Ex Parte Mudge

Board of Patent Appeals and Interferences

Nov 16, 2010

10849509 (B.P.A.I. Nov. 16, 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.
10/849,509 05/19/2004 Laurence C. Mudge BAYERC 3.0-001 RE 6774
530 7590 11/16/2010
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
PRYOR, ALTON NATHANIEL
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
11/16/2010 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 LAURENCE C. MUDGE
__________

Appeal 2010-011847
Reissue Application 10/849,509
Patent 5,599,804
Technology Center 1600
__________

Before CAROL A. SPIEGEL, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

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.

Appeal 2010-011847
Reissue Application 10/849,509
Patent 5,599,804

2
STATEMENT OF THE CASE
This is a reissue application for U.S. Patent 5,599,804, Fungicidal
Compositions for the Enhancement of Turf Quality. According to Appellant,
the patent claims were amended three times during this reissue application:
(i) initially, to expressly exclude the fungicide "mancozeb" from
all of the method and composition claims, to cancel originally issued claim
9, and to add new claims 24-38;
(ii) then, to replace "comprises" with "consists essentially of" in
independent composition claims 10 and 23; and,
(iii) finally, to replace the prior exclusion of "mancozeb" with the
broader class of "an ethylenebisdithiocarbamate contact fungicide" (App. Br.
2).
Independent claim 1 contains the broadest description in the claims of
the active agents and reads as follows:
1. A method of combatting fungi and enhancing turf quality in turfgrass
which comprises applying to said turfgrass synergistic fungicidally effective
amounts of:
(a) a first active agent selected from the group consisting
of 1 part by weight of
(i) a monoester salt of a phosphorous acid of Formula (I):

wherein:
R is an alkyl radical having 2 to 4 carbon atoms,
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Application 10/849,509

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Me is an alkali metal, alkaline earth, or aluminum atom,
and
n is a whole number from 1 to 3 equal to the valence of
Me; and
(ii) phosphorous acid or an alkali or alkali earth metal
salt thereof; and
(b) from 0.01 to 0.1 parts by weight of a phthalocyanine
compound,
wherein said method does not include the application of an
ethylenebisdithiocarbamate contact fungicide.

Cited References

The Examiner relies on the following prior art references:

Lucas US 5,336,661 Aug. 9, 1994
Collins US 5,206,228 Apr. 27, 1993
Kato et al. JP 02138376 May 28, 1990
Nagashima et al. JP 03221576 Sep. 30, 1991

Gullino et al., Chemical Control of Dollar Spot and Brown Patch of
Turfgrass in Italy, Med. Fac Landhouww Univ., Gent 60/2b (1995).

Rohm and Haas, http://www2.siri.org/msds/f2/bzz/bzzsc.html, for
ingredients in Rohm and Haas Co.’s FORE TM. FUNGICIDE, 62440
(1991).

Fenn et al., Studies on the In Vitro and In Vivo Antifungal Activity of
Fosetyl-Al and Phosporous Acid, 74(5) Phytopathology, The American
Phytopathological Society, 606-611 (1994).

Grounds of Rejection
1. Claims 1-8, 10-17, 20-35, 37 and 38 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Lucas, Rohm and Haas in view of Collins.
2. Claims 1-8, 10-17, 20-35, 37 and 38 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Gullino, Fenn, Kato and Nagashima.
Appeal 2010-011847
Application 10/849,509

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FINDINGS OF FACT
The findings of fact relevant to all rejections are set forth below.
1. “Lucas teaches (see examples 1-8) using on turfgrass fungicidal treatment
formulations comprising:
a.1 part by weigh of certain monoester salts of phosphorous acid, for
example fosetyl-Al (preferably Aliette.TM.) and

b.1.5 to 2.5 parts by weigh of mancozeb (preferably FORE.TM.).
The FORE.TM. brand of mancozeb contains 70% mancozeb and 1-2% of
copper phthalocyanato(2-) which is a phthalocyanine compound also known.
as Pigment Blue 15. See http://www2.siri.org/msds/f2/bzz/bzzsc.html, for
ingredients in Rohm and Haas Co.'s FORE.TM. FUNGICIDE, 62440.

Accordingly, Lucas teaches turfgrass formulations comprising:
a. 1 part of certain monoester salts of phosphorous acid, for example fosetyl-
Al (preferably Aliette.TM .) and

b. 1.5 to 2.5 parts of mancozeb (preferably FORE.TM.) and
c. < 1 part by weight of Pigment Blue 15 as the phthalocyanine compound.”
(Ans. 4.)
2. “The Lucas ALIETTE and FORE formulations comprising the above
ingredients realized significant improvements in turf color as compared to
other Mancozeb containing formulations lacking Pigment Blue 15. See col.
5-6.” (Id.)
3. “Lucas further teaches the use of its compositions as 'wettable powders'
(as in instant claim 21 and 38) and 'aqueous suspensions' (as in instant
claims 20 and 37). See Lucas col. 3.” (Id.)
4. “The Lucas reference composition and method differs from the instant
claims insofar that it fails to teach:
Appeal 2010-011847
Application 10/849,509

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a. the substitution of the anti-fungal agent mancozeb with a different
antifungal agent such as phosphorous acid or alkali/alkaline earth metal salt
thereof (for all the instant claims)[.] In this regard, it is noted that mancozeb
is an ethylenebisdithiocarbamate fungicide excluded from the instant
claims;.

b. the substitution of Pigment Blue 15 with a different phthalocyanine
compound (only instant claims 4, 17, 27 and 35).” (Ans. 4-5.)

5. “Collins teach the anti-fungal use of BOTH monoester salts of
phosphorous acid AND phosphorous acid or alkali/alkaline earth metal salt
thereof for the added benefit of controlling arthropod pests when applied to
plants including turf. See Abstract; patent claims 1-18, including claim 9
drawn to turf; and col. 10. Collins additionally teaches, interchangeably, the
further incorporation of various colorants into its plant treatment
formulations including metal phthalocyanine dyestuffs. See col. 12,
especially lines 10-22.” (Id. at 5.)
6. The Examiner concludes that,
one of ordinary skill in the art at the time of
applicant's invention would have been motivated to
modify the Lucas reference turf treating
composition containing mancozeb to substitute the
Collins reference phosphorous acid or
alkali/alkaline earth metal salt since they both
possess analogous anti-fungal activities with the
added benefit of increase pesticide resistance
found in the Collins phosphorous acid or
alkali/alkaline earth metal salt fungicide.
Additionally, Collins provides motivation to
one of ordinary skill in the art to substitute one
functionally equivalent phthalocyanine compound
for another i.e. substitute the use of Pigment Blue
15 with a different phthalocyanine dye compound.
(Id.)

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7. The Examiner further concludes that
it would have been prima facie obvious to one of
ordinary skill in the art at the time of filing of the
instant claimed invention to substitute the Lucas'
mancozeb fungicide with the Collins phosphorous
acid or alkali/alkaline earth metal salt thereof
fungicide for added pesticide resistance as taught
by Collins and where necessary substitute a
different phthalocyanine dye for Pigment Blue 15
in the Lucas composition to attain analogous
colorant properties as taught by Collins. (Ans. 5-
6.)

8. Table 2 of the Specification, at columns 9 and 10, is said to show results
using Aliette alone (Example 6) compared to Aliette plus phthalocyanine
dye (Example 9 Exp 10622) and to show better results obtained with
Example 9 evidencing fungicidal synergism.
Discussion
1. Claims 1-8, 10-17, 20-35, 37 and 38 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Lucas, Rohm and Haas in view of Collins.
2. Claims 1-8, 10-17, 20-35, 37 and 38 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Gullino, Fenn, Kato and Nagashima.

