Ex Parte Hermann et al

Patent Trial and Appeal Board

Aug 29, 2016

13468013 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/468,013 05/09/2012 Dietrich Hermann
26748 7590 08/31/2016
Syngenta Crop Protection LLC
Patent Department
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
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.
71035-US-REG-CNAT-l 6831
EXAMINER
BORI, IBRAHIM D
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
global.patents@syngenta.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETRICH HERMANN, JOSE OTILIO MILAN,
COLIN EDWARD MILLS, and MARK ZAJAC
Appeal2014-007285
Application 13/468,013
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
TA WEN CHANG, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a method
of controlling one or more phytopathogenic diseases on turf grass. The
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as Syngenta Crop
Protection, LLC (see Br. 3).
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Application 13/468,013
Statement of the Case
Background
"High quality, healthy turf is essential, for example, to the golfing
industry. Accordingly, there remains a need in the art for novel methods to
enhance turf grass quality and protect turf grass against phytopathogenic
diseases" (Spec. 1 :20-22).
The Claims
Claims 1-16 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A method of controlling one or more phytopathogenic
diseases on turf grass or on seeds thereof, which comprises
applying to the turf grass, the locus thereof or seeds thereof,
a composition, that, in addition to formulation adjuvants,
comprises a fungicidally effective amount of at least one
compound of formula I:
wherein A is.
N
0
or \
\\\
)cca~
CH CH~ A2
~ 3 ..
or a tautomer of the at least one compound of formula I.
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Application 13/468,013
The Issues
A. The Examiner rejected claims 1, 2, and 4--16 under 35 U.S.C. § 103(a)
as obvious over Ehrenfreund '5892 and Gunner3 (Non-Final Act. 1/31/13 6-
13).
B. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103(a) as
obvious over Ehrenfreund '723 4 and Gunner (Non-Final Act. 1/31/13 13-
15).
Because the same issues are dispositive for both rejections, we will
consider the rejections together.
The issue with respect to these rejections is: Does the evidence of
record support the Examiner's conclusion that either Ehrenfreund '589 or
Ehrenfreund '723, in combination with Gunner, renders claims 1 and 15
obvious?
Findings of Fact
1. Ehrenfreund '589 teaches compounds of formula (I):
(l)
(Ehrenfreund '589 1:11-14).
2 Ehrenfreund et al., WO 2004/035589 Al, published Apr. 29,
2004 ("Ehrenfreund '589").
3 Gunner et al., US 2003/0152554 Al, published Aug. 14, 2003
("Gunner").
4 Ehrenfreund et al., WO 2004/058723 Al, published July 15, 2004
("Ehrenfreund '723").
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Application 13/468,013
2. Ehrenfreund '589 teaches that "[t]able 15 provides 235
compounds of formula (I) where Het is
R2 and R3 are both hydrogen; and X, Y, R 1, R4, Rs, R6 and R7 are as defined
in Table 15" (Ehrenfreund '589 18:12-16) and table 15 ofEhrenfreund '589
teaches a specific compound of formula I, 15.207, where R 1, R4, Rs, R6 and
R7 are each H, and where Y is CH(C3H7-(n)) syn or anti (see Ehrenfreund
'589, table 15).
3. The Examiner finds that Ehrenfreund '589 teaches "at least one
compound of formula I, wherein, A is Al" (Non-Final Act. 1/31/2013 7-8),
and Appellants do not contest that compound 15.207 of Ehrenfreund '589 is
a particular compound falling within the scope of claim 1 (see Br. 8).
4. Ehrenfreund '589 teaches that the "compounds of formula (I)
are, for example, effective against the phytopathogenic fungi of the
following classes ... Rhizoctonia" (Ehrenfreund '589 37:11-14) and
exemplifies treatment of Rhizoctonia solani on rice (see Ehrenfreund '589
46:17-28).
5. Ehrenfreund '589 teaches that "target crops to be protected
typically comprise the following species of plants: cereal (wheat, barley, rye,
oat, rice, maize, sorghum and related species)" (Ehrenfreund '589 37:21-
23).
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6. Ehrenfreund '723 teaches "use of the active ingredients or
compositions in agriculture or horticulture for controlling or preventing
infestation of plants by phytopathogenic microorganisms, preferably fungi"
and specifically using compounds of formula (I):
(Ehrenfreund '723 1:7-15) and specifically teaches a compound 1.67
(Ehrenfreund '723 13).
7. The Examiner finds that Ehrenfreund '723 teaches "at least one
compound of formula I, wherein, A is A2" (Non-Final Act. 1/31/2013 13),
and Appellants do not contest that compound 1.67 of Ehrenfreund '723 is a
particular compound falling within the scope of claim 1 (see Br. 15).
8. Ehrenfreund '723 teaches that "target crops to be protected
typically comprise the following species of plants: cereal (wheat, barley, rye,
oat, rice, maize, sorghum and related species" (Ehrenfreund '723 82:3-5).
9. Ehrenfreund '723 teaches an example where compound 1.67
functions to prevent fungal infestation of barley (see Ehrenfreund '723
89:21-29).
10. Gunner teaches that "Rhizoctonia solani is a major soil-borne
fungal phytopathogen, and is associated with ... brown patch in creeping
bentgrass and various other turf grasses of high commercial value" (Gunner
ii 3).
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11. Gunner teaches a
method comprising applying a composition ... to an
environment in which a plant pathogenic fungus may grow.
Such an environment can be soil, a plant seed, a plant, or a
plant part ... in an amount effective to control or suppress
fungal growth, e.g., in an amount sufficient to control or
suppress observable symptoms on a plant of a fungal disease.
(Gunner i-f 31 ).
12. Gunner teaches plants including "Kentucky bluegrass (Poa
pratensis), creeping bentgrass (Agrostris palustris)" (Gunner i-f 33).
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."
KSRint'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. As noted by the Supreme Court in KSR, "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Non-Final Act. 1/31/2013 6-15; FF 1-12)
and agree that the claims are obvious over either Ehrenfreund '589 or
Ehrenfreund '723, in combination with Gunner. We address Appellants'
arguments below.
Appellants contend that "one skilled in the art, given the teaching of
Ehrenfreund'589, would not have been motivated or guided to focus on
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Ehrenfreund'589's compound 15.207 instead of the thousands of other
compounds disclosed in Ehrenfreund'589" (Br. 9).
We are not persuaded. Simply because either Ehrenfreund '589 or
Ehrenfreund '723 "discloses a multitude of effective combinations does not
render any particular formulation less obvious." Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Corkill is particularly
relevant, where an obviousness rejection was affirmed in light of prior art
teaching that "hydrated zeolites will work" in detergent formulations, even
though "the inventors selected the zeolites of the claims from among
'thousands' of compounds." In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985).
The instant obviousness case is similar, where either of the
Ehrenfreund disclosures teach thousands of fungicides that would all be
expected to function (FF 1-8) (and Ehrenfreund '723 teaches that compound
1.67 does function to protect barley (FF 9)). We note that Appellants
provide no evidence of any secondary consideration such as unexpected
results.
Appellants contend that
one skilled in the art, given the teaching of Ehrenfreund[]'589,
would not have been lead to seek out the teaching of Gunner
directed to bacteria-containing compositions suitable for use on
turfgrass, and subsequently decide to utilize
Ehrenfreund[]'589's compound 15.207, instead of Gunner's
bacteria-containing compositions, in a method of controlling
one or more phytopathogenic diseases on turfgrass.
(Br. 10).
We find this argument unpersuasive because selecting the fungicides
of either Ehrenfreund '589 or Ehrenfreund '723 for treatment of fungal
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infestations in turfgrass as suggested by Gunner is merely the "predictable
use of prior art elements according to their established functions." KSR, 550
U.S. at 417. That is, the ordinary artisan would reasonably select known
fungicides, particularly fungicides know for treatment of grasses such as
cereals (FF 5, 8), for treatment of other grasses such as turfgrass (FF 10-12),
because the artisan would have a reasonable expectation of success in using
these known equivalents.
Our obviousness conclusion is consistent with Wrigley, where the
Federal Circuit found a "strong case of obviousness based on the prior art
references of record. [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." Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed.
Cir. 2012). Here, all that is required is to select one of the known fungicides
used for treatment of plants taught by Ehrenfreund '589 or Ehrenfreund '723
for the fungicidal treatment of turf grass taught by Gunner (FF 1-12).
Appellants contend that:
Although the holding in the Takeda case involved motivation
for modifying a known compound, Appellants respectfully
submit that a similar analysis applies to the required motivation
for ( 1) selecting a single compound from thousands of
compounds disclosed in the prior art, and (2) utilizing the
selected compound in a method of controlling one or more
phytopathogenic diseases on turf grass
(Br. 11).
We find this argument unpersuasive because the Takeda analysis is
drawn to the obviousness of new chemical compounds, not known
compounds, and represents a "lead compound" situation where the specific
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structure of the compound at issue was not taught by the prior art, and the
obviousness issue turned on whether modifications to a particular prior art
compound rendered the claimed compounds obvious. See Takeda Chem.
Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007).
Here, there is no dispute that Ehrenfreund '589 and Ehrenfreund '723
each teach specific compounds that fall within the scope of claim 1 (FF 3,
7).
Takeda does not run counter to the flexible analysis set out by the
Supreme Court in KSR that recognizes the obviousness of known
equivalents. "[I]t is fair to say that there were 'a finite number of identified,
predictable solutions' to the problem of finding" fungicides for use on
turfgrass and that treatment with specific disclosed fungicides taught by
Ehrenfreund '589 or Ehrenfreund '723 was the "product not of innovation
but of ordinary skill and common sense." See Wrigley, 683 F.3d at 1364---65
(Fed. Cir. 2012) (quoting KSR, 550 U.S. at 421).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that either
Ehrenfreund '589 or Ehrenfreund '723, in combination with Gunner, renders
claims 1 and 15 obvious.
SUMMARY
In summary, we affirm the rejection of claims 1 and 15 under
35 U.S.C. § 103(a) as obvious over Ehrenfreund '589 and Gunner. Claims
2, 4--14, and 16 fall with claim 1.
We affirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious over Ehrenfreund '723 and Gunner. Claim 3 falls with claim 1.
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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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