Syngenta Participations AG

Patent Trials and Appeals Board

May 5, 2020

IPR2020-00124 (P.T.A.B. May. 5, 2020)

Trials@uspto.gov Paper 16
571-272-7822 Date: May 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BORAGEN, INC.,
Petitioner,

v.

SYNGENTA PARTICIPATIONS AG,
Patent Owner.
____________

IPR2020-00124
Patent 10,130,096 B2
____________

Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. INTRODUCTION
Boragen, Inc., (“Petitioner”),1 on November 5, 2019, filed a Petition
to institute inter partes review of claims 1–12 of U.S. Patent No. 10,130,096
B2 (Ex. 1001, “the ’096 patent”). Paper 1 (“Pet.” or “Petition”). Syngenta
Participations AG (“Patent Owner”) filed a Preliminary Response to the
Petition. Paper 15 (“Prelim. Resp.”).
Under 35 U.S.C. § 314(a), an inter partes may not be instituted unless
the Petition “shows that there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” Upon considering the arguments and evidence, we deny review of
the Petition on a discretionary basis under 35 U.S.C. § 325(d). Thus, for
reasons further explained below, we do not institute inter partes review of
claims 1–12 of the ’096 patent.
II. BACKGROUND
A. Related Proceedings
Petitioner states that it is unaware of any litigation concerning the
’096 patent. Pet. 1. Petitioner does not identify any other matters known to
it related to the ’096 patent pending before the U.S. Patent Office. Id.
B. The ’096 Patent
The ’096 patent is titled “METHOD FOR PROTECTING USEFUL
PLANTS OR PLANT PROPAGATION MATERIAL.” Ex. 1001, (54).
According to the patent:

1 Petitioner identifies itself as the real party-in-interest. Pet. 1.
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The present invention relates to the method for protecting useful
plants or plant propagation material, more specifically to a
method [of] use of oxaboroles and salts thereof as biocides in
agriculture or horticulture for controlling or preventing
infestation of plants or plant propagation material, harvested
food crops by phytopathogenic microorganisms, preferably
fungi.
Id. at 1:5–12. As background, the ’096 patent discloses that “use of
oxaboroles and salts thereof as industrial biocides especially fungicides for
the protection of plastics materials such as plasticised PVC is know[n] from
WO95/33754 [(“Austin,” as described further below)].” Id. at 1:35–38.
The ’096 patent explains that a “particularly preferred class of
oxaborole” of the invention is “that of formula (Ic),” which is shown below.

Id. at 11:48–65 (describing varied substitutions at R7, X, and R). The above
chemical formula shows a polycyclic structure having, inter alia, a five-
membered heterocyclic ring that includes boron (B) and oxygen (O) at
certain points on that ring. As the patent further explains, R7 may preferably
be chlorine (Cl), X may be CH2, and R may be hydrogen (H) in this formula.
Id. at 11:6–12:14. Such substituted structure is shown below, and is named
Compound 1 in the ’096 patent.
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Id. at 26:55–67 (Table 1 (partial)). The compound shown immediately
above is a 5-Chloro-3H-benzo[c][1,2]oxaborol-1-ol, including, as noted,
chlorine at R7 and hydrogen at R, forming a hydroxyl at that position. Id.
According to the ’096 patent, compounds of the invention “are
distinguished by excellent activity at low rates of application, by being well
tolerated by plants and by being environmentally safe.” Id. at 12:64–67.
Moreover, the patent discloses, the compounds have “useful curative,
preventative and systemic properties and are used for protecting numerous
useful plants.” Id. at 13:1–2. The ’096 patent further describes, in
examples, the fungicidal activity of the compounds on plants or plant
propagation material (e.g., seeds). See, e.g., id. at 41:11–25 (Example B-4,
describing at least 80% control of the fungi Pyrenophora graminea on
barley following seed treatment with Compound 1), 41:26–42 (Example B-
5, describing at least 50% control of the fungi Pythium ultimum on cotton
following seed treatment with Compound 1).
C. Challenged Claims
The ’096 patent includes twelve claims. Claim 1–3 are illustrative
and read as follows:
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1. A method for controlling infestation of plants or plant
propagation material and/or harvested food crops susceptible to
microbial attack by treating plants or plant propagation material
and/or harvested food crops with an effective amount of an
oxaborole of formula (Ic):

wherein R7 is chlorine, X is CH2, and R is H, C1-4 alkyl
optionally substituted by —NR3R4 wherein R3 and R4 are each
independently, hydrogen, optionally substituted C1-4-alkyl.

2. A method of controlling phytopathogenic diseases on plants
or plant propagation material thereof according to claim 1,
which comprises applying to said plant propagation material a
fungicidally effective amount of a compound of formula (Ic).

3. A method according to claim 1, wherein plant propagation
material of useful plants are seeds of useful plants.

Ex. 1001, 41:44–42:19.
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D. Asserted Grounds of Unpatentability
Petitioner asserts four grounds of unpatentability (Pet. 3, 30–67),
which are provided in the table below:
Claims Challenged 35 U.S.C. § Reference(s)
1–12 103(a)2 Austin,3 Sibley4
1–12 103(a) Austin, Kohn5
1–12 103(a) Austin, Kohn, Sibley
1–12 103(a) Austin, Kohn, Baker6
Petitioner also relies on declarations of Dennis Hall, Ph.D. (Ex. 1003),
and Phillip M. Brannen, Ph.D. (Ex. 1018).
E. Prosecution History
The parties each provide extensive reviews of the prosecution history.
Pet. 10–19; Prelim. Resp. 9–18; Ex. 1002 (prosecution history). We provide
an overview below.

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
of the ’096 Patent have an effective filing date before the effective date of
the applicable AIA amendments, we refer to the pre-AIA version of 35
U.S.C. § 103 in this Decision.
3 Austin et al., WO 95/33754, published Dec. 12, 1995 (Ex. 1004).
4 Sibley et al., WO 2009/130481 A1, published Oct. 29, 2009 (Ex. 1006).
5 Kohn et al., US 3,686,398, issued Aug. 22, 1976 (Ex. 1005).
6 Baker et al., US 7,582,621 B2, issued Sept. 1, 2009 (Ex. 1008).
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The application (US Appl. No. 14/347,285 (“the ’285 Application”))
that led to the ’096 patent was filed on March 26, 2014, and claimed priority
from an earlier international application and foreign counterparts filed in
2011 and 2012. Ex. 1001, (21), (22), (86), (30). The original independent
claims were broader than the claims that later issued, including a broader
chemical formula, but still for use of the formula/compounds in controlling
infestation in plants. Ex. 1002, 632 (claim 1 as filed).
With the filing of the ’285 Application, the Applicants submitted an
Information Disclosure Statement (“IDS”) as well as a related International
Search Report. Id. at 1–4, 179–184. The IDS identified Kohn, Austin, two
publications to Baker,7 and three other references. Id. at 1–4; see also id. at
181–182. Those were the only references cited during prosecution.
On May 21, 2015, the Office entered a restriction requirement and the
Applicants later elected Compound 1 (as shown above). Id. at 465, 470
(noting that this “species is encompassed in claims 1−4 and 6−18”).
Then, over the next two-plus years, followed a series of five rejections
of all the pending claims for obviousness over the combination of Austin
and Kohn.8 For example, in a Final Office Action dated February 22, 2016,

7 The Baker references are US 2010/0267981 A1 (published Oct. 21, 2010),
which is the publication of a continuation-in-part application to Baker
(Ex. 1008), and WO 2006/089067 A2 (published Aug. 24, 2006). Ex. 1002,
56–178.
8 Early in prosecution, the Examiner also rejected the claims for lack of
enablement because the claims, at that time, included “preventing”
infestation, which the Examiner stated embraces “total prevention.”
Ex. 1002, 476–477. The Examiner reasoned that the claims were enabled
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the Examiner found that “Austin et al. teach the elected compound, 5-
Chloro-3H-benzo[c][1,2] oxaborol-l-ol, in Table 5, compound 66 (page 23,
Table 5)” and that such “compound provides antifungal activity against,
Aspergillus niger and Candida albicans (page 37, Table 9, compound 66).”
Id. at 514–515. Because Austin did not disclose use of the oxaboroles to
control infestation of plants, the Examiner turned to Kohn, which the
Examiner reasoned taught controlling fungal infestation in plants with
“compounds with similar structures.” Id. at 516–17.
Following the second rejection for obviousness over Austin and Kohn,
the Applicants filed a Request for Continued Examination (“RCE”) along
with arguments from the Applicants and a declaration from Dr. Ronald
Zeun. Id. at 527–544; id. at 530–536 (“Zeun Declaration”). As reported in
the Zeun Declaration, numerous compounds from Austin were tested,
including some that fell within the scope of the claims and some that did not.
Id. at 530–533. For example, Dr. Zeun tested compound 2.2 (as within the
claim scope) and 2.1 (as outside claim scope) and cites data showing, for
instance, that compound 2.2 exhibited between 60–70% control against
various fungi on different plants (grape, wheat, barley) whereas compound
2.1 provided only 25% control on grape and no control against the fungi on
wheat and barley. Id. at 534–536 (describing results and assays).
Applicants argued that the results with the claimed compounds showed
“unexpected superior fungicidal activity in agriculture” and, based on

for “controlling” infestation but not total prevention. Id. Applicants
overcame this rejection by deleting “preventing” in the claims. Id. at 506.
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Austin, “one would not have any reasonable expectation of success when
pursuing the present claims.” Id. at 543–44 (“[A]s seen in the presently
submitted disclosure, the efficacy varies based on the subject material in
which the compounds are applied.”).
The Examiner was initially unpersuaded. Among other things, the
Examiner found in a July 29, 2016, Office Action that Petitioner’s data was
“not commensurate in scope with the oxaborole compounds” recited in the
claims at that time. Id. at 554 (noting that the claims permitted the R7
substituent to be, e.g., a carbonamido optionally substituted with C1-6 alkyl).
The Examiner also responded that Austin taught many compounds that fell
within the scope of the claims, including compound 66, and that Austin
showed efficacy against certain fungi (e.g., A. niger) known to attack plants.
Id. at 555–556.
Applicants responded by narrowing their claims. Id. at 566.
Moreover, Applicants continued to press their arguments that, based on the
prior art and the declaration evidence, they had shown unexpected superior
antifungal efficacy when the compounds were used in agriculture, and the
absence of a reasonable expectation of success. Id. at 566. Yet the
Examiner remained unpersuaded and, in a February 9, 2017, Office Action,
entered a final rejection of the claims. Id. at 575–85 (finding “it would have
been obvious to the skilled artisan that the compounds taught by Austin et al.
would be able to control harmful fungi on plant surfaces,” while
acknowledging that “all of the compounds disclosed [in Austin] may not
provide protection against fungal attack”).
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This final rejection prompted Applicants to file a second RCE. Id. at
592–605. Applicants argued that Austin failed to suggest its compounds
could be used in agriculture and that the structures of the antifungals in
Kohn were “widely different.” Id. at 601 (noting, for example, a five- versus
a six-membered ring in the claimed formula, and an additional aromatic ring
in Kohn’s compounds). And, once again, Applicants argued that Dr. Zeun’s
testing showed unexpected results and that there was no reasonable
expectation of success from Austin as to which compounds would be
suitable and highly active for use in agriculture. Id. at 603.
On September 21, 2017, the Examiner maintained the rejection of the
claims over Austin and Kohn. Id. at 606–619. The Examiner did, however,
remark that “Compound 2.2 would be found allowable based on data
provided in the Declaration.” Id. at 618. For certain other results (e.g.,
comparison of the compounds in group 3 in the Zeun Declaration), it appears
that the Examiner remained unconvinced because some of the data was
based on in vitro testing rather than on living plants. Id.
Applicants amended and narrowed their claims once more, and
provided their final substantive response. Id. at 632. They argued the
ordinarily skilled person, absent hindsight, would not have looked at Austin
for compounds to control fungal infestation of plants. Id. at 635. They
argued that Kohn’s compounds had “an entirely different structure” without
the “same core structure” relative to the compounds of the claims. Id. at
636. And, Applicants again argued that data in the Zeun Declaration
showed unexpected results when the claimed compounds were used on
plants. Id. at 636–637 (“[I]n comparison with compound 2.1, claimed
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compounds 2.2 and 2.3 provide better than expected control against
PLAVIT in grapes and PYTULT in cotton.”); see also id. at 637 (also
highlighting the in vivo and in vitro results for the Group 3 compounds).
On July 12, 2018, the Examiner entered a Notice of Allowability,
without further comment or express reasons explaining the decision to allow
the claims. Id. at 656–660. The ’096 patent issued on November 20, 2018.
III. DISCRETION UNDER 35 U.S.C. § 325(d)
Patent Owner urges us to deny institution under 35 U.S.C. § 325(d)
“because each of [Petitioner’s] four obviousness arguments simply rehashes
references and assertions previously considered by the Examiner during
prosecution of the ’096 patent.” Prelim. Resp. 54–60. According to Patent
Owner, “[a]ll four of the combinations [asserted by Petitioner] rely on the
same primary reference—Austin, that was previously considered by the
Examiner.” Id. at 54–55. And, Patent Owner highlights, the combination of
Austin and Kohn, which Petitioner relies on for purposes of grounds 2, 3,
and 4, “was asserted by the Examiner in five separate office actions before
being overcome by the Applicant.” Id. Insofar as Petitioner “adds a
(different) additional reference” for some grounds, Patent Owner contends
that such references are cumulative to those before the Examiner during
prosecution or otherwise fail to “cure the defects in Austin and Kohn or
provide[] a motivation to combine them.” Id. at 55; see also id. at 58–59
(asserting that the WO 2006/089067 publication cited during prosecution
contains the same disclosures as Baker, which Petitioner cites in Ground 4);
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see, e.g., Ex. 1002, 56,9 102–103 (identifying “compound 2” as a molecule
with “optimal physiochemical properties”), 167 (Table 1, listing minimum
inhibitory concentrations (“MIC”) of compound 2).
Petitioner contends that, “[o]f the four grounds presented herein, three
rely on new combinations of prior art that were not previously presented to
the Examiner.” Pet. 3. According to Petitioner, “[w]hile Austin and Kohn
were previously cited during prosecution, the prosecution history makes
plain that the declaration submitted by the applicants . . . to overcome the
Examiner’s rejection over the combination of Austin and Kohn was
improper.” Pet. 3–4 (asserting the declaration “failed to compare the activity
of the claimed compounds with the closest prior art compounds”); see also
id. at 15–16, 23, 43–44. Hence, Petitioner contends, the challenge to the
claims does not present the same or substantially the same prior art or
arguments that “were previously presented to the PTO.” Id. at 4.10

9 Baker et al., WO 2006/089067 A2 (“Baker ’067”) is included in the file
history submitted here (Ex. 1002), and was cited in an Information
Disclosure Statement and in the International Search Report submitted
during prosecution. Ex. 1002, 1–2, 180–182. In general, we use the
pagination added to the exhibit copies rather than the original pagination.
The exception, however, are exhibits that are US patents where we use the
original numbered-column format or other indicia from the original
document when citing to such exhibits.
10 In the exercise of our discretion here, we conclude it is not necessary to
resolve the argument that Petitioner has advanced an improper definition for
the qualifications of the ordinarily skilled person, and an overly broad claim
construction. Prelim. Resp. 23–26. For purposes of this Decision only, we
will apply Petitioner’s proposed definition for the person of ordinary skill in
the art as well as Petitioner’s proposed claim construction. Pet. 19–21.
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A. Legal Principles
Institution of inter partes review is discretionary. Harmonic Inc. v.
Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that “the
PTO is permitted, but never compelled, to institute an IPR proceeding”).
The Patent Office may, for example, deny institution under 35 U.S.C.
§ 325(d), which provides, in pertinent part, that “[i]n determining whether to
institute or order a proceeding under this chapter . . . the Director may take
into account whether, and reject the petition or request because, the same or
substantially the same prior art or arguments previously were presented to
the Office.”
In evaluating whether the same or substantially the same prior art or
arguments were previously presented to the Office, the Board has identified
several non-exclusive factors for consideration. Becton, Dickinson & Co. v.
B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB
Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“the Becton,
Dickinson factors”). Those factors are as follows:
(a) the similarities and material differences between the asserted
art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art
evaluated during examination;
(c) the extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for
rejection;
(d) the extent of the overlap between the arguments made during
examination and the manner in which Petitioner relies on the
prior art or Patent Owner distinguishes the prior art;
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(e) whether Petitioner has pointed out sufficiently how the
Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented in
the Petition warrant reconsideration of prior art or arguments.
Id.; see also Office Patent Trial Practice Guide Update (“Trial Practice
Guide Update”), referenced at 83 Fed. Reg. 39,989 (Aug. 13, 2018), at 12
(discussing the Becton, Dickinson factors).
As further explained in Advanced Bionics, LLC v. Med-El
Electromedizinishe Gerӓte GMBH, IPR2019-01469, Paper 6 at 10 (Feb. 13,
2020) (“Advanced Bionics”) (precedential), factors (a), (b), and (d) from
Becton, Dickinson relate to whether the art and arguments presented in the
petition are the same or substantially the same as those previously presented
to the Office. Factors (c), (e), and (f) “relate to whether the petitioner has
demonstrated a material error by the Office” in its prior consideration of the
art or arguments. Id.
Only if the same or substantially the same art or arguments were
previously presented to the Office do we then consider whether petitioner
has demonstrated error. Advanced Bionics at 8–10. “If the petitioner fails to
show that the Office erred, the Director may exercise his discretion not to
institute inter partes review.” Id. at 8–9 (“If a condition in the first part of
the framework [i.e., substantially same art or arguments] is satisfied and the
petitioner fails to make a showing of material error, the Director generally
will exercise discretion not to institute inter partes review”). “At bottom,
this [§ 325(d)] framework reflects a commitment to defer to previous Office
evaluations of the evidence of record unless material error is shown.” Id. at
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9. On the question of material error, “[i]f reasonable minds can disagree
regarding the purported treatment of the art or arguments, it cannot be said
that the Office erred in a manner material to patentability.” Id.
B. Becton, Dickinson Factors (a), (b), and (d)
We first determine whether the same or substantially the same art or
arguments were presented previously to the Office. Petitioner raises four
obviousness grounds, all of which rely on Austin as the primary reference.
Pet. 3. Grounds 2, 3, and 4 rely on Austin and Kohn. Grounds 3 and 4 cite
an additional reference with the Austin and Kohn combination—Sibley and
Baker, respectively. Id. And, Ground 1 is based on Austin in view of
Sibley. Id.; see also id. at 30–41.
There is no dispute that Austin and Kohn were presented previously to
the Office during examination of the ’096 patent. Indeed, the Examiner
rejected the then-pending claims five separate times for obviousness over
Austin and Kohn before finally allowing the claims. Prelim. Resp. 2, 54–55;
Pet. 42 (acknowledging that “the Examiner repeatedly rejected the claims of
the application leading to the ’096 patent over the combination of Austin and
Kohn”); see, e.g., Ex. 1002, 575–585 (Final Office Action dated Feb., 21,
2017, in which the claims were “rejected under 35 U.S.C. 103(a) as being
unpatentable over Austin et al. (WO 95/3754) in view of Kohn et al.
(US 3,686,398)”).11 As for Baker and Sibley, as explained below, we find

