Ex Parte Fischer et al

Patent Trial and Appeal Board

Apr 28, 2017

13024969 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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.
13/024,969 02/10/2011 Reiner FISCHER 2923343-285000 1709
84331 7590 05/02/2017
MMWV TP T T C EXAMINER
7900 Westpark Drive, Suite A100
McLean, VA 22102
DESAI, RITA J
ART UNIT PAPER NUMBER
1625
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
docketing @ mm w vlaw .com
cgmoore @ mmwvlaw. com
dwoodward @ mmwvlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINER FISCHER, ARND VOERSTE,
ISOLDE HAUSER-HAHN, STEFAN LEHR, ELMAR GATZWEILER,
ULRICH GORGENS, and INES HEINEMANN
Appeal 2016-0076241
Application 13/024,969
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants’ appeal under 35 U.S.C. § 134(a) involves claims
directed to chemical compounds of a formula (I) which are useful as
pesticides and/or herbicides and/or fungicides. The Examiner rejected the
claims under 35 U.S.C. § 103 as obvious. We have jurisdiction under 35
U.S.C. § 6(b). The rejections are affirmed.
1 The Appeal Brief (“Appeal Br.”) 3 lists Bayer Intellectual Property GmbH,
as the real-party-in-interest.
Appeal 2016-007624
Application 13/024,969
REFERENCE
Appellants appeal from the Examiner’s rejection of claims 1, 7, and
27. The claims stand rejected as follows:
1. Claims 1, 7, and 27 under 35 U.S.C § 103(a) as obvious in view of
Zambach et al. (WO 2010/052161 A2, publ. May 14, 2010) (“WO’161”).
Examiner’s Answer (“Ans.”) 2.
2. Claim 1, 7, and 27 under 35 U.S.C § 103(a) as obvious in view of
WO’161 and CA 2 671 179 Al (publ. June 12, 2008) (“CA’ 179”). Ans. 2.
All other rejections have been withdrawn, including the rejection of
claim 28. Ans. 2; Final Rej. 2 (Final Rejection of July 7, 2015).
2
Appeal 2016-007624
Application 13/024,969
CLAIM
The claims are directed to a compound of formula (I).
1, A compound of formula (I)
A-O
Gx
N
H'
.N
O
I
A
Mo
X
in which
W represents methyl,
X represents methyl,
Z ^represents a radical
The complete claim appears in the claims appendix to the Appeal
Brief. The Examiner focused the rejection on the formula (I) compound
where V1 and V2 are hydrogen, F is 4-fluoro-phenyl, Y is hydrogen, G is
hydrogen, and A is methyl, ethyl, or propyl.
REJECTION
The Examiner found that WO’ 161 teaches a genus which comprises
species of the claimed genus. The Examiner cited several specific species
from WO’161, two (T9, T23) of which we have included in the Table below
3
Appeal 2016-007624
Application 13/024,969
to show how the substituents of the genus and species described in WO’ 161
correspond to those of the claimed formula I compounds.
We also reproduce immediately below a comparison of a
representative chemical structure for a genus (formula (I)) of the herbicidal
compositions disclosed in WO’161 versus the chemical structure for claimed
formula (I). The structure on the top is from WO’ 161; the structure on the
bottom, reproduced below, is the claimed formula (I).
See WO’161 1,
formula (I)
G
--A
O
t i
H '"x''
X
\ Claim 1,
formula (I)
w z
The Table below summarizes the disclosure from WO’161 (T9, T23,
and 1.088 are specific species disclosed in WO’161) as compared to a
compound within the claimed formula (I) (“Claim”). The column on the far
right is a species of the claimed formula I on which the Examiner focused
the obviousness inquiry.
4
Appeal 2016-007624
Application 13/024,969
TABLE
\\ O’161 (pages 1 -21 I'd i p. 431 T23 (p. 451 1 .OSS i p.
62)
Claim
R9 is hydrogen, Cl-
C6alkyl, Cl-
C6haloalkyl, Cl-
C6cyanoalkyl, benzyl,
C1 -C4alkoxy (C1 -
C4)alkyl, Cl-C4alkoxy
(C1 -C4)alkoxy(C 1 -
C4)alkyl or a group
selected from G, or an
agrochemically
acceptable salt or N-
oxide thereof.
methyl methyl methyl A is methyl,
ethyl, propyl
R1 is hydrogen, methyl,
ethyl, n-propyl, iso­
propyl, halomethyl,
haloethyl, halogen,
vinyl, ethynyl, methoxy,
ethoxy, halomethoxy or
haloethoxy, cyclopropyl
or halogenocyclopropyl
methyl methyl methyl X is methyl
R2 and R3 are
independently
hydrogen, halogen, Cl-
C6alkyl, Cl-
C6haloalkyl, Cl-
C6alkoxy, Cl-
C6haloalkoxy, Cl-
C6alkenyl, Cl-
C6haloalkenyl, Cl-
C6alkynyl, Cl-
C6haloalkynyl, C3-
C6alkenyloxy, C3-
C6haloalkenyloxy, C3-
C6alkynyloxy, C3-
C6cycloalkyl, Cl-
C6alkylthio, Cl-
C6alkylsulfinyl, Cl-
C6alkylsulfonyl, Cl-
C6alkoxysulfonyl, Cl-
hydrogen 4-
chlorophenyl
hydrogen Yis
hydrogen
5
Appeal 2016-007624
Application 13/024,969
C6haloalkoxysulfonyl,
cyano, nitro, phenyl,
phenyl substituted by
Cl-C4alkyl, Cl-
C3haloalkyl, Cl-
C3alkoxy, Cl-
C3haloalkoxy, cyano,
nitro, halogen, Cl-
C3alkylthio, Cl-
C3alkylsulfinyl or Cl-
C3alkylsulfonyl, or
heteroaryl or heteroaryl
substituted by Cl-
C4alkyl, Cl-
C3haloalkyl, Cl-
C3alkoxy, Cl-
C3haloalkoxy, cyano,
nitro, halogen, Cl-
C3alkylthio, Cl-
C3alkylsulfinyl or Cl-
C3alkylsulfonyl,
R3 4-
chlorophenyl
hydrogen 4-fluoro-
phenyl
Z is 4-fluoro-
phenyl
R4 is hydrogen, methyl,
ethyl, n-propyl, iso­
propyl, halomethyl,
haloethyl, halogen,
vinyl, propenyl,
ethynyl, propynyl,
methoxy, ethoxy,
halomethoxy or
haloethoxy,
hydrogen methyl hydrogen W is methyl
G is hydrogen or an
agriculturally acceptable
metal, sulfonium,
ammonium or
latentiating group.
=0 =0 hydrogen Gis
hydrogen
The Examiner found that the genus described in WO’161 includes the
same substituents as claimed with “very little options for picking and
choosing.” Final Act. 3; see also Ans. 5. The Table shows the genus of
substituents described by WO’161 (pages 1—2) in the column on the far left.
6
Appeal 2016-007624
Application 13/024,969
The Examiner identified several compounds, including compounds T9 and
T23 summarized in the Table above, noting that the difference between
these compounds and those which are claimed would have been obvious
based on the pattern of substitution shown in the 262 examples shown in
Table 1 of WO’161 (see WO’161 60), and other examples disclosed in of
WO’161. Ans. 5-8.
Appellants contend that the Examiner erred by not identifying a “lead
compound^” and explaining why it would have been obvious to modify
such lead to have arrived at the claimed compounds. Reply Br. 3.
We do not agree that one rigid test must be applied to establish the
structural obviousness of a claimed compound based on the prior art. As
stated in the Manual of Patent Examination and Procedure (“MPEP”), “[i]n
the chemical arts, the cases involving so-called ‘lead compounds’ form an
important subgroup of the obviousness cases that are based on substitution.”
MPEP § 2143. In these cases, a lead compound is identified and a reason is
provided to modify it to have arrived at the claimed compound. Id. The
Examiner also cited 75(169) Federal Register 533643—53660, 53652 (2010),
which states: “ft should be noted that the lead compound cases do not stand
for the proposition that identification of a single lead compound is necessary
in every obviousness rejection of a chemical compound.” Ans. 10. Thus,
while the “lead compound” cases are instructive, they do not constitute the
only test by which a compound may be found structurally obvious when
compared to the prior art.
Appellants contend that compounds T9 and T23 differ in having
“different substituents and substitution patterns on the phenyl rings.”
Appeal Br. 19. Appellants contend that WO’161 “does not provide
7
Appeal 2016-007624
Application 13/024,969
blazemarks to replace the 4-chrolopheny group in compounds T9, T23 and
P29 [another compound from WO’ 161 cited by the Examiner] with a 4-
fluorophenyl group, because, as discussed above, no biological activities
were disclosed for compounds that contain a 4-fluorophenyl group
(compounds P72, 1.088 and 1.251 [compounds from WO’161]).” Id. at 20.
See also Reply Br. 5. Appellants further argue that the biological activity of
T23, and other species cited by the Examiner, “are not better than other
compounds tested therein,” thus a person of ordinary skill in the art would
not have had reason to select these compounds as lead compounds for
further modification. Reply Br. 3.
Appellants also challenge the Examiner’s statements (Ans. 10) that
the modifications to the X, Y, and G positions “are few and can easily be
envisioned.” Reply Br. 4. Specifically, Appellants contend “there are a vast
number of combinations from which to choose to make the species of the
claimed invention . . . WO’161 does not provide adequate guidance as to
what substituents and which positional substitutions would lead to a
biologically active compound as a pesticide, herbicide or fungicide.” Id.
We are not persuaded by these arguments. While it may be correct
that the genus of compounds described in WO’161 “encompasses thousands
(if not millions) of compounds”2 (Reply Br. 5), the Examiner pointed to
specific examples in WO’161 as evidence of the obviousness of the claimed
compounds. Ans. 5—8. Thus, it is not correct that the Examiner did not
provide examples of lead compounds upon which to base the obviousness
2 Appellants did not provide evidence of the size of the genus of compounds
described by WO ’161. Consequently, we have no basis to find that the
genus of WO’161 embraces thousands, million, etc., of compounds.
8
Appeal 2016-007624
Application 13/024,969
analysis. We have focused on T9 and T23 cited by the Examiner, and
compound 1.088 described by Appellants as among the closest prior art
compounds. Appeal Br. 21.
As shown in the summary Table above, compound T9 differs from the
claimed reference compound in three aspects, T23 differs in three, and 1.088
in only one. The key differences are listed below along with a discussion of
why they are obvious modifications.
1) 4-chloro-phenyl at R3 or R4 in WO’161 (compare T9 and T23),
rather than 4-fluoro-phenyl (position Z) in the claimed reference compound.
However, compound 1.088 of WO’161 has a 4-fluoro-phenyl group at
R3. Appellants argue that the skilled worker would not have started with
compound 1.088 because no activity was disclosed for it. Appeal Br. 20.
However, it is listed in Table 1 of compounds of WO’161 ’s formula (I) (at
60 of WO’161) and formula (I) compounds are expressly described as
having herbicidal activity {id. at 1). Consequently, one of ordinary skill in
the art would have had reasonable expectation that the Table 1 compounds
have herbicidal activity.
Moreover, there would have been reason to replace the chlorine of
compound T9 and T23 with a fluorine. Both chlorine and fluorine are
halogens, and it is general chemical knowledge that member of the same
periodic group are reasonably expected have similar chemical properties.
Ans. 11. There is a “normal desire of scientists or artisans to improve upon
what is already generally known.” In re Peterson, 315 F.3d 1325, 1329—30
(Fed. Cir. 2003). Thus, one of ordinary skill in the art would have
reasonably sought to improve activity, e.g., of T9 or T23 — both of which
were demonstrated to have herbicidal activity (WO’161 at 70, 71, 72) — by
9
Appeal 2016-007624
Application 13/024,969
replacing the chlorine with another halogen. 4-fluoro-phenyl is within the
scope of the genus of WO’161 (see WO’161 1—2) and is an explicitly
described substituent in compound 1.088 (see Table above).
2) hydrogen at position R4 in WO’161 (compare T9 and 1.088), rather
than a methyl group (position W) in the claimed reference compound.
However, compound T23 has a methyl group at this position. Table
1, beginning on page 60 of WO’161, has further examples where R4 is a
methyl. Accordingly, the Examiner’s position that one of ordinary skill in
the art would have envisioned compounds with a methyl group is supported
by the preponderance of the evidence. As shown in the summary Table, this
is the only difference between the claimed formula I compound and
compound 1.088 of WO’161. Wm. Wrigley Jr. Co. v. Cadbury Adams USA
LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (finding a “strong case of
obviousness based on the prior art references of record . . . [where the claim]
recites a combination of elements that were all known in the prior art, and all
that was required to obtain that combination was to substitute one well-
known . . . agent for another”). One of ordinary skill in the art would have
been prompted to have made such a substitution because a compound having
a methyl at this position is described as biologically active (WO’ 161 at 70—
72 showing herbicidal activity for T23) and the substitution is within the
scope of the genus (see Table summarizing substituents for R4).3
3) =0 at G in WO’161 (compare T9 and T23), rather than a hydrogen
group (position G) in the claimed reference compound.
3 After introducing the chemical structure of the genus, WO’161 expressly
teaches “R4 is hydrogen, methyl, ethyl. . . .” See WO’161 1—2.
10
Appeal 2016-007624
Application 13/024,969
Compound 1.088, however, has a hydrogen group at this position.
The Examiner also found that all the 262 compounds in Table 1 have a
hydrogen at this position. WO’161 at 60 (“G is hydrogen”); Ans. 5. See also
WO’ 161, Tables 2—22 disclosing a hydrogen at the G position. Hydrogen is
also preferred at the G position. WO’161 at 8:25—26. Consequently, one of
ordinary skill would have been prompted to have made such substitution
since it is within the scope of the genus, it is preferred, and present on a
large number of specific examples in WO’161 (e.g., each of Tables 1—22,
each containing 262 compounds, where each compound has a hydrogen at
the G position).
Unexpected results
Appellants provided evidence that two of the compounds within the
scope of claim 1 “possess unexpected and superior pesticidal activities
compared to the closest prior art compounds.” Appeal Br. 21—22. The
Examiner allowed claim 28 based on the results, but found that the same
results are not commensurate with the full scope of the remaining rejected
claims. Ans. 9.
The first comparison provided by Appellants is between compound
1.088 of WO’161 and compound 1-a-l within the scope of formula (I) of
claim 1, where the only difference is the methyl substituent at W in 1 -a-1
instead of a hydrogen as in 1.088. Appeal Br. 21. The second comparison is
between a compound “known from” WO’161 and l-a-2 within the scope of
formula (I) of claim 1, where the only difference is again the methyl in the
compound of claimed formula (I), but a hydrogen in the compound “known
from” WO’ 161. Id. at 22. 1-a-l and l-a-2 differ from each other by the A
11
Appeal 2016-007624
Application 13/024,969
group, where it is a methyl in 1-a-l and ethyl in l-a-2. Both compounds
have a 4-fluoro-phenyl as the Z group.
