Ex Parte Saalfeld et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201713576693 (P.T.A.B. Feb. 27, 2017) 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. 13/576,693 03/22/2013 Frank Saalfeld P015 00006USPCT 7200 34947 7590 LANXESS CORPORATION 111 RIDC PARK WEST DRIVE PITTSBURGH, PA 15275-1112 EXAMINER ROSENTHAL, ANDREW S ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): ipmail@lanxess.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK SAALFELD and JOHANNES GAREISS1 Appeal 2016-001301 Application 13/576,693 Technology Center 1600 Before MELANIE L. McCOLLUM, TIMOTHY G. MAJORS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to fungicidal compositions and methods of controlling phytopathogenic fungi, which have been rejected as obvious and provisionally rejected for obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). The double-patenting rejection is moot. We AFFIRM the obviousness rejection. 1 Appellants identify the Real Party in Interest as LANXESS Distribution GmbH. (App. Br. 2.) Appeal 2016-001301 Application 13/576,693 STATEMENT OF THE CASE Appellants’ “invention relates to a method of controlling fungi and spores such as, in particular, fungi in the family Venturiaceae and their conidia, and to compositions suitable for this purposes and their use.” (Spec. 1:2-4.) Claims 1—6, 8—14, and 18—22 are on appeal. Claim 1 is illustrative: 1. A fungicidal composition, comprising trifloxystrobin, formate in the form of potassium formate, sodium formate or calcium formate, and at least one substance which, as a one-molar solution in water or calculated as a one-molar solution in water or an aqueous comparative scale, has a pH of 5.0 or less under standard conditions. (Br. 12 (Claims App’x).) The Examiner provisionally rejected claims 1—6, 8—14, and 18—22 for nonstatutory obviousness-type double patenting over claims 1, 6—14, 16, and 17 of Application No. 13/057,027 in view of Harden.2 (Ans. 9—11.) Patent Office records indicate Application No. 13/057,027 was abandoned. The provisional obviousness-type double patenting rejection is thus moot. The remaining rejection on appeal is as follows: 2 Harden et al., WO 2005/044002 A2, published May 19, 2005. 2 Appeal 2016-001301 Application 13/576,693 The Examiner rejected claims 1—6, 8—14, and 18—22 as unpatentable under 35 U.S.C. § 103(a) over He,3 Harden, Farber,4 and Lanxess,5 as evidenced by Folanx Ca29.6 DISCUSSION Issue Has the Examiner established by a preponderance of the evidence of record that claims 1—6, 8—14, and 18—22 would have been obvious over He, Harden, Farber, and Lanxess, as evidenced by Folanx Ca29? Findings of Fact (FF) We adopt the Examiner’s findings of fact and statement of the rejection, as provided at pages 2—8 and 11—14 of the Examiner’s Answer. We provide the following findings of fact for emphasis. FF 1. He teaches pesticidal compositions and, “[i]n preferred embodiments, these compositions comprise an active ingredient component that is formic acid and/or acetic acid, and/or salts thereof.” (He 113.) He teaches the “composition can further comprise a second acidic component that enhances the pesticidal activity of the first active ingredient” and further 3 He et al., US 2012/0015809 Al, published Jan. 19, 2012. 4 Farber et al., Sensitivity ofVenturia inaequalis to trifloxystrobin, 58 Pest Manag. Sci. 261-67 (2002). 5 Archive of Lanxess Product Information, https://web.archive.Org/web/20091108064732/http://www.folanx.com/ (available Nov. 8, 2009). 6 Folanx® Ca29, Product Information. 3 Appeal 2016-001301 Application 13/576,693 teaches “[t]he enhancing (or potentiating) component of the composition is preferably citric acid.” (Id.) FF 2. He teaches “[p]ests, including pathogenic fungi... are detrimental to crops, forest, and other plants as they lead to growth rate problems, root problems and reductions in yield.” (Id. at 12.) He teaches “methods for inhibiting the growth of pathogenic fungi. . . comprising applying the pesticide composition, as defined herein, to one or more species of fungus.” (Id. at 116.) FF 3. He teaches [t]he compositions can be sprayed on or injected in the treated soil . . . [and] can be used without significant effects of phytotoxicity when applied at relatively low application rate at least 3 days before transplanting or seed-sowing of crop plants takes place. Thus, for example, the yield of a