Ex Parte GreinerDownload PDFPatent Trial and Appeal BoardJun 23, 201611909022 (P.T.A.B. Jun. 23, 2016) Copy Citation 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. 11/909,022 09/18/2007 Anja Greiner 70650 1117 85981 7590 06/23/2016 Syngenta Corp Protection, Inc. 410 Swing Road Greensboro, NC 27409 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 06/23/2016 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 ANJA GREINER1 ____________ Appeal 2014-005610 Application 11/909,022 Technology Center 1600 ____________ Before FRANCISCO C. PRATS, JACQUELINE T. HARLOW, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a synergistic herbicidal composition that have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Syngenta Crop Protection, LLC. (Br. 3.) Appeal 2014-005610 Application 11/909,022 2 STATEMENT OF THE CASE Claims on Appeal Claims 1, 2, and 11 are on appeal. (Claims Appendix, Br. 16–17.) Independent claim 1 is illustrative and reads as follows: 1. A synergistic herbicidal composition comprising; (A) 3-[[[5-(difluoromethoxy)-1-methyl-3-(trifluoromethyl)-lH- pyrazol-4-yl]methyl]sulfonyl]-4,5-dihydro-5,5-dimethyl-isoxazole, or a herbicidally effective salt; and (B) a second herbicide selected from; (B1) 4-hydroxy-3-[[2-[(2-methoxyethoxy)methyl]-6- (trifluoromethyl)-3-pyridinyl]carbonyl]-bicyclo[3.2.1]oct-3-en-2-one, (B2) tembotrione, and (B3) topramezone, or their herbicidally effective salts, and wherein each of component (A) and (B) is applied at a rate from 1 to 300 g ai/ha, and in a ratio of (A):(B) of between 1:100 and 100:1. (Id. at 16.) Examiner’s Rejection Claims 1, 2, and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Haas2 and Rueegg.3 (Ans. 2.) Claims 1, 2, and 11 were not separately argued, and we limit our discussion to claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). FINDINGS OF FACT We adopt as our own the Examiner’s findings and analysis concerning the scope and content of the prior art. The following findings are included for emphasis and reference convenience. 2 Haas, US 2004/0033897 A1, published Feb. 19, 2004 (“Haas”). 3 Rueegg et al., WO 2005/104848 A1, published Nov. 10, 2005 (“Rueegg”). Appeal 2014-005610 Application 11/909,022 3 FF 1. The Examiner finds that Haas teaches bicyclopyrone (Appellant’s claimed (B1)) in an herbicidal composition, that bicyclopyrone exhibits synergistic action when combined with isoxachlortole, that the ratio of bicyclopyrone to the other herbicide ranges from 1:2000–2000:1, and that the rate of application ranges from 1–5000 g/ha. (Ans. 3, citing Haas Abstract and ¶¶ 8, 20, and 117.) FF 2. The Examiner finds that Rueegg teaches an herbicidal composition comprising a formula I with isoxachlortole, and that the most preferred compound of formula I is pyroxasulfone (Appellant’s claimed (A)). (Id., citing Rueegg 18, ll. 3–5 and 31, l. 12.) FF 3. The Specification states that “[t]he herbicides (A), (B1), (B2) and (B3) are independently known in the art for their effects on plant growth. (Spec. 2, ll. 3–4.) FF 4. The Examiner finds that isoxachlortole and pyroxasulfone are structurally similar, that both contain the same core, isoxazole groups, and both contain 5-membered N-O rings. (Ans. 4–5.) ISSUE Whether a preponderance of evidence of record supports the Examiner’s conclusion of obviousness under 35 U.S.C. § 103(a) and, if so, has Appellant presented evidence of secondary considerations, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of nonobviousness. ANALYSIS Claim 1 recites a combination of two known herbicides (FF 3) at a ratio within a given range, at an application rate within a given range, and further recites that the resulting herbicidal composition is synergistic. (Br. Appeal 2014-005610 Application 11/909,022 4 16.) The Examiner found that Haas teaches one of the two herbicides (bicyclopyrone), that bicyclopyrone exhibits synergistic action when combined with isoxachlortole, and ratio and application ranges that encompass the claimed ranges. (FF 1.) The Examiner found that Rueegg discloses the other herbicide (pyroxasulfone) and that pyroxasulfone is structurally similar to isoxachlortole. (FF 2, 4.) Based on those findings, the Examiner concluded that it would have been prima facie obvious to combine bicyclopyrone and pyroxasulfone with the expectation of achieving a synergistic herbicidal composition as claimed. (Ans. 3–4.) We find that the Examiner has satisfied the burden of showing “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Moreover, the Examiner has established a prima facie case of obviousness and, as discussed below, Appellant has not overcome or rebutted that prima facie case. Prima Facie Case At the outset, we agree with the Examiner that the claimed combination of bicyclopyrone and pyroxasulfone is prima facie obvious since the prior art teaches that both are known herbicides. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (citing cases) (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”); see also KSR, 550 U.S. at 417 (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”) Appeal 2014-005610 Application 11/909,022 5 Appellant argues against the obviousness of the combination of bicyclopyrone and pyroxasulfone based on the “hundreds or thousands of other possible herbicides known in the art” and the identification by Appellant of “a combination of amounts of pyroxasulfone and bicyclopyrone.” (Br. 9–11.) Appellant also points to the claimed “synergistic” herbicidal composition in an effort to overcome the prima facie case, and argues that the Examiner “has failed to provide the requisite evidence” that the isoxachlortole and pyroxasulfone have sufficient structural similarities to establish a prima facie case of obviousness. (Id. at 11–13.) We are not persuaded by Appellant’s arguments. In addition to the reasons stated above, the mere number of possible herbicide combinations does not overcome a conclusion of obviousness. See Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious”). Moreover, the claimed amounts of bicyclopyrone and pyroxasulfone fall within the range taught by Haas for bicyclopyrone and the other herbicide (e.g., isoxachlortole) that exhibit synergistic action (FF 1). See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.”) Appellant’s arguments regarding synergy in connection with the prima facie case are also unpersuasive. The test for obviousness is what the combined teachings of Haas and Rueegg would have suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) Appeal 2014-005610 Application 11/909,022 6 (citing cases). Furthermore, the obviousness analysis “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Here, the Examiner has persuasively shown that the references suggest that substituting a structurally similar compound (pyroxasulfone) of Rueegg in place of the isoxachlortole of Haas would reasonably be expected to produce a similar synergistic herbicide composition. Moreover, Appellant has not provided persuasive evidence or argument (such as why Appellant might believe those compounds are not sufficiently similar in structure) to overcome that prima facie case. Unexpected Results The establishment of a prima facie case of obviousness, as the Examiner has done here, shifts the burden of producing contrary evidence or arguments to Appellant. See In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977); In re Oetiker, 977 F.2d 1443, 1445–46 (Fed. Cir. 1992). Here, Appellant argues “unexpected superiority” and “unexpected performance” of the claimed combination based on test data in the Specification that relies on the COLBY Formula.4 (Br. 13.) However, we find that Appellant’s evidence and argument is not sufficiently persuasive to rebut the prima facie case of obviousness for at least the following reasons. We note at the outset that Appellant points us to pages 10–15 of the Specification, and Tables of data on those pages, but does not provide an adequate explanation or interpretation of the data.5 Moreover, the data 4 Colby, Calculating Synergistic and Antagonistic Response of Herbicide Combinations, Weeds 15, 20–22 (1967) (“COLBY Formula”). 5 For example, Tables 2 and 4 refer to “[d]ifference of observed values to expected values” but do not explain how to interpret the values. (Br. 12–15.) Appeal 2014-005610 Application 11/909,022 7 appears to reflect mixed results that are dependent on the quantities of herbicides used and the plant (and life stage) on which they are used. Appellant appears to argue that the test data establishes a synergistic effect from the combination of herbicides claimed. (Br. 13.) However, even if we agreed that the claimed combination provided synergistic results, more would be required to show nonobviousness since synergism per se may be expected or unexpected. See In re Diamond, 360 F.2d 214, 218 (CCPA 1966). In this case, we find any synergistic result to be expected rather than unexpected. This conclusion is based on the teachings of the prior art (discussed above) and the general proposition that it would have been expected that the combination of pyroxasulfone and bicyclopyrone would be a more effective herbicide than either agent alone. See Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 808 (Fed. Cir. 1989) (“Given the prior art teaching that both amiloride and hydrochlorothiazide are natriuretic, it is to be expected that their co-administration would induce more sodium excretion than would either diuretic alone.”).6 Unexpected results must be shown to be unexpected compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). In this case, the closest prior art would appear to be Haas, and the combination 6 We understand Appellant’s argument to be that the claimed herbicidal combination is more effective than would have been expected based on the COLBY Formula. We take no position on the COLBY Formula, but simply find that synergism in this case would have been expected. Appeal 2014-005610 Application 11/909,022 8 of bicyclopyrone and isoxachlortole. No test data is presented comparing the herbicidal effectiveness of the claimed invention to that combination. Evidence of nonobviousness must also be commensurate in scope with the claims. In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Here, the tested compositions are identified as including an adjuvant, but claim 1 does not include an adjuvant. (Spec. 11, 13.) Thus, the tested compositions are not commensurate in scope with claim 1. On balance, we are not persuaded that the evidence of unexpected results is sufficient to overcome the evidence favoring obviousness. CONCLUSION A preponderance of evidence of record supports the Examiner’s conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Furthermore, Appellant has not provided evidence of unexpected results that, when weighed with the evidence favoring obviousness, shows that claim 1 would have been nonobvious. Claims 2 and 11 were not argued separately and fall with claim 1. SUMMARY We affirm the rejection of all claims on appeal. TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation