Ex Parte Kohn et al

Patent Trials and Appeals Board

Jun 25, 2019

13319328 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/319,328 01/18/2012 Frank C. Kohn
73905 7590 06/27/2019
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
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.
MONS:233US 7085
EXAMINER
KOV ALENKO, MYKOLA V
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK C. KOHN and MICHAEL S. SOUTH
Appeal 2018-001167
Application 13/319,328 1
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-5, 7-10, 15,
16, and 18-27 (Ans. 2 3). Examiner entered rejections under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify "Monsanto Company, the parent company of assignee
Monsanto Technology LLC" as the real party in interest (Appellants' April
14, 2017 Appeal Brief(App. Br.) 1).
2 Examiner's Answer mailed September 12, 2017.
Appeal 2018-001167
Application 13/319,328
STATEMENT OF THE CASE
Appellants' disclosure "relates generally to methods for treating plant
diseases and enhancing crop yield" (Spec. 1: 11-12). Claims 1, 7, 8, 20, and
23 are representative and reproduced below:
1. A method for treating Soybean Sudden Death Syndrome
compnsmg:
a) identifying a soybean plant in a field infected with
Fusarium virguliforme or Fusarium tucumaniae, the
causal agents of Soybean Sudden Death Syndrome; and
b) treating the soybean plant with a formulation or mixture
comprising glyphosate, whereby symptoms of Soybean
Sudden Death Syndrome are suppressed by glyphosate;
wherein the field contains propagules of Fusarium
virguliformae or Fusarium tucumaniae prior to or subsequent to
planting, or subsequent to planting but prior to growth stage RI;
and
wherein glyphosate is applied to the soybean plant after
infection by Fusarium virguliformae or Fusarium tucumaniae.
(App. Br. 13).
7. The method of claim 1, wherein the soybean plant comprises
a transgene encoding a polypeptide with glyphosate-tolerant 5-
enolpyruvylshikimate-3-phosphate synthase (EPSPS) activity.
(Id. at 14).
(Id.).
(Id.).
8. The method of claim 7, wherein the soybean plant is tolerant
to at least one other herbicide selected from the group
consisting of glufosinate, dicamba, and an 4-
hydroxyphenylpyruvate dioxygenase (HPPD)-inhibitor.
20. The method of claim 1, wherein the formulation or mixture
further comprises pyraclostrobin.
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Application 13/319,328
23. The method of claim 1, wherein the formulation or mixture
further comprises picoxystrobin.
(Id. at 15).
Grounds of rejection before this Panel for review:
Claims 1-5, 7, 9, 10, 15, 16, 18, 19, 26, and 27 stand rejected under
35 U.S.C. § I03(a) as unpatentable over the combination of Clinton, 3
Sano go 2000, 4 and Scandiani. 5
Claim 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Clinton, Sano go 2000, Scandiani, and Pallett. 6
Claims 20-25 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Clinton, Sano go 2000, Scandiani, and Asrar. 7
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Clinton:
[P]rovides a method of preventing disease in a glyphosate
tolerant crop plant by a pathogen where the method comprises,
identifying a crop plant at risk of pathogen infection, and
3 Clinton et al., US 2005/0223425 Al, published Oct. 6, 2005.
4 Sanogo et al., Effects of Herbicides on Fusarium solanif sp. Glycines and
Development of Sudden Death Syndrome in Glyphosate-Tolerant Soybean,
90 PHYTOPATHOLOGY 57----66 (2000).
5 Scandiani et al., Recent Outbreak of Soybean Sudden Death Syndrome
Caused by Fusarium virguliforme and F. tucumaniae in Argentina, 88
PLANT DISEASE JOURNAL 1044--1045 (2004).
6 Pallett et al., US 7,250,561 Bl, issued July 31, 2007.
7 Asrar et al., US 7,098,170 B2, issued Aug. 29, 2006.
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Application 13/319,328
contacting at least a portion of the crop plant with an effective
amount of glyphosate to prevent infection of the plant by a
plant pathogen.
(Clinton ,r 8; see also Spec. 17: 5-11, 18: 16-21, 25-30, and 46-56; see
generally Ans. 4--5.)
FF 2. Clinton's:
[M]ethod for the prevention of infection in a soybean[] ...
generally involves applying an effective amount of a glyphosate
composition to a soybean[] ... plant, or part thereof to prevent
infection of the plant. In one preferred aspect, the soybean[] ...
plants are glyphosate tolerant. One particularly preferred aspect
provides methods for preventing the infection of soybean[] ...
plants by fungal pathogens.
(Clinton ,r 55; see generally Ans. 4--5.)
FF 3. Clinton's:
[M]ethod[] for controlling weeds and pathogens in a field crop
comprises the steps of (a) planting a crop in a field, (b)
substantially freeing the field of non-crop plants by applying an
herbicidal composition and ( c) thereafter control, prevent or
treat disease by applying a glyphosate composition. In such a
method, it should be appreciated that the steps of planting and
substantially freeing can be interchanged.
(Clinton ,r,r 63, 75 (Clinton discloses "[t]he selection of application rates that
are effective for a specific plant pathogen is within the skill of the ordinary
agricultural scientist" and that "[t]hose of skill in the art will likewise
recognize that individual plant conditions ... and growing conditions, as
well as the specific pathogen and glyphosate composition selected, will
influence the degree of biological effectiveness achieved in practicing this
invention."); see generally Ans. 5.)
FF 4. Clinton's "method ... can be used to control, prevent or treat
infection from a wide array of plant pathogens that include obligate
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Application 13/319,328
parasites, facultative parasites, and facultative saprophytes, which include,
but are not limited to ... Fusarium species." (Clinton ,r 89).
FF 5. Clinton does not disclose, inter alia, a method of treating F.
virguliformae and F. tucumaniae or that "these two species of Fusarium ...
caus[e] soybean SDS [sudden death syndrome]." (Ans. 5).
FF 6. Sano go 2000 discloses that "[ s ]udden death syndrome of soybean,
caused by Fusarium solani f. sp. glycines, is a disease of increasing
economic importance in the United States." (Sanogo 2000, Abstract; see
generally Ans. 6).
FF 7. Sano go 2000 evaluated the "herbicides []lactofen, glyphosate, and
imazethapyr[,] commonly used in soybean[,] for their effects on the
phenology of F. solani f. sp. glycines and the development of sudden death
syndrome in four soybean cultivars varying in resistance to the disease and
in tolerance to glyphosate" (Sanogo 2000, Abstract; see id. at 57 (Sanogo
2000's glyphosate is "Roundup Ultra"); id. at 64 ("The impetus for
examining the interaction of F. solani f. sp. glycines with glyphosate-tolerant
soybeans emanated from concerns raised about the perceived increase in
prevalence of sudden death syndrome in such cultivars after application of
glyphosate."); see generally Ans. 6).
FF 8. Sanogo 2000 discloses that although
[ c] onidial germination, mycelial growth, and sporulation in
vitro were reduced by glyphosate[], [i]n growth-chamber and
greenhouse experiments, there was a significant increase in
disease severity and frequency of isolation of F. solani f. sp.
glycines from roots of all cultivars after application of ...
glyphosate compared with the control treatment (no herbicide
applied).
(Sano go 2000, Abstract; see also generally Ans. 6.)
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FF 9. Sano go 2000 discloses that "severity of sudden death syndrome and
isolation frequency were lower in disease-resistant than in susceptible
cultivars" and "that glyphosate-tolerant and -nontolerant cultivars respond
similarly to infection by F. solani f. sp. glycines after herbicide application"
(Sanogo 2000, Abstract; id. at 64 ("Results suggest that glyphosate-tolerant
and -nontolerant cultivars respond similarly to infection by F. solani f. sp.
glycines after herbicide application."); see generally Ans. 6).
FF 10. Sano go 2000 discloses that
[ s ]tresses imposed by herbicides in conjunction with physical
factors can indirectly lead to increased disease in crops [].
Indeed, herbicide stress weakens and predisposes plants to rapid
fungal colonization[]. Conceptually, the use of herbicide-
tolerant crops, such as glyphosate-tolerant soybeans, could
reduce damage from herbicide stress-related diseases that are
observed in conventional cultivars after herbicide application[].
However, it appears ... that glyphosate tolerance does not
translate into stress reduction to a level that minimizes sudden
death syndrome in glyphosate-tolerant cultivars after
glyphosate application compared with glyphosate-tolerant
or -nontolerant cultivars sprayed with imazethapyr or lactofen.
The existence of herbicide stress could explain the significant
increase in disease severity and pathogen isolation frequency
following application of glyphosate.
