Ex Parte Rieck et al

Patent Trial and Appeal Board

May 15, 2017

12705058 (P.T.A.B. May. 15, 2017)

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.
12/705,058 02/12/2010 Heiko RIECK 2903925-202001 7546
84331 7590 05/17/2017
MMWV TP T T C EXAMINER
7900 Westpark Drive, Suite A100
McLean, VA 22102
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
docketing @ mm w vlaw .com
cgmoore @ mmwvlaw. com
dwoodward @ mmwvlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKO RIECK,
HELENE LACHAISE, GILBERT LABOURDETTE,
PETE HOWARD DAVIES, DOMINIQUE STEIGER, LUK DE MAEYER,
GEORGE HAULEY MUSSONIV, LORI ANNE FOUGHT,
and SYLVAIN TAFFOREAU
Appeal 2015-0041531
Application 12/705,05 82
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to methods of
extending the shelf life of fruits and vegetables. The Examiner rejected the
claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants state that the “real party in interest is BAYER CROPSCIENCE
AG.” Br. 4.
2 Appellants identify a related appeal in application 13/481,086 (now Appeal
No. 2015-004244). Br. 4.
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STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 1, 4, 6—9, and 27^43 under 35 U.S.C. § 103(a) for obviousness over
Mansfield,3 Hong,4 and Schirra.5 Ans. 2-A.6
Claims 1, 8, 9, and 38 illustrate the appealed subject matter and read
as follows (Br. 26—28 (emphasis added)):
1. A method for extending shelf life of a fruit and/or
vegetable by controlling fungus that causes post-harvest
disease, the method comprising applying fluopyram to a crop
and/or a fruit and/or vegetable thereof prior to harvest of said
fruit or vegetable, to thereby control fungus that causes post­
harvest disease and extend the shelf life of the fruit and/or
vegetable.
8. A method according to claim 1, comprising applying a
composition comprising fluopyram and a further fungicide to
the crop and/or to a fruit and/or vegetable thereof.
9. A method according to claim 8, wherein the further
fungicide comprises trifloxystrobin.
38. A method to extend the shelf life of a fruit and/or
vegetable by controlling a fungus that causes post-harvest
disease, comprising applying a composition to a crop and/or a
fruit and/or vegetable thereof prior to harvest of said fruit or
vegetable,
3 WO 2004/016088 A2 (published Feb. 26, 2004).
4 US 2010/0105670 A1 (published Apr. 29, 2010).
5 Mario Schirra et al., Residues of the Quinone Outside Inhibitor Fungicide
Trifloxystrobin after Postharvest Dip Treatments To Control Penicillium
spp. on Citrus Fruit, 69 J. Food. Prot. 1646—1652 (2006).
6 The Examiner’s rejection includes claims 2 and 3. The Appeal Brief
indicates that those claims were canceled, however. Br. 26.
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the composition comprising fungicides, wherein the
fungicides consist of fluopyram and optionally one or more
further fungicides selected from the group consisting of
trifloxystrobin, tebuconazole, triadimenol, pyrimethanil,
fosetyl-aluminum, spiroxamine, and prothioconazole.
OBVIOUSNESS
The Examiner’s Rejection
The Examiner cited Mansfield as disclosing post-harvest application
of fluopyram (compound A-20 in Mansfield)7 to crop plants including
strawberries and potatoes. Ans. 2.
The Examiner found that the processes described in Mansfield differ
from the claimed processes in that Mansfield does “not teach trifloxystrobin,
tebuconazole, triadimenol, pyrimethanil, prothioconazole, forsetyl
aluminum, or spiroxamine.” Id. at 3. To address that deficiency, the
Examiner cited Hong as evidence that those compounds were fungicides
known in the art to be useful for treating crops, including strawberries, prior
to harvest. Id.
The Examiner found also that Mansfield does not “explicitly disclose
methods of extending shelf life of a fruit or vegetable. This deficiency is
cured by the method steps of Mansfield et al. and Schirra et al. Schirra et al.
teach treatment of fruit post-harvest with trifloxystrobin in order to control
mold (abstract).” Id.
Based on the references’ combined teachings, the Examiner
concluded that an ordinary artisan would have considered it obvious to
7 Appellants agree that Mansfield’s compound A-20 is fluopyram. See Br.
10.
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combine the fungicides taught in Hong and Schirra with the fluopyram used
in Mansfield’s crop treatment methods. Id. at 3^4. The Examiner reasoned:
One of ordinary skill in the art would have been
motivated to do this because all references are drawn to
fungicides, Mansfield et al. teach fluopyram in combination
with additional fungicides for application to strawberries pre­
harvest and that fluopyram is effective against Botrytis cinerea,
Hong et al. teach fungicide compositions, fluopyram,
trifloxystrobin, tebuconazole, triadimenol, pyrimethanil,
prothioconazole, forsetyl aluminum, and spiroxamine and
application to strawberries pre-harvest, and Schirra et al. teach
trifloxystrobin is effective in controlling mold on fruit post­
harvest. Therefore it would have been obvious to utilize the
trifloxystrobin of both Hong et al. and Schirra et al., in the
formulations of Mansfield et al. in order to use an additional
known fungicide which is also known to have fungicidal
activity pre-harvest and to control mold on fruit post-harvest.
Ans. 4.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants do not persuade us that a preponderance of the evidence
fails to support the Examiner’s conclusion that the processes recited in the
rejected claims would have been obvious to an ordinary artisan in view of
Mansfield, Hong, and Schirra. To the contrary, we agree with the
Examiner’s findings of fact, and conclusion of obviousness derived
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therefrom, and adopt them as our own. We include the discussion below for
emphasis.
Claim 1
Claim 1 recites a “method for extending shelf life of a fruit and/or
vegetable by controlling fungus that causes post-harvest disease.” Br. 26.
The sole process step positively recited in claim 1 is “applying fluopyram to
a crop and/or a fruit and/or vegetable thereof prior to harvest of said fruit or
vegetable.” Id.
Mansfield discloses “novel fungicidal compounds . . . and also . . .
their use in the agricultural field as fungicides.” Mansfield 1. Fluopyram is
undisputedly one of the fungicides described in Mansfield and, as noted
above, the Examiner and Appellants agree that fluopyram is Mansfield’s
compound A-20. See id. at 13 (Table A)).
Mansfield discloses:
The fungicidal compositions of the present invention can
be used to curatively or preventively control the
phytopathogenic fungi of crops. Thus, according to a further
aspect of the present invention, there is provided a method for
curatively or preventively controlling the phytopathogenic fungi
of crops characterised in that a fungicidal composition as
hereinbefore defined is applied to the seed, the plant and/or to
the fruit of the plant or to the soil in which the plant is growing
or in which it is desired to grow.
Mansfield 7 (emphasis added). Mansfield discloses that the “method of
treatment according to the present invention can also be useful to treat the
overground parts of the plant such as trunks, stems or stalks, leaves, flowers
and fruits of the concerned plant.” Id.
Given Mansfield’s disclosures of preventively treating crop plants
with its compounds to control fungi, as well as treating the overground
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portions of plants, Appellants do not persuade us (see Br. 11) that Mansfield
fails to teach the pre-harvest application of fluopyram to crop plants, as
required by claim 1. Indeed, Appellants’ Specification expressly concedes
this point. See Spec. 2 (“WO 2004/016088 [Mansfield] teaches the
preharvest application of fluopyram in order to control Botrytis cinerea in
cucumbers.”).
To that end, we note Mansfield’s working example in which its
compounds are sprayed onto cucumber plants to test the compounds’
capacity to inhibit infection by the fungus Botrytis cinerea. Mansfield 25—
26. Mansfield discloses that at application rates of 500 g/ha and 250 g/ha
compound A-20 (fluopyram) “showed good to average effectiveness”
against Botrytis cinerea. Id. at 27, 28.
In sum, given the discussed teachings, Appellants do not persuade us
that Mansfield fails to teach or suggest claim 1 ’s step of applying fluopyram
to a crop, fruit, or vegetable, prior to harvest.
We acknowledge that claim 1 also recites that application of the
fluopyram is “to thereby control fungus that causes post-harvest disease and
extend the shelf life of the fruit and/or vegetable.” Br. 26. Because
Mansfield teaches applying the active agent recited in claim 1 to plants
encompassed by claim 1, the application being performed at a time
encompassed by claim 1, we find that, contrary to Appellants’ arguments
(Br. 13—14), the Examiner had a reasonable basis for concluding that
Mansfield’s process would produce the result recited in claim 1.
As explained by our reviewing court’s predecessor, where, as here,
the Office advances a reasonable basis for concluding that a functional
recitation in a claim at issue is present in the prior art, the Office may require
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an applicant to demonstrate that the prior art lacks the claimed functionality.
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). As explained in Best,
whether the rejection at issue “is based on ‘inherency’ under 35 U.S.C.
§ 102, or ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.” Id. In the present case, Appellants do not identify
specific persuasive evidence showing that applying fluopyram to plants in
the manner taught by Mansfield would fail to achieve the shelf life­
extending functionality recited in claim 1.
Moreover, although we acknowledge Schirra’s focus on evaluating
post-harvest treatment of fruit with fungicide (Schirra 1646), contrary to
Appellants’ assertion that Schirra teaches away from pre-harvest application
of fungicides to crop plants (Br. 12—13), Schirra teaches in its background
section that “[wjhen applied as a foliar spray, [trifloxystrobin] also was
effective for controlling various postharvest diseases in avocado (Persea
americana Mill cv. Hass) fruit.” Schirra 1646 (emphasis added, citation
omitted). Indeed, Appellants identify no teaching in Schirra disparaging or
otherwise discrediting preharvest application of fungicides. See DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away ... if it merely expresses a
general preference for an alternative invention but does not criticize,
discredit, or otherwise discourage investigation into the invention claimed.”)
(internal quotations omitted).
In sum, because Mansfield teaches or suggests a process having all of
the steps and features of the process recited in claim 1, Appellants do not
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persuade us, for the reasons discussed, that the Examiner failed to make out
a prima facie case of obviousness as to claim 1. For the reasons discussed
below, moreover, we are not persuaded that Appellants have advanced
sufficient objective evidence of nonobviousness to outweigh the evidence of
prima facie obviousness presented by the Examiner.
Specifically, Appellants contend that, based on the Labourdette
Declaration,8 and the PowerPoint presentation discussed in and appended to
the Labourdette Declaration, the process recited in claim 1 produces
unexpected results, in the form of extended fruit/vegetable shelf life,
sufficient to outweigh the evidence of prima facie obviousness. Br. 14—17.
Appellants do not persuade us, however, that the asserted evidence of
unexpected results is sufficient to outweigh the evidence of prima facie
obviousness.
As our reviewing court has pointed out, “any superior property must
be unexpected to be considered as evidence of non-obviousness.” Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). We discern no
error in the Examiner’s finding (Ans. 9—10), that an ordinary artisan would
have expected that, when a fungicide is applied to a crop plant before
harvesting, thereby inhibiting fungal infection of the plant, less spoilage-
causing fungi would be present on the harvested fruit or vegetable. Indeed,
Schirra supports the Examiner’s reasoning. Schirra 1646 (“When applied as
a foliar spray, [trifloxystrobin] also was effective for controlling various
postharvest diseases in avocado (Persea americana Mill cv. Hass) fruit.”
(emphasis added, citation omitted).
8 Declaration of Gilbert Labourdette (signed March 5, 2013).
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It is well settled, moreover, that “when unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991).
In the present case, as discussed above, Mansfield describes, and
indeed exemplifies, pre-harvest treatment of crop plants with fluopyram. As
noted above, Appellants’ Specification recognized this disclosure in
Mansfield. See Spec. 2 (“WO 2004/016088 [Mansfield] teaches the
preharvest application of fluopyram in order to control Botrytis cinerea in
cucumbers.”).
Rather than comparing the shelf life-extending effects of the process
of claim 1 to Mansfield’s fluopyram-applying process, the comparisons in
the Specification advanced by Appellants are either to untreated plots of
vegetables or fruits (see Spec. 16—17 (Example B)), or to fruits or vegetables
treated with fungicides other than fluopyram. See Spec. 13—15 (comparison
with Fenhexamid (Example A)); Spec. 17—18 (comparison with Serenade
(Example C)).
Similarly, rather than comparing the shelf life-extending effects of the
process of claim 1 to Mansfield’s fluopyram-applying process, the
comparisons in the PowerPoint presentation are either to an unnamed
“Market [Standard,” “Grower Standard Programme,” or “Grower
[Standard” (PowerPoint presentation pp. 7—11, 13), or to Triazole or
Strobilurine {id. atpp. 12, 14).
Given that Mansfield describes and exemplifies pre-harvest treatment
of crop plants with fluopyram, whereas none of the comparisons advanced
by Appellants compare a process encompassed by claim 1 to Mansfield’s
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fluopyram-applying process, we are not persuaded that Appellants have
compared the process to the closest prior art of record. Appellants,
therefore, do not persuade us that the asserted evidence of unexpected results
is sufficient to outweigh the evidence of prima facie obviousness advanced
by the Examiner.
Thus, because a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious to an ordinary
artisan in view of Mansfield, Hong, and Schirra, we affirm the Examiner’s
rejection of claim 1 over those references. Because they were not argued
separately, claims 4, 8, 27, 31—33, 42, and 43 fall with claim 1. See 37
C.F.R. § 41(c)(l)(iv).
Claim 6
Claim 6 recites “[a] method according to claim 1, wherein the
fluopyram is applied to strawberries.” Br. 26.
Appellants contend that the cited combination of references neither
teaches nor suggests a process “wherein the fluopyram extends the shelf life
of strawberries, as claimed.” Id. at 17. Moreover, Appellants contend, the
“data shown in at least Tables 1—3 of the Specification demonstrate that the
claimed method extends the shelf life of strawberries, as claimed.” Id.
Mansfield, however, discloses that strawberries are among crop plants
to which its compounds, which include fluopyram, may be applied. See
Mansfield 8. Thus, similar to the situation as to claim 1, Mansfield
expressly suggests performing the sole positive process step recited in claim
6.
As noted above, moreover, the data shown in Tables 1—3 of the
Specification relate to a comparison between the inventive treatments and
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either an untreated plot or a plot treated with Elevate. See Spec. 13.
Because Mansfield describes and exemplifies pre-harvest treatment of crop
plants with fluopyram, whereas Appellants’ Example A does not involve a
comparison to Mansfield’s fluopyram-applying process, Appellants’
Example A does not involve a comparison to the closest prior art process of
record.
Claim 6, in addition, encompasses treating strawberries with
fluopyram as the sole fungicide. In contrast, the data asserted to show
unexpectedness with respect to claim 6 is based on the application of
fluopyram in combination with trifloxystrobine. See Spec. 13. Claim 6,
therefore, is not commensurate in scope with the evidence alleged to
demonstrate unexpected results. See In re Kulling, 897 F.2d 1147, 1149
(Fed. Cir. 1990) (“[OJbjective evidence of nonobviousness must be
commensurate in scope with the claims.”).
Because, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claim 6 would have been obvious to
an ordinary artisan in view of Mansfield, Hong, and Schirra, we affirm the
Examiner’s rejection of that claim over those references.
Claims 7 and 36
Claim 7 recites “[a] method according to claim 1, wherein said
fluopyram is applied to the crop and/or fruit and/or vegetable at a rate
ranging from 1 to 250 g/ha - based upon the pure active substance.” Br. 26.
Claim 36 recites “[a] method according to claim 1, wherein fluopyram
is applied to the crop and/or fruit and/or vegetable at a rate of 250 g/ha -
based upon the pure active substance.” Id. at 28.
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As noted above, Mansfield includes a working example in which its
compounds are sprayed onto cucumber plants to test the compounds’
capacity to inhibit infection by the fungus Botrytis cinerea. Mansfield 25—
26. Mansfield discloses that an application rate of 250 g/ha of compound
A-20 (fluopyram) “showed good to average effectiveness” against Botrytis
cinerea. Id. at 28. Because Mansfield, thus, expressly describes performing
the sole process step positively recited in claim 7 (applying fluopyram to a
crop and/or fruit and/or vegetable at a rate ranging from 1 to 250 g/ha), and
claim 36 (applying fluopyram to a crop and/or fruit and/or vegetable at a rate
of 250 g/ha), Appellants do not persuade us that Mansfield fails to teach or
suggest the claimed processes.
