CHEMINOVA A/S

Patent Trials and Appeals Board

Aug 11, 2021

2021000840 (P.T.A.B. Aug. 11, 2021)

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.
14/332,865 07/16/2014 James BARRENTINE Q213235 8351
23373 7590 08/11/2021
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JAMES BARRENTINE and ANDY BAILEY
__________

Appeal 2021-000840
Application 14/332,865
Technology Center 1600
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
MICHAEL A. VALEK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for controlling a causative agent of Sudden Death Syndrome in plants. 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 FMC
Corporation (see Appeal Br. 2; we number the pages of the Appeal and
Reply Briefs sequentially from their title pages). We have considered the
Specification of July 16, 2014 (“Spec.”); Final Office Action of Oct. 11,
2019 (“Final Action”); Appeal Brief of July 13, 2020 (“Appeal Br.”);
Examiner’s Answer of Sept. 18, 2020 (“Ans.”); and Reply Brief of Oct. 13,
2020 (“Reply Br.”).
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Statement of the Case
Background
“A severe threat to cultivated and wild plants, especially soybeans, is
a root disease commonly known as Sudden Death Syndrome (SDS). The
causative agent of SDS in North America is the fungus Fusarium
virguliforme” (Spec. 1:9–11). “The causative agents . . . can survive in the
soil for several years, planting rotational crops is therefore not a good
defence against these pathogens” (id. at 2:4–7). “It has now surprisingly and
unexpectedly been found that the fungicidal active compound flutriafol
shows a remarkably prolonged effect in the control of Sudden Death
Syndrome” (id. at 2:19–20).
The Claims
Claims 2–8, 25, and 26 are on appeal. Claim 26 is an independent
claim, is representative, and reads as follows:
26. A method for controlling a causative agent of Sudden
Death Syndrome (SDS), the method comprising: within the first
4 weeks of life of a plant treating soil from which the plant
propagation material, the plant, part of the plant and/or plant
organ in need of such treatment grows or will grow by applying
to the soil a composition comprising an active compound
effective for control of the causative agent of SDS, wherein: (i)
the sole active compound for control of the causative agent of
SDS is flutriafol; (ii) the flutriafol is applied in an amount
effective to control SDS; (iii) wherein the plant is selected from
the group consisting of: soybeans, mung beans, beans, lentils,
pecas, groundnuts, chick peas, cowpea, lupin, clover, white
clover, grasses, vetch, and alfalfa; and (iv) the soil is
contaminated with the causative agent of SDS.

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The Rejection
The Examiner rejected claims 2–8, 25, and 26 under 35 U.S.C.
§ 103(a) as obvious over Noon,2 Mugnier,3 and Watrin4 (Final Act. 4–7).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the prior art
renders the claims obvious?
Findings of Fact
1. Noon teaches “a new method of protecting plants from foliar
diseases using the compound flutriafol” (Noon ¶ 2).
2. Noon teaches
flutriafol shows a remarkably prolonged effect in the control of
foliar diseases on plants when applied to the seed or to the soil
surrounding the seed at sowing. Flutriafol is a highly systemic
fungicide that is transported in the xylem tissue. This high
systemicity means that flutriafol is able to protect against
diseases appearing in mature plants, such as rust diseases. It
has also surprisingly and unexpectedly been found that
flutriafol can be applied to the seed in an amount that is both
effective for treating foliar diseases and does not cause
phytotoxicity.
(Noon ¶ 7).
3. Noon teaches “a method of protecting a soybean plant from a
foliar disease comprising applying a composition containing an effective
amount of flutriafol to a soybean seed or to the soil from which the soybean

2 Noon et al., US 2006/0235064 A1, published Oct. 19, 2006.
3 Mugnier, J., Studies On Selectivity And Systemicity Of Sterol Biosynthesis
Inhibitors In Transformed Roots Inoculated With Fusarium Oxysporum,
H28 NATO ASI Series 529–35 (1989).
4 Watrin, C., WO 2011/163474 A1, published Dec. 29, 2011.
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seed grows prior to, during, or immediately after the sowing of the seed”
(Noon ¶ 8).
4. Noon teaches “[w]hen applied immediately after the sowing of
the seed, the composition should be applied no later than the time at which
the seed establishes a root system in the soil” (Noon ¶ 15).
5. Noon teaches that in addition to protecting from soybean rusts,
“Flutriafol can also be effectively used as a protectant against other fungal
diseases found in soybean” (Noon ¶ 10).
6. Noon teaches the
flutriafol composition may optionally contain fungicides,
bactericides, acaricides, nematicides or insecticides. Like the
fertilizers, the additional fungicides, bactericides, acaricides,
nematicides, and insecticides may be mixed or incorporated
into the composition containing flutriafol, used with the
flutriafol composition as a separate component, or used
independently of the flutriafol composition in a separate
application on the soil.
(Noon ¶ 20).
7. Noon teaches a number of optional agents including bifenthrin
(Noon ¶ 22).
8. The Examiner acknowledges that Noon does “not explicitly
disclose controlling SDS” (Final Act. 5).
9. Mugnier teaches “sterol biosynthesis inhibitors (SBIs) are
systemic fungicides with strong fungitoxicity to genera such as Fusarium . . .
Various SBIs were applied to different transformed roots over a range of
concentrations to determine any phytotoxic effects, and were also tested for
their systemic activity against Fusarium” (Mugnier 529).
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10. Mugnier teaches testing of Fusarium solani fungal strains and
compounds including flutriafol (see Mugnier 531).
11. Mugnier teaches that flutriafol treated fungi without damaging
plant roots, explaining that unlike fenarimol “[o]ther SBI-fungicides
appeared more selective; for example, roots grew in the presence of 5
mg/liter flutriafol” (Mugnier 531).
12. Mugnier teaches “[o]ther SBI-fungicides appeared more
selective; for example, roots grew in the presence of 5 mg/liter flutriafol”
(Mugnier 531).
13. Mugnier teaches that flutriafol that was
applied to the bicompartmental Petri dishes moved into the
roots. The compounds were absorbed by the roots in
compartment a and translocated throughout the root tissues into
compartment b, and exuded into the water. The fungicides
present in the root exudated inhibited spore germination and
hyphal growth of all the formae specialis tested.
(Mugnier 532).
14. Watrin teaches “Fusarium virguliforme, formally known as F.
solani f. sp. . . . is a soybean pathogen affecting soybean roots, namely
found in the North America, and which later develops into the disease
Soybean Sudden Death Syndrome (SSDS)” (Watrin ¶ 3).
15. Watrin teaches “methods of controlling Fusarium virguliforme
and Soybean Sudden Death Syndrome (SSDS)” (Watrin ¶ 1).
16. Watrin teaches “control of F. virguliforme, F. brasiliense sp.
nov., F. cuneirostrum sp. nov., F. tucumaniae and SSDS by applying the
chemical thiabendazole to plant propagation material prior to sowing”
(Watrin ¶ 5).
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17. Watrin teaches the “present technology can also be used in
combination with other additional pesticides in order to increase the pest
control spectrum . . . Examples of suitable additions of fungicidally active
ingredients include, but are not limited to, the following compounds . . .
flutriafol” (Watrin ¶¶ 15, 17).
Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). “The combination of familiar elements according to
known methods is likely to be obvious when it does no 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 conclusion of law (see
Final Act. 4–7, FF 1–17) and agree that the combination of Noon, Mugnier,
and Watrin renders the claims obvious. We address Appellant’s arguments
below.
Appellant contends “[n]either Noon nor Mugnier teach a method for
the control of Sudden Death Syndrome (SDS). In fact, neither Noon as the
primary reference nor Mugnier as a secondary reference mention SOS either
directly or indirectly” (Appeal Br. 5). Appellant contends “prior to the
appellants’ invention flutriafol was not known to be an effective treatment
against SDS” (id. at 6). Appellant contends “Watrin did not mention
flutriafol as a treatment for SDS, and it is reasonable to assume that flutriafol
was not considered a conventional treatment for SDS at the time that Watrin
was filed. Watrin would, therefore, tend to cast doubt as to whether
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flutriafol, a known and conventional fungicide, would be effective in
preventing or treating SDS” (id.).
We find these arguments unpersuasive because it is the combination
of references that renders claim 26 obvious, not any single reference alone.
Watrin teaches that SDS in soybean plants is caused by Fusarium
virguliforme, formally known as F. solani (FF 14), teaches that SDS may be
controlled by treatment with fungicides (FF 15–16), and teaches that the
preferred fungicide may be combined with flutriafol “to increase the pest
control spectrum” (FF 17). Mugnier teaches that flutriafol selectively
inhibited fungal growth of species, including Fusarium solani, the causative
agent of SDS (FF 13–14) without damaging plants (FF 12). Lastly, Noon
teaches using flutriafol for protecting soybean plants from disease (FF 1–3)
by applying flutriafol after seed sowing and “no later than the time at which
the seed establishes a root system in the soil” (FF 5).
Thus, we agree with the Examiner that it would have been obvious for
the ordinary artisan interested in treating SDS in soybean plants caused by
the fungus Fusarium virguliforme (FF 14–16) to treat using the compound
flutriafol, which was known to inhibit the causative fungus (FF 12–14).
Moreover, it would have been obvious to apply the compound to soybean
plants after sowing and growing but prior to root system development (FF 5)
because flutriafol was selective for the Fusarium virguliforme fungus and
does not damage plant roots (FF 12) and helps “to increase the pest control
spectrum” (FF 17). Therefore, the Examiner’s reasoning “takes into account
only knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
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from applicant’s disclosure.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Appellant contends:
The examiner does some handwaving to suggest that a person
of ordinary skill would almost inherently find a way to connect
the teaching of the references in a manner that would provide
the claimed method of treating SDS. Without actually stating
it, the examiner appears to be relying on the doctrine of
inherency- “a person of ordinary skill in the art, given the
knowledge that flutriafol can be effective against fungal
diseases, and is known to be effective against Fusarium solani,
a fungus that causes fungal diseases, would be able to develop a
treatment for SDS, a fungal disease, because it is also known
that a different type of fungicide has been found to be effective
in treating SDS”. However, the level of suggestion of the
claimed invention that can be found in this combination of
references is strained, and minimal, at best.
(Appeal Br. 7).
We find this argument unpersuasive because the Examiner does not
rely on inherency but rather on the understanding that “if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR, 550 U.S. at 417. Here, Watrin demonstrates an interest in
controlling SDS in soybean plants caused by Fusarium virguliforme (FF 14–
16), Mugnier suggests that flutriafol safely treats this causative agent in
plants (FF 12–13), and Noon teaches modes of treating soybean plants with
flutriafol to protect from fungal infections (FF 1–6). Thus, just as in KSR,
flutriafol has been used to protect plants from Fusarium virguliforme, and a
person of ordinary skill would recognize that flutriafol would protect
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soybean plants from diseases such as SDS that are caused by the same
fungal agent, Fusarium virguliforme. This is obviousness, not inherency.
Appellant contends that:
While Noon strongly suggests that the flutriafol be applied no
later than the time of root development, there is no credible
correlation made by the examiner of the timing in Noon to the
timing required by the present claims. A treatment applied
prior to the development of a root system is seemingly a
teaching outside of the scope of the present claims, unless the
prior art can provide evidence otherwise.
(Appeal Br. 8).
We find this argument unpersuasive because it is inconsistent with the
express teaching of Noon that “[f]lutriafol can also be effectively used as a
protectant against other fungal diseases found in soybean” (FF 5) and that
“[w]hen applied immediately after the sowing of the seed, the composition
should be applied no later than the time at which the seed establishes a root
system in the soil” (FF 4). Thus, Noon expressly teaches application of
flutriafol to fungal diseases at points “within the first 4 weeks of life of a
plant” as required by claim 26, where application occurs between seeding
and root system development (FF 3–4). This application range fully
overlaps that recited by the claim, where seeding occurs before the plant life
begins and root system development occurs either within or after the first 4
weeks of the life of the plant. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range establishes a
prima facie case of obviousness.”)
Appellant contends:
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Noon and Mugnier do not teach or clearly suggest that flutriafol
can be used effectively in the treatment of SDS. Therefore, it
cannot be argued credibly or reasonably that either reference
supports the position that flutriafol can be used solely as the
active fungicide in the treatment of SDS. In fact, the argument
by the examiner does not address this claim limitation
whatsoever, since the examiner failed to acknowledge this
difference from the prior art.
(Appeal Br. 9).
We find this argument unpersuasive because the ordinary artisan,
aware from Mugnier and Watrin that flutriafol treats Fusarium virguliforme
and that Fusarium virguliforme is the causative agent of SDS (FF 9–16),
would have found it obvious to treat SDS using an active agent known to be
effective against that Fusarium virguliforme causative organism. As already
discussed above, Noon teaches modes of applying flutriafol to protect from
fungal infections such as those caused by Fusarium virguliforme (FF 1–6).
As the Examiner notes, “Mugnier teaches that flutriafol applied in vitro
moved into the roots and translocated throughout the root tissues and exuded
into the water, wherein the fungicide present in the root exudate inhibited
spore germination and hyphal growth of Fusarium solani (now known as
Fusarium virguliforme)” (Ans. 6).
Appellant contends:
A person of ordinary skill in the art of horticulture, even if
aware of Mugnier, would not be motivated to combine Noon
and Mugnier in searching for an immediately available method
for preventing SDS. Such treatment is only suggested by the
applicants’ invention. It seems that Mugnier was only cited to
introduce Fusarium, which Noon does not recognize. Watrin
was only cited because it is discusses SDS. Otherwise the
references do not seem to have a common purpose or reason for
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the combination. This suggests the impermissible use of
hindsight.
(Appeal Br. 10).
While we are fully aware that hindsight bias may plague
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR,
550 U.S. at 416. Here, where flutriafol was known in the prior art to inhibit
growth of the pathogen Fusarium virguliforme, (FF 10–13), it would have
been expected that flutriafol would also function to treat diseases caused by
this pathogen, such as SDS (FF 14–17) using known methods of treatment
of soybean plants with flutriafol (FF 1–6). This is a combination of familiar
elements according to known methods which yield the predictable result that
a compound that inhibits growth of an organism will also inhibit growth of
the same organism in a condition like SDS that is caused by that organism.
Appellant contends
the examiner presumes a high level of skill for a person of
ordinary skill in the art without presenting evidence why this
should be the case. As it stands, the examiner’s “person of
ordinary skill” would have to be aware of Mugnier, which was
published in a scholarly journal intended for communications
between the scientific community.
(Appeal Br. 11). Appellant finds the ordinary artisan is of low skill and the
rejection “requires the person of ordinary skill to step in the shoes of a
research scientist and fill in the gaps left by the prior art” (id. at 12).
We find this argument unpersuasive because the level of ordinary skill
is based on knowing the prior art rather than understanding and appreciating
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the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995) (“The person of ordinary skill in the art is a hypothetical person who
is presumed to know the relevant prior art.”); Standard Oil Co. v. Am.
Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (“The issue of
obviousness is determined entirely with reference to a hypothetical ‘person
having ordinary skill in the art.’ It is only that hypothetical person who is
presumed to be aware of all the pertinent prior art.”)
Here, the person of ordinary skill who is identifying treatments for
plant diseases would be researchers such as Clifford Watrin working for
Syngenta (see Watrin cover page, code [75]), Robert Noon working for
Cheminova (see Noon cover page, codes [75], [73], or J. Mugnier working
for Rhône-Poulenc Agrochimie (see Mugnier 529). The ordinary artisan
would not be homeowners or even farmers who were not aware of the
pertinent scientific literature. Thus, we agree with the Examiner that the
person of ordinary skill in the art, here a researcher into treatments for plant
disease, would recognize that a compound that treats a pathogen such as
Fusarium virguliforme in one context would be an obvious compound to use
against the same pathogen causing disease in another context (see Ans. 13).
This is supported by Appellant’s argument that “the example of Covid
19 is instructive on this issue. General knowledge does not ensure a specific
cure of Covid 19” (Appeal Br. 13). However, when ordinary artisans looked
for vaccines against Covid-19, they looked to, inter alia, vaccines that had
been prepared against the closest prior coronavirus infections of SARS and
MERS that had already shown some efficacy against the viral family.
Similarly here, the ordinary artisan would be even more motivated to select
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an agent already shown safe and effective for treatment of soybean plants
against the very same causative organism.
Appellant contends a “suggestion for experimentation is not support
for a finding of nonpatentability. Obvious to try is not proof of obviousness”
(Appeal Br. 14).
We find this argument inconsistent with KSR, where the Supreme
Court explained that this “constricted analysis led the Court of Appeals to
conclude, in error, that a patent claim cannot be proved obvious merely by
showing that the combination of elements was ‘[o]bvious to try.’” KSR, 550
U.S. at 421. KSR explains that
a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but
of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was
obvious under § 103.
(id.). The same reasoning applies to the instant facts, where the ordinary
artisan interested in treating SDS caused by Fusarium virguliforme would
look to treat the disease with agents known to treat Fusarium virguliforme.
Thus, applying flutriafol, known from Mugnier to treat Fusarium
virguliforme without injuring plants, to treatment of SDS caused by
Fusarium virguliforme as disclosed by Watrin using the known application
processes of Noon, is the product of ordinary skill and common sense, not
innovation (FF 1–17).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that the prior art renders the claims obvious.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–8, 25, 26 103 Noon, Mugnier, Watrin 2–8, 25, 26

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