Ex Parte Glock

Board of Patent Appeals and Interferences

Oct 25, 2011

12105861 (B.P.A.I. Oct. 25, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/105,861 04/18/2008 Jutta Glock 31142D1C1 6534
85981 7590 10/26/2011
Syngenta Corp Protection, Inc.
410 Swing Road
Greensboro, NC 27409
EXAMINER
QAZI, SABIHA NAIM
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
10/26/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JUTTA GLOCK
__________

Appeal 2011-008608
Application 12/105,861
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
herbicidal composition. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“When using herbicides, the cultivated plants may also suffer
considerable damage . . . In order to deal with that and similar problems,
various substances have already been proposed as safeners, which are . . .
capable of protecting the cultivated plant, without appreciably impairing the
herbicidal action on the weeds to be controlled” (Spec. 1).
The Claims
Claims 1-6 and 8-12 are on appeal. A copy of the claims on appeal
may be found in the Claims Appendix to the Appeal Brief (App. Br. 19).

The issue

The Examiner rejected claims 1-6 and 8-12 under 35 U.S.C. § 103(a)
as obvious over either Mühlebach1 or Glock2 and Willms3 (Ans. 5-8).
The Examiner finds that Mühlebach “teaches 3-Hydroxy-4-aryl-5-
oxopyrazoline derivatives as herbicides in particular in combination with
herbicide-antagonistically effective compounds” (Ans. 5). The Examiner
finds that “Glock teaches the combination of 3-Hydroxy-4-aryl-5-
oxopyrazoline derivatives of formula I and herbicide-antagonistically
effective compounds” (Ans. 5). The Examiner finds that “Willms teaches
substituted isoxazolines and their uses as safeners” (Ans. 6).

1 Mühlebach et al., WO 99/47525 A1, published Sep. 23, 1999.
2 Glock et al, WO 96/11574 A1, published Apr. 25, 1996.
3 Willms et al., US 5,516,750, issued May 14, 1996.
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The Examiner finds it obvious “to combine the teachings of the prior
art to prepare additional beneficial composition [sic] because prior art
MUHLEBACH and GLOCK teach[ ] the combination of 3-Hydroxy-4-aryl-
5-oxopyrazoline derivatives of formula I and ‘herbicide-antagonistically
effective compounds’ and WILLMS teaches substituted isoxazolines and
their uses as safeners” (Ans. 7).
Appellants contend:
[A]lthough the teaching of Muhlebach (1) suggests to one
skilled in the art to utilize one or more specific safeners with
the disclosed herbicides, and (2) discloses hundreds, if not
thousands, of safeners suitable for use with the disclosed
herbicides, as well as preferred safeners, the teaching of
Muhlebach does not disclose, teach or suggest safeners of
formula lIb as recited in Appellants’ independent claim 1.

(App. Br. 10). Appellants contend that “[l]ike the teaching of Muhlebach,
the teaching of Glock does not disclose, teach or suggest safeners of formula
IIb as recited in Appellants’ independent claim 1.” (Id.).
Appellants contend that “Glock specifically notes that a particular
safener is specific to a particular herbicide. In other words, any safener
should not be expected to provide a benefit to any herbicide” (App. Br. 11).
Appellants contend that the prior art “fails to provide motivation or a
reason for one skilled in the art to pick and choose select components from
(i) the teaching of Muhlebach or the teaching of Glock (i.e., a select
herbicide) and (ii) the teaching of Willms (i.e., a specific safener) in order to
obtain Appellants’ claimed invention” (App. Br. 13-14).
Appellants “submit that the teachings of Muhlebach and Glock
specifically teach away from Examiner Qazi’s proposed modification of the
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prior art” (App. Br. 16). Appellants respectfully submit “that each of the
teachings of Muhlebach and Glock specifically instructs one skilled in the
art to utilize the disclosed, specifically matched safeners of Muhlebach or
Glock with the disclosed herbicides of Muhlebach or Glock” (App. Br. 16).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Mühlebach, Glock, and
Willms would have rendered obvious the composition of claim 1?
Findings of Fact
1. Mühlebach teaches “herbicidally active 3-hydroxy-4-aryl-5-
oxopyrazoline derivatives . . . compositions which comprise these
compounds and may additionally comprise safeners, and . . . the use of these
compounds as herbicides for controlling weeds and grasses, in particular in
crops of useful plants” (Mühlebach 1).
2. Mühlebach teaches:
Surprisingly, it has been found that specific safeners known
from [the prior art] are suitable for mixing with the
herbicidal composition . . . Consequently, the present
invention also relates to a selective herbicidal composition
for controlling grasses and weeds in crops of useful plants,
in particular in crops of maize and cereals, said composition
comprising a herbicide of the formula I and a safener
(antidote) and which protects the useful plants, but not the
weeds, against the phytotoxic effect of the herbicide.

(Mühlebach 19).
3. The Examiner finds that “Glock teaches the combination of 3-
Hydroxy-4-aryl-5-oxopyrazoline derivatives of formula I and herbicide-
antagonistically effective compounds” (Ans. 5).
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4. Glock teaches that “safeners selected from the two compound
classes of the quinoline derivatives and 1-phenylazole-3-carboxylic acid
derivatives are suitable for protecting cultivated plants from the phytotoxic
action of 3-hydroxy-4-aryl-5-oxopyrazoline derivatives” (Glock 1).
5. Glock teaches that “proposed safeners often have a very
specific action, not only with respect to the cultivated plants but also to the
herbicide, and in some cases also subject to the mode of application, i.e. a
specific safener will often be suitable only for a specific cultivated plant and
a specific class of herbicide or a specific herbicide” (Glock 1).
6. Willms teaches that “[s]urprisingly, it has now been found that
compounds from the group of 5,5-disubstituted isoxazoline derivatives of
the formula (I) below are outstandingly suitable for protecting crop plants
against the damaging effects of aggressive agrochemicals, in particular
herbicides” (Willms, col. 1, ll. 54-58).
7. Willms discloses that its safeners include the compound of
formula IIb recited in claim 1 (Willms, cols. 19-20, Table 1, compound 18)).
8. Willms teaches:
Examples of suitable herbicides which can be
combined with the safeners according to the invention are:
A) Herbicides of the (C1-C4)alkyl, (C2-4)alkenyl and
(C3-C4)alkynyl phenoxyphenoxy- and
heteroaryloxyphenoxycarboxylate type . . . B)
herbicides from the sulfonyl urea series . . . C)
chloroacetanilide herbicides . . . D) thiocarbamates . . .
E) cyclohexanedione derivatives . . . F) 2- (4-alkyl-5-
oxo-2-imidazolin-2-yl) benzoic acid derivatives or 2-
(4-alkyl-5-oxo-2-imidazolin-2-yl)heteroarylcarboxylic
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acid derivatives . . . G) triazolopyrimidine-
sulfonamide derivatives . . . H) benzoylcyclo-
hexanedione derivatives . . . J) pyrimidinyloxy
pyrimidinecarboxylic acid derivatives or
pyrimidinyloxybenzoic acid derivatives . . . K) S-(N-
aryl-N-alkylcarbamoylmethyl) dithio-phosphoric acid
esters.

(Willms, col. 10, l. 25 to col. 14, l. 21).
9. Willms teaches that the “invention also relates to a method of
protecting crop plants, preferably cereal, rice, maize, soya bean or sugar beet
plants, against phytotoxic side-effects of crop protection products, such as
herbicides, insecticides and fungicides” (Willms, col. 8, ll. 62-65).
10. Willms has a priority date of Sept. 16, 1993, while Glock’s
earliest priority date is 1994 and Mühlebach’s earliest priority date is 1998
(see Willms, Glock, and Mühlebach, front page).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 417. As noted by the Court in
KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” 550 U.S. at 421.
Kubin stated that “[r]esponding to concerns about uncertainty in the
prior art influencing the purported success of the claimed combination, this
court [in O’Farrell] stated: ‘[o]bviousness does not require absolute
predictability of success … all that is required is a reasonable expectation
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of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re
O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)).
Analysis
Mühlebach and Glock teach herbicidally effective amounts of a genus
of compounds which fall within formula I of claim 1 (FF 1, 3). Mühlebach
and Glock teach the combination of these herbicides with safeners (FF 2,
4-5).
Willms teaches safener compounds of formula IIb of claim 1 (FF 6,
7). Willms teaches that the safener compounds can be combined with a wide
variety of herbicides, where:
Examples of suitable herbicides which can be combined
with the safeners according to the invention are:
A) Herbicides of the (C1-C4)alkyl, (C2-C4)alkenyl and
(C3-C4)alkynyl phenoxy phenoxy- and
heteroaryloxyphenoxycarboxylate type . . . B) herbicides
from the sulfonyl urea series . . . C) chloroacetanilide
herbicides . . . D) thiocarbamates . . . E) cyclohexanedione
derivatives . . . F) 2- (4-alkyl-5-oxo-2-imidazolin-2-yl)
benzoic acid derivatives or 2- (4-alkyl-5-oxo-2-imidazolin-
2-yl)heteroarylcarboxylic acid derivatives . . . G)
triazolopyrimidinesulfonamide derivatives . . . H)
benzoylcyclohexanedione derivatives . . . J) pyrimidinyloxy
pyrimidinecarboxylic acid derivatives or
pyrimidinyloxybenzoic acid derivatives . . . K) S-(N-aryl-N-
alkylcarbamoylmethyl)dithiophosphoric acid esters.

(Willms, col. 10, l. 25 to col. 14, l. 21; FF 8).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
use the safener of Willms, taught to be effective with 10 different classes of
herbicide and hundreds of specific herbicides listed in columns 10-14, with
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the newer discovered herbicides of Glock and Mühlebach (FF 7-8). Such a
combination is merely a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
Appellants contend:
[A]lthough the teaching of Muhlebach (1) suggests to one
skilled in the art to utilize one or more specific safeners with
the disclosed herbicides, and (2) discloses hundreds, if not
thousands, of safeners suitable for use with the disclosed
herbicides, as well as preferred safeners, the teaching of
Muhlebach does not disclose, teach or suggest safeners of
formula lIb as recited in Appellants’ independent claim 1.

(App. Br. 10). Appellants contend that “[l]ike the teaching of Muhlebach,
the teaching of Glock does not disclose, teach or suggest safeners of formula
IIb as recited in Appellants’ independent claim 1.” (Id.).
We are not persuaded. All three references, Mühlebach, Glock, and
Willms, teach the desirability of combining herbicides with safeners, as
Willms teaches that “[s]urprisingly, it has now been found that compounds
from the group of 5,5-disubstituted isoxazoline derivatives of the formula (I)
below are outstandingly suitable for protecting crop plants against the
damaging effects of aggressive agrochemicals, in particular herbicides”
(Willms, col. 1, ll. 54-58; FF 6). The disclosure in the prior art of “a
multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose taught by the prior art.” Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). In the
instant case, the claimed composition is also used for the identical purposes
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of herbicidal activity and safener activity as taught by each of Mühlebach,
Glock, and Willms (FF 1-7).
Appellants contend that “Glock specifically notes that a particular
safener is specific to a particular herbicide. In other words, any safener
should not be expected to provide a benefit to any herbicide” (App. Br. 11).
Appellants “submit that the teachings of Muhlebach and Glock specifically
teach away from Examiner Qazi’s proposed modification of the prior art”
(App. Br. 16). Appellants respectfully submit “that each of the teachings of
Muhlebach and Glock specifically instructs one skilled in the art to utilize
the disclosed, specifically matched safeners of Muhlebach or Glock with the
disclosed herbicides of Muhlebach or Glock” (Id.).
We are not persuaded. The reliance on Glock, in particular, that “a
specific safener will often be suitable only for a specific cultivated plant and
a specific class of herbicide or a specific herbicide” (Glock 1; FF 5), is
specifically addressed by Willms’ teaching that the safener of formula IIb
will operate with at least 10 different classes of herbicides, as well as
insecticides and fungicides (FF 8-9). Willms further teaches that the safener
may be used for a variety of crop plants including cereal, rice, maize, soya
bean or sugar beet plants (FF 9). That is, while Glock generically states that
some safeners may have limited applicability, Willms specifically evidences
that the safener of formula IIb is not so limited, but rather is functionally
applicable to a wide variety of herbicides, fungicides and insecticides, as
well as a wide variety of crop species (FF 8-9).
Appellants do not identify any evidence in either Mühlebach or
Glock, that either reference ever specifically teaches or suggests that the
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specific safeners of Willms will not function with the disclosed herbicides of
Mühlebach and Glock. We also do not find any teaching away from the
specific combination of the specific herbicide of Mühlebach and Glock and
the safener of Willms. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (The court found that the “prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed.”)
As we balance the evidence of Willms, which suggests that the
safener is applicable to a broad class of herbicides, as well as insecticides
and fungicides and a broad set of plants (FF 8-9) against Glock’s concern
that some safeners may have limited suitability (FF 5), we conclude that
there is a reasonable expectation of success in using Willms’ safeners with
the herbicides of Mühlebach and Glock given the broad applicability of the
Willms safener to other herbicides and even fungicides and insecticides (FF
8-9). We note that obviousness does not require absolute predictability of
success, all that is required is a reasonable expectation of success. See
Kubin, 561 F.3d at 1360.

Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Mühlebach, Glock, and Willms would have rendered obvious the
composition of claim 1.
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Mühlebach, Glock, and Willms. Pursuant to
37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2-6 and 8-12
as these claims were 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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