Ex Parte Richburg et al

Patent Trial and Appeal Board

Aug 29, 2016

13452384 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/452,384 04/20/2012
7590
Edgar R. Cataxinos, Esq.
TraskBritt, PC
P.O. Box 2550
Salt Lake City, UT 84110
08/30/2016
FIRST NAMED INVENTOR
John S. Richburg
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.
2971-Pl0719.1US(70994-US- 1825
EXAMINER
KOV ALENKO, MYKOLA V
ART UNIT PAPER NUMBER
1662
MAILDATE DELIVERY MODE
08/30/2016 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 JOHNS. RICHBURG, TERRY R. WRIGHT,
LEON B. BRAXTON, and ANDREW E. ROBINSON. 1
Appeal2014-009903
Application 13/452,384
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for controlling weeds in cotton fields which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to a method for controlling
undesirable vegetation (weeds) in fields containing cotton plants that are
1 Appellants identify the Real Party in Interest as Dow Agrosciences, LLC.
Appeal Br. 2.
Appeal2014-009903
Application 13/452,384
resistant to both auxin-like herbicides and glufosinate. Spec. 2. The method
involves applying a mixture of2,4-DB (an auxin-like herbicide) and
glufosinate. Id. The application of the herbicide mixture to fields
containing herbicide resistant cotton plants results in control of weed and
reduced epistatic damage to the cotton plants. Spec. 6.
Claims 1, 3, 4, and 6-16 are on appeal. Claim 1 is illustrative and
reads as follows:
1. A method for controlling undesirable vegetation in a
field containing an aryloxyalkanoate auxin herbicide-resistant
and glufosinate herbicide-resistant cotton crop, the method
compnsmg:
applying to a location where control is desired a mixture
of 2,4-DB and glufosinate in an herbicidally effective amount,
wherein the plants of the herbicide resistant cotton crop
comprise an herbicide-tolerance gene coding for an
aryloxyalkanoate dioxygenase (AAD) selected from the group
consisting of ii .. 1A .. D- l and AAD-12; and
wherein injury to the aryloxyalkanoate auxin herbicide-
resistant cotton crop after application of the mixture of 2,4-DB
and glufosinate is reduced relative to an application of a
mixture of an acid equivalent amount of 2,4-D and glufosinate.
The claims stand rejected as follows:
Claims 1, 3, 4, and 6-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amevik2.
2 Amevik et al., US 2008/0305952 Al (published Dec. 11, 2008)
("Amevik").
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Application 13/452,384
DISCUSSION
Issue
In rejecting the pending claims as obvious, the Examiner finds that
Amevik teaches a method for controlling weeds in a crop-growing
environment by applying a mixture of an auxin-like herbicide, such as 2,4-
DB and glufosinate. Final Act. 3. The mixture is applied to a field of crops,
such as cotton, that have been modified to be resistant to both auxin-like
herbicides and glufosinate. Id. The Examiner finds that Amevik teaches
that the resistance to auxin-like herbicides stems from expression of a
transgene encoding for aryloxyalkanoate dioxygenase AAD, specifically
AAD-1 or AAD-12. Final Act. 3--4. The Examiner also finds that Amevik
teaches that the application of the herbicide mixture controls the weeds
without significant damage to the crop plant. Final Act. 4. The Examiner
concludes that:
At the time the invention was made, it would have been
prima facie obvious to one having ordinary skill in the art to use
2,4-DB (an auxin-like herbicide, like dicamba) instead of
dicamba in a mixture with and apply the mixture to cotton crop
(instant claim 1 ). One would have been motivated to do so,
because Amevik et al[.] teach applying both, 2,4-DB and
glufosinate to cotton plants (Amevik et al[.], claims 1, 17, 22 and
31 ), and because Amevik et al[.] teach that "if more than one
herbicide is used then they may be applied sequentially or as a
mixture" (Amevik et al[.], pg. 4 38, 39; emphasis added).
At the instant claims 3, 4, and 6, the clause that begins with
"wherein injury ... " expresses the intended result of the claimed
method steps positively recited. Under MPEP 2111.04, the
clause is not given patentable weight. In addition, because
Amevik et al[.] teach the elements that comprise the method
steps of the instant claims 3, 4, and 6, the claimed reduced injury
rate "relative to an application of an acid equivalent amount of
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Application 13/452,384
2,4-D and glufosinate" would naturally flow from the method
and thus would not add a functional limitation to the claimed
invention. This would be true regardless of the time of
observation. See MPEP 2131.
Final Act. 6.
Appellants contend that Amevik does not teach the application of 2,4-
DB and glufosinate to a cotton crop and there is nothing to suggest that 2,4-
DB has any advantages over the other herbicides mentioned in Amevik.
Appeal Br. 6-7. Appellants argue that there is no guidance or direction to
choose 2,4-DB over the other herbicides. Appeal Br. 7. Appellants argue
that 2,4-DB is not listed in the tables of useful herbicides and that Amevik
provides no rationale as to why one skilled in the art would use 2,4-DB.
Appeal Br. 7-8. Appellants argue that nothing in Amevik would lead on to
Appellants' surprising discovery that 2,4-DB causes less damage to the crop
plants than the application of 2,4-D. Appeal Br. 8. Appellants also argue
that the reduced crop damage versus 2,4-D is not inherent in the previously
known methods. Appeal Br. 9.
The issue before us is whether the Examiner has established by a
preponderance of the evidence that the rejected claims would have been
obvious over Amevik under 35 U.S.C. § 103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
FF 1. Amevik teaches a method for controlling weed growth in a
crop-growing environment by applying one or more herbicides to a crop
tolerant to auxin-like herbicides. Amevik i-f 15.
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Application 13/452,384
The herbicide can be a mixture of glufosinate and dicamba, an auxin-
like herbicide.
FF3. The crop plants may also be tolerant to glufosinate. Amevik i-fi-1
22 and 55.
FF4. Tolerance to the auxin-like herbicide stems from a transgene
that encodes for AAD-1 or AAD-12. Amevik i-fi-f 16, 43, and 78.
FF5. The auxin-like herbicides which can be used in the method of
Amevik include 2,4-dichlorophenyoxyacetic acid ("2,4-D") or 4-(2,4-
dichlorophenoxy) butyric acid ("2,4-DB"). Amevik i159.
FF6. The crop plant can be cotton. Amevik i-f 18.
FF7. Amevik teaches that the application of the herbicide mixture to
the herbicide tolerant crop plants reduces the damage to the crop plants.
Amevik i-f 15.
Principles of Law
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
"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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious," the answer depends on "whether the improvement is more
than the predictable use of prior art elements according to their established
functions." KSR, 550 U.S. at 417.
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Application 13/452,384
"An assertion of what seems to follow from common experience is
just attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness." In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997).
"The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains." In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Analysis
Claim 1 is representative of the rejected claims and is directed to a
method of controlling undesirable plants in an area with crops. We agree
with the Examiner's conclusion that the subject matter of claim 1 would
have been obvious to one of ordinary skill in the art at the time the invention
was made. Amevik teaches a method for controlling weeds in a crop-
growing environment using a mixture of an auxin-like herbicide and
glufosinate. FFl and 2. The crops in the area to be treated, such as cotton,
have been modified to be tolerant to an auxin-like herbicide and glufosinate.
FF 1-3 and 6. The tolerance to the auxin like herbicide stems from the plant
having a transgene which encodes for AAD-1 or AAD-12. FF4. Amevik
teaches that 2,4-DB is an auxin-like herbicide. FF5. Amevik teaches that
application of the herbicide mixture to the modified plants results in no
significant damage to the crop plant. FF7. It would have been obvious to
one skilled in the art to substitute one auxin-like herbicide, 2,4-DB for
another, dicamba, with the expectation that the substituted herbicide would
exhibit similar properties, reduced damage to the crop plant.
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Application 13/452,384
Appellants contend that while Arnevik discloses 2,4-DB, the methods
disclosed in Arnevik are limited to the use of dicamba and 2,4-D as the
auxin-like herbicides. Appeal Br. 6. Appellants also argue that 2,4-DB and
2,4D are not interchangeable because 2,4-DB yields different results.
Appeal Br. 8-9, Reply Br. 2. We are unpersuaded. Arnevik specifically
discloses 2,4-DB as an auxin-like herbicide that can be used in the practice
of the disclosed method. FF5. Arnevik also teaches that the auxin-like
herbicides can be used on herbicide tolerant plants without significantly
damaging the plants. FF7. Finally, Arnevik specifically claims 2,4-DB as a
herbicide to be used in the claimed method. See, Arnevik, claims 17 and 31.
As discussed above, it would have been obvious to one skilled in the art to
substitute 2,4-DB for either dicamba or 2,4-D.
With respect to Appellants' argument regarding the limitation
concerning the relative degree of epistatic damage caused by 2,4-DB versus
2,4-D, we agree with the Examiner that the clause only states a desired result
that would naturally flow from the method. Ans. 10-11. Arnevik teaches
that plants tolerant to auxin-like herbicides and glufosinate experience little
damage when treated with a mixture of the herbicides. FF7. That there is
less damage, by itself, would be expected and would naturally flow from
using the disclosed method.
Appellants argue that there is less damage caused by 2,4-DB as
opposed to that caused by 2,4-D is a surprising discovery. Appeal Br. 8,
Reply Br. 3. We are unpersuaded. The only statement that the results are
unexpected or surprising is that made by Appellants' attorney. Appeal Br. 8,
Reply Br. 3. Appellants have put forth no persuasive objective evidence that
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Application 13/452,384
the results are unexpected. Moreover, only example 2, which relates to
cotton plants transformed with AAD-1 show "[s]ignificantly [i]ncreased
[r]esistance to 2,4-DB [c]ompared to 2,4-D [w]hen [m]ixed with
[g]lufosinate."3 Spec. 11-12. The claims refer to both cotton plants
transformed with either AAD-1 or AAD-12. Thus, the data of unexpected
results is not commensurate with the scope of the claims.
Conclusion of Law
We find that the Examiner has established by a preponderance of the
evidence that claim 1 would have been obvious over Amevik under 35
U.S.C § 103(a).
Claims 3, 4 and 6-164 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection claims 1, 3, 4 and 6-16 as obvious under 35
U.S.C. § lO(a).
3 Example 3 states that cotton plants modified with AAD-12 has only
moderately increased resistance to 2,4-DB. Spec. 12.
4 While claims 8, 9, 15, and 16 were discussed separately, Appellants offer
no specific arguments to support the patentability of these claims and
acknowledge that the claims either directly or indirectly fall with claim 1.
Appeal Br. 10.
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Appeal2014-009903
Application 13/452,384
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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