Ex Parte Hougard et al

Patent Trial and Appeal Board

Nov 23, 2016

10588492 (P.T.A.B. Nov. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/588,492 11109/2006
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
11/28/2016
FIRST NAMED INVENTOR
Jean-Marc Hougard
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.
0508-1097-1 9225
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
11/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-MARC HOU GARD and CEDRIC PENNETIER 1
Appeal2015-002750
Application 10/588,492
Technology Center 1600
Before MELANIE L. McCOLL UM, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
insecticide compositions that have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
Appellants' "invention relates to a novel insecticide composition and
its use, in particular for the impregnation of mosquito nets." (Spec. 1, 11. 5-
6.) According to the Specification, "a major obstacle to the use of mosquito
1 Appellants identify the Real Party in Interest as Institut de Recherche pour
le Developpement (IRD). (App. Br. 2.)
Appeal2015-002750
Application 10/588,492
nets impregnated with a pyrethroid insecticide" is that mosquitos develop
resistance "via mutation of the kdr gene." (Id. at 1, 11. 27-29.) Appellants
disclose "[ t ]he purpose of the present invention is [] to provide a novel
insecticide composition not containing pyrethroid, while being at least as
effective as pyrethroid insecticides." (Id. at 1, 11. 32-34.)
Appellants further disclose "[ t ]he invention [] relates to an insecticide
composition comprising a non-pyrethroid insecticide in combination with an
insect repellent, characterized in that the concentration of insecticide in the
insecticide composition is lower than its lethal concentration 100 (LC 100)
when it is used alone." (Id. at 2, 11. 14--17.) According to the Specification,
"the combination of the non-pyrethroid insecticide and insect repellent has
synergistic effects on the mortality and the KD ["Knock-Down"] effect ...
[and] thus gives the insecticide composition of the invention characteristics
similar to those of pyrethroids." (Id. at 5, 11. 3-11.)
Claims 2, 5-7, 10, 12, 13, 16, 17, and 19 are on appeal. Claim 2 is
illustrative:
2. A mosquito insecticide compos1t10n compnsmg a
nonpyrethroid insecticide having acetylcholinesterase inhibitor
activity, in synergistic combination with an insect repellent,
wherein:
the non-pyrethroid insecticide having acetylcholinesterase
inhibitor activity is a carbamate insecticide or an
organophosphate insecticide,
the insect repellent is selected from the group consisting
of: [] N,N-diethyl-meta-toluamide (DEET); 2-(2-hydroxy-
ethyl)-piperidine carboxylic acid ester of 1-methyl-propyl
(KBR2023); N-butyl-N-acetyl-3-ethylamine propionate
(IR3535); N,N diethylphenylacetamide (DEPA); 1-(3-
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Application 10/588,492
cyclohexen-l-yl-carbonyl)-2-methylpiperine (AI-37220); (2
hydroxymethylcyclohexyl) acetic acid lactone; 2-ethyl-1,3-
hexandiol; indalone; and methylneodecanamide (MNDA),
the composition has a concentration of the non-pyrethroid
insecticide from an approximate LC20 to approximate LC40
compared to a lethal concentration 100 (LC 100) when the
insecticide is used alone, and
the composition has a concentration of the insect
repellent that is lower than the concentration of said insect
repellent procuring a protective effect when the insect repellent
is used alone.
(App. Br. 27 (Claims App'x).)
Claims 2, 5-7, 10, 12, 13, 16, 17, and 19 stand rejected as
unpatentable under 35 U.S.C. § 103(a) over Karl2 and Skovmand. 3
In response to a species election requirement, Appellants elected the
species 0-[2-diethylamino )-6-methyl-4pyrimidinyl] 0, 0-dimethyl
phosphorothioate (pirimiphos-methyl) as the insecticide and N,N-diethyl-
meta-toluamide (DEET) as the insect repellent. (See 11/8/2010 Resp. to
Restriction Requirement 2; see also, Final Act. 2.) We limit our analysis of
the claims to the patentability of the elected species and do not address the
patentability of the broader generic elements of the claims. Ex parte
Ohsaka, 2 USPQ2d 1460, 1461 (BP AI 1987).
DISCUSSION
Appellants argue the patentability of the rejected claims as a group.
We select claim 2 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
2 Karl et al., US 2005/0132500 Al, published June 23, 2005 ("Karl").
3 Skovmand, WO 01/3 7 662 A 1, published May 31, 2001 ("Skovmand").
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Application 10/588,492
Claim 2, in view of Appellants' species election, generally recites a
composition including the insecticide pirimiphos-methyl ("PM") and the
repellent DEET, where both PM and DEET are present in concentrations
lower than concentrations that provide lethal (LC 100)4 and protective effects
when either the insecticide or repellent alone is used. At the crux of this
appeal is whether, as Appellants contend, the combination of PM and DEET
in lower concentrations as claimed provides unexpected synergistic effects.
(See, e.g., App. Br. 5-6.)
The Examiner finds that Karl and Skovmand teach compositions
comprising an insecticide and/or repellent for application to nettings, fabrics,
and the like. (Final Act. 6.) The Examiner also finds that both Karl and
Skovmand identify suitable insecticides and repellents that include
Appellants' elected insecticide and repellent. (Id.) For example, the
Examiner finds that Karl teaches
[ t ]he insecticide is selected from organophosphorous compounds
such as pirimiphos-ethyl and piri[mi]phos-methyl (claim 4 of
Karl et al., elected insecticide and limitation of instant claims ...
and the repellent is selected from compounds such as N,N-
Diethyl-meta-toluamine (i.e., DEET, claim 4 of Karl [] and
elected repellent and limitation of instant claims ....
4 The Specification defines "Lethal concentration 100 (LC 100)" as "the
concentration of an insecticide for which essentially 100 % of the insects in
contact with this insecticide are killed." (Spec. 3, 11. 21-22.) The
Specification also discloses, "the lethal concentration X (LCX) corresponds
to the concentration of an insecticide for which essentially X % of the
insects in contact with this insecticide are killed." (Id. at 3, 11. 23-25.)
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Application 10/588,492
(Id.) According to the Examiner, Karl also teaches "[t]he composition
comprises from about 0.001 to 95% by weight of the insecticide and/or
repellant (claim 7 of Karl [)]." (Id.) The Examiner's findings as to
Skovmand's teachings are similar. (Id. at 6-7 .)
The Examiner finds that neither Karl nor Skovmand expressly teach a
composition with the reduced concentrations of insecticide and repellent
recited in claim 2. More specifically, the Examiner finds
[t]he difference between the invention of the instant application
and that of Karl[] and Skovmand []is that Karl[] and Skovmand
do not expressly teach that the concentration of the insecticide in
the product being lower (i.e., LC20 to LC40, and LC30) than its
lethal concentration 100 (LC 100) from an approximate LC20 to
approximate LC40 compared when it is used alone, and that the
concentration of the insect repellent in the product being lower
than the concentration of the insect repellant procuring a
maximum repellent effect and a protective effect when it is used
alone.
(Id. at 7.)
The Examiner concludes, however, "it would have been prima facie
obvious to one of ordinary skill in the art at the time of the invention to
combine the teachings of Karl [] and Skovmand to arrive at products
containing at least one non-pyrethroid insecticide and at least one insect
repellent" in the lower concentrations claimed. (Final Act. 8.) According to
the Examiner, it was "known in the art that combining insecticidal actives
increases the efficacy of an insecticide such that the maximum level of
insects killed for a given application rate of an insecticide is increased, or
alternatively, the application rate of an insecticide giving the maximum level
of insects killed can be reduced." (Id.) The Examiner reasons "one would
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Application 10/588,492
have been motivated to make this combination in order to receive the
expected benefit of having products impregnated with low doses of
repellents and insecticides that will last longer due to the combination of the
non-pyrethroid insecticide and repellent." (Id.)
Appellants argue that Karl and Skovmand "fail[] to teach or suggest
any synergistic effect of combining a non-pyrethroid insecticide and an
insect repellent." (App. Br. 6, 11.) Appellants contend Karl "is primarily
focused on" a binder component that provides wash resistance (App. Br. 6-
7) and, insofar as the elected insecticide and repellent are mentioned at all,
they are not disclosed as part of any specific combination but among a list of
"virtually all known insecticides ... and known repellents." (See id. at 8.)
Appellants' contentions about Skovmand are similar. (See, e.g., id. at 9--10
(Skovmand "focuses on creating a fabric in which the insecticide and/or
repellent does not wash off or degrade") and 11 (Skovmand "lists the entire
gamut of known pyrethroid, carbamate, organophosphorous and sterilizing
insecticides").)
Appellants further argue "[t]he claimed combination of non-
pyrethroid insecticide and insect repellent is much more effective against
mosquitoes, and at lower doses, than the additive properties of either
component when used alone" thus indicating "a very strong synergy that
would not have been expected." (Id. at 11.) In support, Appellants cite
multiple published articles (id. at 13-14 ), the "prosecution record" including
testing described in the Specification (id. at 16-19), and the declaration of
Cedric Pennetier dated January 17, 2014 (Pennetier Deel.) (id. at 20-21).
Against this evidence, the Appellants contend "the Examiner has not
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Application 10/588,492
provided any evidence to show that it 'was known in the art' ... that
combining insecticide with insect repellent, specifically the elected species
of pirimiphos-methyl and DEET, would be expected to produce synergistic
effect." (Id. at 16; see also Reply Br. 3-5.)
The Examiner responds that "the compositions of the prior art are the
same as Appellant's claimed composition" and thus "all the properties
associated with Appellant's compositions would also be possessed by the
compositions of the prior art." (Ans. 6.) As to Appellants' evidence of
alleged unexpected synergism, the Examiner responds as follows:
with regards to Appellant's argument that the prosecution record
provides a significant amount of evidence to show that the
combination of non-pyrethroid insecticide and insect repellent
produces synergistic activity, the Examiner is not persuaded by
Appellant's argument because in pesticidal combinations, it is
very common in the art to produce combinations that are
synergistic and both KARL and SKOVMAND specifically
disclose in their claims the combination of non-pyrethroid
insecticide and insect repellent as instantly claimed.
(Id. at 8.)
As noted above, we limit our review to the patentability of the elected
species- a composition that includes PM and DEET.
We agree with the Examiner that claim 2 would have been prim a f acie
obvious over Karl and Skovmand. Contrary to Appellants' arguments, the
teachings of Karl and Skovmand are not limited to what either reference is
"primarily focused on" or to the references' preferred embodiments. Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[I]n
a section 103 inquiry, the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
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unpreferred embodiments, must be considered.") (internal quotation marks
omitted). Moreover, the cited art teaches that the insecticides and/or
repellents may be included in a broad range of concentrations from about
0.001to95% by weight. See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
("[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.").
But our inquiry does not end with the Examiner's primafacie case
because Appellants have provided evidence of secondary considerations
they contend shows that claim 2 is nonobvious. With respect to that
evidence, initially we observe that the testing examples cited in the
Specification and Pennetier Deel. do not include a specific example
combining PM and DEET - the elected combination. The Pennetier Deel.
states, however, that the "[testing] results [of the additional combinations of
carbamate or organophosphate insecticides with repellents] confirm that the
synergistic interactions previously observed between DEET or KBR 3023
and propoxur or pyrimiphos-methyl ... were not an isolated phenomenon."
(Pennetier Deel. 8.) With respect to the "synergistic interactions previously
observed," the declaration references a 2007 article by Pennetier ("Pennetier
2007"). 5 (Id.)
5 Pennetier et al., Synergy between repellents and non-pyrethroid
insecticides strongly extends the efficacy of treated nets against Anopheles
gambiae, 6:38 MALARIA JOURNAL 1-7 (2007). Appellants cite Pennetier
2007 in the Evidence Appendix of their Appeal Brief. (See App. Br. 35.)
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Application 10/588,492
Unlike the cited testing from the Specification or the testing
specifically discussed in the Pennetier Deel., Pennetier 2007 does describe
testing of a composition comprising both PM and DEET. (Pennetier 2007
Abstract.) Indeed, earlier in prosecution Appellants argued that Pennetier
2007 evidenced synergism in a composition comprising PM and DEET.
(See, e.g., Sept. 4, 2012 Remarks 11-12 ("evidence of the unexpected results
of a composition containing the AchE inhibitor pirimiphos-methyl (PM) in
combination with DEET are provided in PENNETIER et al. (Malaria
Journal (2007)").) According to Appellants, Pennetier 2007 shows "[t]he
difference of efficacy between expected and observed LT 95 and BIT 95 of
DEET/PM ... indicates a very strong synergy." (Id. at 12; see also Dec. 2,
2011 Remarks 12-14.)
Examiner agreed that Pennetier 2007 evidenced synergism in a
PM/DEET composition. According to the Examiner, "[t]he publications
presented by Applicant discloses data that demonstrates synergy produced
from mixtures of one insecticide component, pirimiphos-methyl ... in
combination with[] a repellent ofDEET." (See Oct. 7, 2013 Office Action
11; see also Mar. 2, 2012 Office Action 14.) Yet the Examiner found that
Appellants' evidence remained insufficient because Appellants had not
shown synergism across the "whole class of carbamate and organophosphate
insecticides" and thus Appellants' evidence was not "commensurate in scope
with that of the claimed subject matter." (Oct. 7, 2013 Office Action 11-12;
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see also Mar. 2, 2012 Office Action 14--15.)6 However, the Examiner's
position is inconsistent with the species election that remains applicable to
claim 2 and which has not been withdrawn by the Examiner.
Examiner's response now to Appellants' evidence of alleged
unexpected synergism is that Karl and Skovmand disclose combinations of
insecticides and/or repellents, that "it is very common in the art to produce
combinations that are synergistic," and that "[i]t is known in the art that
combining insecticidal actives increases the efficacy of an insecticide."
(Ans. 8; Final Act. 8.) In other words, the Examiner suggests that the skilled
person would have expected synergism in a composition including PM and
DEET as claimed. In re Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979)
("Synergism, in and of itself, is not conclusive of unobviousness in that
synergism might be expected.").
We are not persuaded. Instead, we agree with Appellants that the
Examiner has not provided sufficient factual evidence to support this
position. (See App. Br. 15-16; Reply Br. 3--4.)
We conclude the preponderance of the evidence does not establish
that claim 2 would have been obvious over Karl and Skovmand. We thus
6 The Examiner's determination that evidence of synergism for combinations
of insecticides and repellents other than PM and DEET was required likely
explains why the later-submitted Pennetier Deel. did not provide new testing
data for the elected combination. We note the test methodology in Pennetier
2007 differs from the test methodologies described in the Pennetier Deel.
and the cited examples in the Specification. We decline, however, to revisit
on appeal whether the Examiner was correct in agreeing that Pennetier 2007
evidenced synergism in a composition of PM and DEET.
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reversetherejectionofclaim2. Each of claims 5-7, 10, 12, 13, 16, 17, and
19 depend from claim 2, and thus we reverse as to those claims as well.
SUMMARY
We reverse the rejection of claims 2, 5-7, 10, 12, 13, 16, 17, and 19 as
obvious over Karl and Skovmand.
REVERSED
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