Ex Parte Hauser-Hahn et alDownload PDFPatent Trial and Appeal BoardSep 17, 201312096287 (P.T.A.B. Sep. 17, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ISOLDE HAUSER-HAHN, PETER DAHMEN, ULRIKE WACHENDORFF-NEUMANN, and ALBERT WITZENBERGER ____________ Appeal 2012-002602 Application 12/096,287 Technology Center 1600 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and ULRIKE W. JENKS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-4, 7, 8, 14-17, and 20-26 (App. Br. 4).2 Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is Bayer CropScience AG (App. Br. 2). 2 Appellants contend that claim 10 stands withdrawn from consideration (id.). Appeal 2012-002602 Application 12/096,287 2 STATEMENT OF THE CASE The claims are directed to an active compound combination, a propagation material, a fungicidal composition, and a mixture. Claim 1 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Claims 1-4, 7, 8, 14-17, and 20-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Knauf-Beiter 3and Eicken.4 Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Scala5 and Trifloxystrobin.6 The combination of Knauf-Beiter and Eicken: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Examiner finds that Knauf-Beiter suggests a compound having formula I that is the same as Appellants’ compound having formula I (Ans. 6). FF 2. Knauf-Beiter suggests “crop-protecting compositions having synergistically enhanced action, comprising at least two active ingredient components,” wherein component I is a compound of formula I and 3 Knauf-Beiter, et al., WO 97/00012, published January 3, 1997. 4 Eicken et al., US 5,508,283, issued April 16, 1996. 5 Bayer CropScience, “SCALATM brand SC Fungicide,” produce insert. 6 Trifloxystrobin – Registration Application 3/99, http://pmep.cce.cornell.edu/profiles/fung-nemat/tcmtb- ziram/trifloxystrobin/triflox_oth_03..., accessed January 28, 2011. Appeal 2012-002602 Application 12/096,287 3 component II is a compound selected from a defined group that is unrelated to Appellants’ compounds (Knauf-Beiter 1: 1 - 2: 24; Ans. 6 (Knauf-Beiter “does not expressly teach … [Appellants’] second component”)). FF 3. Examiner finds that Eicken suggests a compound having formula II that is the same as Appellants’ compound having formula II (Ans. 6). FF 4. Eicken suggests a “synergistic mixture containing a) a compound of [] formula I[, which is unrelated to Appellants’ compound I,] … and b) a pyrimidine derivative of the formula II” (Eicken, Abstract; Ans. 6-7). ANALYSIS Based on the combination of Knauf-Beiter and Eicken, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to combine formula I of Knauf [(i.e. trifloxystrobin)] and pyrimethanil[, as suggested by Eicken, for use] as a fungicide” (Ans. 7). Assuming, arguendo, Examiner established a prima facie case of obviousness, Appellants contend that the combination of their two specific compounds results in “an unexpected synergistic effect” (App. Br. 14; see also Spec. 24: 1-5 (“The test demonstrated synergism between trifloxystrobin and pyrimethanil”)). Examiner dismisses Appellants’ unexpected result, alleging instead that because Knauf-Beiter and Eicken both suggest synergistic compositions comprising: (a) one, or the other, of the compounds in Appellants’ combination and (b) a specific second compound that is unrelated to Appellants’ compounds; a person of ordinary skill in this art would have expected a synergistic result when both of Appellants’ specific compounds were placed in combination (see Ans. 15- 16). We are not persuaded. Appeal 2012-002602 Application 12/096,287 4 Examiner failed to establish an evidentiary basis on this record to support a conclusion that the compounds of Knauf-Beiter’s second component were related in some way to the second component of Appellants’ combination, i.e., the compounds inhibited the same enzyme or acted on the same metabolic pathway. The same is true of Eicken, where Examiner failed to establish some nexus between the first component of Eicken’s mixture and the first component of Appellants’ combination. Stated differently, we are not persuaded by Examiner’s conclusory assertion that a person of ordinary skill in this art would have reasonably expected the combination of Appellants’ two compounds to exhibit a synergistic effect simply because each of the two compounds exhibited synergy when they were independently combined with compounds that were unrelated to those required by Appellants’ claims (see App. Br. 15-16). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1-4, 7, 8, 14- 17, and 20-26 under 35 U.S.C. § 103(a) as unpatentable over the combination of Knauf-Beiter and Eicken is reversed. The combination of Scala and Trifloxystrobin: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 5. Examiner relies on Scala to suggest “that pyimethanil[, the formula II component of Appellants’ claimed combination] is an effective fungicide Appeal 2012-002602 Application 12/096,287 5 which treats fungi affecting fruits and grapes as well as other assorted crops” (Ans. 9). FF 6. Examiner finds that “Scala does not expressly teach the addition of Trifloxystrobin” (id.). FF 7. Examiner relies on Trifloxystrobin to suggest “that Trifloxystrobin[, the formula I component of Appellants’ claimed combination,] is effective in the treatment of fungi affecting fruits, peanuts, grapes, [and] curcurbits [sic]” (id.). ANALYSIS Based on the combination of Scala and Trifloxystrobin, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “combine two known fungicides such as pyimetharil [sic] and trifloxystrobin for the treatment of fungi in the same fruits (e.g., grapes) and other crops” (Ans. 9-10). Assuming, arguendo, Examiner established a prima facie case of obviousness, Appellants contend that the combination of their two specific compounds results in “an unexpected synergistic effect” (App. Br. 14; see also Spec. 24: 1-5). Examiner failed to establish an evidentiary basis on this record to support a conclusion that a person of ordinary skill in this art would have expected a synergistic effect when the compounds suggested by Scala and Trifloxystrobin are used in combination (see App. Br. 25; Cf. Ans. 19-20). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claim 27 under 35 Appeal 2012-002602 Application 12/096,287 6 U.S.C. § 103(a) as unpatentable over the combination of Scala and Trifloxystrobin is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation