Richard K. Mann et al.

Patent Trials and Appeals Board

Dec 2, 2019

13018583 - (D) (P.T.A.B. Dec. 2, 2019)

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.
13/018,583 02/01/2011 Richard K. Mann 10284-077US1 8789
115453 7590 12/02/2019
Dow AgroSciences LLC
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
HOLT, ANDRIAE M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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@mcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD K. MANN and YI-HSIOU HUANG
Appeal 2018-008624
Application 13/018,583
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
TAWEN CHANG, Administrative Patent Judges.

CHANG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 4, 5, 7–9, 13, 14, and 18–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Dow
AgroSciences LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method of controlling undesirable
vegetation. Claim 4 is illustrative:
4. A method of controlling undesirable vegetation which
comprises applying pre-emergently to the locus of the
undesirable vegetation a synergistic herbicidal mixture
comprising a herbicidally effective amount of (a) penoxsulam
and (b) butachlor,
wherein the weight ratio of butachlor to
penoxsulam is from 10:1 to 40:1, and
wherein the undesirable vegetation is winklegrass.
Appeal Br. 14 (Claims App.).
REJECTION
The Examiner rejects claims 4, 5, 7–9, 13, 14, and 18–20 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Breen,2 Johnson,3 the
entries for penoxsulam4 and butachlor5 in The Pesticide Manual, and
Mahajan.6
DISCUSSION
A. Issue
The Examiner finds that Breen teaches compositions comprising
penoxsulam and butachlor in weight ratios of 1:50 and 1:33.3, the same two

2 Breen et al., JP2001-233718A, published Aug. 28, 2001. Our citations are
to the English-language translation of record.
3 Johnson et al., U.S. Patent No. 5,858,924, issued Jan. 12, 1999.
4 BRITISH CROP PROTECTION COUNCIL, THE PESTICIDE MANUAL: A WORLD
COMPENDIUM 874 (C. D. S. Tomlin ed., 15th ed. 2009).
5 BRITISH CROP PROTECTION COUNCIL, THE PESTICIDE MANUAL: A WORLD
COMPENDIUM 117 (C. D. S. Tomlin ed., 12th ed. 2000).
6 Gulshan Mahajan et al., Performance of Penoxsulam for Weed Control in
Transplanted Rice, 2 PEST TECHNOLOGY 114 (2008).
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compounds recited in the claim and in a ratio that overlaps with the claimed
ratio. Ans. 6.
Appellant contends that Breen does not suggest applying its herbicidal
mixtures pre-emergently or to control winklegrass as recited in all the
claims. Appeal Br. 8; Reply Br. 4–5. Appellant contends that, “[t]herefore,
nothing in Breen would have suggested that penoxsulam and butachlor could
produce synergistic results when applied pre-emergently to winklegrass.”
Appeal Br. 8; see also Reply Br. 4–5. Appellant contends that the other
cited references do not cure the deficiencies in Breen and that, if anything,
“Mahajan . . . only serve[s] to reinforce the teachings of Breen that the
compositions described therein should be applied post-emergently.” Id. at
8–9; see also Reply Br. 2–4. Thus, Appellant contends that a skilled artisan
would not have had a reason to combine the cited references to arrive at the
claimed invention, with a reasonable expectation of success. Appeal Br. 10;
see also Reply Br. 4–5.
In the Reply Brief, Appellant also contends that “Breen does not
demonstrate that combinations of penoxsulam and butachlor exhibit any
synergistic effects” and that, to the extent the Examiner has established a
prima facie case of obviousness, the subject matter of the invention exhibits
unexpected results. Reply Br. 3, 5.
Appellant does not separately argue the claims. We therefore limit
our analysis to claim 4 as representative. The issues with respect to this
rejection is (1) whether a skilled artisan would have had reason to combine
the cited prior art references to arrive at the invention of claim 4, with a
reasonable expectation of success, and (2) if so, whether the subject matter
of claim 4 exhibits unexpected results.
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B. Findings of Fact
1. Breen teaches herbicides of formula (I)
,
wherein Q may be C-H or N and R may contain one or more halogen or an
oxygen atom, among other substituents. Id. ¶ 4.
2. Breen teaches compositions comprising herbicide A and
herbicide B, wherein herbicide A is an herbicide of formula (I) and herbicide
B is a “soil and . . . foliage applied herbicide.” Breen ¶ 6.
3. Breen teaches that herbicide A may be a compound of formula
(I) wherein Q is C-H and R is CH2CHF2. Id. ¶ 9. The Examiner finds, and
Appellant has not disputed, that this compound, designated A7 in Breen, is
penoxsulam. Ans. 5.
4. Breen teaches that herbicide B may be “chosen from a publicly
known weed killer,” including among others butachlor, designated
compound B2 in Breen. Breen ¶ 10.
5. Breen teaches that its composition “is effective especially as a
paddy field weed killer,” has a long period of residual activity, and is not
harmful to crops such as paddy rice. Id. ¶ 7.
6. Breen teaches that when herbicide A is added to herbicide B
there is “a surprising synergistic effect”:
If each weed killer of these ingredients (B) is independent, the
grass species of clo GUWAI and Ms. GAYATSURI which are
the above-mentioned difficulty control cannot be controlled. . . .
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[B]y combining . . . ingredient (A), from the combination
of a general active principle, the above-mentioned fault is
improved to such an extent that it cannot predict, Effect
continuation shows power to the paddy field difficulty control
weeds which demonstrate a surprising synergistic effect, do not
have a weed killer which can be controlled especially, and are
expected the effective weed killer that the weeds which growth
followed can also be withered in a long period of time.
. . . Especially the width of processing time can extend
an ingredient (A), the ingredient numbers 1, 2, 3, 7, 33, 38, 40,
44, 47, 49, 53, 57, 59, and 60, and by combining the ingredient
(b) of 1, 2, 40, 49, 53, and 59 more preferably.
Id. ¶¶ 11–13; cf. id. ¶ 33 (stating with respect to its invention that “[t]he
outstanding feature that an extermination effect becomes good, so that he is
surprised, a residual activity period becomes long further, and no medical
harm is in crops, such as paddy rice, is shown”).
7. Breen teaches that the weight ratio of ingredient A to ingredient
B in its composition is for example 1:0.1–100, preferably 1:0.1–50, and
more preferably 1:0.1–5. Id. ¶ 14.
8. Breen teaches composition in its examples consisting of the
combination of penoxsulam and butachlor at weight ratios of 1:50 and
1:33.3. Id. at ¶ 26, Table 1.
9. Johnson teaches using N-(Triazoloazinyl)arylsulfonamide
compounds as herbicides. Johnson Abstract, 1:16–20.
10. Johnson teaches that one of the preferred compounds of its
invention include 2-(2,2-difluoroethyoxy)-6-(trifluoromethyl)-N-(5,8-
dimethoxy[1,2,4]triazolo-[1,5-c]pyrimidin-2-yl)benxenesulfonamide,
designated compound 190. Id. at 6:46–8:5. The Examiner finds, and
Appellant does not dispute, that this compound is penoxsulam. Ans. 6–7.
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11. Johnson teaches “[t]he use of suitable compounds of the
invention to achieve either total vegetation control or the selective control of
weeds in wheat, rice and oil-seed rape crops.” Id. at 3:11–14. Johnson
teaches that “[b]oth grassy and broadleaf weeds can be controlled.” Id. at
3:14–15; see also id. at 30:14–15, 20–22. Johnson teaches that
“[c]ompounds of special interest for [the] purpose” of “control[ling] . . .
[the] many broadleaf and grassy weeds in rice” include compound 190, i.e.,
penoxsulam. Id. at 30:39–43.
12. Johnson states that post-emergence applications of its
compounds are generally preferred but teaches that the compounds of its
invention “have been found to be useful preemergence (including pre-plant)
and post-emergence herbicides.” Id. at 30:11–13; see also id. at 3:15–16,
30:58–61 (“Herbicidal activity is exhibited by the compounds of the present
invention when they are applied directly to the plant or to the locus of the
plant at any stage of growth or before planting or emergence.”), 31:3–5.
13. Johnson teaches that the compounds of its invention “are often
applied in conjunction with one or more other herbicides to obtain control of
a wider variety of undesirable vegetation,” that “[i]t is generally preferred to
use the compounds in conjunction with other herbicides that have a similar
crop selectivity,” and that “[i]t is further usually preferred to apply the
herbicides at the same time, either as a combination formulation or as a tank
mix.” Id. at 31:15–18, 38–42.
