Ex Parte Rieck et alDownload PDFPatent Trial and Appeal BoardMay 15, 201712705058 (P.T.A.B. May. 15, 2017) Copy Citation 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. Appeal 2015-004153 Application 12/705,058 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. 2 Appeal 2015-004153 Application 12/705,058 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. 3 Appeal 2015-004153 Application 12/705,058 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 4 Appeal 2015-004153 Application 12/705,058 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 5 Appeal 2015-004153 Application 12/705,058 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 6 Appeal 2015-004153 Application 12/705,058 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 7 Appeal 2015-004153 Application 12/705,058 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). 8 Appeal 2015-004153 Application 12/705,058 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 9 Appeal 2015-004153 Application 12/705,058 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 10 Appeal 2015-004153 Application 12/705,058 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. 11 Appeal 2015-004153 Application 12/705,058 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. 12 Appeal 2015-004153 Application 12/705,058 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 13 Appeal 2015-004153 Application 12/705,058 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. 14 Appeal 2015-004153 Application 12/705,058 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. 15 Appeal 2015-004153 Application 12/705,058 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. 16 Appeal 2015-004153 Application 12/705,058 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. 17 Appeal 2015-004153 Application 12/705,058 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. 18 Appeal 2015-004153 Application 12/705,058 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 19 Appeal 2015-004153 Application 12/705,058 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 20 Appeal 2015-004153 Application 12/705,058 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 21 Appeal 2015-004153 Application 12/705,058 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 22 Appeal 2015-004153 Application 12/705,058 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 23 Copy with citationCopy as parenthetical citation