Ex Parte Tateishi et al

Patent Trial and Appeal Board

Jun 7, 2018

14003607 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/003,607 09/06/2013
127226 7590 06/11/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Hideaki Tateishi
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.
4877-0ll 7PUS1 4412
EXAMINER
PAK,JOHND
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEAKI TATEISHI and TAKUMI NISHIUCHI
Appeal2017-005315
Application 14/003,607
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
TIMOTHY G. MAJORS, 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
mycotoxin accumulation inhibition method for inhibiting the accumulation
of the mycotoxin in a grain after cropping. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
Statement of the Case
Background
Fusarium head blight of [] cereals such as wheat, barley,
oats, rye, rice, com and the like is a disease caused mainly by
fungi included in the genus of Fusarium. The Fusarium head
blight develops mainly in the spike of the plant, and causes a
reduced yield of the crop and a deteriorated quality of the crop.
The Fusarium head blight also causes an accumulation of a
1 Appellants identify the Real Party in Interest as Kureha Corporation (see
Br. 1).
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Application 14/003,607
mycotoxin in the crop resulting from the production of the toxin
by the pathogen. . . . The toxins produced by the pathogens of
the Fusarium head blight include deoxynivalenol (DON) and
nivalenol (NIV). . . . A chemical control of the Fusarium head
blight by a fungicide application may allow DON or NIV to be
detected at a high concentration in a grain after cropping even
when the disease development was inhibited sufficiently. In
addition, it was also reported that the concentration of DON in
the grain is increased even during the storage stage after
cropping. Metconazole is one of [the] triazole compounds
having a potential of controlling activity on a disease in cereals,
fruits, vegetables, lawn, rice and the like, and a fungicide whose
active ingredient is metconazole has widely been used in
controlling the Fusarium head blight in wheat families.
(Spec. i-fi-12--4). The Specification teaches that the "conventional chemical
control of the Fusarium head blight may pose a difficulty in accomplishing a
sufficient inhibition of the accumulation of the mycotoxin in a grain after
cropping, although it can prevent the onset of the disease" and that "the
conventional fungicide has an insufficient or no ability of inhibiting the
toxin production, although it has a sufficient biocidal effect on the
pathogen." (Spec. i16). The Specification teaches a "mycotoxin
accumulation inhibition method for inhibiting the accumulation of the
mycotoxin in a grain after cropping" (Spec. i19).
The Claims
Claims 1 and 4 are on appeal. Claim 1 is representative and reads as
follows:
1. A mycotoxin accumulation inhibition method for
inhibiting the accumulation of the mycotoxin in a grain after
croppmg compnsmg:
a fungicide treatment step comprising applying a
fungicide containing metconazole as an active ingredient to a
cereal plant after the flowering stage;
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Application 14/003,607
a different fungicide treatment step comprising applying
a fungicide containing metconazole as an active ingredient to
the cereal plant during the flowering stage thereof;
wherein metconazole is the only active ingredient in the
fungicide;
wherein the time of the fungicide treatment step is at
least either during a stage from the begin[ n Jing of the yellowing
stage of the cereal plant through the end of the browning stage
or after cropping; and
wherein the different fungicide treatment step is the first
time the fungicide is applied to the cereal plant.
The Issue2
The Examiner rejected claims 1 and 4 under 35 U.S.C. § 103(a) as
obvious overNakajima, 3 Paul, 4 Hauser-Hahn5, Meissner6, and The Wheat
Growth Guide7 (Final Act. 3-6).
The Examiner finds that Nakajima teaches "spraying of fungicides" in
a "fungicide screening test" and teaches metconazole "significantly
decreased levels of mycotoxins DOV and NIV in cereal plants" (Ans. 4).
The Examiner finds that Nakajima "concludes that this screening test needs
2 The Examiner withdrew a rejection of claim 1under35 U.S.C. § 102(b) (see Ans.
2).
3 Nakajima, T., Fungicides Application against Fusarium Head Blight in
Wheat and Barley for Ensuring Food Safety, in FUNGICIDES, Odile Carisse
(Ed.) 139-156 (2010).
4 Paul et al., Efficacy of Triazole-Based Fungicides for Fusarium Head
Blight and Deoxynivalenol Control in Wheat: A Multivariate Meta-Analysis,
98(9) PHYTOPATHOLOGY 999-1011 (2008).
