Ex Parte Cornish et al

Patent Trial and Appeal Board

Feb 19, 2019

11721861 (P.T.A.B. Feb. 19, 2019)

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").
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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
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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
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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.
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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.
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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
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