14. The entry for penoxsulam in The Pesticide Manual states that
penoxsulam is “[a]pplied pre-emergence, post-emergence and water
applied” and that its “[p]rimary use will be a post-emergence application in
dry-seeded, water-seeded and transplanted rice.” Pesticide Manual 874.
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15. The entry for butachlor in The Pesticide Manual states that
butachlor is “[u]sed pre-emergence for the control of annual grasses and
certain broad-leaved weeds in rice, both seeded and transplanted.” Id. at
117.
16. Mahajan teaches that butachlor is used widely for weed control
in transplanted rice and provides effective control of annual grasses.
Mahajan 114, left column.
17. Mahajan teaches that “[p]enoxsulam is a post-emergence
herbicide[ that] acts by inhibiting the acetolactate synthase enzyme and is
registered for weed control in rice in the southern USA.” Id. at 114, right
column.
18. Mahajan describes a field experiment using seven treatments
consisting of two doses of penoxsulam (22 or 25 g/ha) applied to rice at 3 or
12 days after transplanting (DAT), butachlor (1500 g/ha) applied at 3 DAT,
hand weeding (twice at 20 and 40 DAT) and weedy check (untreated
control). Id. at 114–115.
19. Mahajan teaches that the main grassy weeds present in the field
included Ischaemum rugosum. Id. at 115, right column. Ischaemum
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rugosum is winklegrass. Spec. 9:15. Tables 1 and 2 of Mahajan are
reproduced below:

Mahajan 115. Table 1 describes the “[e]ffect of weed control treatments on
weed density (species wise) and their dry weight (DM) at harvest.” Id.
Table 2 describes the “[e]ffect of treatments on plant height, weed control
efficiency (%), yield components and yield of rice.” Id.
20. Mahajan states that “[t]he application of penoxsulam . . . proved
more superior in terms of weed control when applied at 12 DAT than at 3
DAT.” Mahajan 115, right column. However, Mahajan also teaches that
“[t]here was no phytotoxic effect on the crop due to application of
penoxsulam at any of the doses applied at 3 or 12 DAT” and that “[a]ll weed
control treatments increased grain yield over the untreated control . . . due to
better control of weeds.” Id.
21. Mahajan teaches that “[i]t was observed that many weeds,
especially sedges and broad-leaf weeds, emerged after the application of
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penoxsulam when applied at 3 DAT so that these weeds were not controlled
when penoxsulam was applied at 3 DAT.” Id. at 116, left column.
22. Mahajan teaches that “penoxsulam provided excellent control
over weeds in rice and could be used as an alternative herbicide to butachlor
for weed control in rice,” and further teaches that, “[d]ue to its pre- and post-
emergence activity, it provides more flexibility to farmers in terms of its
time of application, if the farmers fail to apply pre-emergence herbicide in
time.” Id.
C. Analysis
Except as otherwise noted, we adopt the Examiner’s findings of fact
and reasoning regarding the scope and content of the prior art with respect to
claim 4 (Final Act. 2–12; Ans. 3–15; FF1–FF24) and agree that claim 4 is
obvious over the cited art. We address Appellant’s arguments below. Only
those arguments made by Appellant in the briefs have been considered;
arguments not presented in the briefs are waived. See 37 C.F.R. §
41.37(c)(1)(iv).
Appellant contends that a skilled artisan would not have had a reason
to combine the cited references to arrive at the claimed invention, with a
reasonable expectation of success. Appeal Br. 10; see also Reply Br. 4–5.
In particular, Appellant contends that “nothing in Breen would have
suggested that penoxsulam and butachlor could produce synergistic results
when applied pre-emergently to winklegrass” and that the other cited
references do not cure the deficiencies in Breen. Appeal Br. 8–9; see also
Reply Br. 2–5.
