Ex Parte Penner

Patent Trial and Appeal Board

Jun 6, 2016

10972624 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/972,624 10/25/2004
4743 7590 06/08/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Donald Penner
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.
322131714 9164
EXAMINER
KLINKEL, KORTNEY L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
06/08/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD PENNER
Appeal2013-006482
Application 10/972,624
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
r-T"I .. • • .. 1 .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • "1 • , ,.. .. ims 1s an appear unaer j) u.~.L. s U4 mvo1vmg crnm1s to a memoa
for reducing damage to plants. The Examiner rejected the claims as failing
to comply with the written description requirement, as obvious, and for
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
1 Appellant identifies the Real Party in Interest as the Board of
Trustees of Michigan State University (see App. Br. 3).
Appeal2013-006482
Application 10/972,624
Statement of the Case
Background
"[I]t is an object of the present invention to provide pesticide
compositions which enhance[] the movement of the pesticide composition
through plant canopies to the underlying target site" (Spec. i-f 7).
The Claims
Claims 23, 28-34, 37--40, and 48-54 are on appeal. Independent
claim 23 is representative and reads as follows:
23. A method for reducing damage to plants in soil, water
or a combination thereof, the method comprising:
(a) providing a pesticidal composition consisting of (i)
at least one chemical or biological insecticide effective to
kill, inhibit, or repel insects, and optionally one or more
enhancers, adjuvants, or combinations thereof, admixed with
(ii) a repellent adjuvant consisting of an alkyltrialkoxysilane,
water, and optionally a water soluble silane coupling agent,
wherein the repellent adjuvant modifies surface properties of
the pesticidal composition thereby reducing retention of the
pesticidal composition on foliage of the plants; and
(b) spraying said pesticidal composition onto the
plants wherein the pesticidal composition bounces off the
foliage onto the soil, water or a combination thereof to kill,
inhibit or repel the insects.
The Issues
A. The Examiner rejected claims 51 and 52 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Final Act. 4--5).
B. The Examiner rejected claims 53 and 54 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Final Act. 5---6).
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C. The Examiner rejected claims 51 and 52 under 35 U.S.C. § 112, first
paragraph, as to scope of enablement (Final Act. 9-14).
D. The Examiner rejected claims 23, 28-33, and 51under35 U.S.C.
§ 103(a) as obvious over Penner,2 Bussler,3 and Collins4 (Final Act. 14--18).
E. The Examiner rejected claims 23, 28-34, 37--40, and 48-52 under
35 U.S.C. § 103(a) as obvious over Penner, Bussler, Steelman,5 and Collins
(Final Act. 18-20).
F. The Examiner rejected claims 23, 28-34, 37--40, and 48-54 under
35 U.S.C. § 103(a) as obvious over Penner, Steelman, and Ohsumi6 (Final
Act. 22-25).
G. The Examiner rejected claims 23, 28-34, 37--40, and 48-52 on the
grounds of obviousness-type double patenting over claims 14--17 of Penner
in view of Bussler, Steelman, and Collins (Final Act. 28-32).
H. The Examiner rejected claims 23, 28-34, 37--40, and 48-54 on the
grounds of obviousness-type double patenting over claims 14--17 of Penner
in view of Steelman and Ohsumi (Final Act. 32-34).
A. and B. 35 U.S. C. § 112, first paragraph, written description
The Examiner finds that "[ n ]ewly added claims 51 and 52 recite the
limitation wherein retention of the pesticidal composition on the plants is
2 Penner et al., US 6,235,682 Bl, issued May 22, 2001.
3 Bussler et al., US 5,484,760, issued Jan. 16, 1996.
4 Collins English Dictionary, http://www.collinsdictionary.com/
dictionary/english/adjuvant 1-2 (access May 1, 2012).
5 Steelman et al., US 4,211,778, issued July 8, 1980.
6 Ohsumi et al., US 4,514,406, issued Apr. 30, 1985.
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Application 10/972,624
reduced to a level ranging from 2% to 25% relative to a corresponding
pesticidal composition without the repellent adjuvant. There is no support
for this limitation in the specification as originally filed" (Final Act. 4). The
Examiner finds that "[ n ]ewly added claims 53 and 54 recite the limitation
'wherein the pesticidal composition is free from herbicides for prevention of
weeds'" (Final Act. 5).
The issues with respect to these rejections are:
(i) Does the evidence of record support the Examiner's conclusion
that the range of reduction of retained pesticide of "2 % to 25%" in claims 51
and 5 2 represents new matter?
(ii) Does the evidence of record support the Examiner's conclusion
that the phrase "pesticidal composition is free from herbicides" in claims 53
and 54 represents new matter?
Findings of Fact
1. Table 2 of the Specification is reproduced below:
TABLE 2
Pesticide Rate None DC 2- DC 1- DC 772 Sylgan:l
PeJ:m.ethrin L~.:>W
High
LO\.l""
High
LSD {0 .. 05}
1322 6HJ4 309
µg Chicago Sky Blue retained per gram
plant dry weight
928 907 51 968 853
960 956 27 86.2 97.2
1003 }. 082 374 1060 1036
1063 945 249 1066 993
------------------85 ------------------
"Table 2 shows micrograms (µg) of CHICAGO SKY BLUE dye ...
retained per gram plant dry weight" for tomato plants (Spec. i-f 40).
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2. The Specification teaches "herbicide compositions with a
repellent adjuvant that is an aqueous solution of a one or more
alkyltrialkoxysilanes with C 1---C6 alkyl groups and a water soluble coupling
agent, which form spherical particles when sprayed which bounce off a plant
so that retention on foliage of the plant is reduced" (Spec. i-f 5).
3. The Specification teaches:
a method for killing, inhibiting or repelling pests in the
presence of foliage on plants, the improvement comprising
using as the pesticidal composition which comprises at least
one pesticide; and a repellent adjuvant for modifying surface
properties of the composition so that retention of the
composition on foliage of plants is reduced. More preferably,
the pests are killed, inhibited or repelled when the composition
is applied to soil, water or a combination thereof. Still more
preferably, the plants are crop plants.
(Spec. ,-r 14.).
Principles of Lmv
"[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, ... or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement" Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010).
Analysis
Claims 51 and 52
Appellant contends that "the specification essentially discloses a
broad range for pesticidal composition retention ranging from 0% to less
than 100% relative to a corresponding pesticidal composition without the
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repellent adjuvant" (App. Br. 13). Appellant contends that Table 2 shows
"volume-based retention levels of 2.9%, 3.1 %, 3.5%, 5.4%, 8.6%, 10%,
19%, 20%, 24%, and 25%" (id. at 14).
The Examiner responds that "the specification provides no literal
support for the claimed retention level of 2% to 25%" (Ans. 6). The
Examiner finds that the "species are insufficient to provide written support
for genus claims 51 and 52 given the lack of predictability of how the
variables of (i) application rate, (ii) plant substrate, (iii) insecticide, and (iv)
repellent adjuvant contribute to the resulting retention rate" (id. at 7).
We find that the Examiner has the better position. In Wertheim, the
Specification at issue disclosed a range "'of 25 to 60% solid matter'" as well
as specific embodiments at 36% and 50%. In re Wertheim, 541 F.2d 257,
262 (CCPA 1976). It was this combination of a broadly disclosed range
along with specific points within the range that Wertheim determined
provided support for the range of "'between 35% and 60%"' while not
finding descriptive support for the broader range of "'at least 35%. "' Id. at
263-264.
Contrasted with Wertheim, here there is no disclosure of a range,
contrary to Appellant's contention that there is an inherent disclosure of 0 to
100% as a range. Moreover, the claimed range is, at best, obvious over the
disclosure, but there is no indication that such a range of repellant activity
was possessed even for the specific components used in Table 2, much less
for the broader claim encompassing different repellant components, different
insecticides and different plants (FF 1, 3). A "description that merely
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renders the invention obvious does not satisfy the [written description]
requirement." Ariad, 598 F.3d at 1352.
We recognize, but find unpersuasive, Appellant's contention that "the
final office action does not meet the PTO' s burden of providing sufficient
factual basis to support the written description rejection" (App. Br. 14). The
Examiner identified the absence of descriptive support (see Final Act. 4--5)
which reasonably satisfies the burden because "[ w ]hen no such description
can be found in the specification, the only thing the PTO can reasonably be
expected to do is to point out its nonexistence." Hyatt v. Dudas, 492 F.3d
1365, 1370 (Fed. Cir. 2007).
Claims 53 and 54
Appellant contends that "the specification discloses herbicides and
pesticides as alternatives in the context of an otherwise similar composition,
so a herbicide component may be properly excluded from the claims with a
negative limitation" (App. Br. 15).
The Examiner responds that "herbicides and pesticides are not
contemplated as alternatives for inclusion in the compositions of the
specification" (Ans. 10).
We find that Appellant has the better position. The Specification
teaches that the prior art was aware of herbicides combined with repellants
(FF 2), but focused solely on compositions comprising pesticides (FF 3). "If
alternative elements are positively recited in the specification, they may be
explicitly excluded in the claims." MPEP § 2173.05(i) (citing In re Johnson,
558 F.2d 1008, 1019 (CCPA 1977)). Here, we agree with Appellant that the
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disclosure in the Specification is sufficient to specifically exclude the use of
herbicides.
Conclusion of Law
(i) The evidence of record supports the Examiner's conclusion that the
range of reduction of retained pesticide of "2% to 25%" in claims 51 and 52
represents new matter.
(ii) The evidence of record does not support the Examiner's
conclusion that the phrase "pesticidal composition is free from herbicides"
in claims 53 and 54 represents new matter.
C. 35 U.S. C. § 112, first paragraph, scope of enablement
The Examiner finds that:
the specification, while being enabling for the specific relative
retention rates for the specific parameters of the repellant
adjuvant (consisting of 35.7 % by weight N-(2-Aminoethyl)-3-
aminopropyltrimethylsilane, 58.2 % by weight
methyltrimethoxysilane and 6.1 % by weight water) application
rate, pesticide and plant being treated found in Examples 1-3,
does not reasonably provide enablement for the broadly recited
retention rates from 2% to 25% relative to a corresponding
pesticidal composition without the repellent adjuvant for any
plant, any pesticide and the broadly recited repellent adjuvant of
the claims.
(Final Act. 9.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the Specification does not
enable the full scope of the claimed invention?
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Application 10/972,624
Findings of Fact
Breadth of Claims
4. The Examiner finds that claim 51 is drawn to the inclusion of a
repellant adjuvant in a pesticide that reduces retention of any pesticide on
any plant by 2% to 25% (see Final Act. 10).
Presence of Working Examples
5. The Specification exemplifies the results with a variety of
retention values using the pesticides permethrin and carbaryl on tomato
(Spec i-f 40; cf FF 1), wheat (Spec i-f 41), and cabbage (Spec. i-f 42).
Amount of Direction or Guidance Presented
6. The Specification teaches that "repellent adjuvant suitable for
use in the present invention is exemplified by an aqueous solution of the
organosiliconate having the formula: (RSi03h)a(X20)b" as well as specific
preferred embodiments (Spec. i-f 28).
7. The Specification teaches that "[ w ]hile the examples disclosed
herein relate to pyrethroid and organophosphate insecticides ... the present
invention ... encompasses pesticides in general" (Spec. i-f 36) and provides
extensive lists of pesticides (Spec. i-fi-124--25).
8. The Specification teaches that "[i]n general, a rate of
application from about five grams to four kilograms per hectare (g/ha) of
pesticide is suitable. The rate of the repellent adjuvant in the composition
can be from 0.25% to 1.0%, preferably at a rate of 0.5%" (Spec. i-f 31 ).
State of the Prior Art and Unpredictability of the Art
9. Penner teaches that:
the spray retention of isoxaflutole as influenced by either SMS
or AFS-MTMS, alone and in combination with
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Application 10/972,624
metolachlor/benoxacor applied to 2-leaf com in the greenhouse.
The results show that neither SMS or AFS-MTMS increased
the retention of isoxaflutole alone by the com plant. The results
further show that AFS-MTMS was particularly effective in
reducing isoxaflutole retention when the composition further
included metolachlor/benoxacor
(Penner, col. 23, 11. 42--49).
Quantity of Experimentation
10. The Examiner finds that it "would require undue
experimentation to determine which combinations of pesticide, repellent
adjuvant, optional additives and/or application rates of these combinations
which are embraced by the broader independent claims, would give rise to
the required relative retention of 2% to 25% for any and all of the plant
species encompassed by the claims" (Ans. 13).
Principles of Law
"[T]he question of undue experimentation is a matter of degree. The
fact that some experimentation is necessary does not preclude enablement;
what is required is that the amount of experimentation 'must not be unduly
extensive."' PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564
(Fed. Cir. 1996).
Factors to be considered in determining whether a disclosure
would require undue experimentation ... include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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Analysis
The analytical framework for determining whether claims fail to
satisfy the enablement requirement balances the Wands factors to determine
if undue experimentation would have been required to perform the
reasonable scope of the claimed method at the time of filing of the
Specification.
While claims 51 and 52 are broadly drawn to a variety of pesticides
and repellants that function to reduce retention 2% to 25% on a variety of
plants (FF 4), the Specification provides working examples using two
different pesticides on three different plants (FF 5), as well as guidance on
repellants and pesticides (FF 6-7). The Examiner does not provide
significant evidence of substantial unpredictability or need for a large
quantity of experimentation (FF 9-10). Therefore, as we balance the Wands
factors, we find that the balance of factors supports Appellant's position that
undue experimentation would not have been required to enable claims 51
and 52.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that the Specification does not enable the full scope of the claimed invention.
D. 35 U.S.C. § 103(a) over Penner, Bussler, and Collins
The Examiner finds that "Penner teaches a repellent adjuvant which is
useful for modifying surface properties of a composition containing an
herbicide so that the retention of the composition on foliage of plants is
reduced" (Final Act. 15). The Examiner acknowledges that Penner teaches
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"that the repellent adjuvant contains an herbicidal pesticide and not an
insecticide" (id.).
The Examiner finds that Bussler teaches that "it is common
agricultural practice to include biocides, such as insecticides, with herbicides
in order to protect crops" (id.). The Examiner finds that "[o]ne would have
been motivated to include an insecticide in the herbicidal composition of
Penner et al. in order to both control weeds and insects with a single
application, thus saving time and money" (Final Act. 17).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's finding that claim 23 would have been
obvious?
Findings of Fact
11. Penner teaches that "[ m ]any herbicides will cause injury to
certain crop plants when applied in amounts that are effective in controlling
weed growth" (Penner, col. 1, 11. 30-32).
12. Penner teaches that "compositions comprising a[n] herbicide, or
a combination of herbicides, with or without a safener, and a repellant
adjuvant which modifies the surface properties of the composition so that
retention of the composition on foliage of the cultivated plant is reduced"
(Penner, col. 2, 11. 41--45).
13. Penner teaches that:
When the repellent adjuvant is mixed with the herbicide or
combination of herbicides, with or without a safener, to form
the composition of the present invention and applied to the
plants with a sprayer, the emitted composition spray forms
spherical particles which then bounce off the plant foliage. In
this manner the repellent adjuvant prevents retention of the
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composition by the plant. Thus, herbicidal injury to the
cultivated plant is reduced because the herbicide composition is
directed to the soil.
(Penner, col. 2, 11. 47-54).
14. Penner teaches that in "a preferred embodiment, the repellent
adjuvant is selected from the group consisting of ... an aqueous solution of
N-(2-aminoethyl)-3-aminopropy ltrimethoxysilane and
methyltrimethoxysilane" (Penner, col. 4, 11. 7-11 ).
15. Appellant elected "the repellant adjuvant species of [c]laim 19"
(Resp. to Election/Restriction 09/02/2008) where original claim 18 recites:
"The method of Claim 17 wherein the alkyltrialkoxysilane is
methyltrimethoxysilane and the water soluble coupling agent is N-(2-
aminoethyl)-3-aminopropyltrimethoxysilane" (Spec. 25, claim 18).
16. Penner teaches that the "present invention can further comprise
activators, enhancers and safeners" (Penner, col. 12, 11. 2--4).
1 7. Bussler teaches that " [ i ]t is a common practice in agricultural
practice to apply herbicidal compositions to control undesirable vegetation
in cultivated crops. Such herbicidal compositions may contain other
additaments such as fertilizers, biocides, e.g., insecticides, fungicides,
nematicides, etc., herbicide antidotes" (Bussler, col. 1, 11. 19-24 ).
18. Bussler teaches that "major problems can arise as a result of the
interaction of herbicides and various biocides, particularly various
insecticides and/or fungicides. The common result of such interaction is the
enhancement of the phytoxic activity of the herbicide in various crops"
(Bussler, col. 1, 11. 28-32).
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19. Bussler teaches "a method for combatting, inhibiting, reducing
or preventing negative synergism resulting from the interaction of herbicidal
and biocidal compounds by use of an antidotal compound" (Bussler, col. 4,
11. 35-38).
20. Steelman teaches "novel compositions, and a process for the
control of population levels of insects, particularly Diptera" (Steelman, col.
1, 11. 44--46).
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 4 21.
Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. Claim 23 is drawn
to a method of providing a composition that consists of an insecticide and a
repellent, but uses the open "comprising" transitional phrase for the method
steps. "The reasonable interpretation of the claims containing both of the
terms 'comprising' and 'consists' is that the term 'consists' limits the 'said
portion' language to the [particular component], but the earlier term
'comprising' means that the claim can include that portion plus other
[components]." In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).
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In this situation, claim 23 reasonably limits the pesticidal
composition, but does not exclude the addition of an herbicide in an
additional step to the pesticidal composition because of the open
"comprising" language in the preamble. Moreover, even if we read the
"consisting of' transitional language to exclude an additional herbicide,
claim 23 expressly authorizes the inclusion of enhancers and adjuvants and
Appellant does not identify any teaching in the Specification that defines or
otherwise exclude herbicides from serving as enhancers or adjuvants.
Therefore, claim 23 is interpreted as encompassing the use of herbicides.
However, claim 53, which expressly excludes herbicides, is interpreted as
excluding the use of herbicides in the method.
Bussler teaches that it is common agricultural practice to combine
herbicides and pesticides, but that the combination may enhance phytotoxic
activity of the herbicide on the desired crop (FF 17). Bussler teaches a
desire to reduce this negative synergism (FF 18).
Penner teaches that crops may be protected from weed control
herbicides by combining with a repellant adjuvant (FF 13) and that these
mixtures may comprise additional ingredients (FF 16).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that "[ o ]ne would have been motivated to include
an insecticide in the herbicidal composition of Penner et al. in order to both
control weeds and insects with a single application, thus saving time and
money" (Final Act. 17). Aware of the Bussler's teaching that such
combinations may enhance phytoxicity, the artisan would have included the
"repellent adjuvant composition of Penner et al. ... [to] reduce the retention
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of the herbicidal/insecticidal active agents on the foliage of crops and
thereby render moot the enhanced phytotoxicity gleaned by the inclusion of
the insecticide" (Ans. 17). Combining two known crop treatments,
herbicides and pesticides (FF 1 7) with a known repellant adjuvant to reduce
enhanced toxicity (FF 13, 18) is merely a "predictable use of prior art
elements according to their established functions." KSR, 550 U.S. at 417.
We recognize, but find unpersuasive, Appellant's contention that
"even affording the recited enhancers and adjuvants the broadest reasonable
interpretation, Bussler does not indicate that an included herbicide could
reasonably be considered an enhancer or adjuvant as recited" (App. Br. 24).
As noted above, claim 23 is reasonably interpreted as open to additional
ingredients, particularly when read in light of claim 53. Under the doctrine
of claim differentiation, "the presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim." Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005).
Even if read more narrowly, Penner recognizes that herbicides may be
combined with enhancers (FF 16) and Bussler evidences that some
pesticides function as enhancers for herbicides (FF 18), supporting the
Examiner's obviousness rejection. That the prior art has a different reason
or motivation to combine the compounds of Penner and Bussler is of no
moment as long as there is a sufficient reason to make the combination. See
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("[T]he motivation in the
prior art to combine the references does not have to be identical to that of the
applicant to establish obviousness.").
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Conclusion of Law
The evidence of record supports the Examiner's finding that claim 23
would have been obvious.
E. -H. 3 5 U.S. C. § 103 (a) over Penner, combined with one or more of
Bussler, Steelman, Ohsumi, and Collins
Claims 23 and 34
For these rejections, Appellant relies upon the same reasoning
regarding the transitional language, "consisting of," for analysis of
independent claims 23 and 34 (see App. Br. 25). We remain unpersuaded
for the reasons given above.
Appellant separately contends regarding the addition of the mosquito
insecticide of Ohsumi that the "proposed combination of references
represents a solution to a problem that is not recognized or suggested in the
prior art. Such impermissible hindsight cannot support a conclusion of
obviousness" (App. Br. 27).
We are not persuaded. While we are fully aware that hindsight bias
may plague 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 416. In the instant case, the combination of
Penner' s herbicide and repellant adjuvant with Ohsumi' s insecticide would
yield the predictable result of reducing the enhanced phytotoxicity caused by
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the combination of herbicide and pesticide as taught by Bussler while still
controlling mosquitoes as taught by Ohsumi (see Ohsumi, col. 14, 1. 27-29).
Claims 51 and 52
Appellant contends, regarding claims 51 and 52, that "the two Penner
examples with herbicide compositions including a repellent adjuvant have
relative retention levels of 41 % and 100%, both of which are substantially
larger than levels of 2% to 25% as recited in the present claims" (App. Br.
30). Appellant further contends that Penner "does not provide any teaching
how its composition could be modified or otherwise 'optimized' to reduce
the relative retention level below the 41 % value illustrated in Example 4"
(App. Br. 30).
The Examiner responds that "the combination of Penner et al. and
Bussler et al. render obvious the application of a composition identical to
applicant's most specific claim. 'Products of identical chemical composition
can not have mutually exclusive properties"' (Ans. 25).
We find that Appellant has the better position. While the Examiner
can establish the use of the same repellant adjuvant, the Examiner has not
established that Penner exemplified the application of the same herbicide
composition to the same plants as those disclosed in the Specification.
Therefore, the Examiner cannot rely upon the In re Spada, 911 F.2d 705
(Fed. Cir. 1990) reasoning because there is no evidence that the
compositions or targets are identical.
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Claims 53 and 54
Appellant contends, regarding claims 53 and 54, that the "the applied
references cannot support an obviousness rejection of the pending claims,
which excludes a[n] herbicide component" (App. Br. 26).
The Examiner responds that "[i]t is also known that commonly
employed insecticides used to control these harmful insects can be
phytotoxic in nature, just as herbicides are" (Ans. 21 ). The Examiner finds
that "[i]n using the repellent adjuvant composition of Penner ... one of
ordinary skill in the art would be imbued with a reasonable expectation that
crop damage by the phytotoxic insecticide would be minimized" (Ans. 21 ).
We find that Appellant has the better position. The Examiner does
not provide evidence, only argument, to demonstrate that pesticides or
insecticides administered without herbicide have phytotoxic activity. The
rationale of the underlying rejection is that the reason to use the repellant for
combinations of herbicide and pesticide is that the pesticide enhances the
phytotoxic effect of the herbicide, so the repellant adjuvant of Penner would
mitigate this phytoxicity. However, where insecticide alone is applied,
without evidence showing that insecticides are phytotoxic, the Examiner
lacks a reason to further incorporate the repellant adjuvant of Penner.
Double patenting
Claim 14 of Penner teaches a "method for protecting crop plants ...
comprising: (a) providing an herbicidal formulation ... with a repellant
adjuvant ... and applying the formulation to crop plants" (Penner, col. 26, 11.
6-25). The Examiner relies upon the cited secondary references to suggest
the use of pesticides in combination with herbicides and the phytotoxicity
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Appeal2013-006482
Application 10/972,624
concerns of pesticides (see Final Act. 29, 33). We agree with the Examiner
that:
despite the fact that organophosphate insecticides, for example,
are known to enhance the phytotoxicity of herbicides in an
undesirable manner, one of ordinary skill in the art would be
imbued with the reasonable expectation that the inclusion of
such an insecticide in the repellent adjuvant composition of US
6235682 would reduce the retention of the
herbicidal/insecticidal active agents on the foliage of crops and
thereby render moot the enhanced phytotoxicity gleaned by the
inclusion of the insecticide.
(Ans. 30). We find Appellant's arguments unpersuasive for the same
reasons as given above.
We therefore affirm the obviousness and obviousness-type double
patenting rejections over claims 23 and 34, but reverse the rejection as to
claims 51, 52, 53, and 54.
In summary, we affirm the rejection of claims 51 and 52 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the rejection of claims 53 and 54 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
We reverse the rejection of claims 51 and 52 under 35 U.S.C. § 112,
first paragraph, as to scope of enablement.
We affirm the rejection of claims 23 and 34 under 35 U.S.C. § 103(a)
as obvious over any of the combinations of Penner, Bussler, Collins,
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Appeal2013-006482
Application 10/972,624
Steelman, and Ohsumi. Claims 28-33, 37--40, and 48-50 fall with claims 23
and 34.
We reverse the rejection of claims 51-54 under 35 U.S.C. § 103(a) as
obvious over any of the combinations of Penner, Bussler, Collins, Steelman,
and Ohsumi.
We affirm the rejection of claims 23 and 34 on the grounds of
obviousness-type double patenting over claims 14--17 of Penner in view of
either combination Bussler, Steelman, Collins, and Ohsumi. Claims 28-33,
37--40, and 48-50 fall with claims 23 and 34.
We reverse the rejection of claims 51-54 on the grounds of
obviousness-type double patenting over claims 14--17 of Penner in view of
either combination Bussler, Steelman, Collins, and Ohsumi.
We note that claims 53 and 54 are currently not subject to an affirmed
rejection.
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-IN-PART
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