CHEMINOVA A/SDownload PDFPatent Trials and Appeals BoardAug 11, 20212021000840 (P.T.A.B. Aug. 11, 2021) Copy Citation 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.”). Appeal 2021-000840 Application 14/332,865 2 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. Appeal 2021-000840 Application 14/332,865 3 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. Appeal 2021-000840 Application 14/332,865 4 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). Appeal 2021-000840 Application 14/332,865 5 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). Appeal 2021-000840 Application 14/332,865 6 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 Appeal 2021-000840 Application 14/332,865 7 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 Appeal 2021-000840 Application 14/332,865 8 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 Appeal 2021-000840 Application 14/332,865 9 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: Appeal 2021-000840 Application 14/332,865 10 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 Appeal 2021-000840 Application 14/332,865 11 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 Appeal 2021-000840 Application 14/332,865 12 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 Appeal 2021-000840 Application 14/332,865 13 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. Appeal 2021-000840 Application 14/332,865 14 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 Copy with citationCopy as parenthetical citation