Ex Parte Yamashita

Patent Trial and Appeal Board

Jan 10, 2018

14300595 (P.T.A.B. Jan. 10, 2018)

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.
14/300,595 06/10/2014 Thomas T. Yamashita Y AMA-009CON2 4072
93726 7590 01/12/2018
EPA - Bozicevic Field & Francis LLP
Bozicevic, Field & Francis
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS T. YAMASHITA
Appeal 2017-001636
Application 14/300,5951
Technology Center 1600
Before: DEMETRA J. MILLS, RICHARD J. SMITH, and DAVID
COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an Appeal under 35U.S.C. § 134 involving claims to a
pesticide composition. The Examiner rejected the claims on appeal under 35
U.S.C. § 103(a) as obvious.
We AFFIRM.
1 According to Appellant, the real party in interest is Thomas T. Yamashita.
App. Br. 1.
Appeal 2017-001636
Application 14/300,595
STATEMENT OF THE CASE
Claims 1—3, 5—7, 10, 13, 16, 18, 19, and 32—36 are on appeal. Claim
1 below is illustrative and reads as follows:
1. A pesticide composition comprising:
(a) a phytotoxic pesticide
(b) an assimilable carbon-skeleton energy
component;
(c) a water soluble macronutrient component;
(d) a water soluble micronutrient component; and
(e) a vitamin/cofactor component
App Br. 17 (Claims Appendix).
The Examiner rejected claims 1—3, 5—7, 10, 13, 16, 18, 19, and 32—36
under 35 U.S.C. § 103(a) over the combination of Yamashita2 and Miele.3
FINDINGS OF FACT
1. The Specification states:
By pesticide is meant broadly to include any agent that affects
the mortality or behavior of a target organism and includes, but
is not limited to, insecticides, acaracides, miticides, fungicides,
bactericides, herbicides, antibiotics, antimicrobials, nemacides,
rodenticides, entomopathogens, phermones, attractants, plant
growth regulators, insect growth regulators, chemosterilants,
repellents, viruses and phagostimulents.
Spec. 119.
2 Yamashita, US Patent No. 5,549,729, issued Aug. 27, 1996
(“Yamashita”).
3 Miele et al., US Patent Publication No. 2005/0065034 Al, published Mar.
24, 2005 (“Miele”).
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Application 14/300,595
2. The Specification discloses:
The ACSE [assimilable carbon-skeleton energy] component of
the subject compositions are present in an amount suitable to at
least reduce the phytotoxic effects of at least the pesticide used
in the composition, where the ACSE component may provide
for such reduced phytotoxicity alone or may function in
combination with other components in a composition.
Accordingly, embodiments include an amount of ACSE
component present in a subject composition in a pesticide
phytotoxicity reducing amount. The particular amount of a
given ACSE component present in a given composition
depends on a variety of factors such as the particular plant to
which the composition is to be administered, the particular
ACSE component employed, the particular pesticide(s)
employed, and the like. In many embodiments, the amount of
ACSE component in a pesticide composition may range from
about 0.1 % to about 20 % w/w, e.g., from about 0.1 % to about
18 % w/w, e.g., from about 0.3 % to about 16.0 % w/w, e.g.,
from about 1.0 % to about 10.0 % w/w.
Spec. 126.
3. The Specification discloses:
As noted above, synthetic or man-made pesticides may also be
employed in the subject compositions. Such synthetic
pesticides include, but are not limited to organochlorines,
organophosphates, organosulfurs, botanicals, carbamates,
neonicotinyls (which include chloronicotinyls), antibiotics,
dicarboximides, phenylamines, benzimidazoles, triazoles,
strobylurines, imides, amides and pyrethroids.
Id. 1 21 (emphasis added).
4. The Specification discloses “diazinon” as one of several
exemplary pesticides that may be used in the subject invention. Id.
122.
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Application 14/300,595
5. The Specification discloses that “[embodiments may
also include a chlorothalonil pesticide.” Id. 172.
6. Claims 3 and 4 of the Specification as originally filed read as
follows below:
3. The pesticide of Claim 2, wherein said pesticide is a
small molecule pesticide.
