Ex Parte Brown et al

Patent Trials and Appeals Board

Sep 21, 2018

14595093 - (D) (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/595,093 01/12/2015 Andrew J. Brown
73905 7590 09/25/2018
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
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.
MONS:291USC1 7258
EXAMINER
KOV ALENKO, MYKOLA V
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. BROWN, JAMES F. BYRNE,
ROBERT H. COLE, JAMES H. CROWLEY,
JOHN A. MIKLOS, ROBERT C. RIPLEY,
SIMONE SEIFERT-HIGGINS, and JIALI XIE 1
Appeal2017-009358
Application 14/595,093
Technology Center 1600
Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to methods of applying
glyphosate in a field containing herbicide tolerant Brassica crop species.
The Examiner rejected the claims as obvious and on the grounds of
obviousness-type double-patenting. Appellants appeal the rejection pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). The
rejections are affirmed.
1 The Appeal Brief ("App. Br.") 1 identifies Monsanto Company, the parent
company of assignee Monsanto Technology LLC, as the real party in
interest.
Appeal2017-009358
Application 14/595,093
STATEMENT OF THE CASE
Claims 36-45, 47, and 49--52 stand finally rejected by the Examiner
as follows:
1. Claims 36-45, 47, and 49--52 under 35 U.S.C. § 103(a) as obvious
over Clayton et al. (Weed Technol. 16: 124--130, 2002; hereinafter
"Clayton") taken with the evidence of Xiangxiang et al. (Chinese Sci. Bull.
50:1604--1611, 2005; hereinafter "Xiangxiang") in view of Grey et al.,
(Weed Technol. 20:551-557. 2006; hereinafter "Grey"), and Nandula et al.
(J. Agric. Food Chem. 55: 3540-3545, 2007; hereinafter "Nandula").
Examiner's Answer ("Ans.") 2.
2. Claims 36-45, 47, and 49-52 on the ground of obviousness-type
double patenting as obvious over claims 17-20 of U.S. Pat. 8,816,156 B2
(issued Aug. 26, 2014). Ans. 6.
There are two independent claims on appeal, claims 36 and 43.
OBVIOUSNESS REJECTION
Claim 36 is reproduced below:
3 6. A method of applying glyphosate in a field containing
herbicide tolerant Brassica crop species, the method
compnsmg:
applying a glyphosate treatment to the field containing
herbicide tolerant Brassica plants,
wherein the glyphosate treatment is applied at a rate of
900-3600 g acid equivalent/hectare, wherein the Brassica plants
are at a growing stage beyond the 6-leaf stage, and
wherein said glyphosate treatment does not cause
statistically significant yield reduction when compared to that
of an untreated control field containing the same herbicide
tolerant Brassica plants.
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Rejection
Clayton is the primary publication relied upon by the Examiner.
Clayton describes field experiments to determine the effect of the timing of
glyphosate application to glyphosate resistant canola (Brassica napus).
Clayton Abstract. Glyphosate is an herbicide that has activity on a broad
spectrum of plant species. Spec. 9:30-31. It is used to kill the weeds in a
field of canola.
Xiangxiang is cited by the Examiner to establish the specific genotype
of the resistant canola used in Clayton's field experiments. Final Act. 3.
The Examiner found that Clayton describes applying glyphosate to a
glyphosate-resistant Brassica napus ("canola"). In one experiment, the
Examiner found that the plants were "at the six-leaf to bolting stage" and "at
the bolting to flowering stage", and thus were at "at a growing stage beyond
the 6-leaf stage" as recited in claim 36. Final Act. 3--4 (citing the 1998
Edmonton and 1997 Beaverlodge experiments described in Clayton). The
Examiner also found that the "glyphosate treatment does not cause
statistically significant yield reduction when compared to that of an
untreated control field containing the same herbicide tolerant Brassica
plants," pointing to Table 4 of Clayton comparing the 1998 Edmonton and
1997 Beaverlodge experiments to an "Untreated check." Final Act. 4. For
this reason, the Examiner found that Clayton meets the limitation in claim 3 6
where "said glyphosate treatment does not cause statistically significant
yield reduction when compared to that of an untreated control field
containing the same herbicide tolerant Brassica plants."
The Examiner found that Clayton describes the application of 450 g
acid equivalent/hectare of glyphosate, not 900-3600 as recited in claim 36.
3
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Application 14/595,093
Final Act. 4. However, the Examiner found that Grey describes the
application to glyphosate tolerant Brassica napus of higher amounts of
glyphosate "at the rate of 840 g ae/ha [g acid equivalent/hectare], or 1,680 g
ae/ha at the 1-2 leaf and 3--4 leaf growth stages" and that the application of
such amounts do not affect seed yield. Id. The Examiner also found that
Nandula describes applying glyphosate to glyphosate-resistant Brassica
napus at dosages of 1 and 5 kg acid equivalent/hectare and that such
amounts do not result in chlorotic injury from the glyphosate. Id. at 5.
The Examiner determined it would have been obvious to one of
ordinary skill in the art to have modified Clayton by applying higher
amounts of glyphosate to a glyphosate-resistant Brassica napus because "the
precise concentrations would have been a matter of obvious and routine
optimization of experimental conditions, to one having ordinary skill in the
art." Final Act. 5. The Examiner also found it obvious to have applied the
glyphosate to Brassica plants at later developmental stages to control late-
emerging weeds because "Clayton et al teach that late emerging weeds
'likely competed sufficiently with canola to reduce yield significantly'
(Clayton et al, pg. 127, right col, bottom paragraph), and given that Clayton
et al teach applying glyphosate treatment at the 6-leaf to the bolting stage, or
at the bolting to the flowering stage." Id.
Discussion
Yield reduction
Claim 36 requires that the glyphosate "does not cause statistically
significant yield reduction when compared to that of an untreated control
field containing the same herbicide tolerant Brassica plants." Yield refers to
4
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Application 14/595,093
the yield of seeds. Appellants contend that "Clayton does not suggest that
glyphosate application could be made at the recited growth stage at a rate of
450 g ai [ sic, ae ]/ha without a yield loss, let alone using an at least 2X higher
rate of glyphosate application as required by the claims." App. Br. 3.
Appellants explain that Clayton used an untreated, weed-infested check as a
control which represents seed yield in the presence of weed pressure. Id.
Appellants argue that Clayton is therefore focusing on the effects of early
weed removal, and not considering "additional possible direct effects of a[ n]
herbicide such as glyphosate on plant growth, flowering, and yield, when
glyphosate is applied at a later growth stage from the 6 leaf to bolting
growth stage and even during flowering at the bolting to flowering stage."
Id. Appellants contend that the "yield comparison relied upon by the
Examiner thus is not directly comparable to the claimed yield comparison."
Id. Appellants contend that "the appropriate comparison to evaluate yield
loss is to compare the yield from glyphosate application at an earlier growth
stage with yield when glyphosate is applied at a later tested growth stage,
when such application is within the growth stages recited in the claims." Id.
at 4.
We are not persuaded by Appellants' arguments that the Examiner
erred in finding that the "Untreated check" in Table 4 of Clayton is the
proper comparison with which to establish that a "statistically significant
yield reduction" did not occur when applying glyphosate at the claimed
stage of plant development. Appellants' argument is that at the later stage of
canola development, when the plant is beyond the six-leaf stage, there is
damage to the plant due to the effect of glyphosate on flowering which is
independent of the deleterious effects of weed competition on the canola's
5
Appeal2017-009358
Application 14/595,093
growth. Appeal Br. 3. For this reason, Appellants argue that to determine
the effect of glyphosate on flowering and subsequent seed production, the
control must lack weeds - otherwise, any change in yield is masked by weed
competition. Thus, Appellants' position is that the control relied upon by
the Examiner only shows that eliminating weeds at a later stage is beneficial,
but does not establish the effect of glyphosate on "flowering and [ seed]
yield." Id.
Appellants' argument is not persuasive because it is not
commensurate with the scope of the claims. Claim 36 explicitly states that
the comparison is "to that of an untreated control field containing the same
herbicide tolerant Brassica plants." It is not disputed by Appellants that
Table 4 of Clayton shows an "Untreated Check" which is a control field
untreated with glyphosate. Thus, this control field satisfies the basis of
comparison required of claim 36. In other words, Appellants' argument that
the proper "comparison shows that later application of glyphosate, closer to
or during flowering, results in yield loss of about 28% as compared to when
it is applied earlier, under the same weed competition condition" (Appeal Br.
4) is unavailing because the claims recite that the comparison is to "an
untreated control field," not a field treated with glyphosate under the same
weed competition conditions. Furthermore, Appellants' contention that the
claims relate to the application of glyphosate "during reproductive growth of
canola" (Reply Br. 5) ignores the plain language of the claim that the
application is "beyond the 6-leaf stage" which would include stages before
reproductive bud formation, such as at the eight-leaf stage and bolting (stem
elongation).
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Application 14/595,093
As shown in Table 4 of Clayton reproduced below, it is correct that
yield reduction is observed in Edmonton 1998 and Beaverlodge 1997 when
glyphosate is applied at later stages, but the yield is always better than the
"Untreated check", meeting the claim limitation of "said glyphosate
treatment does not cause statistically significant yield reduction when
compared to that of an untreated control field containing the same herbicide
tolerant Brassica plants." Appellants ignore this express language of the
claim. Reply Br. 7.
Table 4 of Clayton is reproduced below with annotations to highlight
the Edmonton 1998 and Beaverlodge 1997 experiments relied upon by the
Examiner.
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Table 4 shows Edmonton 1998 canola yield at the six-leaf to bolting is
231 g/m2 and at the bolting to flowering stage is 166 g/m2, both which are
higher than the canola yield for the "Untreated check," which is 88 g/m2.
Beaverlodge 1997 shows the same pattern with values of 28, 19, and 12,
respectively. Thus, a preponderance of the evidence supports the
Examiner's findings that the claimed "yield" limitation is met by Clayton.
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Application 14/595,093
Nandula and Grey
Appellants contend that N andula performed greenhouse experiments
at the 4--5 leaf stage, before bolting and flowering. Appeal Br. 5---6.
Furthermore, Appellants contend that no seed yields are described, "rather
only 'shoot dry weight' is described, which is clearly distinct from seed
yield." Id. at 6. Appellants also argue that Nandula's results showing no
reduction in shoot dry weight is contradicted by the Schilling publication2
which describes significant reduction in shoot weight following application
of commercially formulated glyphosate.
Schilling, as indicated by Appellants, has the following disclosure:
Contrasts indicated canola stem weight and shoot weight
measured for canola harvested from the nontreated check were
significantly higher than canola stem weight and shoot weight
measured from canola that received a single application of
glyphosate (contrast 1, 2, 3 vs. 8) (Table 2). Leaf area and leaf
weight measured from canola that received a single application
of glyphosate were not significantly different from canola leaf
area and leaf weight measured from the nontreated checks.
Schilling 827 (col. 2) (emphasis added).
Thus, Schilling shows stem weight and shoot weight were reduced by
one application of glyphosate, but leaf area and leaf weight were not.
Schilling's finding regarding the lack of effect on leaf area/weight is not
inconsistent with Nadula's teaching that "[a] single application of glyphosate
at 0.63 kg ha-1 did not reduce chlorophyll content at 7 DAT" and that there
"was no chlorotic injury from glyphosate ... in GR [glyphosate resistant]
2 The Shilling publication (Schilling et al., Weed Technology, 2006, 20:825-
830) was provided by Appellants.
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Appeal2017-009358
Application 14/595,093
canola." Nandula 3443 (col. 2). 3 Thus, Nandula showed that glyphosate
was not universally detrimental to all aspects of canola growth.
Contrary to Appellants' statement, while N andula states there was no
effect on shoot weight by a single application of 0.63 kg ha-1 (Nandula 3443
(col. 1)), Nandula Figure 2 as observed by the Examiner, shows reductions
in shoot weight at high concentrations of glyphosate. Final Act. 5. Thus,
there is not necessarily an inconsistency between N andula and Schilling.
Moreover, as argued by Appellants, shoot weight is not seed yield. Appeal
Br. 6. Appellants did not establish that a reduction in shoot weight would
affect the seed yield, and that such reduction would have dissuaded one of
ordinary skill in the art from utilizing the glyphosate amounts described in
Nandula, particularly when leaf and chlorophyll content is not affected.
Appellants attempt to distinguish N andula by stating that its results
are only indicative of the strain used in its experiments comprising two
transgenes for glyphosate tolerance. Appeal Br. 7; Reply Br. 8. However,
the claimed method pertains to any "herbicide tolerant Brassica crop
species." Thus, even ifNandula's result are limited to the specific
transgenic cultivar used in its experiments, such cultivar falls within the
scope of the claims. We note that Appellants' Specification describes its
invention as plants and species comprising event MON 88302 (Spec. 3:4--
11 ), but they have not limited the claims to these plants.
Appellants disparage Nandula because no amounts of glyphosate
lower than 1000 g ae/ha were shown and thus "no untreated control (no
glyphosate) was utilized." Appeal Br. 6. This argument is not persuasive.
3 N andula teaches the chlorophyll content was determined from extracts of
leaves. Nandula 3541.
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Application 14/595,093
Figure 2 ofNandula shows, as compared to non-glyphosate resistant plants,
there is almost no change in shoot dry weight at the lowest concentration of
glyphosate applied to the glyphosate resistant plants. The lowest amount
applied to the non-glyphosate resistant plants was 0.001 kg ae/ha. At
concentrations higher than 1000 g ae/ha, shoot dry weight is reduced in the
glyphosate resistant plants. Nandula, Fig. 2, at 3543. However, Appellants
have not established a correlation between the reduction in shoot weight and
seed yield and thus this observation alone is not evidence that higher
concentrations would have been detrimental to yield.
Appellants' other arguments on page 6 of the Appeal Brief regarding
Nandula are attorney arguments unsupported by objective evidence and thus
we give them no weight. An argument made by counsel in a brief does not
substitute for evidence lacking in the record. Estee Lauder, Inc. v. L 'Orea!,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Appellant alleges that "Nandula specifically states that more research
would be needed to determine whether AMP A ( a breakdown product of
glyphosate) causes chlorosis in canola as it apparently does in soybean."
Appeal Br. 7. We do not agree with accuracy of this statement. Nandula
expressly states that "There was no chlorotic injury from glyphosate or
AMPA from glyphosate in GR [glyphosate resistant] canola." Nandula
3543.
Appellants' comparison in the Specification to R T73 is irrelevant
since that canola cultivar has not been shown to be the canola cultivar
utilized in Nandula. Reply Br. 8. Moreover, this is an impermissible
argument since it has been raised in the Reply Brief and not the Appeal
Brief. 37 C.F.R. § 4I.41(b)(2).
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Application 14/595,093
Grey provides evidence that high concentrations of glyphosate do not
effect yield. Grey looked directly at seed yield in canola treated with
glyphosate and reported:
There were no significant differences for any herbicide-treated
cultivar compared with the respective nontreated control.
These data indicate that applying imazamox, glyphosate, or
glufosinate [applied at 0.84 and 1.64 kg ae/ha to one-two LF
and three-four-LP canola] to their respective resistant cultivars
did not affect yield at one or two times the recommended label
rate.
Grey 555, 553.
Appellants contend that Grey has been misapplied and does not
support the rejection. Appeal Br. 8. Appellants argue:
Grey further notes at p. 555, right column, 3rd paragraph, that
"[b ]y the end of March ... the canola canopy minimized weed
competition" and thus application at a later growth stage was
not even contemplated. Even more important, the paragraph
bridging p. 555-556 explicitly states that" ... yields obtained
are unlikely to accurately represent the potential of these
herbicide-resistant systems . . "
Appeal Br. 8
Appellants have quoted Grey out of context. The paragraph
referenced by Appellants is reproduced in full:
No attempt was made to compare the yield potential of the
different herbicide-resistant systems. The herbicide-resistant
cultivars used were not well suited to the test location and
therefore, the yields obtained are unlikely to accurately
represent the potential of these herbicide- resistant systems
when cultivars specifically adapted to southeast production
conditions are used. As with yield, there were no differences
for seed oil content between the nontreated control compared
with imazamox-, glyphosate-, or glufosinate-treated canola
(data not shown).
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Grey 555-556.
In other words, Grey is not disparaging the yields, but rather is
indicating that there is "potential" for larger yields if canola cultivars
adapted to the environment conditions in the southeast had been used.
Later application was apparently not considered by Grey, not because
of any deleterious effect of later applied glyphosate, but because under the
southeast production, a canopy "minimized weed competition", making later
application unnecessary. Grey 555. Canopy development was also
discussed in Clayton as "sufficient to prevent further weed establishment
after glyphosate application" (Clayton 128). However, Clayton, at the same,
Clayton described conditions in which "late-emerging weeds likely
competed sufficiently with canola to reduce yield significantly" when the
"late emergence of weeds ... may have been facilitated by higher than
normal precipitation" (id. at 127). Thus, it is evident that one of ordinary
skill in the art knew that factors must be considered when determining the
appropriate timing of glyphosate application, including precipitation and the
presence of a canopy. This is discussed in more detail below.
Teaching away
Appellants contend that Clayton teaches away from later application
of glyphosate because "later application of glyphosate at the six leaf to
bolting, or bolting to flowering, growth stages, even at half of the minimum
glyphosate application rate required by the claims, results in yield
reduction." Appeal Br. 8. Appellants provide evidence that they assert
establishes a teaching away from later application of glyphosate to canola
plants.
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We agree with Appellants that there is reason to have utilized
glyphosate at an early stage of canola development and prior to "beyond the
6-leaf stage" as claimed and that later application had been disparaged in
some publications. 4 However, this is not a complete picture.
As explained by Schilling:
Weed control with glyphosate varies depending on weed
species, time of application, rate of active ingredient, and
environmental conditions (Krausz et al. 1996; Lich et al. 1997;
McWhorter and Azlin 1978). Low rates of glyphosate are most
effective on young, annual weeds (DeFelice et al. 1989; Krausz
et al. 1996). Glyphosate activity decreases as weeds mature,
requiring higher rates of glyphosate to achieve weed control
(Buhler and Burnside 1987; Krausz et al. 1996). As a result,
glyphosate at 1,100 g ae/ha will control a broad spectrum of
weeds (Krausz et al. 1996).
Schilling 825-826.
Thus, Schilling makes it clear that one of ordinary skill in the art
would consider a number of factors when deciding when to apply glyphosate
and how much to apply. See also above discussion of Grey and Clayton,
supra. at 12. Significantly, Schilling expressly discloses utilizing amounts
of glyphosate (1,100 g ae/ha) which fall within the scope of claim 3 6 (900-
4 "Early time of weed removal. The judicious use of herbicides can be an
IWM [integrated weed management] cornerstone. However, if herbicides
are applied when they are not required or at a stage that is too late to
preserve most of the crop yield potential, their value is diminished. For
many years it has been well-demonstrated that early weed removal is
important to attain high canola yield (CCC 2010, Clayton et al 2002, Harker
et al. 1999, Harker et al 2003, Martin et al. 2001 ). In a recent study using
large plots in farmer fields, Harker et al. (2008a) confirm the importance of
removing weeds early. Canola yield dropped 3 or 7 bu/ac when herbicide
application was delayed from the 1-2 to the 3-5 or 6-7 canola leaf stage,
respectively (Figure 3)."
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3600 g ae/ha) to control mature weeds. A person of ordinary skill in the art
would therefore had reason to use higher amounts of glyphosate, as taught in
both Grey and Nandula, to treat a broad spectrum of weeds.
Schilling states that "In-crop glyphosate applications can be made
until the sixth-leaf stage of glyphosate-resistant canola." Schilling 826.
Compare rejected claim 36 which applies glyphosate "beyond the 6-leaf
stage." However, despite this statement, Schilling also states that the timing
of glyphosate application is critical and requires one of ordinary skill in the
art to account for a number of different factors:
Id.
Herbicide timing becomes important depending on weed
density, weed species, and environmental conditions.
Glyphosate applied too early may miss later-emerging weeds,
and if applied too late, weed competition before glyphosate
application may cause irrecoverable yield losses.
In other words, late application of glyphosate to later staged canola
plants may be necessary in some circumstances to treat late-emerging weeds.
Schilling, discussing Clayton, states:
Id.
Clayton et al. (2002) found decreases in canola yield if
glyphosate was applied too early because of yield loss by
interspecific competition from later-emerging weeds. Under
these conditions, delays in herbicide application could result in
yield loss due to weed competition, or multiple applications
would have to be made to the crop during the growing season.
However, multiple applications of glyphosate may cause a yield
reduction to glyphosate-resistant canola (Schilling 1998).
Indeed in one experiment at Edmonton in 1998, Clayton applied
glyphosate to canola from the six-leaf state to bolting stage, a window which
overlaps with the claimed stage of "beyond the 6-leaf stage" and found that
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its yield was about the same (231 g/m2) as compared to when glyphosate
was applied to the one-two leaf stage (226 g/m2). Clayton 128 (Table 4)
(Table 4 is reproduced above). 5 Thus, despite statements in the prior art that
glyphosate is applied up to the six-leaf stage, Clayton provides evidence that
it can be applied later at the six-leaf to bolting stage, and even without
detrimental effects. 6 As indicated by Clayton a reason to apply glyphosate
later is when precipitation conditions facilitate late emerging weeds (Clayton
127), and in higher amounts when more mature weeds are present (Schilling
826).
As to the timing of the application of the glyphosate, Appellants
provided a publication titled "How late can you spray", published in 2010,
which states that glyphosate ("Roundup") "can be applied up to the 6-leaf
stage." However, despite this statement, "How late can you spray", as
indicated by the title, was considering how late it is possible to spray with
glyphosate and other herbicides. The publication stated:
The question at late-application stages is whether weed control
trumps crop damage. Spraying when the earliest plants are at
the bud stage or beyond can sometimes lead to bud blasting,
pod blanking, as well as delayed maturity and stunted height for
those earliest plants, particularly if the plants are already
suffering from other stress.
5 Thus, contrary to Appellants' statement in the Reply Brief on page 6,
glyphosate can be applied at a later stage without affecting yield. Appellants
stated that the Examiner erred in stating that yield increase can occur when
glyphosate was applied later in the growing season. Id. at 6. However,
Appellants ignored the Examiner's statement that the yield increase was
with respect to the untreated plants, which as explained above, is the
comparison covered by the rejected claims.
6 However, deleterious effects on yield were reported in Beaverlodge 1997
as shown in Table 4 of Clayton.
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The bud stage is after the 6-leaf and bolting stage. Thus, while the
publication disparages applying an herbicide at the bud stage or beyond, it
leaves open the possibility of applying it at the 6-leaf to bolting stage, the
same stage utilized by Clayton in Edmonton 1998 and found not to have
been deleterious compared to application at the one-two leaf stage (Clayton
128 (Table 4)), and at stage encompassed by the claimed "beyond the 6-leaf
stage."
Clayton described considerable variability in the response to
glyphosate. For example:
1. Early application was better in most cases:
In most cases, early application of glyphosate resulted in the
highest canola yields (Table 4). This occurred at Lacombe in
1997, at Edmonton in 1997 and 1998, and at Beaverlodge in all
the years. In all instances, there was a linear increase in canola
yield as glyphosate was applied at earlier leaf stages of the crop
(Table 4).
Clayton 127.
2. However, in some cases, earlier application gave a negative
response:
More significantly, at Lacombe and Edmonton in 1999, there
was a negative linear response to early glyphosate application.
Canola yield decreased the earlier the glyphosate application.
Clayton 127.
3. Timing of application was not critical in one case:
At Lacombe in 1998, canola yield was reduced only when the
weedy checks were included in the analysis. Excluding the
checks, yields were similar across glyphosate timings.
Clayton 127.
Based on this evidence, Clayton stated:
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The variability in the response of canola to glyphosate
timing supports the view of Zimdahl (1988) that 'the critical
period, if it can be defined, is a measure of the particular
crop/weed environment interaction and not an inherent property
of the crop.' Even where there was a positive response to early
glyphosate application, it was difficult to define a consistent
and precise period after canola emergence when glyphosate
should be applied to avoid canola yield losses. This probably
resulted from variable environmental factors (Table 2), delays
(in some cases) in targeted times of glyphosate application
(Table 1 ), and variability in the nature and extent of natural
weed infestations.
Clayton 128.
In sum, one of ordinary skill in the art would have been familiar with
the variability observed with glyphosate application, and would have known
that various factors must be considered when determining when to apply it
to canola crops (Clayton 128; Grey 555-556 stating that yield is dependent
on growth conditions and whether cultivar is adapted to such conditions;
Schilling 825-826 stating the weed control depends on a number of factors
and that amounts of glyphosate within the scope of the claim are useful to
control a broad spectrum of weeds; "How late can you spray" describing
balancing weed control with crop damage when determining stage at which
to apply glyphosate). Based on this evidence, we find that the Examiner's
determination that the timing of application and concentrations to be applied
to canola is a matter of routine optimization by one of ordinary skill in the
art (Final Act. 5; Ans. 4--5) is supported by a preponderance of the evidence.
With respect to the claimed stage of application, as discussed, Clayton
applied glyphosate in a window ("six leaf to bolting") that would encompass
the stage of "beyond the 6-leaf stage")). Thus, while there are teachings in
the prior art that glyphosate can be applied up until the 6-leaf stage ("How
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late can you spray"; Harker (fn. 3 above); Schilling 826)), in actual practice
Clayton applied it at a later stage and late emergence of weeds under
precipitation conditions (Clayton 127) balanced against possible damage to
the canola crop ("How late can you spray") provide additional reason to
delay its application. Higher amounts of glyphosate are disclosed in both
Grey and Nandula, and Schilling (a publication provided by Appellants)
explains that higher amounts are needed to control more mature weeds and a
broader spectrum of weeds (Schilling 825-826).
Claim 43
Independent claims 43 is reproduced below:
43. A method of applying glyphosate to a field containing
glyphosate tolerant Brassica crop species, the method
comprising: spraying the field containing glyphosate tolerant
Brassica plants with a glyphosate treatment at a rate of between
900 and 1800 g acid equivalent/hectare,
wherein the Brassica plants are at a growing stage from
4-6 leaf to first flower and exhibit not more than 1. 7% chlorosis
of the leaves of the Brassica plants as a result of the glyphosate
treatment.
Independent claim 43 requires that "the Brassica plants are at a
growing stage from 4-6 leaf to first flower and exhibit not more than 1. 7%
chlorosis of the leaves of the Brassica plants as a result of the glyphosate
treatment." With respect to this limitation, the Examiner found that
"Nandula et al[.] teach that 'there was no chlorotic injury from glyphosate'
in glyphosate resistant canola (pg. 3543, right col.)." Final Act. 5.
Appellants attempt to distinguish N andula by arguing that "present
Table 2 clearly demonstrates that glyphosate application can lead to
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chlorosis." Appeal Br. 7. This argument is not persuasive because Table 2
ofNandula shows chlorosis in soybean, and not canola. Appellants also
argue that the canola strain utilized by Nandula has two transgenes. Id.
However, as discussed above, the claims encompass glyphosate tolerant
Brassica crop species and the cultivar described in Nandula is one such
species.
Unexpected results
Appellants cite additional cited publications which they contend
establish that the "ability to apply glyphosate at the recited crop stage
without suffering yield loss is thus surprising and unexpected." Appeal Br.
10.
A showing of "unexpected results" can be used to demonstrate the
non-obviousness of the claimed invention. In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) ("One way for a patent applicant to rebut a prima facie case
of obviousness is to make a showing of 'unexpected results,' i.e., to show
that the claimed invention exhibits some superior property or advantage that
a person of ordinary skill in the relevant art would have found surprising or
unexpected.").
An applicant cannot prove unexpected results with attorney
argument and bare statements without objective evidentiary
support. See In re Lindner, 59 C.C.P.A. 920,457 F.2d 506, 508
(CCPA 1972); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) ("attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness"); In
re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) ("It is well settled
that unexpected results must be established by factual evidence.
Mere argument or conclusory statements ... [do] not suffice.")
(quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
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CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
Unexpected results must be "commensurate in scope with the degree
of protection sought by the claimed subject matter." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005).
We have reviewed the Appeal Brief, Reply Brief, and the November
2015 and April 2016 responses referenced in the Appeal Brief, and do not
find objective, factual evidence that glyphosate is applied without "suffering
yield loss" as asserted in the Appeal Brief and that such results are
commensurate in scope with the claims. Moreover, as shown by Clayton
and discussed above, Edmonton 1997 showed that there were conditions in
which yield loss did not occur when glyphosate was applied later. Clayton
128 (Table 4).
Summary
For the above-identified reasons, the obviousness rejection of claims
36 and 42 is affirmed. Claims 37--41, 43--45, 47, and 49--52 fall with claims
36 and 42 because separate reasons for their patentability were not provided.
37 C.F.R. 4I.37(c)(l)(iv).
OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellants state that they "intend to submit a Terminal Disclaimer
over the cited patent upon an indication that the claims are otherwise
allowable." Appeal Br. 13.
Because Appellants did not identify an error in the Examiner's
rejection, we summarily affirm the obviousness-type double-patenting
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rejection of claims 36-45, 47, and 49--52 for the reasons given by the
Examiner.
TIME PERIOD
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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