5 Hauser-Hahn et al., US 2011/0034496 Al, published Feb. 10, 2011.
6 Meissner et al., US 2011/0206816 Al, published Aug. 25, 2011.
7 The Wheat Growth Guide, 2nd ed., 1-31 (2008).
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Application 14/003,607
improvement ... [and] suggests a different control point, i.e. different
timing of fungicide application, than the screening protocol" (Ans. 4).
The Examiner finds that Nakajima teaches "fungicide application at
the beginning of flowering because plants are most susceptible to infection
at this stage .... Nakajima further teaches frequency of fungicide
application as being 'crucial for mycotoxin reduction"' (Ans. 4).
The Examiner finds that Nakajima teaches
that amount of mycotoxins DON and NIV "largely increases
after 20 DAA 8 (late milk stage)" ... Also, Fusarium infections
can occur in the late stages of growth, "at least as late as 20
DAA." Therefore, Nakajima teaches, "control strategies should
be established covering the late stages as well as the time
around the flowering stage to effectively reduce the risk of
DON and NIV contamination."
(Ans. 4--5).
The Examiner finds that Nakajima "strongly suggests first application
of metconazole at the flowering stage (because that's when cereal plant
wheat is most susceptible) and additional application at late stages, which is
'after 20 DAA (late milk stage)"' (Ans. 5).
The Examiner finds that the Wheat Growth Guide evidences that
"after 20 DAA would be approximately after July 1" and finds that the
"claimed period of 'beginning of the yellowing stage' through the 'end of
the browning stage' would reasonably include approximately after July 1
through late July and early August" (Ans. 5).
The Examiner finds that Nakajima teaches "additional fungicide
application after 20 DAA or after July 1, so application during the month of
8 DAA refers to days after anthesis (see Nakajima 144), where anthesis refers to
the flowering period of a plant.
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July and early August, which would clearly fall within said claimed period,
is sufficiently disclosed and suggested" (Ans. 5).
The Examiner finds that Paul teaches that "fungal infections are
known to occur between anthesis and harvest, and DON concentration may
increase in previously fungicide-treated plots", teaches that "metconazole
... provides the highest level of mycotoxin DON control in wheat", and
discloses "[a ]pplication at anthesis" (Ans. 6).
The Examiner finds that Hauser-Hahn discloses "post-harvest
fungicidal treatment of various crops, including cereals, to control diseases
or disorders, including reduction of mycotoxins such as DON and NIV" and
that"[ m ]etconazole is ... a suitable fungicide for this purpose" (Ans. 6).
The Examiner finds that Meissner discloses "application of
metconazole to cereal plants before or after harvest or during storage to
reduce mycotoxins before or after harvest or during storage" (Ans. 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that the combination of Nakajima, Paul,
Hauser-Hahn, Meissner, and the Wheat Growth Guide renders the claims
obvious?
Findings of Fact
1. Nakajima teaches using metconazole in a screening test and
teaches that "metoconazole decreased the DON+NIV level significantly
compared to the control plot" (Nakajima 141-143).
2. Nakajima teaches "to screen fungicides, we must consider the
effects they have on DON or NIV levels. These results suggest that a new
fungicide evaluation system based on efficacy for mycotoxin contamination
should be introduced" (Nakajima 143).
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3. Nakajima teaches a "general recommendation for fungicide
application timing is the beginning of flowering, because plants are most
susceptible to infection at this stage. An additional application at 7-10 days
after the first application is recommended in Japan." (Nakajima 144).
4. Nakajima teaches
in the greenhouse experiments, late infection, at least as late as
20 DAA, caused grain contamination with these toxins, even
without clear disease symptoms on the spike ... Strategies for
controlling FHB and toxin contamination have been developed,
mostly focusing on infection during the host flowering stage.
However, our results indicate the importance of the late stages
of grain development for toxin contamination in addition to the
early stage, showing that the amount of DON and NIV largely
increases after 20 DAA (late milk stage), even with infection at
earlier stages, and that infection at late stages, at least as late as
20 DAA, can cause non-negligible levels of contamination,
even without clear FHB symptoms. Thus, control strategies
should be established covering the late stage as well as the time
around the flowering stage to effectively reduce the risk of
DON and NIV contamination. Application of fungicides or
other control agents at the late stage may be an effective
measure for reducing the final level of toxin accumulation.
Agents used for such 'late control' are expected to possess
effects not only to prevent primary infection at late stages but
also to prevent toxin production in late stages by previous
fungal infection.
(Nakajima 146).
5. Nakajima teaches that "[a]nthesis is considered the optimal
growth stage for fungicide application to control FHB in wheat" (Nakajima
146).
6. Paul teaches that "the time between anthesis and harvest,
infections could occur and DON concentration may increase in fungicide-
treated plots" (Paul 1009, col. 2).
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7. Paul teaches that metconazole showed "efficacy against DON"
(Paul abstract; 1004, col. 1, Table I; 1009, col. 2).
8. Hauser-Hahn teaches "post-harvest treatment" with
metconazole in order to reduce DON and NIV in wheat (see Hauser-Hahn i-fi-1
1, 8, 13, 23, 27' 68).
9. Hauser-Hahn teaches "the application of certain fungicidal
active compounds to protect harvested fruit, cutflowers or vegetables against
phytopathogenic fungi" (Hauser-Hahn i-f l).
10. Hauser-Hahn teaches: "Fruit, cutflower and vegetables to be
treated according to the invention are particularly selected from cereals, e.g.
wheat" (Hauser-Hahn i127).
11. Hauser-Hahn teaches "the present invention relates to the use of
at least one fungicide, selected from the group consisting of ...
metconazole" (Hauser-Hahn i-fi-f 11, 13).
12. Hauser-Hahn teaches "compositions according to the invention
may also be used to reduce the contents of mycotoxins in plants and the
harvested plant material and therefore in foods and animal feed stuff made
therefrom. Especially but not exclusively the following mycotoxins can be
specified: De-oxynivalenole (DON), Nivalenole" (Hauser-Hahn i168).
13. Meissner teaches reducing toxins by applying metconazole after
harvest to reduce toxin contamination (Meissner i-fi-f 11-12).
14. The Wheat Growth Guide teaches the different stages of wheat
growth and provides a timeline for these stages. (See Wheat Growth Guide
4--5) which the Examiner relies upon to show "the benchmark beginning of
yellowing stage for wheat would occur around June 20, about 50 days before
wheat is ready for harvest. 20 DAA would be about July 1 (39 days before
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Application 14/003,607
harvest) and 30 DAA would be about July 11 (29 days before harvest)"
(Final Act. 5).
Principles of Law
A prima facie case for obviousness require "a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4--7; FF 1-14) and agree with the
conclusion that the claims are obvious over Nakajima, Paul, Hauser-Hahn,
Meissner, and The Wheat Growth Guide.
Nakajima teaches that metconazole significantly decreased levels of
mycotoxins DON and NIV (FF 1) and teaches a "general recommendation
for fungicide application timing is the beginning of flowering, because
plants are most susceptible to infection at this stage. An additional
application at 7-10 days after the first application is recommended" (FF 2-
3).
Paul teaches that "the time between anthesis and harvest, infections
could occur and DON concentration may increase in fungicide-treated plots"
and that metconazole showed "efficacy against DON" (FF 6-7). Moreover,
Hauser-Hahn and Meissner provide further reasons for a late application of
metconazole in order to limit the presence of mycotoxins (see FF 8-9).
We agree with the Examiner's finding that "after 20 DAA would be
approximately after July 1" and find that the "claimed period of 'beginning
of the yellowing stage' through the 'end of the browning stage' would
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Application 14/003,607
reasonably include approximately after July 1 through late July and early
August." (Ans. 5).
Appellants contend not all claim elements are present in the cited
references, specifically that "Nakajima discloses spraying fungicides 2 days
before flowering. One of ordinary skill in the art would have no proper
reason, rationale, or motivation to modify Nakajima in order to arrive at the
claimed invention, and the secondary references fail to overcome this
deficiency" (Br. 4).
