Ex Parte Hacker et al

Patent Trial and Appeal Board

Aug 16, 2016

12837672 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/837,672 07/16/2010
84331 7590
MMWVIP,LLC
10 N JEFFERSON ST
SUITE 100
FREDERICK, MD 21701
08/18/2016
FIRST NAMED INVENTOR
Erwin Hacker
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.
2923343-163000 4667
EXAMINER
QAZI, SABIHA NAIM
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
08/18/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERWIN HACKER, HERMANN BIERINGER, and
HANSJORG KRAHMER1
Appeal2015-002506
Application 12/837,672
Technology Center 1600
Before DONALD E. ADAMS, RICHARD J. SMITH, and
RACHELE. TOWNSEND, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
herbicidal composition that have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Bayer CropScience
AG. (Br. 2.)
Appeal2015-002506
Application 12/837,672
STATEMENT OF THE CASE
Background
Appellants' "invention relates to the technical field of crop protection
agents which can be used against unwanted vegetation and comprise, as
active compounds, a combination of at least two herbicides." (Spec. 1, 11. 7-
9.)
Claims on Appeal
Claims 1 and 4---6 are on appeal. 2 (Appendix A, Br. 12.) Independent
claim 1 is illustrative and reads as follows, with non-elected subject matter
excised:
1. A herbicidal composition, comprising a synergistically effective amount
of
A) the compound 2-[2-chloro-3-(2,2,2-trifluoroethoxymethyl)-4-
methylsulfonyl-benzoyl]cyclohexane-1,3-dione or an agriculturally suitable
salt thereof (component 1A .. )
and
B) ... (component B) ... diflufenzopyr ...
where this composition comprises the component A or a salt thereof and
component B in a weight ratio of from 1 :2000 to 2000: 1.
2 The elected species is diflufenzopyr (component B). (Final Act. 4
dated Nov. 12, 2013.) We limit our consideration of the merits of the
appealed rejection to the elected species, and take no position respecting the
patentability of the broader generic claims, including the remaining, non-
elected species. See Ex parte Ohs aka, 2 USPQ2d 1460, 1461 (BP AI 1987).
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Application 12/837,672
Examiner's Rejection
Claims 1 and 4--6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer, 3 Van Almsick, 4 Bieringer, 5 and Appellants'
Specification (pages 1--4). (Ans. 2.)
Claims 1 and 4--6 were not separately argued, and we therefore limit
our discussion to claim 1 (elected species diflufenzopyr).
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.
FF 1. The Examiner finds Bauer and Van Almsick teach combinations of
benzoyl 1-3 diones (component A) and at least one additional herbicide.
(Ans. 5; see Bauer Abstract; Spec. 4, 11. 24--25.)
FF 2. Bauer teaches that its compositions have synergistically enhanced
herbicidal activity. (Bauer Abstract.)
FF 3. Bieringer discloses 2-[2-chloro-3-(2,2,2-trifluoroethoxymethyl)-4-
methylsulfonyl-benzoyl] cyclohexane-1,3-dione, component A of the
claimed herbicidal compositions, and diflufenzopyr as an additional
herbicide (component B). (Br. 7; Bieringer claim 8.)
FF 4. The Examiner finds that Bieringer teaches synergistic combinations of
herbicide components A and B, that the observed effective values of the
3 Bauer et al., WPAT, AN 1993-378337 [48], English Translation of
Abstract ofDE4216880 Al ("Bauer").
4 Van Almsick et al., WO 00/21924, published Apr. 20, 2000 ("Van
Almsi ck").
5 Bieringer et al., WO 01/28341 A2, published Apr. 26, 2001, English
Translation ("Bieringer").
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Appeal2015-002506
Application 12/837,672
mixtures exceed the sum of the values with single applications (each
component alone), and that the observed effective values exceed the values
that would have been expected based on the COLBY Formula. (Ans. 4;
citing 7 /9 ofBieringer translation, 11. 39--49.)
FF 5. Bieringer teaches that the weight ratios of components A to B are
preferably within the range of 1:2000 to 2000: 1. (Bieringer claim 1.)
FF 6. The Examiner finds that Appellants' Specification teaches that the
claimed compounds are known herbicides and that compound A is disclosed
in Van Almsick. (Ans. 4, citing Spec. 4.)
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,
have Appellants presented evidence of secondary considerations, that when
weighed with the evidence of obviousness, is sufficient to support a
conclusion of nonobviousness.
ANALYSIS
The Examiner concluded that it would have been prima facie obvious
to one skilled in the art to prepare a composition comprising a combination
of herbicides, such as 1,3 dione (compound A) and diflufenzopyr
(compound B), having synergistic results. (Ans. 5.) This conclusion was
based on the teachings of Bauer and Van Almsick (FF 1, 2), Bieringer' s
teaching of synergistic combinations of compound A and diflufenzopyr
(compound B) (FF 3-5), Appellants' Specification's teaching that all
claimed herbicides are known (FF 6), and that Bieringer teaches observed
values that exceed expected values based on the COLBY Formula (FF 4).
(Id.)
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Application 12/837,672
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'! 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, Appellants have not overcome or
rebutted that prima facie case.
Prima F acie Case
At the outset, we agree with the Examiner that the claimed
combination of compound A and diflufenzopyr (compound B) 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.").
Appellants argue that Bieringer discloses diflufenzopyr as part of "a
large number of compounds that can be used as the additional herbicide" and
that there is "no specific teaching" in Bauer, Van Almsick, or Bieringer of
the herbicidal composition as claimed. (Br. 7.) We are not persuaded. Even
if we assume that Bieringer discloses a "large number of compounds," that
would not overcome a conclusion of obviousness, where, as here, not only is
the claimed composition used for the identical purpose taught by the prior
art, but Bieringer also teaches that any of the disclosed combinations will
result in a herbicidal composition in which the herbicidal agents of the
composition together "have an effect that is superior to that of said
herbicides when used individually" (Bieringer Abstract and claim 8). See
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Application 12/837,672
Merck & Co., Inc. v. Biocrajt 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
test for obviousness is what the combined teachings of Bauer, Van Almsick,
and Bieringer would have suggested to one of ordinary skill in the art. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citing cases). Here, the
Examiner has persuasively shown that a composition as claimed is prima
facie obvious notwithstanding that there may be "no specific teaching" in the
references individually.
Unexpected Results
Appellants argue that "unexpected results can be found in the data
provided in [the] Declaration of Erwin Hacker."6 (Br. 8.) Appellants point
to Tables 1, 2, 4, and 5 of the Hacker Declaration that reflect herbicidal
activity of compositions of compound A and an additional herbicide. (Id. at
8-10; Deel. 3--4.)
Appellants argue that the test data establishes "synergistic activity"
by the herbicidal compositions identified in the Hacker Declaration,
including the combination of compound A and diflufenzopyr (compound B).
(Br. 8-10.) However, even if we agreed that the claimed combination
provided synergistic results, that by itself is not necessarily dispositive since
synergism per se may be expected or unexpected. See In re Huellmantel,
324 F.2d 998, 1003 (CCPA 1963).
6 Declaration of Erwin Hacker dated May 15, 2012 ("Hacker Declaration" or
"Dec 1. ").
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Application 12/837,672
In this case, we find any synergistic result to be expected rather than
unexpected, and thus unpersuasive of nonobviousness. This conclusion is
based on the synergistic teachings of the prior art (FF 1--4), and particularly
Bieringer' s teaching that a composition of compound A and an additional
herbicide (compound B, such as diflufenzopyr) produces a synergistic
herbicidal composition. (FF 3, 4.)
Unexpected results must also 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 Jn re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984)). While test data is presented comparing the activity of specific
dosages of compound A and diflufenzopyr to EA and Ee (Table 4), no test
data is presented comparing the herbicidal effectiveness of the claimed
composition (compound A and diflufenzopyr (compound B)) to any prior art
composition. 7
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,
Appellants have not provided evidence of unexpected results that, when
weighed with the evidence favoring obviousness, shows that claim 1 would
have been nonobvious.
Claims 4---6 were not argued separately and fall with claim 1.
SUMMARY
We affirm the rejection of all claims on appeal.
7 We note that Bieringer discloses compound A and diflufenzopyr as
compound B. (FF 3.)
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Appeal2015-002506
Application 12/837,672
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
8