As to Appellants’ arguments regarding unexpected results in relation
to claims 7 and 36 (Br. 18, 22), as noted above with respect to claim 1, the
evidence advanced by Appellants does not involve a comparison to the
closest prior art process of record because Appellants do not compare a
process encompassed by claims 7 and 36 to Mansfield’s fluopyram-applying
process.
Because, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claims 7 and 36 would have been
obvious to an ordinary artisan in view of Mansfield, Hong, and Schirra, we
affirm the Examiner’s rejection of those claims over those references.
Claim 28
Claim 28 recites “[a] method according to claim 1, wherein fluopyram
is applied to the crop and/or fruit and/or vegetable prior to maturation of the
crop, fruit or vegetable.” Br. 27.
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As noted above, Mansfield discloses applying its compounds, which
include fluopyram, to “preventively control the phytopathogenic fungi of
crops.” Mansfield 7. Appellants, therefore, do not persuade us that
Mansfield fails to teach or suggest applying fluopyram to crops before the
crop matures.
As to Appellants’ arguments regarding unexpected results in relation
to claim 28 (Br. 21), as noted above with respect to claim 1, the evidence
advanced by Appellants does not involve a comparison to the closest prior
art process of record because Appellants do not compare a process
encompassed by claim 28 to Mansfield’s fluopyram-applying process.
Because, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claim 28 would have been obvious to
an ordinary artisan in view of Mansfield, Hong, and Schirra, we affirm the
Examiner’s rejection of that claim over those references.
Claim 29
Claim 29 recites “[a] method according to claim 1, wherein fluopyram
is applied to the crop and/or fruit and/or vegetable during the plant and fruit
growth prior to contamination event.” Br. 27.
As noted above, Mansfield discloses applying its compounds, which
include fluopyram, to “preventively control the phytopathogenic fungi of
crops.” Mansfield 7. Appellants, therefore, do not persuade us that
Mansfield fails to teach or suggest applying fluopyram to crops before
fungal contamination.
As to Appellants’ arguments regarding unexpected results in relation
to claim 29 (Br. 21), as noted above with respect to claim 1, the evidence
advanced by Appellants does not involve a comparison to the closest prior
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art process of record because Appellants do not compare a process
encompassed by claim 29 to Mansfield’s fluopyram-applying process.
Because, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claim 29 would have been obvious to
an ordinary artisan in view of Mansfield, Hong, and Schirra, we affirm the
Examiner’s rejection of that claim over those references.
Claims 34 and 35
Claim 34 recites “[a] method according to claim 1, wherein fluopyram
is applied to the crop and/or fruit and/or vegetable at a rate ranging from 30
to 150 g/ha - based upon the pure active substance.” Br. 28.
Claim 35 recites “[a] method according to claim 1, wherein fluopyram
is applied to the crop and/or fruit and/or vegetable at a rate of 150 g/ha -
based upon the pure active substance.” Id.
As the Examiner found (Ans. 2), Mansfield discloses that the “dose of
active material” is “preferably between 50 and 300 g/ha for applications in
foliar treatment” (Mansfield 10), an application dosage range which
significantly overlaps the range in claim 34, and which includes the dosage
rate recited in claim 35. Appellants, therefore, do not persuade us that
Mansfield fails to teach or suggest applying fluopyram at the dosages of
claims 34 and 35.
As to Appellants’ arguments regarding unexpected results in relation
to claims 34 and 35 (Br. 21, 22), as noted above with respect to claim 1, the
evidence advanced by Appellants does not involve a comparison to the
closest prior art process of record because Appellants do not compare a
process encompassed by claims 34 and 35 to Mansfield’s fluopyram-
applying process.
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Because, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claims 34 and 35 would have been
obvious to an ordinary artisan in view of Mansfield, Hong, and Schirra, we
affirm the Examiner’s rejection of those claims over those references.
Claims 38 and 39
Claim 3 8 recites a process similar to that recited in claim 1, discussed
above, except that claim 38 recites that the composition applied to the
crop/fruit/vegetable “compris[es] fungicides, wherein the fungicides consist
of fluopyram and optionally one or more further fungicides selected from
the group consisting of trifloxystrobin, tebuconazole, triadimenol,
pyrimethanil, fosetyl-aluminum, spiroxamine, and prothioconazole.” Br. 28
(emphasis). As discussed below, we agree with the Examiner that it would
have been obvious to combine Mansfield’s fluopyram with a number of the
fungicides recited in claim 38.
