AMMERMANN, Eberhard et al.

Patent Trials and Appeals Board

Oct 9, 2019

14799692 - (D) (P.T.A.B. Oct. 9, 2019)

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.
14/799,692 07/15/2015 Eberhard AMMERMANN 2903925-453001 8866
84331 7590 10/09/2019
McBee Moore Woodward & Vanik IP, LLC
7900 Westpark Drive, Suite A100
McLean, VA 22102
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
cgmoore@mmwvlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EBERHARD AMMERMANN, REINHARD STIERL,
GISELA LORENZ, SIEGFRIED STRATHMANN,
KLAUS SCHELBERGER, V. JAMES SPADAFORA,
and THOMAS CHRISTEN
____________

Appeal 2018-009074
Application 14/799,692
Technology Center 1600
____________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to a fungicidal mixture comprising prothioconazole and
trifloxystrobin and methods involving the use of that mixture. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BASF SE and Bayer Intellectual
Property as the real parties in interest. App. Br. 2. Herein, we refer to the
Final Action mailed February 1, 2018 (“Final Act.”); Appellant’s Appeal
Brief filed March 15, 2018 (“App. Br.”); and Examiner’s Answer mailed
July 17, 2018 (“Ans.”).
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Application 14/799,692

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STATEMENT OF THE CASE
Claims 12, 15–27, 29, and 30 are on appeal and can be found in the
Claims Appendix of the Appeal Brief. Claims 12 and 16 are independent
and representative of the claims on appeal. They read as follows:
12. A fungicidal mixture comprising (i) prothioconazole
and/or a salt or adduct thereof, and (ii) trifloxystrobin and/or a
salt and/or adduct thereof, in a synergistically effective amount
and wherein the weight ratio of prothioconazole and/or salt
and/or adduct to trifloxystrobin and/or salt and/or adduct is
from 10:1 to 1:10.

16. A method for controlling harmful fungi and/or a habitat
thereof and/or one or more plants, seeds, soils, areas materials
or spaces desired to be kept free from said harmful fungi, said
method comprising treating with (i) prothioconazole and/or a
salt or adduct thereof, and (ii) trifloxystrobin and/or a salt
and/or adduct thereof, in a synergistically effective amount, and
wherein the weight ratio of prothioconazole and/or salt and/or
adduct to trifloxystrobin and/or salt and/or adduct is from 10:1
to 1:10.
App. Br. 42.
Appellant seeks review of Examiner’s rejection of claims 12, 15–27,
29, and 30 under 35 U.S.C. § 103 as unpatentable over Dutzmann2 in view
of Duvert.3 App. Br. 6.

2 Stefan Dutzmann et al., WO 98/47367, published Oct. 29, 1998
(“Dutzmann”). The citations herein refer to the English language
counterpart U.S. Pat. No. 6,306,850 B1.
3 Patrice Duvert, WO 00/47047, published Aug. 17, 2000 (“Duvert”). The
citations herein refer to the English language counterpart U.S. Pat. No.
6,797,301 B1.
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The issue is: Does the preponderance of evidence of record support
Examiner’s conclusion that the cited prior art renders obvious Appellant’s
claims?
Analysis
Examiner finds Dutzmann teaches combinations of prothioconazole
with other fungicides, including azoxystrobin. Ans. 3. In particular,
Examiner determines “Dutzmann teaches that synergism can be achieved
when prothioconazole and azoxystrobin are employed at a weight ratio” that
overlaps with the range in claims 12 and 16. Id.; see also Final Act. 4.
Examiner finds “Duvert teaches that strobilurin fungicides like azoxystrobin
and trifloxystrobin are functionally equivalent for their ability to inhibit
mitochondrial respiration in fungi.” Ans. 4; Final Act. 5. Thus, Examiner
determines it would be obvious to use trifloxystrobin in place of
azoxystrobin in the combination taught in Dutzmann. Ans. 4–5; Final Act.
5–6. According to Examiner, “it would be reasonable to expect a synergistic
composition” based on Dutzmann’s teaching of synergy in the combination
of “prothioconazole and azoxystrobin” and therefore “the simple
subst[itution] of trifloxystrobin for the azoxystrobin would yield predictable
results.” Final Act. 3.
Appellant argues that Examiner’s rejection should be reversed for
three reasons. First, Appellant contends “the rejection . . . is improper
because [Examiner] points to no specific reason why azoxystrobin would
have been selected––from among the numerous other fungicides in
Dutzmann that allegedly showed synergy with prothioconazole––as a
starting point from which to make modifications.” App. Br. 14. Second,
Appellant argues that azoxystrobin and trifloxystrobin are not “functionally
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equivalent” and therefore “there would have been no reasonable expectation
of success of synergy with a combination of prothioconazole and
trifloxystrobin.” Id. at 30–35. Third, Appellant urges that “[e]ven if a prima
facie case for obviousness was made, the evidence of unexpected results,”
specifically synergistic efficacy of the combination over the individual
components, “and commercial success outweighs” Examiner’s prima facie
showing. See id. at 36–38 (citing, inter alia, Declaration of Dr. Egon Haden
dated March 28, 2013 (“Haden Decl.”)).
Upon considering the evidence cited by the Examiner, and the
evidence of unexpected results presented by Appellant, we determine that
the preponderance of the evidence of record does not support the Examiner’s
conclusion of obviousness. As discussed below, Appellant’s evidence of
unexpected results is sufficient to outweigh the evidence of obviousness.
We begin by noting that we are not persuaded by Appellant’s “lead
combination” argument. See App. Br. 14–16. The prior art here provides a
reason for selecting the combination of prothioconazole and azoxystrobin,
that is, the data in Dutzmann demonstrating that this combination provided a
synergistic increase in fungicidal efficacy against the fungi in Examples 1
and 4. Indeed, as Appellant points out, the combination of azoxystrobin and
prothioconazole is one of only eight combinations described in multiple
examples in Dutzmann. See App. Br. 17–18 (identifying azoxystrobin as
one of eight compounds combined with prothioconazole in two or more of
Dutzmann’s examples). Appellant urges that some of the other seven
combinations would be “more attractive lead combinations” because they
exhibited “more synergy.” See id. at 18–26. Even if that were so, the lead
compound, or, in this case, lead combination, analysis is not limited to the
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selection of the single best combination for further development. See Altana
Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1009 (Fed. Cir.
2009). As our reviewing court has observed, so limiting the analysis would
“present a rigid test similar to the teaching-suggestion-motivation test that
the Supreme Court explicitly rejected in KSR.” Id. at 1008 (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)); see also Daiichi Sankyo Co.
v. Matrix Labs., Ltd., 619 F.3d 1346, 1354 (Fed. Cir. 2010) (“[T]he lead
compound analysis must, in keeping with KSR, not rigidly focus on the
selection of a single, best lead compound.”). Here, the data in Dutzmann
provides a reason for selecting azoxystrobin, perhaps along with the handful
of other compounds that also exhibited promising results, for further
development in combination with prothioconazole.
We also agree that Examiner has articulated a sufficient rationale for
the substitution of trifloxystrobin for azoxystrobin in Dutzmann’s
combination. Duvert teaches that azoxystrobin and trifloxystrobin both act
by inhibiting mitochondrial respiration and therefore may be used
interchangeably in the fungicide combinations described therein. Duvert
2:17–28. As Examiner determined, that teaching is sufficient to support a
prima facie case of obviousness.
Appellant’s claims are distinguished, however, by evidence
demonstrating an unexpected, synergistic increase in efficacy for the
claimed combination. The Specification in examples 1 and 2 shows that the
efficacy observed for the combination of trifloxystrobin and prothioconazole
was greater than the efficacy calculated from the individual components for
all of the concentrations tested. See Spec. 17–24. While some synergy
might be expected based on Dutzmann, the data in the Specification supports
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that the degree of the synergy Appellant observed by combining
trifloxystrobin with prothioconazole would have been unexpected. For
instance, example 2 shows efficacy of as much as 67% for the claimed
combination, as compared to 0% for each compound individually. Compare
Dutzmann 25 (Table 1) (reporting observed efficacy of 75% versus a
calculated efficacy of 59% for the combination of prothioconazole and
azoxystrobin in a 1:5 ratio).
The Haden Declaration further evidences unexpected results
stemming from the claimed combination. The Haden Declaration reports
data for tests comparing the claimed combination of trifloxystrobin and
prothioconazole to the combination of azoxystrobin and prothioconazole
taught in Dutzmann. Haden Decl. 5. According to these data, the claimed
combination outperformed the prior art combination. See id. at 6
(concluding “these tests demonstrate that mixtures of prothioconazole with
trifloxystrobin are consistently more effective compared to mixtures of
prothioconazole with azoxystrobin . . . by lower numbers of pustules (infest
number) and higher efficacy (Abbott) percentages in every experiment
performed.”). In addition, the combinations in the Haden Declaration were
tested against “Puccinia Recondita (Brown Rust on Wheat).” Id. at 4.
Appellant points to evidence demonstrating that it was known in the art that
azoxystrobin had “good efficacy” against Puccinia Recondita, whereas
trifloxystrobin had only “moderate efficacy” against that fungi. See Bartlett4
656 (Table 4). Thus, Bartlett evidences that one of ordinary skill in the art
would expect the combination of trifloxystrobin and prothioconazole to be

4 Dave W. Bartlett et al., The Strobilurin Fungicides, 58 PEST MANAGEMENT
SCI. 649–62 (2002) (“Bartlett”).
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less effective against Puccinia Recondita than the combination of
azoxystrobin with prothioconazole. In this regard, the results in the Haden
Declaration evidencing that, in fact, the opposite is true are an unexpected
“difference in kind” from what one of skill would reasonably predict from
the prior art. See Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1307 (Fed.
Cir. 2015) (where the prior art taught that the addition of component to a
formulation would either “have no impact . . . or decrease” a property, the
inventor’s discovery that the “opposite was true . . . is an unexpected
difference in kind that supports nonobviousness”) (citations omitted).
Considering “the entire merits of the matter” in light of Appellant’s
evidence of synergy and unexpected results, we determine that the
preponderance of the evidence does not support Examiner’s obviousness
rejection. See In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986).
Accordingly, we reverse.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
12, 15–27,
29, 30
103 Dutzmann,
Duvert
12, 15–27,
29, 30

REVERSED