Ex Parte Bland et al

Patent Trial and Appeal Board

Oct 15, 2018

13919035 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/919,035 06/17/2013
117219 7590 10/17/2018
DAS/Maschoff Brennan
1389 Center Drive
Suite 300
Park City, UT 84098
FIRST NAMED INVENTOR
Douglas C. Bland
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.
D1833.l00l 7US02 5091
EXAMINER
MORRIS, PATRICIA L
ART UNIT PAPER NUMBER
1625
NOTIFICATION DATE DELIVERY MODE
10/17/2018 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):
docket@mabr.com
kclark@mabr.com
khuser@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS C. BLAND, DONALD ROSS JR.,
PETER L. JOHNSON, and TIMOTHY C. JOHNSON
Appeal2017-009254
Application 13/919,035 1
Technology Center 1600
Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK,
and ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1-7, 9, and 10. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification relates to compounds useful in controlling pest
populations. See Spec. 1:10-14.
Claim 1 is illustrative, and recites:
1 Appellants state the real party in interest is Dow AgroSciences LLC. Appeal
Br. 3.
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Application 13/919,035
1. A compound according to formula (I)
R1
I
(CR2R3) -L-S=N-X2 0
II
x1
y
(I)
wherein
L represents a single bond or R1, Sand L taken together
represent a 4-, 5- or 6-membered ring;
R1 represents (C1-C4) alkyl;
R2 and R3 individually represent hydrogen, methyl, ethyl,
fluoro, chloro or bromo;
n is an integer from 0-3;
Y represents (C1-C4) haloalkyl, F, Cl, Br, or I;
X1 is optional and represents O when present;
X2 represents N02, CN, COOR4 or CONH2; and
R4 represents (C1-C3) alkyl.
Appeal Br. 19 (Claims Appendix).
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Application 13/919,035
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1-7, 9, and 10 stand rejected under 35 U.S.C. § 103 as
obvious over Loso, 2 Zhu, 3 Qin, 4 and Le Vezouet. 5 Ans. 2.
2. Claims 1-7 stand rejected on the ground of nonstatutory double
patenting as unpatentable over claim 1 of Loso in view of Le
Vezouet. Ans. 3.
3. Claims 1-7, 9, and 10 stand rejected on the ground ofnonstatutory
double patenting as unpatentable over claims 1-7 of Zhu in view
of Le Vezouet. Ans. 3.
DISCUSSION
A. Rejection 1
The Examiner makes the following findings regarding Loso, Zhu, and
Qin as applied to the appealed claims:
Loso et al., Zhu et al. and Qin et al. disclose the pyridine
compounds corresponding to applicants' N-oxide compounds
having the same insecticidal use. Note, for example, the
compounds of formula (I) of Loso et al., Zhu et al. and Qin et
al. wherein X represents N02, CN or COOR4, Lis a single
bond, R1 is alkyl, R2 and R3 independently represent hydrogen,
methyl, ethyl, fluoro, chloro or bromo, Y is haloalkyl and n is 0
to 3. Also, note claim 1 of Loso et al. and claim 4 of Zhu et al
or sections [0007] to [0014] of Qin el [sic]. The prior art
compounds differ from the compounds claimed herein as
2 Loso et al., US 7,687,634 B2, issued Mar. 30, 2010.
3 Zhu et al., US 7,678,920 B2, issued Mar. 16, 2010.
4 Qin et al., US 2010/0168178 Al, published July 1, 2010.
5 Le Vezouet et al., US 2012/0122681 Al, published May 17, 2012.
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Application 13/919,035
pyridine compounds corresponding to applicants' pyridine
oxide compounds.
Final Action 4.
The Examiner turns to Le Vezouet as "teach[ing] the optional
interchangeability of a lone pair of electrons or oxygen on the nitrogen of the
pyridine ring." Id. The Examiner finds that there are close structural
similarities between pyridines and pyridine oxides; given that all the cited
references describe compounds with insecticidal activity, the Examiner
concludes that "the skilled artisan would expect such structurally similar
compounds to possess similar properties." Id.
Appellants do not appear to contest the Examiner's findings in regard
to the primary references (i.e., Loso, Zhu, and Qin), but rather focus on Le
Vezouet and the combination of the references. See generally Appeal Br. 8-
17; see also Reply Br. 2-14. These arguments are not persuasive.
Appellants' assertion that "substantial structural differences" between the
primary references and Le Vezouet are such that the ordinarily skilled
artisan would not have considered them together (Appeal Br. 8) fails to
account for the fact that the commonalities are precisely at the point of the
Examiner's combination. Put differently, the compounds of the primary
references and Le Vezouet each include a pyridine structure; Le Vezouet
further teaches that the nitrogen of the pyridine ring can further be bound to
an oxygen----or not. See Le Vezouet Abstract, ,r 14, claim 16 ("X3 is a lone
pair or oxygen" (wherein X3 is a substituent of the nitrogen of the pyridine
ring)).
Appellants assert that "Le V ezouet et al. does not disclose any actual
compounds where X3 is oxygen, nor does it provide any evidence
whatsoever that compounds where X3 is oxygen actually exhibit insecticidal
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Application 13/919,035
activity." Appeal Br. 12. This is not persuasive (nor does it amount to a
teaching away from pyridine oxides, as Appellants maintain (see id. at 9; see
also Reply Br. 6-7) ), because a prior art reference is prior art for all that it
teaches, 6 including embodiments that are not "preferred" or actually reduced
to practice. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("[T]he
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed .... ").
Further evidence belying Appellants' contention that Le Vezouet teaches
away from variants in which X3 is oxygen can be found in claim 16 of Le
Vezouet, which expressly encompasses such variants.
Appellants further argue that "none of the references of record teach
that the chemical moiety on the nitrogen of the pyridine of the primary
references is a result effective variable, and thereby there is no reason to
change such a chemical moiety, such as changing from a lone pair of
electrons to oxygen as asserted by the Examiner," and assert that "almost an
infinite number of possible modifications" could be made to the compounds
of the primary references. Appeal Br. 14. However, that the prior art
teaches "a multitude of effective combinations does not render any particular
6 Indeed, in the context of a § 103 rejection, this can be the case even if the
reference is non-enabling. See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991). But Appellants' apparent suggestion along those
lines is not persuasive in any case; Appellants characterize as "cursor[y ]" the
indication in Le Vezouet of preparing pyridine oxides by "standard methods"
(Appeal Br. 12), but fail to provide any evidentiary basis to support the
implication that the preparation of pyridine oxides could not have been
"prepared by conventional methods" (see Ans. 10 (citing Le Vezouet ,r 296)).
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Application 13/919,035
formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989). "This is especially true," if, as in the present
appeal, "the claimed composition is used for the identical purpose taught by
the prior art." Id.; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421
(2007) ( explaining circumstances under which a combination may have been
"obvious to try"); cf MPEP § 2144.05.II.B ("[A]fter KSR, the presence of a
known result-effective variable would be one, but not the only, motivation
for a personal of ordinary skill in the art to experiment to reach another
workable product or process.").
In the present appeal, the primary references all disclose compounds
within the scope of claim 1, save for a single structural difference, i.e., the
oxygen bound to the nitrogen of the pyridine ring. See Ans. 11. The
ordinarily skilled artisan, with the primary references in hand, would have
been motivated to modify those compounds in an effort to generate new
and/or improved insecticides, with the expectation that similar compounds
will exhibit similar properties. See Ans. 4--5. Le Vezouet, a reference
within the same art, suggests the interchangeability of pyridines with
pyridine oxides for the classes of insecticides it teaches. See Ans. 11. Even
though Le Vezouet's compounds bear some structural differences to the
compounds of the primary references, the pyridine ring is common, as is the
insecticidal utility of the compounds described. Thus, Le Vezouet's
teaching of interchangeability at this point of structural commonality with
the primary references would have prompted the ordinarily skilled artisan to
experiment with Le Vezouet's substitution in the pyridine rings of the
compounds of the primary references. The Examiner's rationale for
rejecting the claims is thus not an exercise in impermissible hindsight (as
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Appellants assert (see Appeal Br. 13; Reply Br. 4)), but one of common
sense. See KSR, 550 U.S. at 422 (explaining that pursuing known options
within technical grasp of ordinarily skilled artisan is "likely the product not
of innovation but of ordinary skill and common sense"). Appellants have
not shown any unexpected or unobvious properties of the claimed
compounds compared to the prior art (see Ans. 11) that might provide a
counterweight in favor of patentability.
Having considered Appellants' arguments, we are not persuaded of
any reversible error by the Examiner. As such, we affirm the Examiner's
rejection of claim 1 under§ 103. Claims 2-7, 9, and 10 are not argued
separately (see Appeal Br. 17), and fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
B. Rejections 2 and 3
The nonstatutory double patenting rejections are based upon claim(s)
of one of the primary references (Loso for Rejection 2, Zhu for Rejection 3)
in view of Le Vezouet. The Examiner's discussion of these rejections
largely tracks that given for Rejection 1 (see Final Action 6-7), and
Appellants do not directly address Rejections 2 or 3 in their briefs.
Accordingly, for similar reasons as discussed with respect to Rejection 1
above, we affirm Rejections 2 and 3.
CONCLUSION
The rejections of claims 1-7, 9, and 10 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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