Ex Parte Nowakowski et al

Patent Trial and Appeal Board

Jan 11, 2017

12304823 (P.T.A.B. Jan. 11, 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.
12/304,823 06/29/2009 Sylvain Nowakowski 71172 8892
22847 7590 01/13/2017
SYNGENTA CROP PROTECTION LLC
PATENT DEPARTMENT
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
EXAMINER
HOLT, ANDRIAE M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
01/13/2017 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):
global.patents @ syngenta. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SYLVAIN NOWAKOWSKI, BETH HALL, EDMOND SZTOR,
VALERY TYSHKEVICH, VICTOR PYUSHPEKI, and OLGA BALLOD
Appeal 2016-003743
Application 12/304,823
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 4, and 6—
10 (Br. 3). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Syngenta Crop Protection,
LLC” (Br. 3).
Appeal 2016-003743
Application 12/304,823
STATEMENT OF THE CASE
Appellants disclose “the use of a defined combination of pesticidal
active ingredients, and compositions thereof, and methods for using such
combinations in the control or prevention of pathogenic and/or pest damage”
(Spec. 1). Claims 1 and 4 are representative and reproduced below:
1. A method of controlling pathogenic fungal damage in a
plant propagation material, a plant, parts of a plant and/or plant
organs that grow at a later point in time, which comprises
applying on the plant, part of the plant, plant organs, plant
propagation material or a surrounding area thereof a
combination comprising (I) tebuconazole, (II) azoxystrobin and
(III) fludioxonil, provided that where tefluthrin and
thiamethoxam are both present, the combination comprises
more than five active ingredients, wherein the mass ratio
between any two active ingredients in the combination is from
10: 1 to 1 : 10.
(Br. 26.)
4. The method according to claim 1 wherein the combination
[comprises] tebuconazole, azoxystrobin, thiamethoxam and
fludioxonil.
{Id.2)
2 Appellants’ claim 4, as presented, appears to include a typographical error
rendering the claim incomplete {see Br. 26). For the purposes of this
Appeal, we interpret Appellants’ claim 4 as including the transitional term
“comprises” between the words “combination” and “tebuconazole”. See,
e.g., Br. 16 (“Appellants’ claimed invention, as embodied in dependent
claim 4, is directed to the method according to claim 1 [], wherein the
combination of active amterials used in the recited method of controlling
pathogenic fungal damage comprises tebuconazole, axoxystrobin,
thamethoxam and fluidioxonil”).
2
Appeal 2016-003743
Application 12/304,823
The claims stand rejected as follows:
Claims 1, 2, 4, and 6—10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Weiss3 and Schlatter ’103.4
Claims 1, 2, 4, and 6—10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schlatter ’333.5
The rejection over Schlatter ’333 is cumulative to the rejection over
Weiss and Schlatter ’103. Therefore, we vacate, and will not further discuss,
the rejection over Schlatter ’333.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Weiss
relates to a method for improving the growing characteristics of
a plant, in particular by protecting the plant propagation
material of the plant against damage by molluscs, [such as slugs
and snails,] which method comprises a defined treatment of the
plant propagation material; a plant propagation material so
treated; and a composition for such treatment.
(Weiss 1: 1—6 and 12; see generally Non-Final Act.6 4.)
FF 2. Weiss discloses a composition (A), wherein a preferred combination
of active agents includes:
(A) at least three [active agents selected] from:
(I) thiamethoxam, imidacloprid, clothianidin, tefluthrin,
beta-cyfluthrin, cypermethrin, alpha-cypermethrin,
3 Weiss et al., WO 2006/128655 A2, published Dec. 7, 2006.
4 Schlatter et al., US 2005/0209103 Al, published Sept. 22, 2005.
5 Schlatter et al., WO 2006/024333 A2, published Mar. 9, 2006.
6 Examiner’s January 15, 2015 Non-Final Office Action.
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Application 12/304,823
beta-cypermethrin, theta-cypermethrin, zeta-
cypermethrin, fipronil and metaldehyde; especially
selected from thiamethoxam, imidacloprid,
clothianidin, fipronil and metaldehyde, and
(II) thiram, benalaxyl, benalaxyl-M, fuberdiazole,
thiabendazole, azoxystrobin, pyraclostrobin,
fluoxastrobin, bitertanol, cyproconazole,
difenoconazole, prochloraz, diniconazole,
prothioconazole, fluquinconazole, flutriafol,
metalaxyl, metalaxyl-M, prothioconazole,
tebuconazole, triadimenol, triticonazole, fludioxonil,
triazoxide, cyprodinil, carboxin and silthiofam;
especially pyraclostrobin, fluoxastrobin,
fluquinconazole, prothioconazole, tebuconazole,
carboxin, fludioxonil, prochloraz, difenoconazole,
mefenoxam.
(Weiss 14: 7—19 (emphasis added); see generally Ans. 5 and 10.)
FF 3. Weiss discloses “[a] method of controlling mollusk damage to plants
in horticulture or agriculture compris[ing] treating the plant’s propagation
material with a combination of, as active ingredients, at least. . .
thiamethoxam, tefluthrin, azoxystrobin and tebuconazole” (Weiss 23: 3—8;
see Ans. 3).
FF 4. Weiss identifies tebuconazole, azoxystrobin, and fludioxonil as
fungicidal compounds (Weiss 5: 22—26; see generally Ans. 3).
FF 5. Weiss discloses:
The combinations of the invention demonstrate synergistically
enhanced action resulting in, for example, reduced damage to
the plant by molluscs, lower rates of application of the
individual active ingredients for such control, a longer duration
of action and all together higher crop yields. The increase in
advantageous properties achieved with the combinations of the
invention are significantly greater than the activity to be
expected by the individual components. In particular, it has
now been found, surprisingly, that, for example, the activity of
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Appeal 2016-003743
Application 12/304,823
the treatment of the combinations of the invention on the plant
propagation material, compared with the activity of the
individual active ingredients, are not merely additive, as may
essentially be expected, but that a synergistic effect exists. This
effect can be calculated according to the Colby formula.
(Weiss 3: 24—33; see generally Non-Final Act. 4; see also Weiss at 3: 35 —
4:13 (“The term ‘synergistic’, independently of the combination , is not,
however, in any way limited in this context to the molluscicidal activity, but
refers equally to other advantageous properties”).)
FF 6. Weiss discloses that “[t]he weight ratio of any combination of active
ingredients is generally selected as to give the desired, for example
synergistic, action. In general, the weight ratio between any two active
ingredients is from 7:1 to 1:7” (Weiss 9: 31—34; see Non-Final Act. 4; Ans.
9).
FF 7. Examiner finds that while Weiss discloses a method of protecting
plant propagation material against damage by molluscs, which comprises the
administration of a composition comprising fungicides to the plant
propagation material; Weiss “do[es] not specifically disclose a method of
controlling pathogenic fungal disease by applying a combination of
tebuconazole, azoxystrobin, and fludioxonil” and, therefore, relies on
Schlatter ’103 to make up for this deficiency in Weiss (Non-Final Act. 5; cf.
id. at 4—5).
FF 8. Schlatter ’103 “relates to aqueous compositions, to the preparation of
such compositions and to a method of using such compositions to combat
phytopathogenic fungi” (Schlatter ’103 11; id. 118 (Schlatter ’103
“provides for plant propagation materials treated with the aqueous
composition and for a method for reducing fungal infestation of plant
propagation materials such as seeds”); see Non-Final Act. 5).
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Application 12/304,823
FF 9. Schlatter ’103 discloses:
The term “fungicide” as utilized herein is intended to
cover compounds active against phytopathogenic fungi that
may belong to a very wide range of compound classes.
Examples of compound classes to which the suitable
fimgicidally active compound may belong include . . .
fungicides such as: triazole derivatives, strobilurins,
carbamates (including thio- and dithiocarbamates),
benzimidazoles (thiabendazole), N-trihalomethylthio
compounds (captan), substituted benzenes, carboxamides,
phenylamides and phenylpyrroles, and mixtures thereof.
(Schlatter ’103 120 (emphasis added); see Non-Final Act. 5 and 7.)
FF 10. Schlatter ’103 discloses that “[sjuitable triazole derivatives include
propiconazole, difenconazole, tebuconazole, tetraconazole and
triticonazole;” “suitable strobilurins include trifloxystrobin, azoxystrobin,
kresoxim-methyl and picoxystrobin;” and “a specific phenylpyrrole usable
in the compositions and methods falling within the scope of [Schlatter
’ 103’s] invention is fludioxoniV (Schlatter ’103 22, 23, and 28 (emphasis
added); see Non-Final Act. 5 and 9-10).
FF 11. Schlatter ’103 discloses that “[mixtures of one or more of the
foregoing fimgicidally active compounds also are usable as an active
component in the practice of [Schlatter ’ 103 ’s] invention” (Schlatter ’103
131 ; see Non-Final Act. 5).
FF 12. Appellants define
[t]he term “plant propagation material” [as] all the generative
parts of the plant, such as seeds, which can be used for the
multiplication of the latter and vegetative plant materials such
as cuttings and tubers (for example, potatoes). Accordingly, as
used herein part of a plant includes propagation material. There
may be mentioned, e.g., the seeds (in the strict sense), roots
fruits, tubers, bulbs, rhizomes, parts of plants. Germinated
plants and young plants, which are to be transplanted after
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Application 12/304,823
germination or after emergence from the soil, may also be
mentioned. These young plants may be protected before
transplantation by a total or partial treatment by immersion.