ISSUE
The Examiner concludes that “it would have been prima facie obvious
to one of ordinary skill in the art at the time of filing of the instant claimed
invention to substitute the Lucas' mancozeb fungicide with the Collins
phosphorous acid or alkali/alkaline earth metal salt thereof fungicide for
added pesticide resistance as taught by Collins and where necessary
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Application 10/849,509

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substitute a different phthalocyanine dye for Pigment Blue 15 in the Lucas
composition to attain analogous colorant properties as taught by Collins.”
(Ans. 5-6.)
Appellant argues that the methods in all the claims “comprises
applying to said turfgrass synergistic fungicidally effective amounts” of two
active agents.2 (App. Br. 3.) Appellant argues that “the phthalocyanine
functions to synergize or enhance the effectiveness of the fungicide” (App.
Br. 12) and that the Examiner ignored or gave no weight to the term
“synergistic” fungicidally effective amounts in the claim. (See Ans. 8.)
The issue is: Does the cited prior art teach “synergistic fungicidally
effective amounts” of a first active agent and a phthalocyanine compound as
claimed.

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective

2 There were two Appeal Briefs submitted by the Appellant, we reference the
later Appeal Brief dated May 11, 2010.
Appeal 2010-011847
Application 10/849,509

8
evidence of nonobviousness, if present. All claim limitations must be
considered. In re Royka, 490 F.2d 981, 985 (CCPA 1974). "By its terms, a
'synergistically effective amount' is a functional limitation." Geneva
Pharms., Inc. v. GlaxoSmithKline, PLC, 349 F.3d 1373, 1384 (Fed. Cir.
2003).
ANALYSIS
Lucas teaches the combination of Aliette™ and FORE™, wherein
FORE™ is a combination of Mancozeb and Pigment Blue 15. The
Examiner finds that Collins teaches the incorporation of various colorants
into plant treatment formulations. (See Ans. 5.) The Examiner concludes
that Collins provides motivation to one of ordinary skill in the art to
substitute one functionally equivalent phthalocyanine compound for another
i.e., to substitute the use of Pigment Blue 15 with a different phthalocyanine
dye compound. (Id.)
Appellant contends that Collins “does not report any instance in which
ALIETTE™ or any other phosphorous acid derivative was actually
combined with a phthalocyanine compound in the treatment of fungal
diseases” (App. Br. 20). Appellant further argues that Collins “lists
phthalocyanine among a broad list of many classes of colorants with no
stated preference for a phthalocyanine.” (Id. at 21.)
Appellants argue that Table 2 of the Specification, at columns 9 and
10, shows results using Aliette alone (Example 6) compared to Aliette plus
phthalocyanine dye (Example 9 Exp 10622) and shows better results
obtained with the product of Example 9 evidencing fungicidal synergism.
We conclude based on the record before us that the cited prior art does
not disclose a "synergistic fungicidal effective" amount of a composition
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comprising a phosphorus acid and or a fungicidal effective amount of a
phthalocyanine dye in the absence of ethylenebisdithiocarbamate contact
fungicide. Collins teaches phthalocyanine compounds which act as
colorants and does not disclose any fungicidal function associated with
phthalocyanines or any synergistic result association with such a
combination. Hence, the Examiner has not considered all claim limitations.
In re Royka, 490 F.2d 981, 985

CONCLUSION OF LAW
The cited references do not disclose a synergistic fungicidally
effective amount of a first active agent and a phthalocyanine compound as
claimed. The obviousness rejection is reversed.

Discussion
2. Claims 1-8, 10-17, 20-35, 37 and 38 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Gullino, Fenn, Kato and Nagashima.

FINDINGS OF FACT
8. Gullino et al. teach that the fungus Rhizotonia solani causes brown
patches in turfgrass, such as, bentgrass and bermudagrass. (See pg. 367
“SUMMARY” & pp. 368-369 “RESULTS”.)
9. “Gullino et al. do not teach that the phosphorus compounds in claims 1,
10-14,22-25,31 and 32 are used to combat Rhizotonia solani in turfgrass.”
(Ans. 15.)
10. “Fenn et al. teach that phosphorous acid and fosetyl-Al are fungicides
used to control Rhizotonia solani (pages 609-610 discussion section). It
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Application 10/849,509

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would have been obvious to apply phosphorous acid or fosetyl-Al to the
turfgrass recited in claims 1,6,7,29,30 to kill Rhizotonia solani.” (Id.)
11. “Neither Gullino et al. nor Fenn et al. teach the use of a phthalocyanine
compound such as pigment blue 15 listed in claims 2-5,8,10,15-17,22-28,31-
35.” (Id.)
12. “Kato et al. teach that green dye can be applied to brown dead lawn
areas in golf courses (turfgrass) to restore the desired green appearance to
golf courses (page 2).” (Id.)
13. Nagashima et al. teach that a pigment blue 15 colorant can be added to
dead grass to restore the color of grass (pages 8-9).” (Id.)
14. The Examiner concludes that
[i]t would have been obvious to one having
ordinary skill in the art to add pigment blue 15 to
phosphorous acid or fosetyl-Al. One would have
been motivated to do this because while
phosphorous acid or fosetyl-Al would control/kill
the fungus, Rhizotonia solani, responsible for
causing brown or dead spots in the turfgrass (golf
course), the pigment blue 15 would restore the
desired green appearance to turfgrass. The
combination of references excludes an
ethylenebisdithiocarbamate contact fungicide
recited in claims 1,10,24 and 32 which is a
requirement of the present claims. (Ans. 15-16.)

15. “With respect to the instant amount of phthalocyanine and fosetyl-Al or
phosphorous acid,” the Examiner concludes that
one having ordinary skill in the art would have
been able to determine the optimum amount of
phthalocyanine and fosetyl-Al or phosphorous
acid. One would have been motivated to do this in
order to make a composition that would have been
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Application 10/849,509

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most effective in controlling fungal growth and
restoring color without destroying the turfgrass.
With respect to the physical form of the
composition recited in claims 20, 21, 37 and 38,
one would have expected all physical forms of the
actives to be effective absent a showing of
unexpected results. (Id. at 16.)

ISSUE
The Examiner concludes that “[i]t would have been obvious to one
having ordinary skill in the art to add pigment blue 15 to phosphorous acid
or fosetyl-Al. One would have been motivated to do this because while
phosphorous acid or fosetyl-Al would control/kill the fungus, Rhizotonia
solani, responsible for causing brown or dead spots in the turfgrass (golf
course), the pigment blue 15 would restore the desired green appearance to
turfgrass.” (Ans. 15-16.)
Appellant contends that the methods in all the claims “comprises
applying to said turfgrass synergistic fungicidally effective amounts” of two
active agents. (Br. 3.) Appellant argues that “the phthalocyanine functions to
synergize or enhance the effectiveness of the fungicide” (App. Br. 12) and
that the Examiner ignored or gave no weight to the term “synergistic”
fungicidally effective amounts in the claim. (See Ans. 8.)
The issue is: Does the cited prior art teach “synergistic fungicidally
effective amounts” of a first active agent and a phthalocyanine compound as
claimed.
ANALYSIS
Appellant contends that the methods in all the claims “comprises
applying to said turfgrass synergistic fungicidally effective amounts” of two
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Application 10/849,509

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active agents. (Br. 3.) Appellant argues that “the phthalocyanine functions
to synergize or enhance the effectiveness of the fungicide” (App. Br. 12) and
that the Examiner ignored or gave no weight to the term “synergistic”
fungicidally effective amounts in the claim. (See Ans. 8.)
Kato and Nagashima are relied on for their teaching that green dye or
pigment Blue 15 can be applied to brown dead lawn areas in turfgrass to
restore the desired green appearance. No synergistic activity is disclosed.
Appellant argues that Table 2 of the Specification, at columns 9 and
10, shows results using Aliette alone (Example 6) compared to Aliette plus
phthalocyanine dye (Example 9 Exp 10622) and shows better results
obtained with the product of Example 9 evidencing fungicidal synergism.
We conclude that the cited prior art does not disclose a synergistic
fungicidal effective amount of a composition comprising a phosphorus acid
and or a fungicidal effective amount of a phthalocyanine dye in the absence
of ethylenebisdithiocarbamate contact fungicide. The cited prior art
discloses coloring of turf grass but does not disclose that the coloring has a
synergistic fungicidal effect in combination with a phosphorus acid, as
claimed.

Appeal 2010-011847
Application 10/849,509

13
CONCLUSION OF LAW
The cited references do not disclose a synergistic fungicidally effective
amount of a first active agent and a phthalocyanine compound as claimed.
The obviousness rejection is reversed.

REVERSED

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LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090