Ex Parte 6239072 et al

Patent Trial and Appeal Board

Apr 27, 2016

90020017 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/020,017 09/15/2012
45738 7590 04/27/2016
SENNIGER POWERS LLP (MTC)
100 NORTH BROADWAY
17THFLOOR
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
6239072
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MTC 6869.lRE
(15063)B/US
EXAMINER
3838
CAMPELL, BRUCE R
ART UNIT PAPER NUMBER
3991
MAILDATE DELIVERY MODE
04/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Monsanto Technology, LLC,
Patent Owner and Appellant
Appeal2015-008217
Reexamination Control 90/020,017
Patent 6,239,072 Bl
Technology Center 3900
Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
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Monsanto Technology, LLC, the owner of the patent under
reexamination (hereinafter the "'072 Patent"), appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 1, 3-5, and 7-25 (Appeal
Brief filed April 13, 2015, hereinafter "App. Br.," 2-3; Final Office Action
mailed September 12, 2014). We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We AFFIRM.
STATEMENT OF THE CASE
The '072 Patent issued to Jerry L. Flint et al. on May 29, 2001. This
reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Frank E. Leak, Jr. of Leak & Schroeder, PLLC.
(Request for Ex Parte Reexamination filed September 15, 2012).
The '072 Patent states that the invention relates to the field of weed
control in crop plants, and more particularly to control of volunteer plants
expressing a gene imparting glyphosate tolerance in a field of a
glyphosate-tolerant crop species by use of tank mixtures or premixtures of a
glyphosate herbicide with a second herbicide having a different mode of
action, possessing both activity against the volunteer plant species, and lack
of activity against the crop species. (Col. 1, 11. 12-18.)
By way of background, glyphosate 1 is a popular herbicide, which is
readily broken down in the soil. ('072 Patent, col. 1, 11. 26-37.) Crop plants
have been developed that are resistant to glyphosate, such that growers may
1 The chemical name for glyphosate is N-phosphonomethylqlycine.
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use glyphosate for weed control in crop plant fields without harming the
crop plant. ('072 Patent, col. 1, 11. 38--44.) However, if a farmer decides to
plant a different glyphosate-resistant plant crop in the same growing field in
the following growing season, glyphosate-tolerant plant crops from the
previous season (termed "volunteer plants") may be present, which absorb
sunlight, soil nutrients and soil moisture intended for the different
glyphosate-resistant plant crop. ('072 Patent, col. 1, 1. 45 - col. 2, 1. 10.)
Because the volunteer plant is resistant to glyphosate, the glyphosate
herbicide is ineffective to control the volunteer plant. The '072 Patent
addresses this problem.
Claims 1 and 7 on appeal read as follows (with underlining and
bracketing showing additions and deletions relative to the originally issued
patent claims):
1. [An] A liquid herbicidal mixture comprising a
glyphosate herbicide and a non-glyphosate herbicide that is an
ACCase inhibitor or an AHAS inhibitor, wherein said non-
glyphosate herbicide is selected from the group consisting of
[ quizalofop,] clethodim, sethoxydim, and imazamox[, and
fenoxaprop].
7. A method for controlling glyphosate-susceptible
weeds and a glyphosate-tolerant first plant species growing in a
crop of a glyphosate-tolerant second plant species, comprising:
first applying a non-glyphosate herbicide to the crop of
the glyphosate-tolerant second plant species, the
non-glyphosate herbicide being toxic to the first plant species
and nontoxic to the second plant species, at a rate of application
sufficient to control the first plant species; and,
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second applying a glyphosate herbicide to the crop of the
glyphosate-tolerant second plant species at a rate of application
sufficient to control the glyphosate-susceptible weeds,
wherein the first applying and the second applying steps
can be performed in either order or simultaneously.
(Claims App'x, App. Br. 31-32.)
The Examiner rejected claims 1, 3-5, and 7-25 as follows:
I. Claims 1, 4, and 25 under 35 U.S.C. § 102(b) as anticipated by
Smith2 (Ans. 2);
II. Claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by
Bayliss3 (Ans. 2-3); and
III. Claims 1, 3-5, and 7-25 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Shaner,4 Seed
Today,5 Lueschen,6 Bauy,7 Prill,8 Smith, and Paterson9 (Ans.
3---6).
2 WO 89/03176, published April 20, 1989.
3 GB 2 293 7 66 A, published April 10, 1996.
4 Shaner, D. (1994) Herbicide-resistant crops in resistant weed
management: An industrial perspective, Phytoprotection, vol. 75, No. 4:pp.
79-84.
5 Seed Today (January 6, 1997) Monsanto to Acquire Holden, Com States
and Com States International.
6 Lueschen and Hoverstad (1992) Postemergence herbicides for volunteer
corn control in soybean at Waseca, MN in 1992, North Central Weed
Science Society Research Report 49:323--4.
7 U.S. Patent 5,463,175, issued October 31, 1995.
8 WO 92/12637, published August 6, 1992.
9 GB 2,267 ,825B, published December 22, 1993.
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Appellant relies on certain parts of the following (App. Br. 11-12, 18-
21, 25-26):
Ex. A: Deel. of Joseph A. Schaper dated May 27, 2014;
Ex. B: Federal Register Notice, Vol. 62, No. 234, Friday, December
7, 1997, 64350-1;
Ex. C: Second Deel. of Jeffrey N. Travers dated March 6, 2015;
Ex. D: Deel. of Norman J. Probst dated March 12, 2014.
Anticipation Rejections
Rejection I - Smith
ISSUE
Regarding claims 1, 4, and 25, the Examiner found that Smith
discloses a latex based composition comprising two pesticides, where one
pesticide can be glyphosate and the other can be sethoxydim. (Ans. 2, citing
Smith, p. 22, 1. 13, p. 18, 11. 7 and 17, and claim 8.)
Appellant contends that Smith discloses long lists of pesticides for
both the first and second pesticide disclosed therein such that given the large
number of possible combinations and the lack of direction in Smith for
choosing the claimed combination of pesticides, Smith would not have led
one of ordinary skill in the art to the claimed combinations absent hindsight.
(App. Br. 6-8.) Appellant acknowledges that claim 8 of Smith recites a
smaller number of pesticides for the first and second pesticides, but argues
that the list of alternatives is not sufficiently limited or well delineated to
establish anticipation. (App. Br. 8.)
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Thus, the principal issue with respect to this rejection is:
Did the Examiner err in finding that Smith sufficiently discloses a
mixture of glyphosate with sethoxydim to anticipate claims 1, 4, and 25?
FINDINGS OF FACT ("FF")
1. Smith discloses an agricultural composition having a first active
pesticidal component and at least one other active component.
(P. 10, 11. 2-5.)
2. Smith discloses a number of first pesticidal components
including sethoxydim. (P. 16, 11. 7-10, p. 18, 11. 15-20.)
3. Smith discloses that the second active component is preferably
a pesticide, which is either water-soluble or has water soluble-
salts, or a water insoluble (or poorly water soluble) pesticide or
mixture of pesticides present as a particulate dispersion in the
aqueous phase, where examples of the pesticide include
insecticides, fungicides, herbicides, and plant growth
regulators. (P. 20, 11. 21-24, p. 21, 1. 2-p. 24, 1. 16.)
4. Smith discloses a list of second active pesticide components
that includes the herbicide glyphosate. (p. 22, 11. 10-15.)
5. Smith discloses an agricultural composition in claim 8, where
the first pesticidal component is selected from a list that
includes sethoxydim and the second active component is
selected from a list which specifically names glyphosate. (P.
41, 1. 23 -p. 42, 1. 26.)
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PRINCIPLES OF LAW
[I]t is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple,
distinct teachings that the artisan might somehow combine to
achieve the claimed invention. See [In re Arkley, 455 F.2d 586,
587 (1972)] ("[T]he [prior art] reference must clearly and
unequivocally disclose the claimed [invention] or direct those
skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited
reference.").
Net Moneyin, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
ANALYSIS
We agree with Appellant that Smith fails to disclose the combination
of glyphosate and sethoxydim in a manner sufficient to anticipate claims 1,
4, and 25. It is true that Smith discloses a composition having a first
component, which may be sethoxydim, and a second component, which may
be glyphosate. (FF 1, 2, and 4.) However, we are persuaded by Patent
Owner's argument that one of ordinary skill in the art would need to engage
in picking and choosing in order to arrive the combination recited in the
claims.
Specifically, Smith discloses broadly a "second active component,"
which may be either water-soluble or insoluble and may be chosen from a
number of different classes of "pesticides" including insecticides,
fungicides, herbicides, and plant growth regulators. (FF 3.) Thus, there are
a number of choices to be made in selecting a second active component that
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not only include the class of pesticide, but also the specific member within
the class that possesses the appropriate water solubility properties (see
Smith, p. 19, 1. 22-p. 20, 1. 20.), which would have not made the
combination of components readily apparent to one of ordinary skill in the
art. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356
(Fed. Cir. 2012) ("The question for purposes of anticipation is therefore
whether the number of categories and components in Shahidi was so large
that the combination of WS-23 and menthol would not be immediately
apparent to one of ordinary skill in the art.")
Although claim 8 of Smith sets forth a smaller number of compounds
to choose from for the first active component and second active component
(FF 5), the compounds listed for the second active component are from
different classes of pesticides disclosed in Smith and would require the same
picking and choosing as discussed above. Furthermore, claim 8 is dependent
from claim 1 and imposes additional requirements on the selection, i.e.,
"wherein the said at least one other active component is physico-chemically,
chemically or biologically incompatible with the first pesticidal component,"
and the further selection of a surfactant to meet other functional
characteristics of the claim. Thus, the subject matter of claim 8 involves
more than the picking and choosing of the two pesticides within the scope of
the claimed subject matter.
Smith provides no additional disclosure that would direct one of
ordinary skill in the art to the combination of glyphosate and sethoxydim.
Thus, one of ordinary skill in the art would not immediately envisage the
claimed combination. See Kennametal, Inc. v. Ingersoll Cutting Tool
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Company, 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301
F.2d 676, 681 (C.C.P.A. 1962). ("However, a reference can anticipate a
claim even if it 'd[ oes] not expressly spell out' all the limitations arranged or
combined as in the claim, if a person of skill in the art, reading the reference,
would 'at once envisage' the claimed arrangement or combination."))
Accordingly, we reverse the Examiner's rejection of claims 1, 4, and
25 as anticipated by Smith.
Rejection II - Bayliss
ISSUE
Regarding claims 1, 3, and 4, the Examiner found that Bayliss
discloses compositions comprising glyphosate and a compound having
formula 1, where the composition may further comprise cleothdim or
sethoxydim. (Ans. 2-3, citing Bayliss, Abstract, pp. 13-14, group T.)
Appellant contends that Bayliss discloses an exhaustive list of
potential co-herbicides, while at the same time Bayliss does not provide any
particular direction or working example for choosing the particular
combination of herbicides required to anticipate claim 1. (App. Br. 9.)
Thus, Appellant argues that the list of alternatives is not sufficiently limited
or well delineated to establish anticipation. (App. Br. 9.)
Thus, the principal issue with respect to this rejection is:
Did the Examiner err in finding that Bayliss sufficiently discloses a
mixture of glyphosate with cleothdim or sethoxydim to anticipate claims 1,
3, and 4?
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FINDINGS OF FACT ("FF")
6. Bayliss discloses a herbicidal composition of glyphosate
and a compound of formula 1 :
x
( I )
wherein:
R1 is alkyl, alkenyl, alkynyl, benzyl, cycloalkyl or
cycloalkenyl, all of which may be optionally substituted;
R 2 is haloalkoxy;
R3 is halo·
'
X is CN or halo;
each Y is independently halo, CN, N02, OH, alkyl,
alkoxy, alkylthio, alkoxyalkyl, S02alkyl, CONRaRh,
heterocyclyl or two Y groups together form a further
rmg;
mis 0-4, and Ra and Rb are independently Hor lower
alkyl. (Abstract, pages 1-2.)
7. Bayliss discloses that the preparations may comprise one or
more compounds which possess biological activity and further
lists compounds of different classes of herbicides in Groups
A-Z, and AA with examples of each class, where in Group T,
cleothdim or sethoxydim are specifically named as examples of
cyclohexanedione herbicides. (Pages 13-15.)
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ANALYSIS
We agree with Appellant that Bayliss does not anticipate claims 1, 3,
and 4. Similar to our analysis with respect to Smith above, one of ordinary
skill in the art would have to engage in picking in choosing with respect to
the addition of the "one or more compounds which possess biological
activity" to the herbicidal composition of glyphosate and a compound of
formula 1 disclosed in Bayliss. (FF 6.)
Specifically, Bayliss discloses 27 classes of herbicides in Groups A-Z
and AA, and while Bayliss names examples of each class, the classes are
broadly stated (e.g., "D. Dinitrophenols and their derivatives") and thus
include unnamed and unidentified compounds, giving rise to a large number
of compounds that may be added to the combination of glyphosate and a
compound of formula 1. (FF 7 .) Bayliss provides no additional direction
that would point one of ordinary skill in the art to choose the herbicides of
Group T including cleothdim or sethoxydim. Accordingly, we reverse the
Examiner's decision to reject claims 1, 3, and 4 as anticipated by Bayliss.