We are not persuaded. Breen teaches an herbicide composition
comprising penoxsulam and butachlor, including an embodiment that falls
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within the claimed weight ratio of butachlor to penoxsulam. FF1–FF4, FF6,
FF8. While Breen does not appear to explicitly teach applying its
composition pre-emergently to winklegrass, the entry for butachlor in The
Pesticide Manual teaches that butachlor is “[u]sed pre-emergence for the
control of annual grasses . . . in rice.” FF15. Similarly, the prior art teaches
that penoxsulam may also be used as a pre-emergence, as well as a post-
emergence, herbicide. FF10, FF12, FF14, FF22. Furthermore, the prior art
teaches that penoxsulam may be used to control weeds in rice, and Mahajan
teaches that one of the main grassy weeds that may be present in a rice field
is winklegrass. FF5, FF11, FF14, FF17, FF19, FF22. Given these prior art
teachings – i.e., Breen’s explicit teaching of a composition comprising
penoxsulam and butachlor having the claimed weight ratio and the teachings
from other prior art references that butachlor and penoxsulam may both be
used as pre-emergent herbicide, that they are useful in controlling weeds in
rice, and that winklegrass is one of the main grassy weeds in rice fields, we
find that a skilled artisan would have had reason to apply a composition
comprising butachlor and penoxsulam having a weight ratio within the
claimed range pre-emergently to control winklegrass, with a reasonable
expectation of success.
Appellant disputes that other cited references suggest applying
penoxsulam pre-emergently to winklegrass. Id. at 8–9; see also Reply Br.
2–4. In particular, Appellant contends that Johnson teaches that post-
emergent application of its compounds is generally preferred and does not
provide an example of applying penoxsulam pre-emergently, and The
Pesticide Guide also states that penoxsulam’s “primary use will be a post-
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emergence application in dry-seeded, water-seeded and transplanted rice.”
Appeal Br. 8.
We are not persuaded. In evaluating obviousness “all disclosures of
the prior art, including unpreferred embodiments, must be considered.” In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Thus, the teaching in
Johnson that post-emergent application of its compound is preferred and the
teaching in The Pesticide Guide that the primary use of penoxsulam is as a
post-emergence herbicide do not render pre-emergent application of
penoxsulam non-obvious, since both references also teach that penoxsulam
may be applied as a pre-emergent herbicide. FF12, FF14. Moreover,
Mahajan also teaches that penoxsulam may be used pre-emergently. FF22.
Appellant contends that Johnson and The Pesticide Guide are both
silent regarding “application of a herbicidal mixture comprising any
combination of butachlor and penoxsulam or that the combination could
control winklegrass.” Appeal Br. 8–9; see also id. at 10, 11.
We are not persuaded. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In this case, not only does Breen teach the combination, but the combination
is also obvious because prior art teaches both herbicides individually as
useful for controlling weeds in rice. FF11, FF14, FF15, FF16, FF22. “It 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
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combining them flows logically from their having been individually taught
in the prior art.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Indeed,
Johnson explicitly suggests applying the compounds of its invention with
other herbicides having similar crop selectivity. FF13.
Likewise, with respect to the use of the composition to control
winklegrass as required by claim 4, we agree with the Examiner that such
use is obvious because the prior art teaches that penoxsulam and butachlor
are useful for controlling weeds in rice and Mahajan teaches that
winklegrass is one of the major grassy weeds present in the rice fields of its
example and further teaches using penoxsulam for weed control in rice.
FF18, FF19, FF20, FF22.
Appellant contends that “Mahajan . . . serve[s] to reinforce the
teachings of Breen that the compositions described therein should be applied
post-emergently” because it “explicitly teaches that penoxsulam is a post-
emergent herbicide” and “notes that the application of penoxsulam at 3 DAT
proved to be most inferior among all the weed control treatments” because
late emerging weeds “escape[d] [penoxsulam’s herbicidal] mechanism of
[reducing] transport of photosynthate from source leaves to roots.” Appeal
Br. 9–10, 12; Reply Br. 2–3. Appellant also contends that “Mahajan . . .
relate[s] to the application of penoxsulam and/or butachlor individually.”
Appeal Br. 10.
