Mayo, Chapman S. et al.

Patent Trials and Appeals Board

Jan 2, 2020

12262834 - (D) (P.T.A.B. Jan. 2, 2020)

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.
12/262,834 10/31/2008 Chapman S. Mayo A3264.105.101 6970
25281 7590 01/02/2020
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
DBCLAW-Docket@dbclaw.com
USPTO.PATENTS@dbclaw.com
dmorris@dbclaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHAPMAN S. MAYO, KENNETH L. DART, and
JEFFREY T. MCCLELLAN
____________

Appeal 2019-005072
Application 12/262,834
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–7, 9–11, 13, 15–23, 25, and 26
(Appeal Brief filed January 7, 2019 (“App. Br.”) 1.)2
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as the
Assignee, Agro-K Corporation. (See App. Br. 3; see also Assignment
Reel/frame 021770/0315.)
2 Claims 8, 12, 14, and 24 are cancelled.
Appeal 2019-005072
Application 12/262,834

2
Appellant’s Specification provides a combination of calcium
phosphite (CaHPO3) mixed with prohexadione calcium. (Specification
October 31, 2008 (“Spec.”) ¶ 9.) The Specification discloses that
prohexadione calcium [calcium 3-oxido-5-oxo-4-propionylcyclohex-3-
enecarboxylate] is a known plant growth regulator used for regulating shoot
growth in apple trees. (Id. ¶ 2.) The manufacturer of prohexadione calcium
instructs against mixing the compound with added calcium due to reduced
efficacy of prohexadione calcium. (Id. ¶ 4.) Because calcium is a
commonly used micronutrient, calcium must be applied separately from
prohexadione calcium. (Id.) The Specification alleges that in contrast to the
prior art expectations, the combination of calcium phosphite with
prohexadione calcium has shown improved shoot growth suppression rather
than reduced efficacy. (Id. ¶ 10.)
Appellant’s claim 1 recites:
A method of treating agricultural crops, comprising:
applying a composition to a crop, wherein the composition
comprises prohexadione calcium and one or more metal
phosphites in aqueous solution;
wherein the one or more metal phosphites are selected from the
group consisting of zinc phosphite, manganese phosphite,
magnesium phosphite, calcium phosphite, iron phosphite
and copper phosphite; and
wherein at least one of the one or more metal phosphites
comprises calcium phosphite.
(App. Br. 35.) Independent claims 10 and 19 recite a composition
comprising, inter alia, prohexadione calcium and calcium phosphite.
The Examiner rejects the claims as follows:
Appeal 2019-005072
Application 12/262,834

3
Claims
Rejected
35 U.S.C. § Basis Final Office
Action
1, 10, 19 103(a) Stringfellow,3 Evans ’882,4
Lovatt5
3–6
1–7, 10, 11, 13,
15–23, 25, 26
103(a) Stringfellow, Evans ’882, Lovatt
’2006
6–12
1, 9 103(a) Stringfellow, Evans ’882, Evans
’8317
12–19

Analysis
The Examiner finds Stringfellow teaches a composition for treating
agricultural plants including a mixture of a phosphite compound, a non-
phosphite pesticide, and water. (Final Office Action mailed August 10,
2018 (“Final Act.”) 3–4, citing Stringfellow ¶ 5.) The Examiner finds
Stringfellow teaches that the phosphite may include the calcium salt of
phosphorous acid, i.e., calcium phosphite. (Id. at 4, citing Stringfellow ¶ 7.)
The Examiner finds Stringfellow teaches that the non-phosphite pesticide
compound may include a plant growth regulator, e.g., prohexadione. (Id.,
citing Stringfellow ¶¶ 13, 96, 102.)
The Examiner acknowledges that Stringfellow does not teach that the
prohexadione is prohexadione calcium. (Id.) The Examiner finds
Evans ’882 teaches prohexadione calcium is an effective plant growth

3 Stringfellow et al., WO 2005/115144 A1, published December 8, 2005.
4 Evans et al., US 6,083,882, issued July 4, 2000.
5 C. J. Lovatt and R. L. Mikkelsen, Phosphite Fertilizers: What Are They?
Can You Use Them? What Can They Do? 90 Better Crops 11–13 (2006).
6 Lovatt, US 5,514,200, issued May 7, 1996.
7 Evans et al., US 6,022,831, issued February 8, 2000.
Appeal 2019-005072
Application 12/262,834

4
regulator useful for improving the overall nutritive value and growing of
alfalfa. (Id. at 4–5, citing Evans ’882 2:31–35; 3:11–21.) The Examiner
finds one of ordinary skill in the art would have recognized that the
combined prior art would provide a pesticidal composition that has an
increased efficacy for the treatment of agricultural plants, e.g., alfalfa. (Id.
at 5.)
Appellant asserts that Longfellow teaches calcium salts of phosphoric
acid, i.e., calcium phosphate, and not calcium phosphite. (App. Br. 20,
citing Stringfellow ¶ 7.) Appellant further asserts that Stringfellow discloses
at least several thousand potential phosphite compounds in addition to six
broad classes of suitable pesticide compounds. (Id. at 28–29.) Appellant
contends that “Stringfellow is silent with respect to guidance on pairing any
particular phosphite compound with a corresponding pesticide compound.”
(Id. at 29.) Appellant contends accordingly, that the Examiner has failed to
show a reasonable expectation of success without undue experimentation.
(Id. at 28.)
We do not agree with Appellant’s characterization of the prior art.
Stringfellow teaches:
Suitable phosphorous acid salts include inorganic or mineral
salts and organic salts. Useful inorganic salts include alkali or
alkaline earth metal salts such as those including lithium, sodium,
potassium, rubidium, cesium, beryllium, magnesium, calcium,
strontium, and barium salts of phosphoric acid.

(Stringfellow ¶ 7.) The first sentence of the paragraph unambiguously refers
to inorganic salts of phosphorous acid, not phosphoric acid. Consistent with
the format of paragraphs 6 and 8–12, paragraph 7 introduces a genus of
Appeal 2019-005072
Application 12/262,834

5
compounds, e.g., inorganic salts of phosphorous acid, followed by a listing
of species within the genus, e.g., calcium phosphite as the inorganic salt.
(See Stringfellow ¶¶ 6–12.) Stringfellow confirms this interpretation by
separately listing phosphoric acid salts, i.e., phosphates as optional
compounds. (Stringfellow ¶¶ 104, 105.) Although we agree with Appellant
that paragraph 7 ends with the recitation of “barium salts of phosphoric
acid,” this appears to be a typographical error, particularly in view of the
duplication of the language in paragraph 105 referring to phosphates.
Accordingly, we agree with the Examiner that Stringfellow teaches calcium
phosphite, in addition to a non-phosphite pesticide, e.g., prohexadione.
With respect to the numerous potential combinations taught by
Stringfellow, disclosing a multitude of effective combinations does not
render any particular formulation less obvious. Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Stringfellow teaches a
pesticide composition including an effective combination of a phosphite and
non-phosphite pesticide. Picking and choosing among the disclosed
phosphites and pesticides to arrive at calcium phosphite and prohexadione is
entirely proper in the context of an obviousness rejection, where Appellant is
afforded an opportunity to rebut with objective evidence any inference of
obviousness which arises from the similarity of the claimed invention to the
prior art. See in re Arkley, 455 F.2d 586, 588 (C.C.P.A. 1972).
Appellant submits objective evidence to rebut the Examiner’s
inference of obviousness. Appellant asserts that combining prohexadione
calcium and other calcium sources has been avoided in the art. (App. Br. 22,
Appeal 2019-005072
Application 12/262,834

6
citing Spec. ¶ 4.) As supporting evidence, Appellant submits the Apogee®8
product label, containing 27.5% prohexadione calcium as the active
ingredient. (Apogee® 1.) Apogee® states: “Do not tank mix Apogee with
calcium sprays because research has shown that added calcium will reduce
the effectiveness of Apogee.” (Apogee® 5; see App. Br. 23–24.)
Appellant also submits Greene9 which explains that the effect of
Apogee will be reduced if applied with hard water containing 500 ppm or
greater calcium. (Reply Brief dated June 19, 2019 (“Reply Br.”) 4, citing
Greene 2.) Appellant further submits a Declaration by Wilbur H. Palmer
(“Palmer Decl.”),10 which states:
[P]ersons of ordinary skill in the art of the use of agricultural
chemicals, at the time of the effective filing date of the present
application, would have understood the warnings against
combining the APOGEE brand of plant growth regulator with
other calcium sources to be warnings against combining
prohexadione calcium with another calcium source, regardless
of the manner of combination.
(Palmer Decl. ¶ 11.)
The Examiner responds that Appellant’s evidence is not
commensurate in scope with the claims. (Examiner’s Answer mailed April
19, 2019 (“Ans.”) 5.) The Examiner finds that Apogee® warns against
increasing the total concentration of calcium in the Apogee product to

8 BASF, Apogee® plant growth regulator (2000) (“Apogee®”), of record in
App. Br. 39–45 (Appendix B).
9 Duane W. Greene and Wesley R. Autio, Apogee® - A New Growth
Retardant for Apples, F-127R University of Massachusetts (2002), of record
in App. Br. 46–48 (Appendix B).
10 Declaration by Wilbur H. Palmer dated May 19, 2017.
Appeal 2019-005072
Application 12/262,834

7
greater than 27.5% by weight prohexadione calcium. (Id. at 5–6.) Because
the claims do not require any minimum amount of calcium, the Examiner
finds the combined teaching of the cited references do not teach away from
the claimed invention. (Id. at 6.)
We find Appellant’s evidence of teaching away to be probative of
nonobviousness. Both Apogee® and Greene unambiguously instruct against
combining prohexadione calcium with “added calcium.” (Apogee® 5;
Greene 2.) Greene teaches that as little as 500 ppm added calcium may
reduce the efficacy of prohexadione calcium. (Greene 2.) Greene repeats
the warnings of Apogee®, and further teaches that prohexadione calcium’s
effectiveness may be reduced by calcium residue left on leaves. (See Greene
2.) The Palmer Declaration attests that at the time of filing the application, a
person of ordinary skill in the art would have understood the warnings
against combining prohexadione calcium with any other calcium source.
(Palmer Decl.¶¶ 9–10.) In determining whether the prior art suggests
combining the references, the full field of the invention must be considered
including that which might lead away from the claimed invention. In re
Dow Chem. Co., 837 F.2d 469, 473 (Fed. Cir. 1988). Fairly considering the
evidence that supports, rather than negates, patentability, we find that the
prior art teaches away from the combination of prohexadione calcium and
added calcium, without limitation on source or amount. (See id.)
In addition to evidence of teaching away, Appellant submits evidence
of experimental results. (App. Br. 30–31.) Appellant submits test data
comparing a composition containing prohexadione calcium and calcium
phosphite with compositions containing prohexadione calcium alone, or in
Appeal 2019-005072
Application 12/262,834

8
combination with other calcium sources. (Id., citing Spec. ¶¶ 18–19, Fig. 2.)
Each of the compositions also included an identical amount of ammonium
sulfate surfactant, commonly used with prohexadione to condition the water
carrier by removing mineral calcium (see also Greene) and improve leaf
coverage during application. (Reply Br. 5–6.) Appellant asserts the test data
confirms the prior art warning that added calcium, other than calcium
phosphite, reduces the efficacy of prohexadione calcium. (App. Br. 30–31.)
Appellant asserts that adding calcium phosphite to prohexadione calcium
unexpectedly did not reduce efficacy, but in fact resulted in improved
efficacy. (Id.)
We find that this additional evidence is probative of nonobviousness
in that it confirms the expectation of those skilled in the art. Particularly, the
test data confirms that added calcium generally reduces efficacy of
prohexadione calcium as expected from the evidence submitted by
Appellant, except for Appellant’s inventive combination. Weighing the
objective indicia of nonobviousness against the evidence of obviousness, we
conclude that the evidence when considered as a whole does not support a
finding of obviousness for claims 1, 10, and 19.
Because we find that the prior art taught away from the combination
of prohexadione calcium and calcium phosphite, the prior art rejections of
the remaining claims on appeal that contradict this finding fall with the
rejection of claims 1, 10 and 19.

Appeal 2019-005072
Application 12/262,834

9
CONCLUSION
Upon consideration of the record and the reasons given, the rejections
of claims 1–7, 9–11, 13, 15–23, 25, and 26 are not sustained.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 10, 19 103(a) Stringfellow, Evans ’882,
Lovatt
1, 10, 19
1–7, 10, 11,
13, 15–23,
25, 26
103(a) Stringfellow, Evans ’882,
Lovatt ’200
1–7, 10,
11, 13, 15–
23, 25, 26
1, 9 103(a) Stringfellow, Evans ’882,
Evans ’831
1, 9
Overall
Outcome
1–7, 9–11,
13, 15–23,
25, 26

REVERSED