Obviousness Rejection
Rejection III - Shaner, Seed Today, Lueschen, Barry, Prill, Smith, and
Paterson
ISSUES
The Examiner found that Shaner discloses the potential problems with
herbicide resistant crops, and that Shaner discloses that glyphosate resistant
canola, soybean, sugar beet, and cotton were under development. (Ans. 3.)
The Examiner found that Shaner discloses the general terms of the problem
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addressed by the method recited in claim 7, as well as the claimed solution
to the problem. (Ans. 3.) The Examiner found that Shaner does not disclose
glyphosate resistant com, wheat, and rice, or the levels of glyphosate and
other herbicides in the claims. (Ans. 3--4.) The Examiner found that Seed
Today discloses that as of January, 1997, glyphosate-resistant com was
being developed. (Ans. 4.) The Examiner found that Barry discloses
glyphosate tolerant canola, soybean plants, and cultured com tissue were
produced. (Ans. 4.) The Examiner cited Lueschen, Prill, Paterson, and
Smith for the specific herbicides used in combination with glyphosate in
liquid compositions as well as the amounts recited in the claims. (Ans. 4--5.)
The Examiner concluded that:
Given the knowledge that glyphosate tolerant soybeans
and com were being developed as taught by Shaner, Seed
Today and Barry, it would have been obvious to use the method
of Shaner to control glyphosate tolerant volunteer com in
glyphosate tolerant soybeans. It \vould have been obvious to
apply the recited herbicides at the rates known to be effective
for controlling volunteer com and other monocotyledonous
weeds in soybeans, as taught by Lueschen.
(Ans. 5.)
The Examiner also points out that the claims do not require a
volunteer plant as the first species, nor to the claims require that the person
performing the method to have made or bought seeds for the
glyphosate-tolerant first species. (Ans. 7.) The Examiner further stated that
the production of transgenic plants is not part of the claimed method, and
that even if glyphosate-tolerant com seeds were not available, one of
ordinary skill in the art would have found it unnecessary to practice the
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claimed method, which is not the same as being unable to practice the
claimed method. (Ans. 10.)
The Examiner concluded also that "[ w ]ith regard to claims 1, 3-5, 21
and 25, it would have been obvious to combine glyphosate and the second
herbicide in order to avoid the expense of repeated pesticide applications."
(Ans. 5---6.)
Appellant contends, with respect to method claim 7, that none of the
prior art enables a person of ordinary skill in the art to produce
glyphosate-tolerant plants necessary to practice the claimed methods. (App.
Br. 10-19.) Appellant argues also that the claimed methods produce
unexpected results because combinations of herbicides from different
herbicidal classes can lead to unpredictable results due to antagonistic
interactions and/or other forms of biological incompatibility. (App. Br. 19-
24.) Appellant makes similar arguments with respect to composition claim 1
and the claims dependent therefrom. (App. Br. 25-29.)
Thus, the principal issues with respect to this rejection are:
Did the Examiner err in concluding that the claims would have been
obvious due to the prior art lacking enablement for a second
glyphosate-tolerant plant species?
Is the evidence of unexpected results sufficient to outweigh the
evidence in favor of obviousness?
FINDINGS OF FACT ("FF")
8. Shaner discloses:
One aspect that will be necessary with the introduction of
herbicide-resistant crops is that farmers will have to
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control volunteers in succeeding crops with a herbicide
with a different mode of action than the herbicide used in
the resistant crop. For instance, imazaquin effectively
controls volunteer maize in soybeans. However, if the
previous crop had been imazaquin-resistant maize, then
this herbicide would be ineffective. Under these
circumstances, the farmer would need to use another
herbicide, such as an acetyl-CoA carboxylase (ACCase)
inhibitor. However, using a herbicide with another mode
of action to control a herbicide-resistant volunteer crop is
not detrimental since it ensures that farmers will include
herbicides with different modes of action in their crop
rotation.
(iT bridging pp. 81-82.)
9. Seed Today discloses: "Other products in development include
Roundup Ready com, tolerant of Roundup herbicide and com
produced against com rootworm." (Page 1.)
10. Barry discloses: "Plants which can be made glyphosate tolerant
by practice of the present invention include, but are not limited
to, soybean, cotton, com, canola, oil seed rape, flax, sugarbeet,
sunflower, potato, tobacco, tomato, wheat, rice, alfalfa, lettuce,
apple, poplar and pine." (Col. 26, 11. 41--47, see Col. 28, 11.
5-25.)
11. Barry discloses examples of glyphosate-tolerant canola and soy
bean that produce fully fertile flowers. (Col. 33, 1. 35 - col. 37,
1. 49, Examples 3 and 4.)
12. Barry discloses that the glyphosate oxidoreductase gene can be
introduced into Black Mexican Sweet com cells. (Col. 37, 1. 50
- col. 38, 1. 51, Example 5.)
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13. The '072 Patent discloses:
One possible difficulty that may be posed to mixtures in
embodiments of the present invention is antagonism between
the glyphosate herbicide and the non-glyphosate herbicide, or
between either herbicide and a surfactant or other inert
ingredient. Antagonism is defined as a negative interaction
between the components of a mixture of herbicides, which
results in inferior control of target weeds relative to what would
be expected from considering the activities of the component
herbicides individually.
However, antagonism is unlikely in light of the present
disclosure. Antagonism is generally limited to mixtures of
herbicides or herbicides and surfactants in which the
components target the same enzyme or the same metabolic
pathway in the plant, or in which the components interfere with
absorption into the plant. Such situations are well-known to
those of skill in the art, and can be avoided by refraining from
using antagonistic mixtures or improving absorption by
addition of new and/ or different surfactants and wetting agents
to the mixtures or by use of different techniques of application
to plants. ii~ntagonism in glyphosate mixtures has been
described by, among others, Flint et al., Weed Science (1989),
37, 700-705, and Lich et al., Weed Science (1997), 45, 12-21.
Further data is provided in the Examples below, which
demonstrate that mixtures of glyphosate and non-glyphosate
herbicides can be used in the present method without concern
for antagonism.
(Col. 7, 11. 40-64.)
14. The '072 Patent discloses:
Transformed plant cells, i.e. plant cells with a foreign gene
inserted into their genome, may then be regenerated by well-
known methods to produce fertile adult plants expressing the
gene imparting glyphosate tolerance.
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To date, lines of com, cotton, soybean, sugarbeet, rice,
wheat, canola, and lettuce, among others, that express a gene
imparting glyphosate tolerance have been or are being
commercialized. Production of lines of other plant species
expressing a glyphosate-tolerance gene may be produced by
techniques known in the art. See, e.g. U.S. Pat. Nos. 5,312,910;
5,310,667; 5,463, 175. Therefore, the scope of the present
invention reasonably covers the presently-known glyphosate-
tolerant com, cotton, soybean, wheat, canola, sugarbeet, rice,
and lettuce, and any glyphosate-tolerant crop species that may
be developed. Also, although the development of glyphosate-
tolerant plants by use of conventional breeding without
recombinant DNA techniques is currently believed to be highly
unlikely, if any such naturally glyphosate-tolerant plants are
developed they would fall within the scope of the current
invention.
(Col. 3, 11. 41-59.)
PRINCIPLES OF LAW
In considering the question of obviousness, we are guided by the basic
principle that the question under 35 U.S.C. § 103 is not merely what the
references expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time of the invention. See Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807---08 (Fed. Cir. 1989); In re Keller,
642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not ... that
the claimed invention must be expressly suggested in any one or all of the
references."). "For obviousness under§ 103, all that is required is a
reasonable expectation of success." In re 0 'Farrell, 853 F.2d 894, 903---04
(Fed. Cir. 1988) (citations omitted). "Under §103 ... a reference need not
be enabled; it qualifies as prior art, regardless, for whatever is disclosed
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therein." Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357
(Fed. Cir. 2003).
A showing of unexpected results may be sufficient to overcome a
primafacie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990) (internal citations omitted). Such a showing must be based on
evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-
44 (Fed. Cir. 1997); In re Schulze, 346 F.2d 600, 602 (CCPA 1965). The
evidence must also be reasonably commensurate in scope with the claimed
invention. In re Greenfield, 571 F .2d 1185, 1189 (CCP A 1978).
In order for a showing of unexpected results to overcome the
teachings of the prior art, the results presented must be commensurate in
scope with the claims. See In re Kollman, 595 F .2d 48, 55 (CCP A 1979).
ANALYSIS
Claims 7 24
We agree with the Examiner that claims 7-24 would have been
obvious to one of ordinary skill in the art at the time of the invention. We
are not persuaded by Appellant's arguments that the prior art does not enable
one of ordinary skill in the art to produce the glyphosate-tolerant plants
necessary to practice the claimed methods.
Appellant's arguments focus on the alleged lack of a publically
available second glyphosate-tolerant plant seed prior to the '072 Patent and
the alleged inability of one of ordinary skill in the art to produce
glyphosate-tolerant plants in view of the prior art cited by the Examiner. In
this regard, Appellant provides a declaration by Travers, which states that
one of ordinary skill in the art "of weed control and herbicide product
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development" would not have the ability to produce glyphosate-tolerant com
plants. (Travers Deel. i-f 11.) The Travers Declaration refers to the
Lundquist Patent, 10 which discloses a method for producing fertile
transgenic plants resistant to glyphosate, including com (see col. 1, 11. 13-19,
claim 1 ), and states that Lundquist "relates to the art of plant genetics, and
appears to be written for individuals having a high level of skill in the fields
of plant genetics and genetic engineering." (Travers Deel. i-f 10.) As a
result, the Travers Declaration states that access to glyphosate-tolerant com
for one of ordinary skill in the art in the weed control and herbicide product
development art was when the plants became available for purchase in
November 1997. 11 (Travers Deel. i-f 12.)
We are not persuaded by this argument. Notably, the Travis
Declaration states that "[ m Jost practitioners in the field of weed control and
herbicide product development will have an undergraduate degree in
chemistry, agronomy, horticulture, or a closely related field. Some
10 U.S. Patent No. 5,554,798 issued September 10, 1996 to Ronald C.
Lundquist and David A. Walters. The Lundquist Patent was the subject of a
number of petitions regarding the Examiner's use of this Patent, all of which
have either been denied or dismissed. (See App. Br. 14--15; Ans. 10-11,
noting Petition Decisions mailed May 5, 2015 and May 12, 2015; see also
Petition for Reconsideration filed July 6, 2015 and Petition Decision
September 3, 2015.) Accordingly, Appellant's arguments regarding the use
of Lundquist, which is a petitionable matter, have been thoroughly
addressed.
11 According to the Declaration of Joseph A. Schaper, the Senior Counsel for
International IP at Monsanto Technology LLC, the invention of the claims
of the '072 Patent was reduced to practice prior to August 13, 1997.
(Schaper Deel. i-fi-11, 3, 4.)
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practitioners also have graduate-level degrees in chemistry, agronomy or
closely related fields." (Travis Deel. i-f 14.) Mr. Travers did not provide
evidence that a practitioner with such background would be narrowly
educated in the development of weed control products and herbicides,
without knowledge in the area of plant genetics and genetic engineering.
This would be particularly true for developing weed control and herbicide
products for plants that have been genetically modified, where it would be
important for one of ordinary skill in the art to understand the mechanisms
relevant to weed control of such plants. Thus, despite the Travis
Declaration's statements to the contrary, Mr. Travis did not provide factual
evidence that one of ordinary skill in the art in developing weed control and
herbicide products would have been unable to produce the
genetically-modified plants disclosed in the prior art such as Barry.
As noted by the Examiner, Barry is an issued U.S. Patent, which in
the absence of persuasive evidence to the contrary, is considered to be
enabling. (Ans. 8.) The Examiner also observed that the '072 Patent itself
relies on Barry for enablement of glyphosate-tolerant com. (Ans. 8.) Barry
discloses general methods for making fertile glyphosate-tolerant plants, and
methods for making glyphosate-tolerant com. (FF 10-12.)
Appellant cites to Lundquist for the position that it is difficult to
introduce genetic sequences into cells of a target species and form fertile
first-generation transgenic seeds as well as increased difficulty in modifying
monocotyledonous species such as com versus dicotylodonous species such
as tobacco and canola. (App. Br. 13, citing Lundquist col. 1, 1. 37 - col. 2,
1. 29.)
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However, we observe that Barry and Lundquist are nearly
contemporaneous disclosures, with the Specification maturing into the
Lundquist Patent having been filed on April 11, 1990, and the Specification
maturing into the Barry Patent having been filed on June 24, 1991.
Accordingly, one of ordinary skill in the art would not have interpreted the
disclosure of Lundquist discussing the defects of the prior art as referring to
the disclosure of Barry. We observe also that Lundquist discloses methods
of producing fertile transgenic glyphosate-tolerant com (col. 3, 11. 58-60,
claim 1 ), providing further evidence that such methods were known and
enabled by the prior art.
In addition, as the Examiner correctly noted, the '072 Patent itself
refers to Barry as providing an enabling disclosure for producing glyphosate
tolerant plants. (FF 14.) Thus, the evidence does not support Appellant's
contention that the '072 Patent relies on only commercially available
glyphosate-tolerant plant species as argued by Appellant. (Reply Br. 9.)
The '072 Patent expressly states that "[p ]roduction of lines of other plant
species expressing a glyphosate-tolerance gene maybe produced by
techniques known in the art. See, e.g., U.S. Pat. Nos. 5,312,910; 5,310,667;
5, 463, 175 [Barry]" and that there were lines of developed
glyphosate-tolerant species that "have been or are being commercialized."
(FF 14, emphasis added.)
We are also unpersuaded that the claimed methods produce
unexpected results in controlling both glyphosate-tolerant com plants and
glyphosate-susceptible weeds in the absence of herbicidal antagonism.
(App. Br. 19-22, Reply Br. 10-12.) As argued by Appellant, the '072 Patent
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defines the negative interaction between the components of a mixture of
herbicides as antagonism. (App. Br. 19-20; FF 13.) While the '072 Patent
makes the statements that "antagonism is unlikely in light of the present
disclosure" and "[f]urther data is provided in the Examples below, which
demonstrate that mixtures of glyphosate and non-glyphosate herbicides can
be used in the present method without concern for antagonism," the '072
Patent also describes the most likely causes of antagonism, which include
components that target the same enzyme or the same metabolic pathway in
the plant, or in which the components interfere with absorption into the
plant, and states that "[s]uch situations are well-known to those of skill in
the art, and can be avoided by refraining from using antagonistic mixtures or
improving absorption by addition of new and/or different surfactants and
wetting agents to the mixtures or by use of different techniques of
application to plants." (FF 13.) The '072 Patent also cites to publications
that describe antagonism in glyphosate mixtures. (FF 13.)
Thus, while the '072 Patent describes the absence of antagonism, it
indicates that factors related to antagonism are well-known and that one of
ordinary skill in the art would have been familiar with techniques to avoid it.
That is, the '072 Patent itself contradicts Appellant's argument that mixtures
of herbicides including glyphosate would have been "wholly unpredictable."
(Reply Br. 12.) Indeed, the prior art cited by the Examiner in rejecting the
claims contemplates mixtures of herbicides, including glyphosate. (Ans.
13-14, citing Shaner, see FF 8, p. 81, Table 1; Smith, FF 2 and 4; Lueschen,
p. 323; Prill p. 8, 11. 14-25.) Appellants have not explained how they have
solved the antagonism problem any differently than the prior art,
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particularly, when glyphosate was used in the prior art in combination with
other herbicides.
Appellant relies also on Examples 1, 3, 5, and 6 of the '072 Patent to
show an established lack of antagonism in the experimental data. (App. Br.
20, col. 10, 11. 25-30, col. 15, 11. 45-47, col. 19, 11. 11-13, and col. 21, 11. 29-
37.) However, the '072 Patent does not provide any particular statements
that such lack of antagonism would have been unexpected.
With respect to the Probst and Travers Declarations cited by
Appellant as evidence of unexpected results, we agree with the Examiner
that these declarations are unpersuasive. (Ans. 12.) The Probst Declaration
describes generally experimental tests and procedures. (Probst Deel. i-fi-1 4,
5.) The Probst Declaration states that a tank mixture of glyphosate and
quizalofop "unexpectedly" achieved excellent control of glyphosate-tolerant
com plants without causing significant injury to glyphosate-tolerant
soybeans, and "unexpectedly" controlled both grass and broadleaf weeds
without any evidence of antagonism. (Probst Deel. i16.) However, the
Probst Declaration does not set forth any basis of comparison to the prior art
and does not explain why this result was unexpected. Moreover, it appears
the claim 1 does not include quizalofop as an herbicide, and claim 7 is
unrestricted as to the non-glyphosate herbicide. Unexpected results must
also be "commensurate in scope with the degree of protection sought by the
claimed subject matter." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Regarding the Travers Declaration, the Declaration notes that
antagonism is one of the common problem encountered in the art of
controlling weeds, and that solutions to the common problems "cannot be
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predicted by those skilled in the art without carrying out experiments to
generate the relevant data [such] that development of solutions and
innovation in the art generally proceeds at the pace that experimentation
permits." (Travers Deel. i-fi-115, 16.) However, the Travers Declaration does
not provide a factual basis for this opinion. In view of the prior art's
disclosure of mixtures of herbicides discussed above, and in view of the
disclosure of the '072 patent with respect to what one of ordinary skill in the
art would have known about antagonism, Appellant's argument that one of
ordinary skill in the art would not have had a reasonable expectation of
success of producing an effective mixture of glyphosate and another
herbicide is unpersuasive.