We are not persuaded. While Mahajan does describe penoxsulam as a
post-emergent herbicide and teaches that weed control was superior when
penoxsulam was applied 12 DAT as compared to 3 DAT, Mahajan teaches
that application of penoxsulam at 3 DAT also increased grain yield due to
better weed control. FF17, FF20. Moreover, Mahajan explicitly teaches that
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penoxsulam also has pre-emergence activity, stating that “[d]ue to its pre-
and post-emergence activity, [penoxsulam] provides more flexibility to
farmers in terms of its time of application, if the farmers fail to apply pre-
emergence herbicide in time.” FF22 (emphasis added). As discussed above
with respect to Johnson and The Pesticide Guide, in evaluating obviousness
“all disclosures of the prior art, including unpreferred embodiments, must be
considered.” In re Lamberti, 545 F.2d at 750.
We are likewise unpersuaded by Appellant’s argument that Mahajan
relates to application of penoxsulam and/or butachlor individually, for the
same reasons already discussed above with respect to Johnson and The
Pesticide Guide. Thus, we agree with the Examiner that, in light of the
combined teachings of the prior art, a skilled artisan would have had reason
to combine penoxsulam and butachlor for pre-emergent application to
control winklegrass, with a reasonable expectation of success.7
Appellant further contends that the prior art does not teach that the
claimed herbicidal mixture would be synergistic, particularly when applied

7 In response to Appellant’s argument that Mahajan teaches that
penoxsulam is a post-emergent herbicide, the Examiner notes that “the
Mahajan reference was not relied upon to teach the application stage, but to
[teach] the application of penoxsulam and butachlor to winkleweed.” Ans.
12. Appellant contends that the Examiner fails to consider Mahajan in its
entirety. Reply Br. 2–3. To the extent the Examiner suggests that
Mahajan’s statements regarding penoxsulam’s application stage are
irrelevant because Mahajan was cited for another purpose, we disagree with
the Examiner and do not adopt the Examiner’s position in this regard. “It is
well settled that a prior art reference is relevant for all that it teaches to those
of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264. However, as
discussed above, we find that the prior art as a whole teaches that
penoxsulam may be used as a pre-emergent herbicide.
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pre-emergently, and that a skilled artisan would not thus have a reasonable
expectation of the claimed synergistic activity. Appeal Br. 10–11.
We are not persuaded. Breen teaches that when its herbicide A
(which includes penoxsulam) is added to its herbicide B (which includes
butachlor), there is a “surprising synergistic effect.” FF6. More
importantly, as discussed above, the combination of prior art suggests
applying a composition of penoxsulam and butachlor as a pre-emergent
herbicide to control winklegrass. Breen further discloses combining
penoxsulam and butachlor at a weight ratio of 1:33.3, which falls within the
weight ratio of claim 4. Thus, the limitation regarding “synergistic”
herbicidal mixture is inherently met by the method suggested by the prior art
combination. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(explaining that “[i]t is a general rule that merely discovering and claiming a
new benefit of an old process cannot render the process again patentable”);
see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (holding that
“[w]here . . . 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”).
Appellant’s citation to Takeda Chemical is inapposite. Appeal Br.
10–11; Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d
1350, 1361 (Fed. Cir. 2001). In Takeda, the issue was whether a claimed
compound was obvious over a prior art compound, compound b, that was
alleged to be structurally similar. Id. at 1353–1354. In that case, the Court
saw no error in the district court’s determination that “nothing in the prior art
. . . suggest[s] making the specific molecular modifications to [prior art]
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compound b . . . necessary to achieve the claimed compounds,” given that
there was no reasonable expectation in the art that the modification would
have resulted in beneficial changes. Id. at 1360–1361. The Court also noted
that the district court found the claimed compound to exhibit unexpectedly
superior properties over the prior art compound b. Id. at 1361–1362.
In contrast, in this case Breen explicitly suggests the composition used
in the claimed method, and the combination of prior art also gives a skilled
artisan a reasonable expectation that pre-emergent application of the
composition will be useful in controlling winklegrass. Thus, unlike in
Takeda, the prior art does suggest making the modifications necessary to
achieve the claimed method, while the limitation regarding “synergistic
herbicidal mixture” is inherently met by the method suggested by the prior
art.
