Ex Parte Mann et al

Patent Trial and Appeal Board

Sep 14, 2016

13529524 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/529,524 06/21/2012
25212 7590 09/16/2016
DOW AGROSCIENCES LLC
9330 ZIONSVILLE RD
INDIANAPOLIS, IN 46268
FIRST NAMED INVENTOR
Richard K. Mann
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.
70829-US-NP 9719
EXAMINER
BRANSON, DANIELL
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD K. MANN, LAP NGUYEN, and
SOMSAK SAMANWONG1
Appeal2015-001211
Application 13/529,524
Technology Center 1600
Before ULRIKE W. JENKS, TA WEN CHANG, and RYAN H. FLAX,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
synergistic herbicidal composition, which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
This invention concerns a synergistic herbicidal composition
containing (a) peno xsulam and (b) pendimethalin for contro Hing
growth of undesirable vegetation, particularly in multiple crops,
including rice, cereal and grain crops, turf, industrial vegetation
1 Appellants identify the Real Party in Interest as Dow AgroSciences LLC.
(Appeal Br. 1.)
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Appeal2015-001211
Application 13/529,524
management (IVM), sugar cane and tree and vine orchards.
(Spec. 1 :9-12.)
Claims 1 and 3-11 are on appeal. Claim 1 is illustrative and
reproduced below:
1. A synergistic herbicidal composition compnsmg a
herbicidally effective amount of (a) penoxsulam and (b)
pendimethalin, wherein the weight ratio of pendimethalin
to penoxsulam on an active ingredient ( ai) basis is between
about 100:1 and about 16.7:1.
(Appeal Br. 7 (Claims App'x).)
The Examiner rejects claims 1 and 3-11under35 U.S.C. § 103(a) as
being unpatentable over Loughner2 and Foessel. 3 (Ans. 2.)
DISCUSSION
Issue
The Examiner finds that Loughner teaches "a synergistic herbicide
composition for application to vine and orchard floors for controlling weeds
such as junglerice." (Ans. 2.) The Examiner finds that Loughner's
herbicide mixture "contains penoxsulam and may also contain
pendimethalin." (Id.)
The Examiner further finds that F oessel discloses a synergistic
herbicidal composition comprising pendimethalin and an imidazolinone,
which functions as an acetolactate synthase (ALS) inhibitor. (Id. at 3.) The
Examiner finds that F oessel teaches providing the herbicides in a wt./wt.
ratio ofpendimethalin to ALS inhibitor of20:3 to 100:1. (Id.)
2 Loughner et al., US 2006/0183637 Al, published Aug. 17, 2006.
3 Foessel, US 6,673,748 Bl, issued Jan. 6, 2004.
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Application 13/529,524
The Examiner finds that it would have been obvious to a skilled
artisan to use pendimethalin with penoxsulam because Loughner teaches that
such a combination results in an herbicidally synergistic composition. (Id.)
The Examiner finds that the combination would also have been obvious to a
skilled artisan because penoxsulam is an ALS inhibitor and Foessel teaches
that combining pendimethalin with imidazolinone, another ALS inhibitor,
results in a synergistic herbicidal composition. (Id.) The Examiner further
finds that a skilled artisan would have been motivated to apply the ratio of
pendimethalin to ALS inhibitor (i.e., the imidazolinone) disclosed in Foessel
to the pendimethalin I penoxsulam combination suggested by Loughner,
because penoxsulam is also an ALS inhibitor and Foessel teaches that the
disclosed ratios of pendimethalin I imidazolinone led to synergistic control
of unwanted vegetation. (Id. at 3--4.) In light of the above, and because the
range of wt./wt. ratios of herbicides disclosed in Foessel overlaps the
claimed range, the Examiner concludes that the combination of Loughner
and Foessel renders the claimed invention prima facie obvious.
Appellants contend that the cited prior art do not teach or suggest the
specific combination of pendimethalin with penoxsulam or that the
combination would be synergistic within the claimed weight ratio range.
(Appeal Br. 4--5.) Appellants argue that, instead, the Examiner is using
"improper hindsight to selectively pick and choose from the cited
references." (Reply Br. 2.) Appellants further argue that, in any event, the
claimed subject matter demonstrates unexpected results with respect to the
degree of synergism exhibited. (Appeal Br. 5; Reply Br. 5.)
Appellants do not separately argue the claims. Thus, we focus our
analysis on claim 1. The issue with respect to this rejection is whether the
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Appeal2015-001211
Application 13/529,524
evidence of record supports the Examiner's finding that claim 1 is prima
facie obvious over the cited art and, if so, whether Appellants have presented
evidence of unexpected results that, when weighed with the evidence
supporting obviousness, shows that claim 1 would not have been obvious.
