NOVOZYMES BIOAG A/S

Patent Trials and Appeals Board

Jun 1, 2021

2021002215 (P.T.A.B. Jun. 1, 2021)

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.)
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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.
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(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).
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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.
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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.

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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
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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
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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
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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
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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.)
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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).
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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