Appellant contends that the prior art references are silent with respect
to the ability of a composition comprising penoxsulam and butachlor in
controlling winklegrass. Appeal Br. 11–12. In particular, Appellant
contends that “Mahajan does not evaluate the herbicidal activity of
penoxsulam and butachlor against individual weeds” but rather only
“evaluates the effectiveness of penoxsulam and butachlor against classes of
weeds (grasses, sedges, or broadleaf).” Id. Thus, according to Appellant,
“Mahajan fails to provide any information about the effectiveness of
penoxsulam and butachlor against any individual weed,” and “it is possible
that the level of control exhibited by penoxsulam and butachlor against the
grassy weeds in Table 1 [of Mahajan] could be due exclusively to control of
[grassy weeds other than winklegrass].” Id. at 12.
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We are not persuaded. While it is true that Mahajan does not
separately evaluate the effect of penoxsulam and butachlor against
winklegrass, we find that Mahajan’s teachings that winklegrass was one of
the main grassy weeds present in its field experiment, and that application of
penoxsulam at 3 and 12 DAT and butachlor at 3 DAT controlled grassy
weeds, provide a skilled artisan a reason to use penoxsulam and/or butachlor
to control winklegrass, with a reasonable expectation of success. In this
respect, we note that in the context of an obviousness rejection “expectation
of success need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
Finally, citing to the Board’s decision in Suty-Heinze, Ex parte Suty-
Heinze, Appeal No. 2012-012281, 2015 WL 1642091 (PTAB Mar. 12,
2015), Appellant argues that “synergism can overcome prima facie
obviousness, even when the prior art broadly suggests synergism may be
expected.” Appeal Br. 11. Similarly, Appellant contends in the Reply Brief
that “Breen does not demonstrate that combinations of penoxsulam and
butachlor exhibit any synergistic effects” and that, to the extent the
Examiner has established a prima facie case of obviousness, the subject
matter of the invention exhibits unexpected results. Reply Br. 3, 5.
We are not persuaded. As already discussed above and as the
Examiner points out, unlike in Suty-Heinze, in this case Breen teaches the
claimed combination of the herbicides in the claimed weight ratio (FF8), and
the combination of prior art also suggests that the composition may be
applied pre-emergently to control winklegrass, as claimed. Thus, we find
that the limitation regarding a “synergistic herbicidal mixture” is inherently
met absent evidence to the contrary. In re Best, 562 F.2d at 1255.
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Finally, we are likewise unpersuaded by Appellant’s argument
regarding unexpected results. Appellant cites to Table 3 of the Specification
in arguing that a skilled artisan “would not have reasonably expected that the
claimed method . . . would have the substantial herbicidal activity shown.”
Appeal Br. 10. However, claim 4 encompasses weight ratios of butachlor to
penoxsulam of from 10:1 to 40:1, whereas Table 3 describes the results of
only a single composition (and thus a single weight ratio) of butachlor to
penoxsulam (300 grams per hectare to 13 grams per hectare, or about 23:1).
Spec. 9:7–15. Neither has Appellant persuasively explained why this
composition is representative of compositions falling within the claimed
range of weight ratios. One data point is insufficient “to ascertain a trend in
the exemplified data which would allow [one having ordinary skill in the art]
to reasonably extend the probative value thereof.” In re Kollman, 595 F.2d
48, 56 (CCPA 1979). Here, Appellant must, therefore, demonstrate or
explain why the result of the single composition would establish the asserted
unexpected result for the full scope of claim 4. We conclude Appellant has
not done so. Appellant has not, therefore, shown unexpected results
commensurate with the scope of the claim, as required of evidence presented
to rebut a prima facie case of obviousness. In re Dill, 604 F.2d 1356, 1361
(CCPA 1979) (holding that “[t]he evidence presented to rebut a prima facie
case of obviousness must be commensurate in scope with the claims to
which it pertains”); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(explaining that an applicant may establish that evidence of unexpected
result is commensurate with the scope of the claim “[i]f an applicant
demonstrates that an embodiment has an unexpected result and provides an
Appeal 2018-008624
Application 13/018,583

18
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner”).
Accordingly, we affirm the Examiner’s rejection of claim 4 as
obvious over Breen, Johnson, the entries for penoxsulam and butachlor in
The Pesticide Manual, and Mahajan. Claims 5, 7–9, 13, 14, and 18–20 fall
with claim 4.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4, 5, 7–9, 13,
14, 18–20
103(a) Breen, Johnson, the
entries for penoxsulam
and butachlor in The
Pesticide Manual,
Mahajan
4, 5, 7–9,
13, 14,
18–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED