Ex Parte Cornish et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201911721861 (P.T.A.B. Feb. 19, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/721,861 07/30/2009 34947 7590 02/21/2019 LANXESS CORPORATION 111 RIDC PARK WEST DRIVE PITTSBURGH, PA 15275-1112 FIRST NAMED INVENTOR Alexander Cornish 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. POOl 00570 4024 EXAMINER PURDY, KYLE A ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 02/21/2019 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): ipmail@lanxess.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER CORNISH, ANJA GREINER, GERTRUDE KNAUF-BEITER, and JOHANN STEINER Appeal 2018-005139 Application 11/721,861 Technology Center 1600 Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and TIMOTHY G. MAJORS, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Alexander Comish, Anja Greiner, Gertrude Knauf-Beiter, and Johann Steiner ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 37, 40, 42--45, and 47. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the real party in interest as LANXESS Deutschland GmbH. Appeal Br. 3. Appeal 2018-005139 Application 11/721,861 STATEMENT OF THE CASE The Specification The claimed invention "relates to methods for the treatment of wallboards and building materials with a fungicide" and, more particularly, with "a synergistic composition comprising fludioxonil and another fungicide. Spec. 1 :4--8. According to Appellants, they found "that surprisingly fludioxonil synergises the activity of particular fungicides against certain fungi." Id. at 2: 1-2. The Rejected Claims Claims 37, 40, 42--45, and 47 are pending and rejected. Final Act. 1. Claim 37, the sole independent claim, is representative and reproduced below. 3 7. A wallboard treated with a fungicidally effective amount of a fungicide, the fungicide comprising one of: synergistically effective amounts of fludioxonil and propiconazole; or synergistically effective amounts of fludioxonil and difenoconazole. Appeal Br. 13. The Appealed Rejection The following rejection is before us for review: claims 37, 40, 42--45, and 47 under 35 U.S.C. § 103(a) as obvious over Swofford,2 Kawabe, 3 and Muller. 4 2 US 2003/0234068 Al, published Dec. 25, 2003 ("Swofford"). 3 US 2004/0229801 Al, published Nov. 18, 2004 ("Kawabe"). 4 WO 98/57 543, published Dec. 23, 1998 ("Muller"). 2 Appeal 2018-005139 Application 11/721,861 DISCUSSION The Examiner found that Swofford discloses a wallboard treated with a fungicidally effective amount of propiconazole. Final Act. 6 ( citing Swofford, at [57]). The Examiner found that Muller teaches compositions of multiple fungicides that exhibit synergistic fungicidal activity, including a preferred composition of fludioxonil and cyproconazole. Final Act. 7; see also Muller, at [57]. The Examiner found that one skilled in the art would have had a reasonable expectation that fludioxonil could be combined with other azoles, including specifically propiconazole, to obtain a similar synergism in fungicidal activity. Final Act. 7. Muller's teachings are provided in the context of protecting plants and seeds, not wallboard, from fungus. Id.; see also Muller, at [57]. However, the Examiner noted that Kawabe teaches that antifungal compositions, including those containing fludioxonil or an azole, can be used on both living and non-living material and objects that are susceptible to fungus. Final Act. 8 (citing Kawabe i-fl2 (plants and seeds), i-f53 (wallboard), i-fi-f29 and 105 (fludioxonil), and i-fi-fl9 and 104 (azoles)); see also Kawabe i-f20 ("The object can be an inorganic material or an organic material. The fungus or object can be present in the environment, in a residential, commerical [sic], industrial or community setting, or in an agricultural or horticultural setting."). The Examiner concluded: 21. [B]ased on the desire to provide optimal antifungal wallboard materials, it would have been obvious to one having ordinary skill in the art to modify the wallboard to Swofford so as to include additional fungicidal agents which were known to act synergistically with propiconazole (the fungicidal agent already present in the wallboard of Swofford). The motivation to modify is based on the desire to provide optimal antifungal 3 Appeal 2018-005139 Application 11/721,861 wallboard materials to preserve human health. Muller is relied upon to evidence that fludioxonil would be expected to act synergistically with propiconazole. While the composition of Muller (i.e. the combination of fludioxonil and propiconazole) is disclosed as being applicable to seeds, Kawabe is relied upon to show that fungicides suitable for application to living seeds (particularly fludionoxil) are also suitable for application to wallboard material. 22. Therefore, there would have been a reasonable expectation of successfully including fludionoxil in the wallboard of Swofford, in addition to the propiconazole, in order to result in the synergistic combination of fludionoxil and propiconazole suggested by Muller. Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in absence of evidence to the contrary. Final Act. 8. In their Appeal Brief, Appellants raise two issues with the rejection, as follows: The Office . . . is relying on two essentially unsubstantiated deductions: A) first, that since fludioxonil acts synergistically with cyproconazole, fludioxonil will also act synergistically with propiconazole; and B) second, that since fludioxonil and other azoles provide general anti-fungal activity when used in combination with anti-fungal peptides, the combination of fludioxonil and propiconazole ( without the peptides) will synergistically provide anti-fungal activity for wallboards. Appeal Br. 6. With respect to issue "A)," Appellants argue that "synergy is unpredictable" because "not all azole compounds will produce the same effect when combined with fludioxonil." Id. at 7 (emphasis added). But that fact does not rebut the Examiner's conclusion of obviousness. The person of ordinary skill in the art need not expect or obtain the same amount of 4 Appeal 2018-005139 Application 11/721,861 fungicidal activity when substituting fludioxonil/propiconazole for fludioxonil/cyproconazole. It is enough for the person of ordinary skill in the art to have a reasonable expectation that fludioxonil/propiconazole will exhibit synergistic fungicidal activity irrespective of the precise amount of such activity. In view of the prior art knowledge that fludioxonil/cyproconazole exhibits synergistic antifungal activity (see Muller, at [57]), a person of ordinary skill in the art would have had a reasonable expectation that fludioxonil/propiconazole would also exhibit synergistic antifungal activity because, as the Examiner notes, cyproconazole and propiconazole are both azoles, and all azoles "target the same biochemical pathway." Ans. 7. 5 With respect to issue "B)," Appellants argue that "Kawabe provides no teaching that the azoles or fludioxonil can be used for both seed and wallboard" and "in fact, teaches away from the same." Appeal Br. 10-11. Appellants further argue that Kawabe teaches that compositions of fludioxonil and an azole can be used only for agriculture and that Kawabe lists other fungicides for industrial use. Id. at 11 ( citing Kawabe ,rin 04-- 106). Appellants' characterization ofKawabe is unpersuasive. Kawabe does provide three lists of fungicides that it teaches are "suitable" for: (1) "animals ( e.g. humans) or agricultural use," (see Kawabe ,II 04 ); (2) "agricultural or horticultural use" (see id. ,II 05); and (3) "industrial, residential, community and commercial use" (see id. ,II 06). Kawabe does not explicitly mention fludioxonil or azoles in its list of fungicides "suitable" for industrial, etc. uses. See id fl 06. However, 5 Appellants did not file a Reply Brief or otherwise rebut the Examiner's assertion regarding azoles' common mechanism of fungicidal activity. 5 Appeal 2018-005139 Application 11/721,861 Kawabe does not state that the fungicides it lists as suitable for biological applications (including, for example, fludioxonil and an azole) are unsuitable for industrial use. Rather, our understanding is that Kawabe lists additional fungicides that are suitable for industrial use because no harm to life can occur. That list includes, for example, bleach, detergents, and wood preservatives. Id. ,II 06. Our understanding is consistent with a prior finding from a related case. See In re Cornish, No. 2013-010114 (PTAB June 2, 2016), at 4 (In view of Payne (WO 03/104583 Al, published Dec. 18, 2003), "it would have been reasonably expected that fungicides effective in agriculture could also be used on wall board and other materials."). Appellants failed to identify the Cornish decision or the underlying application (i.e., No. 11/721,872) in the required "Related Appeals and Interferences" section of the Appeal Brief. See Appeal Br. 4 ("Appellant is unaware of any related appeals, interferences, or trials which directly or indirectly affect the present appeal."). The failure to identify the Cornish decision as a related appeal is directly at odds with ( 1) Appellants' argument that the Cornish decision supports their present appeal (see Appeal Br. 9); and (2) the fact that the claims at issue in the Cornish decision were provisionally rejected for obviousness-type double patenting over claims of the instant application, and the Cornish decision summarily affirmed the provisional rejection (see Cornish 2). In any event, the Cornish decision does not support reversal here. In the Cornish decision, the Board agreed with the Examiner that the claims were primafacie obvious over the prior art presented. 6 See Cornish 4--5. 6 Neither the claims nor the prior art in the Cornish decision were the same as in the instant case. 6 Appeal 2018-005139 Application 11/721,861 The Board, however, ultimately reversed the rejection of the claims as obvious because appellants had shown unexpected results sufficient to outweigh the evidence of obviousness on that record. See id. at 5-7. Here, Appellants have not shown unexpected results. The fungicidal synergism resulting from treating wallboard with fludioxonil and propiconazole would have been expected in view of the prior art. See, e.g., Muller, at [57] (teaching "synergistically enhanced action" with fludioxonil and cyproconazole ); Ans. 7 (Examiner's unrebutted finding that all azole fungicides, including propiconazole, target the same biochemical pathway); see also Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014) ("To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention."). For the forgoing reasons, we affirm the rejection of claim 37 as unpatentable over Swofford, Kawabe, and Muller. Because claims 40, 42- 45, and 47 were not separately argued, we also affirm their rejection over the same references. See 37 C.F.R. § 4I.37(c)(l)(iv). DECISION The Examiner's rejection of claims 37, 40, 42--45, and 47 is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation