Ex Parte 7105470 et al

Patent Trials and Appeals Board

Jul 13, 2018

90020011 - (D) (P.T.A.B. Jul. 13, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/020,011 08/20/2012 7105470 514413-3768.2 3935
20999 7590 07/16/2018
HAUG PARTNERS LLP
745 FIFTH AVENUE - 10th FLOOR
NEW YORK, NY 10151
EXAMINER
CAMPELL, BRUCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
07/16/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BAYER INTELLECTUAL PROPERTY GmbH,
Patent Owner and Appellant
____________

Appeal 2017-011413
Reexamination Control 90/013,216 and 90/020,011
Patent 7,105,470 C1
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Bayer Intellectual Property GmbH, the owner of the patent under
reexamination (hereinafter the “’470 Patent”), appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1–47, 49–72, 74–84, and
86–319 (Appeal Brief filed March 17, 2017, hereinafter “Appeal Br.,” 10–
11; Final Office Action mailed September 15, 2016). We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This merged reexamination proceeding is based on two separate third-
party requests for ex parte reexamination, one filed by Edgar Cataxinos of
TraskBritt, P.C. (Request for Ex Parte Reexamination filed May 16, 2014,
assigned reexamination control number 90/013,216) and a second filed by
Frank W. Leak, Jr. of Leak & Schroeder, PLLC (Request for Ex Parte
Reexamination filed August 3, 2012, assigned reexamination control number
90/020,011). A decision merging these ex parte reexaminations was mailed
on January 12, 2015. The ’470 Patent was previously subject to ex parte
reexamination (No. 90/009,711), which resulted in a Reexamination
Certificate being issued on July 31, 2012, confirming the patentability of
claims 13–15, determining that claims 1–6 and 10–20 were patentable either
as amended or by depending from an amended claim, and determining that
claims 21–101, added during the course of the reexamination, were
patentable. Claims 7–9 were not reexamined. Claims 102–319 were added
during the course of the current reexamination proceeding.
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We heard Patent Owner’s oral arguments on January 4, 2018, a
written transcript of which was entered into the record on January 16, 2018.
The ’470 Patent states that the invention involves a crop protection
product used against tolerant or resistant crops of soybeans comprising a
combination of two or more herbicides. (Col. 1, ll. 5–9.) There are 316 total
claims on appeal, 47 of which are independent.
Claim 1 on appeal reads as follows (with underlining showing
additions relative to the issued claim):
1. A method of controlling harmful plants in soybean
crops, comprising applying jointly or separately, pre-
emergence, post-emergence or pre- and post-emergence to the
plants, parts of the plants, seeds of the plants or the area under
cultivation a synergistic effective amount of a herbicidal
combination comprising:
(A) a broad-spectrum herbicide selected from the group
consisting of:
(A1) compounds of the formula (A1),