11 See also Ex. 1002, 473–484 (Aug. 27, 2015 Office Action), 511–521 (Feb.
22, 2016 Office Action), 546–557 (July 29, 2016 Office Action), 606–619
(Sept. 21, 2017 Office Action). The prosecution record further indicates that
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the cited teachings in those references, properly interpreted, are cumulative
to art that was presented to the Office during prosecution. Accordingly, on
this record, we conclude that the “same or substantially the same prior art or
arguments” as asserted by Petitioner here “were previously presented to the
Office.” 35 U.S.C. § 325(d).
1. Austin (Exhibit 1004)
Petitioner relies heavily on Austin to support its challenge to the
unpatentability of claims 1–12. Pet., passim.
Petitioner’s reliance on Austin mirrors the Examiner’s reliance on
Austin during prosecution.12 For example, during prosecution, the Examiner
found that Austin’s oxaborole compounds “are especially effective in
providing anti-fungal activity,” that “Austin teach[es] the elected compound
. . . , compound 66,” and that Austin’s compound 66 “provides antifungal

Austin was raised with the Applicants in at least one Examiner-Initiated
Interview Summary, in which the Examiner remarked that “the claims were
still obvious over the prior art of record, Austin et al.” and that, “while some
of the [Applicants’] remarks were convincing[,] after a closer review of the
data, it was determined that the compounds referenced in the remarks were
tested in vitro, instead of on living plants, as argued.” Id. at 620.
12 Austin relates to use of oxaboroles in industrial applications, “such as for
the protection of plastic materials such as plasticised PVC.” Austin, 1; see
also id. at 3 (“The present invention relates to use of oxaboroles and salts
thereof as industrial biocides”), (“No single industrial biocide is ideal for all
applications”), (“It has now been found that compounds containing an
oxaborole ring are particularly effective against micro-organisms . . .
particularly fungi, especially fungi which cause degradation of plastics
materials”), 8 (“Particularly useful effects have been obtained in plastics
materials and paint films”). Austin does not disclose the use of oxaboroles
to control infestation on plant materials or food crops.
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activity against, Aspergillus niger.” Ex. 1002, 480 (citing Austin’s “Table 9,
compound 66”), 482 (“The data provide[d] by Austin . . . teach that the
compounds are effective against fungi that are known to attack plants, such
as Aspergillus niger.”). Moreover, the Examiner found that “compounds
taught by Austin are the same compounds disclosed in the instant
application.” Id. at 520; see also id. at 556 (finding that, “[w]hile all the
compounds disclosed [in Austin] may not provide protection against fungal
attack, many that fall within the scope of the instant claims including elected
compound [(compound 66)] . . . do provide that protection”).
So too, Petitioner relies heavily on Austin’s compound 66 and the
disclosed activity against fungi. According to Petitioner, “[c]ompound 66 of
Austin is identical to the compound of the challenged claims,” and “Austin
teaches that compound 66 is extremely active in inhibiting growth of fungi,
including plant pathogenic fungi.” Pet. 22; see also id. at 24, 34–37
(Austin’s “Table 9 describes the potent antifungal activity of Example 66
against plant pathogenic fungi including ‘AN [Aspergillus niger]’”)
(brackets in original).
In short, Petitioner’s arguments and citation to relevant teachings in
Austin substantially overlap with the Examiner’s findings during
prosecution. We find that the Examiner thoroughly considered Austin’s
teachings, and that the Petition presents the same or substantially the same
arguments related to Austin that were presented to the Office previously.
2. Kohn (Exhibit 1005)
Kohn was also before the Examiner during prosecution. See, e.g.,
Ex. 1002, 514 (rejecting claims as obvious over Austin and Kohn). And,
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Petitioner turns to Kohn for substantially the same reasons that the Examiner
did when rejecting the claims.
The Examiner found that Austin did not “specifically disclose the
oxaborole is used to control infestation of plants or plant propagation
material” as claimed. Ex. 1002, 550–51. So, the Examiner cited Kohn as
teaching “the use of boroxarophenanthrenes as fungicides,” which are
“applied in fungicidal amounts by conventional methods to fungi or hosts
which are subject to fungal attack, especially vegetative hosts, such as plants
and plant seeds.” Id. (citing Kohn, 5:29–42); see also id. at 579 (“Austin . . .
do not specifically disclose the oxaborole is used to control infestation of
plants . . . [and] [i]t is for this reason that Kohn et al. is added as a secondary
reference.”). Also, according to the Examiner, “Kohn was added to provide
support for treating plants and plant propagation materials” because Kohn
“teaches that compounds with the oxaborole core structure are used to treat
plants and seeds.” Id. at 616 (“One of ordinary skill in the art would have
been motivated to use the teachings of Kohn which teaches compounds with
the same core structure are used to treat plants.”).13

13 In response, Applicants argued that the Examiner was incorrect in
asserting that the oxaborole compounds as in Austin or the claims had the
same core structure as the compounds of Kohn. See, e.g., Ex. 1002, 636
(“The compounds of Kohn are a fused-ring derivative of phenanthrene as
opposed to the benzene derivative of the instant invention.”), 601.
Applicants pointed out that “compounds of Kohn at least require two
aromatic rings, which is not true for those of the present claims” and the
“middle ring of the compounds listed in Kohn are six-membered rings and
not five-membered rings as required in the present claims.” Id. at 601
(showing side-by-side depiction of the compounds of Kohn and the claims).
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Petitioner makes the same points about Kohn here. According to
Petitioner, Kohn teaches “compounds with an oxaborole core structure could
be used as fungicides to treat plants and seeds.” Pet. 26–27; see also id. at
42–43 (block quoting, with apparent approval, the Examiner’s findings
about Kohn in combination with Austin). Like the Examiner, Petitioner
cites Kohn’s teaching of the use of “boroxarophenanthrenes” as fungicides,
and the application of such fungicides in effective amounts on vegetative
hosts. Pet. 46 (claim chart, citing Kohn’s teachings). Indeed, Petitioner
expressly invokes the reasons offered by the Examiner during prosecution as
motivating the combination of Austin and Kohn. Pet. 44 (“For all the
reasons discussed above and in the prosecution history, a POSITA would
have been motivated to combine the teachings of Austin and Kohn with a
reasonable expectation of success.”).14

14 In fact, the only reasons that are expressly offered in the Petition for
combining Austin and Kohn come from the Examiner. Pet. 42–49
(Ground 2). Petitioner’s assertion that the declaration submitted during
prosecution was “misleading” is not a reason for combining Austin and
Kohn. Pet. 43–44. Nor do vague citations to testimony of Petitioner’s
declarants, without any adequate explanation in the Petition itself, suffice to
demonstrate persuasive reasons for combining the art. Id.; see also id. at 23
(asserting vaguely in a section titled “Overview of Grounds” that “[a]
POSITA would also be motivated to combine Austin and Kohn to arrive at
the claimed invention”) (citing Ex. 1003 ¶ 82; Ex. 1018 ¶¶ 63–65, 82–85).
Even the cited testimony here is unpersuasive. For example, Dr. Hall’s cited
testimony merely repeats that a skilled person “would have been motivated
to combine Austin and Kohn with a reasonable expectation of success.”
Ex. 1003 ¶ 82; Ex. 1018 ¶¶ 63–65 (conclusory opinion about an alleged
“structure similar to that of a benzoxaborole compound” in Kohn), ¶¶ 82–85
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3. Baker (Exhibit 1008)
Baker relates to the use of oxaborole compounds for the treatment of
onychomycosis, in lay terms, fungal infections of toe and fingernails of
humans and other animals. Ex. 1008, Abstr., 5:17–24.15 Petitioner relies
primarily on Baker’s teaching of “compound 1” and “compound 2” as
having “optimal physiochemical properties.” Pet. 60, 64; see also id. at 27–
28. As Petitioner notes, Baker’s compound 1 is a 5-F benzoxaborole and
Baker’s compound 2 is a 5-Cl benzoxaborole. Id. at 60; see also id. at 27
(“Compound 1 is nearly identical to the compound encompassed by the
’096 patent where R is a hydrogen atom. The only difference is the
substitution of chlorine for fluorine at R7.”). As Petitioner elsewhere notes,
the compound with the 5-fluoro substitution (compound 1) is otherwise
referred to as “AN2690,” and the compound with the 5-chloro substitution
(compound 2) is otherwise known as “AN2718.” Pet. 6–7; Ex. 1013, 3
(Fig. 2, showing “[s]tructure of AN2690, currently in clinical trials for

(conclusory opinion about “similar” structures motivating “routine
optimization”).
15 Baker discloses that “the present compounds have physiochemical
properties that facilitate penetration into the nail plate.” Ex. 1008, Abstr.;
see also id. at 31:59–32:25. According to Baker, “[o]nychomycosis is a
disease of the nail caused by yeast, dermatophytes, or other molds,” and
“[d]ermatophytes are the most frequent cause of nail plate invasion.” Id. at
28:17–27 (identifying Trichophyton rubrum as the most frequently isolated
dermatophyte followed by T. mentagrophytes). Baker also discloses that the
described compounds may have topical and cosmetic antifungal efficacy
against infections of the skin, hair, claws, or hooves of animals. Id. at
Abstr., 9:59–67, 11:60–12:24, 28:5–15.
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onychomycosis); Exs. 1015 and 1016 (disclosing AN2718 in development
for the treatment of tinea pedis (athlete’s foot) and nail infection).16
The disclosures of Baker relied upon by Petitioner were previously
presented to the Office. Although the same Baker reference on which
Petitioner now relies was not cited to the Examiner, as Patent Owner points
out, two related Baker publications were submitted by the Applicants during
prosecution. Prelim. Resp. 55 (“That Baker reference is cumulative to two
different references having the same author/inventor and claiming priority to
the same provisional application.”), 59 (“Notably, the WO 2006/089067
[Baker] publication cited during prosecution contained the same disclosures
of the Baker [’621] patent cited by Petitioner.”). Patent Owner shows that
the same disclosures that Petitioner cites from Baker were in the related
Baker references before the Examiner. As Patent Owner explains,
“paragraph 135 of WO 2006/089067 includes the same table disclosing
compounds 1 and 2, as the Baker reference relied on in Ground 4 by
Petitioner,” and WO 2006/089067 “contains the same listing of MIC
concentrations in FIGS 1A-1C that Petitioner cites.” Prelim. Resp. 59.
Ex. 1002, 56, 102–103, 166–169.
The related Baker references were not cited by the Examiner in a
rejection of the claims during prosecution. But, a rejection applying a
reference that is later relied upon by a petitioner is not a prerequisite to a
finding that such reference was already presented to the Office under

16 As Petitioner explains, AN2718 is a compound encompassed by formula
(Ic) of claim 1 of the ’096 patent where R is a hydrogen atom, and shares the
same structure as Austin’s Compound 66. Pet. 22–25, 35–36.
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§ 325(d). Advanced Bionics 7–8 (“Previously presented art [under § 325(d)]
includes art made of record by the Examiner, and art provided to the Office
by an applicant, such as on an Information Disclosure Statement (IDS), in
the prosecution history of the challenged patent.”) (emphasis added). The
related Baker publications were cited among a relatively short list of
references (along with Austin and Kohn) in the Information Disclosure
Statement as well as the International Search Report submitted early in the
prosecution of the ’096 patent. Ex. 1002, 178–184; see also id. at 1–4
(Information Disclosure Statement dated Mar. 26, 2014 (identifying the two
Baker references, Kohn, and Austin)), 479 (portion of Examiner’s
obviousness rejection over Austin and Kohn, noting that “Austin et al. and
Kohn el al. are cited by Applicant in the IDS dated 3/26/2014”); Prelim.
Resp. 59 (“Only 7 references in total were cited against the ’096 patent
during prosecution, including the two prior Baker applications.”). So, we
find that the related Baker references, with the same allegedly relevant
disclosures cited by Petitioner here, were presented during prosecution.
4. Sibley (Exhibit 1006)
Sibley was not of record during prosecution. As explained below,
however, we find Sibley is cumulative to art that was before the Examiner.
Whether Sibley is cumulative hinges on whether we agree with
Petitioner’s or Patent Owner’s opposing interpretations of the reference.
According to Petitioner, Sibley “discloses that AN2718—the very same
compound claimed in the ’096 patent—had utility as an agricultural
fungicide.” Pet. 8. More specifically, Petitioner contends that Sibley
describes a method of controlling fungal disease in plants “by applying two
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antifungal agents: a pyrrole derivative and an agricultural fungicide such as
AN2718, which [is] the compound of claim 1 of the ’096 patent, where R is
a hydrogen atom.” Pet. 25–26 (citing Ex. 1006, 69, 227 (claims 20-21)); see
also id. at 30 (“Both references [Austin and Sibley] teach that the 5-chloro
benzoxaborole compound is efficacious against plant pathogenic fungi.”),
35–36 (citing, e.g., Sibley’s claim 12 as reciting “A combination according
to claim 10 or 11 wherein the second antifungal agent is selected from the
group . . . [including] AN2718.”) (Petitioner’s emphasis and bracketing).
Patent Owner counters that “none of the cited passages of Sibley discloses
the use of AN2718 in agriculture.” Prelim. Resp. 38. Instead, Patent Owner
contends, Sibley mentions AN2718 only twice and, even then, only as a
secondary antifungal agent for pharmaceutical embodiments—not the
separate agricultural embodiments. Id. at 38–39.
We find Patent Owner has the more reasonable interpretation of
Sibley. Petitioner’s interpretation, in contrast, strains Sibley’s actual
teachings and is rooted in hindsight.
Sibley relates in particular to the use of “pyrrole compounds” as
antifungal agents. Ex. 1006, 1, 2. These pyrrole compounds are not the
claimed compounds, nor do they appear to be related or structurally similar
to the claimed compounds or the antifungal compounds highlighted by
Petitioner in the other asserted art. Id. at 3 (showing formula (I)). Sibley
teaches that the pyrrole “compounds and their pharmaceutically acceptable
salts are useful in prevention or treatment of a fungal disease” and also that
pyrrole compounds “and agriculturally acceptable salts thereof, may also be
used as agricultural fungicides.” Id. at 1.
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Sibley is 230 pages long. Ex. 1006, passim. Compound AN2718 is
mentioned only twice, and only briefly as a possible second antifungal agent
for combination with a primary pyrrole compound. Id. at 69, 225. In its
more complete context, AN2718 appears in the following passage of Sibley:
In one embodiment, the present invention provides combinations
of the pyrrole derivative of formula (I), (IA) or (IB) or a
pharmaceutically acceptable salt thereof, with a further
antifungal agent. Thus, the pyrrole derivative of formula (I),
(IA), (IB) or pharmaceutically acceptable salt thereof (also
referred to herein as the first antifungal agent) is present in the
combinations, compositions and products of the invention with a
second antifungal agent. The second antifungal agent used in the
invention can be any suitable antifungal agent that the skilled
person would judge to be useful in the circumstances.
Particularly suitable classes of antifungal agents include azoles,
polyenes, purine nucleotide inhibitors, pyrimidine nucleotide
inhibitors, mannan inhibitors, protein elongation factor
inhibitors, chitin synthase inhibitors, Beta-glucan synthase
inhibitors, echinocandins, allylamines, anti-HSP90 antibodies,
bactericidal/permeability inducing protein products and
polyoxins. Other suitable antifungal agents which do not fall
within the classes above include the compounds AN2690,
AN2718 and icofungipen.

Id. at 68 (emphasis added).
From this, we find that Sibley is, at best, suggesting a potential use in
pharmaceutical embodiments. For example, the cited passage refers to use
of “pharmaceutically acceptable” salts and, in the additional surrounding
pages and context, Sibley is referring to pharmaceutical applications for
treating a human or other animal “subject.” See generally, id. at 69–76; see
also id. at 74 (“The invention also provides for the treatment of
dermatological infections.”), 75 (“Examples of systemic infections which
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might be prevented or treated using compounds of the invention include:
systemic candidiasis; pulmonary aspergillosis, e.g. in immunosuppressed
patients such as bone marrow recipients or AIDS patients.”), 75 (“Examples
of superficial infections, which can be prevented or treated using compounds
of the invention, include: ring worm; athlete’s foot; [and] tinea unguium
(nail infection,” among other conditions). Even in that context, Sibley
provides no further detail on AN2718, much less identifies it as an
advantageous or preferred “second antifungal agent.” Id. at 69 (“Particularly
preferred second antifungal agents are caspofungin, micafungin,
amphotericin B, voriconazole, posaconaxole, fluconazole, and
itriconazole.”).
Sibley later transitions to describing agricultural embodiments. Id. at
77 (“The present invention also provides a method of controlling fungal
disease of a plant, which comprises applying to the locus of the plant a
pyrrole derivative,” such as shown in formula (I), or “an agriculturally
acceptable salt thereof.”); see also id. at 78–80. Although Sibley discloses
that the agricultural embodiments may optionally include a second
antifungal agent, notably absent is any mention of AN2718, much less any
teaching or suggestion that AN2718 would be safe and effective for
controlling fungal infection on plants. Id. at 78.
The second mention of AN2718 in Sibley appears in one of Sibley’s
claims, where it is again identified in another long list of potential second
antifungal agents. Id. at 226 (claim 12). Here too, however, this disclosure
relates to pharmaceutical embodiments given the dependency on claims 10
and 11, which expressly require a “pharmaceutical combination” along with
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a “pharmaceutically acceptable salt.” Id. (claims 10 and 11). The
agricultural embodiments are claimed separately with no corresponding
disclosure of AN2718 or incorporation of the claim in which AN2718 is
mentioned. See, e.g., id. at 227 (claims 20–21).
Patent Owner’s interpretation of Sibley as, at most, suggesting
AN2718 for pharmaceutical uses is also more consistent with the state of the
art at that time. As explained above, the related 5-F and 5-Cl benzoxaborole
derivatives (AN2690 and AN2718) were known to have potential utility as
antifungals for pharmaceutical use as described, for example, in Baker.
Ex. 1008, Abstr., 32:6–25 (showing compound 1 (i.e., AN2690) and
compound 2 (i.e., AN2718) as having optimal properties for treating nail
fungus); see also Ex. 1013, 3 (describing, in 2006, clinical trials of AN2690
against nail infections); Exs. 1015 and 1016 (disclosing, in 2008 and 2009,
AN2718 for the treatment of nail infections). Petitioner’s contention that
Sibley teaches that AN2718 had a known utility as an agricultural fungicide
overstates Sibley’s very limited disclosure on AN2718. See, e.g., Pet. 8, 30.
Shorn of Petitioner’s hindsight-driven and unpersuasive interpretation
of Sibley, we conclude that Sibley is cumulative to other prior art that was
presented during prosecution. For example, Sibley is cumulative to the
Baker references cited to the Examiner that, as already discussed, described
5-F and 5-Cl benzoxaborole derivatives (i.e., AN2690 and AN2718) as
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potent compounds for topical treatment of fungal infections of the nails.
Prelim. Resp. 59. Ex. 1002, 56, 102–103, 166–169.17
For the reasons discussed above, we find that Austin and Kohn were
already presented to the Office as memorialized in the numerous rejections
of the claims for obviousness over those references. Baker includes the
same relevant disclosures as two other Baker references that were of record
during prosecution. And, we find that Sibley is less relevant than, and
cumulative to, references that were presented during prosecution. In sum,
Austin, Kohn, Baker, and Sibley reflect the same or substantially the same
prior art as was already presented to the Office.
C. Becton, Dickinson Factors (c), (e), and (f)
Because we find that the “same or substantially the same prior art or
arguments previously were presented to the Office,” we turn to whether
Petitioner has shown that the Office erred in evaluating the art or arguments.
Becton, Dickinson, Paper 8 at 24; Advanced Bionics at 8–10.
At the outset, we note that Petitioner does not expressly assert any
“error” by the Office. Pet. 3–4. But, even attempting to distill Petitioner’s
criticisms with the’096 patent’s prosecution and the putative new evidence

17 Although neither party addresses the “Kumar” and “Mao” references that
were also before the Examiner during prosecution, the title of the Mao
reference alone suggests it is more detailed than Sibley (properly
interpreted) to the oxaboroles that are relevant to the claimed subject matter.
See Ex. 1002, 182 (citing a publication from “Mao” titled “AN2690, a
topical antifungal agent in development for the treatment of onychomycosis
represents a new class and has a novel mechanism of action”); see also
Ex. 1001, (56) (References Cited).
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here, we do not find that a material error has been shown on this record that
warrants the Office reconsidering the patentability of the ’096 patent’s
claims over substantially the same prior art.
1. The “Improper” Declaration
Petitioner argues that the Zeun Declaration submitted during
prosecution to overcome the Examiner’s rejection was “improper.” Pet. 3;
see Ex. 1002, 530–536 (Declaration of Ronald Zeun, Ph.D., dated May 17,
2016). According to the Petition, the declaration “failed to compare the
activity of the claimed compounds with the closest prior art compounds.”
Pet. 3−4; see also id. at 43–44 (“The declaration, however, provided
misleading results by not comparing the pending claims to the closest prior
art compounds.”).
This vague critique of the declaration fails to persuasively
demonstrate material error during prosecution. As Patent Owner points out,
the Petition never clearly identifies what other compounds should have been
used, much less persuasively explains why such other compounds would
have been more appropriate for comparison by Dr. Zeun. Prelim. Resp. 3,
57. Although true that some of Austin’s dozens of example compounds fall
within the scope of claim 1’s formula (Ic) and are described as having
antifungal activity, other compounds in Austin that are not embraced by the
claims have the same and even broader activity and efficacy. See, e.g.,
Ex. 1004, 39 (Table 9, Example 60, which has the same activity against
various fungi as well as activity against several bacteria, compared to
Example 66 (i.e., Austin’s compound 66 discussed above), which is inactive
against bacteria); see also id. at 40–41 (Table 10, Example 80, which shows
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high activity against fungi and bacteria but is not within the claimed scope);
Prelim. Resp. 36 (discussing Austin’s compound 60 and 80).
In addition to the above, Petitioner’s criticism of the Zeun Declaration
overlooks other reasons for which the declaration was offered, which was
not simply as evidence of unexpected results (where comparison to the
closest prior art may be required). As Dr. Zeun explains, he “selected
compounds for testing that are disclosed in the cited document,
WO95/33754 [(Austin)], both those that are within the present claims and
those that are not.” Ex. 1002, 530. After reporting results of his antifungal
assays, Dr. Zeun concludes that “data illustrates that certain compounds of
WO9533754 are not nearly as active on living plants or plant propagation
material as those in the present application,” and that an ordinarily skilled
person “would not have known which compounds were more or less active
on such [plant] materials based on the information provided from
WO9533754.” Id. at 536.
From this, Applicants argued—repeatedly—that there was no
“reasonable expectation of success” based on the cited evidence in using
particular compounds in agriculture on living plants as claimed. Id. at 543–
544 (“Austin does nothing to show which of the compounds in the
disclosure would have any effect against fungal strains on living materials.
. . . Accordingly, one would not have any reasonable expectation of success
when pursuing the present claims.”), 569–570; see also id. at 602
(“Examiner misses the aim of the declaration that shows the variance in the
compounds disclosed in Austin and how little protection they may have over
other ones that are part of the claimed methods as shown between
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Compound 3.1 v. Compound 3.3., where proper agricultural-level efficacy is
present even in low rates.”). That the Examiner may also have credited
Applicants’ arguments and evidence on such points does not convince us of
any material error on this record.18
Petitioner also contends the Applicants “distorted the data presented
in Austin and misled the Examiner by asserting that not all the compounds
of the pending claims fell within the scope of Austin.” Pet. 23; Ex. 1003
¶ 34 (opining that “the Zeun Declaration is misleading”), 47–48 (opining
that Austin discloses the compounds in the Zeun Declaration).
We are not persuaded that the Examiner was misled by the declaration
or Applicants’ alleged assertions. The Zeun Declaration explains plainly
that the compounds selected for testing are from Austin (but only some of
the tested compounds were embraced by the claims). Ex. 1002, 530 (“I have
selected compounds for testing that are disclosed in the cited document,
WO95/33754, both those that are within the present claims and those that are
not.”). Ex. 1002, 530. Even if Applicants said something different during
prosecution,19 there is insufficient evidence cited here that such an assertion
was material to the Examiner’s allowance of the claims, or that the Examiner
did not understand the art or the declaration and testing. Prelim. Resp. 36–
37 (noting that “Applicants did not dispute that Austin disclosed compounds

