Clifford Watrin

Patent Trials and Appeals Board

Jan 25, 2021

2020002682 (P.T.A.B. Jan. 25, 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.
13/806,180 03/08/2013 Clifford Watrin SYG-0115PA(115479.000020) 8456
153842 7590 01/25/2021
BakerHostetler
Washington Square, Suite 1100
Washington, DC 20036-5304
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD WATRIN
Appeal 2020-002682
Application 13/806,180
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
NATHAN A. ENGELS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 5, 17, and 19–21. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 A prior appeal, 2017-001842, was decided in this application on Apr. 3,
2018.
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Syngenta
Participations AG. Appeal Br. 3.
Appeal 2020-002682
Application 13/806,180
2
CLAIMED SUBJECT MATTER
The claims are directed to a method of controlling soybean sudden
death syndrome using thiabendazole. Claim 5, the sole independent claim
before us, is reproduced below:
5. A method for supressing [sic], controlling, or reducing
soybean sudden death syndrome comprising:
applying thiabendazole to a soybean seed prior to planting,
wherein said soybean seed contains a precursor to soybean
sudden death syndrome; and
planting said soybean seed.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kohn WO 2010/135324 A1 2010
Westphal “Sudden death syndrome of soybean”, The Plant
Health Instructor, The American Phytopathological
Society
2018
Russell “An evaluation of potential seed treatments to
control Fusarium solanif.sp. phaseoli, the cause of
foot and root rot of Phaseolus vulgaris”, The Journal
of Agriculture Science, Vol. 89, iss. 1, Aug.
1977

REJECTION
Claims 5, 17, 19–21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kohn, Russell, and Westphal. Final Act. 2–3.
OPINION
In Appeal 2017-001842 we reversed the Examiner’s rejection based
on Kohn alone. Applying the standards articulated in Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1382 (Fed. Cir. 2015) (discussed
at MPEP § 2131.02) we indicated, “[i]t is unclear whether, despite the
Appeal 2020-002682
Application 13/806,180
3
length of the [Kohn fungicide] list, use of thiabendazole in the manner
claimed would have been immediately apparent to one of skill in this
particular art.” ’1842 Opinion at 3–4.
The same claimed subject matter is before us in the present appeal and
the Examiner supplements the record from the prior appeal with Russell and
Westphal, making the following determinations:
[Russell] teaches potential seed treatment to control
Fusarium solani by using thiabendazole. In addition, [Russell]
dates back to August 1977, which indicates that the
thiabendazole is an old and well-known fungicide for preventing
Fusarium growth.
[Westphal] teaches Fusarium solani together with
Fusarium virguliforme, Fusarium brasiliense, Fusarium
cuneirostrum, Fusarium tucumaniae are all known pathogens or
precursor[s] to cause sudden death syndrome of soybean.
Final Act. 3.
The problem with the Examiner’s current position is that neither of
these determinations appear to be correct and accurate reflections of what
Russell and Westphal actually teach.
Russell mentions only a particular forma specialis, or special form, of
Fusarium solani, referred to at the time of Russell’s publication as Fusarium
solani f.sp. phaseoli. Russell does recognize that thiabendazole is effective
against Fusarium solani f.sp. phaseoli, at least in common beans (Phaseolus
vulgaris), but it is not a fair characterization by the Examiner to, without
more evidence, use Russell’s disclosure in that regard as a basis to conclude
that thiabendazole is effective against all members of the more broad
Fusarium solani species complex, or the even more broad Fusarium genus as
the Examiner appears to have concluded. Reply Br. 4–5. The Examiner does
not provide sufficient evidence to support such conclusions. The only
Appeal 2020-002682
Application 13/806,180
4
evidence of record on this point, the Determining Fungicide Efficacy table
(Appeal Br. 12–13), demonstrates just the opposite, that fungicides,
including thiabendazole in particular, can “vary in efficacy against different
Fusarium [] species.” Further, even considering the Kalavacharla reference
(Ans. 7), the record does not sufficiently demonstrate why thiabendazole,
because it is effective in the common bean, would have reasonably been
expected to be effective in, and compatible with, soybean.
Westphal, like Appellant, attributes Soybean Sudden Death Syndrome
(SSDS or SDS) to certain members of clade 2 of the Fusarium solani species
complex, in particular Fusarium virguliforme, which Westphal points out, is
a species comprised of strains formerly known as Fusarium solani f. sp.
glycines. Reply Br. 4–5; Westphal p. 2 (citing Aoki 20033). Westphal further
states, in relevant part: “In South America, F. brasiliense, F. cuneirostrum, F.
tucumaniae, and F. virguliforme cause SDS symptoms.” Westphal p. 2
(citing Aoki 20054). The Examiner’s determination that “Fusarium
virguliforme, Fusarium brasiliense, Fusarium cuneirostrum, Fusarium
tucumaniae are all known pathogens or precursor[s] to cause sudden death
syndrome of soybean” does not appear to be in dispute, as Appellant
expressly acknowledges “Fusarium virguliforme. . .Fusarium brasiliense sp.
nov., Fursarium cuneirostrum sp. nov., Fusarium tucumaniae are known
precursors to SSDS.” Spec. para. 3; see also claims 17, 20.