wherein Z is a radical of the formula —OH or a peptide
radical of the formula
-NHCH(CH3)CONHCH(CH3)COOH or
-NHCH(CH3)CONHCH[CH2CH(CH3)2]COOH, and their
esters and salts and other phosphinothricin derivatives,
(A2) compounds of the formula (A2) and their salts,
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(A3) imidazolinones and their salts and
(A4) herbicidal azoles from the protoporphyrinogen-
oxidase inhibitors
(PPO inhibitors)
and
(B) one or more herbicides selected from the group
consisting of:
(B1) foliar-acting and/or soil-acting herbicides which are
effective selectively in soybeans against monocotyledonous and
predominantly dicotyledonous harmful plants, selected from the
group consisting of trifluralin, metribuzin, clomazone,
pendimethalin, metolachlor, flumetsulam, dimethenamid,
alachlor, linuron, sulfentrazone, ethalfluralin, fluthiamide,
norflurazone, vernolate and flumioxazin,
(B2) herbicides which are effective selectively in
soybeans against dicotyledonous harmful plants, selected from
the group consisting of chlortoluron, bentazone, thifensulfuron,
oxyfluorfen, lactofen, fomesafen, flumiclorac, acifluorfen, 2,4-
DB, chlorimuron, diclosulam, fluthiacet, cloransulam and
oxasulfuron,
(B3) foliar- and soil-acting herbicides which are effective
selectively in soybeans against monocotyledonous harmful
plants, selected from the group consisting of sethoxydim,
cycloxydim and clethodim,
(B4) foliar-acting herbicides which are effective
selectively in soybeans against monocotyledonous harmful
plants, selected from the group consisting of quizalofop-P,
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quizalofop, fenoxaprop-P, fenoxaprop, fluazifop- P, fluazifop,
haloxyfop, haloxyfop-P and propaquizafop or
(B5) nonselective herbicides which can be employed in
soybeans for specific purposes, selected from the group
consisting of paraquat or and optionally at least one safener,
whereby the soybean crops are tolerant to the herbicides
(A) and (B) which form a constituent of the combination,
with the exception of the following combinations:
combinations comprising compounds of group (A1) and
compounds of group (B) selected from the group consisting of
cloransulam, metolachlor, metribuzin, chlorimuron,
dimethenamid, pendimethalin, bentazone, clomazone,
thifensulfuron, flumiclorac, flumetsulam, linuron, sethoxydim,
acifluorfen, fomesafen, sulfentrazone, flumioxazin, lactofen,
norflurazone,
propaquizafop, fenoxaprop-P, fluthiacet, ethalfluralin,
and oxasulfuron;
combinations comprising compounds of group (A2) and
compounds of group (B) selected from the group consisting of
cloransulam, metolachlor, dimethenamid, metribuzin,
chlorimuron, pendimethalin, flumetsulam, sulfentrazone,
thifensulfuron, lactofen, bentazone, linuron, norflurazone,
propaquizafop, acifluorfen, fluthiacet, sethoxydim, quizalofop
and oxasulfuron;
combinations comprising compounds of group (A3), and
compounds of group (B) selected from the group consisting of
thifensulfuron and flumetsulam;
combinations comprising compounds of group (A3) from
the group consisting of imazethapyr, and compounds of group
(B) from the group consisting of metolachlor, bentazone,
clomazone, thifensulfuron, flumiclorac, pendimethalin,
trifluralin, sulfentrazone, lactofen, dimethenamid, acifluorfen,
flumetsulam, and fenoxaprop-P;
combinations comprising compounds of group (A3)
selected from the group consisting of imazaquin, and
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compounds of group (B) selected from the group consisting of
pendimethalin, trifluralin, acifluorfen, and metolachlor;
combinations comprising compounds of group (A3)
selected from the group consisting of imazamox (AC299263),
and compounds of group (B) selected from the group consisting
of bentazone and trifluralin;
combinations comprising compounds of group (A3)
selected from the group consisting of imazapyr, and compounds
of group (B) selected from the group consisting of metolachlor;
combinations comprising compounds of group (A4)
selected from the group consisting of carfentrazone, and
compounds of group (B) selected from the group consisting of
fluthiamide; and
combinations comprising compounds of group (A4)
selected from the group consisting of sulfentrazone, and
compounds of group (B) selected from the group consisting of
trifluralin, metribuzin, clomazone, pendimethalin, metolachlor,
flumetsulam, dimethenamid, alachlor, linuron, sulfentrazone,
ethalfluralin, vernolate, flumioxazin, bentazone, lactofen,
fomesafen, flumiclorac, acifluorfen, 2,4-DB, chlorimuron,
cloransulam, sethoxydim, clethodim, quizalofop-P, quizalofop,
fenoxaprop-P, fenoxaprop, fluazifop-P, fluazifop, haloxyfop,
haloxyfop-P, and paraquat.
(App. Br. 56–59 (Claims App’x).)
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The Examiner rejected claims 1–47, 49–72, 74–84, and 86–319 under
35 U.S.C. § 103(a) as obvious over Lee,1 Illinois 1,2 Illinois 2,3 Illinois 3,4
Thompson,5 Streber,6 Haselkorn,7 Bedbrook,8 Perl,9 Volrath,10 Hacker,11

1 WO 98/09525, published March 12, 1998 (“Lee”).
2 Aaron Hager & Marshal McGlamery, Postemergence Herbicides for Grass
Control in Soybeans, 12 THE BULLETIN (July 7, 2015, 6:53 PM),
http://bulletin.ipm.illinois.edu/pastpest/articles/v9712d.html (“Illinois 1”).
3 Aaron Hager & Marshal McGlamery, Postemergence Broadleaf
Herbicides for Soybeans, 11 THE BULLETIN (July 7, 2015, 6:53 PM),
(http://bulletin.ipm.illinois.edu/pastpest/articles/v9711f.html accessed
7/7/2015 (“Illinois 2”).
4 Aaron Hager & Marshal McGlamery, New Corn and Soybean Herbicides
for 1998, 1 THE BULLETIN (JULY 14, 2015, 11:51 AM), http://bulletin.ipm.
illinois.edu/pastpest/articles/v981e.html accessed (“Illinois 3”).
5 WO 98/20144, published May 14, 1998 (“Thompson”).
6 WO 88/01641, published March 10, 1988 (“Streber”).
7 U.S. Patent 5,910,626, issued June 8, 1999 (“Haselkorn”).
8 U.S. Patent 5,013,659, issued May 7, 1991 (“Bedbrook”).
9 A. Perl et al., Enhanced oxidative-stress defense in transgenic potato
expressing tomato Cu, Zn superoxide dismutases, 85 THEOR APPL GENET
568–76 (1993) (“Perl”).
10 WO 97/32011, published September 4, 1997 (“Volrath”).
11 U.S. Patent 5,599,769, issued February 4, 1997 (“Hacker”).
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Gimesi,12 Banks,13 Takematsu,14 Wells,15 Smith,16 Hudetz,17 Iowa State,18
Willms,19 Zhang,20 Johnson,21 Wilke,22 and Heap.23 (Examiner’s Answer
mailed July 11, 2017, hereinafter “Ans.,” 10–21.)
Appellant relied on certain parts of the following (Appeal Br. 158
(Evidence App’x)):