Findings of Fact
1. Loughner teaches that penoxsulam is useful in controlling
broadleaf weeds and sedges in turf grass and in vine and orchard floors.
(Loughner Abstract; see id. at i-f 10.)
2. Loughner teaches that Penoxsulam is often best applied in
conjunction with one or more other herbicides and that herbicides that can
be used with penoxsulam include, among others, pendimethalin. (Id. at
i-f 14.)
3. Loughner teaches that "[i]t is generally preferred to apply
penoxsulam and other complementary herbicides at the same time, either as
a combination formulation or as a tank mix. When applying in this way,
synergistic responses have been observed specific to species and mixture."
(Id.)
4. Foessel teaches "a method for the synergistic control of
undesirable plants ... which comprises applying ... a synergistically
effective amount of a combination of a dinitroaniline compound and an
imidazo linone compound." (F oessel Abstract.)
5. F oessel teaches that the preferred dinitroaniline compound for
its invention is pendimethalin and the preferred imidazolinone compound is
1mazamox. (Id. at 2:45-53.)
6. Foessel teaches that the preferred combinations of its invention
are "those combinations wherein the weight/weight (wt/wt) ratio of
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Appeal2015-001211
Application 13/529,524
dinitroaniline compound:imidazolinone compound is about 10:3 to 900: 1"
and that "[m]ore preferred combinations of [its] invention are combinations
of pendimethalin ... and an imidazolinone compound wherein the wt/wt
ratio of pendimethalin:imidazolinone compound is about 10:3 to 900: 1" and
that "[m]ost preferred combinations of [its] invention are combinations of
pendimethalin and imazamox wherein the wt/wt ratio of
pendimethalin:imazamox is about 20:3 to 100: 1." (Id. at 2:58-67; see also
id. at 3:29-36.)
7. Foessel's Table I is reproduced below:
TABLE I
% \Vt::~d Cuntrul
h:rnt:lamm:: Peadimt! lhalin Ex.6 (Obs.
g/ha g/ha Obsi:rveJ pedecl Exp.)
Poa mum a 0 1,lZ5 6,1
75 n 6S
75 ·1 1')" 97 88 9 ... , ~ ...........
Pa!ygawmr 0 1,:l:1S 7G
per:sicorfa 75 0 66
75 1,125 HJO 92 8
.Sefrtria 0 1,125 86
H~1·tici1Uati7 75 0 45
...,. •.
,) 1,125 96 91 4
Foessel's Table I sets out data showing that "application of a combination of
pendimethalin plus imazamox gives greater control of Poa annua,
Polygonum persicara and Setaria verticilliata than that which could be
predicted from the weed control resulting from the application of either
pendimethalin or imazamox alone [based on the Colby method]." (Id. at
4:1-22, 39-60.)
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Appeal2015-001211
Application 13/529,524
8. The Examiner finds, and Appellants have not disputed, that
both imidazolinone, such as imazamox, and penoxsulam function as ALS
inhibitors. (Ans. 3; Reply Br. 4.)
9. Table 1 of the Specification is reproduced below:
Tablet, Synergistic bn)adlear \Veed eontrol at 22 lo 54 days aftt.~r application from
Penoxsularn + Pe11dinwthahn applied pnx~mergcncc to seeded rice - Field triak
_____________________________________________________________________ r:::::::::::::::::::::::::::::::::::::::::::::::::~~~:::~:~~~~~~::~~~~~~~~~~~::::·::::::::::::::::::::::::::::::::::::::::::]
! Application Rate igai/l1a) j ALRPH ! IPOSS SEBEX I
~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~:~~~~~~~~~~~~~~~~:~~~~~~~~~~~~~~~-~~~~~~~~~~~~~~ ~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~·r~~~~~~~~~~~~~~~~~~~~~~ ~~~~~~~~~~~~~~~~~~~~~~~ ~~~~~~~~~~~~~~~~~~~~~~!
1 Pcnoxsu1am Pcnduncthahn ; Obs Er Ob i Ex Ohs Ex 1
~ l ~ ~
20 (!) 0 4:;
0 1100 0
20 1100 76 43
20(2) (l 74 21 !
' ' '
L««««.«:~""""""";""""""E~~~~"""""l""""-::«««««- """""""""-J""""-~L«.J""""""""""" """""""""""""""-"""""-J I 20 •· l 1 oo : 1 oo 74 ! 83 I 49 I 1-------------4ff ____________ ; _________________ ff _______________ -r----------------------- ----------------------1-----------------------1---------------------- _________ 4_6 ________ ----------------------]
0 1100
40 1100
( l) "" Arkansas, USA
C2) =Texas, USA
ALRPH = 11!1emanthera ptdloxerm'des (alligatorweeJ)
IPOSS = lpomoea spp. (ntorningglory)
SEBEX"' Sesbania exalwta (hemp se~bania/cuCkeweed)
Oh·········································•···························>·························+·························· ......................... .
0 75(J
30 750
ECHCO = Echinochloa colmwm (jungkrkc)
ISCRlJ ~ lschaemum rugosum (saramollagrass)
Obs= Observed results
57
96
Ex"" Expected resultsgaiJha"" grams of active ing.rt'.dient per heetarJ
Table 2 of the Specification sets out data showing the observed grass weed
control of certain combinations of penoxsulam and pendimethalin as
compared to the expected weed control based on Colby's formula. (Spec.
11:1-20; 13:1-10.)
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Appeal2015-001211
Application 13/529,524
11. Table 3 of the Specification is reproduced below:
Tabll'. 3. Sy1ru~rg(stk gm~s >l'c.ed C<)ntrol at ".!(}6 d;iys ;i:J)l'r appHcatioti l'rom Pcno~suJam +
Pendimct!rnhn 11ppfo.~(\ preem~rg~t11.'C- to pe11}nnial h\~t~ .c:rops - Fie kl t1iills.
% ('m1tml
Applicmion Rate (gailha} Al.OMY
0 0
0 50ll 0
500 63
20 0
'-"-''-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'- '-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'-'- '-'-'-'-'-'-'-"-'-'-"-"-''-'-''-''-'-'-
0 5()1) 0
20 500 82
30 () 43
0 :son 0
30 500 84
10 () ()
0 [()(){} 7
IO 10>{:1{} 37
20 0 20
-----------(r---------- ·"""""iliiif""""' ·""""?'""'"'
....................................................................... ............................................................................. .................................................
20 lO(l{} 9'.f
.,,.,
" ·" ~:;I\) '.I ... .,
0 1000 7
0 H)OU ~17
40 0 50
0 1(\1()0 7
40 lG{l{} 95
Al .. 01\·iY = A.lopecurc1s my(l.1,·1.roides (b1<1c-kgr<18$)
Ohs"" Ob~l'r.'ed rosulls
Ex == Exp<:etcd l~~ult~
gat/hii"" grams i.>f ai.,tiv~ ingrodicllt pc.r h.:.o.ct:irc
0
'-'-'-'-'-'-'-''-''-'-'-'-'-'-'-'-'-'-
20
43
7
.......................................
..................................................
25
47
53
Table 3 of the Specification sets out data showing the observed grass weed
control of certain combinations of penoxsulam and pendimethalin as
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Appeal2015-001211
Application 13/529,524
compared to the expected weed control based on Colby's formula. (Spec.
11:1-20; 14:1-10.)
Analysis
We find the preponderance of evidence supports the Examiner's
finding that the combination of Loughner and F oessel renders claim 1 prima
facie obvious. It would be obvious to combine penoxsulam and
pendimethalin in light of Loughner' s disclosure that penoxsulam is an
herbicide that is often best applied with another herbicide, including, for
instance, pendimethalin. (FFI, FF2.) Likewise, it would be obvious for a
skilled artisan to combine pendimethalin and penoxsulam in the wt/wt ratio
taught by F oessel for combining pendimethalin and imazamox-a range that
overlaps the range of wt/wt ratios of pendimethalin and penoxsulam recited
in claim I-because penoxsulam and imazamox are both ALS inhibiting
herbicides (FF8), and Foessel teaches that the disclosed wt/wt ratios of
pendimethalin and imazamox result in synergistic effect. (FF 4-FF7.)
Finally, a skilled artisan would have a reasonable expectation of success in
combining penoxsulam and pendimethalin because Loughner teaches that
penoxsulam is known to act synergistically with at least certain other
herbicides (FF3), and Foessel teaches that claim-recited pendimethalin acts
synergistically with a class of herbicides (imidazolinone) that functions in
the same way (i.e., via ALS inhibition) as the claim-recited penoxsulam.
(FF4-FF8.)
Appellants contend the Examiner erred because Loughner lists "some
169 potential mixing partners" for penoxsulam and "it is unreasonable to
interpret [Loughner] as asserting that all of the potential combinations
mentioned were tested [and found to be synergistic]." App. Br. 3--4.
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Appeal2015-001211
Application 13/529,524
Appellants contend that Loughner should be interpreted only as teaching
synergism for the specific combinations disclosed in the Examples. (Id. at
4.) Likewise, Appellants contend that "[n]othing in Foessel teaches or
suggests that all ALS inhibitors are equivalent to imazamox with respect to
producing a synergistic combination with pendimethalin" and that "if the
reference had made that statement it would not have been considered
credible by those skilled in the art in the absence of evidence." (Id.)
Accordingly, Appellants contend that neither Loughner nor Foessel teaches
or suggests the combination of pendimethalin with penoxsulam, the specific
weight ratio range required by the claims, or that the combination would be
synergistic at the rates and/or weight ratio range claimed. (Id. at 4, 5.)
We are not persuaded. Loughner explicitly suggests the combination
of penoxsulam and pendimethalin (FF2), and the fact that multiple other
herbicides were suggested for combination with penoxsulam does not render
the particular combination of penoxsulam and pendimethalin any less
obvious. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) ("[D]isclos[ing] a multitude of effective combinations does not render
any particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose taught by the prior
art.").
The combination of Loughner and Foessel teaches that penoxsulam
may be better applied in conjunction with another herbicide, such as
pendimethalin, that certain combinations of penoxsulam and other herbicides
have synergistic effect, and that pendimethalin acts synergistically when
combined with imazamox (an herbicide with functional similarity to
penoxsulam) in a wt/wt ratio range overlapping the range recited in claim.
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Appeal2015-001211
Application 13/529,524
We find that a skilled artisan would find it obvious, based on the above
teachings, to combine penoxsulam and pendimethalin in the claimed weight
ratios with a reasonable expectation of success. "A person of ordinary skill
is also a person of ordinary creativity, not an automaton," KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007), and obviousness analysis "can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id. at 418. Furthermore, "[o]nly a reasonable
expectation of success, not absolute predictability, is necessary for a
conclusion of obviousness." In re Langi, 759 F.2d 887, 897 (Fed. Cir.
1985).4
Finally, Appellants contend that the claimed subject matter exhibited
unexpected results in the form of "dramatic" synergy and that such
unexpected results should overcome any prima facie case of obviousness
arising from the cited references. (Appeal Br. 5.) More specifically,
Appellants argue that,
[ i Jn F oessel, ... [a ]t a ratio of 15: 1 [pendimethalin:imazamax], the
maximum difference between the expected and observed values [of
weed control] is 9% for Poa [annua]. ... In contrast, the difference
between the expected activity and the observed activity in the working
examples in the [Specification] ranges from 26% to 80% for a variety
4 Appellants also argue in the Reply Brief that "[a]ny attempt to [substitute
imidazolinone with another ALS inhibitor] makes Foessel inoperable for its
intended purpose, which is improper under 35 U.S.C. § 103." (Reply Br. 4.)
This argument is not convincing. Appellants fail to articulate the intended
purpose of F oessel that would be thwarted by the substitution of an
imidazolinone compound with penoxsulam. In any event, "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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Appeal2015-001211
Application 13/529,524
of weeds . . . . The combination is effective at controlling a variety of
weeds in rice and perennial tree crops. The degree of synergy, the
variety of weeds which can be controlled, and the crops that were
effectively treated were not predictable from the teachings of
Loughner and/ or F oessel.
(Reply Br. 5.)
Appellants' arguments are not convincing. As an initial matter,
Appellants provide no persuasive evidence why the variety of weeds that can
be controlled and the crops that were effectively treated by a combination of
penoxsulam and pendimethalin are unexpected. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) ("[I]t is well settled that unexpected results must
be established by factual evidence. 'Mere argument or conclusory
statements in the specification does not suffice."'). For instance, Appellants
contend that the combination of penoxsulam and pendimethalin is effective
in controlling weeds in rice and perennial tree crops. (Reply Br. 5.)
Appellants do not explain, however, why this is unexpected when Foessel
teaches that the synergistic herbicidal composition of its invention is useful
in production of crops such as rice and Loughner teaches that penoxsulam is
an effective herbicide for controlling broadleafweeds in orchards. (Foessel
3:56-62; Loughner i-f 6.)
With respect to the degree of synergy, Tables 1-3 in the Specification
do show differences between observed and expected weed control activity.
Nevertheless, we find that Appellants have not presented evidence of
unexpected results that, when weighed with the evidence supporting
obviousness, shows that claim l would not have been obvious. In particular,
"when 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). Here,
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Appeal2015-001211
Application 13/529,524
Tables 1-3 do not provide data needed for a comparison with Foessel's
Table I because they relate to weed control activity for different weed
species. (FF7, FF9-11.) We note, for instance, that pendimethalin is
individually effective against each of the weeds in Foessel's Table I.
Several of the weeds tested in Tables 1-3 of the Specification, however,
appear to be refractory to pendimethalin applied alone, which may affect the
degree of difference between the observed and expected weed control
activity when a penoxsulam I pendimethalin combination is applied.
Accordingly, we affirm the Examiner's rejection of claim 1. Claims
3-11 were not separately argued and fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
SUMMARY
For the reasons above, we affirm the Examiner's decision rejecting
claims 1 and 3-11 as obvious over Loughner and Foessel.
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
13