Ex Parte Goto et al

Patent Trial and Appeal Board

Oct 23, 2014

10557502 (P.T.A.B. Oct. 23, 2014)

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.
10/557,502 11/21/2005 Toshio Goto 514413-3960 8704
7590 10/23/2014
William F Lawrence
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
10/23/2014 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TOSHIO GOTO, SHINICHI SHIRAKURA, TERUYUKI
ICHIHARA, LUTZ ASSMANN, and ROLF PONTZEN
__________

Appeal 2012-005767
Application 10/557,502
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ERIC B. GRIMES, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF CASE
The following claims are representative.
17. A method of safening a herbicidal composition
which comprises adding an isothiazolecarboxamide selected
from the group consisting of:
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as a safener to an herbicidal composition.
18. Herbicidal compositions comprising:
(a) an isothiazolecarboxamide selected from the group consisting of:
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and

(b) at least one herbicidal compound selected from the group consisting of
herbicidal compounds having acetolactate synthase inhibiting activity,
herbidical comopounds having p-hydroxyphenyl pyruvate
dioxygenase inhibiting action,
and
herbicidal compounds having acetyl CoA carboxylase inhibiting
action.

Cited References
Assmann US 6,277,791 B1 Aug. 21, 2001
Auler US 6,844,294 Jan. 18, 2005
Hacker CA 2,052,869 Oct. 7, 1991
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Grounds of Rejection1
1. Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Assmann.
2. Claims 4-6, 8, 9, 11, 12, 14, 15, 17, and 18 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Assmann and
Hacker.
3. Claims 4-10, 12, 13, 14, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Assmann in view of Auler.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
10. The following facts are highlighted.
1. The Specification, page 1, discloses that, “a safener is a compound
which is capable of decreasing such crop damage of a herbicide
and thereby increasing the crop compatibility of the herbicide.”
2. Assmann discloses
The active compounds according to the invention have a
strong plant-strengthening activity in plants. They are
therefore suitable for mobilizing the defenses of the plant
against attack by undesirable microorganisms.
In the present context, plant-strengthening (resistance-
inducing) compounds are compounds which are capable of
stimulating the defensive system of plants in such a way that

1 Although both the Examiner and Appellants indicate that claims 4-18 are
pending and stand rejected (Ans. 3, Appeal Br. 2), none of the rejections set
out in the Office Action mailed Nov. 30, 2010 or in the Answer includes
claim 16.
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the treated plants, when subsequently inoculated with
undesirable microorganisms, develop substantial resistance
against these microorganisms.
In the present case, undesirable microorganisms are
phytopathogenic fungi, bacteria and viruses. The
compounds according to the invention can thus be employed
to protect plants for a certain period of time after the
treatment against the attack by the abovementioned harmful
organisms.

(Assmann, col. 9, ll. 21-35.)

Discussion
ISSUE
The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious?

PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board “determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
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burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“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).
“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable.” In re
Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990).
Discovery of a property inherent to a prior art process does not render
that process patentable, even if the prior art did not appreciate the property.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 632-33 (Fed. Cir.
1987).
The motivation to combine references does not have to be identical to
the applicants’ to establish obviousness. In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996).
“The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains.” In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979). “It is well established that the
objective evidence of nonobviousness must be commensurate in scope with
the claims.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
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“Commensurate in scope” means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See Lindner, 457 F.2d at 508 (“Here, only one mixture of
ingredients was tested . . . . The claims, however, are much broader in
scope, . . . and we have to agree with the Patent Office that there is no
‘adequate basis for reasonably concluding that the great number and variety
of compositions included by the claims would behave in the same manner as
the [single] tested composition.’” (bracketed material in original)).

ANALYSIS
The record indicates there is an election of species requirement in the
case and that Appellants have elected “isotianil” as the elected species.
(Corrected Response to Restriction Requirement dated April 1, 2008.)
When the Examiner has required the applicant to elect single chemical
species for examination, the issue on appeal is the patentability of the single
elected species, and it is appropriate to limit discussion to that single issue.
See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).

Rejection 1
We agree with the Examiner’s fact finding, statement of the rejection,
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to argument set
forth in the Answer.
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Appellant argues that Assmann does not teach a safening effect. (Br.
5.) The method of claim 17 requires a step of adding a specific
isothiazolecarboxamide as a safener to an herbicidal composition. Assmann
teaches adding a compound such as the elected species, isotianil, to an
herbicidal composition (col. 16, ll. 61-63).
Therefore, Assmann teaches each element of the claimed method.
Discovery of a property inherent to a prior art process (safening) does not
render that process patentable, even if the prior art did not appreciate the
property. Verdegaal Bros. Inc., 814 F.2d at 632-33.
In rebuttal to the Examiner’s prima facie case of obviousness,
Appellants put forth the Declaration of Dr. Shinichi Shirakura (dated Oct.
16, 2009) including evidence which allegedly supports unexpected results
for the claimed method and compositions. (Br. 7, 10.)
The Examiner finds that the test examples set forth in the Declaration
are not commensurate in scope with the claims. We agree with the
Examiner that the Declarant’s test examples of two different herbicides in
combination with isotianil at varying compound concentrations do not
provide an adequate basis for reasonably concluding that the great number
and variety of compositions and concentrations of components included in
the claim scope would behave in the same manner as the tested composition.
In addition, Declaration, Table 2, shows that the combination of tefuryltrione
(at 600 gai/ha) in combination with isotianil (at 1000 gai/ha) provided no
safening effect, and nor did bensulfuron-methyl (at 150 gai/ha) in
combination with isotianil (at 1000 gai/ha) (Declaration, Table 1). The
pending claims encompass a variety of concentrations of specific herbicidal
and safening compounds, while the Declaration shows at best that isotianil
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has some safening effect only with respect to two herbicides, and only at
particular combinations of concentrations. Thus, the Declaration evidence is
not commensurate in scope with the pending claims.
The obviousness rejection of claims 9 and 17 is affirmed.

Rejections 2 and 3
Appellants argue that the secondary references, Hacker and Auler, do
not address the fundamental deficiencies of Assmann. (Br. 6-7.) Having
found no deficiency in Assmann, we also affirm Rejections 2 and 3.
Appellants’ unexpected results arguments and safening arguments
with respect to these rejections were addressed above. (Br. 7-11.)
Appellants argue that “There is nothing in the combined teachings of
Assmann and Auler which would have directed one of ordinary skill in the
art to select from all of the possible known herbicides a benzoylcyclo-
hexadione compound and that a safening effect would have been achieved
by adding an isothiazolecarboxamide compound.” (Br. 10.)
However, Assmann discloses generally that isotianil may be
combined with other herbicides, with no particular exclusions. (Col. 13, ll.
25-31 and col. 16, ll. 61-63.) Appellants concede that Auler discloses
benzoylcyclohexadione herbicides (see Br. 10). It is not necessary for
Assmann to disclose safening properties, as the motivation to combine
references does not have to be identical to the applicants to establish
obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). The
Examiner has provided a proper motivation to combine Assman with Hacker
and Auler. The rejections are affirmed.

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CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections 1-
3, which are affirmed. Appellants have not rebutted the Examiner’s
rejections by a preponderance of the evidence.
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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