12 WO 81/01787, published July 9, 1981 (“Gimesi”).
13 P.A. Banks & P.W. Santelmann, Glyphosate as a Postemergence
Treatment for Johnsongrass Control in Cotton and Soybeans, 69
AGRONOMY JOURNAL 579–82 (1977) (abstract only) (“Banks”).
14 U.S. Patent 4,552,583, issued November 12, 1985 (“Takematsu”).
15 Barbara Wells & Arnold P. Appleby, Lactofen Increases Glyphosate-
Stimulated Shikimate Production in Little Mallow (Malva parviflora), 40
WEED SCIENCE 171–73 (1992) (“Wells”).
16 U.S. Statutory Invention Registration H1711, published February 3, 1998
(“Smith”).
17 WO 96/32013, published October 17, 1996 (“Hudetz”).
18 IOWA STATE, Chloroacetamides, http://agron-www.agron.iastate.edu/
~weeds/Ag317/manage/herbicide/chloracetamide.html (last visited July 14,
2015) (“Iowa State”).
19 U.S. Patent 5,696,051, issued December 9, 1997 (“Willms”).
20 Jianhua Zhang et al., Antagonism and Synergism Between Herbicides:
Trends From Previous Studies, 9 WEED TECHNOLOGY 86–90 (1995)
(“Zhang”).
21 William G. Johnson et al., Waterhemp Management in Missouri,
UNIVERSITY OF MISSOURI AGRICULTURAL PUBLICATION G4871 (1996),
http://courses.missouristate.edu/WestonWalker/AGA375_Forages/Forage%
20Mgmt/Lesson%203/..%5C%5CReferences%5C%5C1Guides%5C%5C3R
enovate%5C%5CWeed%5C%5CMUG4871WaterhempMgmtMissouri.htm
(“Johnson”).
22 Cheryl Weibye Wilke, ’98 Soybean Herbicides Include New Chemistry,
CORN & SOYBEAN DIGEST (July 22, 2015, 5:44 PM), http://www.cornandsoy
beandigest.com/98-soybean-herbicides-include-new-chemistry (“Wilke”).
23 Ian M. Heap, The Occurrence of Herbicide-Resistant Weeds Worldwide,
51 PESTIC. SCI. 235–43 (1997) (“Heap”).
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Decl. of Dr. Erwin Hacker dated February 20, 2003 (Ex. D)
(“First Hacker Declaration”).
Decl. of Dr. Erwin Hacker dated October 20, 2010 (Ex. E)
(“Second Hacker Declaration”).
Decl. of Dr. Erwin Hacker dated June 30, 2014 (Ex. F) (“Third
Hacker Declaration”).

THE REJECTION
The Examiner found that Lee discloses phosphoherbicides,
glufosinate (A1) and glyphosate (A2), can be used to obtain synergistic
herbicidal activity for control of weeds in soybean, the same herbicide
classes recited in the claims. (Ans. 6 (citing Lee 2 (¶ 2), 3 (¶ 4).) The
Examiner specifically found that Lee discloses second herbicides as recited
in the rejected claims including metolachlor (B1), norflurazone (B1),
propaquizafop (B4), as well as structurally similar herbicides having the
same mode of action against weeds as second herbicides oxasulfuron (B2),
thifensulfuron (B2), and quizalofop (B4). (Id.) The Examiner found also
that propaquizafop has the same mode of action as sethoxydim, clethodim,
and cycloxydim, which are all (B3) second herbicides. (Id. at 6–7.)
The Examiner found, inter alia, that Zhang discloses synergistic
interaction between different herbicides with a frequency of 33% when
applied to control weeds. (Ans. 3.) The Examiner found that Johnson
discloses certain (B) herbicides, trifluralin, metribuzin, clomazone,
pendimethalin, metaolachlor, alchlor, linuron, ethalfluralin, and vernolate,
are used as pre-plant or pre-emergence herbicides, and glyphosate as post-
emergence herbicides when growing glyphosate resistant soybeans. (Id.)
The Examiner also found that Johnson discloses glufosinate ammonium for
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glufosinate resistant soybeans, which can be tank mixed with most post
emergence soybean herbicides. (Ans. 5.)
The Examiner found that Wilke discloses that cloransulam methyl and
flumetsulam may be used in combination with glyphosate for pre-emergence
use in glyphosate resistant soybeans. (Id.)
The Examiner found that Johnson discloses that flumetsulam is
recommended for use in a “two pass” method for control of waterhemp in
which a pre-emergence herbicide is used in combination with a post-
emergence herbicide. (Id.) The Examiner also found that Johnson discloses
glufosinate ammonium for glufosinate resistant soybeans, which can be tank
mixed with most post emergence soybean herbicides. (Ans. 5.)
The Examiner found that Thompson discloses a method for
controlling weeds in soybeans by using a combination of two herbicides
where the soybeans have been rendered resistant to multiple herbicides by
genetic modification. (Ans. 7–8.) The Examiner found that Thompson
discloses plants can be modified by imparting resistance to multiple
herbicides including combining a gene providing resistance to glufosinate
(A1) or glyphosate (A2), anilide herbicides including (B1) herbicides
flufenacet (fluthiamide), sulfentrazone, alachlor, metolachlor, and
flumetsulam (B1); (B2) herbicides cloransulam and disclosulam;
aryloxyphenoxypropionic herbicides, which include the (B4) herbicides
fenoxaprop, quizalofop, and fluazifop, as well as cyclohexene oxime
herbicides including (B3) herbicides sethoxydim, cycloxydim, and
clethodim; a gene providing resistance to glufosinate (A1) or glyphosate
(A2) with a tfdA gene providing resistance to 2,4-D (B2) or a PDS gene
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providing resistance to norflurazone (B1); combinations where an SOD gene
providing resistance to paraquat (B5), and ALS gene providing resistance to
sulfonylurea herbicides including (B2) herbicides thifensulfuron,
oxasulfuron, and chlorimuron, imidazolinone herbicides (A3), a protox gene
providing resistance to protoporphyrinogen inhibitors including
sulfentrazone and fluthiamide (A4) and (B1), flumioxazin (B1), and (B2)
herbicides oxyfluorofen, lactofen, fomesafen, flumiclorac, and acifluorfen.
(Id.)
The Examiner found that Bedbrook discloses mutated ALS genes
provide resistance in soybean plants to sulfonylurea (B2) and imidazolinone
(A3) herbicides. (Ans. 9.)
The Examiner found that Hacker, Gimesi, Takematsu, Wells, Smith,
Hudetz, and Willms disclose that certain claimed combinations of herbicides
act synergistically against target weeds that are commonly found in soybean
fields. (Id. at 9–11.) The Examiner stated that the use of the combinations
of herbicides disclosed therein to obtain synergistic interactions would have
been obvious in view of prior art disclosures using herbicides with similar
chemical structures and biological activities. (Id. at 11.)
The Examiner relied on Illinois 1, Illinois 2, and Illinois 3 for express
disclosures of herbicides recited in the claims. (Ans. 6–7.) In particular, the
Examiner found that Illinois 3 discloses acetochlor, which has the same
herbicidal mode of action as alachlor and metolachlor (B1 herbicides), was
premixed with glyphosate and further mixed with 2,4-D. (Id. at 7.)
The Examiner found that Hacker discloses that glufosinate (A1) and
glyphosate (A2) act synergistically when combined with (B2) herbicides
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thifensulfuron, chlorimuron, and oxasulfuron. (Ans. 9.) The Examiner
found that Gimesi discloses that glyphosate (A2) and 2,4-D (B2) act
synergistically against certain weeds. (Id. at 9–10.)
The Examiner found that Takematsu discloses combinations of
herbicides including glufosinate (A1) with 2,4-D (B2). (Ans. 10.)
The Examiner found that Wells discloses synergistic combinations of
glyphosate (A2) with (B2) herbicides acifluorfen, fomesafen, oxyfluorfen,
and lactofen. (Id.)
The Examiner found that Smith discloses that sulfentrazone (A4) in
combination with chlorimuron ethyl (B2) can be used to control weeds and
demonstrates synergy. (Ans. 10.)
The Examiner found that Hudetz discloses combinations of
metolachlor (B1) with glufosinate (A1), glyphosate (A2), and imazethapyr,
imazaquin, and imazapyr (A3), which act synergistically. (Id. at 11.) In this
regard, the Examiner found that Iowa State discloses metaolachlor has very
similar herbicidal properties, and thus, similar activity against the same
weeds, as alachlor (B1). (Id.)
The Examiner found that Willms discloses imidazolinone herbicides
(A3) act synergistically with 2,4-D and sulfonylurea herbicides
(thifensulfuron, chlorimuron, and oxasulfuron) (B2) and flumetsulam (B1).
(Ans. 11.)
The Examiner concluded that in situations where soybeans are
naturally tolerant to both herbicides, it would have been obvious to use
herbicides from groups (A3) and (A4) in combination with herbicides from
groups (B1), (B2), (B3), and (B4) to achieve synergistic results in view of
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the disclosure in the prior art that the same, or related herbicides, act
synergistically to control weeds when combined. (Id.) The Examiner
further stated that even if the specific combinations of herbicides recited in
the claims are not expressly disclosed in the prior art, “such combinations
would still be obvious because synergy had been observed using herbicides
with similar chemical structures and biological activities.” (Id.) The
Examiner stated that there would have been a reasonable expectation of
success in view of the “widespread” practice at the time of the invention of
combining pre- and post-emergence herbicides. (Id. at 12.)
