Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper 45
`
` 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
`
`
`
`
`

`

`PGR2019-00046
`Patent 10,221,108 B2
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`
`INTRODUCTION
`I.
`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.
`2
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`PGR2019-00046
`Patent 10,221,108 B2
`
`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.
`
`The ’108 Patent (Ex. 1001)
`A.
`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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`PGR2019-00046
`Patent 10,221,108 B2
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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.
`
`Related Proceedings
`B.
`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.
`
`Illustrative Claim
`C.
`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:
`
`A composition comprising:
`1.
`urea,
`a.
`a liquid solution comprised of a urease inhibitor that has
`b.
`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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`PGR2019-00046
`Patent 10,221,108 B2
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`
`Instituted Challenges to Patentability
`D.
`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. §
`103
`1–20
`103
`1, 3–9, 11–20
`103
`2, 10
`
`Reference(s)/Basis
`Iannotta,3 CN4004
`Kolc,5 CN400
`Kolc, CN400, Iannotta
`
`
`
`II. ANALYSIS
`
`Legal Principles
`A.
`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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`PGR2019-00046
`Patent 10,221,108 B2
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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).
`
`Claim Construction
`B.
`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.
`
`Level of Ordinary Skill in the Art
`C.
`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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`Patent 10,221,108 B2
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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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`PGR2019-00046
`Patent 10,221,108 B2
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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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`Patent 10,221,108 B2
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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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`PGR2019-00046
`Patent 10,221,108 B2
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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.
`11
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`Patent 10,221,108 B2
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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 no