Ex Parte 7105470 et al

Patent Trial and Appeal Board

Dec 20, 2018

90020011 (P.T.A.B. Dec. 20, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,216 05/19/2014 7105470 514413-3768.3 8943
20999 7590 12/20/2018
HAUG PARTNERS LLP
745 FIFTH AVENUE - 10th FLOOR
NEW YORK, NY 10151
EXAMINER
CAMPELL, BRUCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/20/2018 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 BAYER INTELLECTUAL PROPERTY GmbH,
Patent Owner and Appellant
____________

Appeal 2017-011413
Reexamination Control 90/013,216 and 90/020,011
Patent 7,105,470 C1
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Bayer Intellectual Property GmbH (“Patent Owner”), the owner of the
patent under reexamination (hereinafter the “’470 Patent”), requests
rehearing of our Decision on Appeal mailed July 16, 2018 (hereinafter
“Decision”), in which we affirmed the Examiner’s final rejection of claims
1–47, 49–72, 74–84, and 86–319 (Request for Rehearing under 37 C.F.R.
§ 41.52 filed September 17, 2018, hereinafter “Request” 1–2).
In particular, Patent Owner contends that:
1. The Board misapprehended or overlooked that Zhang1 does not
disclose that synergistic interaction between different herbicides
occurred with a frequency of 33%;
2. The Decision has misapplied the principles in In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991);
3. The Board misapprehended or overlooked that Zhang did not
disclose that herbicides from similar chemical families tended to
interact synergistically;
4. The Board misapprehended or overlooked that even in view of the
actual disclosures in Zhang, most of the currently claimed
herbicide combinations are not of two herbicides in the same
chemical family; and
5. The Board misapprehended or overlooked that even if synergy
could be expected in a combination of herbicides in the same
family, there would have to be prior art disclosure that the two

1 Jianhua Zhang et al., Antagonism and Synergism Between Herbicides:
Trends From Previous Studies, 9 WEED TECHNOLOGY 86–90 (1995)
(“Zhang”).
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asserted herbicides are in the same family for there to be any
reasonable expectation that their combination would result in
synergy.
(Request 2.)

We have considered Patent Owner’s arguments; and we modify the
Decision as discussed infra, but decline to change the outcome of the
Decision for the reasons that follow.

Points 1 and 3-Zhang’s disclosure of 33% Synergistic Interaction and
Similar Chemical Families
Most of Patent Owner’s arguments are focused on what percentage of
synergistic combinations of herbicides were actually described in Zhang.
(See Request 2–6, 89.) In particular, Patent Owner contends that Zhang’s
disclosure of a frequency of 33% synergistic interactions between herbicides
only relates to cases where interactions between two herbicides occurred,
and therefore does not reflect all cases where no interaction was observed,
meaning that occurrences of a synergistic interaction is actually much lower
than 33%, a point discussed in Patent Owner’s Reply Brief. (Request 3
citing Reply Br. 26.) As a result, Patent Owner contends that in general,
synergy is not expected and, therefore, the data showing synergy constitute
evidence of unexpected results. (Request 3–4.)
Regarding Zhang’s disclosure that “herbicides from similar chemical
families tended to act synergistically” (Zhang, p. 86–87), Patent Owner
argues that Zhang excluded all combination that had additive results, which,
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according to Patent Owner, is expected most of the time, such that “even if
two herbicides in a combination are from the same family, the combination
can only be expected to show synergy less than 40% of the time.” (Request
5–6.)
We are not persuaded that we misapprehended or overlooked any
aspects of Zhang in the Decision. Zhang, in Figure 1D, demonstrates that
synergy occurs in situations where the herbicides in a combination are from
the same chemical family or a different chemical family. (Zhang 88.)
Whether Zhang discloses a lower percentage of synergy when considered
against all potential combinations of herbicides does not change the
Decision, which is based on the combination of prior art as a whole as it
pertains to combinations of herbicides used to treat soybean crops.
Specifically, the disclosure in Zhang regarding the relative frequency of
interactions between different herbicides that are synergistic is not the only
evidence relied on in the Decision related to synergy. The Decision
provided express discussion of the prior art, namely, Gimesi,2 Takematsu,3
and Wells4 that disclose combinations of herbicides exhibiting synergistic
effects falling within the scope of the claims. (Decision 19–21, 23–25.) All
that is required to meet a claim is one combination that provides synergy.
The Decision stated after consideration of the voluminous evidence on this
record that

2 WO 81/01787, published July 9, 1981 (“Gimesi”).
3 U.S. Patent 4,552,583, issued November 12, 1985 (“Takematsu”).
4 Barbara Wells & Arnold P. Appleby, Lactofen Increases Glyphosate-
Stimulated Shikimate Production in Little Mallow (Malva parviflora), 40
WEED SCIENCE 171–73 (1992) (“Wells”).
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the Examiner provided sufficient support for the position that
one of ordinary skill in the art would have had a reasonable
expectation of success in obtaining the combinations of herbicides
recited in the claims in view of the teachings of the prior art with
respect to combinations of herbicides and families of herbicides
having structural and functional similarities corresponding to the
combinations of herbicides recited in the claims.”

(Decision 24–25; see also Decision 15 citing Appeal Br. 21–25,
summarizing Patent Owner’s arguments made with respect to the sample
size of combinations of herbicides in Zhang.) The relative percentage of
synergy observed in individual experiments does not negate the fact that it
was reasonably expected by one of ordinary skill in the art that synergy
occurred between combinations of herbicides, even if not each and every
time.
Patent Owner contends also that in In re Kollman, 595 F.2d 48, 55–56
n.6 (CCPA 1979), the Court did not explain in what circumstances, synergy
might be expected and further, that the Court in Kollman looked at the same
type of comparative evidence as set forth in the 2003 and 2010 Hacker
Declarations to find that the evidence was sufficient to show unexpected
results and establish non-obviousness. (Request 4.)
We acknowledge that the tests conducted in Kollman resemble the
tests in the 2003 and 2010 Hacker Declarations.5 Kollman, 595 F.2d at 56.
However, we observe that consistent with the portion of Kollman cited in the
Decision (p. 21 citing 595 F.2d at 55 n.6 (“Synergism, in and of itself, is not
conclusive of unobviousness in that synergism might be expected.”)), such

5 Decl. of Dr. Erwin Hacker dated February 20, 2003 (Appeal Br., Ex.
D); Decl. of Dr. Erwin Hacker dated October 20, 2010 (Appeal Br., Ex. E).
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tests are not conclusive of obviousness where, as is the situation here, there
is evidence on this record that prior art combinations of herbicides falling
within the scope of the claims exhibited synergism. Thus, we did not
misapprehend or overlook the effect of Kollman in the Decision. Patent
Owner did not persuasively establish that the amount of synergy observed
was unexpected as compared to the amount of synergy that would have been
expected from the cited prior art.
Point 2- In re Baxter Travenol Labs
In view of the discussion above, we are not persuaded that we
misapprehended or overlooked the application of the principles from Baxter
Travenol Labs. (Decision 18, 26.) Patent Owner contends that the results
presented in the 2003 and 2010 Hacker Declarations compared the
combinations of herbicides within the scope of the claim to what was to be
expected by such a combination based on previous knowledge in the art,
which is what Baxter Travenol Labs requires. (Request 4–5, Baxter
Travenol Labs, 952 F.2d at 392.) In particular, Patent Owner contends that
it employed one of the methods to evaluate synergy of herbicides disclosed
in Kollman. (Request 5, Kollman, 595 F.2d at 56.) However, as explained
above with respect to Patent Owner’s argument regarding Kollman, based on
this record and the disclosure in the cited prior art of synergistic interaction
between combinations of herbicides recited in the claims, we are not
persuaded that we misunderstood or overlooked the sufficiency of the data
presented in the 2003 and 2010 Hacker Declarations and what was the
previous knowledge in the art concerning combinations of herbicides.

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Points 4 and 5
Patent Owner argues that the Board misapprehended that the currently
claimed herbicides are not two herbicides from the same chemical family,
and that Figure 1(D) of Zhang only shows synergy in 80% of the
combinations that showed interactions, where synergy in combinations of
herbicides from different families occurs less than 15% of the time.
(Request 6–7.)
Patent Owner contends that the only way that the disclosure in Zhang
that herbicides from similar families tend to act synergistically is relevant is
if the disclosure of a synergistic combination between a combination of
herbicide 1 from family X and herbicide 2 from family Y is interpreted to
mean that synergy would be expected for every combination of an herbicide
from family X and an herbicide from family Y. (Request 8.) Patent Owner
contends that Zhang discloses that combinations of herbicides from different
families are usually not synergistic, and that Zhang shows if there is any
interaction at all it will be 70% antagonistic interactions and 30% synergistic
interactions as indicated in Figure 1(D). (Request 8–9.) Patent Owner
argues that Zhang discloses that it is unexpected for herbicides from
different families to interact synergistically, such that the logic in the
Decision is not supported in the prior art. (Request 9, 13.)
Patent Owner is referring to the portion of the Decision, where it is
stated that “as discussed above, the Examiner’s position supported by certain
prior art cited throughout the course of this reexamination indicates that
‘herbicides from similar chemical families tended to interact synergistically’
(see, e.g., Zhang 86–87).” (Decision 26.) However, Patent Owner
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acknowledges that the (A4) herbicides, which are herbicidal azoles, are of
the same family as (B1) herbicides carfentrazone and sulfentrazone.
(Request 7.) We acknowledge that most of the claimed combinations of (A)
herbicides and (B) herbicides are of combinations of herbicides from
different chemical families. The Examiner’s findings addressed
combinations of herbicides from different families. As discussed above, the
relative frequency of synergism is not dispositive because one of ordinary
skill in the art would have expected synergy in some cases. Patent Owner
did not persuasively demonstrate that the synergy observed in their
experiment was unexpected as compared to the synergy observed in the prior
art.
In view of the discussion above, we are not persuaded that we
misapprehended or overlooked the disclosure of Zhang as pertaining to
synergy between herbicides from different chemical families. Specifically,
the Decision provided express discussion of the prior art in addition to
Zhang in the form of Gimesi, Takematsu, and Wells, all of which disclose
combinations of herbicides from different families exhibiting synergistic
effects falling within the scope of the claims. (Decision 19–21, 23–25.)
Patent Owner argues also that even if synergy could be expected from
combinations of herbicides from two different families, the Decision and the
Examiner do not point to the prior art for any teaching that certain different
herbicides of the (B) herbicides in the claims are from the same chemical
family. (Request 9–10.) Patent Owner argues that if the position is based on
Official Notice, it is improper because it is based on a mere conclusory
statement. (Request 10, citing MPEP § 2144.03(C).)
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We are not persuaded that we misapprehended or overlooked the prior
art support for the position that certain herbicides of the (B) herbicides
recited in the claims belong to the same chemical family. First, we observe
that Patent Owner does not point to where in the previous briefing, that this
argument was raised, and as such, the argument is not proper in a request for
rehearing. 37 C.F.R. § 41.52(a)(1) (“Arguments not raised, and Evidence
not previously relied upon pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4) of this section.”) Second, although Patent Owner
contends that the Forouzesh poster,6 identified by the Examiner as disclosing
classification of herbicides into families, is not prior art and cannot be relied
upon for establishing herbicides that are part of the same chemical family
(the (B) herbicides recited in the claims) (Request 9–10), Patent Owner
acknowledges and relies upon the Forouzesh poster for establishing the
number of possible combinations of herbicides. (Request 3, 10; Appeal Br.
Exh. I.) Patent Owner cannot have it both ways, and as a result, cannot
reasonably maintain the position that the identity or classification of
herbicides belonging to the same chemical family was not well known.

Thus, while we clarify certain points expressed in the Decision as
discussed above, we decline to make any changes to the outcome of the
Decision mailed July 16, 2018.

6 Forouzesh et al. (2015) Classification of herbicides according to chemical
family for weed resistance management strategies - an update. Weed
Research. Doi:1 0. 1111 /wre. 12153.
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DENIED

FOR PATENT OWNER:
HAUG PARTNERS LLP
745 Fifth Avenue - 10th Floor
New York, NY 10151

FOR THIRD-PARTY REQUESTER:

MAGLEBY CATAXINOS & GREENWOOD
170 South Main Street
Suite 1100
Salt Lake City, UT 84101

Frank W. Leak
LEAK & JAMISON PLLC
P. 0. 21026
WINSTON-SALEM, NC 27120