(Spec. 9: 1-9.)
FF 13. Zeun tested the effect of compounds against fungi spores mixed with
PDB potato dextrose broth (Zeun Dec.714).
FF 14. Zeun concludes that “[t]he mixture of tebuconazole, azoxystrobin
and fluidioxonil shows synergistic results for different pathogens across a
variety of mixing ratios” (Zeun 5: 2—3).
ANALYSIS
The rejection over the combination of Weiss and Schlatter ’103:
Weiss discloses “a method for improving the growing characteristics
of a plant, in particular by protecting the plant propagation material of the
plant against damage by molluscs,” wherein the method comprises treating
the plant propagation material with a synergistically active composition that
comprises, in addition to tefluthrin and thiamethoxam, the fungicidal
compounds tebuconazole, azoxystrobin, and fludioxonil (FF 1—5). Schlatter
’ 103 discloses that azoxystrobin, and fludioxonil are effective against
pathogenic fungi (FF 8—11). In addition, Weiss discloses that “the weight
ratio between any two active ingredients is from 7:1 to 1:7” (FF 6).
Therefore, we find no error in Examiner’s conclusion that based on
the combination of Weiss and Schlatter ’103, it would have been prima facie
obvious, at the time Appellants’ invention was made, to utilize the method
of Weiss to control both mollusk and pathogenic fungal damage in a plant
propagation material, wherein Weiss’ method comprises applying, to plant
propagation material, a composition comprising tebuconazole, azoxystrobin,
7 Declaration of Ronald Zeun, signed Aug. 10, 2012.
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Appeal 2016-003743
Application 12/304,823
fludioxonil, tefluthrin, and thiamethoxam (see Non-Final Act. 6; see also FF
1-11).
Claim 1:
Examiner relies upon Schlatter ’103 to disclose that the tebuconazole,
azoxystrobin, fludioxonil fungicides disclosed by Weiss are effective against
pathogenic fungi (see FF 8—11). Therefore, we are not persuaded by
Appellants’ contentions that a person of ordinary skill in this art would not
have considered Schlatter ’103 in the context of Weiss, or that Weiss
“teaches away” for its combination with Schlatter ’103 (Br. 9—10).
We are not persuaded by Appellants’ intimation that Weiss fails to
suggest the selection of tebuconazole, azoxystrobin, fludioxonil, tefluthrin,
and thiamethoxam as part of a composition comprising “at least three” of the
compounds expressly disclosed by Weiss (see Br. 10-12; cf. FF 2-4). See
Merck & Co. Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“Disclos[ure of] a multitude of effective combinations does not
render any particular formulation less obvious”).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Examiner’s conclusion of obviousness is based in hindsight
(Br. 11).
We recognize, but are not persuaded by Appellants’ contentions
regarding the Zeun declaration (Br. 12—16). Initially, we agree with
Examiner that the Zeun declaration is not commensurate in scope with
Appellants’ claimed invention (see generally Non-Final Act. 10—13; see also
FF 12 (defining the term “plant propagation material”); cf. FF 13—14
(discussing results obtained from experiments on “PDB potato dextrose
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Application 12/304,823
broth”)). We find no persuasive evidence or argument on this record to
support a conclusion that PDB potato dextrose broth falls within the scope of
a plant propagation material as defined by Appellants’ Specification (see FF
13—14; cf FF 12). Nevertheless, the Zeun declaration and Appellants’
contentions based thereon relate to the synergism of some compounds within
the scope of their claimed invention (see Br. 12—16; FF 14).
Notwithstanding Appellants’ contentions to the contrary, however, Weiss
discloses that compositions within the scope of Weiss’ disclosure, which
include those within the scope of Appellants’ claimed invention, exhibit
synergism (FF 5; see also FF 1—6; cf. Br. 26: Claim 1). Therefore, we are
not persuaded by Appellants’ contentions regarding unexpected results (Br.
12-16).
Claim 4\
Notwithstanding Appellants’ contentions to the contrary, for the
reasons set forth above, the combination of Weiss and Schlatter ’103 suggest
a “method according to claim 1 [] wherein the combination of active
materials used in the recited method of controlling pathogenic fungal
damage comprises tebuconazole, azoxystrobin, thiamethoxam, []
fludioxonil,” and tefhithrin (see FF 1—11; cf. Br. 16).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 1 and 4, under 35 U.S.C. § 103(a) as
unpatentable over the combination of Weiss and Schlatter ’103 is affirmed.
Claims 2 and 6—10 are not separately argued and fall with claim 1.
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Application 12/304,823
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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