Ex Parte Hungenberg et al

Patent Trial and Appeal Board

Feb 16, 2016

12520565 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/520,565 0612212009
84331 7590 02/18/2016
MMWVIP,LLC
10 NORTH JEFFERSON ST
STE 100
FREDERICK, MD 21701
FIRST NAMED INVENTOR
Heike Hungenberg
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.
2903925-111000 1036
EXAMINER
WAX, ROBERT A
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKE HUNGENBERG and WOLFGANG THIELERT
Appeal2013-004694
Application 12/520,565
Technology Center 1600
Before DEMETRA J. MILLS, JOHN G. NEW, and
ROBERT A. POLLOCK, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a). The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal2013-004694
Application 12/520,565
STATEMENT OF CASE
The following claim is representative.
1. A composition comprising:
A) the compounds
Al) fosetyl-Al,
A2) propamocarb-HCl, in a Al/ A2 weight ratio
ranging from 1/12 to 1211, and
B) an insecticide compound selected from the group
consisting of acetamiprid, clothianidin, dinotefuran,
imidacloprid, imidaclothiz, nitenpyram, nithiazine, thiacloprid,
thiamethoxam and (2E)-I-[ (2-chloro-l,3-thiazol-5-yl)methyl]-
3,5-dimethyl-N-nitro-1,3,5-triazinan-2-imine, in an A/B weight
ratio ranging from 111,000 to 1,000/1.
App. Br. 23 (Claims Appendix).
Cited References
Donnadieu
Schlatter
Grounds of Rejection
US 6,358,938B1
WO 2006/024333 A2
Mar. 19,2002
Mar. 9, 2006
Claims 1, 2, 5-15, 21, and 25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schlatter in view of Donnadieu.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3-11. Claims 22-24 stand withdrawn from further consideration pursuant to
37 CPR 1.142(b), as being drawn to a nonelected species. Answer 3.
Therefore our decision in this appeal is limited to claims directed to the
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elected subject matter. We take no position with respect to the patentability
of the non-elected species. See Ex parte Ohs aka, 2 USPQ2d 1460, 1461
(Bd. Pat. App. & Int. 1987).
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and ( 4) objective
evidence of nonobviousness, if present.
"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).
Inin re Luvisi and Nohe}!,, the Federal Circuit's predecessor court
held that
We do not accept the notion that every suggestion of synergism
in the art coupled with a finding of synergism in the practice of the
invention automatically compels a conclusion of obviousness.
"Synergism" is a very broad term and means "the combined action of
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two or more agents * * * that is greater than the sum of the action of
one of the agents used alone***." Webster's Third New
International Dictionary (1961 ). The definition says nothing at all
about how much "greater." Hence, a synergistic composition could
well be un obvious even though "synergism" is suggested in the prior
art. For example, the claimed compositions may be many times more
synergistic that any of the prior art compositions. Again, some prior
art compositions may show little synergism and others show
considerable synergistic effects, with the net result that predictability
is impossible save the fact that a synergistic result of some kind will
probably be found. The situation before us is a blend of these two
examples, i.e., the prior art compositions display less synergism than
the claimed invention and, more importantly, they display such a
variation in degree of synergistic effects that predictability is
impossible.
342 F2d 102, 109-110 (C.C.P.A. 1965).
The burden of demonstrating unexpected results rests on the party
asserting them, and "it is not enough to show that results are obtained which
differ from those obtained in the prior art; that difference must be shown to
be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). "Unexpected results must be established by factual evidence. Mere
argument or conclusory statements in the specification does not suffice." In
re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). "[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art." In re Baxter-Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Obviousness
We agree with the Examiner's fact finding, statement of the rejection,
and responses to Appellants' arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
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obviousness. We provide the following additional comment to the
Examiner's argument set forth in the Final Rejection and Answer.
Appellants contend that
When faced with so many possible listed combinations, one of
ordinary skill in the art would have no motivation to select either
fosetyl-Al or propamocarb-HCl fungicidal compounds out of the 72
possibilities of fungicides listed in Schlatter, much less combine both
of the fungicidal compounds with the claimed insecticides to obtain
the instant claimed combination at the claimed ratio. In view of the
various other species and possibilities, such a disclosure is not on its
own sufficient for one of ordinary skill to select both fosetyl-Al and
propamocarb-HCl in the first place and, then, subsequently combining
them together in the claimed ratio with a claimed insecticide.
App. Br. 5. We are not persuaded. In Merck & Co. Inc. v. Biocraft
Laboratories Inc., in a case where the prior art patent disclosed a genus of
1200 effective combinations of compounds, including claimed combination,
the Federal Circuit held that, "[d]isclos[ure of] a multitude of effective
combinations does not render any particular formulation less obvious."
Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir.
1989). Claims 1 - 4 Donnadieu disclose the claimed combination of fosetyl-
Al and propamocarb-HCl in similar ratios. Thus we find that the Examiner
has set forth a prima facie case of obviousness on the evidence of record for
the reasons set forth in the Answer.
Appellants further contend that the claimed combination of
compounds provides 'a synergistic effect in comparison to the single
compounds." App. Br. 11; Reply Br. 5. We are not persuaded. Appellants
have failed to provide comparative evidence commensurate in scope with
the pending claims. Ans. 9. Appellants direct our attention to Examples A-
C, Tables 1-3 of the Specification. App. Br. 11-12. In none of the Examples
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A-C or Tables 1-3 is a comparison of the activity of the combination of
fosetyl and propamocarb compared to the claimed combination of fosetyl
and propamocarb and a neonicotinoid insecticide compound, such as
clothianidin. In addition, Appellants fail to provide comparative evidence as
to how the synergy from the combination of fosetyl and propamocarb as
disclosed in Donnadieu compares with the synergistic results of the claimed
combination of pesticide/fungicide compounds. Thus Appellants have failed
to provide conclusive evidence of either synergy or unexpected results on
the evidence before us. Appellants provide separate argument for claims 2,
5-15, 21 and 25. App. Br. 2-20. However, Appellants similarly fail to
provide comparative evidence of synergy or unexpected results with the
closest prior art for the subject matter of these claims.
The obviousness rejection is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed. All pending claims fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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