David SANDS et al.

Patent Trials and Appeals Board

Dec 2, 2020

2020001928 (P.T.A.B. Dec. 2, 2020)

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.
15/236,897 08/15/2016 David SANDS 16193-000004-US 7582
29906 7590 12/02/2020
LKGLOBAL
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
EXAMINER
LIU, SUE XU
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
12/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SANDS and WAYNE VINJE
Appeal 2020-001928
Application 15/236,897
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–15.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as the inventors
David Sands and Wayne Vinje. Appeal Br. 3.
2 Claims 2 and 16–19 have been cancelled. Appeal Br. 18, 20 (Claims
App.).
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STATEMENT OF THE CASE
The Specification states that “[m]ost modern chemical herbicides
inhibit a single biosynthetic[]enzyme in the target plant,” which “renders the
plant incapable of producing metabolites essential for plant growth or
defense and eventually leads to death of the plant.” Spec. ¶ 3. In this
context, the Specification further states that “[f]eedback inhibition of
biosynthetic enzymes in [certain] amino acids pathways is . . . well
documented.” Id. ¶ 4. In particular, the Specification states:
In higher plants and bacteria, lysine, threonine, and
methionine are synthesized in a branched pathway from
aspartate. The activity of the first enzyme in this pathway
(aspartate kinase) is regulated by the concentrations of
lysine and threonine. The activity of the third enzyme in
the pathway is regulated by the concentration of
methionine. Hence, the exogenous application of one of
the end product amino acids leads to repression of the
entire pathway, resulting in depletion of the other two
amino acids, and eventual starvation.
Id. (citations omitted).
According to the Specification, “the present disclosure relates to
herbicides for plants and more particularly herbicides for plants including at
least one amino acid.” Spec. ¶ 2.
CLAIMED SUBJECT MATTER
The claims are directed to an herbicide or a method of killing a target
plant. Claims 1 and 15 are illustrative:
1. A herbicide comprising:
one of a first amino acid and a first and a second amino
acid, the first and second amino acids, combined interfere with
at least one biologic process within one of dandelions, and
Canadian thistle, when applied to a leaf of the one of the
dandelions and Canadian thistle, wherein the one of a first
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amino acid and a first and a second amino acid inhibit
aspartokinase in within one of dandelions, and Canadian thistle,
and wherein the one of a first amino acid include one of lysine,
threonine, and methionine, and wherein the first amino acid
functions as a fertilizer in grass.

15. A method of killing a target plant comprising:
spraying a liquid mixture comprising water and an amino
acid on leaves of the target plant, the amino acid oversupplying
the amino acid within at least one specific biological process so
as to cause the plant to use up all of at least a second amino
acid, thus causing the plant to die from the deficit of the second
amino acid.
Appeal Br. 18, 20 (Claims App.).

REJECTION(S)
A. Claims 1, 3–7, and 11–13 are rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Tewari-Singh.3 Final Act. 4.
B. Claims 1 and 3–15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tewari-Singh and Fefer.4 Final Act. 4.5

3 N. Tewari-Singh et al. Use of a Herbicide or Lysine Plus Threonine for
Non-Antibiotic Selection of Transgenic Chickpea, 22 PLANT CELL REP. 576
(2004).
4 Fefer et al., WO 2014/139012 A1.
5 The Examiner states in the Final Rejection and on page 3 of the Answer
that claims 1 and 3–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tewari-Singh and Fefer. Final Act. 4; Ans. 3. However,
as noted above, Claims 16–19 have been cancelled.
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OPINION
A. Anticipation rejection over Tewari-Singh (claims 1, 3–7, and 11–
13)
1. Issue
The Examiner finds that Tewari-Singh anticipates the claims because
it “expressly disclose[s] that the combination of threonine and lysine in
millimolar concentrations (such as 2mM each) acts as herbicide when
applied to plants which have not been desensitized with respect to the
aspartate kinase (AK) gene causing complete inhibition of AK resulting in
methionine starvation.” Final Act. 4.
Appellant contends that the Examiner improperly failed to give
patentable weight to all of the claim limitations. Appeal Br. 12–14.
Appellant does not separately argue the claims except for claims 1 and
6. We, therefore, focus our analysis on claims 1 and 6 as representative.
The issue with respect to this rejection is whether a preponderance of the
evidence of record supports the Examiner’s finding that Tewari-Singh
discloses each of the limitations of claims 1 and 6.
2. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the rejection of claims 1 and 6 as anticipated by Tewari-
Singh (Final Act. 3–4; Ans. 3–6). We address Appellant’s arguments below.
Only those arguments timely made by Appellant in the Appeal Brief (no
Reply Brief was submitted) have been considered; arguments not so
presented in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015); see also Ex parte Borden,
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2010) (informative) (“Any bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived.”).
Appellant contends that the Examiner improperly failed to give
patentable weight to all of the limitations of claim 1. Appeal Br. 13–14.
More particularly, Appellant contends that Tewari-Singh “does not teach the
use of Lysine and Threonine (LT) as a herbicide” and teaches applying “LT
. . . to the agar growing the [plant] embryos as opposed to . . . the leaves of a
plant.” Id. at 12. Similarly, Appellant contends that Tewari-Singh does not
expressly disclose that its composition inhibits aspartokinase in dandelions
and/or Canadian thistle while acting as fertilizer to grass, and further
contends the Examiner has not shown that Tewari-Singh’s composition
inherently accomplishes such a result. Id. at 11, 13–14.
We are not persuaded. Tewari-Singh teaches a composition that
meets all of the structural limitations of claim 1, i.e., a composition
comprising “one of a first amino acid and a first and a second amino acid”
wherein “the one of a first amino acid include one of lysine, threonine, and
methionine.” Ans. 4; Tewari-Singh Abstract (teaching a method of using
lysine plus threonine to select transgenic chickpea). Thus, with regard to the
functional properties in claim 1 that Appellant relies on to distinguish the
claim from Tewari-Singh, we agree with the Examiner that these properties
would be inherent in the composition disclosed in Tewari-Singh. Abbott
Labs. v. Baxter Pharm. Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006)
(explaining that “a reference may anticipate even when the relevant
properties of the thing disclosed were not appreciated at the time”); see also
In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of
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patent law, a compound and all of its properties are inseparable; they are one
and the same thing.”).
To the extent Appellant contends that the Examiner has not shown
that Tewari-Singh’s composition inherently discloses the properties recited
in claim 1 because the Examiner has not shown that such characteristics
“necessarily flows from the teachings of the applied prior art,” Appeal Br.
11–12, we further note that “[w]here . . . the claimed and prior art products
are identical or substantially identical . . . the PTO can require an applicant
to prove that the prior art products do not necessarily or inherently possess
the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
In this case, Tewari-Singh teaches a composition comprising, e.g.,
2mM each of lysine and threonine (Tewari-Singh Abstract), which is
substantially identical to embodiments of the invention recited in the
Specification and in the dependent claims. In particular, the Specification
states that, “[a]ccording to [a] teaching of the present invention, the pair of
amino acids comprise a mixture [of] amino acids having a concentration
between 20–50% lysine and the balance of the amino acid mixture being . . .
threonine.” Spec. ¶ 10. Similarly, dependent claims 5 and 6 recite the
herbicide according to claim 1 wherein, respectively, “the first and second
amino acids include a mixture lysine, threonine having a concentration
between 2 and 4mM” and “the first and second amino acids comprises a
mixture [of] amino acids having a concentration of between 20–50% lysine
and the balance of the amino acid mixture being the balance threonine.”
Appeal Br. 18–19 (Claims App.).
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Appellant has provided no persuasive evidence that Tewari-Singh’s
composition would not have the properties recited in claim 1. Indeed, as the
Examiner points out, Tewari-Singh teaches that its composition does have
some of the properties recited. Ans. 4. For instance, Tewari-Singh teaches
that “exposure to millimolar concentrations of lysine and threonine” results
in “strong inhibition of growth in a wide range of plant species” – i.e., that
such lysine/threonine compositions act as an herbicide under the broadest
reasonable interpretation of that term. Id.; Tewari-Singh 577, left column.
Tewari-Singh further teaches that lysine and threonine completely inhibit
aspartate kinase activity (i.e., “interfere with at least one biologic process”
and “inhibit aspartokinase,” as recited in claim 1), which results in
methionine starvation. Ans. 4; Tewari-Singh 577, left column.
Appellant further contends that, as to claim 6, Tewari-Singh does not
teach the dependent claim limitation that “the first and second amino acid
comprises a mixture amino acids having a concentration of between 20–50%
lysine and the balance of the amino acid mixture being the balance
threonine.” Appeal Br. 13. We are not persuaded. As the Examiner points
out, Tewari-Singh “expressly discloses a composition containing a mixture
of 2mM lysine and 2mM threonine,” i.e., 50% lysine and 50% threonine.
Ans. 5; Tewari-Singh Abstract, 579, left column.
Accordingly, for the reasons stated above, we affirm the Examiner’s
rejection of claims 1 and 6 as anticipated by Tewari-Singh. Claims 3–5, 7,
and 11–13, which are not separately argued, fall with claim 1.

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B. Obviousness rejection over Tewari-Singh and Fefer (claims 1 and
3–15)
1. Issue
The Examiner finds that Tewari-Singh “does not expressly disclose
addition of potassium salts, fertilizer, surfactant or spraying of target leaf
with composition which contains water.” Final Act. 4–5. However, the
Examiner finds that Fefer discloses
herbicidal compositions which can control dandelion and
thistles which can contain amino acids such as lysine,
methionine, threonine and valine, including potassium
salts thereof which can further contain surfactants and
fertilizers, where the composition can contain up to 90%
weight in water, where the composition can be applied by
spraying on leaves.
Id. at 5. Accordingly, the Examiner concludes that a skilled artisan would
have had reason to combine the disclosures of Tewari-Singh and Fefer to
arrive at the claimed invention, with “the expectation that the herbicide
composition can contain potassium salts, surfactants, fertilizers and that the
composition can be sprayed on leaves of weed, where the composition
contains water.” Id.
Appellant contends that the Examiner failed to consider Fefer as a
whole. Appeal Br. 15. In particular, Appellant contends that Fefer teaches
“the use of amino acids in soil to increase uptake of metals into the plant to
increase growth, not to . . . kill the plant.” Id. at 14. Appellant contends
that, accordingly, a skilled artisan would see Fefer “as changing the principle
of operation of the amino acids taught in Tewari-Singh” and as “being
unsuitable for use.” Id. Appellant also contends that Fefer does not cure the
deficiencies of Tewari-Singh with respect to claim 1. Id. at 15–17.
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Appellant further contends that the combination of Fefer and Tewari-Singh
does not disclose all of the limitations of claim 15. Id.
Appellant does not separately argue the claims except for claims 1 and
15. Accordingly, we focus our analysis on claims 1 and 15 as
representative. The issues with respect to this rejection are (1) whether a
skilled artisan would have had reason to combine Tewari-Singh and Fefer,
with a reasonable expectation of success, and (2) whether a preponderance
of evidence of record supports the Examiner’s finding that the combination
of Tewari-Singh and Fefer suggests each limitation of claims 1 and 15.
2. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the rejection of claims 1 and 15 as obvious over Tewari-
Singh and Fefer (Final Act. 4–6; Ans. 6–10). We address Appellant’s
arguments below. Only those arguments timely made by Appellant in the
Appeal Brief (no Reply Brief was submitted) have been considered;
arguments not so presented in the Brief are waived. See 37 C.F.R. §
41.37(c)(1)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative).
As to Appellant’s contention that a skilled artisan would not have
combined Fefer with Tewari-Singh because such a combination would
change the principle of operation of Tewari-Singh’s composition, Appeal Br.
14–15, we are not persuaded.
Appellant contends that, contrary to the teaching of Tewari-Singh and
the purpose of the invention, Fefer teaches “the use of amino acid in soil to
increase uptake of metals into the plant to increase growth,” not to kill the
plant. Appeal Br. 14–15. As the Examiner points out, however, Appellant
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does not cite to any specific portion of Fefer to support its argument that
Fefer teaches using amino acids as a fertilizer. Ans. 7. Indeed, as the
Examiner also points out, id., Fefer teaches herbicidal compositions that
include one or more amino acid that act as chelating agents such as, among
others, lysine and threonine, and specifically teaches that “combinations of
one or more indole auxins and one or more chelators have been found to act
as selective herbicides.” Fefer 5:2–5, 15:16–21.
Appellant cites to Rauscher6 as evidence that “it is well known that
amino acid chelates can be added to soil . . . to increase plant growth.”
Appeal Br. 15. As the Examiner declined to consider the reference because
it was first cited and argued in the Appeal Brief, Ans. 7, we likewise decline
to consider the reference. Moreover, we note that Appellant does not
explain why, even in light of Rauscher, a skilled artisan would understand
Fefer as teaching the use of amino acids to increase growth, when Fefer
expressly teaches that certain amino acids are chelating agents and that
combinations of indole auxins and chelators act as herbicides.
We are similarly unpersuaded by Appellant’s arguments that Fefer
does not cure the deficiencies of Tewari-Singh with respect to claim 1 and
that the combination of Tewari-Singh and Fefer does not suggest all of the
limitations of claim 15.
As to claim 1, we agree with the Examiner that there is no deficiency
in Tewari-Singh . . . with respect to claim 1,” for the reasons discussed
above. Ans. 8.

6 Frank Rauscher, Amino Acid Chelates: Giving Your Plants a Helping
Hand, MAXIMUM YIELD (July 30, 2020), https://www.maximumyield.com/
amino-acid-chelates-giving-your-plants-a-helping-hand/2/916.
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As to claim 15, Appellant contends that neither Tewari-Singh nor
Fefer teaches the limitations regarding “a) spraying a liquid mixture
comprising water and an amino acid on leaves of the target plant, b) amino
acid oversupplying the amino acid within at least one specific biological
process so as to cause the plant to use up all of at least a second amino acid,
and c) thus causing the plant to die from the deficit of the second amino
acid.” Appeal Br. 16–17.
We are not persuaded. With respect to limitation a), Appellant
specifically contends that “[Fefer] discloses using the amino acids as a
chelating agent in the soil” and “does not specifically teach spraying
chelating amino acids.” Id. at 16. Appellant further contends that “[g]iven
the only location of metals for chelation is in the soil, and the half-life of
amino acids on leaves is in the range of hours, one skilled in the art would
not look to us[ing Fefer] for teaching ‘spraying on leaves.[’]” Id. at 16–17.
As the Examiner points out, however, Appellant cites no persuasive
evidence for any of the above contentions. Ans. 9–10. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989). Furthermore, as the Examiner also points out,
Fefer does in fact teach that (1) its herbicidal compositions may include “one
or more amino acid chelators,” such as lysine and threonine (Fefer 15:16–
21); and (2) its compositions may include water and may be “applied . . . to
the leaves of the unwanted vegetation, e.g., by spraying” (Fefer 38:22–27,
40:6–11, 21–23). Ans. 9–10.
Likewise, with respect to limitations b) and c), we agree with the
Examiner that these limitations are disclosed by Tewari-Singh. Ans. 8–9. In
particular, Tewari-Singh teaches that “there is a strong inhibition of growth
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in a wide range of plant species following exposure to millimolar
concentrations of lysine and threonine (LT).” Tewari-Singh 577, left
column. Tewari-Singh further teaches that this is because aspartate kinase,
“AK, the first enzyme of the aspartate family biosynthetic pathway[,]
consists of several isozymes that are feedback inhibited by its end products,
lysine and threonine,” and the “complete inhibition of AK activity by these
two amino acids . . . results in methionine starvation.” Id. Thus, Tewari-
Singh teaches “the amino acid [(i.e., lysine and/or threonine)] oversupplying
the amino acid [(i.e., lysine and/or threonine)] within at least one specific
biological process [(i.e., the aspartate family biosynthetic pathway)], so as to
cause the plant to use up all of at least one amino acid [(i.e., methionine)],
thus causing the plant to die from the deficit of the amino acid,” as recited in
claim 15. Appeal Br. 20 (Claims App.).
Accordingly, for the reasons stated above, we affirm the Examiner’s
rejection of claims 1 and 15 as obvious over Tewari-Singh and Fefer.
Claims 3–14, which are not separately argued, fall with claims 1 and 15.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 11–13 102(a)(1) Tewari-Singh 1, 3–7,
11–13

1, 3–15 103 Tewari-Singh,
Fefer
1, 3–15
Overall
Outcome
1, 3–15

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TIME PERIOD FOR 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