Ex Parte Spesard et alDownload PDFPatent Trial and Appeal BoardDec 28, 201612622082 (P.T.A.B. Dec. 28, 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. 12/622,082 11/19/2009 Bruce Spesard BCS096018 3692 34469 7590 12/30/2016 BAYER CROPSCIENCE LP Patent Department 2 T .W. ALEXANDER DRIVE, P.O. Box 12014 RESEARCH TRIANGLE PARK, NC 27709 EXAMINER LIU, SUE XU ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): uspoccs @ bayer. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE SPESARD, BRIAN R. JAMES, GUILLAUME HUCHET, and RAYMOND L. CHEEK1 Appeal 2014-006032 Application 12/622,082 Technology Center 1600 Before TAWEN CHANG, RACHEL H. TOWNSEND, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. NEWMAN, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims to an herbicidal composition. The Examiner entered final rejections for anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Background According to the Specification, 1 Appellants identify the Real Party in Interest as Bayer CropScience LP. App. Br. 4. Appeal 2014-006032 Application 12/622,082 Pre-emergent herbicides act by preventing emergence of seedlings and therefore are useful for preventing new weed growth from developing. Post-emergent herbicides, on the other hand, are effective at eradicating fully developed weeds. Given the different mechanisms of action and the developmental stages of the weeds in which they act, one would not expect pre-emergent and post-emergent herbicides to have any effect on one another. Therefore, it was surprising to discover that certain mixtures of pre-emergent and post- emergent herbicides synergistically enhance the pre-emergent and post-emergent herbicidal effects of one another, i.e. the activities of the mixtures are greater than the sum of the individual activities. Thus, an unforeseeable synergistic effect is present, and not just an addition of activities. Spec. 12. “The present disclosure relates to herbicidal compositions comprising at least one pre-emergent herbicide and at least one post-emergent herbicide, wherein the pre-emergent herbicide and the post-emergent herbicide synergistically inhibit pre-emergent and post-emergent development of a weed.” Spec. 13. The Claims Claims 1, 4, 6, 8—10, 12—15, 18, 20, and 24—26 are on appeal. Claim 1 is illustrative and reads as follows: 1. A herbicidal composition, comprising at least one pre- emergent herbicide and at least two post-emergent herbicides, wherein the herbicidal composition comprises amounts of the pre-emergent herbicide and the post- emergent herbicides effective to synergistically inhibit both (i) pre-emergent and (ii) post-emergent development of a weed, wherein the at least one pre-emergent herbicide comprises the active ingredient isoxaben, and wherein the at least two post-emergent herbicides comprise 2,4-D and mecoprop-P. 2 Appeal 2014-006032 Application 12/622,082 App. Br. Claims App’x. 32. Claim 15, the only other independent claim, recites a “method of controlling weed growth” comprising administering a composition including all of the limitations of claim 1. Id. at 33. Grounds of Rejection 1. Claims 1, 6, 15, and 18 are rejected under 35 U.S.C. § 102(b) as being anticipated by Sievemich.2 Ans. 2. 2. Claims 1, 4, 6, 8—10, 12—15, 18, 20, and 24—26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sievemich, Burow,3 and Hewett.4 Ans. 3. ANTICIPATION The Examiner has rejected claims 1,6, 15, and 18 on appeal as anticipated by Sievemich. The Examiner finds that Sievemich discloses “a synergistic herbicidal mixture comprising at least one benzoyl pyrazole derivative compound, which class of compounds is known to contain both pre-emergence inhibitors and post-emergence inhibitors, and at least one other compound selected from auxin and auxin transport inhibitors, cell wall biosynthesis inhibitors, and a variety of other herbicides.” Ans. 2. The Examiner found Sievemich “discloses that its synergistic herbicidal compositions can comprise the herbicide isoxaben, a known pre-emergent herbicide, and post-emergent herbicides like 2,4-D, mecoprop-P and 2 US 6,534,444 Bl, issued March 18, 2003 (“Sievemich”). 3 EP 0,049,071 Al, published April 7, 1982 (“Burow”). 4 EP 0,223,449 Al, published May 27, 1987 (Hewett”). 3 Appeal 2014-006032 Application 12/622,082 dicamba as active agents” and that the disclosed “synergistic herbicidal composition ... is effective at controlling broad-leaved weeds and grass weeds without damaging crop plants.” Id. at 2—3. Based on these findings, the Examiner concludes Sievemich anticipates claim 1. The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Sievemich anticipates claim 1? Findings of Fact (FF) 1. Sievemich discloses: [A] synergistic herbicidal mixture comprising A) at least one 3-heterocyclyl-substituted benzoyl derivative of the formula I in which the variables have the following meanings: R1, R3 are hydrogen, halogen, Ci-C6-alkyl, Ci-C6-haloalkyl, Ci- C6-alkoxy, Ci-C6-haloalkoxy, Ci-C6-alkylthio, C1-C6- alkylsulfmyl or Ci-C6-alkylsulfonyl; R2 is a heterocyclic radical selected from the group: thiazol-2-yl, thiazol-4-yl, thiazol-5-yl, isoxazol-3-yl, isoxazol-4- yl, isoxazol- 5-yl, 4,5-dihydroisoxazol-3-yl, 4,5- dihydroisoxazol- 4-yl or 4,5-dihydroisoxazol-5-yl, it being possible for the nine radicals mentioned to be unsubstituted or mono- or polysubstituted by halogen, Ci-C4-alkyl, C1-C4- alkoxy, Ci-C4-haloalkyl, Ci-C4-haloalkoxy or Ci-C4-alkylthio; R4 is hydrogen, halogen or Ci-C6-alkyl; R5 is Ci-C6-alkyl; R6 is hydrogen or Ci-C6-alkyl; 4 Appeal 2014-006032 Application 12/622,082 or one of its environmentally compatible salts; and B) a synergistically effective amount of at least one herbicidal compound from the group of the acetyl-CoA carboxylase inhibitors (ACC), acetolactate synthase inhibitors (ALS), amides, auxin herbicides, auxin transport inhibitors, carotenoid biosynthesis inhibitors, enolpyruvylshikimate 3-phosphate synthase inhibitors (ESPS), glutamine synthetase inhibitors, lipid biosynthesis inhibitors, mitosis inhibitors, protoporphyrinogen IX oxidase inhibitors, photosynthesis inhibitors, synergists, growth substances, cell wall biosynthesis inhibitors and a variety of other herbicides. Sievemich 1:7-49. 2. Sievemich discloses “[t]he mixtures according to the invention show a synergistic effect; the compatibility of the herbicidally active compounds of components A) and B) for certain crop plants is generally retained.” Id. at 2:12—16. 3. Sievemich discloses: [ejxamples of herbicides which can be used in combination with the 3-heterocyclyl-substituted benzoyl derivatives of formula I according to the present invention are, inter alia, B4 auxin herbicides, for example pyridinecarboxylic acids, such as clopyralid or picloram; or 2,4-D or benazolin; B14 growth substances, for example . . . mecoprop-P or . . . dicamba; B15 cell wall synthesis inhibitors, for example isoxaben. Id. at 2:51-53; 3:29-32; and 4:39-50. 5 Appeal 2014-006032 Application 12/622,082 4. Sievemich discloses “[t]he herbicidal compounds and synergistic herbicidal mixtures according to the invention can effect very good control of broad-leaved weeds and grass weeds in crops such as maize, cereals, rice and soya without damaging the crop plants, an effect observed especially even at low rates of application.” Id. at 23:43—48. 5. Sievemich discloses multiple crop plants that can be grown using “the herbicidal compositions and synergistic herbicidal mixtures according to the invention.” See id. at 23:49—67 and 24:1—11. Analysis Appellants argue that Sievemich discloses 16 categories of herbicides, and each category includes many possible named herbicides, leading to hundreds of possible listed herbicides which can be used in combination with the compound of formula I. . . . While Sievemich does list 2,4-D, isoxaben, and mercoprop-P [sic] as three possibilities out of the hundreds of possible herbicides which can be used in combination with the compound of formula I, Sievemich does not teach or suggest picking either isoxaben, 2,4-D, or mercoprop-P, [sic] much less their combination as required in instant claim 1. App. Br. 10. Appellants also argue that “Sievemich does not teach or suggest ‘wherein the herbicidal composition comprises amounts of the pre-emergent herbicide and the post-emergent herbicides effective to synergistically inhibit both (i) pre-emergent and (ii) post-emergent development of a weed’ as recited in claim 1.” Id. In response, the Examiner argues: 6 Appeal 2014-006032 Application 12/622,082 Sievemich teaches synergistic herbicidal mixtures, and teaches each of isoxaben, 2,4-D and mecoprop-P as “further herbicidal compounds” that are auxin herbicides including 2,4-D, aryloxyalkanoic acid growth substances mecoprop-P and aryloxyalkanoic acids like dicamba, and cell wall synthesis inhibitors like isoxaben .... The instant claim 1, by virtue of its open-ended claim construction, allows for all these possibilities including the benzoyl compound (A) taught by Sievemich. Ans. 8. The Examiner also argues that the activity of pre- and post- emergent herbicides in synergistically inhibiting both pre- and post- emergent development of a weed “is inherent within the use of particular herbicides whose mechanisms of action as pre- and post-emergent herbicides are well known.” Id. at 10. We agree with Appellants that a preponderance of the evidence does not support the Examiner’s finding that Sievemich discloses all of the limitations of claim 1 arranged as claimed. The Examiner does not point to any specific passages of Sievemich as teaching the claim limitation “wherein the at least one pre-emergent herbicide comprises the active ingredient isoxaben, and wherein the at least two post-emergent herbicides comprise 2,4-D and mecoprop-P.” A disclosure that allows one skilled in the art to “at once envisage each member of [a] limited class” describes each member of the class “as if [the reference] had drawn each stmctural formula or had written each name.” In re Petering, 301 F.2d 676, 681—82 (CCPA 1962). After reviewing Sievemich, we find no such disclosure. Sievemich discloses herbicides by functional category and concludes that herbicides from various of these categories (B) can be combined with the compound of formula 1 (A). FF 1—5. Thus, as Appellants point out, “Sievemich discloses 7 Appeal 2014-006032 Application 12/622,082 16 categories of herbicides, and each category includes many possible named herbicides, leading to hundreds of possible listed herbicides which can be used in combination with the compound of formula I.” App. Br. 10. We do not find that this disclosure to be a limited class of compounds with a limited number of variations such that one skilled in the art would envisage each member of the genus. “[UJnless a [prior art] reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Because the Examiner has not provided evidence sufficient to support a prima facie case of anticipation, we reverse the rejection of claims 1, 6, 15, and 18 as anticipated by Sievemich. See In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.”). OBVIOUSNESS The Examiner has rejected claims 1, 4, 6, 8—10, 12—15, 18, 20, and 24—26 as obvious over Sievemich, Burow, and Hewett. The Examiner’s findings regarding the disclosures of Sievemich are set forth above. Ans. 3— 7; FF 1-5. The Examiner additionally finds that Sievemich “does not require an at least 3-component herbicidal composition” and “teaches only weight 8 Appeal 2014-006032 Application 12/622,082 ratios of its composition components, but fails to teach W/W % of each such component.” Ans. 5. The Examiner finds Burow teaches “herbicidally effective N- arylbenzamide derivative compounds [including] isoxaben,” “that [Burow’s] test compounds were applied both pre- and post-emergence to plants, and proved to be potent herbicidal agents when applied at low rates to soil or plant surfaces,” and that “the benzamide derivatives of his invention may be employed in combination with one or more of several known and commonly used herbicides to provide an even broader range of weed control tha[n] generally was realized with either the benzamides alone or other herbicides alone.” Id. at 5—6. The Examiner further finds the “percent by weight of active herbicide in the compositions of Burow range from about 1-95%, and more generally from about 10-60%” and that Burow provides both the motivation and suggestion to combine a pre-emergent herbicide with one or more post-emergent herbicides. Id. at 6. The Examiner finds Hewett discloses “methods of weed control by the use of a member of the general class of 1,3,5-triazine derivative compounds, and atrazine in particular, in combination with diflufenican.” Id. The Examiner finds Hewett teaches that “diflufenican used in combination with atrazine herbicide extends the spectrum of activity of diflufenican without loss of crop/weed selectivity, and exhibits 2-way synergism between diflufenican and atrazine.” Id. The Examiner finds that although “[n]one of the prior art references teaches the specific W/W% of isoxaben, 2, 4-D, mecoprop-P, and dicamba as instantly claimed, [the skilled artisan] would 9 Appeal 2014-006032 Application 12/622,082 have been motivated to use such weight percents as a matter of routine optimization and experimentation.” Id. The Examiner finds it would have been obvious to combine the teachings of Burow for N-arylbenzamide derivative compounds and a method of using the same in combination with one or more commonly used herbicides, with the teachings of Hewett et al. for dual synergy, and the teachings of Sievemich et al. for various synergistic