Ex Parte Wright et alDownload PDFPatent Trial and Appeal BoardMar 21, 201610542582 (P.T.A.B. Mar. 21, 2016) 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. 10/542,582 04/18/2006 John F. Wright 60298-USA 6956 7590 03/21/2016 FMC Corporation Patent Administrator 1735 Market Street Philadelphia, PA 19103 EXAMINER PURDY, KYLE A ART UNIT PAPER NUMBER 1611 MAIL DATE DELIVERY MODE 03/21/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOHN F. WRIGHT and JAMES B. BALLARD __________ Appeal 2013-010514 Application 10/542,582 Technology Center 1600 __________ Before LORA M. GREEN, JEFFREY N. FREDMAN, and RICHARD J. SMITH, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a method of controlling subterranean termites. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as FMC Corporation (see App. Br. 2). Appeal 2013-010514 Application 10/542,582 2 Statement of the Case Background “Control of soil-borne termites can be accomplished by strategic application of a termiticide to the soil where there is a termite infestation, to provide a continuous chemical barrier in the soil” (Spec. 1, ll. 18–20). The Claims Claim 5 is on appeal.2 It reads as follows: 5. A method for controlling subterranean termites of the species Reticulitermes flavipes, comprising applying a termiticidally effective amount of a liquid composition comprising i) from 10 to 50 parts per million of bifenthrin and ii) from 100 to 200 parts per million of acetamiprid in an aqueous medium to a locus selected from a termite- infested structure, a structure that is expected to be termite- infested, or a location adjacent to said structures. The Issue The Examiner rejected claim 5 under 35 U.S.C. § 103(a) over Otsu3 and Asrar4 (Ans. 3–5). The Examiner finds that Otsu teaches “termite controlling compositions comprising a compound of the formula (I), such as N-cyano- N-(2-chloro-5-pyridylmethyl)-N'-methylacetamidine (IUPAC name acetamiprid), and a pyrethroid compound, such as cyfluthrin and permethrin” (Ans. 3). The Examiner finds that the concentrations of the compound of the formula (I) and the pyrethroid compound can be in the 2 Claims 1–4 and 6–10 were cancelled (see Non-Final Action 8/15/2011 and Final Action 1/26/2012). 3 Otsu et al., US 5,880,142, issued Mar. 9, 1999. 4 Asrar et al., US 2002/0115565 A1, published Aug. 22, 2002. Appeal 2013-010514 Application 10/542,582 3 range of about 0.0001 to about 0.1% by weight (id.). The Examiner converts the numbers to 1 parts per million (ppm) to 1000 ppm and finds that the “claimed ranges overlap or lie inside ranges disclosed by the prior art” (Ans. 4). The Examiner finds that Asrar teaches that “[f]ormulation 76 of Table 1 provides a combination of bifenthrin and acetamiprid as a useful pesticidal composition” against Reticulitermes [termites] (Ans. 4–5). The issue with respect to this rejection is: Have Appellants have provided evidence of unexpected synergistic results, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non- obviousness? Findings of Fact 1. According to the Specification, The following calculation determined whether the combination treatments provided enhanced activity over what would be expected based on the activity of each active ingredient separately: (Spec. 7, ll. 16–20)5. 5 Appellants note that “this formula is that disclosed by Colby, Robert S. in Weeds, 15(1):20-22 (1967) for a combination of two active ingredients” (App. Br. 6) (hereinafter “the Colby formula”). Appeal 2013-010514 Application 10/542,582 4 2. Table 2 of the Specification is reproduced: (Spec. 7, l. 23 to 8, l. 4). 3. Otsu teaches “termite-controlling agent compositions” comprising “N-cyano-N-(2-chloro-5-pyridylmethyl)-N'-methylacetamidine” and a pyrethroid compound (Otsu, col. 2, ll. 10–12; col. 4, ll. 43–44). 4. Otsu teaches that representative examples of pyrethroid compounds include (Otsu, col. 5, l. 44– col. 6, l. 18). 5. Otsu teaches that: “the concentrations of the effective ingredients can be in the range of about 0.0001 to about 0.1% by weight, preferably about 0.0002 to about 0.01% by weight” (Otsu, col. 9, ll. 23–25). Appeal 2013-010514 Application 10/542,582 5 6. Table 1 of Asrar is reproduced in relevant part below: Table 1 teaches that “a seed can be treated with any of the combinations of combinations of insecticides that are shown” (Asrar ¶ 46). 7. Asrar teaches that: “[t]he target pest for the present invention is . . . Reticulitemes ssp” (Asrar ¶¶ 53, 60). 8. Asrar teaches that: “[w]hen two components are used, the relative amounts of the two insecticides can range from 1:1000 to 1000:1, by weight. It is preferred, however, that the weight ratio of the two insecticides range from 1:100 to 100:1, more preferred is a ratio of 1:10 to 10:1, and yet more preferred is a ratio of 1:3 to 3:1” (Asrar ¶ 85). 