Ex Parte Fischer et al

Board of Patent Appeals and Interferences

Sep 28, 2010

11030244 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REINER FISCHER
and
CHRISTOPH ERDELEN,
Appellants1
____________________

Appeal 2010-003155
Application 11/030,244
Technology Center 1600
____________________

Before CAROL A. SPIEGEL, TONI R. SCHEINER, and
STEPHEN WALSH, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is BAYER AKTIENGESELLSCHAFT (Appeal
Brief under 37 CFR Section 41.37 filed 26 June 2009 ("App. Br.") at 2).
This decision also cites the Examiner's Answer mailed 30 September 2009
("Ans."), Appellants’ Reply Brief filed 30 November 2009 ("Reply Br."),
and the Specification ("Spec.") of Application 11/030,244 ("the 244
Application").
2 The two-month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE" (paper
delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003155
Application 11/030,244

2
Appellants appeal under 35 U.S.C. § 134(a) from an Examiner's
rejection of all pending claims, claims 11-17 (App. Br. 4; Ans. 2). We have
jurisdiction under 35 U.S.C. § 134. We REVERSE.
I. Statement of the Case
The claims on appeal recite a "synergistically effective mixture."
Appellants apparently intend to claim a synergistically effective mixture of
insecticides and acaricides (Spec. 1:16-4:12; 30:30-31:6). Claim 11 is
illustrative and reads (App. Br. 17):
11. A composition, comprising a synergistically
effective mixture of:
a) a cyclic ketoenol compound of the Formula (Ia)

and
b) a member selected from the group consisting of one
or more agonists of nicotinic acetylcholine receptors and
one or more antagonists of nicotinic acetylcholine
receptors, which agonist or antagonist is a compound of
the formula

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3

.
The Examiner rejected claims 11-17 as unpatentable under 35 U.S.C.
§ 103(a) over Fischer,3 Bretschneider,4 Gsell,5 and Appellants' disclosure in
the Specification at page 6, lines 5-23 (Ans. 3-6).
The Examiner found that Fischer discloses cyclic ketoenols of
formula (I) of the instant Specification and teaches that these compounds are
broad spectrum insecticides and acaricides that can be formulated with other
active agents (id. at 3). Initially, the Examiner found that compound 1b-38
of Fischer was the same as compound (Ia) of the claimed mixture (id.).

3 US Patent 5,262,383, 3-Aryl-4-Hydroxy-Δ3-Dihydrofuranone and 3-Aryl-4-
Hydroxy-Δ3-Dihydroxythiopheone Derivatives and Pesticidal Use, issued 16
November 1993 to Fischer et al. ("Fischer").
4 WO 00/56156, Synergistic Insecticide Mixtures, published 28 September
2000, by Bretschneider et al. We cite to the Translation by FLS, Inc. of
record ("Bretschneider").
5 US Patent 4,918,086, 1-Nitro-2,2-Diaminoethylene Derivatives, issued 17
April 1990 to Laurenz Gsell ("Gsell").
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Application 11/030,244

4
Upon reconsideration, the Examiner "agree[d] that [compound] 1a is
generically disclosed and not specifically disclosed by FISCHER in US '383
as Appellant argues" (id. at 7).6 The Examiner also found that Bretschneider
discloses synergistic mixtures of compounds of formula I of the instant
Specification including the six compounds of component b) of the claimed
mixture as well as "generically" disclosing compounds of component a)
formula 1a (id. at 4). Finally, the Examiner found that Gsell teaches
component b) compound (IIi) of the claimed mixture (id.). The Examiner
maintains that "Appellant acknowledges in the specification that compounds
of both formula Ia and formulas II are known as agonists and antagonists of
the nicotinic acetylcholine receptors. See lines 5-23 on page 6." Id. The
Examiner concluded "that since the compounds are known as excellent
insecticides and/or pesticides, it would have been obvious to combine two
active components for more effective composition" (id. at 7).
Appellants pointed out several differences between Fischer compound
1b-38 and compound 1a) of the claimed mixture (App. Br. 9). Appellants
argued, in relevant part, that "even if one of ordinary skill in the art were to
look at all the compounds of Fischer, one would not find any reason to come
up with the claimed formula (Ia) among the thousands of possibilities in
Fischer" (id.).

6 On page 7 of the Answer, the Examiner relied on Fischer et al. (US Patent
5,719,310) to teach compound 1a of the claimed mixture. Fischer '310 is not
considered because the statement of the rejection must expressly contain a
mention of all references applied in the rejection. In re Hoch, 428 F.2d
1341, 1342 n.3 (CCPA 1070); Ex parte Movva, 31 USPQ2d 1027, 1028 n.1
(BPAI 1993). If a reference is important to the rejection, it should be made a
part of the statement of the rejection.
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5
The dispositive issue in this appeal is whether the Examiner has
provided a reasoned basis for selecting compound (Ia) from the general
formula I compounds of Fischer for combination in the mixture of claim 1.
II. Discussion
A. Fischer's generic disclosure
[1] Fischer discloses 3-aryl-4-hydroxy-Δ3-dihydrofuranone and 3-aryl-4-
hydroxy-Δ3-dihydrothiopheone derivatives of the general formula (I)

in which
X is alkyl, halogen, alkoxy or halogenoalkyl,
Y is hydrogen, alkyl, halogen, alkoxy or halogenoalkyl,
Z is alkyl, halogen, or alkoxy,
n is a number from 0-3, or the radicals X and Z together with the
phenyl radical to which they are bonded form the naphthalene radical of the
formula

in which Y has the above meaning,
G is hydrogen (a) or the groups

A and B can be identical or different and are hydrogen, or alkyl,
alkenyl, alkinyl, alkoxyalkyl or alkylthioalkyl, each of which is optionally
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6
substituted by halogen, or cycloalkyl which is optionally interrupted by
hetero atoms, or aryl, aralkyl or hetaryl, each of which is optionally
substituted by halogen, alkyl, halogenoalkyl, alkoxy, halogenoalkoxy or
nitro,
or
A and B together with the carbon atom to which they are bonded form
a saturated or unsaturated cycle which is optionally interrupted by hetero
atoms and optionally substituted,
D is oxygen or sulphur,
E is a metal ion equivalent or an ammonium ion,
L and M are oxygen and/or sulphur,
R1 is in each case optionally halogen-substituted alkyl, alkenyl,
alkoxyalkyl, alkylthioalkyl, polyalkoxyalkyl or cycloalkyl which can be
interrupted by hetero atoms, optionally substituted phenyl, optionally
substituted phenylalkyl, substituted hetaryl, substituted phenoxyalkyl or
substituted hetaryloxylalkyl and
R2 represents alkyl, alkenyl, alkoxyalkyl or polyalkoxyalkyl, each of
which is optionally substituted by halogen, or in each case optionally
substituted phenyl or benzyl,
R3, R4, and R5 independently of one another are alkyl, alkoxy,
alkylamino, dialkylamino, alkylthio, alkenylthio, alkinylthio, or
cycloalkylthio, each of which is optionally substituted by halogen, or is
phenyl, phenoxy or phenylthio, each of which is optionally substituted,
R6 and R7 independently of one another are hydrogen, or alkyl,
alkenyl, alkoxy or alkoxyalkyl, each of which is optionally substituted by
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halogen, or represent optionally substituted phenyl or optionally substituted
benzyl,
or
R6 and R7 together represent an alkylene radical which is optionally
interrupted by oxygen,
with the exception of the following compounds:
3-(2-methoxyphenyl)-4-hydroxy-Δ3-dihydrofuran-2-one,
3-(2-chlorophenyl)-4- hydroxy-Δ3-dihydrofuran-2-one,
3-(2-methoxyphenyl)-4- hydroxy-Δ3-dihydrofuran-2-one,
3-(2-fluorophenyl)-4- hydroxy-Δ3-dihydrofuran-2-one, and the
enantiomerically pure forms of compounds of the formula (I) (Fischer col 1.
l. 26-col. 2. l. 65).
[2] The Examiner did not find an express disclosure of compound (Ia) of
claim 1 in Fischer.
[3] Fischer teaches that compounds of its general Formula I can be used
in the form of a mixture with other active compounds, such as
insecticides and acaricides (Fischer col. 131. ll. 28-33).
[4] Bretschneider teaches mixtures of cyclic ketoenols of a defined
formula (I) with at least one agonist and/or antagonist of acetylcholine
receptors of a defined formula (II) (Bretschneider 1-4).
[5] Bretschneider does not expressly disclose compound (Ia) of claim 1.
[6] Bretschneider does disclose compounds IIe, IIg, IIh, IIi, IIl and IIm of
claim 1 as preferred agonists and antagonists (Bretschneider 15-18).
B. Legal principles
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The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
While the analysis under 35 U.S.C. § 103 allows flexibility in determining
whether a claimed invention would have been obvious, KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing that "there
was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue." Id. "We must still be careful not to allow
hindsight reconstruction of references to reach the claimed invention without
any explanation as to how or why the references would be combined to
produce the claimed invention." Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 n.3 (Fed. Cir. 2008).
C. Analysis
Here, while general formula I of Fischer encompasses a variety of
dihydrofuranones and dihydrothiophenones (FF 1) which may be formulated
as a mixture with other active agents (FF 3), the Examiner has not provided
any reasoning as to why one of ordinary skill in the art would have picked
the specific compound required as component a) of the mixture of claim 1.
Without such reasoning, the rejection falls into the first error identified in
O'Farrell, in which "what would have been 'obvious to try' would have been
to vary all parameters or try each of numerous possible choices until one
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possibly arrived at a successful result, where the prior art gave either no
indication of which parameters were critical or no direction as to which of
many possible choices is likely to be successful." In re O'Farrell, 853 F.2d
894, 903 (Fed. Cir. 1988).
D. Conclusion
Since the Examiner has failed to establish a prima facie case of
obviousness in the first instance, we reverse the rejection of claims 11-17
under § 103 over Fischer, Bretschneider, Gsell, and Appellants' disclosure in
the Specification. Specifically, the Examiner has failed to provide a
reasoned basis for selecting compound (Ia) from the general formula I
compounds of Fischer for combination in the mixture of claim 1.
III. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 11-17 as
unpatentable under 35 U.S.C. § 103(a) over Fischer, Bretschneider, Gsell,
and Appellants' disclosure in the Specification at page 6, lines 5-23, is
REVERSED.
REVERSED

cdc

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