Ex Parte Huang et alDownload PDFPatent Trials and Appeals BoardMay 24, 201913613789 - (D) (P.T.A.B. May. 24, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/613,789 09/13/2012 Yi-hsiou Huang 115453 7590 05/29/2019 Dow AgroSciences LLC Meunier Carlin & Curfman, LLC 999 Peachtree Street NE Suite 1300 Atlanta, GA 30309 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. 10284-084US 1 7437 EXAMINER HOLT,ANDRIAEM ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 05/29/2019 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): docketing@mcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YI-HSIOU HUANG and RICHARD K. MANN Appeal2018-005573 Application 13/613,789 Technology Center 1600 Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and JOHN G. NEW, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the Examiner's decision to reject claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 The Appeal Brief lists Dow Agro Sciences LLC, the assignee of record, as the real party in interest. Appeal Br. 3. We have considered, and herein refer to, the Specification of Sept. 13, 2012 ("Spec."); Final Office Action of Jan. 11, 2017 ("Final Act."); Appeal Brief of July 13, 2017 ("Appeal Br."); Examiner's Answer of Mar. 8, 2018 ("Answer"); and Reply Brief of May 8, 2018 ("Reply Br."). Appeal2018-005573 Application 13/613,789 STATEMENT OF THE CASE The Specification explains that "herbicidal active ingredients have been shown to be more effective in combination than when applied individually and this is referred to as 'synergism' ... [ which is] 'an interaction of two or more factors such that the effect when combined is greater than the predicted effect based on the response to each factor applied separately."' Spec. 1. Specifically, the Specification describes "synergistic herbicidal compositions containing (a) penoxsulam and (b) pretilachlor." id. Claims 1, 5-15, 17-19, and 21-27 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Appeal Br. 19. Claim 1 is representative of the claims on appeal, and reads as follows: 1. A synergistic herbicida1 mixture comprising a herbicidally effective amount of (a) penoxsulam and (b) pretilach1or, wherein the weight ratio of pretilachlor to penoxsulam is from 36:lto72:L Appeal Br. 19 (Claims Appendix). Appellant requests review of Examiner's rejection of claims 1, 5-15, 17-19, and 21-27 under 35 U.S.C. § 103 (a) as being obvious over Yang,2 RD451017 A, 3 Loughner, 4 and Solnet. 5 Final Act. 3-10. 2 CN 101647450 A, February 17, 2010 ("Yang"). Citations are to the English translation filed September 14, 2015. 3 Derwent Abstract for RD 451017 A, November 10, 2001 ("RD451017 A"). 4 US 2006/0183637 Al, August 17, 2006 ("Loughner"). 5 Solnet (Pretilachlor) Product Sheet, 1998 ("Solnet"). 2 Appeal2018-005573 Application 13/613,789 ()lrviousness over Yang, RD451017A, Loughner, and Solnet. Examiner found that Yang teaches a "herbicidal composition comprising penoxsulam and other herbicide B compounds including pretilachlor, wherein the weight ratio ... is 1:1 to 1:99." Final Act. 7. Examiner found that "[t]he compositions [of Yang] have obvious synergistic effect and are ideal herbicide for controlling herbs in rice fields." Id. Examiner found that although Yang teaches that the preferred weight ratio of penoxsulam to pretilachlor is 1:5 to 1:30, "[o]ne skilled in the art at the time the invention was made would have been motivated to use any weight ratio of penoxsulam to pretilachlor that falls within the range of 1: 1 to 1 :99 ." Id. Examiner found "[ o ]ne skilled in the art would use the teaching of Yang [] and adjust the weight ratios to obtain optimal results." Id. Examiner concludes that one "would expect to obtain synergistic results within the weight ratio of 1: 1 to 1 :99 ," as Yang specifically teaches that "the compositions provide synergistic results within this weight ratio range." Id. Appellant argues that "[ n ]othing in Yang would have led one skilled in the art to modify the compositions in Yang to include a higher weight ratio of pretilachlor to penoxsulam" and that "Yang provides no suggestion that synergy would be observed for the specific combination of penoxsulam and pretilachlor, and particularly at the claimed ratios." Appeal Br. 9, 12. Appellant also contends that the "currently claimed weight ratio of pretilachlor to penoxsulam of from 36: 1 to 72: 1 exhibit unexpectedly improved herbicidal activity relative to compositions that include penoxsulam and pretilachlor at a 1 :5 to 1 :30 weight ratio, such as those described in Yang." Id. at 10. The issues with respect to this rejection is whether the preponderance 3 Appeal2018-005573 Application 13/613,789 of the evidence of record supports Examiner's conclusion that the combination of references renders the claimed herbicidal composition obvious. Findings of Fact FF 1. Yang teaches "herbicidal compositions comprising penoxsulams for [ application to a] rice field" and particularly teaches that the composition "comprise the mixture of active ingredients A and herbicide B in the ratio of 1: 1-1 :99, wherein herbicide Bis selected from butachlor, pretilachlor, mefenacet, bentazone, mesotrione or oxadiargyl." Yang 11 ( emphasis added). FF2. Yang teaches "[t]he compositions have obvious synergistic effect and are ideal herbicide for controlling herbs in [a] rice field." Id. FF3. Yang teaches that when the herbicide B is pretilachlor, "the weight ratio of A:B=l :5-1 :30." Id. at 5. FF4. Yang teaches a specific embodiment made from 2 kg penoxsulam and 40 kg pretilachlor prepared as a suspension of 42% penoxsulam:pretilachlor. Id. at 6-7. FF5. Yang teaches that "[p]retilachlor is selective pre-emergence agent" (id. at 2) and that the formulations "can both kill herbs that have come out of the earth and that have not." Id. at 4. FF6. Yang teaches the compositions can be formulated into a granule, and that granule compositions can have added adjuvants. Id. at 5---6. FF7. RD451017 teaches a "[ s ]ynergistic and selective herbicidal 4 Appeal2018-005573 Application 13/613,789 agent comprises a pretilachlor, at least one co-herbicide and usual formulation auxiliary materials." RD451017 1. FF8. RD451017 teaches penoxsulam as a co-herbicide, and fertilizers as additives in the herbicidal compositions. Id. at 2. FF9. Loughner teaches that "[h ]erbicidal activity is exhibited by penoxsulam when it is applied directly to the plant or to the locus of the plant at any stage of growth or before planting or emergence." Loughner ,r 12. FFlO. Loughner teaches "[a]pplication rates of about 5 to about 280 grams of active ingredient per hectare (gai/Ha) are generally employed in postemergence operations with about 20 to about 180 gai/Ha being preferred; for preemergence applications, rates of about 4 to about 140 gai/Ha are generally employed with about 9 to about 70 gai/Ha being preferred." Id. ,r 13. FF 11. Loughner teaches that "penoxsulam, when delivered on a granule [ of] a nitrogen fertilizer or one that contains nitrogen, phosphorus or potassium, gave unexpected weed control." Id. i122. FF12. Solnet teaches that the action of pretilachlor on weeds is pre- emergence. Solnet 1. Principle of Law [T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the 5 Appeal2018-005573 Application 13/613,789 record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Analysis We agree with, and adopt, Examiner's finding concerning the scope and content of the prior art, as well as the conclusions as set out in the Final Action and Answer. Appellant contends that Yang describes mixtures that include pretilachlor and penoxsulam at a ratio of 5: 1 to 30: 1, and only describes one example of a formulation at a weight ratio of 20: 1. Appellant asserts that nothing in Yang would have led one skilled in the art to include a higher weight ratio. Appeal Br. 9. As pointed out by Examiner, although a preferred embodiment in Yang includes penoxsulam to pretilachlor at a ratio of 1 :5 to 1 :30, Yang also teaches that the compositions provide obvious synergistic effect at weight ratios ranging from 1:1 to 1:99. Ans. 4; FF1-FF2. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). Furthermore, "it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCP A 1955). Therefore, we agree with Examiner's conclusion that the 6 Appeal2018-005573 Application 13/613,789 claimed combination of penoxsulam and pretilachlor in the claimed ratios would have been prima facie obvious. Unexpected Results Appellant contends that the claimed weight ratio of pretilachlor to penoxsulam of from 36: 1 to 72: 1 exhibits unexpectedly improved herbicidal activity compared to the compositions described in Yang. Appeal Br. 9-10. As proof of this assertion, Appellant cites Tables 1 and 2 of the Specification. We are not persuaded. "To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention." Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). Examiner found, and we agree, that the differences in herbicidal activity cited by Appellant as evidence of unexpected results are due to the particular penoxsulam application rates chosen, and not the claimed weight ratios. Ans. 8. For example, Appellant cites Table 2 showing 65% control of Echinochloa crus-galli weed when using a 36: 1 ratio, as compared to the expected level of weed control predicted by the Colby equation of 7%. Appeal Br. 11. This difference between expected and observed weed control is characterized by Appellant as a "very large improvement," while an 18: 1 ratio showed a "moderate improvement" of 98% control, from an expected level of 80%. Id. at 10-11. However, this comparison involves different application rates of penoxsulam of 7 .5 gr ai/ha and 15 gr ai/ha, respectively. Table 2 of the Specification also shows that the claimed weight ratio of 36:1, 7 Appeal2018-005573 Application 13/613,789 when applied at 15 gr ai/ha of penoxsulam, provides the same supposedly "moderate improvement" in weed control as found with the 18:1 ratio, i.e., 98% control compared to an expected value of 80%. Thus, the data in Table 2 of the Specification demonstrate that the claimed ratio of 36: 1 provides for the exact same level of weed control as an 18:1 ratio. Therefore, there is no persuasive demonstration that the claimed ratio of 36: 1-72: 1 provides better herbicidal activity than Yang's preferred ratio of 5: 1-30: 1, or Yang's exemplified ratio of 20: 1. Appellant also argues that the generic suggestion of synergy by Yang would not be sufficient to lead an ordinary artisan to reasonably expect that synergy would be observed for the instantly claimed compositions. Appellant contends that synergism can overcome prima facie obviousness, even when the prior art broadly suggests synergism may be expected, citing to In re Luvisi, 342 F.2d 102 (CCPA 1965) and the Board's decision in Ex parte Suty-Heinze, Appeal No. 2012-012281 (BPAI March 12, 2015). Again, we are unpersuaded. In In re Luvisi, evidence was presented that the claimed composition exhibited a greater degree of synergy than the prior art. No such evidence is presented in the present case for the reasons set forth supra. Furthermore, as pointed out by Examiner, the fact pattern in Ex parte Suty-Heinze is not analogous to the instant case, since the reference at issue in Ex parte Suty-Heinze did not specifically disclose the claimed combination. Ans. 9. Here, the specific combination of penoxsulam and pretilachlor is disclosed by Yang, as well as a suggestion of effective ratios. FFl, FF3-FF4. We conclude that a preponderance of the evidence supports the Examiner's conclusion of obviousness. 8 Appeal2018-005573 Application 13/613,789 Claim 9 Appellant argues claim 9 separately, asserting that the references, alone or in combination, do not disclose or suggest the application of mixtures of penoxsulam and pretilachlor preemergence to early postemergence. Appeal Br. 14--15. Appellant contends that Yang exclusively describes applying penoxsulam and pretilachlor at a weight ratio of 20: 1 in "direct rice seeding," which does not provide any indication of pre-emergent or post-emergent application of an herbicide. Id. Appellant further contends that the other cited references fail to cure the deficiencies of Yang. Id. We are not persuaded. As pointed out by Examiner, Yang teaches that pretilachlor is a selective pre-emergent agent, and Loughner teaches that penoxsulam can be applied directly to the plant or to the locus of the plant at any stage of growth or before planting or emergence. Ans. 12; FF5, FF9. Yang also teaches that the obtained formulations "can both kill herbs that have come out of the earth and [those] that have not" (FF5), which is a clear suggestion by Yang that the formulations are effective for both preemergence and early postemergence applications. Claim 25 Appellant argues that the references do not suggest a solid carrier comprising a fertilizer as recited in claim 25. Appeal Br. 16. Appellant argues one of ordinary skill would not modify the compositions in Yang, which are described for control of undesirable vegetation in rice, to include fertilizer as a solid carrier based on Loughner's compositions, because Loughner exclusively describes the compositions in the context of turf grass management. Id. Appellant also contends that the selection of a fertilizer 9 Appeal2018-005573 Application 13/613,789 from Loughner involves picking and choosing and the use of improper hindsight reasoning based on Appellant's disclosure. Id. Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Appellant has not directed us to what teaching could only have been gleaned from the present disclosure and not from the prior art in order to support the contention that Examiner has impermissibly relied on hindsight. We are also not persuaded by Appellant's argument regarding picking and choosing, since "picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence." In re Arkley, 455 F.2d 586,587 (CCPA 1972). Here, Yang teaches dosage forms, including granules, and Loughner teaches penoxsulam, when delivered on a granule nitrogen fertilizer gave unexpected weed control. FF6, FF 11. While Loughner relates to turf grass management, Appellant has not provided persuasive evidence or reasoning as to why this would not be seen as obvious in the context of other applications, such as for example to rice plants. In fact, RD 451017 A, specifically teaches mixtures of co-herbicides, including pretilachlor and penoxsulam, with additives e.g., fertilizers, for use in rice. FF7-8. Accordingly, we are not persuaded by Appellant's contentions. 10 Appeal2018-005573 Application 13/613,789 SUMMARY We affirm the rejection under 35 U.S.C. § 103(a). 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 11 Copy with citationCopy as parenthetical citation