Ex Parte Asrar et al

Patent Trial and Appeal Board

Nov 28, 2012

11028782 (P.T.A.B. Nov. 28, 2012)

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.
11/028,782 01/04/2005 Jawed Asrar 36623/09000-CON 4149
27530 7590 11/28/2012
Nelson Mullins Riley & Scarborough LLP
IP Department
100 North Tryon Street
42nd Floor
Charlotte, NC 28202-4000
EXAMINER
HOLT, ANDRIAE M
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
11/28/2012 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 JAWED ASRAR and
FRANK C. KOHN
__________

Appeal 2012-000426
Application 11/028,782
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
for reducing plant pest damage. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that “treatment of unsown plant seeds
with a composition that includes a specific combination of insecticides not
only protects the seeds themselves, but -- surprisingly -- also provides post-
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Application 11/028,782

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emergent control of pests that feed on or otherwise damage the shoots and/or
foliage of the plant” (Spec. 7:8-13).
Claims 1-13 and 25 are on appeal. Claim 1 is representative and reads
as follows:
1. A method for reducing damage by a pest to a seed and/or shoots
and foliage of a plant grown from the seed, the method comprising treating
the unsown seed with a composition comprising clothianidin and at least one
synthetic pyrethroid in an amount between about 0.01 and about 40% of the
weight of the seed, wherein the weight ratio of the clothianidin to the
synthetic pyrethroid is from about 1:1 to about 1:6.

Issue
The Examiner has rejected claims 1-13 and 25 under 35 U.S.C.
§ 103(a) as obvious in view of Tetsuo1 and Lee.2 Appellants do not dispute
that the references support a prima facie case of obviousness (see Appeal Br.
6) but argue that it is rebutted by the evidence of unexpected results
presented in the Specification (id. at 6-8). The Examiner acknowledges that
the Specification shows a synergistic interaction between one pair of
compounds encompassed by the claims but argues that the evidence is not
commensurate with the scope of the claims (Answer 9-10).
The issue presented is: Have Appellants provided evidence of
unexpected results that is commensurate with the scope of the claims?

1 Tetsuo, JP 05-279211, Nov. 26, 1993.
2 Lee et al., WO 9935913, July 22, 1999.
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Findings of Fact
1. We adopt the Examiner’s findings regarding the scope and content
of the prior art (Answer 5-8).
2. The Specification provides an example showing “corn seed
treatment with a combination of tefluthrin and clothianidin against plant
damage by black cutworm” (Spec. 31:11-13).
3. Tefluthrin is a synthetic pyrethroid (id. at 9:9-10, 30). RAZE is a
commercial formulation containing 26.8% tefluthrin (id. at 31:14-15).
4. The Specification discloses that seeds were treated with tefluthrin
at 100, 200 or 300 gm/100 kg seed, or with clothianidin at 50 or 100 gm/100
kg seed, or with each combination of these amounts of tefluthrin and
clothianidin (id. at 32, Table 3).
5. The Specification discloses that the “combination of
RAZE/Clothianidin showed synergy against damage to plants by black
cutworm at every level of the combination tested” (id. at 33:4-6).
6. Iwamura3 discloses that the “pyrethroids are a class of insecticides
from a plant source. Recently, a number of synthetic analogs have been
developed that are effective not only against household but also against
agricultural pest insects.” (Iwamura 310, right col.)
7. Iwamura discloses that the “principal target site of [pyrethroids and
DDT analogs] is believed to be the axonal membrane of the nervous system
of insects, inhibiting the closing mechanism of the Na+ channel” (id.).

3 Iwamura et al., Quantitative Structure-Activity Relationships of
Insecticides and Plant Gowth Regulators: Comparative Studies toward
Understanding the Molecular Mechanism of Action, 61 ENVIRONMENTAL
HEALTH PERSPECTIVES 307-320 (1985).
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8. Martinez-Torres4 discloses that the “voltage-gated sodium channel
is the primary target site of DDT and pyrethroid insecticides” (Martinez-
Torres, abstract).
10. Narahashi5 discloses that “[d]epending on the type of pyrethroid,
repetitive discharges and/or conduction block are observed in various
regions of the nervous system” (Narahashi, abstract).
11. Narahashi discloses that “[b]oth types of action are ascribed to
modifications of nerve membrane sodium channels which result in very slow
gating kinetics” (id.).
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art (Answer 5-8) and agree with his conclusion that the methods of
claims 1-13 and 25 would have been prima facie obvious in view of the cited
references. Appellants have not presented arguments to dispute the prima
facie case.
Appellants argue, however, that the Specification provides evidence
of unexpected results that is sufficient to rebut the prima facie case of
obviousness (Appeal Br. 6-8); specifically, that the combination of

4 Martinez-Torres et al., A sodium channel point mutation is associated with
resistance to DDT and pyrethroid insecticides in the peach-potato aphid,
Myzus persicae (Sulzer)(Hemiptera:Aphididae), 8 INSECT MOL. BIOL. 339-
346 (1999).
5 Narahashi, Cellular and molecular mechanisms of action of insecticides:
neurophysiological approach, 4 NEUROBEHAV. TOXICOL. TERATOL. 753-758
(1982).
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clothianidin and tefluthrin shows synergistic results in protecting corn plants
from black cutworm damage (id. at 6).
The Examiner acknowledges that the Specification’s Table 3 shows
synergistic insecticidal results for the combination of tefluthrin and
clothianidin (Answer 9). The Examiner argues, however, that the evidence
of synergy is not commensurate in scope with the claims because “tefluthrin
is only one species in a broad genus of synthetic pyrethroid compounds. A
single species cannot show purported unexpectedness of an entire genus,
which encompasses numerous structurally divergent compounds.” (Id.) The
Examiner reasons that the single species of pyrethroid tested does not show
that “the entire genus would produce the purported synergism when
combined with clothianidin” (id.).
In response, Appellants argue that “members of the genus of synthetic
pyrethroids act as insecticides in the same manner by modulating the gating
mechanism of sodium ion channels of target insects” (Appeal Br. 7), and
point to Narahashi, Martinez-Torres, and Iwamura as evidence supporting
their position (id. at 7-8). Appellants argue that “despite the differences in
the make-up of the various synthetic pyrethroids, all synthetic pyrethroids
act against insects and pests in the same manner…. Accordingly, tefluthrin,
a synthetic pyrethroid, is a proper representative compound.” (Id. at 8.)
We conclude that Appellants have provided a reasonable basis,
supported by evidence, to expect that the synergistic results observed with
the combination of clothianidin and tefluthrin would also be expected for
other synthetic pyrethroids, since the basis of the insecticidal activity of such
compounds results from their binding to and interfering with sodium
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channels (FFs 6-11). Given that the pyrethroids recited in the claim act in
the same way, despite structural differences, the Examiner has not explained
why structural differences between synthetic pyrethroids would lead a
skilled worker to expect different results when combining pyrethroids other
than tefluthrin with clothianidin.
That is, the Examiner has provided no persuasive basis for concluding
that other pyrethroid/clothianidin combinations encompassed by the claims
would not behave similarly to the tested tefluthrin/clothianidin combination.
See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with [the] scope of the
claims.”).
Conclusion of Law
Appellants have provided evidence of unexpected results that is
commensurate with the scope of the claims. We therefore reverse the
obviousness rejection of independent claims 1 and 25 and dependent claims
2-13 in view of Tetsuo and Lee.
SUMMARY
We reverse the rejection of claims 1-13 and 25 under 35 U.S.C.
§ 103(a).
REVERSED
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