Shell Oil Co. v. Specialty Fertilizer Product, LLC, Appeal 2015-001671

• Decision Date: 28 July 2015
• Docket Number: Appeal 2015-001671
• Parties: SHELL OIL COMPANY, Requester and Appellant v. SPECIALTY FERTILIZER PRODUCT, LLC, Patent Owner and Respondent Reexamination Control 95/002, 388 Patent 6, 210, 459 C1 Technology Center 3900
• Court: Patent Trial and Appeal Board

SHELL OIL COMPANY, Requester and Appellant v. SPECIALTY FERTILIZER PRODUCT, LLC, Patent Owner and Respondent

Reexamination Control 95/002, 388 Patent 6, 210, 459 C1 ^[1] Technology Center 3900

Appeal No. 2015-001671

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 28, 2015

FILING DATE 09/15/2012

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and RAE LYNN P GUEST, Administrative Patent Judges.

DECISION ON APPEAL

GUEST Administrative Patent Judge.

Third Party Requester, Shell Oil Company ("Requester") appeals under 35 U.S.C. §§ 134(c) and 315(b) (pre-AIA) the Examiner's decision not to adopt Requester's proposed rejections of claims 2, 4, 6, 8-10, 12, 14- 16, and 45-156.^[2] We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b).

We REVERSE and thus enter new grounds of rejection pursuant to 37C.F.R. § 41.77(b).

STATEMENT OF THE CASE

The '459 patent relates to a composition that, when applied to soil, forms low pH (acidic) micro-environments that lead to an increased availability and plant uptake of important micronutrients. Col. 1, 11. 8-22. A low pH helps micronutrient uptake by preventing insoluble reaction products (fixation) that form at higher pHs, such as under liming conditions. Having low pH micro-environments avoids decreasing the overall bulk soil pH, which can affect overall crop yield. Col. 1, 11. 40-56; col. 2, 11. 2-6. The microenvironments are formed by applying a granulated mixture comprising ammonium sulfate, elemental sulfur, and micronutrients. Col. 2, 11. 22-32. Alternatively, non-granulated compositions can be used to decrease the overall pH of the bulk soil. Id.

Claim 4, which is illustrative of the appealed subject matter, reads as follows (with indentations added for clarity):^[3]

4. A soil nutrient composition comprising a mixture of from about 5-49% by weight ammonium sulfate based upon the total weight of the composition taken as 100% by weight, from about 2.5-25% by weight elemental sulfur based upon the total weight of the composition taken as 100% by weight, and

a micronutrient selected from the group consisting of zinc, iron, manganese, copper, boron, cobalt, vanadium, selenium, silicon, nickel and mixtures thereof,

the amount of ammonium sulfate present in said composition being greater than the amount of elemental sulfur therein, on a weight basis,

said composition being granulated using equipment comprising a rotary drum granulator or a rotary pan granulator to form granules having a size of from about 0.1-30 mm, said granules having a moisture content as formed and are thereafter dried,

said granules operable when applied to soil to create lower pH portions within the soil.

App. Br. 45, Claims App'x.

Requester appeals the Examiner's decision not to adopt the following rejections:

I. Claims 2, 4, 6, 8, 9, 12, 14-16, 45-59, 72-86, 99-113, 126-131, 137-139, 143, 145-148, 150-152, and 154-155 under 35 U.S.C. § 103(a) as obvious over Bexton, ^[4] in view of one of Norton, ^[5] Sharpies, ^[6] or Barber^[7] (Grounds 1, 2, and 4; RAN 5-IV);

II. Claims 10, 132-136, 140-142, 144, 149, 153, and 156 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharpies, or Barber, and Jones^[8] (Grounds 5 and 6, RAN 17-18);

III. Claims 60, 61, 87, 88, 114, and 115 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharpies, or Barber, and Vitosh^[9] (Ground 7, RAN 19);

IV. Claims 64, 65, 91, 92, 118, and 119 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharpies, or Barber, and Walter^[10] (Ground 8, RAN 20);

V. Claims 62, 63, 68-71, 89, 90, 95-98, 116, 117, and 122-125 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharpies, or Barber, Heyl^[11] and Bannwarth^[12] (Ground 9, RAN 21);

VI. Claims 66, 67, 93, 94, 120, and 121 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharpies, or Barber, and Takashi^[13] (Ground 10, RAN 22); and

VII. Claims 66, 93, and 120 under 35 U.S.C. § 103(a) as obvious over Bexton, in view of Norton, Sharpies, or Barber, and Heyl (Ground 11, RAN 23).

The Requester further relies on the First Declaration of Mr. Klaas Hutter, executed September 14, 2012, and exhibits thereto (hereinafter "First Flutter Decl."); the Second Declaration of Mr. Klaas Hutter, executed March 7, 2013, and exhibits thereto (hereinafter "Second Hutter Decl."); and the Declaration of Dr. Graeme Blair, executed March 8, 2013, and exhibits thereto (hereinafter "Blair Decl."). See App. Br. 55, Evidence App'x.

