Ex Parte Richburg et alDownload PDFPatent Trial and Appeal BoardDec 27, 201613345236 (P.T.A.B. Dec. 27, 2016) Copy Citation 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. 13/345,236 01/06/2012 John S. Richburg 2971-P10718.1US (68297-US 1045 80834 7590 12/29/2016 Maalehv PataYinns; Rr fTreenwonH/Onw AarnSoienoes; T T .P EXAMINER 170 S. Main Street Suite 1100 KOVALENKO, MYKOLA V Salt Lake City, UT 84101 ART UNIT PAPER NUMBER 1662 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): ptomail @ mcgiplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN S. RICHBURG, TERRY R. WRIGHT, LEON B. BRATON, and ANDREW E. ROBINSON.1 Appeal 2016-000667 Application 13/345,236 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 a field of cotton. The claims have been rejected as unpatentable under 35 U.S.C. § 103.. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants do not identify the real party in interest so we assume that the named inventors are the real parties in interest. 37 C.F.R. § 41.37 (c)(l)(i). Appeal 2016-000667 Application 13/345,236 STATEMENT OF THE CASE The present invention is a method for controlling weeds in a field of cotton plants using the auxin-like herbicide 2,4-DB. Spec. 1 5. The cotton plants in the treated field are tolerant of auxin herbicides. Id. Claims 1, 8, 9, 15, 16, 18, and 19 are on appeal. Claims 1 and 9 are illustrative and read as follows: 1. A method for controlling undesirable vegetation in a field containing an aryloxyalkanoate auxin herbicide-tolerant cotton crop while limiting epinastic herbicide injury to the crop, the method comprising applying to a location where control is desired a single application herbicidal treatment consisting of an herbicidally effective amount of 2,4-DB, wherein the herbicide-tolerant cotton plants of the crop comprise an herbicide tolerance gene coding for an aryloxyalkanoate dioxygenase (AAD) selected from the group consisting of AAD-1 and AAD-12, wherein the herbicide-tolerant cotton plants at the location are contacted with the herbicidally effective amount of 2.4- DB, and wherein the percentage of the foliage of the herbicide- tolerant cotton plants that is epinastic after the application of 2.4- DB is reduced relative to an application of an acid equivalent amount of 2,4-D. 9. A method for controlling undesirable vegetation m a field containing an aryloxyalkanoate auxin herbicide-tolerant cotton crop while limiting epinastic herbicide injury to the crop, the method comprising: applying to a location in the crop where control is desired, post- emergent and during the vegetative stage of growth of the plants of the herbicide tolerant cotton crop, an herbicidal treatment consisting of at least 1120 grams acid equivalent/hectare (g ae/ha) 2,4-DB, wherein no other herbicide is applied to the crop, 2 Appeal 2016-000667 Application 13/345,236 wherein the plants of the herbicide tolerant cotton crop comprise a gene coding for AAD-1 (aryloxyalkanoate dioxygenase-1), and wherein the percentage of the foliage of the herbicide tolerant cotton plants that is epinastic one day after the application of 2,4-DB is less than about 8.6%. Claims 1, 8, 9, 15, 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Amevik2 in view of Hayashi3 and Cui.4 DISCUSSION Issue The Examiner finds that Amevik teaches a system for controlling weeds in a cotton crop where the cotton is tolerant to an auxin-like herbicide including 2,4-DB. Non-Final Act. 3.5 The Examiner finds that the herbicide tolerance stems from the presence of a gene in the cotton which encodes for aryloxyalkanoate dioxygenase (AAD), specifically AAD-1 and AAD-12. Non-Final Act. 2—A. The Examiner finds that Cui teaches controlling weeds in a field of AAD transformed soybeans by applying 2,4-DB alone. Non- Final Act. 5. The Examiner finds that Hayashi teaches that 2,4-DB is metabolized in a plant to 2,4-D. The Examiner concludes that it would have been prima facie obvious, to one having ordinary skill in the art to modify the methods of Amevik et al using the 2 Amevik et al., US 2008/0305952 Al, published Dec. 11, 2008 (“Amevik”). 3 Hayashi et al., 2,4-Dichlorophenoxybutyric Acid-Resistant Mutants of Arabidopsis Have Defects in Glyoxysomal Fatty Avid f-Oxidation, 10 The Plant Cell 183 (1998) (“Hayashi”). 4 Cui et al., WO 2011/066384 Al, published June 3, 2011 (“Cui”). 5 Non-Final Action entered April 22, 2014. 3 Appeal 2016-000667 Application 13/345,236 teachings of Hayashi et al and Cui et al and to treat AAD-1 or AAD-12 expressing cotton plants with 2,4-DB alone (instant claim 1), in addition to combining that treatment with, for example, glyphosate, as taught by Amevik et la (instant claim 16). Because 2,4-DB is converted to 2,4-D, one could have reasonably expected that the plants sensitive to 2,4-D would also be sensitive to 2,4-DB. Thus the use of 2,4-DB instead in the methods of controlling undesired vegetation would have been an obvious variant of the use of 2,4-D in those methods. In addition, applying 2,4-DB to any species of weeds that are sensitive to 2,4-DB, including any hard-to-control species that are susceptible to auxin-like herbicides, would have been obvious in view of the teachings of Amevik et al (instant claims 18 and 19). Because Amevik et al and Cui et al had successfully reduced their inventions to practice, one would have had a reasonable expectation of success. Non-Final Act. 5—6. Appellants contend that Amevik does not teach the use of 2,4-DB alone and that one skilled in the art would not have expected that 2,4-DB would give different results that 2,4-D. Appeal Br. 6. Appellants argue that the both Hayashi and Cui are directed to soybean plants and that one skilled in the art would not have been motivated to apply their teachings to cotton plants. Appeal Br. 8—9. Appellants also argue that the use of 2,4-DB resulting in significantly less damage to the cotton plant relative to 2,4-D is unexpected. Appeal Br. 9-10. The issue with respect to this rejection is whether the Examiner has established by a preponderance of the evidence that claims 1, 8, 9, 15, 16, 18, and 19 would have been obvious over Amevik combined with Hayashi and Cui under 35 U.S.C. § 103(a). 4 Appeal 2016-000667 Application 13/345,236 Findings of Fact FF1. Amevik teaches the use of auxin-like herbicides to control weeds in fields of a crop which has been genetically modified to be tolerant to auxin-like herbicides. Amevik || 15 and 16. FF2. Amevik teaches that the crop may be either cotton or soybeans. Amevik 118. FF3. Amevik teaches that the method of controlling weeds comprises “employing one or more herbicides to control the growth of one or more weeds.” Amevik 124. FF4. Amevik teaches that tolerance to auxin-like herbicide stems from a transgene that encodes for AAD-1 and AAD-12. Amevik ]f]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 |59. FF6. Hayashi and Cui both teach that 2,4-DB is converted into 2,4-D by plants. Hayashi Abstract, Cui 14,11. 18—20. Principles of Law The test of obviousness is “whether the teachings of the prior art, taken as a whole, would have made obvious the claimed invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). “[W]hen a patent claims a stmcture already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” 5 Appeal 2016-000667 Application 13/345,236 KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 50-51 (1966). “[B]y definition, any superior property must be unexpected to be considered evidence of non-obviousness. Thus, in order to properly evaluate whether a superior property was unexpected, the [fact-finder] should have considered what properties were expected. Here, Pfizer’s evidence must fail because the record is devoid of any evidence of what the skilled artisan would have expected.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). “[Dependent claims are nonobvious if the independent claims from which they depend are nonobvious.” In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). Analysis We agree with the Examiner that the subject matter of claim 1, applying an herbicidally effective amount of 2,4-DB to a cotton field, would have been obvious to one skilled in the art at the time the invention was made. Amevik teaches the use of an auxin-like herbicide to control weeds in a cotton having tolerance to auxin-like herbicides. FF1 and 2. Amevik teaches that tolerance to auxin-like herbicides can stem from genes coding for either AAD-1 or AAD-12. FF4. Amevik teaches that the auxin-like herbicide can be 2,4-DB and that the herbicide can be applied by itself. FF3 and 5. Appellants contend that Amevik does not teach the application of 2,4- DB alone. Appeal Br. 6. We are unpersuaded. Amevik specifically teaches that the auxin-like herbicide such as 2,4-DB can be applied by itself. FF3. 6 Appeal 2016-000667 Application 13/345,236 Appellants argue that 2,4-DB and 2,4-D are not obvious variants of each other. Reply Br. 4. We are not persuaded. Amevik teaches that both are auxin-like herbicides and that both can be used in practice of the method disclosed in Amevik. Amevik || 105 and 106. Substitution of one known element for another is deemed obvious absent evidence of unexpected results. KSR Inti Co., 550 U.S. at 416. Appellants next argue that the reduced damage when the cotton is exposed to 2,4-DB compared to when it is exposed to 2,4-D is unexpected. We remain unpersuaded. As the Examiner points out Hayashi teaches that 2,4-DB acts by converting to 2,4-D in the plant and that the conversion would not be expected to be 100%. Ans. 12—13. We agree with the Examiner that one skilled in the art would understand that since 2,4-DB is not completely converted to 2,4-D, one would expect the injury to the plants to be less. Ans. 13. We therefore also agree with the Examiner that Appellants’ evidence of unexpected results does not outweigh the evidence of prima facie obviousness as to claim 1. With respect to claims 9 and 18 and their dependent claims 8 and 19, we reach a different conclusion. Claims 9 and 18 contain the limitation that the percentage of the foliage of the herbicide tolerant cotton plants that is epinastic one day after the application of 2,4-DB is less than about 8.6%. Appeal Br. 15, 16 (Claims Appendix). We agree with Appellants that this specific low level of damage is not taught or suggested by the references. Appeal Br. 12—13. In particular, from the data presented in the Specification, a mean injury of less than 8.6% is substantially less than the mean injury level reported for 2,4-D. Spec. Table 2. Conclusion of Law 7 Appeal 2016-000667 Application 13/345,236 We conclude that the Examiner has established by a preponderance of the evidence that claim 1 would have been obvious over Amevik combined with Cui and Hayashi, but that the Examiner has not established that claims 8, 9, 18, and 19 would have been obvious over the references. Claims 15 and 16 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 of claims 1,15 and 16 under 35 U.S.C. § 103(a) but reverse the rejection of claims 8, 9, 18, and 19 under 35 U.S.C. § 103(a). 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-IN-PART 8 Copy with citationCopy as parenthetical citation