Ex Parte Duvert

Board of Patent Appeals and Interferences

Jun 22, 2012

10494868 (B.P.A.I. Jun. 22, 2012)

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.
10/494,868 07/02/2004 Patrice Duvert P/4976-18 8795
2352 7590 06/22/2012
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
HOLT, ANDRIAE M
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
06/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICE DUVERT
____________

Appeal 2011-009301
Application 10/494,868
Technology Center 1600
____________

Before ROMULO H. DELMENDO, SALLY G. LANE, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to an improved method for the control of
phytopathogenic organisms of plants. The Examiner has rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 134. We affirm.

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Application 2011-009301

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STATEMENT OF THE CASE
Claims 27-29 are pending and stand rejected by the Examiner under
35 U.S.C. § 103(a) as obvious in view of Maeno (translation of
JP05112408), Williams (GB 2,267,644), Duvert (US 6,156,740), and Fritig
(WO 99/53761; US 6,770,303 to Fritig, the corresponding US document,
was used by the Examiner to “translate” the text of WO 99/53761, the latter
which was published in French). Answer 4.
Independent claim 27 reads as follows:

An improved method for the control of phytopathogenic
organisms of plants comprising applying to said plants at least
one composition comprising pyrimethanil, wherein the
improvement comprises blending fosetyl-Al with said
pyrimethanil in a weight ratio of pyrimethanil to fosetyl Al
ranging from 0.1 to 1, whereby the time of the efficacy of the
pyrimethanil is extended.

CLAIM 27
There are three claims on appeal. Claim 27, the only independent
claim, is directed to an improved method for the control of phytopathogenic
organisms of plants comprising applying to the plants a composition
comprising “pyrimethanil” and “fosetyl-A1,” both which are known
fungicides. Spec. 1: 13-29. The compounds are recited in the claim to be
administered “in a weight ratio of pyrimethanil to fosetyl A1 ranging from
0.1 to 1, whereby the time of the efficacy of the pyrimethanil is extended.”

REJECTION
The Examiner found that Maeno teaches synergistic combinations of
plant fungicides. Answer 4-5. Specifically, Maeno teaches a first
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Application 2011-009301

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compound, a 2-anirino-4-methyl-pyrimidine derivative, blended with a
second compound selected from a group of four, “iprodione, procymidone,
HOSECHIRU, or polyoxin.” Maeno, p. 1, “Means for Solving the
Problem.” The following facts are pertinent to the rejection:
• First compound: Maeno teaches five specific examples of the 2-
anirino-4-methyl-pyrimidine derivative, including “2-ANIRINO-4, a [sic] 6-
dimethyl-pyrimidine (compound 1)” which is also known as the claimed
compound pyrimethanil. Maeno, p. 1, ¶ 8; Williams, p. 1, ll. 13-14.
• Second compound: “HOSECHIRU” is aluminum tris ethyl
phosphonate. Maeno, “Description of the Prior Art.” Appellant
acknowledges that the latter compound is fosetyl-A1. App. Br. 5: 10.
In sum, as found by the Examiner, Maeno describes combinations of
two fungicides, where one fungicide is selected from a group that includes
the claimed pyrimethanil and the second fungicide is selected from a group
that includes the claimed fosetyl-A1.
While Maeno teaches combinations of two fungicides, Maeno does
not disclose the specifically claimed combination of pyrimethanil and
fosetyl-A1 as an enumerated or exemplified species. For example, Maeno
teaches pyrimethanil (“compound 1”) with dicloran or iprodione; and
fosetyl-A1 with compound 5. Maeno, p. 6. Maeno also does not teach that
the combination of pyrimethanil and fosetyl-A1 extends the efficacy of the
pyrimethanil as recited in claim 27 nor the specific plants and pathogenic
organisms recited in claims 28 and 29. However, the Examiner cited
Williams, Duvert, and Fritig for these teachings. Answer 5.
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to:
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4
use fosetyl A1 in combination with pyrimethanil to control the
cited pathogenic organisms in pome fruits, bananas, and grapes
because Maeno et al. teach the combination of fungicides
containing 2-anilino-4- methyl-pyrimidine derivatives,
including pyrimethanil (compound 1) with a number of well
known fungicides in the art, including Fosetyl-Al, to form a
composition having a wide germicidal spectrum and exhibiting
an extremely high and stable controlling effect by the
synergistic activity of active ingredients based on their
synergistic actions.
Answer 7.
The Examiner cited the Maeno and Duvert weight ratio disclosures to
meet the claimed ratio ranging from 0.1 to 1. Answer 5, 6, & 10.
SYNERGY AND IMPROVED EFFECT
In addition to Maeno’s teachings about synergistic combinations of
fungicides, the Williams, Duvert, and Fritig publications also teach synergy
when two fungicides are combined.
• Williams teaches compositions comprising pyrimethanil and a
second fungicide from a different class, in which the composition has
synergistic properties. Williams, Abstract (57).
• Duvert teaches synergistic fungicide compositions comprising a
compound A of formula (I) and a compound B which is selected from a
group that includes fosetyl-Al. Duvert, col. 1, l. to col. 2, l. 11. Duvert
teaches “when the component B is fosetyl-Al, the A/B ratio is from 0.01 to
1.” Id. at col. 2, ll. 54-56.
• Duvert teaches:
In an entirely unexpected way, the combination according to the
invention then significantly improves the effect of the active
materials taken separately with respect to a number of fungi
which are particularly harmful to crops, for example in
particular grapes or the Solanaceae. This improvement is
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Application 2011-009301

5
reflected in particular by a decrease in the doses of each of the
constituents, which is particularly advantageous for the user and
the environment.
Col. 2, ll. 42-50.
• Fritig teaches that a compound B, such as fosetyl-Al, can be used as
a potentiator to amplify the response obtained by a compound A and obtain a
synergistic response. US 6,770,303, col. 1, ll. 44-56; col. 3, ll. 4-9 & 27-35;
Answer 6-7.

DISSUSSION
Claim 27, the only independent claim, is directed to an improved
method for the control of phytopathogenic organisms of plants comprising
applying to the plants a composition comprising “pyrimethanil” and
“fosetyl-A1.” The compounds are administered “in a weight ratio of
pyrimethanil to fosetyl A1 ranging from 0.1 to 1, whereby the time of the
efficacy of the pyrimethanil is extended.”
As found by the Examiner, Maeno teaches combinations of two
fungicides, where one fungicide is selected from a group that includes
pyrimethanil and a second fungicide is selected from a group that includes
fosetyl-Al. Answer 4-5. Although no specific example of a composition
comprising both compounds is disclosed, pyrimethanil is one of five specific
compounds listed as representative of the first group, and fosetyl-A1 is one
of four compounds in the second group. Maeno, p. 1, “Means for Solving the
Problem”; p. 1, ¶ 6. In view of the limited number of choices, a person of
ordinary skill in the art would have readily envisioned the claimed
combination of pyrimethanil and fosetyl-A1. The skilled worker would have
been further guided to these choices because each of pyrimethanil and
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Application 2011-009301

6
fosetyl-A1 are listed in specific combinations in Maeno, indicating an
express preference for them. Maeno, p. 6. They are also each disclosed in
Williams, Duvert, and Fritig. See above. Accordingly, we conclude there is
adequate evidence to establish that the claimed combination would have
been prima facie obvious to one of ordinary skill in the art at the time of the
invention.1
A case of prima facie obviousness can be rebutted with a showing of
unexpected results. 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.”). Those
results must be “surprising or unexpected” to one of ordinary skill in the art
when considered in the context of the prior art. In re Soni, 54 F.3d at 750;
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004) (A showing of “new and unexpected results” must be “relative to
prior art.”); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“When unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art”). Here, Appellants contend that it was unexpected that the claimed
composition would extend the efficacy (“period of protection”) pyrimethanil

1 In view of the limited number of choices, one of five from the first group
and one of four from the second group for a total of 20 different
combinations, we are of the opinion that Maeno describes the claimed
combination of pyrimethanil and fosetyl-A1 because the latter could have
been immediately envisioned. See In re Petering, 301 F.2d 676 (CCPA
1962).
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Appeal 10/494,868
Application 2011-009301

9
examples. App. Br. 7. However, Appellants have not provided expert
testimony to substantiate this assertion. Nonetheless, Maeno did make such
statements, and a publication is good for all it teaches to persons of ordinary
skill in the art. In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir.1992).
Furthermore, we conclude that any weaknesses in the actual data in
Maeno is outweighed by the strong statements of synergy and improved
effects described in three different publications for different compound
combinations.
Appellants also contend that compounds and mechanisms of action of
the pesticides described in the prior art are different from those which are
claimed, and thus it would not have reasonably been expected that the
specifically claimed combination would have the claimed efficacy. App. Br.
7-8. We do not agree. The fact that synergy and improvements are
described for different compounds (“Synergy and Improved Effect,” supra
at 4) having different mechanisms of action would have reasonably
suggested that synergy or improved effect would occur with other
compounds, despite differences in their biological activities.
Third, the data is not commensurate with the full scope of claim 27.
The results summarized on page 10 were obtained with a single
phytopathogenic organism and plant. Claim 27, however, is not limited to a
method reciting a specific phytopathogenic organism or plant. Appellants
have not provided evidence that the effect observed with this single
phytopathogenic organism and plant would have been reasonably expected
to occur with any organism and plant as claimed.

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Application 2011-009301

10
SUMMARY
A preponderance of the evidence supports the Examiner’s
determination that the claimed combination of pyrimethanil and fosetyl-Al
would have been obvious to one of ordinary skill in the art. Appellants did
not provide sufficient rebuttal evidence or arguments. We therefore affirm
the obviousness rejection for the reasons set forth above and those in the
Examiner’s Answer.

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

cu