Ex Parte Holah et al

Patent Trial and Appeal Board

Aug 29, 2013

11879592 (P.T.A.B. Aug. 29, 2013)

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.
11/879,592 07/18/2007 David Stanley Holah P/4976-66 4867
2352 7590 08/29/2013
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
PAK, JOHN D
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
08/29/2013 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 DAVID STANLEY HOLAH, JANE ELISABETH DANCER,
MARIE-PASCALE LATORSE, and RICHARD MERCER
__________

Appeal 2012-000045
Application 11/879,592
Technology Center 1600
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 from the rejection of claims
23-42, directed to a fungicidal composition and method of using it. The
claims have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellants identify the Real Party-In-Interest as Bayer SAS, of Lyon,
France (App. Br. 2).
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STATEMENT OF THE CASE
Claims 23-42 are pending and on appeal. Claims 1-22 have been
canceled (App. Br. 2).
Claims 23 and 42 are representative:
23. A synergistic fungicidal composition comprising:
(A) a compound (I) that is a pyridylmethylbenzamide derivative of
formula (I):

in which:
[R1, R2, R3, and R4 are as defined in the Claims Appendix];
or an agriculturally acceptable acid addition salt thereof; and
(B) fenamidone;
wherein the compound I/fenamidone weight ratio is from 1/10 to 10/1.
42. A method for controlling Plasmopara viticola in grapevine plants at a
locus which comprises applying thereto:
(A) 2,6-dichloro-N-{[3-chloro-5-(-trifluoromethyl)-2-
pyridinyl]methyl}benzamide; and
(B) fenamidone;
wherein the ratio by weight of (A)/(B) is equal or close to 1/2.
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Claims 23-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Moloney,2 Lacroix,3 and Mercer.4
ISSUE
The Examiner finds that Moloney discloses fungicides, including 2,6-
dichloro-N-{[3-chloro-5-(-trifluoromethyl)-2-pyridinyl]methyl}benzamide,
that are effective against vine downy mildew (Plasmopara viticola), and
further suggests combining them with other fungicides (Ans. 4-5), albeit not
with fenamidone. However, the Examiner finds that both Lacroix and
Mercer disclose the antifungal properties of fenamidone against grape
downy mildew (id. at 5, 6). The Examiner finds that “the two components
are individually known as effective fungicidal agents . . . and each has been
taught to be used together with another fungicide” (id. at 7), and concludes
that it would have been obvious “to combine [the] two individual fungicides
to arrive at a third fungicide (mixture) that would obtain the advantages of
both fungicides” (id.). Moreover, the Examiner finds that it would have
been within the skill in the art “to utilize suitable ratios of the two fungicides
to arrive at an effective mixture” (id.).
Appellants concede that “[b]ased on the teachings of the currently
cited references, skilled artisans might have expected fungicidal activity for
mixtures of the pyridylmethylbenzamide derivatives and fenamidone” (App.
Br. 15), but contend “they would not have expected any synergy” (id.).

2 Moloney et al., US 6,503,933 B1, issued June 7, 2003
3 Lacroix et al., US 6,081,052, issued June 25, 2000
4 R.T. Mercer et al., RPA 407213: a novel fungicide for the control of
downy mildews, late blight and other diseases, 2 PESTS AND DISEASES 319-
326 (1998).

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The issue raised by this appeal is whether Appellants have provided
evidence of unexpected results, in this case, a synergistic effect, which
outweighs the evidence supporting the prima facie case of obviousness.
FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence of record.
1. According to the Specification,
The term “synergistic effect” as used in this specification
including the accompanying claims is understood to mean in
particular that defined by Colby S.R. in an article entitled
“Calculation of the synergistic and antagonistic responses of
herbicide combinations” Weeds, (1967), 15, pages 20-22.
The latter article uses the formula:

in which E represents the expected percentage of inhibition of a
disease for a combination of the two fungicides at defined doses
(for example equal to x and y respectively), X is the percentage
of inhibition observed for the disease by the compound (I) at a
defined dose (equal to x), Y is the percentage of inhibition
observed for the disease by the compound (II) at a defined dose
(equal to y). When the percentage of inhibition observed for
the combination is greater than E, there is a synergistic effect.
(Spec. 12: 16 - 13: 6).
2. The efficacy of a combination of 2,6-dichloro-N-{[3-chloro-5-
(-trifluoromethyl)-2-pyridinyl]methyl}benzamide (compound Ia) and
fenamidone (compound IIa) against Plasmopara viticola on grapevine plants
was demonstrated in the Specification as follows:
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(Spec. 7: 15-16; 33: 1 - 34: 15).
Using the Colby formula, the expected percentage of inhibition of
Plasmopara viticola using a combination of compound Ia and fenamidone
would be 83.2%, but the actual percentage was found to be 87% in this
example, a difference of 3.8% (see App. Br. 16-17), i.e., an improvement of
about 4.5% over what would have been expected from the combination,
according to the Colby formula.
PRINCIPLES OF LAW
The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
It is well settled that results must be established by factual evidence.
“Mere argument or conclusory statements in the specification does not
suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
In addition, “‘objective evidence of nonobviousness must be
commensurate in scope with the claims.’” In re Kulling, 897 F.2d 1147,
1149 (Fed. Cir. 1990).
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DISCUSSION
Again, Appellants concede that “[b]ased on the teachings of the
currently cited references, skilled artisans might have expected fungicidal
activity for mixtures of the pyridylmethylbenzamide derivatives and
fenamidone” (App. Br. 15), but contend “they would not have expected any
synergy” (id.). Appellants contend that “they have discovered a
combination in a particular ratio that clearly exhibits synergism [that] is
neither disclosed nor suggested by the prior art” (id. at 14).
“Synergism, in and of itself, is not conclusive of unobviousness in that
synergism might be expected.” In re Kollman, 595 F.2d 48, n.6 (CCPA
1979). However, as the Examiner has not asserted that synergy would have
been expected in this instance, persuasive evidence of synergy would tend to
weigh in favor of nonobviousness.
The Specification purports to demonstrate a synergistic effect for the
particular mixture of fungicides that corresponds to the mixture required by
claim 42, using the Colby calculations discussed above (see FFs 1, 2).
The Examiner finds that “the Colby formula . . . is not adequate for
determining unexpected or unobvious results” (Ans. 9), i.e., synergy, for a
number of reasons set forth on pages 10 and 11 of the Answer, and that
“[o]ne having ordinary skill in the art would recognize that this a far too
simplistic, rigid, and erroneous method of determining [an] unexpected or
unobvious result” (Ans. 11).
While it is not for us to evaluate the Examiner’s specific criticisms of
the Colby method, the burden of demonstrating unexpected results rests on
the party asserting them (Klosak, 455 F.2d at 1080), and that burden
reasonably includes establishing that the model used to demonstrate those
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results would have been accepted by one of ordinary skill in the art as
appropriate and sufficient.
Appellants argue that the Colby formula “is accepted in the art” as a
means for determining synergism (App. Br. 14), and “has been frequently
used to the satisfaction of the USPTO to show synergism and, consequently
nonobviousness” (id. at 15), as shown by the “fact [that] Appellants’
representative has searched the USPTO Patent Full-Text and Image
Database using the keywords SPEC/Colby AND SPEC/synergism and
obtained 214 hits” (id.).
This argument is not persuasive. The mere fact that the words
“Colby” and “synergism” appear together in the same patent is essentially
meaningless without the surrounding context, and certainly cannot be
considered evidence that the Colby method is recognized in the art as a
method of determining synergism, or that it “has been frequently used to the
satisfaction of the USPTO to show synergism” (App. Br. 15). “Attorney’s
argument in a brief cannot take the place of evidence.” In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). In any case, each application is examined
on its own merits.
Moreover, even if Appellants had established that the Colby model
would have been accepted as a measure of synergy by one of ordinary skill
in the art, we are not persuaded that a 4.5% improvement over the alleged
expected value in a single experiment is sufficient, when weighed with the
prima facie case of obviousness, to demonstrate non-obviousness in this
case. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007)
(“[W]e hold that even if Pfizer showed that amlodipine besylate exhibits
unexpectedly superior results, this secondary consideration does not
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overcome the strong showing of obviousness in this case. Although
secondary considerations must be taken into account, they do not necessarily
control the obviousness conclusion. Newell Cos., Inc. v. Kenney Mfg. Co.,
864 F.2d 757, 768 (Fed.Cir.1988)”).
Finally, with respect to claims 23-41, we agree with the Examiner that
Appellants have not provided a factual basis to support the assertion that “[a]
synergistic effect can of course be demonstrated at other dosages and ratios”
(Spec. 34: 20 - 35: 1), much less for compositions containing the other
pyridylmethylbenzamide derivatives included within the scope of these
broader claims.
SUMMARY
The rejection of claims 23-42 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Moloney, Lacroix, and Mercer is affirmed.
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

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