Ex Parte Rodekohr et al

Patent Trial and Appeal Board

Apr 18, 2016

11568927 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111568,927
84331 7590
MMWVIP,LLC
7900 Westpark Drive
Suite AIOO
McLean, VA 22102
0510412007
04/20/2016
FIRST NAMED INVENTOR
Diana Rodekohr
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.
2923343-073000 2497
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANA RODEKOHR, UWE PRIESNITZ, and
FRANK ROSENFELDT 1
Appeal2013-008616
Application 11/568,927
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Bayer Intellectual Property
GmbH. App. Br. 4.
Appeal2013-008616
Application 11/568,927
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 23-36.2 Specifically, claims 23 and
25-36 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being
obvious over the combination of Schutte et al. (US 5, 783,203, July 21, 1998)
("Schutte") and Doller et al. (US 2006/0247242 Al, November 2, 2006)
("Doller").
Claims 23 and 24 stand rejected as unpatentable under 35 U.S.C. §
103(a) as being obvious over the combination of Schutte, Doller, and Baode
Wang et al., Evaluation of Insecticides for Controlling the Asian
Longhorned Beetle, Anoplophora glabripennis - a Synthesis Presentation,
Proceedings: 2002 US. DEPARTMENT OF AGRICULTURE INTERAGENCY
RESEARCH FORUM 97-99 (2002) ("Wang"). 3
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a method of improving the growth
of plants comprising applying to said plant or the locus thereof at least one
2 Claims 1-22 are canceled. App. Br. 22.
3 The Examiner states that this paper is authored by "Shields et al." Final
Act. 6. However, the first author of the reference provided, which bears the
identical title and citation, is Baode Wang and there is no author listed by the
name of "Shields." We consequently employ the author's name listed on the
reference when referring to that reference.
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Application 11/568,927
compound selected from the class of agonists and antagonists of the
nicotinic acetylcholine receptors in combination with a fertilizer. Abstract.
REPRESENTATIVE CLAIM
Claim 23 is representative of the claims on appeal, and recites:
23. A process for improving the growth of a forest tree or an
amenity tree comprising applying to said forest tree or amenity
tree or the locus thereof at the time of planting imidacloprid in
combination with a fertilizer in the form of granules or a shaped
article, wherein said forest tree or amenity tree is in need of said
growth and wherein said imidacloprid and fertilizer are present
in amounts which synergistically improve the growth of the
forest tree or amenity tree.
App. Br. 22.
ISSUES AND ANALYSES
A. Claims 23, 25-27, and 30-35
Issue 1
Appellants argue the Examiner erred in finding the combined cited
prior art provides a reason why one of ordinary skill in the art would expect
that mixtures of imidacloprid and a fertilizer would improve the growth of a
forest tree or an amenity tree or result in a synergistic improvement in the
growth of such trees. App. Br. 8.
Analysis
Appellants dispute the Examiner's conclusion that, although the
combination of Schutte and Doller teaches the limitations of claim 23 in the
context of a tree insecticide, "a new use, new function or unknown property
which is inherently present in the prior art does not necessarily make the
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Application 11/568,927
claim patentable." App. Br. 9 (citing Final Act. 5 (quoting Jn re Best, 562
F.2d 1252, 1254--55 (C.C.P.A. 1977)). Appellants argue that, although
Schutte and Doller teach applying imidacloprid in combination with a
fertilizer to control pests, the likelihood of the application of the
combination improving the growth of a forest or an amenity tree is only a
possible outcome. Id. Appellants argue that the facts of the present appeal
are distinguishable from those of Best because the combination of Schutte
and Doller neither teaches nor suggests the limitation of claim 23 requiring a
synergistic improvement of growth. Id.
Furthermore, Appellants argue, neither Schutte nor Doller teach
continuous treatment using the compositions and, therefore, there is no more
than a possibility that forest or amenity trees treated for the target pests
would be treated with a sufficient amount to synergistically improve growth
of the tree. App. Br. 9.
Appellants contend Federal Circuit case law supports their position
that the burden does not shift to Appellants to demonstrate a nonobvious
feature over the cited art because, Appellants argue, "inherency has nothing
to do with obviousness." App. Br. 9 (citing, inter alia, In re Spormann, 363
F.2d 444, 448 (C.C.P.A. 1966); In re Shetty, 566 F.2d 81, 86 (C.C.P.A.
1977)).
Appellants argue further the Examiner's conclusion of obviousness is
impermissibly based upon hindsight analysis. App. Br. 10. Appellants
assert claim 23 has been amended to include a similar limitation that the
method is to be practiced on a "forest tree or amenity tree [that] is in need of
said growth." Id. Appellants contend that, because Schutte and Doller
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Application 11/568,927
neither teach nor suggest the need to improve the growth of plants, the
Examiner's rejection is based upon impermissible hindsight. Id.
Finally, Appellants argue, the Examiner's primafacie case of
obviousness is overcome by the unexpected results of applying imidacloprid
and fertilizer to a forest or amenity tree as prescribed by claim 23; viz., a
synergistic growth effect. App. Br. 12-13. Appellants point to Tables 1 and
2 of their Specification as evidence of the synergistic growth achieved by
application of their claimed invention. Id. at 13.
The Examiner states that, when a prima facie case of obviousness is
established, the burden shifts to Appellants to come forward with arguments
and/or evidence to rebut the primafacie case. Ans. 7-8 (citing MPEP §
2145). The Examiner finds, with respect to whether improving the growth
of a forest or amenity is merely a possibility, that the recognition of latent
properties in the prior art does not render nonobvious an otherwise known
invention. Id. at 8 (citing In re Wiseman, 596 F.2d 1019, 1023 (C.C.P.A.
1979). The Examiner finds the fact that Appellants recognize another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious. Id. (citing Ex parte Obiaya, 227 USPQ 58, 60
(B.P.A.I. 1985).
In the present appeal, the Examiner finds the method steps claimed are
the same as those found in the prior art. Ans. 8. Additionally, the Examiner
finds the inclusion of fertilizer in a composition would necessarily improve
the growth of a forest tree, as would the presence of an insecticide. Id.
Therefore, the Examiner finds, the claimed features would necessarily have
been present in the prior art. Id.
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Application 11/568,927
With respect to Appellants' allegation of impermissible hindsight
analysis, the Examiner finds the specific combination of elements claimed is
explicitly taught by the prior art. Ans. 9. The Examiner therefore finds the
effect of improving plant growth would necessarily follow from the
teachings of Schutte and Doller. Id.
Finally, with respect to Appellants' assertion of unexpected
synergistic results, the Examiner finds Schutte explicitly teaches the
combination of imidacloprid with a fertilizer. Ans. 9. The Examiner finds
the expected beneficial result of applying imidacloprid is evidence of the
obviousness of the claimed invention, just as unexpected results are evidence
ofnonobviousness. Id. (citing In re Gershon, 372 F.2d 535, 538 (C.C.P.A.
1967).
We do not agree with Appellants' arguments. As an initial matter, we
are not persuaded by Appellants' argument that because neither Schutte nor
Doller teach continuous treatment using the compositions, there is no more
than a possibility that forest or amenity trees treated for the target pests
would also be treated with a sufficient amount to synergistically improve
their growth. See App. Br. 9. "[C]ontinuous treatment using the
composition" is not within the scope of the appealed claims, which require,
rather, "applying [the composition] to said forest tree or amenity tree or the
locus thereof at the time of planting." Claim 23. The language of the claim
thus may be read as requiring applying the composition to the tree or to the
locus at time of planting, but it does not require a continuous application of
the composition, as Appellants argue.
Moreover, we disagree with Appellants' contention that, although the
Examiner has made a prima facie case of obviousness, the burden of
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showing unexpected properties of the invention does not shift to them.
Appellants do not argue that the combination Schutte and Doller neither
teaches nor suggests applying a combination of a fertilizer and imidacloprid.
Rather, they argue that the prior art neither teaches nor suggests "wherein
said forest tree or amenity tree is in need of said growth and wherein said
imidacloprid and fertilizer are present in amounts which synergistically
improve the growth of the forest tree or amenity tree." Nevertheless, 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). We agree with the Examiner
that a person of ordinary skill in the art would reasonably expect that the
application of a fertilizer combined with a pesticide to a tree would normally
result in enhanced or increased growth. Consequently, the burden shifts to
Appellants to demonstrate that the claims are not obvious.
Appellants argue that it is the synergistic effect of the imidacloprid
and the fertilizer on tree growth that is evidence of the nonobviousness of
their invention, citing Tables 1 and 2 of the Specification in support of their
contention. See App. Br. 12-13. Tables 1 and 2 present data from two
separate studies, respectively, in which trees were treated with fertilizer,
imidacloprid, both fertilizer and imidacloprid, or left untreated (control).
We are not persuaded by Appellants' evidence. As an initial matter,
Appellants provide no information with respect to the amounts of fertilizer
or imidacloprid applied during the study, whereas the Colby test requires
that equal amounts of both be applied to each experiments population. See
Spec 18. Moreover, only the normalized mean values of tree growth in each
experimental group are presented; there is no statistical analyses of the intra-
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Application 11/568,927
and intergroup growth of each group. Appellants' Specification recites: "All
results are statistically evaluated having a significance level of 5%. Besides
the mean value comparison the Fisher's PLSD test has been applied" but it is
not otherwise informative of statistical variation or significance. See Spec.
19. Consequently, it is not possible to determine with a reasonable degree of
certainty whether the effects presented in the Specification actually do show
synergy.
Moreover, the Board has previously observed:
On the issue of whether or not synergism has been
demonstrated, generalizations such as the Colby formula are not
particularly useful. The Colby equation inherently results in an
expectation of a less than additive effect for any combination of
herbicides. There is no evidence of record that this approach is
considered to be valid by a significant number of ordinarily
skilled workers or authorities in this area of technology. It could
reasonably be argued that at least additive results should be
expected, and an argument can even be made out for the
proposition that in most cases better than additive results could
be expected. The examiner has indicated certain clear anomalies
that the Colby equation gives rise to. We would, however,
mention several additional reasons for expecting better than
additive results with the use of two or more, different herbicides.
Ex Parte Quadranti, 25 USPQ2d 1071, 1072 (B.P.A.I. 1992). We agree that
the Colby formula, upon which Appellants rely, is a considerably imperfect
tool for demonstrating synergy.
Finally, and more importantly, although the data presented in Tables 1
and 2 of the Specification may demonstrate a synergistic effect, we do not
agree with Appellants that the supposed synergistic effects are sufficient to
overcome the Examiner's primafacie case of obviousness. Although
Appellants' Specification may show the superior results of combining
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Application 11/568,927
unknown amounts of fertilizer and imidacloprid, we agree with the
Examiner that this secondary consideration does not overcome the strong
showing of obviousness in this appeal. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1372 (Fed. Cir. 2007) ("Although secondary considerations must
be taken into account, they do not necessarily control the obviousness
conclusion"). In the instant appeal, we find that the alleged improvement in
tree growth caused by the claimed invention does not represent the
"difference in kind" that is required to show unexpected results and therefore
does not overcome the Examiner's conclusion that the claims are obvious
over the combined cited prior art. See In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005).
Consequently we explicitly adopt as our own the Examiner's findings
and conclusion that claims 22, 25-27, and 30-35 are obvious over the
combined cited prior art and we affirm the Examiner's rejection of the
claims.
B. Claim 24
Issue
Appellants argue dependent claim 24 separately. App. Br. 14. Claim
24 recites: "The process according to claim 23 wherein the forest tree or the
amenity tree is selected from Horse Chestnut, Plane tree, lime tree and
maple tree." Id. at 22. Appellants contend neither Schutte nor Doller, alone
or in combination, provide a reason to select the particular forest tree or
amenity tree as required by claim 24. Id. at 14.
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Analysis
Appellants repeat their arguments supra with respect to independent
claim 23. App. Br. 14. Appellants argue further that neither Schutte nor
Doller teach or suggest the additional limitation of claim 24. Id.
The Examiner responds that Wang, and not Schutte or Doller, was
cited as teaching the limitation in question. Ans. 1 O; see Final Act. 6.
We agree with the Examiner. Appellants may not argue against the
prior art by omitting or ignoring the Examiner's findings. Wang explicitly
teaches the use of imidacloprid on red and sugar maples, which are included
in the genus of maples in the limitation of claim 24. See Wang i-fi-1 98-99.
We consequently affirm the Examiner's rejection of claim 24.
C. Claims 28-29
Issue
Appellants argue dependent claims 28 and 29 together. App. Br. 14.
Claim 28 is representative and recites: "The process according to claim 25
wherein said granules comprise from 0. 5 to 3 0% by weight of imidacloprid."
Id. at 22. Appellants contend the Examiner erred in finding the combined
cited prior art teaches or suggests the limitations of claims 28 and 29. Id. at
14.
Analysis
Appellants repeat their arguments with respect to independent claim
23 supra, and argue further that "[ n ]either Schutte nor Doller, either alone or
in combination, disclose any weights for imidacloprid in the granule." Id. at
14.
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As an initial matter, Appellants bare assertion that the limitation is
neither taught nor suggested by the combined cited prior art, unsupported by
evidence of record, is insufficient to overcome the Examiner's findings and
prima facie conclusion of obviousness. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (Attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value).
Moreover, Schutte explicitly teaches "imidacloprid granules, 5%" in
exemplary embodiments. See Schutte col. 9, 11. 24--32. These granules fall
within the range of0.5%----30% required by claim 28 and the range of 3%----
15% required by claim 29. We consequently affirm the Examiner's
rejection of claims 28----29.
D. Claim 36
Issue
Appellants argue dependent claim 36 separately. App. Br. 16. Claim
36 recites: "The process according to claim 35 wherein said increase in said
forest tree or amenity tree height is at least 10%." Id. at 23. Appellants
argue the Examiner erred in finding the combined cited prior art teaches or
suggests the limitation of claim 36. Id. at 16.
Analysis
Appellants repeat their arguments supra with respect to claim 23.
App. Br. 16. Appellants argue further that: "Neither Schutte nor Doller,
either alone or in combination, disclose any reason why one of ordinary skill
in the art would expect that mixtures of imidacloprid with a fertilizer would
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improve the growth of a forest tree or an amenity tree let alone result in an
increase in height of at least 10%." Id.
We are not persuaded. As we have stated supra, a mere assertion,
unsupported by evidence of record, that the combined references do not
teach or suggest the contested limitation is insufficient. Geisler, 116 F.3d at
1470.
Furthermore, we have also related supra that we agree with the
Examiner that a person of reasonable skill in the art would realize, upon
reading the teachings of the combined cited prior art, that adding fertilizer
and insecticide would likely result in a healthier, more well-nourished tree,
free of insect parasites, than a tree not so treated. Moreover, the amounts of
fertilizer and imidacloprid applied can be varied, based on those
concentrations taught by Schutte and Doller, to achieve optimal results,
making these results-effective variables. We find altering the amounts of
fertilizer and imidacloprid applied, as taught by the prior art, to achieve a
growth increase of 10% would require only optimization of the treatment
taught by the combination of Schutte and Doller and would be well within
the skill of an ordinary artisan. See In re Aller, 220 F.2d 454, 456 (C.C.P.A.
1955). We therefore affirm the Examiner's rejection of claim 36.
E. Claims 23 and 24
Issue
Appellants argue further that the Examiner erred in rejecting claims
23 and 24 over the combination of Schutte, Doller, and Wang. App. Br. 19.
Appellants set forth the same arguments presented with respect to claim 23
above. We have already stated our reasons for adopting the Examiner's
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findings and conclusions and we incorporate that same reasoning by
reference here. We therefore affirm the Examiner's rejection of claims 23
and 24.
CONCLUSION
We conclude that the Examiner has established a prima facie case of
obviousness on the evidence before us which has not been rebutted by
Appellants.
DECISION
The Examiner's rejection of claims 23-36 as unpatentable under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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