Ex Parte Allen et al

Patent Trial and Appeal BoardNov 8, 2016

11792445 (P.T.A.B. Nov. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111792,445 0610612007 34469 7590 11/10/2016 BA YER CROPSCIENCE LP Patent Department 2 T .W. ALEXANDER DRIVE, P.O. Box 12014 RESEARCH TRIANGLE PARK, NC 27709 FIRST NAMED INVENTOR Jayla R. Allen 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. CS8441US 3511 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 11/10/2016 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): uspoccs@bayer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JA YLA R. ALLEN and MARK D. PARRISH Appeal2015-004100 Application 11/792,445 Technology Center 1600 Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and RACHEL H. TOWNSEND, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. Â§ 134 involving a method of improving yields in crops by applying isoxadifen. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Statement of the Case Background "The invention relates to the technical field of crop protection products, in particular safeners and safeners in combination with herbicides 1 Appellants identify the Real Party in Interest as the Bayer CropScience, LP (see App. Br. 2). Appeal2015-004100 Application 11/792,445 which are suitable for use against competing harmful plants in crops of useful plants" (Spec. i-f 1 ). The Claims Claims 1-22 are on appeal. Claims 1 and 10 are representative and reads as follows: 1. A method of improving yields in crops of useful plants in need of yield improvement, consisting essentially of applying a yield-improving amount of isoxadifen or an ester thereof, alone, to the plants, parts of plants, plant seeds or the area under cultivation. 10. A method of improving yields in crops of useful plants in need of yield improvement, comprising applying a yield- improving amount of isoxadifen or an ester thereof and one or more herbicides and/or insecticides to the plants, parts of plants, plant seeds or the area under cultivation. The Issues A. The Examiner rejected claims 10-18 and 21under35 U.S.C. Â§ 102(b) as anticipated by Willms2 (Final Act. 2-3). B. The Examiner rejected claims 10-19 and 21under35 U.S.C. Â§ 102(b) as anticipated by Ziemer3 (Final Act. 4 ). C. The Examiner rejected claims 1---6, 19, 20, and 22 under 35 U.S.C. Â§ 103(a) as obvious over Willms (Final Act. 5-8). D. The Examiner rejected claims 7-9 under 35 U.S.C. Â§ 103(a) as obvious over Willms and Comes4 (Final Act. 8-9). 2 Willms et al., US 5,516,750, issued May 14, 1996 ("Willms"). 3 Ziemer et al., US 2004/0106518 A 1, published June 3, 2004 ("Ziemer"). 4 Comes et al., US 6,376,424 Bl, issued Apr. 23, 2002 ("Comes"). 2 Appeal2015-004100 Application 11/792,445 E. The Examiner rejected claim 22 under 35 U.S.C. Â§ 103(a) as obvious over Ziemer (Final Act. 9-10). A. and B. 35 U.S.C. Â§ 102(b) over Willms or Ziemer The Examiner finds Willms teaches "the safener effect of isoxadifen- ethyl in combination with an herbicide (3-( 4,6-dimethoxypyrimidin-2-yl)-1- (3-N-methyl-sulfonyl-Nmethylaminopyridin-2-yl)sulfonylurea in maize" (Final Act. 3). The Examiner finds that "any effects of isoxadifen-ethyl on crop yield must necessarily be present" (id.). The Examiner similarly finds that Ziemer teaches "application of 0.03 kg a.i./ha isoxadifen-ethyl with 0.288 kg a.i./ha dicamba and 0.112 kg a.i./ha diflufenzopyr reduced injury in maize" (Final Act. 4). The issue with respect to this rejection is: Does the evidence of record support the Examiner's finding that claims 10 and 21 are anticipated by Willms or Ziemer? Findings of Fact 1. Willms teaches preparation of ethyl 5,5-diphenyl-2-isoxazoline- 3-carboxylate as preparation 1, an isoxadifen compound (see Willms 18:23- 36). 2. Willms teaches "[ m ]aize plants are grown in the greenhouse in plastic pots until they have reached the 4-leaf stage or the 6-leaf stage and treated with a tank mix composed of a herbicide and compounds of the formula (I) according to the invention" (Willms 25:38--41). 3 Appeal2015-004100 Application 11/792,445 3. Table 5 of Willms is reproduced, in part, below: TABLE 5 E~ t of the compounds according to doc iswemion ~------on~~ n~w-'~a p_l.a:_nt_s ___ ~--- Subsi.ances Herlri cide/safene.r H~ +No. 1 Herbicklal activ:ky in: nlfilze (in %) kg AS/h.a 4~1eaf stage 0.200 Tl 0.100 70 0.050 63 0,025 33 0.200 0.200 5 OJOO 0.100 0 0.050 0.050 0 0.025 0.025 0 83 73 6(l 40 w 0 Q 0 "The test results, shown in Table[] 5 ... demonstrate that the compounds according to the invention can prevent damage to plants in a highly efficient manner" (Willms 25:38-50). 4. Ziemer teaches "safener (lb) is ethyl 5,5-diphenylisoxazoline-3- carboxylate" (Ziemer i-f 112). 5. Table 1 of Ziemer is reproduced, in part, below: A;;;:ti.'-'C fogredicnts (IH-<1) {lH"J) + (i.b) {B1~2) (B:t-2) + Ob) . ~ . ''I' AJ> Â·1Â· I'' Â·1 . . ~:-\__ ) . __.. ~~- ... Appli.ci.~tf on Tt'!te g a~ L/ha 10 JD +Â· 60 30 30 + 30 ' ' (288 Â·+ 112.) ,, .. Â· (282 + 112) + 30 42D .18 lO 3~ 15 21 22 :U "In a series of trials the ability of herbicides to be safened by safener (lb) was evaluated. The results are summarized in Table[] 1" (Ziemer i-f 158). 4 Appeal2015-004100 Application 11/792,445 Principles of Law Anticipation under 35 U.S.C. Â§ 102 requires that "'each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference."' In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Analysis Appellants contend: There is no teaching or suggestion in the reference of a method of improving yields in crops of useful plants in need of yield improvement, i. e., plants that have somehow been compromised, as recited in the claims, comprising applying a yield-improving amount of isoxadifen or an ester thereof and one or more herbicides and/or insecticides to the plants, parts of plants, plant seeds or the area under cultivation. (App. Br. 15; cf App. Br. 17). Appellants contend that "[c]onventional safening methods as taught by the reference serve to protect a plant against damage, and while maintaining plant foliage and structural integrity, does not inherently increase crop yield; i. e., the amount of harvestable fruit produced" (App. Br. 16; cf App. Br. 17). We find these arguments unpersuasive because both Willms and Ziemer teach performance of the only step of claims 10 and 21, applying isoxadifen and an herbicide to plants (FF 1 ). Both Willms and Ziemer teach that the combination reduces injury to maize (FF 3, 5). Finally, the amounts used in the examples of Willms (25 to 200 g) and Ziemer (30 to 100 g) fully fall within the 10 g to 3 kg range disclosed by claim 14, dependent upon claim 10. 5 Appeal2015-004100 Application 11/792,445 Having demonstrated that Willms and Ziemer apply a composition within the scope of the claims to a useful plant, maize, within the scope of the claims and Specification (titled "Methods for increasing maize yields"), the Examiner reasonably finds that any yield improvement represents an inherent result of performing the same process (see Final Act. 3--4). A prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Just as the functional preamble in Cruciferous Sprout requiring "'preparing a food product rich in glucosinolates'" was anticipated by an identical prior art process of growing sprouts, the process of either Willm[ s] or Ziemer of contacting plants with isoxadifen and an herbicide is identical in process to claims 10 and 21 and therefore, inherently satisfies the functional preamble of claims 10 and 21 requiring "improving yields". "Newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent." Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). Conclusion of Law The evidence of record supports the Examiner's finding that claims 10 and 21 are anticipated by Willms or Ziemer. C. 35 U.S.C. Â§ 103(a) over Willms The Examiner finds that Willms teaches "a method of protecting crops, including maize against phytotoxic side-effects of crop protection products, comprising applying an effective amount to the plants, seeds or area under cultivation before, after or simultaneously with the active 6 Appeal2015-004100 Application 11/792,445 substances" (Final Act.. 6). The Examiner finds "Willms teach the compounds of formula ( 1 ), which encompasses isoxadifen, may be used to reduce or prevent phytotoxic side-effects of herbicides and insecticides on the crop plants" (id.). The Examiner finds it obvious "to add isoxadifen alone because Willms et al. teaches applying the isoxazolines compounds alone to plants, including maize, before or after the application of other active plant protection substances. Therefore, it would have been prima facie obvious to apply isoxadifen alone to crop plants, including maize." (Id. 7). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Willms renders claims 1---6, 19, 20, and 22 obvious? Findings of Fact 6. Willms teaches: a method of protecting crop plants ... against phytotoxic side- effects of crop protection products, such as herbicides, insecticides and fungicides, which comprises applying an effective amount of at least one compound of the formula (I) or a salt thereof to the plants, the seeds of the plants or the area under cultivation, before, after or simultaneously with the active substances in question. (Willms, 8:62 to 9:3). 7. Willms teaches nicosulfurun herbicides (Willms 12: 13). 8. The Specifciation teaches that "[i]soxadifen alone or when combined with at least one herbicide according to the methods of the present invention is suitable for improving crop yield in a number of crop plants, for 7 Appeal2015-004100 Application 11/792,445 example in economically important crops such as cereals wheat, barley, rice, maize and sorghum" (Spec. i-f 4 7). Principles of Law "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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability." Id. at 417. Analysis Claims 1-6 and 20 Appellants contend that the "Willms et al. reference is drawn to the use of substituted isoxazolines as safeners in combination with plant treatment products, in particular, herbicides. The reference does not address the treatment of plants in need of yield improvement, as in the method of the present invention" (App. Br. 9). Appellants contend that "[ w ]hen isoxadifen is applied 'alone' to a plant in the method of the present invention, it is added by itself without any prior, simultaneous, or subsequent application of an herbicide or pesticide, contrary to the Examiner's understanding of 'alone"' (App. Br. 9-10). We find Appellants' claim interpretation argument unpersuasive. In particular, claim 1 requires a process of "applying a yield-improving amount of isoxadifen ... alone". Claim 4 clarifies that such amounts may encompass at least the range of 0.001 kg to 5 kg per hectare. The Specification does not define the term "alone" as excluding prior or subsequent administration of a different compound to the crop, nor does 8 Appeal2015-004100 Application 11/792,445 the Specification identify this as a basic and novel characteristic of the method. Indeed, all three tables use isoxadifen in combination with the herbicide dicamba (see Spec. i-fi-175, 77, 88). Therefore, absent a clear indication in the Specification or claims of the basic and novel characteristics of the claimed method, the term "consisting essentially of' is reasonably construed as equivalent to "comprising" insofar as it reasonably encompasses methods in which an herbicide or insecticide is administered prior to or after administration of isoxadifen. And the word "alone" simply excludes concurrent administration. See PPG Industries v. Guardian Industries Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998). ("By using the term 'consisting essentially of the drafter signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention.") See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) ("[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed .... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.)" Willms teaches "applying an effective amount of at least one compound of the formula (I) or a salt thereof to the plants, the seeds of the plants or the area under cultivation, before, after or simultaneously with the active substances in question" (FF 6). We agree with the Examiner that Willms' suggestion reasonably renders it obvious to apply the isoxadifen 9 Appeal2015-004100 Application 11/792,445 compound "alone" and apply other active substances such as herbicides or insecticides before or after application of isoxadifen (see Ans. 2-3). We also find the argument regarding "yield improvement" unpersuasive. As already noted, the ordinary artisan would reasonably expect that administration of the same compound, isoxadifen, to the same crop, maize, in overlapping amounts (see FF 3, 5; instant claim 4) would inherently satisfy the functional preamble requiring "improving yields". "We have recognized that inherency may supply a missing claim limitation in an obviousness analysis." PAR Pharm., Inc. v. TWI Pharm., Inc., 173 F.3d 1186, 1194 (Fed. Cir. 2014). "[O]ur early precedent, and that of our predecessor court, established that the concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the 'natural result' of the combination of prior art elements." Id. at 1195. Here, Appellants provide no evidence that the limitation of "improving yields" is not the natural result of applying isoxadifen. By contrast, the evidence in Willms is that isoxadifen treatment, in combination with an herbicide, results in reduction of herbicidal damage from a high of 83% to a low of 0%, a result reasonably expected to improve yields (FF 3; cf Ans. 4). Claims 19 and 22 Appellants contend that "the Examiner's assertion that protecting against plant damage would inherently increase crop yield is unfounded. Protecting a plant against damage by application of a safener is not the same as increasing crop yield and would not inherently lead to increased crop yield" (App. Br. 12). 10 Appeal2015-004100 Application 11/792,445 We do not find this argument persuasive. As already discussed, Willms demonstrates that treatment with isoxadifen is identical to that required by the claim. Because "[p ]roducts of identical chemical composition can not have mutually exclusive properties" In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990), we agree with the Examiner's logic that because "the method steps of the present invention and the invention of Willms et al. are the same and Willms et al. teaches that isoxadifen was known to protect crops, a yield improvement in useful plants would naturally flow." (Ans. 4). Appellants provide no evidence supporting their position, only attorney argument. However, "attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Conclusion of Law The evidence of record supports the Examiner's conclusion that Willms renders claims 1---6, 19, 20, and 22 obvious. D. 35 U.S.C. Â§ 103(a) over Willms and Cornes Appellants do not separately argue that the Examiner's reliance on Comes is incorrect, but reiterate their argument that "[ n ]either reference addresses a method of improving yields in crops of useful plants in need of yield improvement" and the argument that "isoxadifen is applied alone to a plant" (App. Br. 14). We remain unpersuaded for the reasons already discussed above. 11 Appeal2015-004100 Application 11/792,445 E. 35 U.S.C. Â§ 103(a) over Ziemer Appellants reiterate the argument that "[ o ]ne skilled in the art seeking to treat plants in need of yield improvement would not reasonably look to Ziemer et al. for guidance because the problem is not considered by the reference" (App. Br. 19). We remain unpersuaded for the reasons given above. We note that claim 22 recites a single step of applying isoxadifen and an insecticide to plants and Ziemer teaches the "active components of the combination can be applied simultaneously or in sequential order in pre- or postemergence application" (Ziemer i-f 48) and that "pesticides which can be combined with the invention combination are for example: Insecticides" (Ziemer i-fi-150-52). Thus, Ziemer expressly suggests application of isoxadifen with insecticides and any resultant yield improvement represents an inherent result. Bristol-Myers Squibb Co., 246 F.3d at 1376. SUMMARY In summary, we affirm all of the rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 12