combinations of pre- and post-emergent herbicides, and thereby to arrive at the instant application. One of skill in the art would have been motivated to use isoxaben as a pre-emergent herbicidal compound in combination with one or more post-emergent herbicides with a reasonable expectation of success because the prior art teaches that the compounds can be used in such formulations. The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that claim 1 is obvious over Sievemich, Burow, and Hewett? Findings of Fact 6. Burow discloses N-arylbenzamide derivatives of formula (I) wherein Z is oxygen or sulfur. Ri, R2, R3 are hydrogen or a substituent, R4 is an heteroaryl group linked to the nitrogen atom by a carbon atom, selected from possibly substituted isoxazole, isothiazole, pyrazole, imidazole, thiadiazole, oxadiazole or pyridazine. Id. at 7. 10 Appeal 2014-006032 Application 12/622,082 These compounds can be used as herbicides. Burow Abstract. 7. Claim 12 of Burow recites the compound “N-[3-(l,l- Dimethylethyl)-5-isoxazolyl]- 2,6-dimethoxybenzamide.” Id. at 146:23—24. 8. Burow discloses: most of the compounds provided by this invention are potent herbicidal agents when applied at low rates to soil or plant surfaces pre- or post-emergence. Many of the compounds are even more potent when applied to soil and incorporated therein prior to planting of crop seeds. Pre-plant incorporation is particularly preferred when employing a benzamide which displays less than desirable potency or selectivity when surface applied. For example, the compound of Example 52, namely N-[3-(l-methylethyl)-5-isoxazolyl]-2,6- dimethoxybenzamide, failed to retard the vigor of tomato, large crabgrass or pigweed when applied both pre- and post-emergence at 15 pounds per acre. When the compound was applied at 15 pounds per acre and incorporated into the soil prior to seeding, it totally retarded the growth of tomato, wild mustard and lambsuarter, and demonstrated significant herbicidal activity against pigweed, sugarbeets and Jimsonweed. Id. at | 560. 9. Burow discloses that “[f]ormulations comprising one or more other compatible herbicides are also contemplated.” Id. at 8:5—6. 10. Burow discloses, in Example 167, application of test compounds “applied postemergence to some planted pots and preemergence to others. The postemergence applications were made by spraying the solution containing the test compound over the emerged plants about twelve 11 Appeal 2014-006032 Application 12/622,082 days after the seeds were planted. Preemergence applications were sprayed on the soil one day after the seeds were planted.” Id. at 92:5—11. 11. Burow discloses: The benzamide derivatives of the invention can also be employed in combination with any of several known and commonly used herbicides. For example, a preferred method of herbicidal control according to this invention employs a benzamide of the invention used in conjunction with one or more other herbicides, ideally one or more grass herbicides . . . Other herbicides to be employed in combination with the present benzamides include . . . dichloroprop. Id. at 127:5—20. The Examiner finds “dichloroprop [] is nearly identical to 2,4-D except for having one additional methyl group.” Ans. 6. 12. Burow discloses: The benzamide derivatives of this invention ideally are suitably formulated for use as described above. Herbicidal formulations comprising a benzamide derivative of formula (I) or an agronomically-acceptable salt thereof, admixed with an agronomically-acceptable diluent, excipient or carrier therefor thus form a further important embodiment of the invention. Such compositions will typically contain from about 1 to about 95 percent by weight of active herbicide, and more generally about 10 to about 60 percent. The formulations may take the form of solid powders, dusts, granules; aqueous or non-aqueous sprays or drenches; concentrates, for example emulsifiable concentrates and the like; wettable powders, and any of the other forms commonly found in the agriculture art for herbicides. Burow 130:27—131:10. 12 Appeal 2014-006032 Application 12/622,082 13. Hewett discloses a “method of controlling the growth of weeds by the application of a 1,3,5-triazine herbicide and diflufenican.” Hewett Abstract. 14. Hewett discloses “it has been discovered that the use of the compound N-(2,4-difluorophenyl)-2-(3-trifluoromethylphenoxy) nicotinamide (hereinafter referred to for convenience as diflufenican) in combination with a triazine herbicide extends the diflufenican spectrum of activity without loss of crop/weed selectivity.” Id. at 1:16—22. 15. Hewett discloses that, in addition to the above, it has been found that the combined herbicidal activity of diflufenican with the triazine herbicide against many weed species is much greater than expected when applied pre- or post-emergence . . ., i.e. the herbicidal activity of diflufenican with the triazine herbicide showed an unexpected and remarkable degree of synergism on important grass weeds. Id. at 2:1—9. 16. Hewett discloses Experiment 1 demonstrating “the synergistic activity of the combined use of atrazine and diflufenican in controlling the growth of certain weeds.” Id. at 12:12—14. Table I displays the results of the experiment: % weed control • EcftittoChloa Abutilott X-Stttbitssn Herbicide Ooaa tbeopn'raTst i purpurea aTrumQr Tdai g‘ OF. O 8 OK Q £ 2? - 30 - 30 - 0 - 50 - 70 60 ~ 10 - 0 0 - 25 - 10 - 20 33 47 - 30 40 27 67 30 63 4ft 30 10 70 e»Z 77 53 ft? S3 58 30 m 60 97 ftO m 79 90 3? O ** Observed F. » ExnecFed TABLE I Hewett concludes: “[tjhese results show clearly that the combination is Dif lu£*rnt*3?i 125 Diflufemicsn 250 Atr a*;i«efatr) 125 At ca2:iue(aCv) 250 dif + afcr 123 + 125 dif - afcr 12$ 4 250 dif 4 atf 250 230 13 Appeal 2014-006032 Application 12/622,082 synergistic as the observed weed control for the combination of the two herbicides was much greater than expected.” Id. at 15:1—4. 17. Hewett discloses Experiment 2 demonstrating the effect on weed growth of diflufenican alone and mixed with atrazine in an aqueous suspension concentrate. Table II displays the results of the experiment: $ ptjyto'SoxicttT lbs ai/acre £g /hectare) Diftitaria Echln.oeh.toa aaSSu’i'nSTTs ™ 0 E 0 ,S O E llif!!;f«Ricsn 0,125 (140) 7 25 - « AtT«*ine 0,25 (280) 5 - 1.5 - 5 dlf + afcr flff 280) 98 12 99 36 7 13 TASLE n Hewett concludes: “[a] remarkable degree of synergism was found on these grass weeds, whereas on the crop there was no synergism giving much improved selectivity.” Id. at 16:11—13. 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.” KSRInt’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. Wrigley found a “strong case of obviousness based on the prior art references of record. [The claim] recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known . . . agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1364 (Fed. 14 Appeal 2014-006032 Application 12/622,082 Cir. 2012). Analysis We adopt the Examiner’s findings regarding the scope and content of the prior art (Final Act. 4—9; FF 1—17) and agree that the claimed herbicidal composition would have been obvious over the teachings of Sievemich, Burow, and Hewett. We address Appellants’ arguments below. Appellants argue the cited prior art does not provide a “motivation to combine a pre-emergent herbicide with at least two post-emergent herbicides with a reasonable expectation of success.” App. Br. 14. Appellants argue the Examiner . . . [provides] no support that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. There is also no support that one of ordinary skill in the art would have recognized that the results of the combination were predictable. App. Br. 14-15. Appellants cite to the Declaration of Bruce Spesard,5 an inventor, as evidence that Sievemich only teach[es] synergism of specific herbicides (a particular benzoyl pyrazole and its derivatives), when in combination with at least one co-herbicide taken from a long list [] of co-herbicides, and these specific herbicides differ chemically, by mode-of-action, and by mechanism-of action from the pre-emergent herbicide of the present invention. [] Thus, as one of ordinary skill in the art, Dr. Spesard was not able to conclude from the work of Sievemich that a 5 Declaration of Bmce Spesard, submitted pursuant to 37 C.F.R. § 1.132, dated March 4, 2013. 15 Appeal 2014-006032 Application 12/622,082 combination of isoxaben plus at least two post herbicides would result in synergism. App. Br. 15; SpesardDecl. 111. Appellants further argue that “Burow also focuses on a specific herbicide (N-arylbenzamide derivatives of formula I) and Hewett teaches using diflufenican in combination with a triazine herbicide such as atrazine.” According to Appellants, “one of ordinary skill in the art would also not be able to conclude from either Burow or Hewett that a combination of isoxaben plus the recited at least two post herbicides would result in synergism.” App. Br. 15. These arguments are not persuasive because each fails to address the combined teachings of Sievemich, Burow, and Hewett. Non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 426 (CCPA 1981) (finding “one cannot show non obviousness by attacking references individually where, as here, the rejections are based on combinations of references” (citations omitted)). As noted above, the references teach that combination of various herbicidal compounds result in synergistic effects. FF \-A and 15—17. And, Burow teaches the use of N-arylbenzamide derivative compounds (of which isoxaben is an example) in combination with one or more commonly used herbicides. FF 6-7 and 9. Moreover, as noted above, Sievemich teaches the claimed pre-emergent and post-emergent compounds are known herbicides that act in different manners (FF3), and can be used in synergistic combinations of herbicides, see, e.g., FF1. 16 Appeal 2014-006032 Application 12/622,082 The Examiner reasonably explains in light of the foregoing that the skilled artisan would be motivated to use isoxaben as a pre-emergent herbicidal compound in combination with one or more post-emergent herbicides provided by Sievemich. Ans. 7. The Examiner further reasonably explains that a skilled artisan would make the combination with a reasonable expectation of success in achieving herbicidal activity of all of the components, because Burow teaches to use N-arylbenzamide derivative compounds (of which isoxaben is an example) in combination with one or more commonly used herbicides, the teachings of Sievemich that combinations of herbicides are known to exhibit synergistic effect, as well as Hewett’s teaching that combinations of herbicides applied to plants can exhibit dual synergy-i.e., synergy in inhibiting weed development at both the pre-emergent and post-emergent stages (e.g., FF 15). Ans. 7. Regarding the claimed synergistic amounts, the Examiner reasonably explains that, based on the teachings of Burow regarding the use of N- arylbenzamide derivative compounds (of which isoxaben is an example) in combination with one or more commonly used herbicides, it would be obvious to select from among the various synergistic combinations of pre- and post-emergent herbicides taught by Sievemich, and the amounts of the herbicides used there, to arrive at the claimed invention in which three compounds exhibit functional pre-emergent and post-emergent synergy. Ans. 7. “Only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.” In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985). 17 Appeal 2014-006032 Application 12/622,082 In short, in light of the fact that various different herbicides have been described as being able to achieve synergy when combined together, including pre-emergent and post-emergent synergy (e.g., FF 15), we find that one of ordinary skill in the art would have reasonably expected the selection of isoxaben, 2, 4-D and mecoprop-P to similarly achieve synergistic results. Accordingly, the Examiner has established that the combined teachings of Sievemich, Hewett and Burow establish a strong case of prima facie obviousness that must be overcome by Appellant. See Ex parte Phillips, 28 USPQ2d 1302 (Bd. Pat. App. Int. 1993) (Applicant^Appellant] bears burden of providing factual evidence of nonobviousness to rebut prima facie case.) Appellants have not provided evidence why, in light of Hewett and Sievemich’s teachings of synergistic effects that can be achieved when combining known herbicides, a skilled artisan would not have achieved, by combining one pre-emergent and two post-emergent herbicides, a composition that, when applied to weeds in both the pre-emergent and post- emergent stages, exhibits both a pre-emergent and post-emergent synergistic weed-inhibiting effect. Appellants do not argue that there is something particular about the prior art herbicidal components that leads to the observed synergy with the many different prior art compositions or that there is something particular to the structure of the components that achieved the observed prior art synergy that is missing from the claimed components that would countermand a reasonable expectation of being able to achieve synergistic effects with isoxaben, 2, 4-D, and mecoprop-P. 18 Appeal 2014-006032 Application 12/622,082 We note that the Examiner requested that Appellants provide “a side- by-side comparison with the closest prior art” as evidence that the skilled artisan would not have succeeded as set forth above, or to show unexpectedly superior results of the claimed invention. Ans. 19. Where ... the claimed and prior art products are identical or substantially identical... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product .... [The] fairness [of the burden-shifting] is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Such testing would have comprised combining the compounds taught by Sievemich and applying them in both the pre-emergent and post-emergent phases, followed by comparing weed-inhibition both pre- and post-emergence with the claimed composition. This testing differs from that provided in the Specification and the Spesard Declaration in that those tests compared the claimed invention, applied and measured for both pre- and post-emergence effectiveness against single herbicides or pre- or post-herbicides applied and measured only at their respective effective phase, not both. See Spesard 2013 Declaration, | 7; Specification at, e.g., H 38, 41. Appellants declined to perform this testing, “on the basis that allegedly none of the cited prior art teaches both pre- and post-emergence treatment and effects and so ‘the closest art is the compounds alone.’” Ans. 19. We agree with the Examiner, as discussed above, that the prior art teaches both pre- and post-emergence treatment, and that the suggested testing would have shown whether Appellants’ invention was unexpectedly superior over the prior art. Ans. 19. 19 Appeal 2014-006032 Application 12/622,082 Appellants have likewise not provided reasons why the particular amounts recited in Appellants’ claims (e.g., claim 12, reciting “0.01 to about 25 W/W% of dicamba”) (App. Br. 24) are critical to the function of the herbicidal compounds, such as experimental evidence showing the combination in amounts outside the claimed ranges does not provide a synergistic effect. Without such evidence, Appellants’ attorney argument is unpersuasive. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Appellants next argue that “Sievemich does not set forth any suggestion to select the claimed three herbicides of 2,4-D, isoxaben, and mercoprop-P, [sic] much less combine them in a composition.” App. Br. 16. Instead, “one of ordinary skill in the art has to first choose three different herbicides from a list of hundreds of possible herbicides, and then combine them, and Appellants respectfully submit that Sievemich does not provide a motivation to do either.” Id. Appellants further argue that neither Hewett nor Burow remedy the deficiencies of Sievemich because neither mentions 2,4-D or mecoprop-P or contains any suggestion to use either of these with isoxaben. Id. at 16—17. We are not persuaded. It is well established that prior art references need not disclose an express motivation to combine the teachings that is identical to that stated by a patent applicant in order to motivate the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.”). In addition, our 20 Appeal 2014-006032 Application 12/622,082 reviewing court has held that improvement-related factors may implicitly motivate a combination: [A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—. . . there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (bold emphasis added). The Examiner has sufficiently established that Burow discloses benzamide derivatives (e.g., isoxaben) can be used in combination with other known herbicides, such as dichloroprop, which is nearly chemically identical to 2,4-D. FF 11. Accordingly, the selection of isoxaben and 2,4-D is in keeping with the teachings of Burow, absent evidence from Appellants to the contrary. The Examiner has further established that isoxaben, a 3-heterocyclyl-substituted benzoyl derivatives of formula I, can be combined with mecoprop-P, a B14 growth substance. FF 3. Furthermore, the Examiner has established that both Siervenich and Hewett explain the synergistic benefit of combining herbicides, as discussed above. FF 2—5, 14—17. 21 Appeal 2014-006032 Application 12/622,082 Finally, Appellants claim the composition of claim 1 exhibits an unexpected synergistic effect and that the “unexpected results would rebut and overcome the allegedprima facie case of obviousness.” App. Br. 18. Appellants cite the “data in the Specification in Examples 1—5 and the Declarations” (Spesard Declarations filed on April 2, 2013,6 and March 15, 2013), as evidence of unexpected results. Declarant Spesard states: V Ths ikjs prodijelsofthij pmeat apptka&m.taye muck superior vmsvl -wkfc variOy uf. weeds »n4-fesioadteaf 3 wide mtge of eooeemsaderw atteb vow oxsnipkndy m ms ns oms ofordtey skii! is fee teneiv, by a eampfiriNgoi fojfest hgrhitddsw ad aptfe- sia-er&am befbteids sir Copy with citationCopy as parenthetical citation