Ex Parte Haas

Patent Trial and Appeal Board

May 27, 2016

11996978 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111996,978 06/05/2008 Ulrich Johannes Haas
85981 7590 05/31/2016
Syngenta Corp Protection, Inc,
410 Swing Road
Greensboro, NC 27409
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.
70735 2324
EXAMINER
HIRT,ERINE
ART UNIT PAPER NUMBER
1616
MAILDATE DELIVERY MODE
05/31/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH JOHANNES HAAS 1
Appeal2013-008640
Application 11/996,978
Technology Center 1600
Before JEFFREY N. FREDMAN, JACQUELINE T. HARLOW, and
TA WEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of protecting crops against phytopathogenic organisms and/or treatment of
crops infested by such organisms, which have been rejected as anticipated
and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as Syngenta Crop Protection,
Inc. (Br. 3.)
Appeal2013-008640
Application 11/996,978
STATEMENT OF THE CASE
According to the Specification, "[t]he use of fungicides to control
disease and/ or reduce the effects of disease on crops is an important part of
modem agricultural practice," while glyphosate is the largest selling
agrochemical in the global market useful, among other things, for
controlling weeds. (Spec. 1: 12-13, 22, 26-28.) Further according to the
Specification, administering a combination of glyphosate and at least one
fungicide to plants provides "improved control of diseases compared to
using the fungicide in the absence of glyphosate." (Id. at 2:5---6.)
Claims 1, 3, 4, and 7-18 are on appeal. Claim 1 is illustrative and
reads as follows:
1. A method of protecting crops of useful plants against attack
by a phytopathogenic organism and/or the treatment of crops of useful
plants infested by a phytopathogenic organism, said method
comprising simultaneously applying an amount of (i) glyphosate,
including salts or esters thereof, and (ii) a fungicidally synergistic
effective amount of at least one fungicide having activity against the
phytopathogenic organism to at least one member selected from the
group consisting of the plant, a part of the plant and the locus of the
plant, wherein said at least one fungicide comprises at least one
member selected from the group consisting of azoles,
dithiocarbamates, ortho-substituted phenyl- or thienyl-amide
fungicides, strobilurins, acibenzolar-S-methyl, chlorothalonil,
nicobifen and mixtures thereof.
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Application 11/996,978
The claims stand rejected as follows: 2
Claims 1, 3, 4, and 11-17 are rejected under 35 U.S.C. § 102(e) as
anticipated by Clinton. 3
Claims 1, 3, 4, and 9-12 are rejected under 35 U.S.C. § 103(a) as
obvious over Oakley.4
Claims 1, 3, 4, and 7-18 are rejected under 35 § U.S.C. § 103(a) as
obvious over the combination of Clinton and Asrar. 5
I.
Issue
The Examiner has rejected claims 1, 3, 4, and 11-17 under 35 U.S.C.
§ 102( e) as anticipated by Clinton. (Final Act. 5.)
Because Appellant argues claims 1, 3, 4, 11, 12, and 14--17 together
(id. at 8-10), we decide the appeal of this rejection on the basis of claims 1
and 13. 37 C.F.R. § 41.37(c)(l)(iv).
2 In the Answer, the Examiner states that all claims on appeal (claims 1, 3--4,
and 7-18) are rejected as anticipated by Clinton and obvious over Oakley.
(Ans. 4, 6.) However, in the Final Office Action from which the instant
appeal is taken, only claims 1, 3, 4, and 11-17 were rejected as anticipated
by Clinton and only claims 1, 3, 4, and 9-12 were rejected as obvious over
Oakley. (Final Act. 5, 7 .) Neither did the Examiner indicate that new
grounds of rejection were being made in the Answer. Thus, we assume the
above statements in the Answer were the result of typographical error.
3 Clinton et al., US 2005/0223425 Al, published Oct. 6, 2005.
4 Oakley et al., WO 2004/043150 Al, published May 27, 2004. Citations to
Oakley herein refer to the English language equivalent US 2006/0111239,
which is being used as an English translation. (Final Act. 7.)
5 Asrar et al., US2003/0060371 Al, published Mar. 27, 2003.
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Application 11/996,978
The Examiner finds that Clinton teaches "a method and composition
for ... disease control in plants ... , which includes treatment with
glyphosate and a known fungicide (i.e., azoxystrobin, kresoxim-methyl,
tebuconazole, copper hydroxide, etc.) as active compounds in synergistically
effective amounts in a composition/mixture." (Final Act. 5.) The Examiner
further finds that "Clinton also teaches the method wherein the composition
comprising glyphosate and at least one known fungicide is applied directly
onto any portion of the crop plant, immediately adjacent to the plant (soil) []
or by contacting the seeds of the plant for control/prevention of
phytopathogenic organisms .... " (Id. at 5---6.)
Appellant contends that Clinton does not disclose combining
glyphosate with a "fungicidally synergistic effective amount" of at least one
fungicide, or the use of such a combination in a method recited in claim 1.
(Br. 10.) With respect to claim 13, Appellant contends that Clinton further
fails to disclose the method of claim 1 "wherein the crop is a glyphosate-
sensitive crop." (Id. at 11.)
The issue with respect to this rejection is whether the evidence of
record supports the Examiner's finding that Clinton anticipates claims 1 and
13.
Findings of Fact
FF 1. Clinton teaches compositions and methods for disease control in
plants where glyphosate is the active compound. (See, e.g., Clinton
Abstract.)
FF2. Clinton teaches that its glyphosate composition may be applied
directly to the entire plant or a portion of the plant, or applied immediately
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Application 11/996,978
adjacent to the plant where the glyphosate can be taken up into the plant's
vascular system. (Id. at i-fi-1 40, 53.)
FF3. Clinton teaches a preferred embodiment comprising an
admixture of glyphosate and a fungicide compound, where the fungicide
compound may include, among others, members of the chemical groups
strobilurins and triazoles. (Id. at i-f 12; see also id. at i-fi-171-73.)
FF4. Clinton teaches applying an admixture of glyphosate and
fungicide compounds to a plant where the dose of each compound in the
admixture is less than the dose of the compound normally applied to the
plant. (Id. at i-f 13.) Clinton discloses that "a composition that comprises a
glyphosate compound and a fungicide compound has been shown to be
particularly effective in controlling fungal disease" and that "[a] reduced
dosage rate of each compound than that normally applied ... has been
shown to be effective in controlling fungal disease." (Id. at i130.)
FF5. Clinton teaches that compositions containing a glyphosate
compound and a fungicide compound may provide synergistic activity
against susceptible fungal pathogens. (Id. at i-fi-168, 76, Example 8.)
FF6. Clinton teaches that, "[i]n a preferred aspect, the crop plant for
which disease control, prevention or treatment is desired is glyphosate
tolerant." (Id. at i134.)
Analysis
Claim 1 relates to a method of protecting or treating plant crops
against a phytopathogenic organism by applying glyphosate combined with
a "fungicidally synergistic effective amount" of certain fungicides including,
e.g., strobilurins. Clinton discloses methods for disease control in plants in
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Application 11/996,978
which a composition containing glyphosate is applied to the plant. (FF 1,
FF2.) Clinton teaches a preferred embodiment where glyphosate is admixed
with a fungicidal compound where such compound may include, among
others, members of the chemical group strobilurins. (FF3.) Clinton teaches
that its composition containing glyphosate and a fungicide are particularly
effective in controlling fungal disease and may provide synergistic activity
against susceptible fungal pathogens. (FF4, FF5.) Accordingly, we find that
the evidence of record supports the Examiner's position that Clinton
anticipates claim 1. In particular, we note but do not find persuasive
Appellant's argument that Clinton does not disclose combining glyphosate
with a "fungicidally synergistic effective amount" of fungicide in light of
Clinton's explicit disclosure of the synergistic effect of its preferred
embodiment containing glyphosate and certain fungicides. (Id.)
Claim 13 depends from claim 1 and additionally require that the crop
be a glyphosate-sensitive crop. Appellant argues that Clinton does not
anticipate this claim because its disclosure is directed towards glyphosate
tolerant crops. We are not persuaded. Clinton discloses that, "[i]n a
preferred aspect, the crop plant for which disease control, prevention or
treatment is desired is glyphosate tolerant." (FF6 (emphasis added).) As
plants are either glyphosate tolerant or glyphosate sensitive, Clinton's
disclosure of glyphosate tolerant plants as "preferred" also discloses the use
of its method on glyphosate sensitive plants, albeit as a non-preferred
embodiment.
The evidence of record supports the Examiner's position that Clinton
anticipates claims 1 and 13. Claims 3, 4, 11-12, and 14--17 have not been
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Application 11/996,978
argued separately and therefore fall with claims 1 and 13. 37 C.F.R.
§ 41.37(c)(l)(iv).
II.
Issue
The Examiner has rejected claims 1, 3, 4, and 9-12 under 35 U.S.C. §
103 as obvious over Oakley. The Examiner finds that Oakley teaches "a
composition and method for increasing the yield in glyphosate-resistant
legumes such as soybeans, in which strobilurins ... are used with a
glyphosate in a synergistically active amount, and wherein this mixture can
further comprise an azole fungicide." (Final Act. 7.) The Examiner finds
that "the combination of glyphosate and a strobilurin and/or azole fungicide
obviously results in the effective/synergistic protection and/or treatment of
crops infested by a phytopathogenic organism as such plants would not
exhibit synergistically increased growth/vigor/yields if they were infected by
a phytopathogenic organism." (Id. at 7-8.)
Appellant contends that Oakley does not suggest a method of
protecting against or treating infestations by phytopathogenic organisms or
the use of a "fungicidally synergistic effective amount of ... fungicide."
(Br. 13.) Instead, Appellant argues that Oakley teaches a method of
increasing yield and further argues that disclosure of a synergistically active
amount for increasing yield does not necessarily suggest use of a
"fungicidally" synergistic effective amount. (Id.)
The issue with respect to this rejection is whether Oakley render
obvious a method of protecting or treating crops against a phytopathogenic
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organism by applying an amount of glyphosate and a "fungicidally
synergistic effective amount" of at least one fungicide recited in claim 1.
Findings of Fact
FF7. Oakley relates to a method for yield improvement in legumes in
which the plants or the seed are treated with a mixture comprising a
strobilurin and a glyphosate derivative. (Oakley Abstract.)
FF8. Oakley teaches that strobilurins are able to increase yields in
crop plants in addition to their fungicidal action. (Id. at i-f 22.)
FF9. Oakley teaches that fungicidal active ingredients that can be
used in its invention are certain strobilurins alone or in mixture with other
fungicidal active ingredients, in particular certain azoles. (Id. at i-f 62.)
FF 10. Oakley teaches that application of glyphosate and strobilurins
results in a synergistic effect in legumes; that is, "the purely additive (in
mathematical terms) yield-increasing effect of strobilurin and of the
glyphosate derivative is surpassed by application of the mixture according to
the invention." (Id. at i-f 24.)
FF 11. Oakley teaches application rates for strobilurin in the range of
from 0.01to2.0 kg of active ingredient per hectare; application rates for
glyphosate derivative of from 0.1 to 6.0 kg of active ingredient per hectare;
and weight ratio of fungicide to glyphosate of 5:1to0.01:1, preferably 1:1 to
0.1:1. (Id. at i-fi-f 81-83.)
FF12. Oakley provides a use example in which 360 g I hectare of
glyphosate and 50 or 100 g I hectare of pyraclostrobin were applied to soya
fields either 30 or 60 days after planting. (Id. at i-fi-1101-102.)
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FF 13. The Specification discloses an embodiment comprising a
combination of glyphosate and a strobilurin fungicide (azoxystrobin), where
the fungicide was applied at the rate of 50 or 100 g per hectare and
glyphosate was applied at the rate of 500 g per hectare. (Spec. Table 13.)
FF14. Oakley teaches that the increased yield produced by its
invention is not necessarily connected to a successful control of harmful
fungi, as the experiment fields used were free from disease. (Id. at i-f 98.)
However, it also teaches that, in the case where the plants were infected by
fungi, "the yield would be increased even more since the fungicidal active
ingredients [(i.e., strobilurins and azoles or their mixtures)] constitute
extremely efficient fungicides." (Id. at i-f 98.) Thus, Oakley teaches that
"[y ]ield losses caused by harmful fungi can be counteracted effectively by
the methods according to [its] invention." (Id.)
Analysis
We agree with the Examiner that Oakley renders claim 1 obvious. As
discussed above, Claim 1 relates to a method of protecting or treating plant
crops against a phytopathogenic organism by applying glyphosate combined
with a "fungicidally synergistic effective amount" of certain fungicides
including, e.g., strobilurins.
Oakley teaches a method for yield improvement in legumes in which
the plants or the seed are treated with a mixture comprising strobilurin and a
glyphosate derivative. (FF7.) It would have been obvious to apply this
method to protect or treat plant crops such as legumes against fungi while
also improving yield, since strobilurin is a well-known fungicide. (FF14.)
In fact, Oakley explicitly teaches that its methods can counteract yield losses
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caused by harmful fungi because the fungicidally active ingredients used in
its methods are efficient fungicides. (Id.) Finally, Oakley teaches
application rates for strobilurin that overlaps the range of the fungicidally
synergistic effective amount of fungicide disclosed in the Specification.
(FFl 1-13.) Thus, the evidence of record supports a prima facie case of
obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (even a
slight overlap in range establishes a prima facie case of obviousness).
Appellant contends that Oakley does not suggest a method of
protecting against or treating infestations by phytopathogenic organisms or
the use of a "fungicidally synergistic effective amount of ... fungicide."
(Br. 13.) These arguments are not persuasive for the reasons already
discussed. Neither has the Appellant provided any evidence that the claims
are otherwise non-obvious. Accordingly, the evidence of record supports
the Examiner's conclusion that Oakley renders claim 1 obvious. Claims 3,
4, and 9-12 have not been argued separately and therefore fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
III.
Issue
The Examiner has rejected claims 1, 3, 4, and 7-18 under 35 U.S.C. §
103 as obvious over the combination of Clinton and Asrar. 6 The Examiner
6 The Examiner rejected claims 7-10 and 18 in view of Clinton and further
in view of Asrar and rejected claims 1, 3, 4, and 7-18 in view of Asrar and
further in view of Clinton. (Final Act. 8, 13.) We address these rejections
together. Cf In re Krammes, 314 F.2d 813, 816-17 (CCPA 1963) (finding
that a different order of combining the references did not constitute a new
ground of rejection).
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Application 11/996,978
finds that the combination of Clinton and Asrar teaches each element of
claims 1, 3, 4, and 7-18. (Final Act. 9-11, 13-15.) The Examiner further
concludes that it would have been obvious to a skilled artisan to use Asrar's
compositions in Clinton's methods of treating fungal infections to arrive at
the claimed inventions. (Id. at 11-12, 16-17.) Among other things, the
Examiner finds that the specific fungicides cited in the claims are all known
compounds while glyphosate is a well-known herbicide. (Id. at 12.) Given
the disclosures in Clinton that combining fungicides and glyphosate lead to
increased fungicidal activity, the Examiner finds that a skilled artisan would
have motivation and reasonable expectation of success in applying
compositions of glyphosate and known fungicidal mixtures to plants to
arrive at the claimed invention. (Id.)
Appellant has not disputed that the combination of Clinton and Asrar
disclose the specific fungicide( s) (claims 3, 4, 7-10), plant type( s) (claims
11, 12, 15-18), and phytopathogenic organism(s) (claims 14, 17, 18)
claimed in dependent claims 3, 4, 7-12, and 14--18. However, Appellant
contends that the combination of Clinton and Asrar fails to suggest the
synergism required in the method of claim 1. (Br. 15-16, 19.) Appellant
also contends that it would not have been obvious to a skilled artisan to
utilize Asrar's compositions in Clinton's methods for protecting a plant from
fungi and that, in any event, the artisan would not have expected such
compositions to have a synergistic effect. (Id. at 19.) In particular,
Appellant argues that Asrar is directed to increasing the yield of glyphosate-
resistant plants in the absence of pest pressure, not to methods of treating or
protecting plants against phytopathogenic organisms. (Id. at 16, 19.)
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Finally, Appellant contends that its Specification provides evidence of
unexpected results rendering the claims at issue non-obvious. (Id. at 17, 19.)
With respect to claim 13, Appellant contends that Clinton and Asrar
fails to teach the use of a glyphosate-sensitive crop. (Id. at 20.)
The issue with respect to this rejection is whether the evidence of
record supports the Examiner's conclusion that the combination of Clinton
and Asrar renders claims 1 and 13 obvious.
Findings of Fact
FF 15. Asrar teaches a method of improving the yield and vigor of an
agronomic plant involving treating the plant with an active agent having the
capacity to improve the yield and/or the vigor of the plant whether or not the
plant is under pest pressure from fungal pathogens. (Asrar Abstract, i-f 22.)
FF 16. Asrar teaches preferred embodiments where the active agent is
a diazole, triazole, or strobilurin-type fungicide, or a combination of any two
or more of these fungicides with others of these or certain different types of
fungicides. (Id. at i-f 47.)
FF 17. Asrar teaches applying the active agents of its invention to
plant seeds, soil in which the seed is to be planted or has been planted, or to
the foliage of the plant. (Id. at i-f 354.)
FF 18. Asrar teaches combining the active agents of its invention with
herbicides to obtain further beneficial results. (Id. at i-fi-128, 360.)
FF 19. Asrar teaches glyphosate as a preferred herbicide for use with
its invention. (Id. at i-fi-1362-363.)
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FF20. Asrar teaches that the active agent of its invention may be
combined with a fungicide that is applied for its fungicidal purposes. (Id. at
iT 364.)
FF21. Asrar teaches preferred application rates of 1 to 1000 g of
active agent per hectare, and more preferred application rates of 10 to 500 g
per hectare. (Id. at iT 377.)
Analysis
For the reasons already discussed in our analysis of the anticipation
rejection based on Clinton, we agree with the Examiner's conclusion that the
combination of Clinton and Asrar renders claim 1 obvious. "It is well
settled that 'anticipation is the epitome of obviousness."' In re McDaniel,
293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears, Roebuck &
Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
Appellant contends that the combination of Clinton and Asrar fails to
disclose a method of protecting or treating plant crops against
phytopathogenic organisms by applying glyphosate and a "fungicidally
synergistic effective amount" of a fungicide. (Br. 15-16.) We disagree. As
already discussed in our analysis of the anticipation rejection based on
Clinton, Clinton discloses these limitations.
Appellant also contends that Asrar is directed to increasing yield
rather than to protecting or treating plants against phytopathogenic
organisms through the use of glyphosate and a fungicidally synergistic
amount of certain fungicides. (Br. 16.) Even if this were true, however,
"[ n ]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
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combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In
this case, Clinton teaches compositions and methods for disease control in
plants and further teaches the fungicidally synergistic effect of combining
glyphosate and fungicidal compounds. (FFl, FF4, FF5.)
Appellant further contends that a skilled artisan would not be guided
to use Asrar's compositions in the method of Clinton with any reasonable
expectation of success as to synergistic protection from fungi, because "there
is no obvious or suggested connection" between using a composition to
increase the plant yield and to "synergistically" protect or treat the plant
against a phytopathogenic organism. (Br. 19.) We are not persuaded. Asrar
discloses the fungicidal activity of the active agent in its composition and
explicitly teaches that such active agent may be combined with a fungicide
applied for its fungicidal purposes. (FF16, FF20.) Asrar also teaches
glyphosate as a preferred herbicide for use in its composition, while Clinton
teaches synergistic fungicidal effect of combining glyphosate with
fungicides. (FF18, FF19.) In light of the above, we find that it would be
obvious for a skilled artisan to combine the teachings of Clinton and Asrar to
arrive at the claimed inventions. "The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
Finally, Appellant conclusorily contends that the examples in the
Specification provides evidence of unexpected results. We are likewise
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unpersuaded. Assuming that the examples suffice to show synergistic
fungicidal effect when glyphosate is combined with certain fungicides,
"[s]ynergism, in and of itself, is not conclusive ofunobviousness in that
synergism might be expected." In re Kollman, 595 F.2d 48, n.6 (CCPA
1979). In this case, any synergism demonstrated in the examples is not
unexpected, since the prior art teaches such synergistic effect (FF4, FF5). In
re Skoner, 517 F.2d 947, 950 (CCPA 1975) ("Expected beneficial results are
evidence of obviousness of a claimed invention. Just as unexpected
beneficial results are evidence of unobviousness. ").
Appellant separately argues that Clinton and Asrar do not render
claim 13 obvious, because they do not disclose applying their methods to
glyphosate-sensitive crops. We are not persuaded for the reasons already set
forth in the discussion of the anticipation rejection.
The evidence of record supports the Examiner's conclusion that the
combination of Clinton and Asrar renders claims 1 and 13 obvious. Claims
3, 4, 7-12, and 14--18 have not been argued separately and therefore fall
with claims 1and13. 37 C.F.R. § 41.37(c)(l)(iv).
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SUMMARY
We affirm the rejection of claims 1, 3, 4, and 11-17 under 35 § U.S.C.
102 as anticipated by Clinton. We also affirm the rejections under 35 §
U.S.C. 103 of claims 1, 3, 4, and 9-12 as obvious over Oakley and claims 1,
3, 4, and 7-18 as obvious over the combination of Clinton and Asrar.
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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