William H. Hendrix et al.

Patent Trials and Appeals Board

Sep 17, 2019

13861946 - (D) (P.T.A.B. Sep. 17, 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.
13/861,946 04/12/2013 William H. Hendrix III 10958.1US (70584-US-NP) 3570
80834 7590 09/17/2019
Magleby Cataxinos & Greenwood/Dow AgroSciences LLC
170 S. Main Street
Suite 1100
Salt Lake City, UT 84101
EXAMINER
IVANOVA, SVETLANA M
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
ptomail@mcgiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WILLIAM H. HENDRIX III and GARY TURNBULL
__________

Appeal 2018-005705
Application 13/861,946
Technology Center 1600
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
DAVID COTTA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
method of protecting a Brassica plant against attack by flea beetle insects by
applying a sulfoximine insecticide. The Examiner rejected the claims as
obvious. 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 (App. Br. 2).
2 We have considered the Specification of Apr. 12, 2013 (“Spec.”); Final
Office Action of July 7, 2017 (“Final Act.”); Appeal Brief of Jan. 8, 2018
(“App. Br.”); Examiner’s Answer of Mar. 12, 2018 (“Ans.”); and Reply
Brief of May 14, 2018 (“Reply Br.”).
Appeal 2018-005705
Application 13/861,946

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Statement of the Case
Background
“Flea beetles are a persistent and severe pest that feed a number of
commercial crops, including canola (Brassicus napus). . . . Currently over
90% of the Canadian canola market is treated with a seed treatment to
control flea beetles” (Spec. ¶ 3). “Disadvantageously, insects can rapidly
develop resistances to insecticides, including insecticides currently utilized
in seed treatments to control flea beetles” (id. ¶ 4). “It would, therefore, be
desirable to able to use other insecticides as seed treatments to control
insects, such as flea beetles” (id. ¶ 5).
The Claims
Claims 1, 2, 7–12, 17, and 19–23 are on appeal. Claim 19 is
representative and reads as follows:
19. A method of protecting a canola seed and canola plant
parts against attack by flea beetle, the method comprising:
contacting a canola seed with an insecticide consisting
essentially of sulfoxaflor to substantially protect the canola seed
and other canola plant parts developing therefrom from damage
effectuated by at least one of the following flea beetles: Altica
ambiens (alder flea beetle), Altica canadensis (prairie flea
beetle), Altica chalybaea (grape flea beetle), Altica prasina
(poplar flea beetle), Altica rosae (rose flea beetle), Altica Sylvia
(blueberry flea beetle), Altica ulmi (elm flea beetle),
Chaetocnema pulicaria (corn flea beetle), Chaetocnema
conofinis (sweet potato flea beetle), Epitrix cucumeris (potato
flea beetle), Systena blanda (palestripped flea beetle), Systena
frontalis (redheaded flea beetle), Psylliodes chrysocephala
(cabbage stem flea beetles), or Psylliodes punctulata (hop flea
beetles).

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Application 13/861,946

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The Rejection
The Examiner rejected claims 1, 2, 7–12, 17, and 19–23 under
35 U.S.C. § 103(a) as obvious over Matsuzaki,3 Burkness,4 Loso,5 and
Dosdall6 (Final Act. 8–14).
The Examiner finds Matsuzaki teaches “controlling insect pests . . .
with sulfoxaflor” including rapeseed (canola) by seed application (Final Act.
9). The Examiner finds that Matsuzaki teaches pests that can be controlled
include “leaf beetles of coleoptera” as well as a detailed list of particular
beetles (id. at 10). The Examiner finds that Loso also teaches “controlling
insects with these insecticidal sulfoximines” including “numerous examples
of leaf beetles of family Chrysomelidae” (id. at 11).
The Examiner finds that Burkness teaches “flea beetles are a type of
leaf beetle in the family Chrysomelidae, and encompass genera and species,
such as encompassed by Applicant’s claims, e.g. Epitrix cucumeris and
Systena blanda, as well as genera and species disclosed in . . . disclosed in
Matsuzaki ([0017]), e.g., Phyllotreta cruciferae” (Final Act. 12). The
Examiner finds that “Dosdall discloses pesticide seed treatment of canola
(Brassica napus L. and Brassica rapa L.) for treatment of flea beetle
damage” (id.).
The Examiner finds it obvious to use

3 Matsuzaki, WO 2011/135831 A1, published Nov. 3, 2011.
4 Burkness et al., Flea Beetles in Home Gardens, http://www.extension.
umn.edu/garden/insects/find/flea-beetles/, 1–3 (2007).
5 Loso et al., US 2007/0203191 A1, published Aug. 30, 2007.
6 Dosdall et al., Managing Flea Beetles (Phyllotreta spp.) (Coleoptera:
Chrysomelidae) in Canola with Seeding Date, Plant Density, and Seed
Treatment, 97 AGRONOMY J. 1570–8 (2005) (Abstract only).
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the insecticides of Matsuzaki, disclosed to be useful for
controlling various leaf beetles of order Coleoptera, in order to
control other leaf beetles of order Coleoptera. Motivation to do
so is in the art as a whole, such as Burkness, which discloses
that numerous insecticides have been developed for treating leaf
beetles in general, and not just specific genera of leaf beetles.
Motivation to do so i[s] also explicitly found in Loso, which
discloses Applicant’s claimed sulfoximine insecticides alone
for inhibiting numerous leaf beetles of order Coleoptera.
(Final Act. 6–7).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Matsuzaki,
Burkness, Loso, and Dosdall render the claimed sulfoximine insecticide
treatment to protect Brassica plants from specific flea beetles obvious?
Findings of Fact
1. Matsuzaki teaches “a composition comprising a carboxamide
compound represented by following formula (I) and sulfoxaflor has an
excellent pesticidal effect” (Matsuzaki ¶ 5).
2. Matsuzaki teaches:
Examples of insect pest which can be controlled by the
‘composition’ include . . . cucurbit leaf beetle (Aulacophora
femoralis), Phyllotreta striolata, rice leaf beetle (Oulema
oryzae) . . . Colorado potato beetle (Letinotarsa decemlineata),
beetle of family Elateridae (Agriotes spp.), tobacco beetle
(Lasioderma serricome), Anthrenus (Anthrenus verbasci), rust-
red flour beetle (Tribolium castaneum), power post beetle
(Lyctus bnmneus), white-spotted longicom beetle
(Anoplophora malasiaca), common pine shoot beetle (Tomicus
piniperda), and the like.
(Matsuzaki ¶¶ 16–17).
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3. Matsuzaki teaches “[e]xamples of the plant diseases which can
be controlled by the ‘composition’ include “Brassicaceous vegetable
diseases” and “rapeseed diseases” (Matsuzaki ¶¶ 18–20).
4. Matsuzaki teaches “the application can be carried out by
spraying a suspension of a ‘composition’ to the surface of seeds” (Matsuzaki
¶ 29).
5. Matsuzaki teaches in example 6 that a composition comprising
sulfoxaflor was applied to soybean seeds and then contaminated by
Rhizoctonia solani, and the composition resulted in 78.9 % efficacy in
treating infected plants (Matsuzaki ¶¶ 37–40).
6. Loso teaches “N-substituted (6-haloalkylpyridin-3-yl)alkyl
sulfoximines and their use in controlling insects and certain other
invertebrates” (Loso ¶ 2).
7. Loso teaches insects “can be controlled by applying the active
compounds to the seed of the plant before planting” (Loso ¶ 134).
8. Loso teaches “insects or other pests which can be inhibited
include, but are not limited to . . . Coleoptera [beetles]” (Loso ¶¶ 136, 138).
9. Burkness teaches “[f]lea beetles are common pests on many
vegetable crops . . . common flea beetles in Minnesota gardens include . . .
potato flea beetle, Epitrix cucumeris” (Burkness 1, col. 1).
10. Burkness teaches “[t]here are many insecticides labeled for
treating flea beetles” (Burkness 3, col. 1).
11. Dosdall teaches “Flea beetle damage was greater on plants of B
rapa than B napus, on spring-seeded canola than on plants seeded in fall,
and on plants that developed from seed treated with Vitavax Single
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(containing carboxin) than on plants treated with Vitavax rs (containing
carboxin, thiram, and lindane)” (Dosdall, abstract).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does not more than yield predictable results”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner’s findings of fact and conclusions of law (see
Final Act. 8–14; FF 1–11) and agree that Matsuzaki, Loso, Burkness, and
Dosdall render the claims obvious. We address Appellant’s arguments
below.
Appellant contends
Matsuzaki provides an extensive list of possible insects (about
120 genera of insects) that may be controlled by its composition
(id. at ¶ [0021], yet Matsuzaki does not provide even a single
example for the control of insect. In fact, Matsuzaki provides
only one example, and it is the protection of soybean (not a
Brassica plant) against disease caused by Rhizoctonia solani.
Moreover, even with extensive list of possible insects,
Matsuzaki does not include the specific flea beetles recited in
claim 1.
(App. Br. 6). Appellant similarly argues that “the Coleoptera insects listed
in Loso are not even in the same family as the flea beetle insects recited in
claim 1. Furthermore, Loso discloses only one working example for seed
treatment” (App. Br. 6).
We find this argument unpersuasive for several reasons. Matsuzaki
teaches applying the claimed insecticide (FF 1) to seeds (FF 4) to protect the
claimed crops (FF 3) against a wide variety of different beetles (FF 2),
lacking only a teaching of the specific beetles recited in the claims.
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Matsuzaki, however, is not the sole reference on which the Examiner relies
and “[n]on-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).
When Matsuzaki’s disclosure is combined with Loso’s teaching to
control coleopteran or beetles generally with sulfoximine insecticides (FF 6–
8), Burkness’ teaching that the potato flea beetle (Epitrix cucumeris) is a
known vegetable pest (FF 9), and Dosdall’s teaching that flea beetles are
generally known to infest the desired canola crop (FF 11), we agree with the
Examiner that the ordinary artisan would have had reason to use Matsuzaki’s
beetle control insecticide on canola seeds to protect against other known
beetle species that infest plants.
In addition, we are not persuaded by Appellant’s argument that the art
lacked an example because there is no requirement for working examples to
render the claims obvious and Matsuzaki, Loso, Burkness, and Dosdall
suggest all of the claim limitations. See In re Mills, 470 F.2d 649, 651
(CCPA 1972) (“[A] reference is not limited to the disclosure of specific
working examples.”) Instead, “when the question is whether a patent
claiming the combination of elements of prior art is obvious,” the answer
depends on “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417. Here, the claims are drawn to the predictable use of a known
insecticide applied in known ways to seeds of known crop plants against
known pests to predictably prevent insect damage to the crop plants (FF 1–
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11).
Appellant contends that “[a]s to the fact that the composition of
Matsuzaki must include both sulfoxaflor and a carboxamide compound, the
Examiner relies on Loso for teaching the use of sulfoxaflor as a sole
insecticide for controlling insects” (App. Br. 6).
To the extent that Appellant is arguing that the claims exclude the
composition of Matsuzaki because of the “consisting essentially of”
language, we note that the Specification does not define “consisting
essentially of” and does not even use the term. Indeed, the Specification
teaches that additional insecticides may be used and provides an extensive
list of such insecticides (see Spec. ¶¶ 28–29). Appellant does not identify a
disclosure in the Specification that distinguishes or limits the elements that
are the basic and novel characteristics of the claims. Therefore, “consisting
essentially of” will be treated as comprising. See, e.g., PPG Industries v.
Guardian Industries, 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“PPG could
have defined the scope of the phrase ‘consisting essentially of’ for purposes
of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the
invention.”).
Appellant contends that “Matsuzaki and Loso merely provide a
‘laundry list’ of possible insects to be controlled for a ‘laundry list’ of
potential plants-without providing any example or guidance to support such
teachings” (App. Br. 7).
We find this argument unpersuasive because Matsuzaki and Loso are
prior art patents that provide detailed descriptions of insecticides and insects
that can be controlled by those insecticides (FF 1–8). Moreover, simply
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because the prior art “discloses a multitude of effective combinations does
not render any particular formulation less obvious.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). In Corkill, an
obviousness rejection was affirmed in light of prior art teachings that
“hydrated zeolites will work” in detergent formulations, even though “the
inventors selected the zeolites of the claims from among ‘thousands’ of
compounds.” In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
Appellant provides no evidence suggesting that the insecticides
disclosed by Matsuzaki or Loso would be ineffective on any of the listed
insect species. That the insecticides of Matsuzaki and Loso have a broad
spectrum of activity supports the Examiner’s reasonable expectation of
success for treatment of the specific insects recited in claims 1 and 19, rather
than rebuts it.
Appellant contends
the combined teachings of Matsuzaki and Loso provides no
guidance as to which insects and/or which plants would
have been effectively controlled by seed treatment with
sulfoximine-especially no guidance or suggestion for an
effective protection of Brassica plants against the attack from
the specific flea beetle species recited in claim 1.
(App. Br. 7). Appellant contends that “based on the standard for
determining ‘obvious to try’, it could not be concluded that claim 1 is prima
facie obvious to one skilled in the art based on the combined teachings of
Matsuzaki, Loso, Burkness and Dosdall” (App. Br. 8).
We find these arguments unpersuasive because there would have been
a reasonable expectation of success in applying known insecticides (FF 1, 6)
to known crop plants (FF 3, 7) to limit crop damage from beetles (FF 2, 8)
including beetles known to be pests (FF 9–11). “Obviousness does not
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require absolute predictability of success . . . all that is required is a
reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009). Here, there is a very reasonable expectation of success based on
the disclosures of the prior art and Appellant provides no evidence, as
opposed to attorney argument, rebutting this finding. Indeed, Dosdall
teaches that canola plants treated with three insecticides resulted in reduced
flea beetle damage (FF 11) and the other references teach the use of
insecticides to treat beetles on crop plants (FF 1–10). The ordinary artisan
would have found this sufficient to provide a reasonable expectation that the
use of the insecticide of Matsuzaki or Loso on canola or brassica seeds
would prevent damage from known pest beetle species.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Matsuzaki, Burkness, Loso, and Dosdall render the claims
obvious.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 2, 7–12, 17, 19–23 § 103 Matsuzaki,
Burkness, Loso,
Dosdall
1, 2, 7–12, 17,
19–23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED