Ex Parte SCHULZ

Patent Trial and Appeal Board

Feb 25, 2019

14201449 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/201,449 03/07/2014
25212 7590 02/27/2019
DOW AGROSCIENCES LLC
9330 ZIONSVILLE RD
INDIANAPOLIS, IN 46268
FIRST NAMED INVENTOR
Thomas SCHULZ
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.
10284-087US 1 5276
EXAMINER
PAK,JOHND
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
PatentsUS@pioneer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SCHULZ 1
Appeal 2018-002155
Application 14/201,449
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 from the Examiner's
rejection of claims to herbicidal compositions which have been rejected as
obvious and for non-statutory obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Appellant identifies the Real Party in Interest as Dow AgroSciences, LLC.
Appeal Br. 3.
2 We have considered and herein refer to the Specification of Mar. 7, 2014
("Spec."); Final Office Action of Dec. 22, 2016 ("Final Act."); Appeal Brief
of June 22, 2017 ("Appeal Br."); Examiner's Answer of Oct. 19, 2017
("Ans."); and Reply Brief of Dec. 19, 2017 ("Reply Br.").
Appeal2018---002155
Application 14/201,449
We AFFIRM.
STATEMENT OF THE CASE
Oilseed rape is a widely-cultivated crop in many parts of the world.
Spec. ,r 3. Oilseed rape is typically rotated with a cereal crop such as winter
wheat. Spec. ,r 4. This can cause problems as residual oilseed rape seeds let
behind during harvesting can act as weeds for the crops with follow oilseed
rape. Id. The Specification describes methods and compositions which can
be used to control unwanted oilseed rape. Spec. ,r 7.
Claims 1, 2, 4, 5, 7, 9--15, and 17-22 are on appeal. Claim 1
representative and reads as follows:
1. An herbicidal composition comprising (a) isoxaben and (b)
flufenacet, wherein the weight ratio of (a) to (b) is about
40:200.
Appeal Br. 15 (Claims Appendix).
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Application 14/201,449
The claims stand rejected as follows:
Claims 1, 2, 7, 9, 11, 13-15, 17, and 19-22 have been rejected under
35 U.S.C. § 103(a) as unpatentable over Parra Rapado 3 in view ofBurow4,
Knott5, Drinkall6, and Dow. 7
Claims 1, 4, 5, 7, 9-15, and 17-22 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Parra Rapado in view of Burow, Knott, Dow,
Drinkall and Suigiura. 8
Claims 1, 4, 5, 7, 9-15, and 17-22 have been rejected for
obviousness-type double patenting over claims 1, 4, 7, and 12-21
oflJSSN14/201,4309 in view of Dow and Knott.
DOUBLE PATENTING
Appellant has offered no substantive arguments with respect to this
rejection other than to say that a terminal disclaimer will be offered when the
3 Parra Rapado et al., WO 2010/066679 A2, published June 17, 2010 ("Parra
Rapado"). Citations are to the English translation of record unless otherwise
noted.
4 Burow, Jr., US 4,636,243, issued Jan. 13, 1987 ("Burow").
5 C.M. Knot, Control of volunteer oilseed rape in peas, Brighton crop
protection conference: weeds. Proceedings of an international conference,
Brighton, UK, 20-23 (November 1995) (Abstract) ("Knott").
6 M.J. Drinkall and P.J. Ryan, Development of EL 107, a new selective
cereal herbicide, Crop protection in northern Britain (1984) (Abstract)
("Drinkall").
7 Dow AgriSciences, Isoxaben: Broad Spectrum Herbicide for Tree Nut
Orchards and Vineyards, Global Technical Bulletin (2009) ("Dow").
8 Suigiura et al., JP 20100163411, published July 29, 2010 ("Suigiura").
Citations are to the English translation of record.