The Examiner concluded also that it would have been obvious to try
combinations of herbicides that were known to be useful individually in
soybeans with the expectation that synergistic effects would be observed
under some conditions, citing as support the disclosure of Hacker, which
discloses the synergistic combination of glyphosate or glufosinate with a
variety of sulfonylureas, for the proposition that it would have been obvious
to combine glyphosate or glufosinate with (B2) herbicides thifensulfuron,
chlorimuron, or oxasulfuron. (Ans. 13.)
Thus, based on our review of the Examiner’s Answer, we understand
the Examiner to be asserting that claims including the following
combinations of (A) and (B) herbicides would have been obvious to one of
ordinary skill in the art and would have been expected to produce a
synergistic result based on the cited prior art, which disclosed that synergy is
widespread among combinations of different herbicides and a desired result
(Ans. 4–14, 17–19, 27–28):
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Glufosinate (A1) in combination with (B) herbicides including (B1)
trifluralin, ethalfluralin, vernolate, alachlor, fluthiamide, flumetsulam,
flumioxazin, sulfentrazone, and norflurazone; (B2) diclosulam, 2,4-D, 2,4-
DB, fomesafen, bentazone, acifluorfen, lactofen, flumiclorac, cloransulam,
oxasulfuron, thiensulfuron, chlorimuron, chlortoluron, and oxyfluorfen; (B3)
herbicides cycloxydim, clethodim, and sethoxydim; (B4) propaquizafop,
quizalofop, quizalofop-P, fluazifop, fluazifop-P, haloxyfop, haloxyfop-P,
and fenoxaprop; and (B5) herbicide paraquat.
Glyphosate (A2) in combination with (B) herbicides including (B1)
trifluralin, alachlor, metribuzin, pendimethalin, metolachlor, linuron,
ethalfluralin, norflurazone, flumioxazin, clomazone, fluthiamide,
flumetsulam, sulfentrazone, and vernolate; (B2) 2,4-D, 2,4-DB, fluthiacet,
lactofen, thifensulfuron, bentazone, cloransulam, flumetsulam, oxasulfuron,
chlorimuron, acifluorfen, diclosulam, oxyfluorfen, fomesafen, chlortoluron,
and flumiclorac; (B3) cycloxydim, sethoxydim, and clethodim; (B4)
propaquizafop, quizalofop, quizalofop-P, fluazifop, fluazifop-P, haloxyfop,
haloxyfop-P, and fenoxaprop; (B5) paraquat;
imidazolinone herbicides imazethapyr, imazaquin (A3) with (B1)
herbicides flufenacet (i.e., fluthiamide), sulfentrazone, alachlor, metolachlor,
flumetsulam, norflurazone, dimethanamid, metribuzin, and flumioxazin;
(B2) herbicides cloransulam, diclosulam, bentazone, 2,4-DB, 2,4-D,
thifensulfuron, oxasulfuron, chlorimuron, oxyfluorfen, lactofen, fomesafen,
flumiclorac, and acifluorfen; (B3) herbicides sethoxydim, cycloxydim, and
clethodim; and (B4) herbicides propaquizafop, quizalofop, quizalofop-P,
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fluazifop, fluazifop-P, haloxyfop, haloxyfop-P, and fenoxaprop; and (B5)
herbicide paraquat; and
Sulfentrazone (A4) in combination with (B1) herbicides flufenacet
(i.e., fluthiamide), alachlor, metolachlor, flumetsulam, norflurazone, and
flumioxazin; (B2) herbicides cloransulam, diclosulam, bentazone, 2,4-DB,
2,4-D, thifensulfuron, oxasulfuron, chlorimuron, oxyfluorfen, lactofen,
fomesafen, flumiclorac, and acifluorfen; (B3) herbicides sethoxydim,
cycloxydim, and clethodim; and (B4) herbicides propaquizafop, quizalofop,
quizalofop-P, fluazifop, fluazifop-P, haloxyfop, haloxyfop-P, and
fenoxaprop; and (B5) herbicide paraquat.
Appellant contends that the obviousness rejection set forth by the
Examiner does not provide sufficient clarity with respect to the independent
claims and claims reciting certain specific combinations of herbicides
subject to the rejection. (Appeal Br. 14–18, 43–44.) Appellant argues that a
synergistic effect between herbicides is unexpected and is not known until a
particular combination is tested. (Id. at 17–20.) Appellant points to
declaration evidence of record that “has at a minimum established
nonobviousness for each of the herbicidal combinations” shown therein
because the combination of herbicides exhibits an effect that is more than
the expected additive effect. (Id. at 21–24.) Thus, according to Appellant,
“there can be no reasonable expectation of synergy for a given herbicide
combination absent affirmative evidence of such synergy.” (Id. at 24–25.)
In response to the Examiner’s position that the showing of unexpected
results is not commensurate in scope with the claims, Appellant points out
that a showing of unexpected results is only necessary where the Examiner
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has made a prima facie case of obviousness, which Appellant contends is
lacking for a number of claims. (Id. at 26.) Appellant contends that there
are a number of specific combinations where no evidence has been offered
to explain how Appellant’s evidence of synergy is inherent in the art. (Id. at
27–29, 47–48.) In this regard, Appellant argues that a number of the
combinations disclosed in the art have been excluded from the claims. (Id.
at 29–32, 47.)
Further, Appellant contends that Lee teaches away from combining
metolachlor or dimethenamid with glyphosate in glyphosate-resistant soya.
(Appeal Br. 29, 48.) Appellant contends that Hudetz only discloses
combinations of alachlor and metolachlor and that Hudetz does not present
any results to support the disclosure that metolachlor combined with
glufosinate, glyphosate, imazethapyr, imazaquin, or imazapyr exhibits
synergism. (Id. at 35.) Appellant argues that Hudetz only discloses
combinations used in maize, which is insufficient for a disclosure that there
would be synergy shown in soybeans. (Id. at 36.) Appellant makes similar
arguments regarding Gimesi. (Id. at 50.) Appellant also contends that Iowa
State provides evidence that metolachlor and alachlor act differently, which
contradicts the Examiner’s position that they would exhibit the same
synergy when combined with (A) herbicides, and further argues that Iowa
State is not prior art. (Id. at 36–37, 52–53.) Appellant argues that
Takematsu mentions synergy, but lacks sufficient data to show synergy. (Id.
at 51.)
Appellant argues that the prior art fails to disclose soybeans that are
tolerant to 2,4-D, arguing also that Streber is not prior art. (Id. at 37–40, 45–
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46, 50.) Appellant contends that Thompson does not provide sufficient
teachings to allow one of ordinary skill in the art to arrive at soybeans that
would be sufficiently tolerant to the currently claimed herbicidal
combinations. (Appeal Br. 41–42, 49–50.) Appellant argues the one of
ordinary skill in the art is not a geneticist who would be an expert in
manipulating genes in plants to produce new transgenic plants tolerant to
particular weeds. (Id. at 41–42.) Appellant argues that there is no evidence
to support the Examiner’s position that combining the herbicides disclosed
by Johnson and Wilke would produce a synergistic effect. (Appeal Br. 47.)
Appellant argues that the combinations of herbicides disclosed in Hacker,
Smith, Hudetz, and Willms are excluded from the claims. (Id. at 50–54.)

ISSUE
Thus, the principal issue in this appeal is:
Considering the record as a whole, has Appellant identified reversible
error in the Examiner’s conclusion that a person of ordinary skill in the art
would have found it obvious to combine herbicides to produce synergistic
results in controlling harmful plants in soy bean crops?

PRINCIPLES OF LAW
It is not necessary for a prima facie case of obviousness that the prior
art disclose the claimed property alleged to be unexpected, or that there be a
suggestion or expectation from the prior art that the claimed composition
will have the same or similar utility as one newly discovered by Appellant.
In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). Rather, the burden is on
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the Appellant to rebut the prima facie case by way of a comparison of test
data that the claimed composition possesses unexpectedly improved
properties. Id. at 692–93. Such evidence must be compared with the closest
prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).

DISCUSSION
The numerous claims that are the subject of this appeal are of varying
scope, with a number of the claims being substantially overlapping if not
identical.24 We frame our discussion with specific reference to the herbicide
combinations recited in the claims and the evidence of record pertaining
thereto.
Based on the Examiner’s rejection addressing particular combinations
of (A) and (B) herbicides as discussed above, we are not persuaded by
Appellant’s argument that the Examiner has not set forth a rejection with
sufficient particularity for a majority of the claims on appeal. We fail to see
where the Examiner did not account for the combinations of herbicides
rejected in the claims as asserted by Appellant. In this regard, Appellant’s
argument that the Examiner only addressed certain combinations of

24 In this regard, we observe that there are numerous informalities
throughout the pending claims, including, but not limited to: repetition of
excluded combinations of herbicides, e.g., claim 1 excludes the combination
of (A3) herbicides and thifensulfuron multiple times; improper dependent
claims, e.g., claim 34 due to fluziafop-P-ethyl recited in (B4'); and claim 177
appears to be missing some words in the last phrase of exclusions pertaining
to compounds of (A3) herbicides. The Appellant and the Examiner should
carefully review the claims upon return of these merged proceedings to the
Examiner’s jurisdiction.
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herbicides in the Final Office Action is not persuasive. (Appeal Br. 14–19.)
First, if Appellant was of the position that the Examiner set forth a new
ground of rejection in the Answer, any procedural challenge in that regard
should have been done by way of a timely filed petition. See 37 C.F.R. §
41.41(b)(2). Second, Appellant’s argument that combinations of herbicides
were not expressly addressed in the Final Office Action (Id. at 16–17, 27–
31, 44), fails to account for the findings and conclusions made by the
Examiner regarding combinations of herbicides discussed above, which we
adopt herein as our own.
We highlight the following Examiner’s positions for emphasis and
address Appellant’s arguments relating thereto throughout the discussion.
In particular, the Examiner found that Gimesi discloses that the
combination of glyphosate with 2,4-D exhibit a synergistic effect with
respect to, as stated by the Examiner, “weeds that commonly infest soybean
fields.” (Id. at 9–10; Gimesi, Table 1.) Although Gimesi’s herbicidal
combination falls within the scope of the claims, the herbicides were applied
to crops other than soybean.
The Examiner found that Takematsu discloses that the combination of
glufosinate (AMPB) with 2,4-D exhibit a synergistic effect with respect to
both broad-leaved and narrow-leaved perennial weeds. (Id. at 10;
Takematsu, col. 1, ll. 15–19, 30–35, col. 2, ll. 12–14, col. 5, ll. 58–63.) The
combinations fall within the claim scope, but Takematsu does not
specifically describe application of the herbicides to soybeans.
The Examiner found that Wells discloses that oxyfluorfen and
lactofen increase the effectiveness of glyphosate, and in particular increasing
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the effectiveness of glyphosate beyond glyphosate or lactofen alone. (Id.;
Wells 171–173.) Again, the herbicides fall within the scope of the claims,
but soybean weed control is not disclosed (id. at 171).
Gimesi
We are not persuaded by Appellant’s argument that because Gimesi
does not disclose the combination of glyphosate and 2,4-D to treat weeds in
soybeans, one of ordinary skill in the art would not have arrived at the
claimed invention. (App. Br. 50.) Appellant argues that Freed25 disclose
preplant burndown applications of 2,4-D and glyphosate and Wax26 provides
evidence that soybeans can tolerate a maximum amount of 2,4-D of
0.14/kg/ha, which is less than 1/6(~16%) the strength taught by Gimesi (0.9
kg/ha) as adequate for weed control. (App. Br. 39 (citing Gimesi 4 (Table
1)); Wax 3 (Table 3).) Thus, Appellant argues that there would be no
reasonable expectation of success that only 16% of the synergistic amount of
2,4-D disclosed in Gimesi would be sufficient to obtain any weed control in
soybean beyond what would already be provided by glyphosate. (App. Br.
40; Third Hacker Declaration 2–3.)
First, while Gimesi did not apply its herbicides to soybean crops, the
Examiner found that Gimesi discloses that glyphosate and 2,4-D act
synergistically to control weeds including johnsongrass, which is a perennial
weed found in soybean fields as taught by Banks. (Ans. 13, 26.) The

