Ex Parte Angst et al

Patent Trial and Appeal Board

Dec 8, 2017

11569165 (P.T.A.B. Dec. 8, 2017)

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.
11/569,165 06/30/2008 Max Angst 70475 5692
26748 7590 12/12/2017
Syngenta Crop Protection LLC
Patent Department
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
EXAMINER
KOSAR, AARON J
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
12/12/2017 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):
global.patents @ syngenta. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAX ANGST, ELMAR KERBER, and
ADEL MORCOS1
Appeal 2016-006761
Application 11/569,165
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a method of reducing plant damage by Nematoda by treating either the
seed, soil, or growing plant with a combination of abamectin and a chelating
agent. The Examiner rejects the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Syngenta Crop
Protection. Br. 3.
Appeal 2016-006761
Application 11/569,165
STATEMENT OF THE CASE
Claims 1—3, 7, and 21 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief.2 Claim 1 representative of the claims on
appeal, and reads as follows:
1. A method of reducing damage to plant propagation material
and plant organs which grow at a later time by a representative
of the class Nematoda, which method comprises
(i) sowing or planting plant propagation material treated with (A)
a chelating agent and (B) abamectin before the material is sown
or planted, or
(ii) applying (A) a chelating agent and (B) abamectin to the locus
of the material or the treated material defined in (i)
before its planting,
and/or at its planting
and/or during its growth;
and reducing damage to the treated plant propagation material
and plant organs which grow at a later time, wherein the chelating
agent is an amino polycarboxylic acid and provided, when the
chelating agent is metallated, the metal is Fe[].
Br. 21 (Claims Appendix) (formatting and emphasis added).
2 Claims 25 and 27—29 are withdrawn because they are directed to a non-
elected invention. See Final Act. 2; see Br. 3. Appellants elected “iron
chelate” as the chelating or metallated chelating agent and “abamectin” as
the macrocyclic lactone or pesticide/nematicide. See Response filed June
22, 2009.
2
Appeal 2016-006761
Application 11/569,165
Appellants request review of the Examiner’s rejection of claims 1—3,
7, and 21 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over McSorley3
in view of Fischer,4 Yamashita,5 Parker,6 and Haertl.7
The Examiner finds that “McSorley teaches applying a nematicide, a
chelate, or a combination thereof to a plant material. McSorley also teaches
the species of nematicide, ethoprop, and the species of chelate, Fe-EDDHA
(e.g. the material sold under the tradename SEQUESTRENEtm).” Final
Act. 3. The Examiner acknowledges that “McSorley and the instant claims
differ in that the reference teaches ethoprop and iron EDDHA chelate,
however, does not expressly recite (anticipate) combinations with (1)
abamectin or with (2) chelates other than with EDDHA, or plants other than
banana/plantain.” Id. at 4. The Examiner’s rationale for concluding that the
claims are obvious is that Fischer teaches “that ethoprop (ethoprophos) and
abamectin (avermectin) were [art] recognized as equivalent nematocides . . .
[and, therefore,] it would have been obvious to have substituted among, or
added to the composition of McSorley, the respective equivalents
(nematocides or chelates) to arrive at a nematocide-metal chelate
combination.” Ans. 2—3.
Appellants contend that “McSorley suggests to one skilled in the art
that the combination of the synthetic pesticide ethoprop with Fe-EDDHA
3 Robert McSorley & Jorge L. Parrado, Population Fluctuations of Plant-
Parasitic Nematodes on Bananas in Florida, 94 Proc. Fla. State Hort.
Soc. 321-23 (1981) (“McSorley”).
4 Fischer et al., US 6,569,810 Bl, issued May 27, 2003 (“Fischer”).
5 Yamashita, US 5,797,976, issued Aug. 25, 1998 (“Yamashita”).
6 Parker, US 2004/0062785 Al, published Apr. 1, 2004 (“Parker”).
7 E. J. Haertl, Metal Chelates in Plant Nutrition, 11 Agr. and Food. Chem.
108-11 (1963).
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Appeal 2016-006761
Application 11/569,165
chelating agent does not provide any statistically beneficial effect when
attempting to control plant-parasitic nematodes on bananas and plantains.”
Br. 14. Appellants contend that “Fischer does not suggest to one skilled in
the art that ethoprop and abamectin are ‘equivalent].Br. 17.
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that the combination of references teaches
applying a combination of a chelating agent and abamectin onto plant
material in order to “reduc[e] damage to the treated plant propagation
material and plant organs which grow at a later time” as claimed?
Findings of Fact
FF1. McSorley teaches treating planted bananas with a combination of
“ethoprop at 6.0 g ai/mat + iron chelate at 85 g/mat.” McSorley 321.
“[EJthoprop (Mocap® 10G), the only nematicide currently registered
for postplant nematode control on bananas and plantains in Florida.”
Id.
FF2. McSorley teaches including iron chelate (Sequestrene 138 Fe Iron
Chelate®) “as a treatment to determine if plant yields would be
further enhanced by adding a critical micronutrient in combination
with the nematicide.” Id.
FF3. McSorley teaches that “[treatment of individual mats with ethoprop
at either 6.0 g ai /mat every 6 months or 3.0 g ai/mat every 3 months
failed to significantly reduce populations of either nematode genus in
soil or roots compared to untreated controls.” Id. (emphasis omitted).
Table 1, reproduced blow, shows the effect of treatment on banana
plants.
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Appeal 2016-006761
Application 11/569,165
Treatmen i Yield per mat (kg)fc
Ethoprop (3.0 g ai/mat)