9 USSN 14/201,430 issued as US 9,730,444 B2 on Aug. 15, 2017.
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Application 14/201,449
claims are in condition for allowance. Appeal Br. 6. Therefore, we
summarily affirm this rejection. 37 C.F.R. § 41.37 (c)(iv).
OBVIOUSNESS
Parra Rapado Combined with Burow, Knott, Drinkall and Dow.
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Parra Rapado combined with
Burow, Knott, Drinkall and Dow.
The Examiner finds that Parra Rapado discloses an herbicidal
composition comprising isoxaben and flufenacet in a weight ratio of from
1:75 to 75:1. Final Act. 2. The Examiner finds that Parra Rapado teaches
that the disclosed herbicide compositions exhibit a synergistic effect. Id.
The Examiner finds that Burow teaches binary herbicidal compositions
comprising isoxaben and a second herbicide where the ratio of the herbicides
ranges from 1: 5 to 5: 1. Final Act. 3.
The Examiner concludes
The prior art does not explicitly provide an example of
the known binary mixture of isoxaben + flufenacet at the
specifically claimed ratios or application rates, but the 1 :75 to
75:1 ratio range taught by WO 2010/66679 and 1 :5 to 5:1 ratio
range taught by Burow are suggestive of the claimed ratios, as
currently amended. Moreover, the ordinary skilled artisan
would have been motivated to arrive at the claimed ratio upon
routine experimentation and optimization.
Final Act. 4.
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Appellant contends that the Examiner engaged in impermissible
hindsight in that Parra Rapado discloses numerous different
combinations of herbicides and rations that are broader that that
claimed. Appeal Br. 7. Appellant contends that only through
hindsight would one select the claimed ratios. Id. Appellant argues
that while Burow teaches a ratio of 1 : 5 to 5: 1 for isoxaben and another
herbicide, Burow does not teach that ratio for isoxaben and flufenacet.
Appeal Br. 8.
Appellant argues that even the Examiner has made out a prima
facie case of obviousness, Appellant has presented sufficient evidence
of unexpected results to overcome the rejection. Appeal Br. 8.
Appellant points to the data in the Specification that compares the
claimed composition with the individual herbicides which shows that
the combination effectively controls weeds where the individual
herbicides do not. Id.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
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art. The following findings are included for emphasis and reference
purposes.
FFl. Parra Rapado teaches the preparation of binary herbicidal
compositions. Parra Rapado 1.
FF2. Parra Rapado teaches "[i]t is known that specific combinations
of various specific effective herbicides have an effect increase [an] herbicide
component in the sense of a synergy effect result." Parra Rapado 3.
FF3. One of the herbicidal compositions taught by Parra Rapado
comprises isoxaben and flufenacet. Parra Rapado 7, Table A, formula A-29.
( citation is to the original German document).
FF4. Parra Rapado teaches binary herbicidal compositions where the
ratio of the first herbicide to the second herbicide ranges from 1: 7 5 to 7 5: 1.
Parra Rap ado 19.
FF5. Burow teaches the preparation of a binary herbicidal
composition comprising a benzamide such as isoxaben and a second
herbicide. Burow col. 69, 1. 56- col. 70, 1. 20.
FF6. Burow teaches
The use of the benzamides of this invention in
combination with other herbicides provides for an even broader
range of weed control than generally can be realized with either
the benzamides alone or the other herbicides such as trifluralin
alone. Such combinations are particularly preferred when
practicing the method in cereal grains.
Burow col. 70, 11. 21-27.
FF7. Burow teaches
Generally, the benzamides will be employed in combination
with other herbicides in a ratio of about one to about five parts
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by weight ofbenzamide and about five to about one part by
weight of another herbicide. A preferred combination will
contain the component herbicides in a weight ratio of about one
to one. Such combination will be applied at a rate which is
effective to control the unwanted vegetation to the desired
degree. The respective herbicides can be applied separately or
as a single mixture, for example, a tank mix or the like.
Burow col. 71, 11. 37--47.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
To show criticality of a claimed range, "'it is not inventive to discover
the optimum or workable ranges by routine experimentation.' In re Aller,
220 F.2d 454,456, 105 USPQ 233,235 (CCPA 1955). Only if the 'results
of optimizing a variable' are 'unexpectedly good' can a patent be obtained
for the claimed critical range. In re Antonie, 559 F .2d 618, 620, 195 USPQ
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6, 8 (CCPA 1977)." In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997).
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Even if we agreed that the claimed method provided synergistic
results, more would be required to show nonobviousness, as synergism is
not per se unexpected. See In re Diamond, 3 60 F. 2d 214, 218 ( CCP A
1966). "What section 103 requires is 'unexpected synergism' ... " (id. at 216
n. 7); "we attribute no magic status to synergism per se since it may be
expected or unexpected" (id. at 218).
Analysis
We find the Examiner has established that the matter of the claims
would have been obvious to one of ordinary skill in the art at the time the
invention was made over Parra Rapado combined with Burow, Knott,
Drinkall and Dow. Appellant has not produced evidence showing, or
persuasively argued, that the Examiner's determinations on obviousness are
incorrect. Only those arguments made by Appellant in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have identified claim 1
as representative; therefore, all claims fall with claim 1. We address
Appellant's arguments below.
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Appellant argues that the Examiner has engaged in impermissible
hindsight. Appeal Br. 7. Appellant contends that Parra Rapado does not
teach or suggest the ratios of isoxaben and flufenacet recited in the claims
nor does it teach or suggest the recited weeds. Id. Appellant contends that
only by improperly referring to the instant disclosure would one skilled in
the art have chase the ratios and weeds recited in the claims. Id.
We have considered Appellant's arguments and are not persuaded.
The specific combination of isoxaben and flufenacet is disclosed in Parra
Rapado. FF3. While the specific ratio is not taught for the claimed
combination, Parra Rapado teaches a range of ratios which embrace the
claimed ratio and Burow, which teaches the use of isoxaben with another
herbicide specifically teaches a ratio of 1: 5 to 5: 1, which is the same as the
40:200 ratio recited in the claims. FF4, 5, and 7. We agree with the
Examiner that one skilled in the art reading the references would be lead to
the claimed ratio. Ans. 4. We also agree with the Examiner that one skilled
in the art would have arrived at the claimed ratio through routine
optimization. Final Act. 4.
Appellant contends that the teachings of Burow would not lead one
skilled in the art to the claimed invention, specifically the recited ratios.
Appeal Br. 8. Appellant contends that Burow does not teach the use of
flufenacet. Appellant argues that the ratio exemplified in Parra Rapado
using isoxaben discloses its use at a ratio of 1: 10. Id. Appellant contends
that these teachings would not have lead one skilled in the art to the claimed
ratios. Id.
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We remain unpersuaded. Appellant is attacking the teachings of the
individual references and not the teachings of the combined references. As
we stated above, we agree with the Examiner that the combined teachings of
the references would have lead one skilled in the art to use the claimed
ratios.
Appellant contends that even if a prima facie case of obviousness
exists, there is sufficient evidence of record to show that the claimed
composition exhibits unexpected synergistic effects. Appeal Br. 8.
Appellant points to the data presented in the Specification which shows that
the claimed composition is effective against several weeds where the
individual components are not. Id.
We have considered Appellant's argument and the evidence of record
and are not persuaded that Appellant has overcome the Examiner's case of
obviousness. To begin, we note that Appellant has only compared the
claimed binary composition with the individual components. Spec. ,r 11.
Appellant has not compared the claimed composition with the closest prior
art-Parra Rapado. See, Id. In addition, Parra Rapado teaches that the
combinations disclosed therein exhibit a synergistic effect. FF2.
Appellant argues that it is not required to provide evidence comparing
the claimed composition against Parra Rapado as Parra Rapado does not
disclose any actual combination of isoxaben with flufenacet. Appeal Br. 8-
9. Appellant argues that it is not required to create a composition that is not
specifically disclosed in the prior art. Appeal Br. 9. In support of this
position, Appellant cited to Judge Newman's concurrence in In re Geiger,
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815 F.2d 686, 689 (Fed. Cir. 1987) and the CCPA's decision in In re
Chapman, 357 F. 2d418, 422 (CCPA 1966).
Appellant's argument is unpersuasive. Parra Rapado specifically
teaches a composition comprising isoxaben and flufenacet. FF3.
Appellant contends that the synergistic effects are unexpected.
Appeal Br. 9. Appellant argues that while Parra Rapado suggests that the
disclosed binary compositions exhibit a synergistic effect, given the large
number of compositions disclosed in Parra Rapado, one skilled in the art
would not expect all of them to exhibit synergy. Appeal Br. 11. In support
of its position, Appellant cites to In re Luvisi, 342 F.2d 102 (CCPA 1965)
and the Board's decision in Ex parte Suty-Heinze, Appeal 2012-012281
(March 12, 2012).
Again, we are unpersuaded. In In re Luvisi, Appellant presented
evidence that that claimed composition exhibited a greater degree of
synergism that the prior art compound. Luvisi, 342 F.2d at 110. No such
evidence is present in the instant case.
With respect to Ex parte Suty-Heinze, as the Examiner points out, the
reference at issue did not specifically disclose the claimed combination and
listed over 29,000 possible combinations of components. Ans. 4--5. This is
not analogous to the present case where the specific combination is disclosed
in the art. FF3.
Lastly, Appellant argues that the Examiner has not articulated a
reason why one skilled in the art would have modified the composition of
Parra Rapado with the teachings of Burow. Appeal Br. 13, Reply Br. 2-3.
We are not persuaded by the argument. In addition to stating that one skilled
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in the art would be motivated to adjust the ratio of components as part of
routine optimization, Final Act. 4, the Examiner also explains that the
teachings of Parra Rapado would have lead one skilled in the art to adjust
the ratios of components. Ans. 6. The Examiner found
Id.
when faced with an agricultural field that is substantially
infested with dicot weeds such as winter oilseed rape, cutleaf
geranium, or common chickweed as set forth in instant claim 9,
the ordinary skilled artisan would have been motivated to
increase the proportion of isoxaben, which is effective against
dicot weeds, to obtain the 1 :5 ratio, which ratio is encompassed
by WO 2010/066679 and suggested by Burow.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Parra Rapado combined with Burow, Knott, Drinkall and Dow.
Claims 2, 7, 9, 11, 13-15, and 19-22 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Parra Rapado combined with Burow, Knott, Dow, Drinkall and Suigiura.
Issue
The issue with respect to this rejection is whether the subject matter of
claims 1, 4, 5, 7, 9-15 and 17-22 would have been obvious over Parra
Rapado combined with Burow, Knott, Dow, Drinkall and Suigiura. 10
10 We note that Appellant failed to argue this rejection separately as required
by 37 C.F.R. 4I.37(c)(iv). In the interest of fairness we elect to address the
arguments presented in the brief with respect to this rejection.
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In addition to the findings recited above, the Examiner finds that Parra
Rapado teaches that the herbicidal of isoxaben and flufenacet can also
contain a third herbicide with diflufenican being one of the preferred third
herbicides. Final Act. 8. The Examiner finds that Suigiura teaches a binary
herbicide comprising flufenacet and diflufenican where the preferred about
of diflufenican is ~ to Yz part per part of flufenacet. Final Act. 9. The
Examiner finds
The prior art does not explicitly provide an example of
the known binary mixture of isoxaben + flufenacet used in
combination with diflufenican at the claimed ratios or
application rates. However, WO 2010/066679 suggests
flufenacet as a preferred additional herbicide. Use of additional
herbicide to improve efficacy or broaden the activity spectrum
is taught in the art.
Final Act. 9.
Appellant contends that only through the impermissible use of
hindsight would one skilled in the art select the three herbicides in the ratio
recited in the claims. Appeal Br. 13. Appellant contends that there is
sufficient evidence on record to overcome a prima facie case of obviousness.
Findings of Fact
FF8. Parra Rapado teaches "The binary combinations of the
invention, in particular the above A-1 to A-315 can optionally include a
further active component C." Parra Rapado 11.
FF9. Parra Rapado teaches that particularly preferred herbicides C,
which can be used in combination with the active ingredients A and B of the
present invention include diflufenican. Parra Rap ado 15.
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FF 10. Parra Rapado teaches "Preferably, the weight ratio of the
components a)+ b) is to component c) in the range from 1:500 to 500:1, in
particular in the range from 1 :250 to 250: 1 and particularly preferably in the
range of 1: 75-75: 1." Parra Rapado 19.
FF 11. Suigiura discloses a binary herbicide comprising flufenacet and
diflufenican. Suigiura Abstract.
FF12. Suigiura teaches that diflufenican should be used in amounts of
1/8 - 1 parts by weight, preferable ~ to Yz parts by weight of the first
component. Suigiura ,r 8.
Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Parra Rapado combined with Burow, Knott,
Dow, Drinkall and Suigiura. Appellant has not produced evidence showing,
or persuasively argued, that the Examiner's determinations on obviousness
are incorrect. Only those arguments made by Appellant in the Briefs have
been considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
We have identified claim 4 as representative; therefore, all claims fall
with claim 4. Claim 4 reads as follows:
4. The herbicidal composition of claim 1 additionally
comprising ( c) diflufenican, wherein the weight ratio of (a) to
(b) to (c) is about 40:200:100.
Appeal Br. 15 (Claims Appendix).
We address Appellant's arguments below.
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Appellant contends that only through the use of impermissible
hindsight would one skilled in the art be led to use the specified herbicides
in the recited ranges. Appeal Br. 13. We are not persuaded.
Parra Rapado specifically teaches a ternary herbicide comprising
isoxaben, flufenacet and diflufenican. FF8 and 9. Parra Rapado also teaches
ratios of the three herbicides which embrace the claimed ration. FFlO. In
addition, Suigiura teaches using diflufenican with flufenacet in a ratio of
Yz: 1, which is the equivalent to the ration of the two compounds recited in
the claims. FF12. We agree with the Examiner that the teachings of the
references would have lead one skilled in the art to develop the claimed
invention. Final Act. 9. We also agree with the Examiner that one skilled
in the art would have been motivated to produce the claimed ternary
herbicide to improve efficacy or to broaden the range of weed that can be
controlled by a single composition.
Appellant contends that there is evidence of unexpected synergy to
rebut the Examiner's conclusion that the subject matter of the claims would
have been obvious. Appeal Br. 13. We do not agree.
Appellant again relies on the data presented in Table 1 of the
Specification. In the test reported in the table, a ternary herbicide was
compared with isoxaben and flufenacet individually as well as against
diflufenican combined with flufenacet and flufenacet combined with
isoxaben. Spec. 11. Nowhere does Appellant report data comparing the
claimed ternary herbicide with that taught in the art, isoxaben combined with
flufenacet and diflufenican. Appellant's evidence is unpersuasive in that it
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fails to compare the claimed invention with the closest prior art - the ternary
herbicide taught by Parra Rapado.
Conclusion
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 4 would have been
obvious over Parra Rapado combined with Burow, Knott, Dow, Drinkall and
Suigiura.
Claims 1, 5, 7, 9-15, and 17-22 have not been argued separately and
therefore fall with claim 4. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
We affirm the rejection for non-statutory obviousness-type double
patenting.
TIME PERIOD FOR RESPONSE
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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