We are not persuaded. Although Nakajima exemplifies applying
metconazole in a screening test before the flowering stage, Nakajima also
suggests a different control point, i.e., different timing of fungicide
application than the screening protocol (see FF 2--4). Nakajima suggests
applying fungicides at the beginning of flowering and teaches that control
strategies should be established covering the late stage as well as the time
around the flowering stage to effectively reduce the risk of DON and NIV
contamination (see FF 3-5). Thus, Nakajima provides reasons to optimize
the timing of application of metconazole at various stages in the agricultural
life cycle including flowering and at late stage. "[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation." In re
Aller, 220 F.2d 454, 456 (CCPA 1955). This rule is appropriate in cases
such as this one where the optimized variables of timing for administration
of fungicides was identified by the art (see FF 1--4) as "result-effective
variable[s]." In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citing In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
Appellants contend Paul discloses "a fungicide application at anthesis
stage" and Nakajima teaches "it is favorable to control a disease at the
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anthesis. The disease is controlled at the anthesis for the purpose of
avoidance of infection rather than for the purpose of removal of toxin" (Br.
4--5).
We are not persuaded. Paul teaches that "the time between anthesis
and harvest, infections could occur and DON concentration may increase in
fungicide-treated plots" (FF 6) and that metconazole showed "efficacy
against DON" (FF 7). Nakajima teaches that application of fungicides or
other control agents at the late stage "may be an effective measure for
reducing the final level of toxin accumulation" (FF 4). Moreover, Hauser-
Hahn expressly teaches "the application of certain fungicidal active
compounds to protect harvested fruit, cutflowers or vegetables against
phytopathogenic fungi" (FF 9). Thus, the prior art suggests that fungicides
may be applied at multiple points during the growth cycle including both at
anthesis and at later stages (FF 3, 4, 8, 9).
Appellants contend that the "USPTO relies on the secondary
references to disclose the claimed timing of the treatment steps" and that
Hauser-Hahn and Meissner "do not disclose or suggest the reduction of
fusariumtoxin" (Br. 5). Appellants contend
(Id.).
one of ordinary skill in the art would have no proper reason,
rationale, or motivation to use a toxin compound (e.g.,
fusariumtoxin) other than the toxin compound disclosed in
Meissner et al. '816 since the toxin compound disclosed in
Meissner et al. '816 is different from fusariumtoxin in chemical
structure and properties.
We find this argument unpersuasive. Hauser-Hahn teaches "post-
harvest treatment" with metconazole in order to reduce DON and NIV
(fusarium) in wheat. (FF 10-12). Meissner is relied upon to teach applying
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metconazole post-harvest. Thus, the ordinary artisan, interested in reducing
the presence of toxins such as DON as expressly suggested by Nakajima (FF
4) would have reasonably looked to the teachings of Hauser-Hahn, which
teaches post-harvest protection against fungal production of toxins by
administration of fungicides (FF 8-12 ). It is this combination of teachings,
not any single reference alone that renders these claims obvious. "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants contend that none of the motivations of KSR apply and
contend that there are not predictable results (Br. 6-7).
We are not persuaded. Nakajima provides reasons for applying
metconazole at flowering and during a stage from the beginning of the
yellowing stage of the cereal plant through the end of the browning stage,
because Nakajima teaches that applying fungicide at flowering is optimal
and teaches the need to control late stage infection (FF 3-5). Specifically,
Nakajima teaches application 20 days after anthesis because "[a]pplication
of fungicides or other control agents at the late stage may be an effective
measure for reducing the final level of toxin accumulation" (FF 4). Wheat
Growth Guide, as explained by the Examiner, evidences that this application
of Nakajima, occurring 20 days after anthesis (FF 4), occurs at the beginning
of the yellowing stage of the cereal plant through the end of the browning
stage (FF 14) as required by claim 1. Moreover, the additional references
(Paul, Hauser-Hahn, and Meissner) provide reasons to apply metconazole
post-harvest (FF 6-13), that is, after cropping as alternatively required by
claim 1.
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The cited referenced demonstrate that applying fungicide at anthesis
(FF 1-3, 5) and also in the period from the yellowing stage to the browning
stage (4, 6-7, 14) or post-harvest (FF 8-13) reduces infections. Thus, one of
ordinary skill has good reason to apply metconazole at the claimed times.
Appellants have not provided any evidence that the results would not have
been predictable given the extensive guidance of Nakajima, Paul, Hauser-
Hahn, Meissner, and The Wheat Growth Guide (FF 1-14).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
combination of Nakajima, Paul, Hauser-Hahn, Meissner, and The Wheat
Growth Guide render the claims obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Nakajima, Paul, Hauser-Hahn, Meissner, and The
Wheat Growth Guide. Pursuant to 37 C.F.R. § 41.37(c)(l), we also affirm
the rejection of claim 4 as this claim was not argued separately.
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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