Ex Parte Nettleton-Hammond et al

Patent Trial and Appeal Board

Feb 13, 2017

12600471 (P.T.A.B. Feb. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/600,471 05/11/2010 John Henry Nettleton-Hammond 71589-US-REG-ORG-P 9131
85981 7590 02/14/2017
Syngenta Corp Protection, Inc.
410 Swing Road
Greensboro, NC 27409
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
02/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HENRY NETTLETON-HAMMOND,
KIRSTY JANE WILLIAMS, and
JEAN-CHARLES DANIEL NICHOLAS BROQUET
Appeal 2016-003746
Application 12/600,471
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1—15 (Br. 3).
Examiner entered rejection under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants disclose “an herbicidal composition comprising an
acetolactate synthase (ALS)[]-inhibiting herbicide and a p-hydroxyphenyl
1 Appellants identify the real party in interest as “Syngenta Crop Protection,
Inc.” (Br. 3.)
Appeal 2016-003746
Application 12/600,471
pyruvate dioxygenase (HPPD)-inhibiting herbicide” (Spec. 1: 4—6). Claims
1 and 3—10 are representative and reproduced below:
1. An herbicidal composition comprising:
a. at least one ALS-inhibiting herbicide;
b. at least one HPPD-inhibiting herbicide; and
c. at least one saturated or unsaturated fatty acid.
(Br. 23.)
3. An herbicidal composition according to claim 1, wherein the
at least one ALS-inhibiting herbicide is nicosulfuron.
(Id.)
4. An herbicidal composition according to claim 1, wherein the
HPPD-inhibiting herbicide is selected from the group consisting
of mesotrione, sulcotrione, tembotrione, 4-Hydroxy-3-[2-(2-
methoxyethoxymethyl)-6-trifluoromethylpyridine-3 -carbonyl] -
bicyclo[3.2.1]oct-3-en-2-one), isoxaflutole and pyrasulfotole.
(Id. at 23-24.)
5. An herbicidal composition according to claim 4, wherein the
HPPD-inhibiting herbicide is mesotrione.
(Id. at 24.)
6. An herbicidal composition according to claim 1, wherein the
saturated or unsaturated fatty acid comprises a chain of at least
10 carbon atoms.
(Id.)
7. An herbicidal composition according to claim 6, wherein the
saturated or unsaturated fatty acid is selected from the group
consisting of lauric acid, oleic acid, linoleic acid, linolenic acid
and capric acid.
(Id.)
8. An herbicidal composition according to claim 7, wherein the
saturated or unsaturated fatty acid oleic acid.
(Id.)
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Application 12/600,471
9. An herbicidal composition according to claim 1, wherein the
composition further comprises a surfactant.
(Id.)
10. An herbicidal composition according to claim 9, wherein
the surfactant is a polyarylphenol.
(Id.)
The claims stand rejected as follows:
Claims 1—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Deckwer2 and Sampson.3
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Deckwer “relates to the field of formulations of crop protection
agents. In particular,... to liquid formulations comprising herbicidally
active compounds from the group of the ALS inhibitors (acetolactate
synthetase inhibitors)” (Deckwer 11; see Ans. 3).
FF 2. Deckwer discloses “a liquid formulation comprising[: ] a) one or
more herbicidally active compounds from the group of the ALS inhibitors,
b) one or more organic solvents, and c) one or more inorganic salts[,]” and
“may optionally also comprise further components, for example: d) one or
2 Deckwer et al., US 2005/0026787 Al, published Feb. 3, 2005.
3 Sampson, US 4,436,547, Mar. 13, 1984.
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Application 12/600,471
more agrochemically active compounds different from a), e) one or more
sulfosuccinates, and/or f) customary auxiliaries and additives” (Deckwer
1110-17; see generally Ans. 3—4).
FF 3. Deckwer discloses that “[preferred ALS inhibitors originate from
the group of the sulfonylureas,” wherein “suitable sulfonylureas are, for
example . . . nicosulfuron” (Deckwer || 20 and 25; see also id. 147
(“Typical representatives of [preferred suitable ALS inhibitors] are, inter
alia, . . . nicosulfuron”); see Ans. 3).
FF 4. Deckwer discloses that “[sjuitable active compounds different from
component a),. . . are, preferably, herbicidally active compounds, for
example . . . mesotrione” (Deckwer || 92 and 102; see Ans. 3^4; see also
Ans. 5—6).
FF 5. Deckwer discloses that
[sjuitable organic solvents (compound b) are, for example . . .
vegetable oils . . . preferably esters of C10-C22- . . . fatty acids.
The C io-C22-fatty acid esters are, for example, esters of
unsaturated or saturated Cio-C22-fatty acids having, in
particular, an even number of carbon atoms, for example . . .
lauric acid, . . . and in particular Cig-fatty acids such as . . . oleic
acid, linoleic acid or linolenic acid.
(Deckwer || 130 and 148; see Ans. 5 (“Deckwer discloses that fatty acids,
including vegetable oils which comprise fatty acids of oleic acid, lauric acid
and linoleic acid are potential organic solvents for use in formulations
comprising ALS herbicides”); see generally Ans. 4.)
FF 6. Deckwer discloses “[cjustomary auxiliaries and additives
(component f) which may also be contained in the liquid formulations
according to [Deckwer’s] invention are, for example: surfactants, such as
emulsifiers and dispersants,” which “for example [are] polyalkoxylated,
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Application 12/600,471
preferably polyethoxylated, arylalkylphenols” (Deckwer || 182—183 and
188; see Ans. 4).
FF 7. Examiner finds that “Deckwer [] does not envisage the selection of
fatty acids, particularly those selected from lauric acid, oleic acid, linoleic
acid, linolenic acid or capric acid” and relies on Sampson to make up for that
deficiency in Deckwer (Ans. 4; cf FF 5).
FF 8. Sampson “relates to agricultural chemicals, which term is used [in
Sampson] to mean fungicides, herbicides, insecticides, nematocides and
plant-growth regulators, and to methods of using them and compositions
containing them” (Sampson 1: 4—8; see generally Ans. 4).
FF 9. Sampson discloses that “additives used in the formulations and
methods of [Sampson’s] invention are defined as belonging to one of the
following classes (a) to (h), although two or more such additives in the same
or different classes may be used, as may two or more agricultural
chemicals,” the additives include, “a fatty acid of the type found in natural
saturated and unsaturated fats, e.g., [] lauric, [] oleic and linoleic acid”
(Sampson 1: 51—55, 2: 19-25; see FF 5; Ans. 4).
ANALYSIS
Based on the combination of Deckwer and Sampson, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious
to combine the teachings] of Deckwer [] and Sampson to
formulate a composition comprising an ALS herbicide, a HPPD
herbicide and a fatty acid with a reasonable expectation of
success because Deckwer [] teach selecting mesotrione as an
additional herbicide utilized in the formulation and solvents
include CIO fatty acids, furthermore, Sampson shows that
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Application 12/600,471
herbicides are improved by co-administration of organic acids,
including fatty acids selected from lauric[] acid, oleic acid and
linoleic acid.
(Ans. 5.)
Claim 1:
Deckwer suggests a composition comprising: a) one or more
herbicidally active compounds from the group of the ALS inhibitors, such
as, preferably an ALS inhibitor, such as, nicosulfuron (FF1, FF3); b) one or
more organic solvents, which may be, for example, a saturated or
unsaturated fatty acids comprising a chain of at least 10 carbon atoms, such
as, lauric acid, oleic acid, linoleic acid, or linolenic acid (FF 5); c) one or
more inorganic salts (FF 2); d) one or more agrochemically active
compounds, such as, preferably, herbicidally active compounds, for
example, mesotrione (an HPPD-inhibiting herbicide) (FF 4); e) one or more
sulfosuccinates (FF 2), and/or f) customary auxiliaries and additives, such as
polyethoxylated arylalkylphenols (FF 6).
While Examiner recognizes that Deckwer discloses fatty acid organic
solvents, such as, oleic acid, lauric acid, and linoleic acid (FF 5); Examiner,
nonetheless, finds that Deckwer “does not envisage the selection of fatty
acids, particularly those selected from lauric acid, oleic acid, linoleic acid,
linolenic acid or capric acid and relies on Sampson to make up for that
deficiency (FF 7). Sampson discloses agricultural compositions, such as
herbicidal compositions, which comprise additives, which include one or
more additives of the same or different class, such as a fatty acid of the type
found in natural saturated and unsaturated fats, such as lauric, oleic, and
linoleic acid (FF 8—9).
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For the foregoing reasons, we are not persuaded by Appellants’
contention that Examiner failed to establish an evidentiary basis to support a
conclusion that the combination of Deckwer and Sampson suggests a
composition comprising at least one ALS-inhibiting herbicide, at least one
HPPD-inhibiting herbicide, and at least one saturated or unsaturated fatty
acid from among the numerous ingredients that may be included in a
composition suggested by the combination of Deckwer and Sampson (see
Br. 6—13). “Disclosure of] a multitude of effective combinations does not
render any particular formulation less obvious.” Merck & Co. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Appellants’ claim 1 is not limited to the ALS-inhibiting herbicide,
nicosulfuron (see Br. 23). Therefore, we are not persuaded by Appellants’
contentions regarding nicosulfuron, which are not commensurate in scope
with Appellants’ claimed invention as recited in claim 1 (see Br. 6—7; cf. FF
1 (Deckwer “relates to the field of formulations of crop protection agents. In
particular, ... to liquid formulations comprising herbicidally active
compounds from the group of the ALS inhibitors (acetolactate synthetase
inhibitors)”).
Deckwer discloses formulations that comprise ALS inhibitors, in
addition to herbicidally active compounds, such as mesotrione, a HPPD-
inhibiting herbicide (FF 4). Notwithstanding Appellants’ contention to the
contrary, the combination of Deckwer and Sampson suggests a composition
comprising a HPPD-inhibiting herbicide, because Deckwer expressly
suggests its inclusion in its composition (FF 4; cf. Br. 7 and 10).
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Application 12/600,471
Similarly, Deckwer suggests the inclusion of a solvent, such as, at
least one saturated or unsaturated fatty acid that comprises a chain of at least
10 carbon atoms, such as oleic acid, lauric acid, linolenic, and linoleic acid
in a composition comprising an ALS inhibitor and a HPPD-inhibiting
herbicide (FF 5; see FF 1^4; cf. Br. 7 (“Deckwer does not disclose fatty
acids as a suitable organic solvent among [its] disclosed [list] of suitable
organic solvents”) and 10). In addition, Sampson suggests the inclusion of
“a fatty acid of the type found in natural saturated and unsaturated fats, e.g.,
[] lauric, [] oleic and linoleic acid,” in herbicidal compositions (see FF 8—9).
Appellants’ claim 1 does not require a surfactant, therefore, we are not
persuaded by Appellants’ contention regarding surfactants, which are not
commensurate in scope with Appellants’ claim 1 (Br. 7).
Claim 3:
As discussed above, Deckwer expressly discloses nicosulfuron as an
ALS-inhibiting herbicide within the scope of Deckwer’s disclosure (FF 1—
3). Therefore, we are not persuaded by Appellants’ contention that “[t]here
simply is no suggestion within the teaching of Deckwer that would have
guided one skilled in the art to [select] nicosulfuron” as the ALS-inhibiting
herbicide of the composition suggested by the combination of Deckwer and
Sampson (Br. 14). Merck, 874 F.2d at 807.
Claims 4 and 5:
As discussed above, Deckwer expressly discloses mesotrione as an
additional herbicide that may be included in a composition within the scope
of Deckwer’s disclosure (FF 4). Therefore, we are not persuaded by
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Appellants’ contention that the combination of Deckwer and Sampson “does
not guide one skilled in the art” to select mesotrione for inclusion in a
composition within the scope of Deckwer’s disclosure (Br. 14—17). Merck,
874 F.2d at 807.
Claim 7 and 8:
For the foregoing reasons, we are not persuaded by Appellants’
contention that the combination of Deckwer and Sampson “does not guide
one skilled in the art” to select lauric acid, oleic acid, linoleic acid, or
linolenic acid as an organic solvent within the scope of Deckwer’s disclosure
(see FF 5, 8, and 9; cf. Br. 17-18).
Further, for the reasons set forth above, we are not persuaded by
Appellants’ contention that “[tjhere simply is no suggestion within the
teaching of Sampson that would have guided one skilled in the art to [select]
oleic acid instead of’ another saturated or unsaturated fatty acid that
comprises a chain of at least 10 carbon atoms that falls within the scope of
Deckwer’s disclosure and is suggested by the combination of Deckwer and
Sampson.
Claim 10:
Deckwer discloses a composition that comprises customary auxiliaries
and additives in herbicidal compositions such as a polyarylphenol (see FF 2
and 6). Therefore, we are not persuaded by Appellants’ contention that
“[tjhere simply is no suggestion within the teaching of Sampson that would
have guided one skilled in the art to” select a polyarylphenol for inclusion in
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a composition within the scope of Deckwer and suggested by the
combination of Deckwer and Sampson (Br. 19-21). Merck, 874 F.2d at 807.
SUMMARY
In sum, it is well settled that it is obvious for one of ordinary skill in
the art to select a particular component from among many disclosed by the
prior art as long as it is taught that the selection will result in the disclosed
effect, even when the possible selections number in the hundreds or
thousands. Merck, 874 F.2d at 807; In re Corkill, 111 F.2d 1496, 1500 (Fed.
Cir. 1985). On this record, Appellants provide no persuasive evidence or
argument to support a conclusion that the selection of particular ingredients,
as directed by the combination of Deckwer and Sampson, for inclusion in a
composition as disclosed by Deckwer results in a non-obvious combination
of ingredients or an unexpected result (see FF 1—9; cf. Br. 23—24
(Appellants’ claims 1, 3—5, 7, 8, and 10)). The particularly recited
components are each taught as useful in a herbicidal composition. It is
obvious to have utilized a known component for its known and established
function. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 1, 3—5, 7, 8, and 10
under 35 U.S.C. § 103(a) as unpatentable over the combination of Deckwer
and Sampson is affirmed. Claims 2, 6, 9, and 11—15 are not separately
argued and fall with claim 1.
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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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