Ex Parte Richburg et al

Patent Trial and Appeal Board

Sep 7, 2016

13452472 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/452,472 04/20/2012 John S. Richburg
80834 7590 09/09/2016
Magleby Cataxinos & Greenwood/Dow AgroSciences LLC
170 S. Main Street
Suite 1100
Salt Lake City, UT 84101
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-Pl 0720.1US(70995-US- 2240
EXAMINER
KOV ALENKO, MYKOLA V
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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 JOHNS. RICHBURG, TERRY R. WRIGHT,
LEON B. BRAXTON, and ANDREW E. ROBINSON.
Appeal2014-009809
Application 13/452,472
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
resistant to both auxin-like herbicides and glyphosate. Spec. 2. The method
involves applying a mixture of2,4-DB (an auxin-like herbicide) and
glyphosate. Id. The application of the herbicide mixture to fields containing
Appeal2014-009809
Application 13/452,472
herbicide resistant cotton plants results in control of weed and reduced
epistatic damage to the cotton plants. Spec. 6.
Claims 1, 8, 9, 15, and 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 glyphosate herbicide-resistant cotton crop, the method
compnsmg:
applying to a location where control is desired a mixture
of 2,4-DB and glyphosate 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 AAD-1 and AAD-12; and
wherein injury to the aryloxyalkanoate auxin herbicide-
resistant cotton crop after application of the mixture of 2,4-DB
and glyphosate is reduced relative to an application of a mixture
of an acid equivalent amount of 2,4-D and glyphosate.
The claims stand rejected as follows:
Claims 1, 8, 9, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amevik1.
DISCUSSION
Issue
In rejecting the pending claims as obvious, the Examiner finds that
Amevik teaches a method for controlling weeds in a crop-growing
1 Amevik et al., US 2008/0305952 Al (published Dec. 11, 2008)
(" Amevik")
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Application 13/452,472
environment by applying a mixture of am auxin-like herbicide, such as 2,4-
DB and glyphosate. Final Act. 3. The Examiner finds that the mixture is
applied to a field of crops, such as cotton, where the crops have been
modified to be resistant to both auxin-like herbicides and glyphosate. Id.
The Examiner finds that the 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
glyphosate 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 2,4-
D and glyphosate" would naturally flow from the method and
thus would not add a functional limitation to the claimed
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Application 13/452,472
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 glyphosate 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. 5. Appellants argue that there is not guidance or direction to
choose 2,4-DB over the other herbicides. Id. 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. 6.
Appellants point out that the teachings of claims 1 and 17 are directed to the
plant's resistance to 2,4-DB and not the application of 2,4-DB. Appeal Br.
6-7. Appellants go on the argue that nothing in Amevik would lead on to
Appellants' surprising discovery that 2,4-DB causes less damage to the crop
plants than application of 2,4-D. Appeal Br. 8. Appellants also argue that
Amevik teaches away from using 2,4-DB in the method of Amevik. Appeal
Br. 8.
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).
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Application 13/452,472
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.
FF2. The herbicide can be a mixture of glyphosate and dicamba, an
auxin-like herbicide. Amevik i-f 60.
FF3. The crop plants may also be tolerant to glyphosate. 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-116, 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 i-f 59.
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."
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Application 13/452,472
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 Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
"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 primafacie 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).
"The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from ... alternatives because such disclosure
does not criticize, discredit, or otherwise discourage the solution claimed."
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Analysis
Claim 1 is representative of the rejected claims and is directed to a
method of controlling undesirable plants in an area planted 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. Arnevik teaches a method for controlling weeds in a
crop-growing environment using a mixture of an auxin-like herbicide and
glyphosate. 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 glyphosate.
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Application 13/452,472
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.
Appellants argue that the examiner's reliance on claims 1 and 1 7 of
Amevik is misplaced as the claims only refer to the auxin-like herbicide
resistance of the crop plant and not the application of 2,4-DB. We are
unpersuaded. Amevik specifically discloses 2,4-DB as an auxin-like
herbicide that can be used in the practice of the disclosed method. FF5.
Amevik also teaches that the auxin-like herbicides can be sued on herbicide
tolerant plants without significantly damaging the plants. FF7. 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 claimed method. Ans. 10-11. Amevik
teaches that plants tolerant to auxin-like herbicides and glyphosate
experience little damage when treated with a mixture of the herbicides. FF7.
That there is less damage, by itself, would naturally flow from using the
disclosed method and therefore be expected ..
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Application 13/452,472
Appellants argue that there is less damage caused by 2,4-DB as
compared to the damage cause by 2,4-D is surprising discovery. Appeal Br.
5 and 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. 2-3. Appellants have put forth no persuasive
objective evidence that the results are unexpected. Moreover, example 2,
which shows increased resistance to 2,4-DB compared to 2,4-D when mixed
with glyphosate, only contains data for cotton plants transformed with AAD-
1. Spec. 12. The claims refer to 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. In re Dill, 604 F.2d at 1361
Appellants next argue that Amevik teaches away from using 2,4-DB
in the method disclosed in Amevik. Appeal Br. 8. Again, we are
unpersuaded. As discussed above, Amevik specifically teaches that 2,4-DB
is an auxin -like herbicide that can be used in the practice of the claimed
method. FF5. Moreover, Appellants point to nothing in Amevik which
"criticize[ s ], discredit[ s] or otherwise discourage[ s] the solution claimed."
In re Fulton, 391 F.3d at 1201.
With respect to claim 9, Appellants argue that Amevik does not teach
the specified application rates nor does Amevik teach that there is reduced
injury after 6 hour following application of 2,4-BD and glyphosate when
compare to use of 2,4D and glyphosate. Appeal Br. 9. We are unpersuaded.
As the Examiner points out, Amevik teaches concentrations at which 2,4-
DB can be applied. Ans. 14, Amevik i-f 59. With respect to the clause
relating to the reduced damage after 6 hours, we agree with the Examiner
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Application 13/452,472
that the clause merely states an intended results and is not a patentable
distinction. Ans. 14. Moreover, we agree with the Examiner that "[b]ecause
Amevik et al make obvious the elements that comprise the method steps of
claim 9, the claimed reduced injury rate would naturally flow from the
method. This would be true regardless of the time of observation. See
MPEP 2131." Id.
Conclusion of Law
We find that the Examiner has established by a preponderance of the
evidence that claims 1 and 9 would have been obvious over Amevik under
35 U.S.C § 103(a).
Claims 8, 15, and 162 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, 8, 9, 15, and 16 as obvious under 35
U.S.C. § lO(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
2 Appellants acknowledge that claims 8, 15, and 16 fall with either claim 1
or claim 9. Appeal Br. 8-9.
9