The scope of the claimed formula (I) is broader than 1-a-l and l-a-2,
including, inter alia, the Z phenyl ring substituted with two fluorine atoms,
with a fluorine and chlorine, with three halogen substituents, and with
methyl and methoxy substituents. However, the results provided by
Appellants are only for a single fluorine, where hydrogen is present at the
other positions in the phenyl ring. Appellants have not provided data or
arguments as to why results utilizing a 4-fluoro-phenyl ring would predict
results with phenyl rings comprising additional substitutions, namely, with
two or more halogens, methyl, and methoxy groups, particularly in view of
the showing that one change on the phenyl ring provided unexpected results
and therefore even small changes could have significant effects on the level
of activity.
Absent an explanation as to why the limited data can be extrapolated
to the broader class of compounds encompassed by the claim, we conclude
that the evidence is insufficient to establish the unobviousness of the claimed
genus of compounds. “[T]he unobviousness of a broader claimed range can,
in certain instances, be proven by a narrower range of data. Often, one
having ordinary skill in the art may be able to ascertain a trend in the
exemplified data which would allow him to reasonably extend the probative
value thereof. The proof, thus considered, might then be sufficient to rebut a
PTO holding of prima facie obviousness.” In re Kollman, 595 F.2d 48, 56
(Fed. Cir. 1979).) “Unexpected results” must be commensurate in scope
with the claim to ensure that such results are representative of the entire
12
Appeal 2016-007624
Application 13/024,969
claim scope to which a patentee is entitled. In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005).
OBVIOUSNESS REJECTION BASED ON WO’161 AND CA’179
The Examiner rejected claims 1, 7, and 27 as obvious in view of
WO’ 161 and CA’ 179. The Examiner found that CA’ 179 describes a genus
of compounds which have a similar structure to the structure disclosed in
WO’261. Ans. 13. Specifically, the Examiner found that the compounds
comprise a biphenyl ring, where one of the rings is fluoro-substituted. Id. at
13—14. The Examiner found that the compounds have the same activity as
those described in WO’ 161. The Examiner found:
See page 1, “The present invention further relates to the boosting
of the action of the crop protection compositions comprising, in
particular, biphenyl-substituted spirocyclic ketoenols.
This provides a motivation and a teaching that a fluorosubstituted
biphenyl [substituent] would boost the protective property of the
compounds.
Id. at 14. (emphasis omitted).
Appellants contend that CA’ 179 is not the closest prior art because
none of its compounds contain the “-N-O-A” moiety in the spirocyclic ring
as required by the claimed genus of compounds of formula (I). Appeal Br.
24. Appellants provide a drawing to illustrate this structure:
13
Appeal 2016-007624
Application 13/024,969
,0—H
A"" ^
,A>
G‘
X-""'
w
The drawing reproduced above shows the structure of the claimed
compound with the —N-O-A group on the spirocyclic ring.
This argument does not persuade us that the Examiner erred. The
Examiner did not rely on CA’ 179 for the moiety on the spirocyclic ring.
Rather, the Examiner noted the similarity in structure, particularly the
common spirocyclic biphenyl rings in both, and found that the teaching in
CA’179 of the same Z position as in the claimed formula (I) substituted with
mono- or polysubstituted fluorophenyl provided a reason with an
expectation of success to substitute the compounds in WO’161 with the
fluoro-phenyl substituent because such compound possessed herbicidal
activity. Ans. 13—14.
Appellants did not identify a defect in the Examiner’s fact-finding nor
reasoning which we find to be supported by a preponderance of the
evidence. See, e.g., CA’179 at 130—131 showing compound I-l-a
substituted with 4-fluoro-phenyl (I-l-a-4). The spirocyclic ring comprises
an O atom, but the Examiner found the suggestion to form the spirocyclic
ring generically with a het atom as also taught in WO’ 161. Final Rej. 4.
SUMMARY
For the foregoing reasons, the obviousness rejections 1 and 2 of claim
1 are affirmed. Dependent claims 7 and 27 were not argued separately and
fall with independent claim 1. 37 C.F.R. § 41.37(c)(iv)(l).
14
Appeal 2016-007624
Application 13/024,969
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
15