18 The Examiner never gave express reasons for allowance, and thus all of
the reasons that may have ultimately convinced the Examiner to allow the
claims remain unclear. Ex. 1002, 658–660.
19 Petitioner provides no specific citation to where the allegedly misleading
assertion was made by the Applicants.
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having structures within the scope of the claims of the ’096 patent”). To the
contrary, the Examiner remarked that many of Austin’s compounds fell
within the scope of the claims and provided antifungal activity. Ex. 1002,
556. And, in extended back-and-forth with the Applicants, the Examiner
continued to push back on the sufficiency of the testing data to support the
patentability of the claims, which reveals detailed consideration of the
evidence. See, e.g., Ex. 1002, 554 (pointing out that “these three compounds
[1.2, 2.2, and 2.3 in the declaration] are not commensurate in scope with the
oxaborole compounds of the general formula (Ic), as claimed”), 618
(pointing out that some of the relied-upon results were based on in vitro
testing rather than living plants).
Petitioner also contends that Applicants presented data on “irrelevant
Austin compounds.” Pet. 23. This assertion is wanting for an explanation in
the Petition itself. Although the Petition does not make this clear, we
assume Petitioner is referring to compounds having an alleged “bulky”
substituent as discussed in Dr. Hall’s declaration. Ex. 1003 ¶¶ 66–71.
According to Dr. Hall, the results in the Zeun Declaration are “hardly
surprising” because the less potent compounds have “a bulky, hydrophobic
phenyl substituent” that may negatively impact hydrolysis to the 5-Cl
benzoxaborole compound. Id. ¶ 67. Dr. Hall provides no documented
support for his assertion that compounds including this “bulky” group would
be expected to inhibit hydrolysis and have lower antifungal activity. Plus, as
Patent Owner notes, other Austin compounds that have bulky substituents,
such as Compound 80, are described as being highly active. Ex. 1004, 40–
41; Prelim. Resp. 35–36 (“[C]ompound 80 of Austin includes an even
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bulkier multi-ring structure . . . but was still shown to have the same lowest
measured MIC (5) against all tested fungal strains as Austin’s compound
66.”).
In sum, we are not persuaded the Zeun Declaration, or the Examiner’s
reliance on it, was “improper.” To be clear, we are not saying the Zeun
Declaration and Applicants’ arguments are immune from criticism. Nor are
we necessarily suggesting that, were we to play the role of examiner and
consider the prosecution record anew, that we would have reached the same
conclusions without requiring more from the Applicants. But the question
here is different and centers on whether error by the Office has been shown.
On this record, the answer to that question is “no.” Insofar as the Examiner
accepted Applicants’ arguments and declaration, we are unpersuaded that
such acceptance rises to the level of a clear and material error about which
reasonable minds could not disagree. Advanced Bionics at 9.
1. “New Combinations” of Prior Art
Petitioner argues that some of its grounds rely on “new combinations
of prior art,” such as Austin combined with Sibley (Ground 1), and that
Baker “was never relied on by the Examiner for a rejection.” Pet. 3–4.
Becton, Dickinson factor (c) includes consideration of whether the asserted
prior art was cited in a rejection, and factor (f) asks whether new evidence
that was not before the Examiner justifies the Office reconsidering the
patentability of the claims. Becton, Dickinson at 17–18. Neither of these
factors weighs against discretionary denial.
As explained above, we find that Petitioner misreads Sibley’s
teachings. Because Sibley does not, contrary to Petitioner’s assertions,
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describe use of AN2718 for agricultural applications, the fact that Sibley
itself was not before the Examiner does not favor institution. Inasmuch as
Sibley provides the briefest of suggestions that AN2718 might be used in a
pharmaceutical context, it is cumulative to Baker as discussed.
Baker was not before the Examiner, but the two related Baker
publications were presented to the Office during prosecution. Neither of
those Baker publications was, however, cited in a rejection of the claims. As
the claims of the ’096 patent relate to use of certain compounds on plants
and seeds, we are not surprised. Baker (and the related Baker publications)
describes a use of benzoxaborole compounds for the topical treatment of nail
fungus—Baker is unrelated to use of the compounds on plants. Ex. 1008,
Abstr., 31:59–32:25. We cannot, therefore, say that it was unreasonable or a
material error for the Examiner to have not applied the Baker references in a
rejection, alone or along with Austin and Kohn.
Also, Patent Owner persuades us that the “optimal physiochemical
properties” described in Baker relate to the ability of the antifungal
compounds to better penetrate the nail plate. Prelim. Resp. 50–51.
Petitioner provides no persuasive evidence to show that the ordinarily skilled
person would consider those properties germane to use of the compounds on
plants or seeds. Id. at 51 (“It is not explained, for example, whether these
properties would make the compounds more effective, less effective, or
whether they would even be relevant for agricultural purposes.”).20

20 Petitioner also cites Coalition for Affordable Drugs X LLC v. Anacor
Pharmaceuticals, IPR2015-01776, Paper 70 (PTAB Feb. 23, 2017). See,
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Petitioner also contends that Applicants’ argument during prosecution
about not using industrial fungicides on living organisms and plants, in
particular, was “meritless.” Pet. 17. Petitioner’s assertion does not
demonstrate material error by the Office. Quite the opposite, the Examiner
tacitly rejected that “meritless” argument multiple times in advancing the
combination of Austin’s industrial fungicides with Kohn’s agricultural
application techniques. Petitioner’s request that we revisit the same issue
and reach a conclusion favorable to Petitioner is not new argument or
evidence that warrants reconsideration of the claims over substantially the
same prior art. Nor do Petitioner’s assertions about the alleged obviousness
of broadly using benzoxaboroles on “living organism[s]” based on Baker—
as if what is appropriate for antifungal treatment of an animal’s nails would
be applicable to plants—convince us otherwise. See, e.g., Pet. 59–61.
Plants and animals plainly encompass a vast number of very different

e.g., Pet. 28–29. Petitioner’s reliance on that decision is misplaced. First,
that decision does not impact whether it is appropriate to deny the Petition
on a discretionary basis here on the well-developed prosecution record.
Second, that decision does not present any inconsistency with the present
analysis. Even considering aspects of the merits of Petitioner’s challenge,
the issue here is not whether Austin is “non-analogous” art as was argued in
Anacor. Prelim. Resp. 52; Anacor, Paper 70 at 12–14. The issue is whether,
based on the record presented by Petitioner, there is a sufficient reason for
the skilled artisan to have used Austin’s industrial fungicides in agriculture.
Those reasons are wanting for reasons explained. Moreover, in Anacor, the
Board cited specific reasons in the evidence for choosing Austin’s particular
compounds due, for example, to their low molecular weight and the
advantage of those smaller compounds to penetrate the nail plate. See, e.g.,
Anacor, Paper 70 at 16–17.
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organisms. Petitioner simply fails to make a persuasive evidentiary link
between Baker’s use of benzoxaboroles for treating nail infections and use
of the compounds on plants as claimed. Thus, we find that there is
insufficient additional facts or evidence on this record that justify
reconsidering the patentability of the ’096 patent’s claims.
D. Weighing the Factors
Weighing the above factors, we conclude on the record presented that
the circumstances of this case favor discretionary denial based on § 325(d).
IV. CONCLUSION
Upon consideration of the Petition and the Preliminary Response, and
the evidence presented here, we exercise discretion to deny institution of a
trial under 35 U.S.C. § 325(d).
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and we do not institute inter
partes review of any claim of the ’096 patent based on the grounds asserted
in this Petition.

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FOR PETITIONER:

Chen Chen
Lauren Krickl
COOLEY LLP
cchen@cooley.com
lkrickl@cooley.com

FOR PATENT OWNER:
James Cueva
james.cueva@syngenta.com

Toni-Junell Herbert
Michael E. Anderson
BAKERHOSTETLER LLP
therbert@bakerlaw.com
meanderson@bakerlaw.com

SDC