Ex Parte Hacker et al

Board of Patent Appeals and Interferences

May 18, 2010

11132837 (B.P.A.I. May. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERWIN HACKER, HERMANN BIERINGER, and
HANSJORG KRAHMER
__________

Appeal 2009-0125051
Application 11/132,837
Technology Center 1600
__________

Decided: May 19, 2010
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

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

1 Bayer CropScience AG is the real party in interest (App. Br. 2).
Appeal 2009-012505
Application 11/132,837

2
STATEMENT OF THE CASE
Claims 1-8 are pending and on appeal (App. Br. 2). Appellants do not
present separate arguments with respect to any of the claims. We select
claim 1 as representative of the rejected claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).
During prosecution, the Examiner made a species election
requirement for component B of claim 1 in which Appellants elected
foramsulfuron (Non-Final Rejection 3-5; see also Ans. 5; App. Br. 6
(“foramsulfuron . . . the elected species of component (B)”)).
We limit our consideration of the merits of the appealed rejection to
the elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat.
App. Int. 1987).
With non-elected subject matter excised, representative claim 1 reads
as follows:
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 A) and
B) at least one compound (component B) from one of the following
groups

B1 . . . N-[(4,6-dimethoxypyrimidin-2-yl)aminocarbonyl]-2-
dimethylaminocarbonyl-5-formylaminobenzenesulfonamide
(foramsulfuron);
. . .
where this composition comprises the component A or a salt thereof
and the compounds of group B1 to B14 in a weight ratio of from
1:2000 to 2000:1.

Appeal 2009-012505
Application 11/132,837

3
The sole rejection before us for review is the Examiner’s rejection of
claims 1-8 under 35 U.S.C. § 103(a) as obvious in view of Riebel,2
Bieringer,3 Schnabel,4 Lorenz,5 and “applicant’s own specification” (Ans. 3).
OBVIOUSNESS
ISSUE
Claim 1 recites an herbicidal composition that contains two
compounds, designated as components A and B. The Examiner cites
Bieringer as evidence that claim 1’s component A was an herbicidal
compound known in the art to be combined with other herbicides, and that
“these components are more effective when combined” (Ans. 4).
The Examiner concedes, however, that Bieringer “does not teach
specifically [the elected species] foramsulfuron” being combined with
component A, and cites Schnabel and Lorenz as evidence that foramsulfuron
was a known herbicide (id.). The Examiner also cites Appellants’
Specification as disclosing that “all the [claimed] compounds are known”
(id. (underlining omitted)).
Based on the teachings in the prior art, the Examiner finds that an
ordinary artisan would have been prompted “to prepare a herbicidal
composition comprising the combination of compound A and B.
Furthermore, because . . . each compound appears to be well known in the
prior art, it would appear that the combination of the compounds would have

2 WO 00/32580 A2 (published June 8, 2000). The Examiner also cites U.S.
Pat. No. 6,645,915 B1 (issued November 11, 2003) as an equivalent
publication (Ans. 3).
3 WO 01/28341 A2 (published April 26, 2001)(as translated).
4 WO 95/01344 A1 (published January 12, 1995).
5 WO 95/10507 A1 (published April 20, 1995).
Appeal 2009-012505
Application 11/132,837

4
been obvious” (id. at 5 (citing MPEP § 2144.06 and In re Kerkhoven, 626
F.2d 846, 850 (CCPA 1980)).
To further bolster the rejection, the Examiner cites Ex Parte
Quadranti, 25 USPQ2d 1071, 1072 (Bd. Pat. App. Int. 1992) as holding that
“‘the use of combinations of herbicides is so notoriously well known as to be
capable of being taken . . . by the official notice.’” (Ans. 5-6.)
Appellants concede that Bieringer “discloses . . . component A of the
claimed herbicidal compositions” (App. Br. 6). However, Appellants argue,
“none of the cited references even disclose foramsulfuron, the elected
species of component B” (id.).
Thus, Appellants argue “there is nothing in the cited references that
would motivate an artisan of ordinary skill to modify the herbicidal
compositions disclosed in the cited references to obtain the herbicidal
compositions of the present claims” (id.), and the Examiner has therefore
failed to make out a prima facie case of obviousness (id. at 7).
Moreover, Appellants urge, even if the Examiner established the
prima facie obviousness of claim 1, the Declaration of Erwin Hacker6
demonstrates that the claimed composition possesses synergistic properties
that overcome the prima facie case (id.)
In view of the positions advanced by Appellants and the Examiner,
the issues with respect to this rejection are (a) whether the evidence of
record supports the Examiner’s conclusion of prima facie obvious, and, if so,
(b) whether the evidence of record supports the Examiner’s finding that
Appellants have failed to overcome that prima facie case.

6 Declaration of Erwin Hacker (entered February 2, 2007; see also App. Br.
Appendix B).
Appeal 2009-012505
Application 11/132,837

5
FINDINGS OF FACT (“FF”)
1. Bieringer discloses “synergistic herbicidal agents that contain
herbicides from the group of the hydroxyphenylpyruvate dioxygenase
inhibitors” (Bieringer, abstract).
2. Bieringer’s compositions contain “A) at least one compound selected
from the group of the hydroxyphenylpyruvate dioxygenase inhibitors and B)
at least one compound selected from the group” of herbicides that are
“selectively effective” in cereals, maize, or rice “against monocotyledonous
and/or dicotyledonous harmful plants,” and herbicides “that are non-
selectively effective on non-cultivated soil and/or selectively effective in
transgenic cultures against monocotyledonous and/or dicotyledonous
harmful plants” (id.).
3. Bieringer discloses a list of at twenty different herbicides useful as its
component B (id. at 4).
4. Bieringer discloses that its compositions “have an effect that is
superior to that of said herbicides when used individually” (id. at abstract).
5. Appellants concede that Bieringer “discloses . . . component A of the
claimed herbicidal compositions” (App. Br. 6).
6. Appellants’ Specification also concedes that component A of claim 1
“is known from WO 00/21924” and that “[t]he other [claimed] herbicides
referred to by their common names are known, for example, from ‘The
Pesticide Manual’, 12th edition, 2000, British Crop Protection Council”
(Spec. 4).
7. The Specification further states that those publications “contain
detailed statements about preparation processes and starting materials. The
Appeal 2009-012505
Application 11/132,837

6
disclosure of these publications is expressly incorporated into this
description by way of reference” (id. at 5).
8. The Declaration of Erwin Hacker discloses the results of trials that
were “conducted in the same manner as described in the specification under
pre- and post-emergent conditions either in greenhouse or in field”
(Declaration of Erwin Hacker 2).
9. Among a number of other compounds, the post emergence herbicidal
activity of foramsulfuron, designated as compound “B1.15” (see id.), was
tested in combination with component A of claim 1, and compared to the
activity of the two compounds alone (id. at 5).
10. The results are presented in Table 12, reproduced below (id.):

11. The Declaration states that the “results reveal that the herbicidal
compositions according to the invention have higher, some considerably
higher, herbicidal activity than the sum of the activities of the individual
herbicides. In addition, the herbicidal activities of the compositions
according to the invention exceed the expected values according to Colby”
(id. at 8).
Appeal 2009-012505
Application 11/132,837

7
PRINCIPLES OF LAW
In KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
Supreme Court emphasized a “flexible approach” to the obviousness
question, and reasoned that the analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418; see also id. at 421 (“A
person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.”).
In view of these directives, the Supreme Court’s decision in KSR
implicitly endorses the principle, stated in In re Kerkhoven, 626 F.2d 846,
850 (CCPA 1980) (citations omitted), that:
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. . . . [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.

In KSR, the Court also recognized the well settled principle that
evidence of unexpected results may rebut an examiner’s prima facie case of
obviousness. KSR, 550 U.S. at 416 (“The fact that the elements worked
together in an unexpected and fruitful manner supported the conclusion that
Adams’s design was not obvious to those skilled in the art.”) (discussing
United States v. Adams, 383 U.S. 39 (1966)).
However, “[m]ere improvement in properties does not always suffice
to show unexpected results. . . . [W]hen an applicant demonstrates
substantially improved results . . . and states that the results were
Appeal 2009-012505
Application 11/132,837

8
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
Moreover, “[s]ynergism, in and of itself, is not conclusive of
unobviousness in that synergism might be expected.” In re Kollman, 595
F.2d 48, 55 n.6 (CCPA 1979).
ANALYSIS
We are not persuaded that the Examiner’s conclusion of prima facie
obviousness lacks support in the evidence of record.
While the Schnabel and Lorenz publications are in German, except for
their abstracts, and the Examiner is much less than specific in detailing how
and why those references disclose foramsulfuron, as the Examiner points
out, Appellants’ own Specification discloses that foramsulfuron is a known
herbicide (FF 6-7). Thus, even assuming for argument’s sake that
Appellants are correct that Schnabel and Lorenz fail to disclose anything
about foramsulfuron, the Specification provides evidence, which Appellants
do not dispute, that foramsulfuron was a known herbicide.
Given Bieringer’s undisputed disclosure that it was desirable to
combine component A of Appellants’ claim 1 with a variety of different
known herbicides to produce compositions with synergistic herbicidal
activity, we agree with the Examiner that an ordinary artisan would have
considered it obvious to combine component A with the known herbicide
foramsulfuron. Accordingly, we agree with the Examiner that claim 1’s
combination of component A and foramsulfuron would have been prima
facie obvious to an ordinary artisan.
We also agree with the Examiner that the evidence of record supports
the Examiner’s finding that Appellants have failed to overcome the prima
Appeal 2009-012505
Application 11/132,837

9
facie case of obviousness. As seen in the Declaration of Erwin Hacker, the
post emergence herbicidal activity against BRADC of component A by itself
is 55%, and the post emergence herbicidal activity against BRADC of
foramsulfuron by itself is 40%, which adds up to 95% (FF 10). In contrast,
the activity of a combination of the two compounds is only 97% (id.).
In view of Bieringer’s disclosure that combining component A with a
number of different herbicides results in a composition with herbicidal
activity beyond that of the individual compounds (FF 4), we agree with the
Examiner that the relatively small increase in herbicidal activity from 95%
to 97% when the two claimed compounds are used in the same composition,
as opposed to individually, is not adequate to establish an unexpected result.
Moreover, while the Declaration states that “the herbicidal activities of the
compositions according to the invention exceed the expected values
according to Colby” (Declaration of Erwin Hacker 8 (FF 11)), neither
Appellants nor the Declarant explain the evidentiary basis for that finding,
nor do they point to any specific data that supports it, particularly with
respect to the specific combination of component A and foramsulfuron.
SUMMARY
In sum, we agree with the Examiner that the evidence of record
supports the conclusion that an ordinary artisan would have considered
claim 1’s combination of component A and foramsulfuron obvious. We also
agree with the Examiner that the evidence presented by Appellants does not
show that the combination of component A and foramsulfuron provides an
unexpected result sufficient to over the prima facie case of obviousness.
Appeal 2009-012505
Application 11/132,837

10
Accordingly, we affirm the Examiner’s obviousness rejection of claim
1, as well as claims 2-8, which were not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(vii).

TIME PERIOD
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

alw

CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899