Ex Parte Rosinger et al

Patent Trial and Appeal Board

Feb 12, 2015

11482087 (P.T.A.B. Feb. 12, 2015)

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.
11/482,087 07/06/2006 Christopher Rosinger 09879-00079-US 5002
23416 7590 02/12/2015
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DE OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
PRYOR, ALTON NATHANIEL
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
02/12/2015 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 CHRISTOPHER ROSINGER,
PAUL EVANS, and ERWIN HACKER
__________

Appeal 2012-007966
Application 11/482,087
Technology Center 1600
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
herbicidal composition. 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 Bayer
CropScience AG (see App. Br. 2).
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Statement of the Case
Background
“[I]t is known to use herbicides in combination with a safener or
antidote. A safener is to be understood as meaning a compound which
eliminates or reduces the phytotoxic properties of a herbicide in respect to
useful plants, without substantially reducing the herbicidal activity against
harmful plants” (Spec. 1, ll. 19–22).
The Claims
Claims 1–3, 5–10, 14, and 16–24 are on appeal. Independent claim 1
is representative and reads as follows:
1. A herbicidal composition, comprising an effective
amount of
A) an antidotically effective amount of a safener of the
formula (I), or a salt thereof, (component A)

in which
R1 is methoxy;
R2 is hydrogen;
R3 is hydrogen; and
R4 is cyclopropyl; and
B) a herbicidally effective amount of one or more herbicides
(component B) selected from the group consisting of
flucarbazone, metsulfuron, prosulfuron, tribenuron,
cloransulam-methyl, chlorimuron, ethoxysulfuron,
florasulam, flumetsulam, halosulfuron, propoxycarbazone,
amidosulfuron, chlorsulfuron, triasulfuron, flupyrsulfuron,
sulcotrione, mesotrione, topramezone, metribuzin, EPTC, S-
metolachlor, dicamba, and pendimethalin,
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where these compositions comprise the components A
and B in a weight ratio of from 1:200 to 200:1.
The Issue
The Examiner rejected claims 1–3, 5–10, 14, and 16–24 under
35 U.S.C. § 103(a) as obvious over Ziemer ’827,2 Ziemer ’226,3 Hofer,4 and
Agrochemicals Handbook5 (Ans. 4–6).
The Examiner finds that Ziemer ’827 suggests “the instant safener
compound of formula I (see compound 1-67 in Table 1) plus herbicides such
as amidosulfuron, azimsulfuron and / or metoachlor” (Ans. 5). The
Examiner finds that Ziemer ’827 teaches “a ratio range of from 1:10 to 10:1”
(Ans. 5). The Examiner finds that Ziemer ’827 does not teach all of the
herbicides and pesticides recited in the claims and relies upon Hofer, the
Agrochemicals Handbook and Ziemer ’226 for additional agents, finding
that “[o]ne would have been motivated to do this since Ziemer [’827]
encourages the addition of pesticides such as herbicides to the invention”
(Ans. 6).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner’s conclusion
that Ziemer ’827, Ziemer ’226, Hofer, and Agrochemicals Handbook render
the claims obvious?

2 Ziemer et al., US 6,251,827 B1, issued June 26, 2001 (hereinafter
“Ziemer ’827”).
3 Ziemer et al., US 7,432,226 B2, issued Oct. 7, 2008 (hereinafter
“Ziemer ’226”).
4 Hofer, U., US 7,241,720 B2, issued Jul. 10, 2007.
5 The Agrochemical Handbook, 3rd edition, The Royal Society of
Chemistry, A0280 and A1281 (Aug. 1991).
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(ii) If so, have Appellants presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Table 1 of Ziemer ’827 is reproduced, in part, below:

Table 1 shows that compound 1-67 has the structure recited in formula I of
claim 1.
2. Ziemer ’827 teaches that “[h]erbicides which are suitable for
combination with the safeners according to the invention include, for
example . . . azimsulfuron . . . amidosulfuron . . . metolachlor” (Ziemer ’827,
col. 8, l. 15 to col. 11, l. 3).
3. Ziemer ’827 teaches that the “weight ratio of safener to
pesticide can be varied within wide limits and is preferably in the range from
1: 10 to 10:1” (Ziemer ’827, col. 12, ll. 5–7).
4. Ziemer ’827 teaches that the “safeners of the formula I
according to the invention have a particular advantage in combination with
herbicides from the group of the sulfonylureas and/or imidazolinones and
with herbicides of the type of the phenoxyphenoxy- and
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heteroaryloxyphenoxyalkanecarboxylic acid derivatives” (Ziemer ’827, col.
12, ll. 23–27).
5. Ziemer ’827 teaches that:
The tests show that the herbicidal compositions according to
the invention which comprise, for example, a safener of
Examples . . . 1-67 . . . in combination with the sulfonylurea
herbicide 3-(4, 6-dimethoxypyrimid-2-yl)-1-[3-(N -
methylsulfonyl-N-methylamino)pyridyl-2-ylsulfonyl]urea . .
. in a ratio of herbicide:safener of 2:1 to 1:20 have good
herbicidal pre-emergence activity against a broad spectrum
of broadleaved weeds and weed grasses, and damage to crop
plants such as maize, rice, wheat or barley or other cereals is
considerably reduced in comparison with application of
individual herbicides without safener, i.e. they show from
about 30% to up to 100% less damage by herbicides.

(Ziemer ’827, col. 17, l. 27–59.)
6. Hofer teaches an “[h]erbicidal composition comprising: a) a
herbicidally effective amount of a compound of formula (I), wherein the
substituents are as defined in claim 1; and b) an amount, effective for
herbicide synergy, of mesosulfuron, mesotrione or flufenacet” (Hofer,
abstract).
7. Agricultural Handbook teaches the insecticide imidacloprid and
the herbicide metribuzin (see Agricultural Handbook A1281 and A0280).
8. The Examiner finds that Ziemer ’226 teaches “topramezone,
dicamba, chlorimuron, tribenuron and sulcotrione are herbicides for
controlling weeds in crops” (Ans. 6; cf. Ziemer ’226, col. 9, l. 41; col. 11, ll.
13–14; col. 9, l. 32; and col. 1, l. 24).

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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
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–9; FF 1–8) and agree that the
claims are rendered obvious by Ziemer ’827, Ziemer ’226, Hofer, and
Agrochemicals Handbook. We address Appellants’ arguments below.
Prima facie case
Appellants contend that a
[P]erson skilled in the art would not be able to determine
whether the combination of safener 1-76 [sic 1-67 ?],
corresponding to safener A3, cyprosulfamide, with
herbicides listed in column 8, line 17 to column 11, line 63,
with the exception of those of the biological examples in
column 17, lines 33-59, would show effective safening,
marginal safening or practically no safening

(App. Br. 10).
We find this argument unpersuasive. It is well settled that it is
obvious for one of ordinary skill in the art to select a particular component
from among many disclosed by the prior art as long as the prior art teaches
that the selection will result in the disclosed effect. See Merck & Co., v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the '813
patent discloses a multitude of effective combinations does not render any
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particular formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500
(Fed. Cir. 1985) (obviousness rejection affirmed in light of prior art teaching
that “hydrated zeolites will work” in detergent formulations, even though
“the inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”).
In the instant situation, Ziemer ’827 specifically teaches safener 1-67
(FF 1) in combination with herbicides (FF 4) such as amidosulfuron (FF 2)
in weight ratios from 1:10 to 10:1 (FF 3).
Appellants contend that “there was no reasonable expectation of
success in producing herbicide-safener combinations that are practically
useful, and provide weed control with low absolute phytotoxicity of crop
plants” (App. Br. 10).
We are not persuaded. Given that Ziemer ’827 reasonably suggests a
combination of safener 1-67 with an herbicide of the claim, we conclude that
the ordinary artisan would have found a reasonable expectation of success in
applying this combination in practical use. Kubin stated that, “[r]esponding
to concerns about uncertainty in the prior art influencing the purported
success of the claimed combination, this court [in O’Farrell] stated:
‘[o]bviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-904
(Fed. Cir. 1988)). Here, the ordinary artisan would have reasonably
determined that following the suggestions and teachings of Ziemer ’827
would lead to a reasonable expectation of success (FF 1–4).

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Secondary Considerations
Appellants contend that they “provided evidence of unexpected results
to the Patent Office that should be sufficient to rebut the rejection of the
claims as obvious over the combination of the Ziemer et al. ’827 patent, the
Ziemer et al. ’226 patent, Hofer, and two entries from the Agrochemicals
Handbook” (App. Br. 11). Appellants contend that the “herbicide-safener
combinations from Table 2 are very effective and show acceptable to
excellent low levels of damage to corn. By contrast, the herbicide-safener
combinations in the lower portion of Table 2, ‘Other examples,’ showed
unacceptably high damage to corn (40% or 50% damage)” (App. Br. 12).
We are not persuaded. First, the Specification itself refers to the data
in the Tables by stating that the “results of Tables A to D show that the
herbicidal compositions according to the invention result in a considerable
reduction of the damage to crop plants” (Spec. 70). Appellants do not
identify any statement in the Specification, Declaration of record, or other
secondary consideration evidence, other than attorney argument, to support a
finding of 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.”); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence”).
Second, Appellants do not compare the invention to the closest prior
art, which would be examples in Ziemer ’827 teaching that:
The tests show that the herbicidal compositions according to
the invention which comprise, for example, a safener of
Examples . . . 1-67 . . . in combination with the sulfonylurea
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herbicide 3-(4, 6-dimethoxypyrimid-2-yl)-1-[3-(N -
methylsulfonyl-N-methylamino)pyridyl-2-ylsulfonyl]urea . .
. in a ratio of herbicide:safener of 2:1 to 1:20 have good
herbicidal pre-emergence activity against a broad spectrum
of broadleaved weeds and weed grasses, and damage to crop
plants such as maize, rice, wheat or barley or other cereals is
considerably reduced in comparison with application of
individual herbicides without safener, i.e. they show from
about 30% to up to 100% less damage by herbicides.

(Ziemer ’827, col. 17, l. 27–59; FF 5.) See In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”). Indeed, based upon the evidence in
Ziemer ’827, the range of relative safening shown in Table 2 of 43% for
cloransulam-methyl to 78% for several herbicides including flucarbazone is
fully overlapped by the range disclosed in Ziemer ’827, suggesting that these
are the expected results, rather than unexpected results.
Conclusion of Law
(i) The evidence of record supports the Examiner’s conclusion that
Ziemer ’827, Ziemer ’226, Hofer, and Agrochemicals Handbook render the
claims obvious.
(ii) Appellants have not presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Ziemer ’827, Ziemer ’226, Hofer, and
Agrochemicals Handbook. Pursuant to 37 C.F.R. § 41.37(c), claims 2, 3, 5–
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10, 14, and 16–24, fall with claim 1, 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

cdc