NOVOZYMES BIOAG A/SDownload PDFPatent Trials and Appeals BoardJun 1, 20212021002215 (P.T.A.B. Jun. 1, 2021) 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. 15/960,886 04/24/2018 R. Stewart Smith 12141-US-CNT 3358 25908 7590 06/01/2021 NOVOZYMES NORTH AMERICA, INC. US PATENT DEPARTMENT 77 PERRYS CHAPEL CHURCH ROAD PO BOX 576 FRANKLINTON, NC 27525-0576 EXAMINER GREENE, IVAN A ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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@novozymes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte R. STEWART SMITH, ROBERT M. OSBURN, and JOHN W. KOSANKE Appeal 2021-002215 Application 15/960,886 Technology Center 1600 Before DONALD E. ADAMS, JENNIFER MEYER CHAGNON, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims directed to a method of enhancing plant growth and/or yield as lacking an adequate description and as being obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Novozymes BioAg A/S. (Appeal Br. 3.) Appeal 2021-002215 Application 15/960,886 2 STATEMENT OF THE CASE “Chemical fungicide and insecticide treatments have become widely used to protect crops from seedborne, soilborne, and foliar diseases and insect damage.” (Spec. 1.) “[A]lthough fungicide treatments generally improve the health of root systems and increase the plant stand, such treatments do not always ensure higher yields or improved vigor.” (Id.) “[L]ipochitooligosaccharides (LCOs), . . . are plant-inducing molecules.” (Spec. 1.) That is, according to Appellant’s Specification, they induce nodule formation on leguminous host plant plants, which are nitrogen fixing. (Id. at 1–2.) Appellant’s invention is the use of fungicides in combination with LCOs resulting in an enhanced plant characteristic such as yield. (Spec. 2.) CLAIMED SUBJECT MATTER Claims 21, 25, 34, 36, 37, 39–41, and 43 are pending and before us on appeal. Claims 23, 26, 28, 30, 35, 38, and 42 remain pending but are withdrawn from consideration. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A method of enhancing plant growth and/or yield, said method comprising treating plant seeds with a) a lipo-chitooligosaccharide, and b) at least one pair of fungicides selected from the group consisting of: i) captan and metalaxyl, and ii) fludioxonil and mefenoxam, in amounts sufficient to produce a greater than additive enhancement of the growth and/or yield of plants grown from the treated seeds, relative to plants grown from control seeds treated with the lipo-chitooligosaccharide alone or the at least one pair of fungicides alone. Appeal 2021-002215 Application 15/960,886 3 (Appeal Br. 9 (Claims Appendix).) In response to a Restriction requirement, Appellant elected without traverse to prosecute the following species: the fungicide being captan and metalaxyl, the plant being treated being corn, and the plant material being treated being seeds. (See Non-Final Action dated September 6, 2019, at 3.) Claims 21, 25, 34, 36, 37, 39–41, and 43 read on the elected species. The issue on appeal, therefore, is limited to the patentability of the elected species, and we take no position respecting the patentability of the broader generic claims. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). Appeal 2021-002215 Application 15/960,886 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Merritt et al. WO 2001/60159 A1 2001 Chen et al. WO 2004/093542 A1 2004 Lipps, Patrick E. et al. Bulletin-639A: Efficacy of Seed Treatment Fungicides for Agronomic Crops in Ohio, The Ohio State University-Extension 2001 G.P. Munkvold and J.K. O’Mara Laboratory and Growth Chamber Evaluation of Fungicidal Seed Treatments for Maize Seedling Blight Caused by Fusarium Species, 86 Plant Disease, 143– 50 2002 Pritihiviraj, B. et al. A host-specific bacteria-to-plant signal molecule (Nod factor) enhances germination and early growth of diverse crop plants, 216 Planta 437–45 2003 REJECTIONS Claims 21, 25, 34, 36, 37, 39–41, and 43 are rejected under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Appeal 2021-002215 Application 15/960,886 5 Claims 21, 25, 34, 36, 37, 39–41, and 43 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Merritt, Chen, Prithiviraj, Munkvold,2 and Bulletin-639A.3 DISCUSSION Written Description “The descriptive text needed to meet th[e written description] requirement[] varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for lack of adequate descriptive support, it is incumbent upon the Examiner to establish that the originally- filed disclosure would not have reasonably conveyed to one having ordinary skill in the art that Appellant had possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Examiner found that while field trials described in Examples 11 and 13 “clearly show improvements that are more than additive, as compared to the Nod factor and the CAPTAN + ALLEGIANCE field trials,” (Final Action 12), “the examiner sees no support for extending the specific amounts used in these examples to any ‘amounts’ as now claimed” (id. at 15). 2 The Examiner mistakenly identifies this reference as Mukvoid. 3 The first named author of this bulletin is identified as Patrick E. Lipps. However, we will refer to this reference in the same manner as the Examiner to avoid confusion. Appeal 2021-002215 Application 15/960,886 6 We do not sustain the Examiner’s rejection. The Examiner has conceded that the Specification describes two examples demonstrating the use of the claimed ingredients in an amount that achieves a greater than additive enhancement. The Examiner has not provided evidence or reasons why a person skilled in the art would not recognize from the Specification that Appellant was in possession of the method as claimed with respect to other amounts of the Nod factor and the CAPTAN + ALLEGIANCE sufficient to produce a greater than additive enhancement. In re Wertheim, 541 F.2d 257, 263–64 (CCPA 1976) (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims”; if the PTO does so, the applicant bears the burden of rebutting this showing.). The mere fact that the Specification only exemplifies one set of amounts is not a sufficient reason by itself to conclude the claims are not adequately described. The claim at issue is not directed to a broad generic chemical compound invention in which one might not reasonably be able to determine if a next adjacent homolog would be capable of achieving the claimed result. See Wertheim, 541 F.2d at 264. Similar to the case in Wertheim, the Examiner, here, has done nothing more than to argue lack of literal support, which is not enough. If lack of literal support alone were enough to support a rejection under § 112, then the statement of In re Lukach, supra, 442 F.2d at 969 . . . , that “the invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of § 112,” is empty verbiage. Id. at 265 (emphasis added). Given the Examiner’s lack of reasoning and evidence to support the assertion that the Specification does not reasonably Appeal 2021-002215 Application 15/960,886 7 convey to one having ordinary skill in the art that Appellant had possession of “any ‘amounts’” of the Nod factor and the CAPTAN + ALLEGIANCE beyond that set forth in Examples 11 and 13, we reverse the Examiner’s rejection of claims 21, 25, 34, 36, 37, 39–41, and 43 under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Obviousness The Examiner found that Merritt teaches applying synthetic fungicides to crops, which is a wide spread practice, can increase crop yield by controlling phytopathogenic fungi in crops, and that typically the fungicides are applied directly to the plant propagation materials, such as seeds before sowing and/or “in foliar or furrow applications.” (Final Action 18.) The Examiner further found that the crops include corn, and the fungicides used include captan and metalaxyl, as well as mixtures of fungicides. (Id. at 19.) The Examiner further found that Merritt teaches that another common practice used to increase crop yield is to inoculate seeds with a nitrogen- fixing bacteria, which promotes plant growth. (Final Action 18.) Merritt explains that the bacteria forms nodules on the plant roots and the bacteria is sustained by the plant and in turn the bacteria fixes atmospheric nitrogen into a useable form for the plant. (Id.) The Examiner noted that Merritt further teaches that fungicidal composition may be toxic to the nitrogen- fixing bacteria. (Id.) The Examiner recognized that Merritt does not teach treating crops with an LCO “or the express motivation for the combination of captan and Appeal 2021-002215 Application 15/960,886 8 metalaxyl in corn seed treatment.” (Final Action 20.) The Examiner found, however, that adding an LCO and using captan and metalaxyl together would have been obvious from the teachings of Chen, Prithiviraj, Munkvold, and Bulletin-639A. (Id. at 23–24.) In particular, regarding the combination of fungicides, the Examiner found that Munkvold teaches that in the US, the combination of captan with metalaxyl is a major seed treatment for corn, and has been used since 2002. (Id. at 22, 23.) In addition, the Examiner found that Bulletin-639A teaches that these different fungicides have activity for controlling different diseases. (Id. at 22–23.) Thus, the Examiner concludes that the foregoing teachings would have motivated one of ordinary skill in the art to treat corn with both captan and metalaxyl. (Id. at 24.) Regarding the inclusion of an LCO, the Examiner found that Chen teaches the use of LCOs in legumes and non-legumes enhances plant growth and plant yield, and demonstrates that LCO increased grain yield of corn. (Final Action 20 (citing Chen Experiment 9).) The Examiner further found that Prithiviraj teaches LCOs, also called Nod factors, are “essential” for establishing successful nitrogen fixing in the symbiotic use of rhizobia bacteria with legumes. (Id.) Moreover, the Examiner found that Prithiviraj teaches Nod factor treatments increased the germination of corn seeds when compared with a control. (Id. at 21 (citing Prithiviraj 439, 440, and Figures 1–3).) The Examiner concludes that one of ordinary skill in the art would have been motivated to include an LCO in the treatment of corn crops to promote germination as taught by Prithiviraj and to enhance corn grain yield as taught by Chen. (Id. at 24.) The Examiner explained that the inclusion of LCO and a combination of metalaxyl and captan “would rid the plant of Appeal 2021-002215 Application 15/960,886 9 harmful fungi and promote plant growth” and thus both would “have a positive effect on crop yields.” (Id.) We agree with the Examiner’s finding regarding the teachings of the prior art and that the prior art renders obvious the claimed invention. Appellant does not dispute the Examiner’s findings that the prior art teaches combining captan and metalaxyl to treat corn crops or that the prior art teaches that treatment with such fungicides is known to increase crop yield, including in corn. Nor does Appellant dispute that Chen teaches that use of LCOs with corn increased grain yield or that Prithiviraj teaches that LCOs increased the germination of corn seeds compared to control. Instead, Appellant argues that the rejection by the Examiner is in error because (1) “it is undermined by” the Examiner’s position “that one [of] ordinary skill in the art would not have believed Appellant possessed such a combination” and (2) it rests “on the naked assumption that combining a lipo- chitooligosaccharide with at least one pair of the recited fungicides will inherently produce a greater than additive effect,” ignoring “the possibility that combinations of lipo-chitooligosaccharides and fungicides may be counterproductive . . . thus producing a less than additive effect.” (Appeal Br. 7.) We do not find Appellant’s arguments persuasive. Addressing argument one, for the reasons noted above, we do not affirm the Examiner’s written description rejection. Regarding argument two, we note that the Examiner can satisfy his burden of establishing a prima facie case by objective teachings in the prior art or knowledge generally available to one of ordinary skill in the art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). Here, the Examiner has established from the prior art that it was known that application of Appeal 2021-002215 Application 15/960,886 10 fungicides prevents loss of crop, including corn, to disease. (See, e.g., Merritt (“2. BACKGROUND OF THE INVENTION”); Munkvold 143; Bulletin-639A (Table 2).) The Examiner has also established that application of LCO’s to corn has been demonstrated to increase grain yield (see, e.g., Chen (Experiment 9)), and enhance germination of seeds (see, e.g., Prithiviraj 439). Thus, the fungicides are taught to control phytopathogenic fungi in crops and the LCO’s are taught to improve growth and yield of crop plants. Moreover, the Examiner explained that the teachings of the prior art would provide one of ordinary skill in the art with a reasonable expectation of a more than additive increase in grain yield. In particular, the Examiner explained, and Appellant does not contest: One of ordinary skill in the art would have recognized that the mechanism of action of fungicides is different from the nod factors, the fungicides preventing different fungal diseases based upon the chemical structure of the particular fungicide, and that nod factors promote growth. (Final Action 26.) The Examiner further explained that in light of the prior art teachings one would have expected that applying the nod factor (lipo-chitooligosaccharides) alone would have promoted growth in plants not lost to disease, while applying the fungicides alone would have prevented fungal disease (i.e. more plant grow to maturity) but not promoted plant growth as compared to those treated with the nod factor. (Id.) Thus, combining the two would have been expected to result in a more than additive effect because there would be expected to be “lower plant losses in combination with promoted growth” in all plants not lost, which “would have provided two distinct factors both promoting crop yields.” (Id. at 26–27.) Appeal 2021-002215 Application 15/960,886 11 In other words, the Examiner’s position, with which we agree, is that not only would it have been expected that plants would be prevented from being lost due to phytopathogenic fungi thereby increasing crop yield, but that the use of LCO’s would have been expected to increase the grain yield of that enhanced crop yield, which would necessarily result in a more than additive effect of the application of LCO alone (which would only provide an increase in grain yield to crop not lost to fungal infection) and fungicide alone (which would only provide an increase in grain yield due only to reduction in loss of crop to fungal infection). Based on the foregoing, we conclude that the Examiner has established a prima facie case of obviousness by objective teachings in the prior art. As such it was up to Appellant to “present objective evidence tending to support a conclusion of nonobviousness.” Fritch, 972 F.2d at 1265. Instead, Appellant merely presents attorney argument about a “possibility that combinations of lipo- chitooligosaccharides and fungicides may be counterproductive, that the actives may interfere with one another, thus producing a less than additive effect.” (Appeal Br. 7.) Appellant does not support that conjecture with any evidence of known interference. Indeed, as the Examiner stated in the Answer, to which Appellant did not respond: the examiner finds no evidence that one of ordinary skill would have expected the LCOs and other chemicals such as (i) captan and metalaxyl or (ii) fludioxonil and mefenoxam to interfere such that they would produce less than an additive enhancement of the growth and/or yield of plants grown from the treated seeds. (Ans. 13–14.) “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appeal 2021-002215 Application 15/960,886 12 Thus, we affirm the Examiner’s rejection of claims 21, 25, 34, 36, 37, 39–41, and 43 as being obvious from Merritt, Chen, Prithiviraj, Munkvold, and Bulletin-639A. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 25, 34, 36, 37, 39– 41, 43 112, first paragraph Written Description 21, 25, 34, 36, 37, 39– 41, 43 21, 25, 34, 36, 37, 39– 41, 43 103(a) Merritt, Chen, Prithiviraj, Munkvold, Bulletin-639A 21, 25, 34, 36, 37, 39– 41, 43 Overall Outcome 21, 25, 34, 36, 37, 39– 41, 43 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation