Ex Parte Zagar et alDownload PDFPatent Trials and Appeals BoardMay 10, 201912089800 - (D) (P.T.A.B. May. 10, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/089,800 05/02/2008 Cyrill Zagar 45473 7590 05/13/2019 EGL/Research Triangle Park P.O. BOX 110285 RESEARCH TRIANGLE PARK, NC 27709 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. 13779-148 6739 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 05/13/2019 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 CYRILL ZAGAR AND BERND SIEVERNICH Appeal 2018-004992 1 Application 12/089,800 Technology Center 1600 Before RICHARD M. LEBOVITZ, ROBERT A. POLLOCK, and TA WEN CHANG, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims that comprise 3-phenyluracil herbicides in combination with a safener compound to reduce the damaging effects of the herbicide on a crop of interest. The Examiner rejected the claims under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellants appeal the Examiner's determination that the claims are unpatentable. We have jurisdiction for the appeal under 35 U.S.C. § 6(b). The Examiner's decision is reversed. 1 The Appeal Brief ("Appeal Br." entered Nov. 8, 2017) lists BASF SE as the Real Party in Interest. Appeal Br. 4. Appeal 2018-004992 Application 12/089,800 STATEMENT OF THE CASE Claims 20, 25, and 29-37 stand rejected by the Examiner under 35 U.S.C. § 103(a) as obvious in view of Zagar et al. (WO 03/024221 Al; published March 27, 2003) ("Zagar") and Ziemer et al. (US 6,251,827 Bl, issued June 26, 2001) ("Ziemer"). Final Act. 2. All the rejected claims recite a composition comprising: 1) 3-phenyluracils of formula I, and 2) N-[[ 4-[( cyclopropylamino )carbonyl]phenyl]sulfonyl]-2- methoxybenzamide of formula II. All the claims also recite that "the weight ratio of compound I to compound of formula II is 1:10 to 10:1." Independent claim 20 is a composition claim. Independent claims 30, 31, and 35 are method claims. Claim 20 is reproduced below: 2 Appeal 2018-004992 Application 12/089,800 20. A composition comprising 3-phenyluracils of formula I: I, wherein, R 1 is methyl; R2 is CF3; R3 is fluoro; R4 is chloro; R5 is hydrogen; one of R6 and R7 is methyl and the other is isopropyl; or agriculturally acceptable salts thereof; and N-[[ 4-[ ( cyclopropylamino )carbonyl]phenyl Jsulfonyl ]-2- methoxybenzamide of formula II or agriculturally acceptable salts thereof; wherein the weight ratio of compound I to compound of formula II is 1 : 10 to 10: 1. REJECTION The Examiner found that Zagar suggests the claimed formula I compound. Final Act. 3. ("Zagar et al. does not specify that R6 and R 7 are methyl and isopropyl, however, R6 and R 7 are selected from C l-C6 alkyl groups. Therefore, isomers with this carbon range would have been prima 3 Appeal 2018-004992 Application 12/089,800 facie obvious." Final Act. 4). The formula I compound, which is a 3- phenyluracil, has herbicidal activity. Final Act. 3. The Examiner found that the Zagar teaches that its formula I compounds can be combined with a safener, but not the safener recited in claim 20 of formula II. Id. "Safeners" are described in the Specification as "organic active compounds, which act as antidotes or antagonists" to herbicides, which, "[ o ]wing to the fact that they can reduce or even prevent damage to the crop plants [ caused by the herbicides], ... are also referred to as safeners." Spec. 1: 8-15. To meet the safener compound limitation of claim 20, the Examiner cited Ziemer. Final Act. 4. The Examiner found that Ziemer describes the claimed formula II compound. Id. The Examiner found that Ziemer teaches that a "safening effect is achieved by the additional application of the compound [ of formula II] with a pesticide jointly, reducing damage significantly or eliminating it altogether so that application of pesticides can be widened ([Ziemer] column 7, lines 40-52)." Final Act. 4. The Examiner found that the ordinary skilled worker would have had reason to combine the formula II safener compound of Ziemer with the formula I herbicide of Zagar because Ziemer teaches that the compound "provides a safening effect when combined with pesticides and Zagar et al. teach formula I is combined with safeners to protect crops." Final Act. 5. The Examiner further found that both Zagar and Ziemer "are drawn to protecting crop plants selected from cotton, cereals, maize, rapeseed, rice and soybean." Final Act. 5. Because the same plants are protected, the Examiner concluded "applying the two compounds in a single formulation 4 Appeal 2018-004992 Application 12/089,800 for protecting com, cereals, maize, rape, rice and soybeans against undesired plant growth would have been suggested to one of ordinary skill." Ans. 5. Appellants contend that "Examiner's asserted motivation for combining the references fails to take into account the fact that it was well known at the time of the invention that the safening effect of a safener with an herbicide was highly unpredictable." Appeal Br. 10. Appellants argue that "[t]he skilled artisan would not expect a safener for one herbicide class to extend its safener effect into another herbicide class." Id. Appellants provided two journal articles to support this argument: (1) Abu-Qare et al., Chemosphere, 2002, 48: 965-974 ("Abu-Qare"); and "Pesticide Outlook", Royal Society of Chemistry, February 2001, pp. 9-15 ("Davies"). Appeal Br. 12-13. DISCUSSION The issue in this rejection is whether there would have been a reasonable expectation of success that the safener of formula II would protect a crop from damage by the herbicide of formula I. Because the crops treated by Zagar and Ziemer overlap, the Examiner found one of ordinary skill in the art would have had a reason to use Ziemer's safener with Zagar's herbicide. Final Act. 5. To establish obviousness under 35 U.S.C. § 103, one of ordinary skill in the art must have a reasonable expectation that the prior art, when combined, would succeed in making the claimed invention. "Conclusive proof of efficacy is not necessary to show obviousness." Accorda Therapeutics, Inc. v. Roxane Laboratories, Inc., 903 F.3d 1310, 1333 (Fed. Cir. 2018) (quoting from Hoffmann-La Roche Inc. v. Apotex Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014). "'Obviousness does not require absolute 5 Appeal 2018-004992 Application 12/089,800 predictability of success ... all that is required is a reasonable expectation of success.' [ citing In re O 'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)]." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). In some cases, however, "the evidentiary basis for an inference of reasonable expectation of success may be inadequate." Accorda, 903 F.3d at 1333-34. Appellants contend that it would not have been reasonably expected by one of ordinary skill in the art that a safener of formula II would have protected plants against the activity of an herbicide of formula I. Appeal Br. 12. Appellants' reasoning is based on evidence provided in Abu-Qare and Davies that the mechanisms of action of safeners were not fully elucidated at the time of the invention and that the safening effect of a compound when combined with an herbicide was unpredictable. Id. at 10, 12. Based on the evidence they provided, Appellants argue that the Examiner did not established that the formula II safener would be effective in protecting against the action of the formula I safener in a crop plant to which it is applied. To support their argument, Appellants cite Abu-Qare et al., Chemosphere, 2002, 48: 965-974 ("Abu-Qare"). Abu-Qare teaches: The fact that the currently available safeners exhibit botanical specificity for graminaceo[u]s crops [rice is an example] with moderate tolerance to herbicides[,] and chemical selectivity toward soil applied and shoot absorbed thiocarbamates and chloroacetanilides[,] led to a suggestion that the action of safeners relates to physiological, biochemical and molecular function(s). The explanation is that these functions may are [sic, be] unique in these crops or are highly efficient in the graminaceo[ u Js crops that [are] affected by thiocarbamates and chloroacetanilides and altered by safeners. But it seems that 6 Appeal 2018-004992 Application 12/089,800 these systems are either not present or not affected to the same extent by herbicides and safeners in other crops [ cite omitted]. Abu-Qare 968 ( col. 1 ). The above-reproduced passage indicates that a particular safener may be specific for a specific crop and herbicide ("it seems that these systems are either not present or not affected to the same extent by herbicides and safeners in other crops"). In other words, for a safener to be effective and to protect a crop against a specific herbicide, certain functions must be present in the crop that enable it to be protected from the herbicide by the safener ("functions may are [sic, be] unique in these crops or are highly efficient in the graminaceo[u]s crops", where the "functions" relate to the "action of safeners"). Consistently, Abu-Qare teaches that "safeners activity is determined by selection of the herbicide and the crop." Abu-Qare 966 ("2. Uses"). Abu-Qare further teaches: It seems that the commonly used safeners are having limitations either in offering protection for certain crops or against specific herbicides. The challenge is to introduce safeners that have wide range of activity in the field. Abu-Qare 967 ( col. 1 ). Appellants' argue based on this discussion in Abu-Qare that not every combination of herbicide and safener would be effective to protect a particular crop. Appellants argue that the activity of a particular safener is not universal with respect to an herbicide's activity, but has "limitations" and that these limitations are described by Abu-Qare as a challenge to find safeners with a "wide range of activity in the field." Abu-Qare 967. The evidence provided by Appellants, as reproduced in part above, support their contentions. 7 Appeal 2018-004992 Application 12/089,800 While the claims are not limited to a specific crop, there must still be a reason to put the herbicide and safener together. If it is not known whether the safener would be protective against an herbicide, then one of ordinary skill in the art would not have had reason to put them together with a reasonable expectation that the combination would succeed in preventing crop damage. The Examiner's reason to combine the two recited compounds is based on the finding that both Zagar and Ziemer treat the same plants. But the fact that different herbicides work in the same plants does not mean that the plants would necessarily have the "functions" that enable a specific safener, such as the safener of Ziemer, to protect against a particular herbicide of a specific structure, such as the herbicide of Zagar. See Abu- Qare 968 ( col. 1) (reproduced above). Ziemer also recognizes that not every safener would be expected to work in combination with every pesticide. Ziemer discloses: When using safeners for protecting useful plants against damage by pesticides, it has been found that in many instances known safeners still have certain disadvantages. These include: the safener reduces the activity of the pesticides, in particular those of herbicides, against the harmful plants the crop-protecting properties are insufficient in combination with a given herbicide, the spectrum of the useful plants in which the safener/herbicide is to be employed is not sufficiently wide a given safener cannot be combined with a sufficiently large number of herbicides. Ziemer 1: 51-64 ( emphasis added). While Ziemer states that its safeners address these disadvantages, in view of the known limitations of safeners as discussed by Abu-Qare, one of 8 Appeal 2018-004992 Application 12/089,800 ordinary skill in the art would not have reasonably believed that every safener would protect against every herbicide when applied to a specific crop. Indeed, Abu-Qare summarizes in its Abstract: Even though progress was made in the development of herbicide safeners and in understanding their mechanisms of action, more research is needed to elucidate clearly how these chemicals act and why their activity is restricted to particular crops and herbicides. Abu-Qare 965 (Abstract) (emphasis added). The Examiner did not address Appellants' evidence citing Abu-Qare and Davies. Rather, the Examiner, without commenting on it, stated that "Examiner is not persuaded by this argument because the rejection is based on different reasons as to why one of ordinary skill in the art would be motivated to combine the teachings." Ans. 4. However, while the Examiner has a reason for combining Zagar and Ziemer, this reason does not relieve the Examiner of the burden of explaining why one of ordinary skill in the art would have reasonably expected the safener of Ziemer to protect a crop from the damaging effect of the herbicide of Zagar in view of the evidence of unpredictability discussed above, particularly when it was known at the time of the invention that the "activity" of a safener was "restricted to particular crops and herbicides." Abu-Qare 965 (Abstract). Appellants' evidence supports the contention that it would not have been reasonably expected that the claimed safener would protect a crop against the herbicidal action of the claimed herbicide. The Examiner did not identify a defect in this evidence or a logical explanation as to why it does not undermine the obviousness of combining Zagar and Ziemer. Accordingly, we conclude that "the evidentiary basis for an inference of reasonable expectation of success" is "inadequate." Accorda, 903 F.3d at 1333-34. 9 Appeal 2018-004992 Application 12/089,800 The obviousness rejection of claims 20, 25 and 29-37 is reversed. REVERSED 10 Copy with citationCopy as parenthetical citation