Ex Parte Loughner

Board of Patent Appeals and Interferences

Apr 20, 2010

11351765 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL LOUIS LOUGHNER
__________

Appeal 2009-013467
Application 11/351,765
Technology Center 1600
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Decided: April 20, 2010
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Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for protecting turfgrass from the harmful effects of herbicides. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2009-013467
Application 11/351,765

Statement of the Case
Background
“Herbicides that inhibit acetolactate synthase (ALS) have recently
been found to effectively control broadleaf weeds in turfgrass at relatively
low application rates; however, even at the low doses required to control the
broadleaf weeds, some stress is often observed in many non-target turfgrass
species” (Spec. 1, ll. 20-23).
The Specification teaches that “the harmful effects of ALS inhibiting
herbicides on turfgrass are reduced by applying the herbicides as solid
granular compositions” (Spec. 2, ll. 4-6).
The Claims1
Claims 1 and 6 are on appeal. Claims 1 and 6 read as follows:
1. A method for protecting turfgrass from the harmful
effects of ALS inhibiting herbicides comprising the step of
treating the turfgrass or the locus thereof with a dry solid
granular herbicidal composition comprising an herbicidally
effective amount of the ALS inhibiting herbicide in
admixture with an agriculturally acceptable adjuvant or
carrier.

6. A method of Claim 1 in which the ALS inhibiting
herbicide is a triazolopyrimidine herbicide such as
cloransulam, diclosulam, florasulam, flumetsulam,
metosulam, penoxsulam and N-(5,7-dimethoxy-
[1,2,4]triazolo[1,5-α]pyrimidin-2-yl)-2-methoxy-4-
(trifluoromethyl)-3-pyridinesulfonamide.

1 Claims 2-5, 7, and 8 were withdrawn by the Examiner pursuant to
a restriction requirement.
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Appeal 2009-013467
Application 11/351,765

The prior art
The Examiner relies on the following prior art reference to show
unpatentability:
Anderson et al. US 5,665,673 Sep. 9, 1997

The issue
The Examiner rejected claims 1 and 6 under 35 U.S.C. § 103(a) as
being obvious over Anderson (Ans. 3).
The Examiner finds that “Anderson teaches a herbicidal composition
comprising a compound of formula A. See abstract, column 1 lines 13-61.
Anderson teaches the addition of numerous herbicides to the composition
including flumetsulam” (id.). The Examiner finds that “Anderson teaches
that the composition can be in the form of granules. See column 5 lines 4-15.
Anderson teaches a method of applying the composition to turf” (id.). The
Examiner concludes that “it would have been obvious to combine the
semicarbazone and flumetsulam in a single composition and then apply it to
turf and fallow” (id. at 5).
Appellant argues that “Anderson et al. teaches that the
semicarbazones of formula A are applied in spraying forms such as water
dispersible granules, etc. It does not teach or suggest broadcast application
of a dry solid granule of a compound of formula A, let alone one of an ALS
inhibiting herbicide” (App. Br. 3). Appellant argues that “Anderson et al.
does not teach or suggest to one of ordinary skill in the art that ALS
inhibiting herbicides can be made safer to turfgrass by being applied as a dry
solid granule” (id.). Appellant argues that “at page 10 of the specification
(Improved Turf Tolerance with Granule Herbicides) and in Tables I-II, the
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Appeal 2009-013467
Application 11/351,765

improved tolerance of tall fescue (Table I) and perennial rye grass (Table II)
is provided” (App. Br. 3).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has the Examiner met the burden of establishing a prima facie case
that it was obvious over Anderson to treat turfgrass with a dry granular
herbicidal composition comprising flumetsulam?
Findings of Fact (FF)
1. The Examiner finds that “Anderson teaches a herbicidal
composition comprising a compound of formula A” (Ans. 3).
2. The Examiner finds that “Anderson teaches the addition of
numerous herbicides to the composition including flumetsulam” (Ans. 3).
3. The Examiner finds that “Anderson teaches that the
composition can be in the form of granules” (Ans. 3).
4. Anderson teaches that “formulations, to be applied in spraying
forms such as water dispersible concentrates, water dispersible granules, or
wettable powders, may contain surfactants” (Anderson, col. 5, ll. 4-6).
5. The Examiner acknowledges that the granule of Anderson is “a
water dispersible granule” (Ans. 4).
Principles of Law
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)).
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Appeal 2009-013467
Application 11/351,765

“’[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
The Examiner concludes that Anderson’s teaching of herbicides in
water dispersible granules renders the claims “obvious with respect to
flumetsulam in the absence of showing unexpected results for the
flumetsulam compound in dry granule form” (Ans. 4).
While Anderson certainly teaches treating turfgrass with an herbicidal
composition including flumetsulam (FF 1-3), Anderson only teaches that the
herbicidal compositions are applied by spraying, i.e., in liquid form during
the application (FF 4-5). Anderson expressly teaches that “formulations, to
be applied in spraying forms such as water dispersible concentrates, water
dispersible granules, or wettable powders, may contain surfactants”
(Anderson, col. 5, ll. 4-6; FF 4).
The Examiner has not provided any evidence or rationale to support
the conclusion that Anderson’s teaching of water dispersible granules and a
method of using the same suggests a method of using a dry solid herbicidal
composition as required by Appellant’s claimed invention.
The Examiner has not met the burden of establishing a prima facie
case of obviousness in the first instance. There is no dispute that Anderson
does not teach the argued limitation. The Examiner has provided no
evidence or reasoning why flumetsulam, or any of the other ALS inhibitors,
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Appeal 2009-013467
Application 11/351,765

would have been applied as dry, solid granular herbicidal compositions as
required by Claim 1.
Conclusion of Law
The Examiner has not met the burden of establishing a prima facie
case that it was obvious over Anderson to treat turfgrass with a dry granular
herbicidal composition comprising flumetsulam.

SUMMARY
In summary, we reverse the rejection of claims 1 and 6 under 35
U.S.C. § 103(a) as being obvious over Anderson.

REVERSED

cdc

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