World Sources Enterprises, LLC

Patent Trials and Appeals Board

Aug 10, 2020

PGR2019-00046 (P.T.A.B. Aug. 10, 2020)

Trials@uspto.gov Paper 45
571.272.7822 Date: August 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SOLVAY USA INC.,
Petitioner,
v.
WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
and ECO WORLD GROUP LLC
Patent Owner.
____________

PGR2019-00046
Patent 10,221,108 B2
____________

Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
35 U.S.C. § 328(a)

DECISION
Denying Patent Owner’s Request for Rehearing of Decision Denying
Combined Motion for Additional Discovery and Late Objection to Evidence
37 C.F.R. § 42.71(d)(1)

ORDER
Dismissing Petitioner’s Motion to Exclude Evidence

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I. INTRODUCTION
Solvay USA Inc. (“Petitioner”) filed a Petition requesting post grant
review of claims 1–20 of U.S. Patent No. 10,221,108 B2 (Ex. 1001,
“the ’108 patent”). Paper 1 (“Pet.”). World Source Enterprises, LLC
(“Patent Owner” (Paper 5, 1)) filed a Preliminary Response to the Petition.
Paper 6 (“Prelim. Resp.”). We instituted post grant review of claims 1–20 of
the ’108 patent on all grounds of unpatentability alleged in the Petition.
Paper 7 (“Institution Decision” or “Dec.”).
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 11 (“PO Resp.”)).1 Petitioner filed a Reply (Paper 23 (“Reply”)).
Patent Owner filed a Sur-Reply (Papers 25, 26, 27).2
Petitioner filed a Motion to Exclude certain evidence submitted by
Patent Owner (Paper 31), to which Patent Owner filed an Opposition (Paper

1 Patent Owner filed Paper 11 one day after the November 5, 2019, deadline.
Patent Owner sent an improper ex parte communication to the Board on
November 6, 2019, informing the Board of the late filing, and filed an
unauthorized motion on November 12, 2019, under 37 C.F.R. § 42.5(c)(3) to
excuse the late filing of documents. Paper 12. After determining that
Petitioner did not oppose Patent Owner’s unauthorized motion, we
retroactively authorized Patent Owner’s motion as a procedural kindness to
Patent Owner, and granted the motion after considering its merits. Paper 14.
2 On March 10, 2020, Patent Owner mistakenly filed two identical copies of
a Sur-Reply that exceeded the word count limit prescribed by 37 C.F.R.
§ 42.24. Papers 25, 26. The Board expunged one copy (Paper 26) of the
Sur-Reply. On March 12, 2020, without prior Board authorization, Patent
Owner filed a different Sur-Reply that complied with 37 C.F.R. § 42.24.
Paper 27. On March 16, 2020, without prior Board authorization, Patent
Owner filed a motion to substitute Paper 25 with Paper 27. Paper 28. As a
further procedural kindness to Patent Owner, the Board retroactively
authorized Patent Owner’s unauthorized motion, and reminded Patent
Owner of our rule requiring prior Board authorization for such motions.
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33). Petitioner filed a Reply to Patent Owner’s Opposition to its Motion to
Exclude. Paper 35.
An oral hearing was held on May 14, 2020, and a transcript of the
hearing is included in the record. Paper 42 (“Tr.”).
After the hearing, Patent Owner filed a combined Motion for
Additional Discovery and Late-filed Objection to Exhibit 1006. Paper 40.
Petitioner filed an Opposition (Paper 41), and we issued an order denying
Patent Owner’s Motion (Paper 43). Patent Owner subsequently filed a
Motion for Reconsideration and Rehearing of its Motion for Additional
Discovery and Objection to Exhibit 1006. Paper 44.
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a). For the reasons that
follow, we determine that Petitioner has established by a preponderance of
the evidence that claims 1–20 of the ’108 patent are unpatentable.
We dismiss Petitioner’s Motion to Exclude.
We deny Patent Owner’s request for rehearing of our decision
denying its combined motion seeking additional discovery and late objection
to evidence.
A. The ’108 Patent (Ex. 1001)
The ’108 patent, titled “Liquid Formulations of Urease Inhibitors for
Fertilizers,” issued on March 5, 2019. Ex. 1001, codes (45), (54). The ʼ108
patent relates to “[a]n improved solvent system for the formulation and
application of N-alkyl thiophosphoric triamide urease inhibitors,” that

Paper 29, 2. After considering the merits of Patent Owner’s motion, we
deemed Paper 27 to be timely filed and expunged Paper 25. Id. at 5.
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purports to “provide safety and performance benefits relative to existing
alternatives and enable storage, transport and subsequent coating or blending
with urea based or organic based fertilizers.” Id., code (57). The
formulations comprise “environmentally friendly aprotic and protic solvents
(particularly dimethyl sulfoxide and alcohols/polyols) to stabilize the urease
inhibitor.” Id. In certain embodiments, the urease inhibitor is N-(n-butyl)
thiophosphoric triamide (“NBPT”). Id. at 1:15–17. Also, the ʼ108 patent
discusses the use of dimethyl sulfoxide (“DMSO”) “as a replacement in
NBPT-based agrichemical products for more toxic solvents such as, for N-
methyl pyrrolidone.” Id. at 5:12–15.
B. Related Proceedings
The parties identify the following district court proceeding as related
to the ’108 patent: MicroSource, LLC v. Eco World Group, LLC, Case No.
5:19-cv-04016 (N.D. Iowa) (Apr. 18, 2019). Pet. 2; Paper 5, 1.
C. Illustrative Claim
Petitioner challenges claims 1–20 of the ’108 patent. Pet. 3. Of
claims 1–20, claims 1, 6, and 18 are independent. Claim 1 is illustrative, and
is reproduced below:
1. A composition comprising:
a. urea,
b. a liquid solution comprised of a urease inhibitor that has
been solubilized within an aprotic solvent wherein said aprotic
solvent comprises dimethyl sulfoxide wherein the liquid solution
comprises 45–5% of said urease inhibitor and 55–95% of
dimethyl sulfoxide and wherein the urease inhibitor is N-(n-
butyl) thiophosphoric triamide.
Ex. 1001, 15:6–14.
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D. Instituted Challenges to Patentability
We instituted post grant review of claims 1–20 of the ʼ108 patent on
the following challenges. Dec. 2, 25.
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–20 103 Iannotta,3 CN4004
1, 3–9, 11–20 103 Kolc,5 CN400
2, 10 103 Kolc, CN400, Iannotta

II. ANALYSIS
A. Legal Principles
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court outlined a framework for assessing obviousness under 35
U.S.C. § 103 that requires consideration of four factors: (1) the “level of
ordinary skill in the pertinent art,” (2) the “scope and content of the prior
art,” (3) the “differences between the prior art and the claims at issue,” and
(4) “secondary considerations” of non-obviousness such as “commercial
success, long-felt but unsolved needs, failure of others, etc.” Id. at 17–18.
“While the sequence of these questions might be reordered in any particular
case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the Federal
Circuit has “repeatedly emphasized that an obviousness inquiry requires
examination of all four Graham factors and that an obviousness
determination can be made only after consideration of each factor.” Nike,
Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016).

3 US 2013/0145806 A1, published June 13, 2013 (Ex. 1007, “Iannotta”).
4 CN 101200400 B, published Jan. 4, 2012 (Ex. 1006, “CN400”).
5 US 4,530,714, issued July 23, 1985 (Ex. 1009, “Kolc”).
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“[A] a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important
to identify 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.” Id. Furthermore, a party seeking to demonstrate that a
patent would have been obvious must show that “a skilled artisan would
have been motivated to combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success in doing so.” Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (quoting
Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed.
Cir. 2009)). Ultimately, “there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR,
550 U.S. at 418).
B. Claim Construction
Petitioner filed its Petition in this case April 26, 2019. Based on that
filing date, we apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips,
claim terms are afforded “their ordinary and customary meaning.” Id. at
1312. “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” Id. at 1313. Only terms that are in
controversy need to be construed, and then only to the extent necessary to
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resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999).
Neither party offers a construction for any claim term. Pet. 11; see
also PO Resp., generally. On the complete record, we determine that no
claim limitations need an express construction to resolve the controversy.
C. Level of Ordinary Skill in the Art
Petitioner asserts that one of ordinary skill in the art would have had
“at least a bachelor’s degree in a field such as chemistry or chemical
engineering and at least two years of experience in developing chemical
formulations for use in the agricultural industry.” Pet. 8 (citing Ex. 1003
¶ 34). Additionally, Petitioner contends one of ordinary skill in the art
“would have had knowledge of commercially available, effective solvents
that are suitable for agricultural applications,” and “knowledge of common
techniques used to dissolve a substance in a solvent or increase the solubility
of the substance [in] a particular solvent system,” such as “different mixing
or agitation methods, increasing temperature, or the introduction of co-
solvents.” Pet. 8 (citing Ex. 1003 ¶¶ 34–35). Patent Owner appears to offer
no opinion in its response regarding the level of ordinary skill in the art at
the time of the invention of the ʼ108 patent. See PO Resp., generally. When
addressing the credentials of Petitioner’s declarant Dr. Gordon W. Gribble,
however, Patent Owner asserts that “a POSITA would have a bachelor’s
degree and at least 2 years of experience in formulation chemistry.” Sur-
Reply 4.
In light of the complete record now before us, we adopt Petitioner’s
definition of one of ordinary skill in the art. In addition to the academic
requirements associated with obtaining a bachelor’s degree in chemistry or
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chemical engineering, Petitioner’s definition includes at least two years of
experience specific to chemical formulations used in the agricultural
industry. Pet. 8. Patent Owner’s “definition” is generic to “formulation
chemistry.” Sur-Reply 4. Patent Owner does not explain, nor do we
discern, why the skilled artisan would not have had at least some work
experience in developing chemical formulations in the relevant field, i.e., the
agrochemical industry. Indeed, some of Patent Owner’s arguments are
directed to solvent delivery systems used in the agricultural market. PO
Resp. 57–78.
Further, the level of ordinary skill in the art is reflected by the
references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
the art does not give rise to reversible error ‘where the prior art itself reflects
an appropriate level and a need for testimony is not shown.’”); In re GPAC
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent
Appeals and Interferences did not err in concluding that the level of ordinary
skill in the art was best determined by the references of record). Here, each
of the ʼ108 patent, and the Iannotta, Kolc, and CN400 references are specific
to urea fertilizer compositions. Ex. 1001; Ex. 1006; Ex. 1007; Ex. 1009.
D. Scope and Content of Iannotta, CN400, and Kolc
1. Iannotta (Ex. 1007)
Iannotta discloses that urease inhibitors can be “incorporated into a
urea-containing fertilizer[] to slow the conversion of ammonium ions to
ammonia gas and thus slow the lost [sic] of ammonia to volatilization, thus
making it available to plants in the soil longer.” Ex. 1007 ¶ 4. Iannotta also
discloses that “[a] typical urease inhibitor, NBPT (N-(n-butyl)-
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thiophosphoric triamide) . . . is extremely difficult to handle” because it “is a
sticky, waxy, heat and water sensitive material, which cannot be used in its
solid form.” Id. ¶ 5. “By introducing the NBPT to liquid fertilizers
containing urea . . . in a solvent system, the NBPT is capable of being better
dispersed in the liquid fertilizer.” Id.
Iannotta discloses that “it is desirable to have a low cost solvent
system containing [NBPT] that has a favorable toxicological and/or
ecological profile and desirable characteristics in terms of low volatility,
biodegradability or ready biodegradability (i.e., readily biodegradable), low
toxicity or low hazard level.” Id. ¶ 6. Iannotta discloses “formulations
comprising a mixture or solution of at least one alkyl thiophosphoric
triamide (from about 15% to 35% by weight of formulation) in at least one
solvent” such as alcohol. Id. ¶ 7.
2. CN400 (Ex. 1006, Ex. 2006, 461–69)
CN400 “relates to a coated urea fertilizer and its preparation.”
Ex. 1006, code (57); see also Ex. 2006, 461. CN400 discloses that “adding a
urease inhibitor to urea to inhibit the urease activity in soil is a simple and
effective method for slowing down the hydrolysis of urea and prolonging the
effective period of urea fertilizer.” Ex. 1006 ¶ 4. CN400 discloses a desire
to “significantly prolong the retention and nitrogen transformation time of
urea in soil, . . . and cause no pollution to the soil environment.” Id. ¶ 6.
CN400 discloses that its fertilizer may comprise the specific urease inhibitor
NBPT (id. ¶ 8), and an organic solvent selected from, e.g., DMSO or
industrial alcohol (id. ¶¶ 7, 9, 11, 28).

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3. Kolc (Ex. 1009)
Kolc discloses “urease inhibited fertilizer compositions containing
urea and a urease inhibiting amount of one or more phosphoric triamide
compounds, and methods and composition[s] for inhibiting the urease
catalyzed hydrolysis of urea through use of such compounds.” Ex. 1009,
code (57). Kolc discloses one such urease inhibitor as NBPT. Id. at 11:13.
E. Asserted Obviousness of Claims 1–20––Iannotta and CN400
Petitioner’s Arguments––Claim 1
Petitioner asserts that claim 1 of the ʼ108 patent is unpatentable as
obvious under 35 U.S.C. § 103 over the combined disclosures of Iannotta
and CN400. Pet. 26–35. Petitioner relies on the testimony of Dr. Gribble
(Ex. 1003) for support.
Specifically, Petitioner asserts that each of Iannotta and CN400
discloses “a composition” that includes “urea.” Pet. 31–32. Petitioner
asserts further that Iannotta discloses the limitation requiring “a liquid
solution comprised of a urease inhibitor that has been solubilized within an
aprotic solvent” such as propylene carbonate––each present in the claimed
amounts. Id. at 32–34. Petitioner also avers that each of Iannotta and
CN400 disclose the claimed urease inhibitor NBPT. Id. at 35. Petitioner
asserts that Iannotta discloses a NBPT concentration range (i.e., 15–35% by
weight of the formulation) that is fully encompassed by the concentration
range recited in claim 1 (i.e., 5–45% by weight).6 Id. at 33 (citing Ex. 1007

6 Although claim 1 of the ʼ108 patent does not specify percentages “by
weight,” the patent states that “[a]ll compositions are based on mass
percentages unless expressly stated.” Ex. 1001, 8:52–53. Further, Patent
Owner does not dispute Petitioner’s assertion that Iannotta’s concentrations
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¶ 7). Petitioner likewise asserts that Iannotta discloses solvent concentration
ranges that overlap with those claimed. Id. at 33–34 (citing Ex. 1007 ¶ 7
(disclosing a “solution of at least one alkyl thiophosphoric triamide . . . in at
least one solvent selected from: . . . [an] alcohol (from about 0% to 75% by
weight of formulation)”)).
Petitioner acknowledges that Iannotta does not disclose the
specifically claimed solvent DMSO, and turns to CN400 for “its disclosure
of the use of DMSO as a solvent for use with NBPT.” Id. at 34–35.
Petitioner asserts that a person of ordinary skill in the art, “[w]hen
designing the solvent system that is disclosed in Iannotta for use with a
urease inhibitor, such as NBPT, . . . would have been motivated to combine
the teachings of Iannotta with the CN400 patent” for the following reasons:
(1) Iannotta and CN400 are analogous because they are “directed [to]
the same field of endeavor: developing a fertilizer composition that includes
a urease inhibitor dissolved in a solvent system” (id. at 27);
(2) Iannotta and CN400 “promote the use of the same urease inhibitor,
NBPT” (id.);
(3) Iannotta notes the desirability to have a low cost, toxicologically
favorable solvent system containing NBPT, and that “at the time of alleged
invention of the ʼ108 Patent, DMSO was a widely used and commercially
available solvent having ‘very low acute toxicity’ [] suitable for use in
agricultural applications” (id. at 28);
(4) “DMSO was a well-known solvent in which NBPT is highly
soluble” (id. at 29);

for both NBPT and the organic aprotic solvent overlap with the values
recited in the claims. PO Resp., generally.
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(5) using DMSO as the aprotic solvent in Iannotta’s composition
“would have merely combined known elements according to known
methods to yield predictable results” (id.);
(6) using DMSO instead of another agrochemical formulation solvent
“would have merely required the simple substitution of one known solvent
(e.g., methanol) for another (e.g., DMSO) to obtain predictable results” (id.
at 30); and
(7) selecting DMSO as the agrochemical formulation solvent “would
have merely involved a Skilled Artisan choosing from a finite number of
identified, predictable solvents . . . for use with NBPT, each having a
reasonable expectation of success” (id. at 30–31). Ex. 1003 ¶¶ 89–98.
Patent Owner’s Arguments7
Patent Owner presents a number of arguments contending Petitioner
does not “establish a proper prima facie case of obviousness for a failure to
show all of the features of the claimed invention,” and fails to consider the
reference teachings as a whole. PO Resp. 15. Patent Owner also argues that
the claimed subject matter exhibits “unexpectedly superior properties,” and
states that “secondary considerations [] argue for the non-obviousness of the
claimed invention.” Id.
Specifically, Patent Owner contends that the CN400 reference is non-
enabled. PO Resp. 38–40. Further, Patent Owner avers that Iannotta does
not disclose DMSO, but does disclose 2.06 x 1035 solvent combinations. Id.
at 40. Patent Owner recognizes that Petitioner relies on CN400 for its
disclosure of DMSO, but states that CN400’s process does not dissolve

7 Patent Owner’s arguments focus on limitations germane to independent
claims 1, 6, and 18. PO Resp., generally.
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NBPT in DMSO. Id. at 41. Rather, according to Patent Owner, CN400’s
process creates a suspension of the urease inhibitor in a solvent. Id. Thus,
Patent Owner argues that because neither Iannotta nor CN400 disclose or
suggest a combination of urea and urease inhibitor dissolved in a solution of
DMSO, these references “cannot render prima facie obvious” claim 1’s
subject matter. Id. at 42. Patent Owner argues that mere disclosure of a
broad genus of compounds does not render obvious each species falling
within that genus absent a suggestion or motivation to select that species,
relying on in In re Baird, 16 F.3d 380 (Fed. Cir. 1994) to support its
position. Id. at 42–47. Patent Owner also asserts CN400 is not analogous
art and contests Petitioner’s reasons to combine Iannotta and CN400. Id. at
47–52. Additionally, Patent Owner argues the skilled artisan would have
viewed DMSO as an unsuitable solvent for use in agricultural urea
formulations based on DMSO’s melting point (id. at 53–55), DMSO’s
boiling point (id. at 55), and DMSO’s ability to rapidly penetrate biological
membranes (id. at 56–57).
Patent Owner also cites purported “established standards that others in
the field would have to meet in order to satisfy the marketplace,” (id. at 58),
and outlines various experiments Patent Owner performed to purportedly
show that the claimed subject matter possesses unexpectedly superior
properties when compared to the prior art. Id. at 61–66. Patent Owner also
argues various objective indicia of non-obviousness. Id. at 66–78.
In its Sur-Reply, Patent Owner contends that CN400 is not analogous
art to Iannotta (or Kolc, discussed infra) because CN400 does not disclose
that the urease inhibitor (e.g., NBPT) is dissolved in the solvent. Sur-Reply
15–18.
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Upon consideration of the parties’ evidence and arguments on the
complete record, including evidence and arguments regarding objective
indicia of non-obviousness, we agree with Petitioner that the subject matter
of claim 1 would have been obvious in view of the combined disclosures of
Iannotta and CN400. Our reasoning follows.
Motivation to Combine the Teachings of Iannotta and CN400
We find that Iannotta undisputedly discloses the urease inhibitor
NBPT dissolved in an organic solvent for use in a urea-based fertilizer
formulation. See Ex. 1007 ¶¶ 2, 3, and 5–8; see also id. ¶ 48, 59 (identifying
propylene carbonate, an aprotic organic solvent, as the solvent system).
Iannotta furthermore expresses a desire to have a solvent system containing
NBPT “that has a favorable toxicological and/or ecological profile and
desirable characteristics” related to biodegradability. Ex. 1007 ¶ 6.
CN400 undisputedly discloses urea-based fertilizer formulations
comprising NBPT and an organic solvent such as DMSO. Ex. 1006 ¶¶ 7–9;
see also Ex. 2006, 463–64 (alternative machine translation of the CN400
patent, filed by Patent Owner, as part of the file history of U.S. Patent
Application No. 13/890,082––the immediate parent application of the ʼ108
patent––titled “Acetic ester coated controlled-release urea fertilizer and
preparation technique,” disclosing in paragraphs 7–9 a urea-based fertilizer
formulation which may contain NBPT as the urease inhibitor and DMSO as
the organic solvent or solution).
As of November 24, 2009––almost three years before the ʼ108
patent’s priority date of October 1, 2012––DMSO was “already used
extensively as a polar aprotic solvent in . . . agrochemical formulations” and
was known to be “the sustainable reference solution to replace solvents
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classified as hazardous to human health” including the solvents “dimethyl
formamide (DMF), dimethyl acetamide (DMAC), and N-methyl pyrrolidone
(NMP).” Ex. 1025, 1. Significantly, NBPT was known to be “exceptionally
soluble” in liquid amide solvents such as DMF and DMAC, and NMP was
known as a preferred solvent for NBPT. See Ex. 1010, 7:53–54 (“NBPT is
exceptionally soluble in liquid amide solvents for the NBPT”); 7:68–8:1
(identifying DMF and DMAC as example liquid amide solvents); see also
id. at 8:8–13 (identifying NMP as a preferred solvent with NBPT), 10:1–21
(disclosing a working example of “a concentrated solution of NBPT in
[NMP]” which discloses “not only the exceptionally high solubility of
NBPT in the solvents of this invention, but also the long term stability of
concentrated NBPT solutions in these solvents”); see also Ex. 1026 ¶¶ 3, 21,
22 (establishing NMP’s toxicity and DMSO’s preferred status as the solvent
for the agrochemical formulation); Ex. 1013, 716 (“Dimethyl sulfoxide has
very low acute toxicity, and chronic effects are observable only at high
doses.”).
Based on this evidence, we find that a person of ordinary skill in the
art, armed with the knowledge of the prior art as a whole, would have had
reason to combine the teachings of CN400 with those of Iannotta, and would
have selected DMSO as Iannotta’s organic solvent for the purpose of
improving the toxicological and/or ecological profile of NBPT-containing
agricultural formulations, as set forth by Petitioner. Pet. 27–28. Indeed, this
motivation is consistent with Iannotta’s expressly stated desire to have such
a solvent system for NBPT. Ex. 1007 ¶ 6; see Motorola, Inc. v. Interdigital
Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997) (explaining that the
motivation to combine the teachings of prior art references “may come from
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the prior art, as filtered through the knowledge of one skilled in the art”)
(cited with approval in DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d. 1356, 1361 (Fed. Cir. 2006)).
Patent Owner’s arguments against this particular reason for combining
the teachings of Iannotta and CN400 are unavailing. PO Resp. 48–49. First,
Patent Owner’s focus on Iannotta’s purported disclosure of 2.06 x 1035
solvents does not address the teachings of the prior art as a whole, or the
reasons one of ordinary skill in the art would have selected DMSO as a
solvent from among the available solvents. Id. at 48. Also, Patent Owner’s
argument regarding the purported “unfavorable properties” of DMSO is
belied by the document it cites for support and other evidence of record,
which recommend using DMSO. Id. at 49; see Ex. 2054, 2 (“industrial
grade DMSO is widely used by the lay population, usually topically on
human and other animals”), 3–4 (discussing how interest in DMSO
increased in the 1940s and 1950s “when its solvent properties were exploited
for use in many industrial processes,” and how “DMSO could greatly
enhance [the] penetrance and efficacy” of agricultural products such as
herbicides, fungicides, antibiotics and plant hormones in plants and trees);
Ex. 1025, 1. Here, we observe that Patent Owner does not address whether
the skilled artisan would have known or expected NBPT, i.e., the solute, to
be toxic. See PO Resp. 49 (Patent Owner arguing that “the toxicity of the
solute must be considered too”). Instead, Patent Owner merely cites to
Exhibit 2033––a safety data sheet for NBPT––with no explanation as to
NBPT’s toxicity and how it would have dissuaded the skilled artisan from
using NBPT with DMSO. Our own independent review of this document’s
“Toxicological information” reveals that there is no toxicity data for NBPT
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available, other than it “[m]ay cause respiratory irritation.” Ex. 2033, 6.
This, without any explanation from Patent Owner, hardly suggests that the
skilled artisan would not have had reason to combine NBPT and DMSO for
use in a liquid agrochemical formulation as claimed. We also accord little
weight to Dr. Theyson’s testimony on this point (Ex. 2015 ¶ 25) relied on by
Patent Owner (PO Resp. 49) because it does not address using DMSO in an
agrochemical formulation, and also because it is contradicted by
documentary evidence that does address such formulations. Ex. 1025, 1.
In addition to this reason for combining the teachings of Iannotta and
CN400, we agree with Petitioner that the skilled artisan also would have had
reason to combine the teachings of these references because “[t]he evidence
. . . demonstrates that the choice of DMSO as a solvent in the solvent system
described by Iannotta would have merely involved a [s]killed [a]rtisan
choosing from a finite number of identified, predictable solvents . . . for use
with NBPT.” Pet. 30. Undisputed record evidence establishes that, before
the invention of the ʼ108 patent, NBPT was known to be soluble in DMSO,
water, methanol, dichloromethane, and ether. Ex. 1015, 1; see id. at 3
(declaration testimony that this “publication [Ex. 1015] was available to the
public at least as early as January 19, 2011”); see also Ex. 2006, 451 (Patent
Owner’s exhibit establishing the information contained in Exhibit 1015 was
publicly available as of at least January 19, 2011). Thus, the skilled artisan
would have known that NBPT would be predictably soluble in DMSO and
methanol, in addition to other identified solvents such as water, ether,
dichloromethane, NMP, DMF, and DMAC. Ex. 1015, 1; Ex. 1010, 7:53–54,
7:68–8:1, 8:8–13; Ex. 1025, 1.
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Even further, combining the knowledge that DMSO solubilizes NBPT
(Ex. 1015, 1) with Iannotta’s disclosure of an alcohol as an acceptable
solvent for use with NBPT, we agree with Petitioner (Pet. 29–30) that using
DMSO as the aprotic solvent in Iannotta’s composition “would have merely
combined known elements according to known methods to yield predictable
results” and “would have merely required the simple substitution of one
known solvent (e.g., methanol) for another (e.g., DMSO) to obtain
predictable results.” See Ex. 1007 ¶ 7 (identifying “alcohol” as a solvent
that forms a “solution” with the alkyl thiophosphoric triamide compound);
Ex. 1015 (identifying DMSO and methanol––an alcohol––as two of five
solvents in which NBPT is soluble).
Patent Owner’s arguments (PO Resp. 50–52) regarding these
proffered rationales to combine the teachings of Iannotta and CN400 fall
short because they do not address the relevant record evidence––namely,
Exhibit 1015 discussed above, as well as Iannotta itself. Rather, Patent
Owner focuses on specific characteristics of methanol and DMSO (i.e.,
boiling, freezing, and flash points) in a vacuum and makes unsupported
assertions based on those alleged characteristics. Id. Such unsupported
arguments ignore that Iannotta expressly discloses alcohol, e.g., methanol, as
a solvent used with NBPT (Ex. 1007 ¶¶ 6, 7), and that NBPT was known to
be soluble in methanol and DMSO (Ex. 1015, 1).
Having found that the skilled artisan would have had ample
motivation to combine the disclosures of Iannotta and CN400, we next turn
to whether there would have existed a reasonable expectation of successfully
combining those teachings. Before we do, we emphasize that we need not,
and do not, rely on Petitioner’s proposed motivation to combine the
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teachings of Iannotta and CN400 based on the allegation that each of these
references are directed to “developing a fertilizer composition that includes
a urease inhibitor dissolved in a solvent system.” Pet. 27 (citing Ex. 1006,
claim 1) (emphasis added). By way of background, on the eve of oral
hearing, and for the first time in this proceeding, Patent Owner raised
questions regarding whether claim 1 in the CN400 translation before us as
Exhibit 1006 teaches a solution of urease inhibitor or a suspension of such
an inhibitor. See Ex. 3001. Timeliness issues notwithstanding, we find
Patent Owner’s arguments about the specific process set forth in claim 1 of
CN400 ultimately moot, because Petitioner does not rely on the teachings of
CN400 to establish the claimed “liquid solution.” Rather, Petitioner
expressly––and correctly––relies on Iannotta for the “liquid solution”
limitation except for the presence of DMSO. Pet. 32–34; Ex. 1007 ¶7.
Patent Owner does not dispute that the CN400 translation set forth in Exhibit
1006 discloses DMSO. Tr. 56:12. Patent Owner furthermore acknowledges
that Iannotta’s solvent system has “a urease inhibitor that is in solution.” PO
Resp. 47 (emphasis added).
As set forth supra, there is sufficient motivation to combine the
teachings of Iannotta and CN400, regardless of whether CN400’s claim 1
process generates a solution or suspension of urease inhibitor. In any event,
after allowing post-hearing briefing on the translation matter (Paper 39), we
denied Patent Owner’s combined motion for additional discovery and late-
filed objection to the translation before us as Exhibit 1006. Paper 43. We
address, and deny, Patent Owner’s request for rehearing of that denial (Paper
44) infra.

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Reasonable Expectation of Success
Petitioner argues that selecting DMSO as the agrochemical
formulation solvent “would have merely involved a Skilled Artisan choosing
from a finite number of identified, predictable solvents . . . for use with
NBPT, each having a reasonable expectation of success.” Pet. 30–31 (citing
Ex. 1015); see also Ex. 1003 ¶¶ 89–98. Patent Owner does not address the
full scope of art relied upon by Petitioner, namely Exhibit 1015, but rather
focuses on the number of solvents purportedly disclosed by Iannotta.
PO Resp. 52.
Based on our review of the evidence before us, the key difference
between Iannotta’s liquid solution and claim 1’s liquid solution is the solvent
that is used to dissolve the NBPT. In Iannotta, the solvent can be, for
example, an alcohol (Ex. 1007 ¶¶ 6, 7), whereas, in claim 1, the solvent
comprises DMSO, an ingredient disclosed in CN400 (Ex. 1001, 15:10;
Ex. 1006 ¶¶ 9, 11; Ex. 2006, 464, ¶¶ 9, 11). This is aptly illustrated by
Petitioner in its papers, such as in the graphic reproduced below. Paper 37,
28.
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The above graphic representation sets forth Petitioner’s view of the
difference between Iannotta and claim 1, which is supported by a
preponderance of the evidence and with which we agree.
Based on this difference between the prior art and claim 1, the
question becomes whether the skilled artisan would have had a reasonable
expectation of successfully forming a “liquid solution” of the claimed
concentration of NBPT (e.g., 5%) when using CN400’s DMSO as the
solvent rather than Iannotta’s alcohol. In other words, would the person of
ordinary skill, armed with multiple reasons for using DMSO as the solvent,
have reasonably expected the claimed concentration of NBPT to dissolve in
DMSO? On the complete record, we answer this question in the affirmative.
As set forth supra, before the priority date of the ʼ108 patent, it was
undisputedly known in the prior art that NBPT is soluble in DMSO.
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Ex. 1015, 1. In addition to this unrebutted express disclosure that NBPT is
soluble in DMSO, record evidence establishes that, before the invention of
the ʼ108 patent, DMSO was recognized as “an excellent alternative” to other
(hazardous) solvents such as NMP, DMF, and DMAC––each of which were
known to solubilize NBPT exceptionally well. Ex. 1025, 1; Ex. 1010, 7:53–
54, 7:68–8:14, 10:1–21. Notably, “the concentrated NBPT solution[s]”
generated with these hazardous solvents were known to contain “between
about 30% and 80% NBPT by weight.” Ex. 1010, 8:14–17. Thus, even
without the express disclosure of Exhibit 1015 as a guide, the skilled artisan
would have had a reasonable expectation of successfully solubilizing the
significantly lower claimed amount of NBPT (e.g., 5% by weight) in the
“excellent alternative” solvent DMSO to form a liquid solution. Ex. 1025, 1.
Additionally, Dr. Gribble testifies that the skilled artisan––applying
the well-established chemical principle that “like dissolves like”––would
have recognized that NBPT (a dipolar chemical) would likely dissolve in
DMSO (a dipolar aprotic solvent). Ex. 1003 ¶ 71; see also id. ¶¶ 62–70
(discussing DMSO’s importance and popularity as a dipolar aprotic solvent
prior to the invention date of the ʼ108 patent). We have reviewed and credit
this testimony because it stands unrebutted and Dr. Gribble’s reliance on this
chemical principle is consistent with the art of record. See Ex. 1016, 318.
Moreover, Patent Owner’s declarant Dr. Theyson testifies that––without
question––based on his experience, he “would expect NBPT to have
solubility in DMSO.” Ex. 1029, 147:14–16; see also id. at 107:12–14,
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110:11–14 (Dr. Theyson testifying that Exhibit 1015 indeed suggests that
NBPT is soluble in DMSO).8
Finally, Iannotta discloses its “mixture or solution of at least one alkyl
thiophosphoric triamide,” e.g., NBPT, is present “from 15% to 35% by
weight of [the] formulation,” with one of the solvents being up to 75%
alcohol. Ex. 1007 ¶ 7. Iannotta’s urease inhibitor is present at three to seven
times the 5% concentration required by claim 1. Based on this teaching in
Iannotta, a person of ordinary skill would have reasonably expected that
much lower amounts of NBPT, such as those claimed, would form a liquid
solution when mixed with DMSO––a known alternative to alcohol, e.g.,
methanol, for solubilizing NBPT. Ex. 1015, 1.
We, therefore, determine that a person of ordinary skill in the art
would have had a reasonable expectation of successfully dissolving the
claimed amounts of NBPT in DMSO in order to form a liquid solution at the
time of the invention of the ʼ108 patent.

8 In discussing the five solvents listed in Exhibit 1015 in his declaration, Dr.
Theyson opines that Omilinsky ʼ003 (Ex. 1011) describes two of them (i.e.,
dichloromethane and water) as “poor solvents for NBPT.” Ex. 2015 ¶ 29.
The citation upon which he relies, however, addresses N-alkyl
thiophosphoric triamides generally, and is not specific to the NBPT
compound at issue here. See Ex. 1011, 6:31–37. On balance, Exhibit
1015’s express disclosure of NBPT’s solubility in water, DMSO, methanol,
dichloromethane, and ether outweighs Exhibit 1011’s sweeping statement
about the solubility of N-alkyl thiophosphoric triamides as a class of
compounds. Thus, we give little weight to his conclusion that he “would
find no reason to even consider any of the solvents listed” in Exhibit 1015.
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Patent Owner’s Remaining Arguments
Non-Analogous Art
We disagree with Patent Owner’s allegations that CN400 is non-
analogous art. PO Resp. 47; Sur-Reply 8, 15–16. Patent Owner incorrectly
frames the analogous art inquiry by comparing whether the prior art
references are analogous to each other. See PO Resp. 47 (“not all three
references are in the same field of endeavor”); Sur-Reply 16 (asserting that
CN400 “is not analogous art with Iannotta [] and/or Kolc” because CN400’s
NBPT is purportedly “not dissolved in any solvent”). Our reviewing court
has stated, however, that “[a] reference qualifies as prior art for a
determination under § 103 when it is analogous to the claimed invention.”
Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1322
(Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
Quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), the court stated
Two separate tests define the scope of analogous art: (1) whether
the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field
of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
Innovention Toys, 637 F.3d at 1322.
Regarding whether the CN400 patent is in the same field of endeavor
as the ʼ108 patent, we must consider the scope of the ʼ108 patent as a whole
and not just the claims. In re Mettke, 570 F.3d 1356 (Fed. Cir. 2009)
(rejecting appellant’s attempt to rely on the claimed subject matter to define
the relevant “field of endeavor” when the specification described a broader
one). Significantly, the ʼ108 patent discloses both solutions and suspensions
of NBPT. See Ex. 1001, 5:20–52, 6:5–12, 6:39–40 (disclosing various
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solutions of NBPT), and 13:24–36 (setting forth an embodiment that formed
“a suspension of NBPT in the aqueous mixture” that may “be solved by
agitation”). Therefore, regardless of whether CN400’s process set forth in
its claim 1 results in a solution or suspension of NBPT, CN400 is from the
same field of endeavor as defined by the ʼ108 patent itself––“solvent
formulations for the urease inhibitor . . . NBPT.” Ex. 1001, 1:15–18.
Even if CN400 was not in the same field of endeavor as the ʼ108
patent, we find it is reasonably pertinent to the particular problem with
which the inventor was involved. The ʼ108 patent identifies NBPT
formulation toxicity as problematic to the environment, animals, and
possibly humans (id. at 2:60–62, 4:8–33), and expressly states “it is
desirable to develop formulations/fertilizers that are less toxic to the
environment and to animals and humans” (id. at 4:34–36). The skilled
artisan would have been aware of this toxicity problem with NBPT-
containing formulations (Ex. 1025, 1; Ex. 1007 ¶ 6), and CN400 was also
concerned with this problem (Ex. 1006, 1 (Abstract), ¶¶ 2, 5; see also Ex.
2006, 461 (machine translation of CN400 abstract noting how use of its
fertilizer formulation will not pollute the environment), 462 ¶ 2, 463 ¶ 5.
Notably, Patent Owner does not address this second test in its briefing. Tr.
39:6–11 (Patent Owner’s counsel acknowledging “[w]e did not address the
other prong in the briefing”).
Thus, on several bases, we find CN400 is analogous art to the ʼ108
patent and may be properly relied on in our obviousness determination.
Enablement of CN400
Patent Owner also contends that CN400 is non-enabled.
PO Resp. 38–40. Specifically, Patent Owner argues that “the units of
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measurement for the chemicals in the examples and the claims are
incompatible and cannot be performed by one of skill in the art without
undue experimentation,” and, as a result, CN400’s “composition is not
defined.” Id. at 38.
At the outset, this line of argument is unpersuasive because it is based
on the false premise that a prior art reference must be enabled for its
disclosure to be considered in an obviousness analysis. This is not the law.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed.
Cir. 2003) (“Under § 103, however, a reference need not be enabled; it
qualifies as a prior art, regardless, for whatever is disclosed therein.”).
Furthermore, Petitioner relies on CN400 only for its disclosure of “the use of
DMSO as a solvent for use with NBPT” (Pet. 34–35)––a point that Patent
Owner does not dispute. PO Resp. 18–19. For the limitation in the
independent claims regarding the formation of a liquid solution, the Petition
relies on Iannotta’s process of forming a liquid solution of NBPT, not the
process of CN400. Pet. 32–34. Whether or not the skilled artisan would
have been able to recreate the examples or claims of CN400’s process
without undue experimentation is not pertinent to the question of whether
CN400 discloses the use of DMSO as a solvent for use with NBPT.
In re Baird
We also find Patent Owner’s reliance on the legal principles
articulated in Baird, 16 F.3d 380, to be misguided. In Baird, our reviewing
court recognized that mere disclosure of a broad genus of compounds does
not render obvious each species falling within that genus absent a suggestion
or motivation to select that species. Baird, 16 F.3d at 382–3. Baird,
however, does not apply to the present facts. At the outset, our case does not
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present the same single reference, genus-species obviousness fact pattern
confronted by the Federal Circuit in Baird. Rather, the case before us deals
with whether the skilled artisan would have been motivated to select one
solvent (i.e., DMSO) from a large number of solvents disclosed in multiple
prior art references, when there is an established motivation to do so. Cf.
Baird, 16 F.3d at 382 (“While the Knapp formula unquestionably
encompasses bisphenol A when specific variables are chosen, there is
nothing in the disclosure of Knapp suggesting that one should select such
variables.”). Patent Owner’s arguments ignore this critical part of the
inquiry, focusing instead on the mere number of solvents disclosed.
PO Resp. 42–46.
As set forth, supra, the skilled artisan would have been motivated to
select DMSO as Iannotta’s aprotic polar solvent to create a liquid solution of
NBPT for the following reasons: (1) improving the toxicological and/or
ecological profile of NBPT-containing agricultural formulations, (2) DMSO
was known to be one of a finite number of identified, predictable solvents
for use with NBPT, (3) doing so would have merely combined known
elements according to known methods to yield predictable results, and (4)
doing so would have merely required the simple substitution of one known
solvent (e.g., an alcohol such as methanol) for another (e.g., DMSO) to
obtain predictable results. Accordingly, Baird is inapposite.
Teaching Away By Others
Finally, Patent Owner argues that several references relied on in this
proceeding––Iannotta and Kolc––teach away from using DMSO in a solvent
delivery system. PO Resp. 71–72. Specifically, Patent Owner avers that
Kolc teaches away “because one would be led in a direction divergent from
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the path taken by Kolc” based on certain solvents’ boiling points. Id. Patent
Owner also states that Iannotta teaches away because it does not include
DMSO and it “discloses many chemical species that are vastly more
complicated than” DMSO. Id. at 72 (citing Baird, 16 F.3d 380).
We are unpersuaded by these arguments because they do not address
the totality of the prior art in this proceeding. See, e.g., Ex. 1025, 1
(establishing DMSO as an excellent alternative to hazardous solvents for
solvating NBPT); Ex. 1015 (establishing DMSO as one of five solvents in
which NBPT is soluble). Patent Owner’s focus on one characteristic of
DMSO as a solvent, i.e., its boiling point, does not establish that the skilled
artisan would not have considered using it. PO Resp. 71–72. Furthermore,
we agree with Petitioner (Reply 11–12) that even
[a]ssuming that the boiling point of the pure solvent were the
proper standard by which to gauge its volatility, neither Patent
Owner nor its expert provides any reason that a substance with a
boiling point of 167.5°C would meet the alleged volatility
requirement of Kolc . . . but a substance with a boiling point of
189°C (i.e., DMSO––Ex. 2031, 3) would not meet that
requirement.

Here again, Patent Owner’s reliance on In re Baird is misplaced. In
Baird, the issue was whether there was a motivation to select one
compound––the claimed bisphenol A polyester––that was encompassed by a
large genus of compounds disclosed in the prior art Knapp reference. The
court rejected the Board’s reliance on the undisputed fact that the claimed
compound was encompassed by the large prior art genus, thereby providing
“ample motivation” for its selection in the claimed composition. Baird, 16
F.3d at 382. The court also found that no such motivation existed in the
prior art Knapp reference because Knapp expressed a preference for “more
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complex diphenols,” thus “indicat[ing] a preference leading away” from
more simple chemicals such as the claimed bisphenol A. Id. at 383. The
principles articulated by Baird simply do not apply here because––as Patent
Owner repeatedly argues––Iannotta does not disclose DMSO. Furthermore,
this line of argument ignores the undisputed record evidence that establishes
that DMSO would have been known to the skilled artisan, and, as discussed
supra, the skilled artisan would have had ample reason to use DMSO as a
solvent with NBPT. Ex. 1025, 1; Ex. 1015, 1, 3.
Alleged Objective Indicia of Non-Obviousness
Before any final obviousness determination, we must consider the
evidence of obviousness in light of any objective evidence of
nonobviousness presented by Patent Owner. See Graham, 383 U.S. at 17–
18 (“Such secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented. As indicia of obviousness or nonobviousness, these inquiries may
have relevancy.”); Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“This objective
evidence must be ‘considered as part of all the evidence, not just when the
decisionmaker remains in doubt after reviewing the art.’” (quoting
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir.
1983))).
Objective evidence of nonobviousness is relevant only if there is a
nexus between the evidence and the claimed invention. Fox Factory, Inc. v.
SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019). A presumption of nexus
applies if the asserted objective evidence “is tied to a specific product and
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that product ‘embodies the claimed features, and is coextensive with them.’”
Id. (quoting Polaris Indus., Inc. v. Artic Cat, Inc., 882 F.3d 1056, 1072 (Fed.
Cir. 2018)). To the extent that a presumption of nexus does not apply,
Patent Owner may still prove nexus “by showing that the evidence of
secondary considerations is the ‘direct result of the unique characteristics of
the claimed invention.’” Id. (quoting In re Huang, 100 F.3d 135, 140 (Fed.
Cir. 1996). The stronger the showing of nexus, the greater the weight
accorded the objective evidence of nonobviousness. See Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986).
Patent Owner presents arguments and evidence directed to objective
indicia of non-obviousness, including unexpected results, satisfaction of a
long-felt but unmet need, commercial success, failure of others, expert
skepticism, industry praise, copying, recognition of a problem, and “other
relevant factors.” PO Resp. 57–78. We address each of these below.
a. Unexpected results
In alleging that the claimed subject matter exhibits unexpected results
(PO Resp. 57–66), Patent Owner describes tests that were performed and
observations that “were taken on storage stabilities including odor, color,
and precipitation.” Id. at 62 (citing Ex. 2015 ¶¶ 77–79). Patent Owner
argues that these experiments demonstrate that:
1) “DMSO is not equivalent and is unexpectedly superior to other
solvents” where NBPT is solubilized therein and delivered to the surface of
urea granules (PO Resp. 63 (citing Ex. 2015 ¶¶ 87–88; Ex. 2060));
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2) DMSO’s “acceptable and very good” chill point when used as the
sole solvent delivery system for NBPT concentrations above about 32% (PO
Resp. 63 (citing Ex. 2015 ¶¶ 61–64));
3) DMSO is not equivalent to––but is rather unexpectedly superior to–
–those solvents exemplified in Iannotta’s Examples 3 and 5 (PO Resp. 63
(citing Ex. 2015 ¶¶ 58–88));9 and
4) DMSO as the sole solvent “gives better results in terms of chill
point than NMP/propylene glycol at high concentrations of NBPT” (PO
Resp. 63 (citing Ex. 2015 ¶¶ 61–64; Ex. 2023)).
We have reviewed Patent Owner’s proffered evidence and are
unpersuaded of any unexpected results.
At the outset, we note Patent Owner fails to analyze or explain the
data upon which it relies to establish non-obviousness. In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972) (explaining “the burden of showing
unexpected results rests on he who asserts them”). For example, Patent
Owner does not make clear how Dr. Theyson arrived at his conclusions that
the “addition of DMSO makes PEG 200 a better solvating delivery system
(Low chill point and low viscosity) for NBPT” (Ex. 2015 ¶ 60).
Specifically, neither Patent Owner nor Dr. Theyson explain what would
have been considered a “low” viscosity or chill point, how such
characteristics would have been relevant or significant when preparing
solutions of NBPT, and how DMSO provides an unexpected improvement
over the closest prior art. See In re Eli Lilly & Co., 902 F.2d 943, 948 (Fed.

9 This appears to be a typographical error in Patent Owner’s Response
because paragraphs 68–88 of Exhibit 2015 discuss tests concerning
Iannotta’s modified Examples 3 and 5.
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Cir. 1990) (establishing that any unexpected result shown must be directed
to a “significant aspect” of the invention); Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1371 (Fed. Cir. 2007) (“[I]n order to properly evaluate whether a
superior property was unexpected, the court should have considered what
properties were expected.”). Rather, for this particular experiment (Ex. 2015
¶¶ 58–60), we are left with mere conclusory assertions, devoid of
explanation, that the 1:1 ratio of DMSO:PEG 200 “had the best
viscosity/temperature profile” (id. ¶ 59), that using DMSO “results in [an]
unexpected low viscosity product” (id. ¶ 60), and that adding DMSO makes
PEG 200 “better” (id.). We find a similar lack of explanation for the
experiments submitted in paragraphs 61–64 of Exhibit 2015, because neither
Patent Owner nor Dr. Theyson articulate, much less establish with evidence,
what the “market needs” for a solvent’s chill point would have been at the
time of the invention. See Ex. 2015 ¶ 63. Likewise, the experiments
discussed in paragraphs 68–88 fail to analyze or explain how the observed
results would have been unexpected by the skilled artisan. Pfizer, Inc. v.
Apotex, Inc., 480 F.3d at 1371. We therefore accord little weight to this
evidence. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating
that it is “within the discretion of the trier of fact to give each item of
evidence such weight as it feels appropriate”).
Moreover, Patent Owner does not explain, nor do we discern, how the
results of some of these experiments are commensurate in scope with the
claims of the ʼ108 patent. Ex. 2015 ¶¶ 58–88. In re Tiffin, 448 F.2d 791,
792 (CCPA 1971). For example, the experiments set forth in paragraphs
58–60 and 65–67 are specific to one concentration of NBPT (i.e., 20%),
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whereas independent claims 1, 6, and 18 cover broad ranges of NBPT in
solution (i.e., 5–45%, 5–75%, and 5–58.9%, respectively).
b. Long Felt Need, Failure of Others, and Problem Recognition
“The existence of a long-felt but unsolved need that is met by the
claimed invention is further objective evidence of non-obviousness.”
Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir.
2017). Establishing long-felt need first requires objective evidence that a
recognized problem existed in the art for a long period without solution. See
Orthopedic Equip. Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d
1376 (Fed. Cir. 1983); In re Gershon, 372 F.2d 535, 539 (CCPA 1967).
Second, another must not have satisfied the long-felt need before the
invention of the challenged patent. Newell Cos. v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988). Third, the invention of the challenged patent
must satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA
1971); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1332–33 (Fed. Cir. 2009) (articulating all three factors).
Patent Owner argues that, at the time of the invention of the ʼ108
patent, researchers had for at least four years been “looking for solvent
systems that were less toxic than NMP that had the same efficacy as NMP.”
PO Resp. 68 (citing Exs. 2014, 2015 ¶¶ 58–88, 2020, and 2021); see also PO
Resp. 70–71 (discussing a prior art solvent system in “Omilinsky ʼ003” that
purportedly “proved to be a failure due to concerns about potentially toxicity
issues”); see also id. at 77 (discussing the toxicity problems associated with
NMP). We are unpersuaded by this argument, however, because undisputed
record evidence establishes that almost three years before the ʼ108 patent’s
priority date of October 1, 2012, DMSO was “already used extensively as a
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polar aprotic solvent in . . . agrochemical formulations” and was known to
be “the sustainable reference solution to replace solvents classified as
hazardous to human health” including the solvents “dimethyl formamide
(DMF), dimethyl acetamide (DMAC), and N-methyl pyrrolidone (NMP).”
Ex. 1025, 1. In other words, any long felt need that existed for a less toxic
and efficacious alternative solvent to NMP for use in NBPT solutions had
already been satisfied prior to the invention of the ʼ108 patent, and
contradicts Patent Owner’s arguments regarding the failure of others.
Newell Cos., 864 F.2d at 768.
c. Commercial Success
“When a patentee can demonstrate commercial success, usually
shown by significant sales in a relevant market, and that the successful
product is the invention disclosed and claimed in the patent, it is presumed
that the commercial success is due to the patented invention.” J.T. Eaton &
Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997); WBIP,
LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016). “Demonstrating
that an invention has commercial value, that it is commercially successful,
weighs in favor of its non-obviousness.” WBIP, 829 F.3d at 1337.
Patent Owner states that it “currently make[s] a product that
comprises NBPT dissolved in a solvent system that comprises DMSO that is
designed to be added to urea granules,” and that the product is named “N-
yield.” PO Resp. 69. Patent Owner avers that N-yield has been sold since
2014 with sales of at least $60,000,000, and estimates that N-yield and its
competitor products have had sales of $175,000,000. Id. at 69–70. Patent
Owner relies on declaration testimony of Raymond Perkins, an inventor
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named on the ʼ108 patent, for support. Id.; Ex. 1001, code (72); Ex. 1030,
22:3–5.
We find that Patent Owner does not establish the required nexus
between the N-yield product and the claimed invention. See Ashland Oil,
776 F.2d at 305 n.42 (“Case law requires that a nexus be established
between the merits of the claimed invention and the evidence proffered on
secondary considerations, if the evidence on secondary considerations is to
be given substantial weight in the calculus of obviousness/nonobviousness”).
Specifically, Patent Owner does not aver, much less establish, that the N-
yield product upon which it relies falls within the scope of the ʼ108 patent
claims. PO Resp. 69–70.
Even assuming a nexus exists, Patent Owner merely provides a single,
sum total sales figure for N-yield ($60,000,000) and an aggregated sales
estimate for competing products starting in the year 2014 ($175,000,000).
PO Resp. 69–70; Ex. 2022, 5. Patent Owner does not provide relevant
information regarding the total market share of the N-yield product. Such
evidence, particularly in the absence of a defined market, is inadequate to
establish commercial success. See Ex parte Jellá, 90 USPQ 1009, 1012
(BPAI 2008) (precedential) (“[G]ross sales figures do not show commercial
success absent evidence as to market share . . . or as to the time period
during which the product was sold, or as to what sales would normally be
expected in the market”). Here, even if we take Patent Owner’s sales figures
and estimates at face value, Patent Owner “provides no indication of
whether this represents a substantial quantity in this market.” In re Huang,
100 F.3d at 140.
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We also give less weight to Patent Owner’s evidence of alleged
commercial success because it does not account for potential blocking
patents such as the challenged patent here. Specifically, it is unclear if
Patent Owner’s sales, and what proportion of such sales, took place after
March 5, 2019––i.e., the issue date of the ʼ108 patent. See Merck & Co.,
Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376–77 (Fed. Cir. 2005)
(explaining how financial success of a given product “is not significantly
probative” of non-obviousness when “others were legally barred from
commercially testing” them, and how “[b]ecause market entry by others was
precluded on” the bases of patent protection and FDA-exclusivity, “the
inference of non-obviousness . . . from evidence of commercial success, is
weak.”). In other words, when the ʼ108 patent itself may have precluded
others from entering the relevant market, i.e. from the issue date of March 5,
2019, the sales figures before us that may include dates after March 5, 2019
would be weak evidence of commercial success.
For these reasons, we attribute minimal weight to Patent Owner’s
arguments and evidence related to commercial success.
d. Other Objective Indicia
We have also considered Patent Owner’s other objective indicia of
nonobviousness arguments and find them unpersuasive. PO Resp. 72–78.
For example, the arguments regarding purported skepticism of experts rests
on speculative assertions lacking evidentiary support. Id. at 72–73 (asserting
“experts would believe that the liquid fertilizer additive would not be
effective . . . ,” DMSO’s “relatively high boiling point of 189°C [] probably
also dissuaded Kolc” from using it, and the CN400 “inventors would have
been skeptical that DMSO could be used to solubilize NBPT”). Also, Patent
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Owner’s arguments regarding purported praise fall short because, again, no
nexus between the N-yield product and the claimed invention has been
shown or discussed by Patent Owner. PO Resp. 74–76. Even if there were a
nexus, any praise found in the cited master’s thesis would be entitled to
minimal weight because, as Patent Owner admits, the thesis does not directly
praise the higher yields obtained by employing the N-yield product. Id. at
74. Thus, at best, the praise would reflect one individual’s opinion and not
the industry as a whole. Furthermore, Patent Owner’s assertion that “one
can only conclude that others copied” the ʼ108 patent claims is speculative at
best, and relies on testimony to which we have given little weight.
PO Resp. 77; Ex. 1022.
Conclusion
In sum, having considered the complete record developed during trial,
we conclude that Petitioner has demonstrated by a preponderance of the
evidence that the subject matter of claim 1 would have been obvious over
the combined disclosures of Iannotta and CN400. Pet. 26–35.
Claims 2–20
We have also considered Petitioner’s arguments and underlying
evidence with respect to claims 2–20, not separately argued by Patent
Owner. Pet. 36–50. Based on the reasons discussed above, and those
presented in the Petition, we find Petitioner establishes sufficiently that the
recited limitations are disclosed in the cited references, the skilled artisan
would have been motivated to combine the teachings of these references,
and would have done so with a reasonable expectation of success. Id.
After considering the complete record regarding these claims, we
conclude that Petitioner has demonstrated by a preponderance of the
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evidence that the subject matter of claims 2–20 would have been obvious
over the combined disclosures of Iannotta and CN400.
F. Asserted Obviousness of Claims 1, 3–9, and 11–20––
Kolc & CN400
Petitioner’s Arguments––Claim 1
Petitioner asserts that claim 1 of the ʼ108 patent is unpatentable as
obvious under 35 U.S.C. § 103 over the combined disclosures of Kolc and
CN400. Pet. 50–59. Petitioner relies on the testimony of Dr. Gribble (Ex.
1003) for support.
Petitioner asserts that each of Kolc and CN400 discloses “a
composition” that includes “urea.” Pet. 55–56. Petitioner asserts further
that Kolc discloses the limitation requiring “a liquid solution comprised of a
urease inhibitor that has been solubilized within an aprotic solvent” such as
water––each present in the claimed amounts. Id. at 56–57. Petitioner also
avers that each of Kolc and CN400 disclose the claimed urease inhibitor
NBPT. Id. at 58–59. Petitioner asserts that Kolc does not disclose DMSO,
but relies on CN400 for this limitation. Id. at 57–58. Petitioner asserts that
the skilled artisan would have been motivated to combine the teachings of
Kolc with those of CN400 for the following reasons:
(1) the references are analogous because they are “directed [to] the
same field of endeavor: developing a fertilizer composition that includes a
urease inhibitor dissolved in a solvent system” (id. at 51);
(2) both references “promote the use of the same urease inhibitor,
NBPT” (id.);
(3) “DMSO was a widely used and commercially available solvent
having ‘very low acute toxicity’ that was known to be particularly suited for
agricultural applications” (id. at 52);
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(4) “[i]t was also well-known that NBPT was highly soluble in
DMSO” (id.);
(5) using DMSO as the aprotic solvent in Kolc’s composition “would
have merely combined known elements according to known methods to
yield predictable results” (id. at 53);
(6) using DMSO instead of another agrochemical formulation solvent
“would have merely required the simple substitution of one known solvent
(e.g., ether, methanol) for another (e.g., DMSO) to obtain predictable
results” (id. at 54); and
(7) selecting DMSO as the agrochemical formulation solvent “would
have merely involved a Skilled Artisan choosing from a finite number of
identified, predictable solvents . . . for use with NBPT, each having a
reasonable expectation of success” (id. at 54–55).
Patent Owner’s Arguments
Patent Owner advances many similar arguments to those made with
respect to Petitioner’s obviousness challenge based on Iannotta and CN400
discussed supra. In fact, a significant portion of Patent Owner’s brief argues
the challenge based on Kolc and CN400 coextensively with the challenge
based on Iannotta and CN400. See PO Resp. 22–24, 42–52, 58–60, and 64–
66.
Upon consideration of the parties’ arguments and evidence on the
complete record, we agree with Petitioner that the subject matter of claim 1
would have been obvious in view of the combined disclosures of Kolc and
CN400. Our reasoning follows.

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Motivation to Combine the Teachings of Kolc and CN400
Kolc discloses liquid fertilizer compositions containing one or more
phosphoric triamide compounds such as NBPT in water or an organic
solvent such as methanol, diethyl ether and methylene chloride.10 Ex. 1009,
4:49–50, 6:61–7:1, 11:7–13.
CN400 undisputedly discloses urea-based fertilizer formulations
comprising NBPT and an organic solvent such as DMSO. Ex. 1006 ¶¶ 7–9;
see also Ex. 2006, 463–64 (CN400 machine translation disclosing in
paragraphs 7–9 a urea-based fertilizer formulation which may contain NBPT
as the urease inhibitor and DMSO as the organic solvent or solution).
We agree with Petitioner that the skilled artisan would have had
reason to combine the teachings of these references because “[t]he
evidence . . . demonstrates that the choice of DMSO as a solvent in the
solvent system described by Kolc would have merely involved a [s]killed
[a]rtisan choosing from a finite number of identified, predictable solvents . .
. for use with NBPT.” Pet. 54. As discussed above with respect to the
challenge based on Iannotta and CN400, before the invention of the ʼ108
patent, NBPT was known to be soluble in DMSO, water, methanol,
dichloromethane, and ether. Ex. 1015, 1; id. at 3 (declaration testimony that
this “publication was available to the public at least as early as January 19,
2011”). Thus, the skilled artisan would have known that NBPT would be
predictably soluble in DMSO, methanol, dichloromethane, and water.
Ex. 1015, 1; Ex. 1009, 6:61–67.

10 Methylene chloride (CH2Cl2) disclosed by Kolc (6:68–7:1) is chemically
synonymous with the term “dichloromethane” disclosed in Exhibit 1015 as
one of five solvents in which NBPT is soluble. Ex. 2048, 1.
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Even further, combining the knowledge that DMSO solubilizes NBPT
(Ex. 1015, 1) with Kolc’s disclosure of water or methanol as an acceptable
solvent with NBPT, we agree with Petitioner (Pet. 53) that using DMSO as
the organic solvent in Kolc’s composition “would have merely combined
known elements according to known methods to yield predictable results.”
We furthermore agree with Petitioner (Pet. 54) that using DMSO in Kolc’s
composition “would have merely required the simple substitution of one
known solvent (e.g., ether, methanol) for another (e.g., DMSO) to obtain
predictable results.” See Ex. 1009, 6:61–67 (identifying water, methanol,
methylene chloride (also known as dichloromethane), and diethyl ether as
solvents used to prepare the liquid composition containing the phosphoric
triamide compound); id. at 16:33–37 (disclosing how the 30 grams of pure
NBPT “was soluble in ether”); Ex. 1015 (identifying water, DMSO,
methanol, dichloromethane, and ether as five solvents in which NBPT is
soluble).
As with the first challenge, Patent Owner’s arguments (PO Resp. 50–
52) regarding these proffered rationales to combine the teachings of Kolc
and CN400 fall short for similar reasons to those articulated above, and
because the relevant record evidence––including Exhibit 1015—remains
unrebutted and, in our view, persuasive.
Reasonable Expectation of Success
For the reasons already expressed in our discussion of the first
challenge, we determine that a person of ordinary skill in the art would have
had a reasonable expectation of successfully dissolving the recited
concentration of NBPT in DMSO to form a liquid solution at the time of the
invention of the ʼ108 patent.
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Patent Owner’s Remaining Arguments
We now address Patent Owner’s arguments specific to the Kolc and
CN400 challenge of claim 1 that have not yet been addressed in our
discussion, supra, of the first challenge based on Iannotta and CN400.
PO Resp. 24–37.
Dissolution of Urea
Patent Owner argues that the combination of Kolc and CN400 does
not disclose a composition that comprises a urea and urease inhibitor
solubilized in a solvent.11 PO Resp. 26–32. This argument fails at the outset
because claim 1 of the ʼ108 patent does not require the urea to be dissolved
in a solvent with the urease inhibitor. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). For example, claim 1 requires a liquid solution of the urease
inhibitor NBPT solubilized in an aprotic solvent comprising DMSO. The
urea, however, is listed as a separate component––not as part of the liquid
solution. As set forth in the Petition (Pet. 56), Kolc teaches a liquid fertilizer
composition containing one or more phosphoric triamide compounds in an
organic solvent such as methanol or aprotic organic solvent such as acetone
(Ex. 1009, 6:61–7:1), and specifically identifies NBPT as an “[e]specially
efficacious compound[] for use in the” invention (id. at 11:7–13). In short,
because claim 1 does not require urea to be dissolved in the solution with the
urease inhibitor, Kolc need not teach or suggest that limitation.

11 We understand this argument to be directed at the subject matter of the
independent claims only because it appears after a discussion of the
independent claims. PO Resp. 25–26. Furthermore, Patent Owner does not
appear to argue any of the dependent claims separately. Id., generally.
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DMSO’s Volatility
Patent Owner also argues that the skilled artisan would not have been
motivated to use DMSO (a purported “low volatility” solvent) in Kolc’s
composition, because doing so would frustrate the purpose of Kolc which
desires solvents of high volatility. PO Resp. 37. This argument is
unpersuasive because Kolc merely expresses a preference for solvents of
“such volatility that they leave little permanent residue in the growth
media.” Ex. 1009, 7:2–4; see In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir.
1992) (“It is well settled that a prior art reference is relevant for all that it
teaches to those of ordinary skill in the art.”). Additionally, we agree with
Petitioner’s well-stated response to this line of argument (Reply 11–12) that
even
[a]ssuming that the boiling point of the pure solvent were the
proper standard by which to gauge its volatility, neither Patent
Owner nor its expert provides any reason that a substance with a
boiling point of 167.5°C would meet the alleged volatility
requirement of Kolc . . . but a substance with a boiling point of
189°C (i.e., DMSO––Ex. 2031, 3) would not meet that
requirement.
Furthermore, Patent Owner does not squarely address the other evidence of
record, which we credit, that establishes that the skilled artisan would have
been motivated to use DMSO as a solvent in an agrochemical formulation.
Ex. 1025, 1.
Patent Owner’s Separate Arguments Against Kolc and CN400
Patent Owner also argues against the Kolc and CN400 references
separately, and these arguments are unpersuasive. PO Resp. 32–36. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
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rejection is based upon the teachings of a combination of references. . . .
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.”).
Objective Indicia of Non-Obviousness
Patent Owner also relies on the same objective indicia of non-
obviousness arguments and evidence discussed supra for this challenge.
PO Resp. 57–78. These arguments and evidence are similarly unpersuasive
for this challenge for the same reasons they were unpersuasive for the first
challenge.
Conclusion
In sum, having considered the complete record developed during trial,
we conclude that Petitioner has demonstrated by a preponderance of the
evidence that the subject matter of claim 1 would have been obvious over
the combined disclosures of Kolc and CN400. Pet. 50–59.
Claims 3–9 and 11–20
We have also considered Petitioner’s arguments and underlying
evidence with respect to claims 3–9 and 11–20, not separately argued by
Patent Owner with any specificity. For the reasons discussed above and
presented in the Petition, we find Petitioner establishes sufficiently that the
recited limitations are disclosed in the cited references, the skilled artisan
would have been motivated to combine the teachings of these references,
and would have done so with a reasonable expectation of success. Id. at 59–
71.
After considering the complete record regarding these claims, we
conclude that Petitioner has demonstrated by a preponderance of the
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evidence that the subject matter of claims 3–9 and 11–20 would have been
obvious over the combined disclosures of Kolc and CN400.
G. Asserted Obviousness of Claims 2 and 10––Kolc, CN400, and
Iannotta
Claim 2 depends from claim 1 and requires the composition to have at
least one additional aprotic solvent and at least one protic solvent. Ex. 1001,
15:15–30. Claim 10 depends from claim 6 and requires at least one
additional aprotic solvent. Id. at 16:15–22.
Petitioner asserts that dependent claims 2 and 10 of the ʼ108 patent are
unpatentable as obvious over the combined disclosures of Kolc, CN400, and
Iannotta. Pet. 71–76. Petitioner cites, with specificity, where the prior art
teaches or suggests each of the limitations of these dependent claims
(Pet. 73–76), and presents reasons why a skilled artisan would have been
motivated to combine the various disclosures of Kolc, CN400, and Iannotta.
Id. at 27–31, 51–55, 71–73. Petitioner further cites persuasive expert
testimony in support of its interpretation of the art. Ex. 1003 ¶¶ 224–240.
Patent Owner offers no argument specific to this challenge. See PO
Resp., generally; Sur-Reply, generally.
We have reviewed Petitioner’s arguments and evidence regarding
claims 2 and 10, as well as the relied-upon portions of Kolc, CN400, and
Iannotta, and determine that Petitioner has established by a preponderance of
the evidence that claims 2 and 10 are unpatentable over the combined
disclosures of Kolc, CN400, and Iannotta. Petitioner establishes sufficiently
that the recited limitations are disclosed in the cited references, the skilled
artisan would have been motivated to combine the teachings of these
references, and would have done so with a reasonable expectation of
success. Pet. 71–76.
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Patent Owner’s arguments and evidence germane to all challenges do
not persuade us otherwise for the challenge of claims 2 and 10 for the
reasons already provided. PO Resp. 15–77; Sur-Reply 1–23.

In sum, we determine that Petitioner has demonstrated that claims 1–
20 of the ʼ108 patent are unpatentable based on the three challenges
articulated in the Petition. Pet. 4–5, 26–79.
III. PETITIONER’S MOTION TO EXCLUDE
Petitioner moves to exclude the following evidence: Exhibits 2014–
2023, 2075–2077, 2080, and 2085. Paper 31.
We have considered Petitioner’s motion but determine that, even if we
considered the objected-to evidence, Petitioner has successfully
demonstrated by a preponderance of the evidence that claims 1–20 of
the ʼ108 patent are unpatentable. Thus, Petitioner’s motion is deemed moot
and is dismissed.
IV. REQUEST FOR REHEARING OF DENIAL FOR ADDITIONAL
DISCOVERY AND LATE OBJECTION TO EXHIBIT 1006
Patent Owner requests a rehearing of our decision denying its
combined motion for additional discovery and late objection to Exhibit
1006. Paper 44.
Regarding the motion for additional discovery, Patent Owner’s
challenge of our decision focuses on our analysis of Factors 1 and 5
articulated in Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005,
Paper 32 (PTAB May 29, 2013) (precedential). Our decision set forth why
we determined that each of these factors “weighs heavily against a good
cause showing for the additional discovery.” Paper 43, 5–7, 9–10.
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As the moving party, Patent Owner bears the burden of showing that
our decision denying additional discovery and late objection to Exhibit 1006
should be modified, and its request for rehearing “must specifically identify
all matters the party believes the Board misapprehended or overlooked.”
37 C.F.R. § 42.71(d).
After considering the request for rehearing, Patent Owner does not
persuade us that we either misapprehended or overlooked any relevant
information in reaching our decision for the reasons discussed below. We
therefore deny Patent Owner’s request for rehearing.
Additional Discovery––Bloomberg Factor 1
This factor requires more than a possibility and mere allegation that
“something useful will be found,” i.e., “favorable in substantive value to a
contention of the party moving for discovery.” Relevant to our
reconsideration of our analysis of this factor, Patent Owner contends
Petitioner provided it with additional evidence that proves that Kayla
Garcia––the affiant testifying to the accuracy of the translation before us as
Exhibit 1006––did not actually translate the document. Paper 44, 2. Patent
Owner sets forth a purported timeline of events regarding how it received
this information from Petitioner, stating how Petitioner’s counsel––before
Patent Owner filed its combined motion on May 27, 2020––“sent an email to
Patent Owner containing a new declaration from Kayla Garcia” and that
such “email informed Patent Owner did not in fact translate Exhibit 1006.”12
Id. at 2–3.

12 The timeline provided by Patent Owner in its rehearing request is factually
inconsistent with that provided in its email to the Board of July 1. See Ex.
3002 (stating that the new declaration was “provided to Patent Owner by
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Patent Owner alleges that, in preparing our Order denying additional
discovery and late objection to Exhibit 1006, we “did not have the benefit of
the knowledge that Petitioner knew and had already admitted Ms. Garcia did
not translate the document.”13 Id. at 4–5. Patent Owner argues that our
determination that the additional discovery would not have any substantive
value was erroneous. Id. at 5.
These arguments do not persuade us of error in our determination that
the additional discovery sought was not shown to be useful or have
substantive value. Our obviousness analysis set forth in Sections II.E., II.F.,
and II.G., supra, does not rely on any of the disclosure contested here by
Patent Owner––specifically, whether CN400’s claim 1 process disclosed in
either translation of CN400 (Ex. 1006; Ex. 2006, 461–9) results in a
suspension or solution of NBPT. As stated above, Petitioner relies on
Iannotta’s disclosure (§ II.E.) and Kolc’s disclosure (§ II.F.) to satisfy the
“liquid solution” limitation for each independent claim (Pet. 32–34, 56–57),
and relies on CN400 for its disclosure of DMSO (id. at 34, 57–58). We
emphasize that Patent Owner has not challenged whether CN400 discloses
DMSO. Indeed, Patent Owner unequivocally admits that CN400 does
disclose DMSO. See PO Resp. 38 (“CNʼ400 has recited that DMSO is a
substitutable solvent for industrial alcohol (ethanol)”), 48 (“CNʼ400 . . .

Petitioner after Patent Owner’s combined motion for late additional
discovery and objection to Exhibit 1006” (emphasis added)).
13 Patent Owner acknowledges it was in receipt of this information before it
filed its combined motion. Paper 44, 2–3. Patent Owner, however, filed its
motion two days before the May 29, 2020 deadline provided by our Order.
Paper 39, 4. Therefore, Patent Owner had ample time and opportunity to
provide us with the information it now says we were denied.
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disclose[s] a dissolved DMSO solvent system in combination with urea”);
Tr. 56:11–12 (Patent Owner’s counsel stating that “we’re not disputing that
DMSO is actually disclosed” by the Exhibit 1006 translation of CN400).
In other words, our obviousness conclusion does not turn on either
translation of CN400’s claim 1, and there is no dispute regarding CN400’s
disclosure to the extent we have relied on it, i.e., its disclosure of DMSO for
use in an agrochemical formulation containing NBPT. It follows that the
inquiry into the precise disclosure of CN400’s claim 1 process in either
translation is ultimately moot and has no substantive value to our conclusion
of obviousness.
Additional Discovery––Bloomberg Factor 5
This factor requires us to consider the burden of the additional
discovery request, including “financial burden, burden on human resources,
and burden on meeting the time schedule of the trial,” and whether the
request is “responsibly tailored according to a genuine need.” Bloomberg
Inc., Paper 32, 5.
Patent Owner argues that our analysis under Bloomberg Factor 5
should not have accounted for the burden on Petitioner because Petitioner
“created this situation.” Paper 44, 8. Patent Owner also argues that the
Board should extend this proceeding by six months under 37 C.F.R.
§ 42.100(c) because we need a certified translation of claim 1 of CN400 to
properly rely on Exhibit 1006. Paper 44, 8.
We are not persuaded that we have overlooked or misapprehended
any matter with respect to this factor. As discussed supra with respect to
Factor 1, there is no genuine need for the additional discovery sought
because it would have no substantive value in determining whether the ʼ108
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patent claims would have been obvious. Without a genuine need for the
additional discovery, no good cause exists to extend our statutory mandate to
issue a Final Written Decision beyond August 13, 2020.
35 U.S.C. §§ 326(a)(11), 328(a).14
Belated Objection to Exhibit 1006
Patent Owner also requests rehearing of our denial of its belated
request to object to Exhibit 1006. Paper 44, 8–11. Specifically, Patent
Owner avers that the Board erroneously held that Patent Owner did not
conduct its internet search for more than a year, and states that it is
Petitioner’s burden to file a correct translation affidavit. Id. at 9–10. Patent
Owner also contends that we erroneously determined that its late-filed
objection to Exhibit 1006 would not be in the interests of justice because its
reliability “is of critical importance in this proceeding.” Id. at 10. Patent
Owner argues that its certified translation of CN400’s claim 1 submitted in a
separate proceeding before the Board shows that Exhibit 1006 is incorrect
and “clarifies the machine translation contained in Ex. 2006.” Id. at 11.
We are unpersuaded by Patent Owner’s arguments because they do
not squarely address Patent Owner’s own obligation to timely object to
evidence within ten days of trial institution, and subsequently file a motion
to exclude. 37 C.F.R. § 42.64(b)(1),(c). Patent Owner was served with

14 In any event, the panel is not authorized to extend this statutory date. See
35 U.S.C. § 326(a)(11) (providing that “the Director may, for good cause
shown, extend the 1-year period by not more than 6 months”);
37 C.F.R. § 42.200(c) (“A post-grant review proceeding shall be
administered such that pendency before the Board after institution is
normally no more than one year. The time can be extended by up to six
months for good cause by the Chief Administrative Patent Judge”).
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Exhibit 1006 on April 26, 2019 (See Pet., Attachment A (“Proof of Service
of the Petition”)), and trial was instituted on August 13, 2019. Thus, it was
Patent Owner’s burden to review the evidence with which it was served––
including any associated translation affidavits it wished to challenge––and
timely lodge an objection no later than August 27, 2019. Patent Owner,
however, failed to do so, and cannot recall if it conducted such an
investigation into Ms. Garcia’s credentials prior to May 3, 2020––just days
prior to the oral hearing. Paper 40, 2; Paper 44, 9. Because Patent Owner
did not timely challenge Exhibit 1006, but rather waited over eight months
after the deadline prescribed by our rules to lodge its first objection to this
evidence, Patent Owner’s attempts to absolve itself of its burden are not
well-taken.
Furthermore, our conclusion that claims 1–20 of the ʼ108 patent
would have been obvious relies on undisputed portions of CN400––namely,
that CN400 discloses DMSO used as a solvent in an agrochemical
formulation containing NBPT. Thus, it would not be in the interests of
justice to allow Patent Owner to now object to this evidence at such a late
stage of this proceeding after failing to do so earlier, particularly when its
challenge to the evidence deals with a portion of CN400 (i.e., claim 1) upon
which we do not rely. Allowing such a belated objection is unnecessary, and
furthermore would not provide Petitioner with an adequate opportunity to
correct any deficiencies in the evidence. See Paper 43, 11 (explaining how
depriving “Petitioner’s opportunity to respond and correct any potential
deficiency in Exhibit 1006 would not be in the interests of justice”).
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Patent Owner’s request for rehearing of our denial of its combined
motion for additional discovery and late-filed objection to Exhibit 1006 is
denied.
V. CONCLUSION15
We conclude Petitioner has satisfied its burden of demonstrating, by a
preponderance of the evidence, that the subject matter of claims 1–20 of the
’108 patent is unpatentable.

15 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § References / Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–20 103 Iannotta, CN400 1–20
1, 3–9,
11–20
103 Kolc, CN400 1, 3–9, 11–20
2, 10 103 Kolc, CN400,
Iannotta
2, 10
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VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–20 of U.S. Patent No. 10,221,108 B2 have
been shown to be unpatentable; and
FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits
2014–2023, 2075–2077, 2080, and 2085 is dismissed;
FURTHER ORDERED that Patent Owner’s Request for Rehearing of
our Order Denying Patent Owner’s Combined Motion for Additional
Discovery and Late-Filed Objection to Exhibit 1006 is denied;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Ching-Lee Fukuda
Michael Franzinger
Jason P. Greenhut
SIDLEY AUSTIN LLP
clfukuda@sidley.com
mfranzinger@sidley.com
jgreenhut@sidley.com

PATENT OWNER:

Thomas Benjamin Schroeder
BEN SCHROEDER LAW, PLLC
ben@leak-schroeder.com