Ex Parte Angst et alDownload PDFPatent Trial and Appeal BoardDec 8, 201711569165 (P.T.A.B. Dec. 8, 2017) 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. 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). 3 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. 4 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 5 Appeal 2016-006761 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 6 Appeal 2016-006761 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. 7 Appeal 2016-006761 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 Copy with citationCopy as parenthetical citation