Ex Parte Hacker et al

Board of Patent Appeals and Interferences

Nov 2, 2010

11400463 (B.P.A.I. Nov. 2, 2010)

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.
11/400,463 04/06/2006 Erwin Hacker 09879-00046-USA-1 2903
7590 11/02/2010
Connolly Bove Lodge & Hutz LLP
1007 North Orange Street
P.O. Box 2207
Wilmington, DE 19899
EXAMINER
PRYOR, ALTON NATHANIEL
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
11/02/2010 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 ERWIN HACKER, MARTIN HESS,
FREDERIC TOP, WOLFGANG BENZ, and
MARKUS DOLLINGER
__________

Appeal 2010-005043
Application 11/400,463
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of applying herbicides. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
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Statement of the Case
The invention relates “crop protection compositions which can be
used against harmful plants, for example in crop plants, and which comprise,
as active compounds, a combination of at least three herbicides” (Spec. 1, ll.
8-10).
The Claims
Claims 2-9 and 11-16 are on appeal. Claim 16 is representative of the
argued claims. The remaining claims have not been argued separately and
therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 16 reads
as follows:
16. A herbicide combination having an effective
content of components (A), (B) and (C), wherein
(A) is one or more herbicides selected from
the group consisting of the compounds of the
formula (I) and their salts
(B) is one or more herbicides selected from
the group consisting of the compounds of the
formula (II) and their salts,

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(C) is one or more herbicides selected from
the group consisting of the compounds
(C1) diflufenican
(C3) florasulam
(C4) halosulfuron
(C6) picolinafen
(C7) cinidon-ethyl
(C17) fenoxaprop
(C20) clodinafop
(C28) mecoprop
(C35) bromoxynil
(C40) flucarbazone
(C48) flupyrsulfuron
(C54) cycloxydim
(C56) clethodim
(C57) carfentrazone, and
(C64) flufenacet.

The Issue
The Examiner rejected claims 2-9 and 11-16 under 35 U.S.C. § 103(a)
as obvious over Bieringer2 (Ans. 3-4).
The Examiner finds that “Bieringer teaches a herbicidal composition
comprising mesosulfuron-methyl (compound of formula I where R1 =
methyl, R2 = CH2NHSO2CH3, and R3 = methoxy)” (id. at 3). The
Examiner finds that “Bieringer teaches the addition of one or more of the

2 Bieringer et al., US 2003/0060367 A1, issued Mar. 27, 2003.
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herbicide compounds including procarbazone (compound of instant formula
II), tritosulfuron, mesotrione, metosulam, clopyralid, flumetsulam,
flupoxam, flurtamone, florsulam, halosulfuron, aclonifen, and amicarbazone
to the herbicidal composition” (Ans. 3). The Examiner finds it obvious “to
try combining mesosulfuron-methyl with procarbazone and tritosulfuron,
mesotrione, metosulam, clopyralid, flumetsulam, flupoxam, flurtamone,
florsulam, halosulfuron, aclonifen and / or amicarbazone” (id.)
Appellants contend that they do “not believe that the teachings of
Bieringer et al. would lead one of ordinary skill to believe that the presently
claimed combination of three herbicides would solve some problem that is
identified in Bieringer et al. (or anywhere else in the prior art) or would have
any kind of beneficial effect” (App. Br. 14).
Appellants contend that
it is respectfully submitted that applicant has already
provided evidence of unexpected results to the Patent Office
that should be sufficient to overcome such a prima facie
case of obviousness. These unexpected results can be found
in the data provided in the specification of the present patent
application (at page 52, last paragraph), as well as the data
provided in the Declaration of Dr. Erwin Hacke . . . which
shows the synergistic results that are obtained from a variety
of three herbicide combinations that are within the scope of
the present claims.

(Id. at 15.) Appellants contend that “the data that is of record in the present
application demonstrate that the combinations of three herbicides that are the
subject of the present claims show unexpected results (i.e., better control of
the weeds than would be expected or less damage to the crop plants than
would be expected or both)” (id. at 18).
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The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner’s conclusion
that the claimed combination of herbicides would have been obvious over
the teachings of Bieringer?
(ii) and, if so, have Appellants presented evidence of unexpected
results that outweighs the evidence supporting a conclusion of obviousness?
Findings of Fact
1. Bieringer teaches “certain active compounds from the group of
the sulfonylureas or their salts in combination with certain structurally
different herbicides act together in a particularly advantageous manner, for
example when they are employed in crop plants which are suitable for the
selective use of the herbicides” (Bieringer 1 ¶ 0005).
2. Bieringer teaches that “[e]xamples of preferred compounds of
the formula (I) and their salts are methyl 2-[3-(4,6-dimethoxypyrimidin-2-
yl)ureidosulfonyl]4-methanesulfone-aminomethyl-benzoate (mesosulfuron-
methyl, A1.1) and its sodium salt (A1.2)” (Bieringer 3 ¶ 0043).
3. Bieringer teaches that the “herbicide combinations according to
the invention comprise a herbicidally effective amount of components (A)
and (B) and may comprise further components, for example agrochemically
active compounds of a different type and/or formulation auxiliaries and/or
additives customary in crop protection, or they may be employed together
with these” (Bieringer 3 ¶ 0039).
4. Bieringer teaches “(B) denotes one or more herbicides which
act selectively in some monocotyledonous crops against monocotyledonous
and/or dicotyledonous harmful plants, which herbicides are selected from
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the group of compounds consisting of . . . (B2) BAY MKH 6561
(procarbazone)” (Bieringer 1 ¶¶ 0014, 0016).
5. The Examiner finds that the herbicide procarbazone is a
compound of formula II of claim 16 (see Ans. 3).
6. Bieringer teaches that the
herbicides of component B) are, for example, sulfonamides,
for example from the group of the sulfonylureas, such as
halosulfuron, . . . or from the group of the sulfanilides, such
as florasulam . . . or urea derivatives, such as . . .
flucarbazone, procarbazone . . . aniline derivatives, such as
picolinafen, flufenacet.

(Bieringer 4 ¶ 0045.)
7. Bieringer further teaches a herbicide of component B) that is
cinidon-ethyl or mecoprop (Bieringer 2 ¶ 0021; 4 ¶ 0056).
8. Bieringer teaches that
It may be advantageous to combine one or more
compounds (A) with a plurality of compounds (B) or a
plurality of compounds (A) with one or more compounds
(B). Furthermore, the combinations according to the
invention can be used together with other agrochemically
active compounds, for example from the group of the
safeners, fungicides, herbicides, insecticides and plant growth
regulators, or with formulation auxiliaries and additives
customary in crop protection. Additives are, for example,
fertilizers and colorants.

(Bieringer 9 ¶ 0124.)
9. Bieringer teaches that the “combinations according to the
invention (=herbicidal compositions) have an outstanding herbicidal activity
against a broad spectrum of economically important monocotyledonous and
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dicotyledonous harmful plants. The active compounds also act efficiently on
perennial weeds which produce shoots from rhizomes, rootstocks or other
perennial organs and which are difficult to control” (Bieringer 9 ¶ 0125).
10. The table on page 52 of the Specification is reproduced below:

The above table shows the effects of the application of herbicides according
to the Specification.
Principles of Law
“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). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. Moreover, an “[e]xpress suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. at 421.
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Analysis
Bieringer teaches herbicide compositions and combinations of
herbicides (FF 1, 3). In particular Bieringer teaches herbicides which can be
used in combination may comprise a component (A) of formula (I) which is
mesosulfuron (FF 2), a component (B) of formula (II) which is procarbazone
(FF 4) and a component (C) which may be “for example, sulfonamides, for
example from the group of the sulfonylureas, such as halosulfuron, . . . or
from the group of the sulfanilides, such as florasulam . . . or urea derivatives,
such as . . . flucarbazone, procarbazone . . . aniline derivatives, such as
picolinafen, flufenacet” (Bieringer 4 ¶ 0045; FF 6).
Bieringer specifically teaches that
It may be advantageous to combine one or more
compounds (A) with a plurality of compounds (B) or a
plurality of compounds (A) with one or more compounds
(B). Furthermore, the combinations according to the
invention can be used together with other agrochemically
active compounds, for example from the group of the
safeners, fungicides, herbicides, insecticides and plant growth
regulators, or with formulation auxiliaries and additives
customary in crop protection. Additives are, for example,
fertilizers and colorants.