It is also relevant that Shaner discloses the very problem and solution
that is addressed in the '072 Patent. (FF 8.) Thus, although the declarations
indicate potential problems in implementing the suggestion of Shaner, the
declarations do not provide sufficient persuasive evidence that implementing
the solution for the combinations of plant crops recited in claim 7 would
have been beyond the level of skill in the art. Appellant's arguments focus
on producing the glyphosate-tolerant plants that are the subject of the
method, rather than the mixture of herbicides used to perform the method.
Appellant argues dependent claims 9-18 and 21 under separate
headings. (App.Br. 22-24.) For at least claims 9-18, similar to the
arguments addressed above, Appellant relies on specific examples set forth
in '072 Patent for the proposition that the combinations recited in those
claims provide unexpected results in the form of a lack of antagonism. We
addressed the arguments Appellant made with respect to the general
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expectation and the nature of the strength of the unexpected results above.
We acknowledge that the Examples of the '072 Patent disclose that there is a
lack of antagonism in the combinations applied in the recited method, but for
similar reasons as stated above, we find the evidence that such results would
have been unexpected to be insufficient to overcome the evidence in favor of
obviousness of the claims.
Regarding claim 21, Appellant refers to the arguments addressed
above in order to argue that in making a mixture of herbicides prior to
applying the herbicides to the plants, there would be an increased risk of
antagonism. (App. Br. 24.) For the reasons expressed above, we are also
unpersuaded by this argument.
Claims 1, 3-5, and 25
Claims 1, 3-5, and 25 are composition claims, for which Appellant
sets forth arguments under a separate heading. (App. Br. 24--29.) In large
part, Appellant relies on similar arguments addressed above with respect to
the unpredictability of combinations of herbicides due to herbicidal
antagonism. (App. Br. 24--26, 28-29.) We are not persuaded by Appellant's
arguments for the reasons expressed above. Regarding Appellant's
arguments against the references individually, specifically, the argument that
Shaner does not disclose the specific mixtures in the claims, that Lueschen
fails to disclose the use of glyphosate or glyphosate tolerant crops, and that
Seed Today, Barry, Smith, and Patterson fail to overcome the deficiencies
thereof (App. Br. 26-27), we are not persuaded by these arguments, because
the arguments do not consider the prior art as a whole as applied by the
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Examiner. "[T]he test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art." In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellant argues also that the Examiner has not provided a sufficient
reason for selecting imazamox from Prill' s disclosure of imazapyr,
imazaquin, "and the like," in view of the additional herbicides disclosed in
Prill. (App. Br. 27-28.) In this regard, the Examiner found that Prill
discloses glyphosate formulations that can include a co-herbicide such as
water soluble salts of "imazapyr ... imazaquin ... and the like." (Ans. 5,
citing Prill p. 9, 11. 13-35.) The Examiner explained that because imazamox
is structurally homologous to the other imidazolinone herbicides, with
imazamox being structurally the same as imazapyr, with the addition of a
methoxymethyl group on the pyridine ring, the Examiner found that Prill' s
disclosure of "and the like" included imazamox recited in claims 1, 5, and
17. The Examiner further stated that it would have been obvious to
substitute equivalents known for the same purpose including compounds that
are similar in structure, which would be expected to have similar properties.
(Ans. 14.)
We are not persuaded by Appellant's argument. Appellant does not
challenge the Examiner's findings that Prill's disclosure contemplates the
imazamox. As a result, we disagree with Appellant that one of ordinary skill
in the art would be departing from the disclosure of Prill or arbitrarily
selecting imazamox as a co-herbicide with glyphosate. Thus, we agree with
the Examiner that selection of imazamox as an equivalent to the expressly
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named co-herbicides in Prill would have been obvious to one of ordinary
skill in the art.
Appellant's additional arguments regarding Prill are not persuasive, as
they focus on the individual disclosure of Prill rather than the rejection as a
whole. (App. Br. 28.)
CONCLUSION
On this record, Appellant has failed to demonstrate any error in the
Examiner's factual findings and conclusions that:
the claims would have been obvious due to the prior art lacking
enablement for a second glyphosate-tolerant plant species; and
the evidence of unexpected results is sufficient to outweigh the
evidence in favor of obviousness.
DECISION
The Examiner's decision to reject claims 1, 3-5, and 7-25 under
35 U.S.C. § 103(a) is affirmed. However, the Examiner's decision to reject
claims 1, 3, 4, and 25 under 35 U.S.C. § 102(b) is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(±).
AFFIRMED
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