Ex Parte Becker

Patent Trial and Appeal Board

Jul 20, 2016

12305564 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/305,564 10/16/2009
20350 7590 07/22/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Jorn Ole Becker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81906-167710US-762301 5662
EXAMINER
MACAULEY, SHERIDAN R
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORN OLE BECKER1
Appeal2014-008297
Application 12/305,564
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for treating a plant by controlling nematodes with a pesticide which
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The invention relates to method for controlling nematodes by
applying a combination of a biocontrol agent and a nematicide to the
propagation material of a plant and then planting the propagation material in
1 Appellant identifies the Real Party in Interest as The Regents of the
University of California. Br. 3.
Appeal2014-008297
Application 12/305,564
the soil. Spec. i-f 10. The biocontrol agent can be an anti-nematode
bacterium such as a rhizobacteria from the genus Pasteuria or an anti-
nematode fungus. Spec. i-fi-124--26. The nematicide is an avermectin. Spec.
,-r 9.
Claims 1--4, 6-11, and 20-27 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A method of treating a plant, the method comprising
applying a pesticide composition comprising a nematicide to a
plant propagation material, wherein the nematicide is an
avermectin; and applying at least one nematode-antagonistic
biocontrol agent selected from Pasteuria spp. to the plant
propagation material or the planting media of the plant.
The claims stand rejected as follows:
Claims 1--4, 6-11, and 20-27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Brov,rn et al. EP 0 217 378 1A .. l (published Apr. 8, 1987)
("Brown") in view of Pershing et al. US 2003/0186813 Al (published Oct.
2, 2003) ("Pershing").
DISCUSSION
Issue
In rejecting the pending claims, the Examiner finds that Brown
teaches a method for controlling nematodes by applying a composition
comprising a nematicide (carbamide) and a biocontrol agent (Pasteuria spp.)
to the plant propagation material of a plant such as a seed. Final Act. 3. The
Examiner also finds that Pershing teaches a method for controlling
nematodes by applying a pesticide, such as an avermectin to the seeds of the
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Application 12/305,564
plant. Final Act. 3--4. The Examiner finds that Pershing teaches that the
seeds may also be treated with a biocontrol agent such as a bacteria. Final
Act. 4. The Examiner concludes by finding that
[a ]t the time of the invention, a method for the treatment of
plants by applying a pesticide composition comprising
Pasteuria and a nematicide was known, as taught by Brown.
Brown further taught that additional nematicides could be
incorporated into pesticide compositions. Although the
reference does not teach the use of avermectin, this nematicide
was known in the art at the time of the invention to be useful
for application to plant propagation material, as taught by
Pershing.
Final Act. 4.
Appellant contends that the claimed combination results in
unexpected synergism that outweighs any evidence of obviousness. Br. 12.
Appellant argues that substitution of an avermectin for the nematicides of
Bro\'l/n \'l/ould not have been obvious because of the chemical differences in
the compounds. Br. 13-14. Appellant also argues that the substitution of
nematicides would not have been obvious as the nematicides of Brown work
differently than avermectins. Br. 14--15. Appellant goes on to argue that the
"this mechanism of synergy is incompatible with the mode of action of
avermectins," therefore, substitution of nematicides would not have been
obvious as the mechanism of the synergistic effect seen in Brown is different
than that seen for the present invention. Br. 15. Appellant argues that the
cited art shows a lack of predictability in combining a pesticide with a
biocontrol agent. Br. 16. Finally, Appellant argues that the Declaration of
the Inventor regarding evidence of nonobviousness was not sufficiently
rebutted by the Examiner. Br. 16-18.
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Application 12/305,564
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that the pending claims
would have been obvious over Brown combined with Pershing as defined by
35 U.S.C. § 103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
FF 1. Brown teaches a nematicidal composition comprising "a) at
least one carbamate or dithiocarbamate nematicide which is inert with
respect to the bacterium, Pasteuria penetrans, and b) Pasteuria penetrans
bacterium." Brown col. 2, 11. 8-11.
FF2. Brown teaches that the nematicidal compositions can be applied
to "plant or crop seeds or seedlings." Brown col. 8, 11. 52-57.
FF3. Brown teaches that
[a] unique advantage associated with the compositions
and method of the present invention is that it enables effective
control of nematodes, i.e., reduction in plant or crop damage,
e.g., root-galling with reduced application rates of both the
nematicide and the organism (bacterium) due to the synergistic
nematicidal effect described above. Thus, the present invention
substantially reduces the risk of hazard to the environment by
enabling the application of lesser amounts of nematicide and
bacterium to the soil while achieving an increased nematicidal
effect.
Brown, col. 8, 11. 40-51.
FF4. Pershing teaches the use of avermectins as a pesticide.
Pershing Abstract and i-fi-129 and 68.
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Application 12/305,564
FF5. Pershing teaches that biocontrol agents such as bacteria and
fungi can be applied to the seeds. Pershing i-fi-f l 08.
FF6. The pesticide compositions of Pershing are effective against
nematodes. Pershing i1 73.
FF7. The compositions of Pershing can be applied to plant seeds.
Pershing i1 29.
FF8. Seiler2 teaches that the combination of certain nematicidal
organophosphorus compounds and Pasteuria penetrans spores have a
synergistic effect when used against nematodes. Seiler 3 and 9.
Principles of Law
It is obvious to those skilled in the art to substitute one known
equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d
1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ... error in [the]
conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another.").
"Obviousness does not require absolute predictability of success ....
For obviousness under§ 103, all that is required is a reasonable expectation
of success." In re 0 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988).
"Synergism, in and of itself, is not conclusive of unobviousness in that
synergism might be expected." In re Kollman, 595 F.2d 48, 55 fn. 6 (CCP A
1979). Expected beneficial results are not evidence of nonobviousness. See
2 Seiler et al., AU-B-60573/86 (published Jan. 29, 1987) ("Seiler") was cited
by the Examiner in the Office Action mailed May 20, 2013 for the
proposition that combinations of pesticides and biocontrol agents produce
synergistic effects. Final Act. 5---6.
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Application 12/305,564
In re Skoner, 517 F.2d 947, 950 (CCPA 1975). "[W]e attribute no magic
status to synergism per se since it may be expected or unexpected." In re
Huellmantel, 324 F.2d 998, 1003 (CCPA 1963).
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
"The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains." In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Analysis
Claim 1 is representative of the pending claims and is directed to a
method of treating a plant to prevent infection by nematodes by applying a
mixture of an avermectin and a bacteria of the Pasteuria spp. to the plant
propagation material or to the soil where the plant is to be grown. We agree
with the Examiner that claim 1 would have been obvious to a person of
ordinary skill in the art at the time the invention was made based on the
combination of references relied on by the Examiner. Brown teaches a
nematicidal composition comprising a carbamate (a nematicide) and
Pasteuria penetrans. FF 1. Brown also teaches that the nematicidal
composition can be applied to plant seeds or seedlings to prevent damage by
nematodes. FF2. Pershing teaches that avermectins can be applied to plant
seeds to prevent damage by nematodes. FF4 and 6. We agree with the
Examiner that "that one of ordinary skill in the art would consider that one
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Application 12/305,564
nematicide may be substituted for another in the course of routine
experimentation." Ans. 3.
Appellant argues that the Examiner's prima facie case of obviousness
has been overcome through evidence of unexpected synergism in the
claimed method. Br. 12. We are unpersuaded. Both Brown and Seiler
teach that synergism occurs when nematicides are combined with nematode-
antagonistic bacteria. FF3 and 8. We agree with the Examiner that, based
on the teachings of the prior art, "one of ordinary skill in the art would have
a reasonable expectation of achieving a synergistic result when combining P.
penetrans with a different nematicide." Ans. 3. Since the synergism
achieved by the claimed method is expected, it does not rebut the
Examiner's finding of obviousness. See In re Skoner, 517 F.2d at
950. "[W]e attribute no magic status to synergism per se since it may be
expected or unexpected."
Appellant contends that the references show that a lack of
predictability when combining different bacteria with nematicides making
the synergistic effect unexpected. Br. 16. Appellant points to the fact that
only three of the eight combinations tested in Seiler showed synergistic
effects. Id. Again we are unpersuaded. As the Examiner points out, "[e]ven
if Seiler did not find synergy with each and every organophosphate
nematicide, the disclosure found synergy with a representative number such
that the reference makes the conclusion that there is synergy when using the
combination of P. penetrans and organophosphate nematicides." Ans. 4--5.
"Obviousness does not require absolute predictability of success .... For
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obviousness under§ 103, all that is required is a reasonable expectation of
success." In re O'Farrell, 853 F.2d at 903---04.
Even if we were to accept Appellant's argument that the synergistic
effect achieved by the claimed method is unexpected, the evidence proffered
by Appellants is unpersuasive as the results are not commensurate with the
scope of the claims. In re Dill, 604 F .2d at 13 61. ("The evidence presented
to rebut a prima facie case of obviousness must be commensurate in scope
with the claims to which it pertains.") As the Examiner pointed out, the
claims are directed to the use of any avermectin combined with any bacteria
of the Pasteuria spp. to treat any plant. Ans. 5. The evidence of synergism
is limited to a specific avermectin combined with a single species of
Pasteuria, P. penetrans, to treat a single species of plant, tomatoes. Id. We
agree with the Examiner that Appellant has failed to present evidence to
show that the synergy found in the single example would necessarily occur
within the entire scope of the claimed method. Id.
Appellant also argues that one of ordinary skill in the art would not
have substituted an avermectin for the nematicides used in Brown and
Seiler. Br. 13-16. Appellant offers three reasons to support their argument:
1) the nematicides of Brown and Seiler are structurally different from the
nematicide used in the claimed method, Br. 13-14, 2) the nematicides of
Brown and Seiler are mechanistically different than the nematicide used in
the claimed method, Br. 14--15 and 3) the mechanism of synergy suggested
by Brown is incompatible with the mechanism of the nematicide used in the
claimed method. Br. 15-16. We agree with the Examiner that these
arguments are unpersuasive. The Examiner explains that
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each of [the] chemicals was known in the art to be useful as a
nematicide, and that one of ordinary skill in the art would
consider that one nematicide may be substituted for another in
the course of routine experimentation. It is also submitted that
one of ordinary skill in the agricultural arts would have
recognized that the combination of pesticides was well known
in the art, as evidenced by each of the cited references, and
would not necessarily have considered the modes of action of
each pesticide in the process of combining the components in a
method of treating a plant.
Ans. 3--4. Moreover, Appellant has offered insufficient evidence why
the different structures and mechanisms would deter one skilled in the
art from making the proposed substitution.
Finally, Appellant argues that the Examiner failed to properly
consider the Declaration of the Inventor, Dr. Becker. 3 We do not
agree. The statements made by Dr. Becker mirror the arguments
made by Appellant in the Appeal Brief and were considered and
responded to by the Examiner. Ans. 6. In addition, we have reviewed
the Declaration of Dr. Becker and, for the reasons stated above, also
find it unpersuasive.
Conclusion of Law
We find that the Examiner has established by a preponderance of the
evidence that claim 1 would have been obvious over Brown combined with
Pershing as defined by 35 U.S.C. § 103(a).
3 Declaration of Dr. Jorn Ole Becker under 37 C.F.R. § 1.132, submitted
with the Amendment filed Dec. 20, 2012.
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Application 12/305,564
Claims 2--4, 6-11, and 20-27 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1--4, 6-11, and 20-27.
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).
AFFIRMED
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