Ex Parte Kibler et al

Board of Patent Appeals and Interferences

Apr 20, 2011

10522097 (B.P.A.I. Apr. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ELMAR KIBLER, WILLIAM B. O’NEAL,
MATTHIAS WITSCHEL, HERVE R. VANTIEGHEIM,
and DAN E. WESTBERG
__________

Appeal 2010-007865
Application 10/522,097
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
herbicidal mixture and to methods of its preparation and use. The Examiner
has rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Appeal 2010-007865
Application 10/522,097

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STATEMENT OF THE CASE
Claims 1, 25, 26, and 30-37 are on appeal (App. Br. 2). The claims
have not been argued separately and therefore stand or fall together. 37
C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and reads as follows:
1. A synergistic herbicidal mixture comprising
A) 4-[2-methyl-3-(4,5-dihydroisoxazol-3-yl)-4-methylsulfonyl-
benzoyl]-1-methyl-5-hydroxy-1H-pyrazole or one of its environmentally
compatible salts; and
B) clopyralid or one of its environmentally compatible salts;
and,
C) at least one herbicidal compound selected from the group
consisting of sulfonamide and triazine or their environmentally compatible
salts; wherein said sulfonamide is selected from the group consisting of
florasulam, flumetsulam and metosulam and said triazine is selected from
the group consisting of ametryn, atrazine, cyanazine, desmetryn,
dimethamethryn, prometon, prometryn, propazine, simazine, simetryn,
terbumeton, terbutryn, terbutylazine and trietazine,
in a synergistically effective amount.
Claims 1, 25, 26, and 30-37 stand rejected under 35 U.S.C. § 103(a)
as obvious over Sievernich et al. (CA 2,334,955 A1, Dec. 23, 1999)
(Ans. 4).
ISSUE
Does the evidence support the Examiner’s conclusion that the mixture
of claim 1 would have been obvious?
FINDINGS OF FACT
1. Sievernich discloses “synergistic herbicidal mixtures containing
A) at least one 3-heterocyclyl-substituted benzoyl derivative of formula (I)
. . . ; and B) a synergistically effective quantity of at least one herbicidal
compound from” a specified group (Sievernich, Abstract).
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2. As component A, Sievernich discloses that 4-[2-methyl-3-
(4,5-dihydroisoxazol-3-yl)-4-methylsulfonyl-benzoyl]-1-methyl-5-hydroxy-
1H-pyrazole is “[m]ost particularly preferred” (id. at 20).
3. As component B, Sievernich discloses that the preferred
compounds include flumetsulam, clopyralid, and atrazine (id. at 20-22).
4. Sievernich also discloses that, in a “particular embodiment, the
synergistic herbicidal mixture comprises, as component A, a 3-heterocyclyl-
substituted benzoyl derivative of the formula I and, as component B, two
herbicidal compounds” (id. at 34).
PRINCIPLES OF LAW
“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991). “An assertion of what seems to follow
from common experience is just attorney argument and not the kind of
factual evidence that is required to rebut a prima facie case of obviousness.”
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
ANALYSIS
Sievernich discloses “synergistic herbicidal mixtures containing A) at
least one 3-heterocyclyl-substituted benzoyl derivative of formula (I),”
which is preferably 4-[2-methyl-3-(4,5-dihydroisoxazol-3-yl)-
4-methylsulfonyl-benzoyl]-1-methyl-5-hydroxy-1H-pyrazole, “and B) a
synergistically effective quantity of at least one herbicidal compound”
selected from a group that includes flumetsulam, clopyralid, and atrazine
(Finding of Facts (FF) 1-3). In addition, Sievernich specifically discloses a
ternary mixture comprising, “as component A, a 3-heterocyclyl-substituted
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benzoyl derivative of the formula I and, as component B, two herbicidal
compounds” (FF 4). Based on these disclosures, we agree with the
Examiner that the herbicidal mixture of claim 1 would have been prima facie
obvious.
Appellants point to some examples set forth in their Specification,
which are purported to demonstrate the “synergistic effect of the third
component on top of the binary mixture’s” synergistic effect (App. Br. 13-
14). Appellants argue that “Sievernich does not describe or suggest a second
synergistic effect which boosts the already present synergistic effect between
the two main active ingredients” (id. at 12). However, Appellants have not
demonstrated, through, for example, comparative examples, that this is not
merely an inherent effect of the ternary composition generically described in
Sievernich (FF 4). In addition, Appellants have not pointed to any evidence
demonstrating that this second synergistic effect would not have been
expected based on the teachings in Sievernich. Thus, we do not agree with
Appellants that the evidence of record is sufficient to rebut the prima facie
case of obviousness.
CONCLUSION
The evidence supports the Examiner’s conclusion that the mixture of
claim 1 would have been obvious. We therefore affirm the obviousness
rejection of claim 1 and of claims 25, 26, and 30-37, which fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
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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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