that proximity alone between non-
overlapping ranges is not enough to establish obviousness.
However, the arguments of counsel cannot take the place of
evidence in the record. In re Schulze, 346 F.2d 600, 602, 145
USPQ 716, 718 (CCPA 1965). Appellant has not set forth any
support as to why a person of ordinary skill in the art would not
reasonably expect a formulation with about 50% by weight of
diluent (water) as taught by Burke et al. to have the same
properties as one with about 45% by weight as instantly
claimed, especially in view of the teachings of the prior art
[that] the surfactant and thickener concentration control the
foam breaking rate (see [0169] of Burke II).
(Ans. 10.)
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The Examiner’s position with respect to the obviousness of the
claimed surfactant range clearly rests on the implicit position that the prior
art recognized that the amount of the surfactant used, particularly when used
with a thickener like xanthan gum, is a result effective variable. (Final
Action 9 (“Burke II teaches the rate at which the foam breaks may generally
be controlled by selecting the amount of surfactant included in the
composition with higher amounts of surfactant corresponding to lower foam
breaking rates”); Ans. 9 (“Burke II teaches the rate at which the foam breaks
may generally be controlled by selecting the amount of surfactant included
in the composition with higher amounts of surfactant corresponding to lower
foam breaking rates”); see also Ans. 10 (“especially in view of the teachings
of the prior art [that] the surfactant and thickener concentration control the
foam breaking rate”).)
In view of the foregoing, we disagree with Appellant that the
affirmance was tantamount to a new rejection. Furthermore, because
Appellant’s arguments presented in section 1 are premised on its erroneous
position that the affirmance was tantamount to a new rejection and not on
any misapprehension of law or fact, we do not consider the arguments
presented in that section. Similarly, the arguments presented in section 2 are
not based on any misapprehension of law or fact, but are offered as allegedly
“relevant to the new theory offered by the PTAB” (Request 2), and rely on a
recent Federal Circuit as an opportunity to reargue that the rejection at issue
is “simply the product of hindsight” (Request 19). Rehearing is not an
opportunity to reargue the case, and thus we do not consider the arguments
presented in section 2 either.
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Appellant further contends that the Decision is ambiguous because of
contradictory claim interpretations at page 12, lines 21–24 compared with
pages 12 and 13. (Request 2.) As stated in 37 C.F.R. § 41.52(a)(1):
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board.
An alleged ambiguity in the decision is not an identification of a point
misapprehended or overlooked by the Board. In any event, we disagree that
there is any internal inconsistency. Appellant’s argument that our claim
construction is ambiguous appears to be based on the understanding that the
claims require that the foam is reduced by 25% or less. (Request 19). But
that is not what the claims say. The claims state that “the volume of the
foam generated by the formulation is reduced by 25% after 45 minutes or
greater.”
After noting that the “wherein clause of claim 1 requires that the
composition, once foamed, will have the property of being reduced by 25%
any time after about 45 minutes,” the decision properly concludes that if a
composition is reduced by only 10% any time after about 45 minutes then it
is not within the scope of the claim because a foam that never reaches the
point of 25% disintegration would not meet the claim limitation. (Dec. 12.)
In other words, by only ever being reduced by 10% any time after 45
minutes, the composition would not be reduced by 25% at any time after
about 45 minutes. A loss of 10% volume after 45 minutes (Request 20) is
not a reduction of 25% at 45 minutes or later. Accordingly, we do not
discern any internal inconsistency in our opinion or our claim construction.

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While Appellant disagrees with our Decision’s affirmance of the
Examiner’s obviousness rejections, Appellant has not shown that the
Decision failed to adequately appreciate or address the arguments presented
in the Appeal regarding those claims.
DECISION SUMMARY
Claims 35 U.S.C.
§
Reference(s)/Basis Denied Granted
1, 43, 45,
46, 48–52,
76–78, 81,
83
103 Burke, Burke II 1, 43, 45,
46, 48–52,
76–78, 81,
83

53 103 Burke, Burke II,
Barnett
53
Overall
Outcome
1, 43, 45,
46, 48–53,
76–78, 81,
83

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In summary:
Claims 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
79, 80 112, First
paragraph
Written
Description
79, 80
1, 43, 45,
46, 48–52,
76–78, 81,
83
103 Burke, Burke II 1, 43, 45,
46, 48–52,
76–78, 81,
83

1, 41, 43,
46, 48–53,
76–78, 81,
83
103 Burke, Burke II,
Barnett
1, 43, 46,
48–53, 76–
78, 81, 83
41
1, 41, 45,
46, 48–50,
52, 76–84
103 Ping, Burke 1, 41, 45,
46, 48–50,
52, 76–84
1, 41, 45,
46, 48–50,
52, 76–84,
87, 88
103 Ping, Burke,
Dexter
1, 41, 45,
46, 48–50,
52, 76–84,
87, 88
1, 41, 45,
46, 48–50,
52, 76–84,
87–90
103 Ping, Burke,
Dexter, Chen
1, 41, 45,
46, 48–50,
52, 76–84,
87–90
Overall
Outcome
1, 43, 45,
46, 48–53,
76–78, 81,
83
41, 79, 80,
82, 84, 87,
88, 89, 90

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).

REHEARING DENIED