(Sanogo 2000; id. at 64 ( endnotes omitted); see generally Ans. 6.)
FF 11. Scandiani discloses that "[s]udden death syndrome [(SDS)] of
soybean [is] caused by Fusarium solani f. sp glycines" and "represents
several morphologically and phylogenetically distinct species, including F.
tucumaniae in Argentina and F. virguliforme in the United States."
(Scandiani, Abstract; see generally Ans. 6).
FF 12. Examiner finds that the combination of Clinton, Sanogo 2000 and
Scandiani "do not teach a soybean plant that is tolerant to glyphosate due to
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Application 13/319,328
the presence of a tolerant EPSPS polypeptide and also tolerant to at least one
other herbicide," and relies on Pallett to make up for this deficiency in the
combination of Clinton, Sano go 2000, and Scandiani. (Ans. 8).
FF 13. Examiner finds that the combination of Clinton, Sano go 2000, and
Scandiani "do not teach [a] method[], wherein the formulation mixture ...
comprises pyraclostrobin ... or picoxystrobin ... at a rate of about 0.01 kg
ai/ha to 1 kg ai/ha," and relies on Asrar to make up for this deficiency in the
combination of Clinton, Sano go 2000, and Scandiani. (Ans. 10).
ANALYSIS
The rejection over the combination of Clinton, Sanogo 2000, and Scandiani:
Appellants' claim 1 is reproduced above. Appellants' claims 2-5, 7,
9, 10, 15, 16, 18, 19, 26, and 27 depend directly or indirectly from
Appellants' claim 1.
Based on the combination of Clinton, Sano go 2000, and Scandiani,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious to modify Clinton's method according
to Sanogo 2000, wherein glyphosate is applied to glyphosate-resistant
EPSPS soybean plants at a standard application rate, either before infection
or shortly after infection with F. virguliformae or F. tucumaniae, to control
the germination and mycelial growth of the pathogens and thereby control
soybean SDS. (Ans. 6-7). We are not persuaded.
Although Clinton discloses the administration of glyphosate to treat
Fusarium infection of soybean, Examiner fails to identify a disclosure in
Clinton of the treatment of soybean SDS (see FF 1-5). Nonetheless, Sanogo
2000 discloses that "[ s ]udden death syndrome of soybean, caused by
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Fusarium solani f. sp. glycines, is a disease of increasing economic
importance in the United States" (FF 6). In addition, Scandiani explains that
Fusarium solani f. sp glycines "represents several morphologically and
phylogenetically distinct species, including F. tucumaniae in Argentina and
F. virguliforme in the United States" (FF 11 ).
Sanogo 2000, however, makes clear that "there was a significant
increase in disease severity and frequency of isolation of F. solani f. sp.
glycines from roots of all cultivars after application of ... glyphosate
compared with the control treatment (no herbicide applied)" (FF 8; see also
App. Br. 3 ("Examiner in fact admits that 'Sanogo ... teach[es] that
glyphosate could increase disease severity.'")). As Sanogo 2000 explains,
"[ s ]tresses imposed by herbicides in conjunction with physical factors can
indirectly lead to increased disease in crops. Indeed, herbicide stress
weakens and predisposes plants to rapid fungal colonization" (FF 10).
Although, "[ c ]onceptually, the use of herbicide-tolerant crops, such as
glyphosate-tolerant soybeans, could reduce damage from herbicide stress-
related diseases that are observed in conventional cultivars after herbicide
application," "it appears ... that glyphosate tolerance does not translate into
stress reduction to a level that minimizes sudden death syndrome in
glyphosate-tolerant cultivars after glyphosate application compared with
glyphosate-tolerant or -nontolerant cultivars sprayed with imazethapyr or
lactofen" (id.).
For the foregoing reasons, we agree with Appellants' contention that
"Sanogo 2000 cannot support the rejection [presented on this record] and
instead leads a skilled worker to conclude that glyphosate treatment
increases SDS severity" (App. Br. 5 ("If anything, [the] combination of
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Application 13/319,328
Sano go 2000 with Clinton teaches away from any expectation of success
with respect to treatment of SDS.")). We also agree with Appellants'
contention that Scandiani' s "taxonomic teaching also fails to cure the defect
in Clinton, by not providing information on treatment of SDS" (Id.).
We are not persuaded by Examiner's assertion that "there is no
evidence [of record] that either F. virguliforme and/or F. tucumaniae or any
other organisms that might be encompassed by Fusarium solani f. sp.
glycines are resistant to glyphosate" and, thus, "one would have reasonably
expected that a pathogenic isolate of Fusarium solani f sp. glycines would be
susceptible to field rates of glyphosate regardless of a specific species
composition of said isolate" (Ans. 14--15). Examiner's assertion, however,
fails to account for Sanogo 2000's disclosure that "herbicide stress weakens
and predisposes plants to rapid fungal colonization" and "that glyphosate
tolerance does not translate into stress reduction to a level that minimizes
sudden death syndrome in glyphosate-tolerant cultivars after glyphosate
application" (FF 10; see also Ans. 15 (Examiner recognizes that "[t]he prior
art does provide evidence that under some circumstances, glyphosate
treatment may increase the symptoms of a Fusarium solani f sp. glycines
infection.").
We are also not persuaded by Examiner's comparison of Appellants'
disclosure and the breath of Appellants' claimed invention to the prior art
evidence of record and assertion that, inter alia, Appellants' claimed
invention "does not limit the dosage of glyphosate nor require that the
treated soybean plants be glyphosate resistant," "specify whether the treated
plants are resistant to the two pathogen[ s] themselves," or account for the
fact that "the pathogenicity of the Fusarium solani f sp. glycines isolates of
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Application 13/319,328
[Sano go 2000] may differ substantially from that of the F. virguliformae
isolate used by Appellant" (Ans. 15-16). Examiner's assertions are, at best,
conjecture, which is unsupported by evidence on this record. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness."). In addition, to the extent that
Examiner's assertions may suggest that Appellants' disclosure fails to enable
the full scope of Appellants' claimed invention, we find no enablement
rejection on this record and, therefore, find Examiner's assertions
unsupported on this record.
To be complete, because Examiner failed to establish a prima facie
case of obviousness, we recognize, but decline to address Appellants'
rebuttal evidence presented in the Kohn Declaration, 8 the references cited
therein, and Appellants' contentions relating to unexpected results (see App.
Br. 5-7.
The rejection over the combination of Clinton, Sano go 2000, Scandiani, and
Pallett:
Appellants' claim 8 is reproduced above.
Based on the combination of Clinton, Sano go, Scandiani, and Pallett,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious to use "a soybean plant that comprises
not only a glyphosate resistant EPSPS enzyme, but HPPD as well," as
8 Declaration of Frank C. Kohn, signed June 28, 2016.
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Application 13/319,328
suggested by Pallett in the method suggested by the combination of Clinton,
Sanogo 2000, and Scandiani (Ans. 8). We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Pallett makes up for the foregoing deficiency in the
combination of Clinton, Sano go 2000, and Scandiani (see App. Br. 7-8
("Pallett provides no teachings on SDS and thus does not cure the defect in"
the combination of Clinton, Sano go 2000, and Scandiani. ); see also id. at
12-13).
The rejection over the combination of Clinton, Sanogo 2000, Scandiani, and
Asrar:
Appellants' claims 20 and 23 are reproduced above. Appellants'
claims 21 and 22 depend from Appellants' claim 20. Appellants' claims 24
and 25 depend from Appellants' claim 23.
Based on the combination of Clinton, Sano go, Scandiani, and Asrar,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious
to modify the methods of Clinton ... and apply glyphosate in
conjunction with either pyraclostrobin or picoxystrobin either
as a soil application, as taught by Asrar[], or as treatment,
which is an art-standard way to apply glyphosate to soybean
and which is also taught by Clinton.
(Ans. 10). We are not persuaded.
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Asrar makes up for the foregoing deficiency in the
combination of Clinton, Sanogo 2000, and Scandiani (App. Br. 8 ("Asrar
provides no teachings on SDS and thus does not cure the defect in" the
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combination of Clinton, Sanogo 2000, and Scandiani.); see also id. at 12-
13).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1-5, 7, 9, 10, 15, 16, 18, 19, 26, and 27 under
35 U.S.C. § 103(a) as unpatentable over the combination of Clinton, Sanogo
2000, and Scandiani is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Clinton, Sano go 2000, Scandiani, and Pallett is
reversed.
The rejection of claims 20-25 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Clinton, Sano go 2000, Scandiani, and
Asrar is reversed.
REVERSED
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