(Bieringer 9 ¶ 0124; FF 8.)
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary creativity would have predictably
combined the known herbicides of Bieringer as expressly suggested by
Bieringer. “[W]hen the question is whether a patent claiming the
combination of elements of prior art is obvious,” KSR directs that “a court
must ask whether the improvement is more than the predictable use of prior
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art elements according to their established functions.” KSR, 550 U.S. at 417.
Here, the herbicides are predictably used as suggested by Bieringer,
according to their established functions as herbicides.
Appellants contend that they do “not believe that the teachings of
Bieringer et al. would lead one of ordinary skill to believe that the presently
claimed combination of three herbicides would solve some problem that is
identified in Bieringer et al. (or anywhere else in the prior art) or would have
any kind of beneficial effect” (App. Br. 14).
We are not persuaded. Bieringer expressly teaches the specific
herbicides and teaches combinations of herbicides (FF 1-8). While we are
aware that hindsight bias often plagues determinations of obviousness,
Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that
the Supreme Court has clearly stated that the “combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results,” KSR, 550 U.S. at 401.
Appellants contend that “the data that is of record in the present
application demonstrate that the combinations of three herbicides that are the
subject of the present claims show unexpected results (i.e., better control of
the weeds than would be expected or less damage to the crop plants than
would be expected or both)” (App. Br. 18). Dr. Hacker states that regarding
the combination of herbicides “the results were unexpected and superior”
(Hacker Dec. 1).3
We are not persuaded. While Appellants argue that the data shows
better control than would have been expected, it appears that Appellants

3 Declaration of Dr. Erwin Hacker, submitted January 10, 2007.
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determined the expected damage by simply adding the individual damage
caused by compounds A+B and compound C together to obtain this value.
However, Appellants provide no reason or evidence that the expected
damage would be additive, rather than limited to the damage caused by A+B
alone or some lesser, non-additive, value.
Further, the data for many of the “C” compounds do not show
additive damage or control that substantially differs from the “expected”
results (see Exhibit I of App. Br.) For example, halosulfuron, identified as
“C3” has the expected % damage of A+B of 23% and 0 % expected damage
from C alone, with expected damage of 23% shown. Halosulfuron results in
Exhibit I show an actual damage of 20%, which is very close to the expected
value of 23%. Halosulfuron has an expected % weed control of 80% which
is identical to the actual weed control of 80% (see Exhibit I of App. Br.).
Therefore, it appears that the use of halosulfuron actually yields expected
results based on Exhibit I. Appellants have the burden of showing that the
claimed invention imparts not just any improvement, but an unexpected
improvement. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also In
re Skoner, 517 F.2d 947, 948 (CCPA 1975) (Expected results are evidence
of obviousness just as unexpected results are evidence of unobviousness).
Here, the data for most of the compounds does not show results which
can reasonably be characterized as unexpected. That is, most of the claimed
compositions containing “C” compounds show actual % damage which is
close to, or identical with, the damage which is denominated in the tables as
the “Expected %-Damage.” Similarly, most of the compositions containing
“C” compounds show actual weed control values which are close to, and in
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the case of halosulfuron, identical with, the “Expected % Control” values
shown in the Exhibits. This evidence suggests that the results are expected,
and the invention obvious, rather than the converse.
Appellants do not provide statistical analysis or other discussion to
distinguish which results are truly “unexpected” and which simply differ
slightly from the “expected” values due to random chance.
We are not persuaded that this data demonstrates unexpected results.
Even if there may be one or two compounds for which the data, after further
analysis and explanation, might show results which are significantly
superior, the data presented is not commensurate in scope with the claim,
which specifically claims compositions comprising any one of a series of
“C” compounds. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(Unexpected results must also be “commensurate in scope with the degree of
protection sought by the claimed subject matter.”)
Conclusion of Law
(i) The evidence of record supports the Examiner’s conclusion that the
claimed combination of herbicides would have been obvious over the
teachings of Bieringer.
(ii) Appellants have not presented evidence of unexpected results that
outweighs the evidence supporting a conclusion of obviousness.

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SUMMARY
In summary, we affirm the rejection of claim 16 under 35 U.S.C. §
103(a) as obvious over Bieringer. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-9 and 11-15
as these claims were not argued separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

cdc

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