Ex Parte Buschhaus

Patent Trial and Appeal Board

Jan 19, 2017

11909888 (P.T.A.B. Jan. 19, 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.
11/909,888 09/27/2007 Herbert Buschhaus 107929-0123 1449
22428 7590 01/23
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
MCCORMICK, MELENIE LEE
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
01/23/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT BUSCHHAUS
Appeal 2014-009484
Application 11/909,888
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ULRIKH W. JENKS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a method
for inhibiting mycotoxin production without reducing fungal infection. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
1 Appellant identifies the Real Party in Interest as Nippon Soda Co., Ltd.
(see App. Br. 4).
Appeal 2014-009484
Application 11/909,888
Statement of the Case
Background
“Mycotoxin, which is formed by fungi, is known to have serious
effects on the health of humans and animals . . . Therefore, it has been a
long-standing task to find how to inhibit mycotoxin production in fungi
which infect food crops” (Spec. 1:16—20).
The Claims
Claims 1, 2, 4, and 6 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A method for inhibiting mycotoxin production,
comprising reducing mycotoxin content in harvested crops
without reducing fungal infection of said harvested crops, when
fungi control is incomplete, by spraying a fungicide containing
a thiophanate-methyl agent as an active ingredient onto food
crops.
The Issue
The Examiner rejected claims 1, 2, 4, and 6 under 35 U.S.C. § 103(a)
as obvious over Cromey,2 Tuszynski,3 and Food and Environment Protection
Act4 (Ans. 2—6).
2 Cromey et al., Effects of Fungicides Applied at Anthesis on Fusarium Head
Blight andMycotoxins in Wheat, 55 New Zealand Plant Protection 341—6
(2002) (“Cromey”).
3 Tuszynski et al., US 2005/0215764 Al, published Sept. 29, 2005
(“Tuszynski”).
4 Food and Environment Protection Act, 1985, Part III Thiophanate-Methyl,
Control of Pesticides Regulations 1986, Evaluation of Fully Approved or
Provisionally Approved Products 1—170 (1992) (“Food and Environment
Protection Act”).
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Appeal 2014-009484
Application 11/909,888
The Examiner finds Cromey teaches “inhibiting Fusarium head blight
(FHB) of wheat. . . with the administration of a benzimadazole
(carbendazim)” (Ans. 3). The Examiner finds Tuszynski teaches
“interchangeability of carbendazim with a thiophanate-methyl and also
supports the explicit use of thiophanate-methyl for the same exact plant
pathogenic fungi” (Ans. 5).
The Examiner finds it obvious to “combine the agrichemicals,
methods, and teachings of Cromey with the method/treatment guidelines and
the chief agrichemical of the reference, thiophanate-methyl” (Ans. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Cromey, Tuszynski, and Food and
Environment Protection Act renders claim 1 obvious?
Findings of Fact
1. Cromey teaches “Fusarium head blight (FHB) of wheat can
cause yield losses of 30-70%. More importantly, affected grain may be less
palatable to stock than healthy grain and may contain mycotoxins” (Cromey
341, abstract).
2. Table 1 of Cromey is reproduced, in part, below:
TABLE 1: Fungicides applied to wheat for Fusarium head blight control.
Treatment Active ingredient Application rate (g ai/ha)
Bavistin DF carbendazim 250
Bavistm DF * Amistar carbendazim +- azoxystrohin 250 4-125
Twist trifloxystrobin 125
BASS 1.2 pyradostrohin + epoxiconazole rate confidential
Bavistm DF + Folicur 430SC carbendazim +- tebuconazole 250 4-189
“Treatments are listed in Table 1” (Cromey 342).
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Appeal 2014-009484
Application 11/909,888
3. Table 2 of Cromey is reproduced, in part, below:
TABLE 2: Mean Fusarium bead blight (FHB) incidence, yields, grain weights,
Fusarium incidence and mycotoxins ntvalenol (MV) and
deoxynivaienol (DON) in grain in plots that were either untreated or
treated with fungicides at mid anthesis.
Treatment Ears
with
FHB
(%
Yield
(t/ha)
Grain
weight.
(mg)
(%
Grains
with
Pmarium
NIV
(mg/kg)
'j
DON NIV +
(mg/kg) DON'
(mg/kg)
Nil fungicide 9.1 5.3 51 6.4 0.1? 0.15 0.32
Carbendazim 1,3 5.1 53 4.8 0 0 0
Carbendazim +
azoxystrobin
5,5 5.4 52 6.8 0.11 0 0.11
Trifloxvstrobin 5.0 5.1 52 9,5 0.05 0.11 0.16
BASS 12 2.0 5,2 54 9.3 0.03 0.15 0.18
Carbendazim +
tebueonazole
1.5 5.5 54 3,5 0 0,01 0.01
“Levels of the mycotoxins nivalenol (NIV) and deoxynivalenol (DON)
differed between treatments (Table 2)” (Cromey 343).
4. Cromey teaches “[gjreatest reduction of FHB [fusarium head
blight], grain Fusarium and mycotoxin levels was achieved with triazoles or
carbendazim, or a combination of these” (Cromey 345).
5. Tuszynski teaches:
For example, benzimidazole and thiophanate fungicides such as
benomyl (methyl l-(butylcarbamoyl)benzimidazol-2-
ylcarbamate), fuberidazole (2-(2'-furyl)benzimidazole),
thiabendazole (2-(4-thiazolyl)benzimidazole), carbendazim
(methyl benzimidazol-2-ylcarbamate), thiophanate-methyl
(l,2-bis( 3-methoxycarbonyl-2-thioureido)benzene, and
thiophanate (1,2-bis(3-ethoxycarbonyl-2-thioureido)benzene
are known in the art for use against plant pathogenic fungi.
(Tuszynski 1945).
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Appeal 2014-009484
Application 11/909,888
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
We begin with claim interpretation because until a claim is properly
interpreted, its scope cannot be compared to the prior art. Claim 1 requires
“reducing mycotoxin content in harvested crops without reducing fungal
infection ... by spraying a fungicide”. We interpret this limitation as
requiring that the fungicide is applied in amounts that do not detectably kill
or impede the growth of fungi infecting the crops, but the fungicide does
function to detectably reduce mycotoxin production by the fungi. Claim 1
therefore does not encompass an embodiment where an amount of fungicide
is sprayed onto the crops that is sufficient to kill or impede the growth of the
fungi, and by so doing, inherently prevents mycotoxin production because
no living or growing fungi are present.
Appellant contends the “cited references, moreover, fail to teach or
suggest the presently claimed method for inhibiting mycotoxin production,
comprising reducing mycotoxin content in harvested crops without reducing
fungal infection (without having to kill the fungi) of said harvested crops,
i.e., when fungi control is incomplete” (App. Br. 8).
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Appeal 2014-009484
Application 11/909,888
The Examiner responds “Tuszynski combined with Cromey would
still convey to the one of ordinary skill that controlled treatment with a
fungicide containing a thiophanate-methyl agent would still reasonably
occur. Whether applicants’ description is fully explained by Cromey, the
fact remains that fungi is being reduced, just not wholly” (Ans. 8).
We find that Appellants have the better position. The Examiner
identifies no specific teaching in Cromey or Tuszynski to spray with a
fungicide to reduce mycotoxin production without reducing fungal infection.
The Examiner is, essentially, contending that Cromey’s administration
of carbendazim would inherently result in reducing mycotoxin without
killing fungi. However, Table 2 of Cromey evidences that treatment of
fungicide reduced the presence of fusarium head blight from 9.1% in control
plots to either 1.3%, 5.5% or 1.5% in plots treated with carbendazim alone
or in combination with other agents (FF 3). Thus, in Cromey’s experiments,
spraying with fungicides resulted in reducing fungal infection, a result
expressly excluded by claim 1. The evidence does not, therefore,
demonstrate that spraying with a fungicide will inherently obtain the result
required by claim 1. “Inherency . . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” MEHL/Biophile Int’l. Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Cromey, Tuszynski, and Food and Environment Protection Act renders
claim 1 obvious.
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Appeal 2014-009484
Application 11/909,888
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 4, and 6 under 35
U.S.C. § 103(a) as obvious over Cromey, Tuszynski, and Food and
Environment Protection Act.
REVERSED
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