Ex Parte Kawada et al

Board of Patent Appeals and Interferences

Feb 7, 2008

10498981 (B.P.A.I. Feb. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROSHI KAWADA, MASAJI KIKUTA, RURIKO YOSHIDA,
YOSHINORI TADENUMA and KIYOSHI TANIGUCHI
____________

Appeal 2007-39991
Application 10/498,981
Technology Center 2100
____________

Decided: January 7, 2008
____________

Before DONALD E. ADAMS, LORA M. GREEN,
and RICHARD M. LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 7-19, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Heard January 22, 2008.
Appeal 2007-3999
Application 10/498,981

INTRODUCTION
The claims are directed to a granular herbicide. Claims 7, 8, and 11
are illustrative:
7. A granular herbicide obtained by blending one other herbicide
selected from the following Group A, Group B, Group C, and Group D, or
one other herbicide selected from each of two said Groups, to glufosinate-
ammonium, and depositing the blend on a mineral carrier having a grain size
distribution of from 0.1 to 0.3 mm, wherein said other herbicide is blended
in an amount effective to increase the adherence of the granular herbicide on
foliage compared to the same total amount of glufosinate-ammonium
without said other herbicide, wherein
Group A is a photosynthesis-inhibiting herbicide and is one or two
members selected from the group consisting of isouron, karbutilate, diuron,
tebuthiuron, linuron, cyanazine, prometryn, metribuzin, terbacil and
bromacil,
Group B is a phytohormone herbicide and is one or two members
selected from the group consisting of 2,4-D, MCPA, mecoprop, triclopyr
and their salts and esters,
Group C is a protoporphyrinogen oxidase-inhibiting herbicide and is
one or two members selected from the group consisting of oxadiargyl,
carfentrazone-ethyl, flumioxazin, bifenox and pyraflufen-ethyl, and
Group D is another herbicide and is one or two members selected
from the group consisting of diflufenican, dichlobenil and chlorthiamid.
8. The herbicide according to claim 7, wherein the other herbicide is
from Group A.
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11. The herbicide according to claim 7, wherein the other herbicide is
from Group D.

The Examiner relies on the following prior art references to show
unpatentability:
Hoechst JP 06-078204 B Oct. 1994
(English translation Apr. 12, 20072)

Hacker US 7,012,040 B2 Mar. 14, 2006
(§ 102(e) date Aug. 10, 1999)

(Merck), THE MERCK INDEX AN ENCYCLOPEDIA OF CHEMICALS, DRUGS,
AND BIOLOGICALS 3029 (11th ed., Susan Budavari et al. ed., MERCK & CO.,
INC. 1989).

The rejections as presented by the Examiner are as follows:
1. Claims 7-10 and 12-19 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Hoechst and Hacker.
2. Claim 11 stands rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Hoechst, Hacker, and Merck.
We affirm.

DISCUSSION
1. Claims 7-10 and 12-19 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Hoechst and Hacker.

2 We rely on the English translation of this document. We note, however,
that the English translation of this document is not paginated. Accordingly,
we refer to page numbers as if the document was consecutively paginated
beginning with the first page.
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“Hoechst teaches a micro-granulated powder for watersoluble [sic]
herbicides [including glufosinate] . . . which are coated onto an absorptive
mineral carrier . . . having a grain size of 0.06 – 0.3 mm” (Answer 3-4).
According to Hoechst, granular herbicidal formulations are less effective
than liquid preparations (Hoechst 1: 27-28). Hoechst attributes a number of
reasons for this effect including the finding that particle-like granule
formulations do not adhere to the vegetable (e.g., leafy) surface of the plant
as well as a liquid formulated herbicide (Hoechst 2: 3-4). Hoechst
overcomes the deficiency in particle-like granule formulations by
formulating the herbicides in micro granular form where the herbicides are
absorbed to a mineral having a grain size range of 0.06-0.3 mm (Hoechst 2:
12-16).
Hacker teaches herbicide compositions with an effective content of
(A) a broad-spectrum herbicide such as glufosinate-ammonium3 and (B) one
or more herbicides from the group of consisting of, inter alia, linuron,
cyanazine, and metribuzin (Hacker, Abstract; col. 2, ll. 15-16; col. 8, l. 55;
col. 7, l. 40; col. 8, l. 46; Answer 4).
According to Hacker
it has now been found that active substances from the group of .
. . broad-spectrum herbicides (A) in combination with other
herbicides from group (A) and, if appropriate, specific
herbicides (B) interact especially favorably when they are
employed in the maize crops which are suitable for the selective
use of the first-mentioned herbicides.

3 Hacker, col. 2, ll. 15-16 and col. 4, ll. 47-48 (“Glufosinate is usually
employed in the form of a salt, preferably of the ammonium salt”).
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(Hacker, col. 1, ll. 54-60.) In addition, Hacker discloses that his “invention
therefore relates to the use of herbicide combinations for controlling harmful
plants in maize crops, wherein the herbicide combination in question has a
synergistically active content of” (A) a broad-spectrum herbicide such as
glufosinate-ammonium and (B) one or more herbicides from the group of
consisting of, inter alia, linuron, cyanazine, and metribuzin (Hacker, col. 1,
l. 61 – col. 2, l. 56; cols. 7-8). Stated differently, “[w]hen herbicides of the
type (A)+(B) are used jointly, superadditive (=synergistic) effects are
observed (Hacker, col. 14, ll. 1-2).
Hacker teaches that the compositions may be “applied to the soil
surface before germination” or “applied post-emergence to the green parts of
the plants” (Hacker, col. 13, ll. 40-53). According to Hacker, “[i]n
comparison with the individual preparations, the herbicidal compositions
according to the invention are distinguished by a more rapidly commencing
and longer lasting herbicidal action. As a rule, the rainfastness of the active
substances in the combinations according to the invention is advantageous”
(Hacker, col. 13, ll. 54-59).
Hacker also teaches that the compositions of (A)+(B) can be
formulated in a number of different ways, such as wettable powders,
emulsifiable concentrates, aqueous solutions, emulsions, dusts, see-dressing
materials, granules for soil application or for broadcasting, or water
dispersible granules, ULV formulations, microcapsules, or waxes (Hacker,
col. 16, ll. 9-20).
Based on this evidence the Examiner concludes that
it would have been prima facie obvious to the ordinary artisan
at the time the invention was made to have combined . . .
glufosinate with the claimed secondary herbicides on a solid
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inert carrier within applicants’ claimed size range because the
prior art teaches the combination of such herbicides which are
adsorbed on mineral carriers and formulated as solid
compositions. While each of [A]pplicants’ secondary
herbicidal agents have not been disclosed in the cited prior art,
it is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
purpose in order to form a third composition that is to be used
for the very same purpose; the idea of combining them flows
logically from their having been individually taught in the prior
art.

(Answer 4.)
Appellants present arguments for two groups of claims: I. claims 7, 9,
10, 12, 13, and 15-19; and II. claims 8 and 14 (App. Br. 6). Accordingly, we
limit our discussion to representative claims 7 and 8. 37 C.F.R.
§ 41.37(c)(1)(vii).

Claim 7:

Claim 7 is drawn to a granular herbicide. The granular herbicide of
claim 7 is obtained by blending a so called “other herbicide” which is one or
two herbicides selected from the group consisting of, inter alia, linuron,
cyanazine, and metribuzin with glufosinate-ammonium and depositing the
blend on a mineral carrier. Claim 7 further requires that the mineral carrier
has a grain size distribution of from 0.1 to 0.3 mm. In addition, claim 7
requires that the non-glufosinate-ammonium herbicide is blended in an
amount effective to increase the adherence of the granular herbicide on
foliage compared to the same total amount of glufosinate-ammonium
without the non-glufosinate-ammonium herbicide.
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Appellants assert that their “invention is based on the discovery by
Applicants that when particular other herbicides, known for use mainly for
soil treatment, are blended with glufosinate, and deposited on a mineral
carrier having a grain size distribution of from 0.1 to 0.3 mm, an effective
granular herbicide is obtained” (App. Br. 4). We note, however, that what
Appellants have discovered was suggested in the art. Specifically, a
granular formulation of glufosinate with other herbicides was known in the
art (Hacker, col. 16, ll. 9-20; App. Br. 4-5). More specifically, that granular
herbicidal formulations comprising glufosinate that are deposited on a
mineral carrier having a grain size distribution of from 0.1 to 0.3 mm were
known in the art (Hoechst 2: 12-16; App. Br. 4).4 It was also known in the
art that the combination of glufosinate with other herbicides produces a
synergistic effect (Hacker, col. 1, l. 61 - col. 2, l. 56 and col. 14, ll. 1-2).
Accordingly, we do not find Appellants’ assertion persuasive.
Nevertheless, Appellants direct attention to Tables 1-3 (Specification
14, 16, and 18 respectively) of their Specification where comparative trials
were performed comparing a formulation comprising only glufosinate to
formulations comprising Appellants’ “inventive formulations” (App. Br. 4;
First Reply Br.5 2; Second Reply Br.6 1-2). According to Appellants, the
cited prior art could not have predicted the results they obtain, “whereby a
herbicide mainly used for soil treatment is able to enhance the benefit of

4 “[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004).
5 Received May 22, 2007.
6 Received May 31, 2007.
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glufosinate as a foliage-acting herbicide” (App. Br. 5). We disagree. As
discussed above, Hacker teaches that the combination of glufosinate with
other herbicides, including herbicides mainly used for soil treatment,
produce a synergistic effect (Hacker, col. 1, l. 61 - col. 2, l. 56 and col. 14, ll.
1-2). Accordingly, contrary to Appellants’ assertion, the prior art did predict
the synergistic effect of the combination of herbicides as reported in the
comparative trials set forth in Appellants’ Specification.
We are not persuaded by Appellants’ argument that they have
discovered that “the other herbicide [(e.g., the non-glufosinate herbicide)]
enhances the ability of the glufosinate-ammonium to adhere to foliage”
(App. Br. 5). As discussed above, Hoechst was interested in overcoming the
problems with granular herbicidal formulations adhering to the foliage of a
plant (Hoechst 2: 3-4). To overcome this deficiency Hoechst prepared micro
granular herbicidal formulations (Hoechst 2: 12-16). In addition, Hacker
teaches granular herbicidal formulations within the scope of Appellants’
claimed invention that can be applied to the green parts of the plants to
achieve synergistic herbicidal effect (Hacker, col. 13, ll. 40-53; col. 1, l. 61 -
col. 2, l. 56 and col. 14, ll. 1-2).
While Appellants’ Specification speaks of the prevention of the
deterioration of the effect of glufosinate due to a change in climate, e.g.,
humidity (Specification 19: 1-10; Br. 4); Hacker teaches that “[i]n
comparison with the individual preparations, the herbicidal compositions
according to the invention are distinguished by a more rapidly commencing
and longer lasting herbicidal action. As a rule, the rainfastness of the active
substances in the combinations according to the invention is advantageous”
(Hacker, col. 13, ll. 54-59). Thus, the advantage of preventing deterioration
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of the effect of glufosinate due to change in climate as relied upon by
Appellants is taught by the prior art.
On reflection, we affirm the rejection of claim 7 under 35 U.S.C
§ 103(a) as unpatentable over the combination of Hoechst and Hacker.
Claims 9, 10, 12, 13, and 15-19 fall together with claim 7.

Claim 8:

Claim 8 depends from and further limits the “other herbicide” of
claim 7 to a Group A herbicide, which is one or two members selected from
the group consisting of isouron, karbutilate, diuron, tebuthiuron, linuron,
cyanazine, prometryn, metribuzin, terbacil, and bromacil.
According to Appellants, claim 8 is “separately patentable, in view of
the great variety of Group A ‘other’ herbicides exemplified. See
Formulation Examples 1 through 6” (App. Br. 6). We are not persuaded.
Hacker teaches herbicide compositions with an effective content of
(A) a broad-spectrum herbicide such as glufosinate-ammonium and (B) one
or more herbicides from the group of consisting of, inter alia, linuron,
cyanazine, and metribuzin (Hacker, Abstract; col. 2, ll. 15-16; col. 8, l. 55;
col. 7, l. 40; col. 8, l. 46; Answer 4). Linuron, cyanazine, and metribuzin are
Group A herbicides according to Appellants’ claimed invention.
While Hacker describes a number of “other herbicides” that may be
combined with glufosinate-ammonium, a person of ordinary skill in the art is
free to select any of these “other herbicides” for the purposes taught by
Hacker, e.g., to produce a synergistically effective composition of
glufosinate-ammonium and other herbicide.
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As the evidence relied upon teaches a granular herbicide within the
scope of Appellants’ claimed invention we affirm the rejection of claim 8
under 35 U.S.C § 103(a) as unpatentable over the combination of Hoechst
and Hacker. Claim 14 falls together with claim 8.

2. Claim 11 stands rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Hoechst, Hacker, and Merck. Claim 11 depends from
and further limits the “other herbicide” of claim 7 to a Group D herbicide,
which is one or two members selected from the group consisting of
diblufenican, dichlobenil and chlorthiamid.
The Examiner relies on Hoechst and Hacker as set forth above
(Answer 5). The Examiner recognizes, however, that the combination of
Hoechst and Hacker fails to teach dichlobenil (id.). To make up for this
deficiency the Examiner relies on Merck to teach “that dichlobenil as [sic]
useful as [a] herbicide” (id.).
Based on this evidence the Examiner concludes that “[i]t would have
been obvious to one of ordinary skill in the art at the time of invention to
combine dichlobenil and glufosinate together as a single herbicide
composition” because “both agents are known to be useful as [sic] herbicide
individually, combining both agents into a single composition useful for the
very same purpose would be prima facie obvious” (id.). We find no error in
the Examiner’s prima facie case of obviousness.
Appellants assert that the cited prior art could not have predicted the
results they obtain, “whereby a herbicide mainly used for soil treatment is
able to enhance the benefit of glufosinate as a foliage-acting herbicide”
(App. Br. 5). We disagree for the reasons set forth above. While Hacker
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and Hoechst do not expressly teach a composition comprising diflufenican,
dichlobenil, and chlorthiamid – Group D herbicides according to Appellants’
claimed invention - Hacker teaches herbicidal combinations that are
synergistically active, and exemplifies a number of specific herbicides that
when combined with glufosinate-ammonium exhibit synergistic activity
(Hacker, col. 1, l. 61 - col. 2, l. 56).
For the reasons set forth above, there is no evidence on this record that
one would not have expected the same or similar synergistic activity when
glufosinate-ammonium was combined with dichlobenil. “Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982). Moreover, “[w]hen there is a design need or market pressure to solve
a problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense. In
that instance the fact that a combination was obvious to try might show that
is was obvious under § 103.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1742(2007).

Accordingly, we affirm the rejection of claim 11 under 35 U.S.C
§ 103(a) as unpatentable over the combination of Hoechst, Hacker, and
Merck.

CONCLUSION
In summary, we affirm the rejections of record.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED
lp

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA VA 22314

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