Ex Parte Piper et al

Patent Trial and Appeal Board

Jul 31, 2014

10517872 (P.T.A.B. Jul. 31, 2014)

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.
10/517,872 12/13/2004 Catherine Julia Piper PPD 70048 1343
86344 7590 07/31/2014
Syngenta Crop Protection, Inc.,
Patent and Trademark Department
410 Swing Road
Greensboro, NC 27409
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
07/31/2014 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 CATHERINE JULIA PIPER, DAVID STOCK,
GAVIN JOHN HALL, and PETER BERNARD SUTTON
__________

Appeal 2012-004153
Application 10/517,872
Technology Center 1600
__________

Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
herbicide composition and to its use. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Syngenta Limited
(see App. Br. 2).
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Statement of the Case
Background
The Specification teaches an “herbicidal composition . . . [and] its
preparation and use” (Spec. 1, ll. 3–4). More particularly, the Specification
teaches an “herbicidal composition which demonstrates improved activity
over the prior art compositions, but with little or no increase in crop
damage” (Spec. 1, ll. 4–5). The Specification teaches a composition of “a
metal chelate of a 2-(substituted benzoyl)-1,3-cyclohexanedione” (Spec. 2, l.
24) and “an organic phosphate, phosphonate or phosphinate adjuvant” (Spec.
4, l. 5).
The Claims
Claims 1–6 and 8–14 are on appeal. Claims 1and 12 are illustrative of
the claimed subject matter, with the key disputed limitations emphasized:
1. A herbicidal composition comprising:
(i) a metal chelate of a 2-(substituted benzoyl)-
1,3-cyclohexanedione of formula (I)

. . . and
(ii) an organic phosphate, phosphonate or
phosphinate adjuvant, wherein the phosphate, phosphonate
or phosphinate adjuvant is a compound of formula II
. . .
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12. A method of improving the selectivity of a metal
chelate of a 2-(substituted benzoyl)-1,3-cyclohexanedione of
formula (I) as defined in claim 1, when applied to unwanted
vegetation in a crop of useful plants, said method
comprising the applying of a herbicidally effective amount
of a composition as claimed in claim 1.

The issues
A. The Examiner rejected claims 1–6, 8, and 11-14 under 35 U.S.C.
§ 103(a) as obvious over Pallett2 and Johnson3 (Ans. 4).4
B. The Examiner rejected claims 9–10 under 35 U.S.C. § 103(a) as
obvious over Pallett, Johnson, and Goyette5 (Ans. 8).
C. The Examiner rejected claims 1–6 and 8–14 under 35 U.S.C. § 103(a)
as obvious over Scher6, Johnson, and Goyette (Ans. 12).
A. 35 U.S.C. § 103(a) over Pallett and Johnson
The Examiner finds that Pallett teaches an “herbicidal composition
comprising a herbicide 2-(2'-nitro-4'-methylsulfonylbenzoyl)-1, 3-
cyclohexanedione or its metal complex (page 6, line 5) and conventional
adjuvants, i.e. penetrating agents, if desired, wherein the adjuvants can also
serve as carriers (page 7, lines 8-11)” (Ans. 5). The Examiner finds that
Pallett teaches “a method for controlling the growth of weeds in crops-

2 Pallett et al., WO 2002/21919, published Mar. 21, 2002.
3 Johnson, R. R., U.S. 4,776,882, Oct. 11, 1998
4 Appellants omitted claims 13 and 14 from the Grounds of
Rejection to be Reviewed on Appeal section of their Appeal Brief
as being unpatentable over Pallett and Johnson. Because
Appellants did not separately argue these claims, we will treat this
as waiving argument regarding these claims consistent with 37
C.F.R. § 41.37(c)(1)(iv) (see App. Br. 7–8).
5 Goyette, L. E., U.S. 2,927,014, Mar. 1, 1960
6 Scher et al., U.S. 5,912,207, Jun. 15, 1999
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growing areas by applying to the locus of weeds an effective amount of
herbicidal composition” (Ans. 6). The Examiner finds that Johnson
“suggests that the penetrant-carrier can help the susceptibility or tolerance of
the off-target plants (which is the useful plants or crops) to the herbicide”
and teaches that the “penetrant-carriers can be a phosphorus compound
having” a chemical formula falling within the scope of claim 1 (Ans. 7).
The Examiner finds it obvious to “incorporate a penetrating agent, i.e.
the phosphate compound as taught by Johnson, into a herbicidal composition
because Johnson teaches that the penetrant-carrier can be used in
combination with herbicide to control or regulate the growth of undesired
woody plants” (Ans. 8).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the claimed herbicidal composition
and methods are obvious over Pallett and Johnson?
Findings of Fact
1. Pallett teaches herbicidal compositions comprising “2-(2'-nitro-
4'-methylsulfonylbenzoyl)-1, 3-cyclohexanedione or an agriculturally
acceptable salt or metal complex thereof” (Pallett 6, ll. 5–6).
2. Pallett teaches that “[h]erbicidal compositions according to the
present invention may also contain, if desired, conventional adjuvants such
as . . . penetrating agents” (Pallett 7, ll. 8–10).
3. Pallett teaches that the “adjuvants may also serve as carriers or
diluents” (Pallet 7, ll. 11–12).
4. Pallett teaches a method of “selective control of weeds at a
locus of weed infestation” using 2-(2'-nitro-4'-methylsulfonylbenzoyl)-1, 3-
cyclohexanedione (Pallett 4, ll. 4–7).
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5. Pallett teaches using the method to “control a very wide
spectrum of annual broad-leafed weeds and grass weeds” (Pallett 4, ll. 9–
10).
6. Johnson teaches “compositions comprising a penetrant-carrier
in combination with a herbicide . . . and the use of this composition in a
basal spray to control woody plants, regulate the growth of said plants or
control organisms which infest said plants” (Johnson, col. 1, l. 67 to col. 2, l.
5).
7. Johnson teaches that:
The penetrants of this invention are (a) compounds of
phosphorous having the formula:

wherein
xl, x2 and x3 are individually O or S;
n is 0 or 1;
R1 is selected from the group consisting of hydrogen,
C1 to C10 alkyl, aryl, aryl-(C1-C10)alkyl, cycloaliphatic, and
heterocyclic; and
R2 and R3 are individually selected from the group
consisting of C1-C10 alkyl, aryl, aryl-(C1-C10)alkyl,
cycloaliphatic, and heterocyclic.

(Johnson, col. 2, l. 14).
8. Johnson teaches that “compositions using these penetrants can
be effectively used . . . (c) with herbicides of limited soil activity thus
eliminating or significantly reducing the potential injury to off-target
vegetation” (Johnson, col. 1, ll. 56–63).
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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Appellants contend that Pallett does not disclose “any ingredients that
can be specifically described as phosphate adjuvants” (App. Br. 10).
Appellants contend that “Johnson does not cure the deficiencies of Pallet et
al. Johnson relates to a concentrated basal spray and, in particular, the use
of phosphoric acid and/or phthalic acid esters as wood penetrants for
biocidally active ingredient in basal spray compositions” (App. Br. 10).
We are not persuaded. We recognize that the Examiner’s reason for
combining these components may not be identical to Appellants’ reason for
combining where the formula (II) compound functions as an “adjuvant” to
the herbicide. However, that the prior art has a different reason or
motivation to combine the compounds of Pallett and Johnson is of no
moment as long as there is a reason to make the combination. See In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”). Also see KSR, 550 U.S. at 419 (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.”).
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In this case, claim 1 is an herbicidal composition claim which requires
two components, a cyclohexanedione of formula (I) and a phosphate
compound of formula (II). Pallett teaches an herbicidal composition
comprising the cyclohexanedione of formula I (FF 1) combined with a
penetrant (FF 2). Johnson teaches that phosphorus compounds of formula
(II) function as penetrants. We agree with the Examiner that the ordinary
artisan would have had reason to select the known penetrant of Johnson for
use in the herbicidal composition of Pallett, since Pallett teaches to combine
the herbicide of formula (I) with a penetrant (FF 2) and since Johnson
teaches that the penetrant of formula (II) functions by “eliminating or
significantly reducing the potential injury to off-target vegetation” (Johnson,
col. 1, ll. 62–63; FF 8).
Appellants contend that “the present invention provides a formulation
which improves the selectivity of the 2-(substituted benzoyl)-1,3-
cyclohexanedione herbicides of formula (I) by including phosphate,
phosphonate or phosphinate adjuvants as recited in claim 1” (App. Br. 11).
Appellants contend that they “found that the use of phosphoric acid esters
results in a surprising improvement in ‘herbicide selectivity’ with respect to
metal chelates of 2-(substituted benzoyl)-1,3-cyclohexanedione herbicides”
(App. Br. 13).
We are not persuaded. Appellants do not identify any teaching in the
Specification or other evidence which suggests that the claimed combination
of a known herbicide and known penetrant result in any surprising or
unexpected results. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is
well settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements . . . [do] not suffice.”) Also see In
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re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence”). Appellants provide no explanation
of the data in Example 1 (see Spec. 10-12) or any other evidence, indicating
that there are unexpected results, that these results have been compared to
the closest prior art, or that these results are commensurate in scope with the
broad class of compounds of formula (I) and formula (II) in claim 1.
Appellants contend that “the problems that Johnson and the present
invention address are very different” and “the teachings of Pallett et al. and
Johnson are in mutually exclusive technical fields” (App. Br. 12–13).
Appellants contend that “Johnson relates to the discovery that esters of
phosphoric acid or phthalic acid are effective wood penetrants for biocidally
active ingredients (e.g. phenoxy herbicides) which can provide improved
compositions for basal spray application to woody plants (App. Br. 12).
We are not persuaded. The test for non-analogous art is first whether
the art is within the field of the inventor’s endeavor and, if not, whether it is
“reasonably pertinent to the particular problem with which the inventor was
involved.” In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field” of
endeavor, it logically would have commended itself to an inventor’s
attention in considering his problem “because of the matter with which it
deals.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Pallett and Johnson are both pertinent to herbicidal compositions,
since Pallett is drawn to an herbicide composition comprising a penetrant
(FF 2) while Johnson teaches a penetrant which may be used “with
herbicides of limited soil activity” (Johnson, col. 1, ll. 61-63; FF 8). Thus,
both references are within the field of endeavor of claim 1.
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In addition, both Pallett and Johnson are pertinent to the issue of an
“herbicidal composition which demonstrates improved activity over the
prior art compositions, but with little or no increase in crop damage” (Spec.
1, ll. 4-5). Specifically, Pallett’s herbicide and penetrant are used to control
“a very wide spectrum of annual broad-leafed weeds and grass weeds”
(Pallett 4, ll. 9–10; FF 5) while Johnson teaches a penetrant which may be
used “with herbicides of limited soil activity . . . significantly reducing
potential injury to off-target vegetation” (Johnson, col. 1, ll. 61-63; FF 8).
Appellants have not excluded basal application in the present invention, nor
have they excluded undesirable plants with woody stems under the
definition for weeds in the Specification as “undesirable crop species” (Spec.
10).
Appellants contend that “there is no teaching, suggestion or
motivation in the cited references to combine these references in the claimed
manner” (App. Br. 13).
We are not persuaded. The Examiner finds reasons to combine Pallet
and Johnson, including that “Johnson explicitly suggests the benefit of
applying the phosphate-type penetrant-carrier with a herbicide. As such, it
provides the motivation to one of ordinary in the art to combine the
herbicide of Pallett with the phosphates adjuvant of Johnson to form a
herbicidal composition intended for use in weed control” (Ans. 21).
Appellants contend that Johnson does not suggest that the “penetrant-
carrier, per se, can eliminate or reduce potential injury to off-target
vegetation (i.e., improve herbicide selectivity)” (App. Br. 12). Appellants
argue that it is the “inherent property of these herbicides (having limited soil
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activity) [that] reduces the potential injury to off target vegetation rather than
the penetrant” (Id.).
We are not persuaded. The Examiner finds that “the intended use
does not create a structural difference, thus the intended use is not limiting”
(Ans. 21). As discussed already, Johnson discloses combining a penetrant
comprised of a phosphorous compound with an herbicide and using that
combination with the effect of reducing the potential injury to off-target
vegetation (FF 7–8). The Examiner correctly finds that the “selectivity”
property would have been inherent in the obvious herbicidal composition of
Pallett and Johnson (Ans. 21). See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”). Appellants provide no evidence in rebuttal of the
Examiner’s inherency position.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
claimed herbicidal composition and methods are obvious over Pallett and
Johnson.
B. 35 U.S.C. § 103(a) over Pallett, Johnson, and Goyette
The Examiner finds that, in addition to that discussed above, Goyette
teaches a method of applying phosphonate and phosphinate compounds to
control the growth of undesirable plants (Ans. 11). The Examiner further
finds that “Goyette, L. E. also teaches that both the phosphonate and the
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phosphinate compounds possess herbicidal activity for killing germinating
seeds, seedlings and plants” (Ans. 11).
The Examiner provides sound fact-based reasoning for combining
Goyette with Pallett and Johnson. As Appellants did not identify any
material defect in the Examiner’s reasoning, and only argue the underlying
rejection of Pallett and Johnson, which we affirmed above, we affirm this
rejection for the reasons stated by the Examiner.
C. 35 U.S.C. § 103(a) over Scher, Johnson, and Goyette
The Examiner finds that “Scher et al. teach a method for using a
composition, which contains metal chelated of 2-(substituted-benzoyl)-1,3-
cyclohexanedione herbicides to selectivity control weeds and other
undesirable vegetation in a given useful crops” (Ans. 13). The Examiner
further finds that the herbicidal formulation of Scher “can be applied directly
to an area where control of undesired vegetation is located, wherein the area
or locus includes soil, seed and established vegetation” (Id. at 16). The
Examiner finds that Johnson teaches a phosphorus penetrant-carrier
compound “which is used in combination with a biocide, i.e. herbicide, to
control or regulate the growth of undesired woody plants” (Id. at 16–17).
The Examiner finds that Goyette teaches a method of applying phosphonate
and phosphinate compounds to control the growth of undesirable plants (Id.
at 17–18).
The Examiner finds that “the desirable effects that can be obtained by
adding a penetrant-carrier would have motivated one of ordinary skill in the
art to include it into the herbicidal composition” (Ans. 19). The Examiner
finds it obvious to “incorporate the phosphonates or phosphinates into
Scher’s herbicidal composition because Goyette teaches that these
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compounds possess herbicidal activity and are useful for killing germinating
seeds, seedlings and plants” (Ans. 19).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the claimed herbicidal composition
and methods are obvious over Scher, Johnson, and Goyette?
Findings of Fact
9. Scher teaches 2-(substituted benzoyl)-1,3-cyclohexanedione
compounds” (Scher, col. 5, ll. 16–17).
10. Scher teaches that the metal chelate compounds “can be applied
directly to an area where control of undesired vegetation is located, using
known techniques for applying liquid or flowable herbicide formulations”
(Scher, col. 8, ll. 30–32).
11. Scher teaches that “[t]he stable, liquid formulations containing
an herbicidal metal chelate according to the invention can also be diluted to
a desired concentration of active ingredient(s) prior to application, or can be
tank-mixed with one or more additional herbicidal or other agricultural
compositions” (Scher, col. 8, ll. 32–37).
Analysis
Appellants contend that “Scher et al. merely suggest that a phosphate
is an example of a suitable salt which could be the source of the di- or tri-
valent metal ion (see column 7, line 57). Thus, Scher et al. do not teach or
suggest the use of a phosphate adjuvant as instantly claimed” (App. Br. 17).
The Examiner finds that “the Examiner does not state in this rejection
that the metal salt phosphates taught in Scher are the claimed phosphates
adjuvant” (Ans. 24). The Examiner finds “that Scher does not teach the
claimed phosphate, phosphonate or phosphinate compounds in their
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herbicidal composition, and the references Johnson and Goyette cured this
deficiency” (Ans. 24). The Examiner finds that the ordinary artisan “would
have been motivated to combine the known metal chelate herbicides taught
by Scher with the known herbicidally active phosphinates and phosphonates
to form a herbicidally active composition for control the growth of
undesirable plants growth” (Ans. 24).
We find that the Examiner has the better position. As the Examiner
notes, the rejection does not rely upon Scher for the phosphate compound of
formula (II), but rather relies upon Johnson and Goyette. As discussed
above, simply because the prior art has a different reason or motivation to
combine the compounds of Pallett and Johnson is of no moment as long as
there is a reason to make the combination. See Kemps, 97 F.3d at 1430
(“[T]he motivation in the prior art to combine the references does not have
to be identical to that of the applicant to establish obviousness.”). The
Examiner has provided specific and credible reasons to combine these
compounds as discussed above (see Ans. 24).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
claimed herbicidal composition and methods are obvious over Scher,
Johnson, and Goyette.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Pallett and Johnson. Pursuant to 37 C.F.R.
§ 41.37(c)(iv), we also affirm the rejection of claims 2-6, 8, and 11-14 as
these claims were not argued separately.
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We affirm the rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as obvious over Pallett, Johnson, and Goyette.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Scher, Johnson, and Goyette. Pursuant to 37 C.F.R.
§ 41.37(c)(iv), we also affirm the rejection of claims 2-6 and 8-14 as these
claims were not argued separately.

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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