As is evident, however, because that combination is merely optional
in claim 38, claim 38 encompasses applying only fluopyram to the
crop/fruit/vegetable, as in claim 1. Accordingly, for the reasons discussed
above as to claim 1, we agree with the Examiner that the process of claim 3 8
would have been obvious to an ordinary artisan and, therefore, affirm the
Examiner’s rejection of that claim over Mansfield, Hong, and Schirra.
Because claim 39 does not change the optional nature of the combination
recited in claim 38, we also affirm the Examiner’s rejection of claim 39 for
the same reasons.
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Claim 40
Claim 40 recites “[a] method according to claim 1, wherein the shelf
life is extended at least one week compared to untreated fruits or
vegetables.” Br. 29.
Similar to claim 1, discussed above, because Mansfield teaches
applying the active agent required by claim 40, to plants encompassed by
claim 40, the application being performed at a time encompassed by claim
40, the Examiner had a reasonable basis for concluding that Mansfield’s
process would produce the result recited in claim 40.
As to Appellants’ arguments regarding unexpected results in relation
to claims 40 (Br. 21, 22), as noted above with respect to claim 1, the
evidence advanced by Appellants does not involve a comparison to the
closest prior art process of record because Appellants do not compare a
process encompassed by claim 40 to Mansfield’s fluopyram-applying
process.
Because, for the reasons discussed, Appellants do not persuade us that
the Examiner erred in concluding that claim 40 would have been obvious to
an ordinary artisan in view of Mansfield, Hong, and Schirra, we affirm the
Examiner’s rejection of that claim over those references.
Claim 9
Claim 8, from which claim 9 depends, recites “[a] method according
to claim 1, comprising applying a composition comprising fluopyram and a
further fungicide to the crop and/or to a fruit and/or vegetable thereof.” Br.
26-27.
Claim 9 recites “[a] method according to claim 8, wherein the further
fungicide comprises trifloxystrobin.” Id. at 27.
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Appellants’ arguments (Br. 18—20) do not persuade us that the
Examiner erred in concluding that the process recited in claim 9 would have
been obvious to an ordinary artisan.
As the Examiner found, Mansfield expressly teaches the desirability
of combining its compounds, which include fluopyram, with other
fungicides: “[t]he compounds of the invention can also be mixed with one
or more insecticides, fungicides, bactericides, attractant acaricides or
pheromones or other compounds with biological activity. The mixtures thus
obtained have a broadened spectrum of activity. The mixtures with other
fungicides are particularly advantageous.’ '’ Mansfield 7 (emphasis added).
Hong teaches a fungicidal mixture composed of two principal
fungicidal components, (a) and (b), in combination with an additional
fungicidal component (c). Hong, Abstract. Hong, like Mansfield, teaches
that its fungicide-containing mixtures can be applied to crop plants. Id. 12.
Hong, like Mansfield, teaches that its fungicide-containing mixtures can be
applied before harvesting:
Plant disease control is ordinarily accomplished by
applying an effective amount of a mixture of this invention,
typically as a formulated composition, either pre- or
postinfection, to the portion of the plant to be protected such as
the roots, stems, foliage, fruit, seeds, tubers or bulbs, or to the
media (soil or sand) in which the plants to be protected are
growing. The mixtures can also be applied to seeds to protect
the seeds and seedlings developing from the seeds.
Id. 1143. As the Examiner found, Hong teaches that trifloxystrobin was
known in the art to be a fungicide, among a list of other known fungicides,
suitable as component (c) for combination with its components (a) and (b).
Id. 1124.
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Thus, given Mansfield’s teaching that it was desirable to apply
fluopyram in combination other fungicides to crop plants prior to harvesting,
and given Hong’s teaching that trifloxystrobin was suitable for combination
with other fungicides applied to plants prior to harvesting, Appellants do not
persuade us (Br. 18—20) that an ordinary artisan lacked sufficient reason for,
or a reasonable expectation of success in, applying a combination of
fluopyram and trifloxystrobin to a crop, fruit, or vegetable plant prior to
harvest in order to prevent fungal infection. To the contrary, given the
discussed teachings in the cited references, we agree with the Examiner that
the process recited in claim 9 would have been prima facie obvious to an
ordinary artisan.
We acknowledge that Hong discloses trifloxystrobin in a longer list of
known fungicides that may be used in combination when applied to plants to
prevent fungal infection. See Hong 1124. As our reviewing court has
explained, however, that the prior art “discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
is especially true because the claimed composition is used for the identical
purpose taught by the prior art.” Merck & Co. Inc. v. Biocraft Labs. Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989). Thus, that trifloxystrobin was among a
number of other fungicides taught in Hong as being amenable to
combination with other fungicides for pre-harvest application to crops, does
not persuade us that it would have been unobvious to combine
trifloxystrobin with Mansfield’s fluopyram, particularly given Mansfield’s
express teaching of the desirability of combining fluopyram with other
fungicides.
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As to Appellants’ arguments regarding unexpected results in relation
to claim 9, we again acknowledge Appellants’ data in Tables 1—3 of the
Specification, as well as the data presented in the PowerPoint presentation at
pages 9 and 14. As discussed above with respect to claim 1, however, that
data is not derived from a comparison between the closest prior, Mansfield’s
fluopyram-applying process, and a process encompassed by claim 9.
Because Appellants’ comparison, therefore, is not a comparison to the
closest prior, Appellants do not persuade us that they have advanced
evidence of unexpected results sufficient to outweigh the Examiner’s
evidence of prima facie obviousness.
In sum, because a preponderance of the evidence supports the
Examiner’s conclusion that the process recited in claim 9 would have been
obvious to an ordinary artisan, we affirm the Examiner’s rejection of that
claim.
Claim 30
Claim 30 recites, “[a] method according to claim 8, wherein the
further fungicide comprises tebuconazole.” Br. 27.
As the Examiner found, in addition to trifloxystrobin, Hong includes
tebuconazole in its list of known fungicides suitable for combination with its
inventive fungicidal compounds (a) and (b). Hong 1124.
Given Mansfield’s teaching that it was desirable to apply fluopyram in
combination other fungicides to crop plants prior to harvesting, and given
Hong’s teaching that tebuconazole was suitable for combination with other
fungicides applied to plants prior to harvesting, we agree with the Examiner
that an ordinary artisan had ample reason for, and a reasonable expectation
of success in, applying a combination of fluopyram and tebuconazole to a
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crop, fruit, or vegetable plant prior to harvest in order to prevent fungal
infection. We, therefore, also agree with the Examiner that the process
recited in claim 30 would have been prima facie obvious to an ordinary
artisan.
As to Appellants’ contentions of unexpected results, we again
acknowledge Appellants’ data on pages 7, 11, and 13 of the PowerPoint
presentation. As discussed above with respect to claim 1, however, the data
presented on page 13 of the PowerPoint presentation is not derived from a
comparison between the closest prior, Mansfield’s fluopyram-applying
process, and a process encompassed by claim 30.
Pages 7 and 11 of the PowerPoint presentation show data for
compositions containing fluopyram by itself (LUNA® Privilege) and
compositions containing fluopyram and tebuconazole (LUNA® Experience).
PowerPoint presentation, pp. 7, 11. As is evident, however, the combination
of tebuconazole with fluopyram does not improve the resistance against
fungal infection, or increase the number of marketable fruits after storage, as
compared to applying fluopyram by itself. See id.
In particular, as to stone fruits, LUNA® Privilege (fluopyram by
itself) reduced the tested fungal infection rate to 8.3 % after the tested
storage period, whereas LUNA® Experience (fluopyram plus tebuconazole)
only reduced that level to 8.8%. PowerPoint presentation, p. 7. Similarly,
LUNA® Privilege (fluopyram by itself) provided 148 marketable fruits after
the storage period whereas LUNA® Experience (fluopyram plus
tebuconazole) provided only 147. Id. As to nectarines, LUNA® Privilege
and LUNA® Experience provided essentially the same resistance to the
tested fungus, both compositions increasing the time to reach 10% infection
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to 10 days. PowerPoint presentation p. 11. Appellants do not persuade us,
therefore, that adding tebuconazole to fluopyram yields an unexpected
improvement as compared to using fluopyram by itself, the process
described and exemplified in Mansfield, the closest prior art.
Because Appellants do not persuade us that they have advanced
evidence of unexpected results sufficient to outweigh the Examiner’s
evidence of prima facie obviousness, we affirm the Examiner’s rejection of
claim 30.
Claim 41
Claim 41 recites “[a] method according to claim 38, where the
fungicides consist of fluopyram and one or more further fungicides selected
from the group consisting of trifloxystrobin, tebuconazole, triadimenol,
pyrimethanil, fosetyl-aluminum, spiroxamine, and prothioconazole.” Br. 29.
As discussed above in relation to claims 9 and 30, given Mansfield’s
teaching that it was desirable to apply fluopyram in combination other
fungicides to crop plants prior to harvesting, and given Hong’s teaching that
trifloxystrobin and tebuconazole were suitable for combination with other
fungicides applied to plants prior to harvesting, we agree with the Examiner
that an ordinary artisan had ample reason for, and a reasonable expectation
of success in, applying a combination of fluopyram with trifloxystrobin
and/or tebuconazole to a crop, fruit, or vegetable plant prior to harvest in
order to prevent fungal infection. We, therefore, also agree with the
Examiner that the process recited in claim 41 would have been prima facie
obvious to an ordinary artisan.
Appellants’ arguments (Br. 24), do not persuade us to the contrary.
That the “consisting of’ language in claim 41 might exclude the presence of
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fungicides other than those specifically mentioned does not negate the fact
that, viewed together, Mansfield and Hong suggest that combining
fluopyram with either trifloxystrobin or tebuconazole for pre-harvest
application would have been desirable. As discussed above, moreover, we
are not persuaded that Schirra teaches away from the claimed invention.
Because a preponderance of the evidence supports the Examiner’s
conclusion that the process recited in claim 41 would have been obvious to
an ordinary artisan, we affirm the Examiner’s rejection of that claim.
Claim 3 7
Claim 37 recites “[a] method according to claim 8, wherein fluopyram
and the further fungicide is applied to the crop and/or fruit and/or vegetable
at a ratio of 1:1.” Br. 28.
As discussed above in relation to claims 9 and 30, given Mansfield’s
teaching that it was desirable to apply fluopyram in combination other
fungicides to crop plants prior to harvesting, and given Hong’s teaching that
trifloxystrobin and tebuconazole were suitable for combination with other
fungicides applied to plants prior to harvesting, we agree with the Examiner
that an ordinary artisan had ample reason for, and a reasonable expectation
of success in, applying a combination of fluopyram with trifloxystrobin
and/or tebuconazole to a crop, fruit, or vegetable plant prior to harvest in
order to prevent fungal infection.
As the Examiner found, Hong discloses that, when mixing multiple
fungicides, the fungicides listed as component (c) (among them
trifloxystrobin and tebuconazole) can be combined with fungicidal
components (a) and (b) in a wide range of ratios, including the 1:1 ratio
recited in claim 37. See Hong 1127 (“Of note are weight ratios between
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about 1:30 and about 300:1 (for example ratios between about 1:1 and about
30:1).”). Appellants’ arguments (Br. 22—23), therefore, do not persuade us
that the Examiner erred in finding that an ordinary artisan would have
reasonably inferred from that teaching that a 1:1 ratio would be suitable
when combining fluopyram with trifloxystrobin and/or tebuconazole as
suggested by the combination of Mansfield and Hong.
As to Appellants’ arguments regarding unexpected results in relation
to claim 37 {id. at 23), we again acknowledge Appellants’ data in Tables 1—3
of the Specification. As discussed above with respect to claim 1, however,
that data is not derived from a comparison between the closest prior,
Mansfield’s fluopyram-applying process, and a process encompassed by
claim 37.
Because a preponderance of the evidence, therefore, supports the
Examiner’s conclusion that the process recited in claim 37 would have been
obvious to an ordinary artisan, we affirm the Examiner’s rejection of that
claim.
SUMMARY
For the reasons discussed, we affirm the Examiner’s rejection of
claims 1—4, 6—9, and 27-43 under 35 U.S.C. § 103(a) for obviousness over
Mansfield, Hong, and Schirra.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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