25 B.E. Freed & L.J. Moshier, No-Till Weed Control Systems Utilizing
Glyphosate Tolerant Soybean, Abstr. Meet., 37 WEED SCI. Soc’y AM. 89
(1997) (“Freed”).
26 L.M. Wax et al., Response of Soybeans to 2,4-D, Dicamba, and Picloram,
17 (3) WEED SCI. 388–93 (1969) (“Wax”).
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Examiner found, therefore, that there was an “especially strong motivation”
to develop transgenic soybean plants resistant to both 2,4-D and glyphosate
in order to use them on soybean plants. (Id.) In re Kollman, 595 F.2d 48, 55
n.6 (CCPA 1979) (“Synergism, in and of itself, is not conclusive of
unobviousness in that synergism might be expected.”).
In this regard, the Examiner found, inter alia, that Thompson teaches
how to make transgenic, doubly herbicide resistant soybean plants. (Id.)
We agree with the Examiner that Appellant’s arguments with respect to Wax
and Freed are unpersuasive because the Examiner’s rejection is not based on
soybean plants that are not genetically modified. (Ans. 37.) Thus, the
tolerance of levels of 2,4-D in non-genetically modified soybean plants is
not relevant to the rejection.
Regarding Appellant’s argument with respect to the availability of
2,4-D resistant soybean plants and the sufficiency of teachings in the prior
art for one of ordinary skill in the art to produce such plants at the time of
the invention, we, like the Examiner, are not persuaded. (Ans. 37–38.)
Thompson provides general teachings regarding the production of transgenic
plants that exhibit “substantial” resistance or tolerance to herbicides when
compared to non-transgenic plants. (Thompson 1, ll. 3–5.) Thompson
expressly discloses that such plants include soybeans and expressly mentions
glyphosate resistance. (Id. at 6, l. 29; 3, l. 13.) Thompson does not limit the
application of such techniques to only the herbicides described therein. (Id.
at 2, ll. 27–28; 3, ll. 13–14 (the pre-emergence or post-emergence herbicide
“may be selected from” (emphasis added).)
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In addition, the ’470 Patent characterizes such methods of generating
herbicide resistant plants having modified properties as “conventional” and
that transgenic plant cells can be “regenerated by known techniques to give
rise to whole plants.” (Col. 13, l. 17–col. 14, l. 25.) Accordingly,
Appellant’s arguments that such modifications would require “extraordinary
skill” and would be beyond the skill of a person—the person who is trying to
prevent weed growth in crops is not persuasive and inconsistent with their
own disclosure in the ’470 patent. In this regard, the evidence of record
supports the finding that one of ordinary skill in the art would have the
technical abilities to apply conventional transgenic plant techniques to
soybean crops in order to enable the use of synergistic combinations of
herbicides disclosed in the prior art needed to control specific weeds in crop
fields.
Thus, although Appellant argues that there is no prior art indicating
that soybeans resistant to 2,4-D were actually obtainable and would have
been beyond the skill of one of ordinary skill in the art, Appellant has not
directed our attention to sufficient evidence indicating that one of ordinary
skill in the art would have been unable to produce such resistant soybean
plants. (Appeal Br. 41–42; Reply Br. 54–55.) To the contrary, Thompson
discloses that “[t]he product of the said tfdA gene is a dioxygenase which is
capable of oxidising phenoxycarboxylic acids, such as 2,4-D to the
corresponding phenol,” which enables resistance to 2,4-D. (Thompson 4, ll.
6–8.) Appellant’s arguments with respect to the Streber PCT prior art does
not change our conclusion. (Ans. 37–39.) As the Examiner has found,
Streber PCT is merely relied upon to show that the sequence of the tfdA
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gene was known in the art, and thus, would be available for modification of
plants in view of the methods set forth in Thompson. (Id. at 37) Thus,
Appellant’s additional arguments with respect to the difference in disclosure
between the Streber PCT and previous Streber reference27 applied during
this reexamination and with respect to what portion of the Streber PCT is
prior art are not persuasive. (Reply Br. 49–50.)
Takematsu
Regarding Takematsu, Appellant acknowledges that Takematsu
conclusively shows increased killing activity of glufosinate (AMPB) with 2,
4-D, but argues that an increased activity can be merely additive or even
antagonistic. (Appeal Br. 51.) Appellant argues that although Takematsu
discloses that the combinations of herbicides are synergistic, that data
provided therein is insufficient to show synergy. (Id. (citing Takematsu,
Table 4).)
We are not persuaded by Appellant’s argument. That is, Takematsu
expressly discloses that combinations of 2,4-D with AMPB exhibit a
“synergistic effect,” meeting the corresponding limitations in the claims.
(Col. 5, ll. 43–46.) In addition, Appellant’s arguments with respect to the
alleged deficiencies in the results reported in Takematsu are attorney
argument, and not supported by objective evidence. As a result, we find
such arguments to be unpersuasive, particularly in view of the express
disclosure in Takematsu of synergy obtained with claimed combination of
herbicides.

27 Streber, US 6,153,401; Nov. 28, 2000.
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Regarding Appellant’s argument that soybeans were not known to be
resistant to 2,4-D at the relevant time period (Reply Br. 13–14), we are not
persuaded for similar reasons as discussed above with respect to Gimesi.

Wells
Regarding Wells, Appellant argues, similar to Gimesi, that Wells does
not disclose that the combination of glyphosate and lactofen had been
applied to soybeans. (Appeal Br. 30.) In addition, Appellant argues that
Wells does not disclose applying oxyfluorfen at all. (Id.)
Regarding Appellant’s first argument, the Examiner found that Wells
discloses herbicides that act synergistically for combinations of herbicides
that are already used in soybean cultivation, providing a reason to have
applied them to soybean crops. (Final Act. 19, 20; Ans. 13–14.) The
Examiner employs similar rationale for making transgenic soybean plants
resistant to herbicides. As a result, we are not persuaded by Appellant’s
argument that Wells does not disclose application in soybeans for similar
reasons as discussed above.
With respect to Appellant’s arguments regarding combinations of
glyphosate and oxyfluorfen, we are not persuaded because Wells expressly
discloses that adding oxyfluorfen to glyphosate spray solutions increased
glyphosate translocation in yellow nutsedge. (Wells 171 (paragraph
bridging cols. 1 and 2).)
Thus, the Examiner provided sufficient support for the position that
one of ordinary skill in the art would have had a reasonable expectation of
success in obtaining the combinations of herbicides recited in the claims in
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view of the teachings of the prior art with respect to combinations of
herbicides and families of herbicides having structural and functional
similarities corresponding to the combinations of herbicides recited in the
claims.
In this regard, given the scope of the claims, Appellant’s arguments
regarding the number of references applied in the Examiner’s rejection are
without merit. (Appeal Br. 32–34.) Rather, the Examiner’s application of
the prior art provides evidentiary supported context and relevance pertaining
to the obviousness of the combinations of herbicides recited in the claims.
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (“The criterion . . . is not
the number of references, but what they would have meant to a person of
ordinary skill in the field of the invention.”).
Appellant’s arguments that metolachlor and alachlor act differently
are unpersuasive. As pointed out by the Examiner, Johnson discloses both
alachlor and metolachlor can be used in combination with glyphosate to
control waterhemp in soybeans. (Ans. 45; see also Ans. 4, 36; Johnson 6–
7.) In view of the disclosure in Johnson, we need not address Appellant’s
arguments that Iowa State is not prior art as Johnson provides sufficient
evidence that alachlor (Microtech) and metolachlor (Dual) can be used with
glyphosate to control waterhemp in soybeans.

Synergy
With respect to synergy of herbicides, the Examiner’s position is that
the synergistic effect is not surprising or unexpected in view of the prior art
disclosure. (Ans. 37.) Appellant states (Appeal Br. 19):
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There are only three possible effects of an herbicidal
combination—an antagonistic effect, an additive effect, and a
synergistic effect. The typically expected response would be an
additive effect. Thus both synergistic and antagonistic effects
are unexpected. While a synergistic effect is certainly hoped
for, it is not expected until the herbicidal combination is tested.

However, as discussed above, the Examiner’s position supported by
certain prior art cited throughout the course of this reexamination indicates
that “herbicides from similar chemical families tended to interact
synergistically” (see, e.g., Zhang 86–87).
In this case, while presenting evidence that certain combinations of
herbicides recited in the claims exhibit results that are more than additive
with respect to each herbicide individually, Appellant does not provide any
comparison evidence with respect to other combinations of herbicides
encompassed by the prior art, particularly of combinations of herbicides
falling within the same class of herbicides as recited in the claims, in order
to show that any synergy obtained by the combination of herbicides recited
in the claims would have been significant and unexpected as compared to
the prior art combinations. Baxter Travenol Labs., 952 F.2d at 392.
In view of the Examiner’s rejection pointing to prior art disclosing or
rendering obvious the combinations of herbicides either expressly or based
on structural similarity and function, as well as prior art expressly disclosing
synergistic combinations, it was up to Appellant to provide comparison data
to show that the claimed compositions exhibit unexpected synergistic
activity over at least those combinations disclosed in the prior art. Dillon,
919 F.2d at 692–93.
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Appellant’s bare reliance on the position that any synergy would be
unexpected does not outweigh the evidence in favor of obviousness as
explained by the Examiner. Kollman, 595 F.2d at 55 n.6.
Thus, we have considered Appellant’s arguments with respect to the
evidence of an unexpected synergistic effect in the combination of specific
herbicides used in soybean crops as shown by the ’470 Patent (Tables 1–8)
First Hacker Declaration (Tables 1–9) and Second Hacker Declaration
(Tables 1–51). (Appeal Br. 19–29.) We find such evidence unpersuasive.

DECISION
The Examiner’s decision to reject claims 1–47, 49–72, 74–84, and
86–319 as discussed above under 35 U.S.C. § 103(a) is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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