9. Asrar teaches that: “whether a combination of insecticides provided synergy in protection against cutworm damage can be calculated as described by Colby, Robert. S., in Weeds, 15(1):20-22 (1967). The threshold value (stated as % of control) for synergy of a combination was calculated as =(% of control for treatment A)*(% of control for treatment B)/100(n-1); where n=number of active ingredients in the combination” (Asrar ¶ 82). Principles of Law The burden of demonstrating unexpected results rests on the party asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appeal 2013-010514 Application 10/542,582 6 In addition, “objective evidence of nonobviousness must be commensurate in scope with the claims.” In re Hulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990). Analysis We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Ans. 3–5; FF 1–9) and agree that the claims are rendered obvious by Otsu and Asrar. We address Appellants’ arguments below. Appellants contend “while the term ‘synergy’ is not specifically employed” in the Specification, “the Colby formula above is employed to show ‘enhanced activity’” (App. Br. 6; FF 1). Appellants contend that “[a]s Asrar et al. use this same formula to determine ‘synergy’, it is clear that synergy has been demonstrated in the present specification” (App. Br. 6; FF 9). Appellants contend that “the actual activities of bifenthrin + acetamiprid in the present application show increases of 18–50 percentage points in termiticidal rates across various possible combinations compared with expected rates. The 10 ppm bifenthrin + 100 ppm acetamiprid combination is more than 3 times as effective as expected” (App. Br. 7). We are not persuaded. Asrar teaches that the combination of bifenthrin and acetamiprid is expected to “provide synergistic insecticidal activity” (FF 6). “Synergism, in and of itself, is not conclusive of unobviousness in that synergism might be expected.” In re Kollman, 595 F.2d 48, n.6 (CCPA 1979). “Expected beneficial results are evidence of obviousness of a claimed invention. Just as unexpected beneficial results are evidence of unobviousness.” In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Appeal 2013-010514 Application 10/542,582 7 Therefore, the ordinary artisan would have reasonably expected some degree of synergism for this particular pesticidal combination based on the teachings of Asrar (FF 6). Appellants have not provided evidence such as a Declaration that demonstrated that the results obtained would have been unexpected in any way. Instead, Appellants rely upon attorney argument re- analyzing data in a manner not discussed by the Specification. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). To the extent that Appellants rely upon the Colby formula, we note that the Examiner finds that “Colby’s formula underestimates on every account . . . is not particularly reliable . . . is imperfect/inadequate at predicting the synergistic activities of the combinations . . . is useful only as a starting point to determine if a combination has the potential to exhibit synergy” (Ans. 9). Appellants concede that “the Examiner is literally correct that the Colby formula does not determine whether synergism will be present – Colby only determines what control is expected” (Reply Br. 5), but contend that “this formula has been widely accepted by both the industry and the Patent Office as a measurement of synergy” (id. at 6). Appellants contend that when calculated with the Colby formula, their data results in “increases of 18-50 percentage points in termiticidal rates across various possible combinations compared with expected rates” (App. Br. 7) while Otsu’s data “discloses that a percentage increase of about 12- 22%” (App. Br. 9). We do not find this evidence persuasive of unexpected results. Consistent with Harris, the slightly larger increase in termiticidal rates was not evidenced to be unexpected relative to the teachings of Otsu or Asrar by Appeal 2013-010514 Application 10/542,582 8 Declaration evidence, only by post-hoc calculations by Appellants attorney, and in Harris, the “32–43% increase in stress-rupture life, however, does not represent a ‘difference in kind’ that is required to show unexpected results” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Appellants contend that “one of ordinary skill would appreciate that ‘enhanced effects’ which are ‘above and beyond’ those anticipated based on the efficacy of each active ingredient alone are demonstrative of synergy” (Reply Br. 5). We are not persuaded that even if “enhanced effect” is equated with synergy, it provides evidence of unexpected results. Not every synergistic improvement is unexpected, particularly here where Asrar expressly teaches to expect synergy from the same combination of insecticides (FF 6). See In re Huang, 100 F.3d 135, 139 (Fed.Cir.1996) (holding that claimed ranges must “produce a new and unexpected result which is different in kind and not merely in degree from results of the prior art”). Moreover, even if the Colby model would have been accepted as a measure of synergy by one of ordinary skill in the art, we are not persuaded that the argued 3.01 ratio improvement (see App. Br. 7) over the alleged expected value in a single experiment (out of four) is sufficient, when weighed with the prima facie case of obviousness, to demonstrate non- obviousness in this case commensurate in scope with the broader claims. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“[W]e hold that even if Pfizer showed that amlodipine besylate exhibits unexpectedly superior results, this secondary consideration does not overcome the strong showing of obviousness in this case. Although Appeal 2013-010514 Application 10/542,582 9 secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”) Conclusion of Law The evidence of record supports the Examiner’s conclusion that Otsu and Asrar render claim 5 obvious. SUMMARY We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as obvious over Otsu and Asrar. 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 Copy with citationCopy as parenthetical citation