Patent Owner relies on the Declaration of Dr. Dale W. Rush, executed August 26, 2011, and exhibits thereto (hereinafter "First Rush Decl."); the Second Declaration of Dr. Dale W. Rush, executed February 5, 2013, and the exhibits thereto (hereinafter "Second Rush Decl."); and the Declaration of Mr. Christopher Bokhart, executed February 6, 2013, and exhibits thereto (hereinafter "Bokhart Decl.").

GROUND 1

All of the claims on appeal recite a soil nutrient composition comprising "from about 5-49% by weight ammonium sulfate " "from about 2.5-25% by weight elemental sulfur, " and "a micronutrient, " with "the amount of ammonium sulfate present in said composition being greater than the amount of elemental sulfur therein, on a weight basis." The claims also recite that when applied to soil, the composition "create[s] lower pH portions within the soil."

The Requester's proposed rejections rely on the teachings of Bexton. Bexton is directed to a sulfur-containing fertilizer. Bexton teaches that "sulfur acts in a soil system by being oxidized to sulfate which may then be taken up by plants in the soil system." Bexton, 1:13-15. Bexton teaches that it would be desirable to incorporate "ammonium sulfate, in a sulfur-containing fertilizer since this would present to the soil system both a short term sulfur dose (i.e. in the form of sulfate) and a long term sulfur dose (i.e. in the form of elemental sulfur which is eventually oxidized to sulfate)." Id., 2:15-19. Bexton also teaches that it is desirable to incorporate ammonium phosphate "to combine in a single fertilizer two elements/nutrients normally required for enhanced plant growth, " namely sulfate and phosphate. Id. 2:24-27.

Bexton describes a preferred fertilizer with a granulated matrix that comprises from about 1 to 80%, preferably from about 20 to 60%, by weight elemental sulfur, less than 5% by weight of "trace elements or micronutrients, " and "the remaining portion (subject to presence of trace elements) of the fertilizer is made up of ammonium phosphate and ammonium sulfate." Id. 5:31-6:16. With respect to these various concentrations, Bexton further teaches that "[a]s is known in the art[, ] a practical upper limit to the amount of sulfur which is used in a fertilizer is reached when the fertilizer becomes flammable (i.e. explosive) and thus, becomes dangerous to handle and use." Id. 6:1-4. Bexton also states that "[t]he proportion of these components [ammonium sulfate and ammonium phosphate] is not particularly restricted and is usually dictated by the market need for the product." Id. 6:6-7.

Requester contends that Bexton describes a fertilizer having all of the claimed components (i.e., elemental sulfur, ammonium sulfate, and micronutrients) but fails to describe the particular amounts recited in the claims. Patent Owner does not dispute this finding.

Based on the amount of sulfur and micronutrients in Bexton's fertilizer, Requester calculated that the remaining 15-99% bulk portion^[14] of the fertilizer of Bexton is either ammonium sulfate or ammonium phosphate. Req. App. Br. 12. Requester stated that "[a] s the bulk portion of AS and/or AP can be up to 99% of the composition, the relative amounts of AS and AP can individually vary from 0% to 99% of the composition." Id. For example, if the remaining bulk is all ammonium sulfate, the concentration of ammonium sulfate would be 15-99% by weight and the concentration of ammonium phosphate would be 0%. If the remaining bulk is entirely ammonium phosphate, the amount of ammonium sulfate would be 0% by weight. For this reason, Requester argues that Bexton fairly suggests an inherent range of ammonium sulfate of 0-99% for any particular fertilizer composition of Bexton. Patent Owner does not dispute this finding. See generally PO Res. Br. Requester argues that the overlap in ranges for each component "is itself sufficient to establish a prima facie case of obviousness under Wertheim/Peterson" and that "[t]he claimed ranges are necessarily overlapped by the ranges provided in Bexton and with predictable results." Req. App. Br. 16 (citingIn re Wertheim, 541 F.2d 257 (CCPA 1976) and In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003)).

Requester also contends that Bexton's sole example, which does not including ammonium phosphate and has a percentage of ammonium sulfate outside of the claimed range, teaches the use of a greater concentration of ammonium sulfate (60-90% by weight) than elemental sulfur (1-40% by weight). Id. at 13 (citing Bexton 14:1-5 and Second Flutter Decl. ¶ 5.a). Further, Requester contends that the statement in Bexton that a "[sufficient ammonium sulfate should be used 'to facilitate keeping the elemental sulfur as distinct particles within the granule matrix'" is evidence that the amount of ammonium sulfate should be greater than the amount of elemental sulfur. Id. (quoting Bexton 6:7-9).

Additionally Requester focuses on the disclosure in Bexton that states "[t]he proportion of these components [ammonium sulfate and ammonium phosphate] is not particularly restricted and is usually dictated by the market need for the product." Id. at 13 (quoting Bexton 6:6-7). Accordingly, Bexton argues that "one of skill in the art would look outside of...