Ethoprop (6.0 g ai/rnai)
Control + Iran chelate
Ethoprop (6,0 g ai/mar) 4-
Imn chelate i'85 g/mat) 31.1 a
Control ' ' 13.0 a
Ethoprop (3,0gai/mat) +
Iron chelate (85 g/mat) 14.3 a
Id. at 322. “Although ineffective here, ethoprop had shown some
reductions in nematode populations in a previous test conducted on
Rockdale soil, although these were not consistent.... However, on
other soil types in Australia, use of ethoprop has led to increased
yields of banana, even at 2.0 g ai/mat.” Id.
FF4. McSorley teaches that “[i]f an effective nematicide were available, the
optimum time for application on bananas and plantains would
probably be immediately after the rainy season, since nematode
populations are at their highest points, leaching of materials would be
minimized, and plant vigor will be lowest in the coming months.” Id.
at. 323.
FF5. Fischer teaches insecticides/acaricides/nematicides that include
abamectin and ethoprophos among others. Fischer 40:26—27 & 46.
FF6. Yamashita teaches complexing agents such as “[cjitric acid; Ca, K, Na
and ammonium lignosulfonates, fulvic acid, ulmic acid, humic acid,
Katy-J, EDTA, EDDA, EDDHA, HEDTA, CDTA, PTPA, [and]
NTA.” Yamashita 8:40-43.
FF7. Parker teaches that suitable chelating agents include succinic acid,
ethionine, ethylenediamine (EDA), ethylenediaminediglutaric acid
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Application 11/569,165
(EDDG), and ethylenediaminedi(hydroxyphenylacetic acid (EDDHA)
among others. Parker 112.
FF8. Haertl teaches that the use of metal chelates “ha[s] proved to be
beneficial in the treatment of some metal deficiencies and for
stimulation of growth.” Haertl 111.
Principle of Law
Where claimed subject matter has been rejected as
obvious in view of a combination of prior art references, a
proper analysis under § 103 requires, inter alia, consideration
of two factors: (1) whether the prior art would have suggested
to those of ordinary skill in the art that they should make the
claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would also have revealed
that in so making or carrying out, those of ordinary skill would
have [had] a reasonable expectation of success. Both the
suggestion and the reasonable expectation of success must be
founded in the prior art, not in the applicant’s disclosure.
In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (citation omitted).
Analysis
After considering the evidence and the arguments, we conclude the
weight of the evidence favors the Appellants. Although we agree with the
Examiner that McSorley teaches applying a nematicide and an iron chelating
agent onto plant propagating material (see FF1 & FF2), the reference does
not suggest that combining the substances would be effective at reducing
damage to the plant propagation material. FF3. Indeed, McSorley teaches
that the combination does not reduce the nematode population associated
with banana plants. See FF3 (“[treatment of individual mats with ethoprop
at either 6.0 g ai /mat every 6 months or 3.0 g ai/mat every 3 months failed
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Application 11/569,165
to significantly reduce populations of either nematode genus in soil or roots
compared to untreated controls”).
In order to find obviousness, “[b]oth the suggestion and the
reasonable expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” Vaeck, 947 at 493. Simply because McSorley
teaches applying nematicide and an iron chelating agent onto plant
propagation material does not mean that the reference provides a reasonable
expectation of success, at least not with the use of ethoprop as disclosed.
See FF3. Rather, McSorley’s disclosure showing that the combination of
nematicide and iron chelator did not reduce nematode populations
constitutes a teaching away, and is not a motivation to use the combination.
At best, McSorley suggests the timing for the application of the nematicide
to banana plants: McSorley teaches that if a suitable nematicide8 is found,
then the optimal application of the nematicide is most likely right after the
rainy season. FF4.
We understand that Fischer lists abamectin and ethoprophos as known
insecticides/acaricides/nematicides among others. FF5. Fischer, however,
does not teach that abamectin is effective at reducing damage in plant
propagating material. Without a teaching that the application of a
nematicide and an iron chelating agent reduces damage in plant propagating
material, the skilled artisan would not have had reason to substitute other
nematicides for the ethoprop taught by McSorley. We are, therefore, not
8 We understand that ethoprop has been shown to increase banana yields in
some soil types but the use of ethoprop alone in a different setting does not
provide a reasonable expectation that the combination with an iron chelator
would be successful, particularly as McSorley shows this combination is
ineffective. See FF3.
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Application 11/569,165
persuaded by the Examiner’s conclusion that it would be obvious to
substitute one nematicide for another to arrive at the instantly claimed
method at reducing damage to plant propagating material using abamectin.
The Examiner’s reliance on Yamashita, Parker, and Haertl to teach
other iron chelating agents (see FF6—FF8) is of no avail because none of
these references address the issue of reducing damage to plant propagating
material by nematodes.
In summary, the Examiner has not provided evidence sufficient to
support a conclusion that the cited references disclose or suggest all of the
limitations of claim 1 such that a person of ordinary skill in the art would
have considered it obvious to combine the disclosed elements in the manner
claimed. We, therefore, reverse the rejection of claim 1, as well as
dependent claims 2, 3, 7, and 21.
REVERSED
8