4. The pesticide composition of Claim 3, wherein said
pesticide is chosen from: sodium ahiminofluorides,
propiconazoles, mancozebs, manebs, zirams,
chlorothalonils, copper hydroxides, myclobutanils,
fenbuconazoles, captans, carbaryls, cartaps,
carbofurans, tebufenozides, dicofols, dinocaps,
propanils, oxyfluorfens, chlorinated nitriles, triazoles,
aralkyl triazoles, triazole anilides, benzamides, alkyl
benzamides, diphenyl ethers, pyridine carboxylic
acids, chloroanilines, organophosphates,
organosulfurs, carbamates, botanicals, synthetic
pyrethroids, antibiotics, inorganic compounds, EBDT,
dicarboximide, benzimidazoles, phenylamines, imides,
strobylurines, phosphonic glycine salt, and mixtures
thereof.
Spec. 42.
7. Yamashita discloses:
Composition for and method of stimulating growth of plants,
e.g. increase in crop production. The composition comprises a
carbon skeleton/energy component, typically a sugar or mixture
of sugars; a macronutrient component providing the elements
nitrogen, phosphorus, potassium and calcium, preferably also
magnesium and sulfur; a micronutrient component providing
zinc, iron and manganese, preferably also copper, boron,
molybdenum and cobalt. The composition also preferably
contains a vitamin cofactor component and an enhancement
component.
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Yamashita Abstract.
8. Yamashita discloses:
Many insect species are directed to hosts and specific
host tissues via olfactory stimuli. The mated female navel
orangeworm (Amyelois transitella Walker), for example, is
attracted to previous year’s nuts hanging in the tree (in the
spring months) and to the mature nuts. . . .
It has been found that certain fatty acid fractions or crop
oils are the key agents of attraction. Foremost among these are
the unsaturated fatty acids, linolenic, linoleic and oleic, the
latter being most attractive of the three. Crude, unrefined nut
and vegetable oils and the acidulated forms of these oils are
excellent sources of oleic acid.
During the periods of NOW flight, it may be possible to
disrupt the host finding ability of mated females. This is
accomplished by permeating the crop environment with
attractants that make it virtually impossible for the female to
home in on the host tissue(s). Theoretically, it would be
possible to halt a generation and avoid extensive damages to the
crop.
Id. at col. 25,11. 37—58.
9. Yamashita discloses the application of a composition (called
“Bright Sun”) comprising a carbon skeleton/energy component, a
macronutrient, a micronutrient, and a vitamin cofactor together with a
“[p]est [djisruptant.” Id. at col. 25,1. 32 — col. 27,1. 24 (Example 6).
10. Miele discloses:
It has also been unexpectedly found that the combination of a
phyto-protective product with a fertilizer, for example such as
those described in the Italian patent 1,301,515, with a co­
adjuvant of the invention has also proved to be significantly
more efficient from an agronomic point of view both with
respect to nutrition, and also for the protection of the crops in
their first post-sowing, or post-transplanting, development
phases.
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Miele 129.
11. Miele discloses:
agronomic advantages can be obtained, such as greater
efficacy of the pesticide component and yield increases at the
end of the cycle with respect to the applications, with the same
titer of formulations of the same phyto-protective products, in
particular pesticides, on an inert base;
of physical mixtures between the same products on an
inert base with micro-granular fertilizers;
of formulations of the same products on the same
fertilizing base without the above co-adjuvants.
Id. 1130-32.
12. Miele discloses:
The greater efficiency of the phyto-protective activity of the
formulations of the present invention has unexpectedly
demonstrated the possibility of distributing, per surface
unit/land volume, lower dosages of phytoprotective products,
and in particular of pesticides, (within a reduction range varying
from 10 to 20%) with the same effect, with respect to the
dosages necessary when the same phyto-protective product, and
in particular a pesticide, is formulated without the above-
mentioned co-adjuvants.
Id. 133.
13. Miele discloses:
The reduction in dosage of the phyto-protective product, in
particular a pesticide in the composition, particularly significant
for those products with a systemic activity, not only produces
economic advantages, but also has considerable benefits from
the point of view of the environmental impact and a reduced
toxicity per weight unit of the compositions thus formulated,
which reduces risks of pollution due to accidental dispersion in
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Application 14/300,595
the environment and direct toxicity to the farmers using the
compositions of the invention.
Id. 134.
14. Miele discloses:
Within the category of the phyto-protective products included
in the scope of the invention, crop pesticides can be used,
selected from carbamates, such as benfuracarb, carbofuran,
carbosulfan, oxamyl, furathiocarb, aldicarb and propamocarb;
neonicotinoids, such as imidacloprid, acetamiprid, chlothianidin
(TI 435), thiacloprid, dinotefuran (MTI446), thiametoxam;
phosphoric esters, such as: diazinone, chlorpyrifos,
phenamiphos, ethoprophos, cadusaphos, fosthiazate,
chlormephos; pyrethroids, such as tefiuthrin; phenylpyrazoles,
such as fipronil; oxathines such as carboxyin; triazoles, among
which tetraconazole, simeconazole, myclobutanil and
triticoanzole; phospho-organic-thiophosphates such as
tolclofos-methyl; nitrogen-organics such as phenyl-urea:
pencycuron and acetamides: cimoxanil; benzimidazoles such as
carbendazim; thiophanates such as thiophanate-methyl;
isophthalonitriles such as chlorotalonil; phenylamides, for
example metalaxyl, benalaxyl; phenylpyrroles, such as
fiudioxonyl; aluminum fosetyl and their mixtures.
Id. ^51 (emphasis added).
ANALYSIS
In rejecting the pending claims as obvious, the Examiner found that
Yamashita disclosed a composition comprising “an assimilable carbon
skeleton energy component, a macronutrient, a micronutrient and a
vitamin/cofactor component.” Ans. 2. The Examiner acknowledged that
Yamashita did not “explicitly disclose a composition comprising a
phytotoxic, non-naturally occurring, small molecule pesticide,” but noted
that Yamashita did disclose that the compositions may include “pest
dismptants.” Id.
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The Examiner found that Miele disclosed a “fertilizer with
macronutrients and micronutrients, and also comprising a crop pesticide.”
Id. The pesticides disclosed include “carbamates such as carbofuran,. . .
pyrethroids, . . . triazoles such as mycobutanil, . . . benzimidazoles, . . . [and]
isophthalonitriles such as chlorothalonil.” Id. at 2—3. The Examiner further
found that Miele disclosed that “combining the fertilizer with the crop
pesticide has proved to be significantly more efficient from an agronomic
point of view both with respect to nutrition, and also for the protection of the
crops in their first post-sowing, or post-transplanting, development phases.”
Id. at 3. Combining a fertilizer and pesticide also provides “greater efficacy
of the pesticide component and yield increases at the end of the cycle with
respect to the applications, resulting in the possibility of distributing, per
surface unit/land volume, lower dosages of phytoprotective products, and in
particular pesticides, with the same effect.” Id.
Based on the disclosures of Yamashita and Miele, the Examiner
concluded that “a person having ordinary skill in the art would have been
motivated to prepare compositions according to Yamashita wherein the
compositions further include the crop pesticides according to Miele” and
reasoned that in so doing, the skilled artisan would “reasonably expect to
increase the efficacy of the pesticide, as reasonably suggested by Miele.” Id.
With respect to the requirement that the pesticide be “phytotoxic,” the
Examiner found that several of the pesticides disclosed by Miele, including
carbamates, pyrethroids, organophosphate, benzimidazoles, and
chlorothalonil, were taught by the Specification to be phytotoxic. The
Examiner thus concluded that the claimed composition would have been
obvious over the combination of Yamashita and Miele. Id. at 3^4.
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We agree with the Examiner that the claimed composition would have
been obvious over the combination of Yamashita and Miele. We address
Appellants’ arguments below.
Claims 1, 5, 7, 10, 13, 16, 18, 19 and 32-36
Appellants argue claims 1, 5, 7, 10, 13, 16, 18, 19 and 32—36 together.
We designate claim 1 as representative.
Appellants argue that the Examiner has not articulated sufficient
motivation to combine the teachings of Yamashita and Miele to arrive at the
claimed composition. App. Br. 11. Appellants contend that “[njowhere
does Miele teach or suggest that Miele’s phyto-protective pesticides are
phytotoxic or that a phytotoxic pesticide should be combined with
Yamashita’s composition.” Reply Br. 6. We are not persuaded.
The Examiner’s rationale for combining the prior art to arrive at the
claimed invention need not match that of the inventor. See, Outdry
Technologies Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017)
(“Any motivation to combine references, whether articulated in the
references themselves or supported by evidence of the knowledge of a
skilled artisan, is sufficient. . . . The motivation . . . need not be the same
motivation articulated in the patent for making the claimed
combination.”) Par Pharm., Inc. v. TWIPharm., Inc., 773 F.3d 1186, 1197
(Fed. Cir. 2014) (“[W]e are not limited to the same motivation that may have
motivated the inventors.”); Alcon Research, Ltd. v. Apotex Inc., 687 F.3d
1362, 1368 (Fed. Cir. 2012) (‘ ‘We have repeatedly held that the motivation
to modify a prior art reference to arrive at the claimed invention need not be
the same motivation that the patentee had.”). It is thus immaterial whether
the skilled artisan would have included Miele’s phyto-toxic pesticides in
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Yamashita’s composition because they were phyto-toxic, or even recognized
that they were phyto-toxic, so long as there was reason to include them in
Yamashita’s composition.
Here, Yamashita discloses a plant nutrient composition that may be
administered together with a pesticide. FF7—9. Miele also discloses a plant
nutrient composition (a fertilizer) and teaches that administration of the
fertilizer together with a phyto-protective pesticide has significant
advantages with respect to efficiency, crop protection, plant yield, lower
dosages, and decreased pollution. FF10-13. Miele further identifies
carbamates, pyrethroids, diazone, triazoles, benzimidazoles, and
chlorothalonil as pesticides that can be used with its fertilizer. FF14. Based
on these disclosures, we agree with the Examiner it would have been
obvious to “prepare compositions according to Yamashita comprising the
carbon skeleton/energy component, macronutrient component, micronutrient
component and vitamin/cofactor, and further comprising a synthetic
pesticide, as reasonably suggested by [Miele] .... because [Miele] teach
that combining the pesticide and the fertilizer is significantly more efficient
from an agronomic point of view.” Final Act.4 4—5.
Appellants contend that the Examiner’s reliance on Miele’s teachings
with respect to the benefits of combining a pesticide and a fertilizer are “in
the context of Miele’s inert carrier microparticles which provide for the
‘greater efficacy’” and thus “provide no guidance regarding a particular
fertilizer composition or components of the same.” App. Br. 12.
We disagree with Appellants that Miele’s teachings with respect to the
advantages of comingling a pesticide and a fertilizer are limited to “the
4 Office Action mailed November 13, 2015 (“Final Act.”).
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context of Miele’s inert carrier microparticles” because Miele’s teachings
are not so qualified. See, FF10-13. Moreover, even if the benefits were
limited to formulations with carrier microparticles, this is not inconsistent
with Yamashita, which discloses that its composition can be formulated as
spray or a powdered product. See, Yamashita col. 37,11. 6—37.
Accordingly, we agree with the Examiner that the skilled artisan “would
reasonably expect that compositions comprising a fertilizer according to
Yamashita mixed with the pesticides according to Miele et al. could be
combined into a microgranular formulation that maintains its efficacy.”
Ans. 9.
Appellants further argue that the Examiner erred in finding that
Yamashita disclosed compositions including a pesticide. Appellants contend
that Yamashita is “completely silent regarding compositions which include a
pesticide component.” Id. at 10. More specifically, Appellants contend
Example 6 of Yamashita is not a pesticide, but rather a composition
including oleic acid which acts as an “‘agent of attraction’ for a particular
insect species.” App. Br. 6 (Explaining that the oleic acid component of
Example 6 “has attractant properties to naval orangeworm insects which
disrupts the location where mated females lay eggs.”). We are not
persuaded.
The Specification expressly defines the term “pesticide” to include
“any agent that affects the mortality or behavior of a target organism . . .
including] . . . attractants.” FF1. The composition of Example 6 acts as an
“agent of attraction” and thus meets Appellants’ own definition of a
“pesticide.”
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Appellants argue that the “explicit disclosures of phytotoxic pesticides
such as sodium fluoaluminate and chlorothalonil in the Appellant’s own
specification do not reference any of the specific phytoprotective agents of
Miele’s working examples 1—8.” App. Br. 9. Thus, according to
Appellants, “the alleged teachings that some pesticides are phytotoxic from
Appellant’s own [Specification are not specifically relevant to Miele’s
compositions.” Id. We are not persuaded.
Miele expressly discloses pesticides that are identified by the
Specification as being phytotoxic. Compare FF3—5 with FF14. The fact that
the phytotoxic pesticides identified by the Examiner were not included in
Miele’s working examples does not render them irrelevant. “The use of
patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned. They are
part of the literature of the art, relevant for all they contain.” In re Lemelson,
397 F.2d 1006, 1009 (CCPA 1968); see also, In reFritch, 972 F.2d 1260,
1264—65 (Fed. Cir. 1992) (“It is well settled that a prior art reference is
relevant for all that it teaches to those of ordinary skill in the art.”).
Appellants argue that “even if the disclosure of the instant
specification were relevant as extrinsic evidence of the prior art that some
pesticides are phytotoxic, it would not be sufficient to demonstrate that
phytotoxicity necessarily flows from Miele’s phyto-protective pesticide
compositions, because such alleged teachings merely disclose the possibility
of a phytotoxic pesticide.” App. Br. 9. Appellants contend that the
Examiner “provided no other extrinsic evidence or technical reasoning to
reasonably support a determination that the allegedly inherent characteristic
of phytotoxicity in Miele’s phyto-protective pesticides necessarily flows
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from the teachings of the Appellant’s [Specification.” Id. We are not
persuaded.
The Examiner has provided evidence that the claimed and prior art
pesticides are identical. Accordingly, the burden shifted to the Appellant to
demonstrate the absence of inherency. See In re Best, 562 F.2d 1252, 1255
(CCPA 1977) (“Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art products
do not necessarily or inherently possess the characteristics of his claimed
product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and compare prior art
products.”). Attorney argument that the compounds disclosed in the
Specification as examples of phytotoxic pesticides are not, in fact,
phytotoxic is insufficient to carry Appellants’ burden. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”)
Appellants argue that the skilled artisan “would read Miele’s teaching
of compositions including rapidly absorbed phyto-protective pesticides as
excluding pesticides having enhanced detrimental phytotoxic effects on the
plant.” App. Br. 10. We are not persuaded because Miele expressly
discloses carbamates, diazinone, pyrethroids, triazoles, benzimidazoles, and
chlorothalonil as crop pesticides that fall “[wjithin the category of the phyto-
protective products included in the scope of the invention.” FF14. Miele
thus cannot be said to teach away from the use of these pesticides.
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Accordingly, we affirm the Examiner’s rejection of claim 1. Because
they were not argued separately, claims 1,5, 7, 10, 13, 16, 18, 19 and 32—36
fall with claim 1.
Claim 2
Claim 2 depends from claim 1 and further specifies that the “pesticide
is a non-naturally occurring pesticide.” Appellant argues that claim 2 is
independently patentable because Yamashita’s com oil pesticide is a
naturally occurring pesticide. We are not persuaded because the Miele
discloses non-naturally occurring pesticides including carbamates,
benzimidazoles, triazoles and pyrethroids. FF14; see also FF3 (identifying
carbamates, benzimidazoles, triazoles and pyrethroids as “synthetic or man­
made pesticides”). One cannot show non-obviousness by attacking
references individually when the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”). Accordingly, we
affirm the Examiner’s rejection of claim 2.
Claim 3
Claim 3 depends from claim 2 and further specifies that the “pesticide
is a small molecule pesticide.” Appellant argues that claim 3 is
independently patentable because Yamashita’s oleic acid pesticide is not a
small molecule pesticide. We are not persuaded because the Miele discloses
small molecule pesticides including carbamates, benzimidazoles, triazoles
and pyrethroids. FF14; FF6 (Original claim 4, which depended from claim
3, and further specifies that the small molecule pesticide is selected from a
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group including, inter alia, carbamates, benzimidazoles, triazoles and
pyrethroids.). One cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. In
re Keller, 642 F.2d at 425; In re Merck & Co.,Inc., 800 F.2d at 1097.
Accordingly, we affirm the Examiner’s rejection of claim 3.
Claim 6
Claim 6 depends from claim 1 and further specifies that the
“assimilable carbon-skeletonenergy component is present in a pesticide
phytotoxicity-reducing amount.” Appellant argues that claim 6 is
independently patentable because the combined teaching of “Yamashita and
Miele fails to teach or suggest a pesticide phytotoxicity-reducing amount of
an assimilable carbon-skeleton-energy component.” App. Br. 15. We are
not persuaded because Yamashita discloses that the assimilable carbon-
skeleton energy component may be present from 0.000001 to 80%.
Yamashita col. 5,1. 31 (Table 1). This overlaps with the Specification’s
disclosure that the assimilable carbon-skeleton energy component may be
present in an amount ranging from 0.1 to 20%. Spec. 126. In re Peterson,
315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (“[T]he existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that his
invention would not have been obvious.”). Accordingly, we affirm the
Examiner’s rejection of claim 6.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer, and
the Final Office Action, we affirm the Examiner’s rejection of claims 1—3,
5—7, 10, 13, 16, 18, 19, and 32—36 under 35 U.S.C. § 103(a) over the
combination of Yamashita and Miele.
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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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