3 Available at https://naldc.nal.usda.gov/download/49015/PDF, last accessed
Jan. 7, 2021.
4 Available at https://naldc.nal.usda.gov/download/266/PDF, last accessed
Jan. 7, 2021.

Appeal 2020-002682
Application 13/806,180
5
Appellant, however, takes issue with the Examiner’s inclusion of
Fusarium solani, generically, in the Examiner’s list of known SDS
precursors (Final Act. 3) because, to the extent Westphal mentions Fusarium
solani, it does so either: 1) in the context of a broad species complex, only a
portion of one particular clade of which is characterized as a causing SDS;
or 2) as a former name for species strains, Fusarium solani f. sp. glycines,
that subsequently became included in Fusarium virguliforme, described as a
species nova or new species classification by Aoki (2003). Reply Br. 4–5.
We agree with Appellant, that there does not appear to be within
Westphal’s disclosure sufficient evidence to support the Examiner’s
conclusion that Fusarium solani, generally, is among “known pathogens or
precursor[s] to cause sudden death syndrome of soybean.” The Examiner
appears to pivot from this position in the Answer, first stating that it is
Fusarium solani f. sp. phaseoli that is regarded as the precursor to SDS, but
then stating the strain involved is irrelevant to claim 5. Ans. 5–6. We agree
with Appellant that the Examiner’s position on this point is not entirely
clear. Reply Br. 5.
With regard to Fusarium solani f. sp. phaseoli, Westphal discusses
Fusarium phaseoli (which Aoki 2003 characterized as a species nova, or new
species, comprised of strains formerly classified as Fusarium solani f. sp.
phaseoli), stating: “[i]n greenhouse inoculation experiments, F. cuneirostrum
and F. phaseoli, causal agents of dry bean root rot, are also able to cause
SDS symptoms on soybean.” Although the “symptoms” language in
Westphal is also used in conjunction with Appellant’s acknowledged known
precursors to SDS, as quoted above, with regard to this latter statement in
Westphal, Appellant strongly emphasizes that causing SDS “symptoms”
does not necessarily classify something as a precursor to SDS, the disease.
Appeal 2020-002682
Application 13/806,180
6
Reply Br. 4. We do not appear to have any dispositive evidence of record
with regard to the precise delineation between causing symptoms of the SDS
disease and causing the SDS disease itself. On the totality of the record
presently before us, there does not appear to be sufficient evidence to
support the Examiner’s apparent conclusion that Fusarium phaseoli or
Fusarium solani f. sp. phaseoli (which we understand as its homotypic
synonym5) is reasonably regarded as a “precursor to soybean sudden death
syndrome” according to claim 5.
With regard to the latter of the Examiner’s positions pertaining to the
strain involved (Ans. 5–6), the reasons why the Examiner regards the strain
involved in the method of claim 5, which requires at least some precursor to
SDS, are not clear on the record presently before us. It is not clear on the
record before us if the Examiner is attempting to assert some type of
reasoning along the lines discussed in In re Durden, 763 F.2d 1406 (Fed.
Cir. 1985) (patentability of a method does not necessarily depend on the
starting materials employed in that method) (discussed at MPEP § 2116.01).
If this is the Examiner’s intended point, it is not clearly articulated on the
record presently before us.
Alternatively, the Examiner may be trying to point out that the
claimed method conceivably covers the application of thiabendazole for
other reasons, including treating other diseases or precursors to other
diseases, such as root rot and its recognized precursor, Fusarium phaseoli, or
even reasons unrelated to any particular fungal strain. However, even if this

5 See Fusarium phaseoli, National Center for Biotechnology Information,
Taxonomy Browser, https://www.ncbi.nlm.nih.gov/Taxonomy/Browser/ww
wtax.cgi?mode=Info&id=120645 (citing Aoki 2003) last accessed Jan. 7,
2021.
Appeal 2020-002682
Application 13/806,180
7
is a reasonable reading of the claim, this alone does not dismiss the
requirement that the treated seed also contains some precursor to SDS to
satisfy the language of claim 5.The Examiner does not present sufficient
evidence to demonstrate that it would have been obvious to use
thiabendazole, for example, for controlling root rot known to be caused by
Fusarium solani f. sp. phaseoli, in soybean seeds and such soybean seeds
may also have some precursor to SDS, making such treatment effectively
result in the method of claim 5. If this is the Examiner’s intended point, it is
not supported with evidence or clearly articulated on the record presently
before us.
Because the statements in the Answer discussed above do not make
clear the grounds for rejecting claim 5, we do not consider such grounds to
be presently before us for review under 37 C.F.R. § 41.50(a)(1) (“The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the
examiner.”) (emphasis added).6 It is neither our place, nor Appellant’s
burden, to speculate as to the basis for rejecting claims. In re Stepan, 660 F.
3d 1341, 1345 (Fed. Cir. 2011).
In light of the shortcomings discussed above, we agree with Appellant
that on the record presently before us, the Examiner does not supply a
sufficient combination of evidence and/or reasoning to establish the
obviousness of the subject matter of claim 5. Accordingly, the Examiner’s
rejections cannot be sustained.

6Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
Appeal 2020-002682
Application 13/806,180
8
CONCLUSION
The Examiner’s rejection is REVERSED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5,17,19–21 103(a) Kohn, Russell, and
Westphal
5, 17, 19–21
REVERSED