desirable plant is not reduced. (Id. at | 63.) He further teaches “[o]ne embodiment [] is a method of controlling fungi. . . [that] comprises applying the pesticide composition, as defined above [i.e., including formic acid or salts thereof, and citric acid] to one or more species of fungus.” (Id. at | 64.) FF 4. Harden teaches compositions comprising a mixture of strobilurins and ethylene modulators, and use of the compositions “for controlling harm fill fungi.” (Harden Abstract.) Harden teaches “[fjungicides suitable for controlling harmful fungi” include the strobilurin compound known as “trifloxystrobin.” (Id. at 7:17—24.) Harden lists fungicides that, “together with the compounds according to the invention can be used” and states this list “is intended to illustrate the possible combinations, but not to impose any limitation.” (Id. at 9:31—10:21.) 4 Appeal 2016-001301 Application 13/576,693 FF 5. Harden teaches “mixtures according to the invention are used by treating the fungi or the plants, materials or the soil to be protected against fungal attack with an effective amount of the combinations of active compounds.” {Id. at 10:30-32.) Harden further teaches “[application can be carried out either before or after the infection of the materials or plants by the fungi.” {Id. at 10:34—35.) FF 6. Farber teaches that trifloxystrobin is active against a wide range of plant pathogens, including Venturia inaequalis, Septoria tritici, and Pyrenophora teres, among others. (Farber 261.) FF 7. Folanx Ca29 teaches the composition Folanx® Ca29, which comprises calcium formate as an active ingredient. (Folanx Ca29 1.) Folanx Ca29 teaches the composition “is distributed uniformly over the leaf and fruit and acts very rapidly on these parts of the plant.” {Id.) Folanx Ca29 teaches that the composition, among other things, “strengthens cell structure, which reduces penetration of microbial and fungal pathogens,” and further that “application of Folanx® Ca29 practically eliminates the customary leaf bum. ” {Id.) Principles of Law “ft is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose. . . . [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). “The combination of familiar elements according to known methods is likely 5 Appeal 2016-001301 Application 13/576,693 to be obvious when it does no more than yield predictable results.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Analysis Appellants argue the patentability of claims 1—6, 8—14, and 18—22 as a group. We select claim 1 as representative and decide the appeal with respect to claim 1, noting that the other claims will stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv). The Examiner finds He teaches a preferred anti-fungal composition “SKP” for treating the soil or that may be applied directly to the fungus. (Ans. 4.) The Examiner finds that the composition “SPK” comprises formic acids or salts thereof and a second acidic agent chosen from citric acid, malic acid, and acetic acid. {Id.) The Examiner finds “He discloses that the combination of formic acid with citric acid provides an improved pesticidal activity over the agents individually.” {Id. at 5.) The Examiner finds Appellants’ Specification lists citric acid as a substance that has a pH of 5.0 or less {id. at 3^4) and finds that because He discloses “pH of treated soil is preferred to be reduced to 4-5 or less,” this “impl[ies] that the formulation [of He], as prepared, has a pH of, at most, 4—5, as required by claim 1” {id. at 5). The Examiner finds that He does not teach the additional fungicide trifloxystrobin, and thus Examiner turns to Harden. (Id.) According to the Examiner, Harden teaches use of the fungicide trifloxystrobin, and teaches that additional fungicides may be included to provide a broader fungicidal activity spectrum. {Id. at 5—6.) 6 Appeal 2016-001301 Application 13/576,693 The Examiner further finds that “Folanx Ca29 was commercially available by 8 November 2009, as seen on the archived Lanxess website” and that, based on the provided product information, the Folanx® Ca29 formulation includes calcium formate and provides beneficial properties when applied to fruit or plants. (Id. at 6.) The Examiner concludes it would have been prima facie obvious to combine the compositions of He and Harden to produce the composition of claim 1. (Id. at 6—'7.) According to the Examiner, each of the compositions was known “to be useful for [the] same purpose [fungicidal effect]” and it would have been obvious “to form a third composition [having the combined compounds] to be used for the very same purpose.” (Id. at 6—7.) We agree with, and adopt, the Examiner’s fact findings, reasoning, and conclusion that claim 1 would have been obvious over He, Harden, Farber, and Lanxess, as evidenced by Folanx Ca29. Together the cited references teach all the limitations of claim 1, and the skilled person would have been motivated to make the Examiner’s proposed combination to design a new fungicidal composition with the beneficial activity taught in the respective references. (FF 1—7.) The skilled artisan would have further had a reasonable expectation that this modified composition would possess improved activity against the broad categories of fungi and plant pathogens identified in the art. (See, e.g., He Tfl[ 64—65; Harden 3:33—35; Farber 261.) Appellants argue “He fails to teach the use of trifloxystrobin, or any other fungicides [beyond the mixture of formic acid/formate and citric acid], in the compositions.” (Br. 7.) Further, Appellants contend, “there is no teaching or suggestion by He that other fungicides may be mixed with the 7 Appeal 2016-001301 Application 13/576,693 He compositions with an expectation of the He compositions remaining functional.” {Id.) This argument is unpersuasive. For one, He does not exclude additional fungicides; indeed, He suggests such additional fungicides may be added to the mixture of formic acid (or salts thereof) and citric acid. (See, e.g., He claim 5 (“The composition, according to claim 1, comprising additional pesticidal agents.”).) In addition, Appellants’ argument reads He in isolation without grappling adequately with the combination of the art, including at least Harden. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) Harden teaches mixtures including trifloxystrobin and other fungicides. (FF 4.) Appellants argue “He directs applications of the compositions to soil to specifically eliminate pests from the soil.” (Br. 7.) According to Appellants, “He, by Example, teaches away from applying compositions containing formic acid and an acid to plants because He shows that such compositions have a detrimental impact on plant growth.” (Id.) Appellants’ argument is unpersuasive. First, Appellants are arguing limitations not found in claim 1. Claim 1 recites a composition, and does limit how the composition is applied. Second, although administration of He’s composition at high concentrations reduced somewhat the growth of certain plants, He specifically teaches that its composition is non-phytotoxic when applied at the recommended concentrations and intervals. (FF 3.) Third, He teaches its composition may be applied to the fungi itself— 8 Appeal 2016-001301 Application 13/576,693 suggesting a direct application on an infected plant. (FF 3.) Reinforcing this point, Folanx® Ca29 is a composition comprising a formate salt and citric acid (like He’s preferred composition),7 and Folanx Ca29 teaches that this composition may be “distributed uniformly over the leaf and fruit” for beneficial effects. (FF 7.) Appellants argue Harden “teaches compositions to control fungi on plants” and Harden seeks to avoid damage to the plants. (Br. 8.) Also, according to Appellants, “nothing in Harden [] teaches or suggests that the Harden compositions would function in the same manner, or function at all, in an acidic mixture such as the mixtures of He.” (Id.) Appellants thus contend the skilled person “would surely not have considered combining the compositions of He ... to the compositions of Harden because such compositions would likely kill the plants to which they were applied.” (Id.) We are unpersuaded. Here again, claim 1 does not specify how the compositions are applied — either to the soil, the plants directly, or otherwise. In addition, Harden’s teachings are not limited to applying the composition directly to the plants. To the contrary, Harden expressly teaches the composition may be applied to the soil. (FF 5.) Appellants also provide no sufficient evidentiary basis for the contention that a skilled person would expect applying He’s composition (in combination with 7 See Spec. 22:14—18 (describing Folanx® Ca29 as a commercially available product comprising calcium formate and citric acid). Consistent with He, Folanx Ca29 teaches that maximum concentrations should not be exceeded “to prevent phytotoxic reactions of parts of the plant.” (Folanx Ca 29 2.) Folanx Ca29 further teaches that “Folanx® Ca29 can be mixed with common crop protection agents.” (Id.) 9 Appeal 2016-001301 Application 13/576,693 Harden) would “likely kill the plants.” As noted above, He teaches that its compositions are not phytotoxic when applied appropriately. (FF 3.) Considering He’s teachings, especially in view of Folanx Ca29’s teaching of direct application to the leaves, we are not persuaded the skilled person would expect combining He’s and Harden’s compositions would kill the plant. As for Appellants’ contention concerning the functioning of Harden’s composition in acidic mixtures, Harden teaches its fungicides may be mixed with ethylene modulators comprising various acids. (See Harden 8:34—39.) Appellants provide no persuasive evidence that the skilled person would have expected the acidic mixture of He and the trifloxystrobin of Harden to negatively interfere with each other. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[Attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness”). Appellants argue “Farber provides that strobilurin may be mixed with other fungicides, but fails to teach or suggest trifloxystrobin with formates with an acid component that is safe for use on plants.” (Br. 8.) The rejection is for obviousness, not anticipation, and Appellants are here again arguing the references individually. Such a line of attack is unpersuasive.8 In re Merck & Co., 800 F.2d at 1097. Appellants next argue the claimed compositions exhibit unexpectedly improved properties. (Br. 8—9.) More specifically, Appellants contend “direct application to plants of compositions encompassed by the pending claims containing formate, an acid component, and trifloxystrobin do not kill 8 Appellants make a similar argument regarding Lanxess (Br. 8), which is unpersuasive because the rejection is based on a combination of the art. 10 Appeal 2016-001301 Application 13/576,693 the plants” but instead “exhibit improved efficacy over compositions containing formate and an acid component or trifloxystrobin alone.” (Id. at 9 (citing Spec. 22—23 (Table 1)).) We have considered Appellants’ evidence but, like the Examiner, do not find it sufficiently persuasive to overcome the evidence of obviousness. As the Examiner points out, the improvement allegedly shown in Appellants’ evidence is within the standard deviation reported in the data itself. For example, Appellants’ evidence shows that applying Folanx® Ca29 at a concentration of 1% alone has a 55.6% fungicidal efficiency and Flint (trifloxystrobin) at 0.01% has an 89% efficiency. (Ans. 14; Spec. 22— 23.) As noted by the Examiner, however, “a standard deviation of 6.9 is reported” and thus, “by statistical data, the efficacy of the combined composition [95.2%] is the same as the Flint agent on its own (95.2 +/- 6.9 = 88.3).” (Ans. 14.) Even ignoring the statistical data, Appellants “appear to be arguing that a net increase of about 6% or about 9% efficacy, as shown in Table 1, is a synergistic effect rather than merely the additive benefit of combining fungicides.” (Id.) Because both compounds alone had substantial fungicidal efficiency — 55.6% for Folanx® Ca29 and between 72.8—89.0% for Flint® (Spec. 23) — we are, however, not persuaded that the 6—9% improvement in a mixed composition is more than the additive improvement that would have reasonably been expected. Counsefs characterization of the results as “clearly unexpected and superior” is not the type of evidence needed to persuasively overcome the evidence of obviousness on the present record. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“[I]t is well settled 11 Appeal 2016-001301 Application 13/576,693 that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.”). Conclusion of Law We conclude the Examiner established by a preponderance of the evidence that claim 1 would have been obvious over He, Harden, Farber, and Lanxess, as further evidenced by Folanx Ca29. Claims 2—6, 8—14, and 18—22 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 the claims as obvious. The obviousness- type double patenting rejection is moot. 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 12 Copy with citationCopy as parenthetical citation