Ex Parte Cornish et alDownload PDFPatent Trial and Appeal BoardMay 31, 201611721872 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111721,872 0713012009 34947 7590 06/02/2016 LANXESS CORPORATION 111 RIDC PARK WEST DRIVE PITTSBURGH, PA 15275-1112 FIRST NAMED INVENTOR Alexander Cornish 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. POOl 00571 4118 EXAMINER PAK,JOHND ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): ipmail@lanxess.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER CORNISH, ANJA GREINER, GERTRUDE KNAUF-BEITER, and JOHANN STEINER Appeal2013-010114 Application 11/721,872 Technology Center 1600 Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and TA WEN CHANG, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to fungicidally and synergistically effective amounts of difenoconazole and thiabendazole. Appellants appeal from the Examiner's final rejection of claims 1, 32-37, and 39--42 as obvious under 35 U.S.C. § 103 and non-statutory obvious-type double patenting. We have jurisdiction under 35 U.S.C. § 134. The§ 103 rejection is reversed; the double-patenting rejection is affirmed. STATEMENT OF CASE Claims 1, 32-37, and 39--42 are the only pending claims. The claims stand finally rejected by the Examiner as follows: Appeal2013-010114 Application 11/721,872 1. Claims 1, 32-37, and 39--42 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in view of Payne (WO 03/104583 Al, published Dec. 18, 2003), HCAPLUS abstract 1898:168014 (published 1988; "HCAPLUS '14"), Mittermeier (US 5,250,559, issued Oct. 5, 1993) and HCAPLUS abstract 1989:187662 (published 1988; "HCAPLUS '62). Answer 2. 2. Claims 1, 32-37, and 39--42 on the ground ofnonstatutory obviousness-type double patenting as obvious over claims 37--42 of co- pending Application No. 11/721,861. Answer 2. The rejection is a provisional rejection because the claims of the co-pending application have not been granted. Id. Appellants made no argument against the obviousness- type double patent rejection. Consequently, we summarily affirm the rejection. Claims 1 and 37 are independent claims. Claims 32-36 and 39--42 depend from them. Claim 1 is a method claim. Claim 1 is representative and is reproduced below: A method for the prevention and/or treatment of growth and/or infestation of a fungus on a wallboard comprising treating said wallboard with a fungicidally effective amount of difenoconazole and a further fungicide selected from the group consisting of propiconazole; fludioxonil; thiabendazole; and cyprodinil, wherein said difenoconazole and said further fungicide are present in synergistically effective amounts. Claim 37 is directed to a wallboard with the same fungicides and also in synergistically effective amounts. SECTION 103 REJECTION Claim 1 is directed to a method for the "prevention and/ or treatment of growth and/ or infestation of a fungus on a wallboard comprising treating 2 Appeal2013-010114 Application 11/721,872 said wallboard with a fungicidally effective mount of" 1) difenoconazole and 2) a fungicide "selected from the group consisting of propiconazole; fludioxonil; thiabendazole; and cyprodinil. The fungicides are "present in synergistically effective amounts." The Examiner found that Payne discloses "fungal and bacterial growth in wallboards exposed to moisture absorption as a drawback to traditional wallboard products (paragraphs 9-10)." Final Rej. 2. The Examiner further found that Payne describes adding thiabendazole to the paper coating of the wallboard, to the gypsum core of the wallboard, or to both. Id. The Examiner also found that Payne describes utilizing thiabendazole in combination with a second fungicide, but not difenoconazole as claimed. Id. at 3. However, the Examiner found that Mittermeier discloses that difenoconazole is a broad spectrum fungicide and that the HCAPLUS '62 discloses that difenoconazole has activity against the fungi disclosed in dependent claims. Id. The Examiner also found that HCAPLUS '14 describes the combination of difenoconazole and thiabendazole for control of infection in a plant. Id. The Examiner determined it would have been obvious to one of ordinary skill in the art to have utilized the combination difenoconazole and thiabendazole in Payne's method because of the farmer's broad spectrum activity. Id. The Examiner stated that difenoconazole and thiabendazole had been used for controlling fungi infection in a plant, but found "Payne's disclosure is evidence that the ordinary skilled artisan would have recognized the use of such agricultural fungicides for protecting other materials such as wallboard." Id. Appellants contend that Mittermeier, HCAPLUS '62 and HCAPLUS '14 "all relate to plant applications and do not relate to applications to non- 3 Appeal2013-010114 Application 11/721,872 living materials." Appeal Br. 11. Appellants argue that efficacy of fungicides on non-living materials would be unpredictable. Id. Appellants' argument is not supported by a preponderance of the evidence. Payne teaches that fungicides can be used on wall board, and the fungicides disclosed in Payne are those typically used on plants. Final Rej. 3; Payne i-fi-f 17-21. Thus, it would have been reasonably expected that fungicides effective in agriculture could also be used on wall board and other materials. Appellants provided evidence that combination of difenoconazole with thiabendazole is synergistic. As demonstrated by Example 3 of Appellants' Specification, the mixtures of difenoconazole with thiabendazole or propiconazole or fludioxonil or cyprodinil exhibit a synergistic efficacy. This synergistic efficacy is unexpected and unpredictable in view of the cited references since such efficacy is neither taught nor suggested by Payne et al., Mettermeir [sic, Mittermeier] et al., HCAPLUS '14 or HCAPLUS '64. Appeal Br. 12. Once prima facie obviousness has been established, it can be rebutted with "a showing of 'unexpected results,' i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward -that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious." In re Soni, 54 F.3d 746, 750, (Fed. Cir. 1995). "[W]hen an applicant demonstrates substantially improved results ... and states that the results were unexpected, this should suffice to establish 4 Appeal2013-010114 Application 11/721,872 unexpected results in the absence of evidence to the contrary." Soni, 54 F.3d at 751. Example 3 of the Specification shows "Synergy testing" using different combinations of fungicides on fungi. The testing was performed by growing fungi on media comprising the fungicides. Spec. 25: 1-5. The Specification teaches that a "synergistic effect exists whenever the action of the active ingredient combination of the compound of formula I and one or more compounds of formula II is greater than the sum of the actions of the active ingredients applied individually [in killing the fungi to which it has been applied]." Id. at 25: 15-17. The results of the synergy testing are summarized on pages 27-30 of the Specification. Synergy is shown for difenoconazole ("DFZ") and propiconazole ("PPZ") (id. at 27), difenoconazole and fludioxonil ("FDL") (id. at 28-29), difenoconazole and thiabendazole ("TBZ") (id. at 29 1), and difenoconazole and cyprodinil ("CDL") (id. at 30). Synergy was not observed for all concentrations and ratios nor for all fungi tested. 2 The Specification stated that results showed that "surprisingly difenoconazole synergises [sic] the activity of particular fungicides against certain fungi." Id. at 1 :29-31. 1 The table is titled "Mixtures of Difenoconazole with Thiabendazole." However, the table lists "FDL" in all but one mixtures. We presume that FDL is fludioxonil. It is not evident whether these entries should read "TBZ" for Thiabendazole or whether FDL is correct. 2 "Evidence that a compound is unexpectedly superior in one of a spectrum of common properties, as here, can be enough to rebut a prima facie case of obviousness." In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987). 5 Appeal2013-010114 Application 11/721,872 Only one data point is shown for difenoconazole and thiabendazole using one concentration and ratio of each fungicide. Id. at 29. This data shows synergy, i.e. a non-additive effect when both fungicides are combined as compared to when used alone. Id. at 25: 15-17. The Examiner did not consider the results persuasive because the combination of difenoconazole and thiabendazole had been taught by HCAPLUS '14 to be effective. Answer 4. The Examiner stated that "Appellants are arguing that a known fungicidal mixture is surprisingly effective against fungi which the mixture is expected to control." Id. The Examiner's argument is not persuasive. Appellants' data shows synergy when the two fungicides are utilized together. The Examiner did not provide evidence the HCAPLUS '14 abstract described synergy when the two fungicides were applied to plants. The Examiner also criticizes the results because the experiments were performed in vitro in media and not on wallboard. Id. at 4--5. However, the Examiner's basis of the rejection is that one of ordinary skill in the art would expect the fungicides to work on wallboard. Final Rej. 3. There is no evidence in the record that the fungicides would perform any differently on in vitro media than when place on wall board. In the Final Rejection, the Examiner argued that Appellants' data is not "commensurate in scope with that of the claimed invention because the claimed invention has no limitations on ratios or amounts, whereas the specification test data is quite limited on both features." Final Rej. 4. However, the claim is limited to synergistic amounts. The claim only includes ratios and amounts which are synergistic when the fungicides are applied to fungi together. Other non-synergistic ratios and amounts are 6 Appeal2013-010114 Application 11/721,872 excluded. The Examiner has not provided evidence that synergistic amounts are described in the cited prior art. For example, the HCAPLUS '14 abstract which describes the combination of difenoconazole and thiabendazole does not disclose the amounts of the fungicides utilized in their experiments. In sum, after considering Mittermeier, HCAPLUS '62 abstract, and HCAPLUS '14 abstract, and the evidence of synergy in the Specification, we conclude that the independent claims 1 and 37 would not have been obvious to one of ordinary skill in the art and reverse their rejection, as well as dependent claims 32-36 and 39--42. TIME PERIOD 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 7 Copy with citationCopy as parenthetical citation