Ex Parte Qin et al

Patent Trial and Appeal Board

Jan 28, 2019

12653987 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/653,987 12/22/2009
117219 7590 01/30/2019
DAS/Maschoff Brennan
1389 Center Drive
Suite 300
Park City, UT 84098
FIRST NAMED INVENTOR
KuideQin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
D1833.10001US02 8223
EXAMINER
QAZI, SABIHA NAIM
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
01/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@mabr.com
kclark@mabr.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUIDE QIN and RAYMOND E. BOUCHER JR. 1
Appeal2018-000731
Application 12/653,987
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Dow AgroSciences
LLC (Appeal Br. 3).
Appeal2018-000731
Application 12/653,987
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1---6, 9, 11, and 16-18 as unpatentable
under 35 U.S.C. § I03(a) as being obvious over Loso et al. (US 7,687,634
B2, March 30, 2010) ("Loso"), Babcock (US 2009/0023782 Al, January 22,
2009) ("Babcock"), Huang et al. (US 2007/0299264 Al, December 27,
2007) 2 ("Huang"), Ballany et al. (WO 84/00095, January 19, 1984)
("Ballany"), Lojek et al. (US 6,586,470 Bl, July 1, 2003) ("Lojek"), and
Siegler et al. (US 1,589,866, June 22, 1926) ("Siegler"). 3
Claims 1---6, 9, 11, and 16-18 also stand rejected under the
nonstatutory doctrine of obviousness-type double patenting as being obvious
over claims 1-5 of Loso and Ballany.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
2 The Examiner interchangeably cites the PCT Publication of Huang et al.
(WO 2007/149134 Al, December 27, 2007).
3 The Examiner also rejected claims 1---6, 9, 11, and 16-18 as unpatentable
under 35 U.S.C. § I03(a) as being obvious over Babcock and as
unpatentable under the non-statutory doctrine of obviousness-type double
patenting over claims 1-5 of US 8,178,500 B2 (May 15, 2012) (the "'500
patent") and Ballany. Final Act. 9, 17. The Examiner has withdrawn these
rejections. Ans. 2.
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Application 12/653,987
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to insect-controlling compositions
containing a sulfoximine compound (e.g. sulfoxaflor) and stabilizing amount
of an organic acid. Abstr.
REPRESENTATIVE CLAIM
Claim 11 is representative of the claims on appeal and recites: 4
11. A composition, comprising:
a compound having the following structure:
and an organic acid or a salt thereof in an amount effective for
promoting stereochemical stability of the compound,
wherein the organic acid is selected from the group consisting
of citric acid, phthalic acid, malic acid, tartaric acid, maleic
acid, malonic acid, lactic acid and succinic acid.
ISSUES AND ANALYSIS
We adopt the Examiner's findings and conclusions that Appellants'
claims are prima facie obvious over the cited prior art under both § 103 (a)
4 Independent claim 1 recites sulfoximine compounds of formula (I) which
encompass the specific compound of claim 11, commonly known as
sulfoxaflor. See Spec. 14.
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Application 12/653,987
and the nonstatutory doctrine of obviousness-type double patenting. We
address the arguments raised by Appellants on appeal below.
Issue 1
Appellants argue that the Examiner erred by failing to establish prima
facie obviousness as there is no reason for a person of skill in the art to
combine the cited references. See App. Br. 16, 18, 20.
Analysis
The Examiner finds that a person of skill in the art would have been
motivated to combine the prior art insecticidal compounds and acids to make
stable compositions with improved insect control. See Final Act. 9. The
Examiner concludes that it would have been prima facie obvious to a person
of ordinary skill in the art to combine two compositions, each of which is
taught by the prior art to be useful for the same purpose, in order to form a
third composition that is to be used for that very same purpose. Id.
Specifically, the Examiner finds that the idea of combining the references
flows logically from their having been individually taught in the prior art.
Id. (citing In re Kerkhoven, 626 F.2d 846, 850 (C.C.P.A. 1980)).
Appellants argue that a person of ordinary skill in the art would have
had no basis to modify Loso, Huang, and Babcock ("the primary
references") with citric acid or malic acid, as taught by Lojek, in order to
provide composition with additional insecticidal activity. App. Br. 20.
Specifically, Appellants assert that Lojek teaches that citric acid alone
exhibits "meager" insecticidal properties and does not teach that malic acid
exhibits any insecticidal properties. Id. As such, Appellants argue that there
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Application 12/653,987
is no "basis for narrowing potential modifications to the primary references"
with citric or malic acid from "an almost infinite number of other
insecticidal compounds." Id.
Appellants argue that Ballany is limited to preventing the
decomposition of cypermethrin in the presence of levamisole with an
organic acid. App. Br. 15-16 ( citing Ballany 8). Appellants contend that
Ballany does not indicate that an organic acid will prevent decomposition of
any other compound in any other setting and therefore, a person skilled in
the art would not seek to modify the primary references with Ballany. See
App. Br. 16.
Appellants argue that Siegler "does not teach that succinic acid
exhibits any insecticidal properties." App. Br. 17. Appellants assert that
Siegler teaches monobasic aliphatic acids containing more than five carbons
as insecticidal compounds, and instead merely lists succinic acid as an
example of a polybasic acid. App. Br. 17-18 ( citing Siegler, col. 1, 11. 55-
63). Therefore, Appellants argue, Siegler provides no basis for modifying
the primary references to include succinic acid. App. Br. 18.
We are not persuaded by Appellants' arguments regarding the prior
art combination. 5 The primary references teach combining insecticide
compositions containing compounds of formula (I), including sulfoxaflor,
with other insecticides. See Final Act. 6 (citing Loso col. 45, 11. 44--53).
5 We agree with Appellants that Siegler does not teach the use of succinic
acid as an insecticidal compound. Instead, Siegler lists succinic acid as an
example of a "polybasic acid" in contrast with insecticidal monobasic fatty
acids. See Siegler, col. 1, 11. 26-63, col. 2, 11. 25-39.
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Application 12/653,987
Lojek teaches insecticidal combinations of acetic acid with at least one of
citric and malic acid. Appellants highlight Lojek's sample 19 for indicating
citric acid alone is a poor insecticide for controlling com root worms. See
App Br. 20. However, when viewed as a whole, Lojek teaches that the
combination of acetic acid and citric acid are effective insecticides,
specifically against aphids. See Lojek col. 5---6, Examples III, V. Likewise,
Lojek's Example VII specifically teaches the insecticidal effectiveness of
acetic acid and malic acid against aphids. See Lojek, col. 6, Example VII.
As noted by the Examiner, the primary references teach that the compounds
of formula (I) are effective at controlling aphids. Final Act. 6. Because both
the primary references' compositions and Lojek's compositions are useful
for the same purpose, e.g. as an insecticide to control aphids, we agree with
the Examiner that it would have been obvious to combine the compositions
to create a third composition containing sulfoxaflor in combination with
acetic and citric or malic acid. "It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose. . . . [T]he idea of combining them flows logically
from their having been individually taught in the prior art." Kerkhoven, 626
F.2d at 850.
Appellants argue that Lojek does not teach the effectiveness of citric
acid or malic acid in the absence of acetic acid. See App. Br. 20. However,
Appellants' claims recite the transition "comprising" which does not exclude
additional, unrecited elements, such as acetic acid, in addition to citric
and/or malic acid. See Crystal Semiconductor Corp. v. Tri Tech
Microelectronics Int'!, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001).
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Application 12/653,987
Therefore, the prior art teachings are not limited to compositions containing
citric acid or malic acid alone.
As to the combination including Ballany, the primary references list
cypermethrin as a specific pesticide that can be combined with the
compounds of formula (I). See Loso col. 47, 11. 63; Huang ,r 130; Babcock ,r
146. Moreover, Babcock further teaches using organic acid preservative
agents for preventing spoilage. Final Act. 12 ( citing Babcock ,r 198); Ans.
7. Taken together, the references teach that organic acids, including citric
acid, are known stabilizing agents for insecticides that may be used in
combination with sulfoxaflor.
Appellants further argue that the Examiner has relied on
impermissible hindsight reasoning. App. Br. 20. However, Appellants point
to no evidence that any claim limitation could have been gleaned only by
using knowledge obtained from Appellants' Specification, and not from the
teachings of the cited prior art. See In re McLaughlin, 443, F.2d 1392, 1395
(C.C.P.A. 1971). Rather, Appellants' allegation ofhindsight reasoning is
unsupported by any evidence of record. We accord such arguments little
probative weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(holding that attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value). In the
absence of any evidence of hindsight reasoning, we agree with the
Examiner's conclusion that the claims would have beenprimafacie obvious
to a person of ordinary skill in the art in order to make stable compositions
with improved insect control.
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Application 12/653,987
Issue 2
Appellants argue that the claimed subject matter yields unexpected
results that would overcome a finding of prima facie obviousness. App. Br.
13-14.
Analysis
Appellants argue that the "[S]pecification describes the surprising
discovery that the addition of an organic acid or salt thereof to a composition
which includes a compound according to formula (I) provides a stabilizing
effect between stereoisomers of the compound." App. Br. 13. Appellants
point to Example X on pages 50-52 of the Specification that exemplifies the
stereochemical stabilization of sulfoxaflor in the presence of the claimed
organic acids. Id. Appellants summarize their results as follows:
[ A ]fter initial synthesis of sulfoxaflor, the first and second
diastereomer groups are present in an approximate 1 :2 mixture
(see, page 42, lines 6-8). Table 2 on page 50 shows that after two
weeks storage at 54 °C there is only 1.5% of the second
diastereomer group and 98.5% of the first diastereomer group;
i.e., almost all of the second diastereomer group has converted to
the first diastereomer group. In contrast, Table 5 illustrates that
the presence of an organic acid or a salt thereof identified in
independent claim 1 results in the prevention or substantial
prevention of conversion of the second group of diastereomers to
the first group of diastereomers since after two weeks storage at
54 °C the first and second diastereomer groups are still generally
present in an approximate 1 :2 mixture.
App. Br. 14 (citing Spec. 42, 50-52).
Appellants argue "the subject matter of independent claim 1 yields
results which are not expected based on the cited references so any
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Application 12/653,987
purported case of obviousness would be obviated by these results." App. Br.
17.
We are not persuaded by Appellants' arguments and evidence with
respect to the allegedly unexpected results. We agree that the Specification
provides evidence of improved stability of sulfoxaflor diastereomers when
combined with the claimed organic acids. However, claim 1 is much
broader in scope and encompasses compounds that would not necessarily
include the stereochemical configuration stabilized by the claimed acids. In
other words, as identified by the Examiner, the data in the specification is
not commensurate with the scope of claims. See Final Act. 14; see also Ans.
19, (citing In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)). Therefore,
we find that even if the results were unexpected, they would not be sufficient
to support the patentability of claim 1 and its dependent claims.
Unlike claim 1, claim 11 specifically recites sulfoxaflor used in the
stability test. However, in order to overcome prima facie obviousness, the
evidence must show both substantially improved and unexpected results.
See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). As discussed below, we
find that Appellants do not provide persuasive evidence of either
requirement.
Appellants argue that the Specification teaches liquid forms of
pesticide compositions can solidify and impede application as the result of
instabilities in the compositions. See App. Br. 6 ( citing Spec. 2). The
Specification also teaches that physical and chemical instabilities may lead
to a reduction in pesticidal activity of a composition. Spec. 2, 11. 5-9.
However, these statements apply to insecticide formulations generally and
do not appear to have any particular connection to sulfoxaflor. The test
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results show that the claimed organic acids stabilize the initial sulfoxaflor
diastereomeric ratio when exposed to high temperatures. However, there is
no evidence that this is a substantial improvement over a composition which
contains 98.5% of the A diastereomeric group. See Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("Creating a product or process
that is more desirable ... to enhance commercial opportunities ... is
universal-and even common-sensical").
Likewise, the Specification states that the stabilization with organic
acids was "surprising." Spec. p. 42, 11. 14--16. However, the record is
devoid of any evidence of what the skilled artisan would have expected. See
Pfizer, 480 F.3d at 1371. Appellants did not offer evidence of unexpected
results in the form of a statement to that effect from the inventors or any
third party, or any objective evidence from a respected third source. See In
re Geisler, 116 F.3d at 1470. In the absence of any such evidence, we are
not persuaded that the results of the stability testing were unexpected.
Because Appellants do not provide persuasive evidence of substantially
improved and unexpected results, we do not find the evidence sufficient to
overcome the Examiner's determination of prima facie obviousness.
Appellants do not argue the dependent claims separately, relying on
their arguments for claims 1 and 11. We consequently affirm the
Examiner's rejection of claims 1---6, 9, 11, and 16-18.
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Issue 3
Claims 1-6, 9, 11, and 16-18 also stand rejected under the non-
statutory doctrine of obviousness-type double patenting over claims 1-5 of
Loso and Ballany. Ans. 4.
Appellants make no argument with respect to this rejection. See, e.g.,
App. Br. 9. We consequently summarily affirm the Examiner's rejection of
claims 1---6, 9, 11, and 16-18. See 37 C.F.R. § 4I.37(c)(iv) ("[A]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal").
DECISION
The Examiner's rejection of claims 1-6, 9, 11, and 16-18 under 35
U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 1-6, 11, and 16-18 under the non-
statutory doctrine of obviousness-type double patenting is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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