Ex Parte Cush et al

Patent Trial and Appeal Board

Dec 12, 2017

13821183 (P.T.A.B. Dec. 12, 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.
13/821,183 06/06/2013 Randall Charles Cush 72861-US-REG-ORG-P-1 6849
26748 7590 12/14/2017
Syngenta Crop Protection LLC
Patent Department
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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 RANDALL CHARLES CUSH, GEORG RUDIGER KOTZIAN,
CHRISTIAN POPP, and KRYSTYNA OPALSKI1
Appeal 2016-008616
Application 13/821,183
Technology Center 1600
Before RICHARD J. SMITH, TIMOTHY G. MAJORS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
of indicating the locus of glyphosate treatment. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Background
“The present invention relates to the use of a branched-chain alcohol
ethoxylate adjuvant as a rapid visual indicator of a locus of herbicidal
treatment.” (Spec. 1,11. 3—4.)
1 According to Appellants, the real party in interest is Syngenta Crop
Protection, LLC. (Appeal Br. 3.)
Appeal 2016-008616
Application 13/821,183
“Glyphosate is a well-known established broad-spectrum non-specific
herbicide. Routinely formulations comprising glyphosate are applied by
spray to the foliar tissue of unwanted plants and although glyphosate
provides highly effective control of such unwanted plants, its uptake into the
plants is relatively slow. Consequentially, visual symptoms of phytotoxicity
or bumdown are also delayed and typically do not appear until 7 to 10 days
after treatment.” (Id. at 11. 7—12.)
Claims on Appeal
Claims 7—9 and 12 are on appeal. (Claims Appendix, Appeal Br. 18—
19.) Claim 7, the only independent claim on appeal, is illustrative and reads
as follows:
7. A method of indicating the locus of glyphosate treatment, said method
comprising
applying a branched chain alcohol ethoxylate in admixture with
glyphosate to unwanted plants at a locus at which the unwanted plants are
growing, and
visually assessing said locus within a time period of less than 5 days
after treatment,
wherein the presence of plants exhibiting visual symptoms of
phytotoxicity is indicative that said locus has been treated with a
composition comprising glyphosate.
Examiner’s Rejection
Claims 7—9 and 12 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Warner.2 (Final Act. 2-4.)3
2 Warner, US 5,663,117, issued Sept. 2, 1997.
3 Office Action dated Aug. 3, 2015.
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Application 13/821,183
DISCUSSION
We adopt as our own the Examiner’s findings, analysis, and
conclusions as set forth in the Final Action (Final Act. 2-4) and Answer
(Ans. 2—3), including the Examiner’s findings regarding the scope and
content of, and reasons to modify, the prior art. We discern no error in the
rejection of the claims as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under 35 U.S.C. § 103(a).
Principles of Law
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
‘“[A] reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests.’” In re Baird, 16 F.3d 380, 383
(Fed. Cir. 1994) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)).
“The transition ‘comprising’ in a method claim indicates that the
claim is open-ended and allows for additional steps.” Invitrogen Corp. v.
Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003).
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Application 13/821,183
Analysis
Claim 7
The Examiner finds that Warner teaches the application of a
formulation comprising a branched chain alcohol ethoxylate and glyphosate
to plants. (Final Act. 3.) The Examiner also finds that Warner teaches that
“[hjerbicidal efficacy was evaluated by visual assessment at one or more
selected time periods after treatment.” {Id., citing Warner col. 9,11. 30-34.)
The Examiner finds that “Warner does not specify visually assessing the
locus within a period of less than 5 days. However, within 15 days 100%
death of plants was observed (see Table 1). Therefore, the presence of
phytotoxic effects would have been observable over the course of the study.”
( Id. at 3 4.)
Appellants contest the obviousness rejection of claim 7. (Appeal Br.
6—14.) Appellants argue that
the teaching of Warner guides one skilled in the art to visually
assess the phytotoxicity of treated plants a minimum of 15 days
following treatment. [] In addition, it should be noted that the
teaching of Warner does not disclose, teach or suggest, in any
way, that any of the disclosed alcohol alkoxylate surfactants
having Warner’s formula, when used in combination with
glyphosate, provide a user with visual signs of phytotoxicity in
treated unwanted plants in less than 5 days.
(Id. at 10.)
Appellants further contend that the Examiner “has failed to provide
any reasoning as to why one of skill in the art would have been guided to
visually assess plant phytotoxicity within the 5 day period required by
Appellants’ claims, and has proffered no evidence as to why such a
discovery would have been expected.” (Id. at 11.)
We are not persuaded.
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Appeal 2016-008616
Application 13/821,183
Claim Construction
We begin with claim construction in order to address what claim 7
recites and what it does not recite. Claim 7 recites the application of a
formulation (as taught by Warner) to a locus of unwanted plants, and
visually assessing that locus within a period of less than 5 days after the
application. (Appeal Br. 18.) Use of the open-ended transitional phase
“comprising” means that claim 7 may also include other steps, such as
visually assessing the locus at times in addition to at “less than 5 days after
treatment.” See Invitrogen 327 F.3d at 1368. For example, claim 7 would
also cover a method with the same currently recited steps and the additional
step of visually assessing the locus at 15 days or later after treatment. The
wherein clause at the end of claim 7 simply recites that visual symptoms of
phytotoxicity (whenever they may occur) indicate that the locus has been
treated with “a composition comprising glyphosate,” i.e., a composition that
may include additional ingredient(s) besides glyphosate.
Notably, claim 7 does not recite that application of the subject
formulation will provide a user with visual signs of phytotoxicity in treated
unwanted plants in less than 5 days. (See Ans. 3.) That is, claim 7 covers
visually assessing the locus within 5 days after treatment, whether or not
visual symptoms of phytotoxicity are present within the 5 days. If visual
symptoms are not present, claim 7 would also cover the additional step of
visually assessing the locus thereafter, such as at 15 days (and/or later) after
treatment. Accordingly, to the extent Appellants’ arguments are premised
on achieving visual symptoms of phytotoxicity within a claimed time frame,
such as less than 5 days or within 24 hours, they are unavailing.
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Person of Ordinary Skill in the Art
We find that a person of ordinary skill in the art would understand that
Warner teaches and suggests a method of killing plants using the same
formulation as claimed by Appellants, wherein herbicidal efficacy is
“evaluated by visual assessment at one or more selected time periods.”
(Warner col. 9,11. 30—34.) Moreover, a person of ordinary skill in the art
would understand that in comparing different formulations against multiple
plant species, a fixed time after treatment should be chosen for an accurate
comparison. In the case of Warner’s experiments, the fixed times after
treatment were chosen as 15, 21, and 28 days. (See Warner Tables 1—4.)
A person of ordinary skill in the art would also understand, based on
the tables provided in Warner, that (1) different species of plants show visual
symptoms of phytotoxicity at different rates, and (2) those species that
showed “death” (i.e., a numerical value of 100) at 15 days would have
shown visual symptoms of phytotoxicity prior to 15 days (as stated by the
Examiner) and over some period of time within that 15 days (i.e., not all at
once on day 15). See Baird, 16 F.3d at 383; KSR, 550 U.S. at 418. Thus, we
do not agree with Appellants that a person of ordinary skill in the art would
understand from Warner “to visually assess the phytotoxicity of treated
plants a minimum of 15 days following treatment” (Appeal Br. 10), i.e., no
sooner than 15 days.
We also note (1) Appellants’ acknowledgement that, without the
claimed adjuvant, glyphosate treated plants would typically show visual
symptoms of phytotoxicity with the span of 7—10 days (Spec. 1,11. 7—12.),
and (2) Warner’s teaching that “[f]or most applications, the efficacy of
glyphosate is significantly improved by the presence of a surfactant”
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Application 13/821,183
(Warner col. 5,11. 24—25). (See Ans. 3.) As such, a person of ordinary skill
in the art would expect that treatment of plants with glyphosate in the
presence of an adjuvant, such as the claimed adjuvant taught by Warner,
would result in visual symptoms of phytotoxicity within less than 7—10 days.
Summary
When viewed in the context of the proper scope of claim 7, and a
person of ordinary skill in the art, we agree with the Examiner that “[i]t
would have been prima facie obvious to utilize the teachings of Warner for
one of ordinary skill to visually assess the locus within a time period of less
than 5 days to note any phytotoxic effects with a reasonable expectation of
success.” (Final Act. 4.) We find that the Examiner has provided articulated
reasoning for such conclusion that is not based on hindsight as Appellants
contend. (See Appeal Br. 10-11.) Moreover, because claim 7 is not limited
to providing visual signs of phytotoxicity within 5 days, Appellants’
argument that Warner fails to teach that purported limitation is unavailing.
See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not
based on limitations appearing in the claims”).
Accordingly, for the reasons of record and as set forth above, the
rejection of claim 7 is affirmed.
Claim 8
Claim 8 recites additional limitations regarding the branched chain
alcohol ethoxylate recited in claim 7. (Appeal Br. 18.) Appellants argue
that claim 8 depends from claim 7 and that Warner fails to teach or suggest
Appellants’ claimed method for at least the reasons presented in connection
with claim 7. {Id. at 14.) Appellants further argue that Warner fails to teach
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or suggest that any of its glyphosate-containing formulations “provide
visually detectable signs of phytotoxicity within 5 days following
application.” (Id.)
We are not persuaded for the reasons of record and as set forth above
in connection with claim 7. Moreover, as further discussed above, neither
claim 7 nor claim 8 recite that its claimed glyphosate-containing formulation
provides visually detectable signs of phytotoxicity within 5 days of
application; therefore, Warner’s alleged failure to teach that purported
limitation is inapt in connection with the claims at issue. See Self, 671 F.2d
at 1348.
Accordingly, for the reasons of record and as set forth above, the
rejection of claim 8 is affirmed.
Claim 9
Claim 9 depends from claim 7 and recites “wherein the locus is
visually assessed within 24 hours of treatment.” (Appeal Br. 18.)
Appellants argue that claim 9 depends from claim 7 and that Warner fails to
teach or suggest Appellants’ claimed method for at least the reasons
presented in connection with claim 7. (Id. at 15.) Appellants further argue
that the teachings of Warner fail to teach or suggest that any of its
glyphosate-containing formulations “provide visually detectable signs of
phytotoxicity within 24 hours following application.” (Id.)
We are not persuaded for the reasons of record and as set forth above
in connection with claim 7. Moreover, as further discussed above, neither
claim 7 nor claim 9 recite that its claimed glyphosate-containing formulation
provides visually detectable signs of phytotoxicity within 24 hours of
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Application 13/821,183
application; therefore, Warner’s alleged failure to teach that purported
limitation is inapt in connection with the claims at issue. See Self, 671 F.2d
at 1348.
Accordingly, for the reasons of record and as set forth above, the
rejection of claim 9 is affirmed.
Claim 12
Claim 12 depends from claim 8 and recites additional limitations
regarding the branched chain alcohol ethoxylate recited in claim 8.
Appellants argue that claim 12 depends indirectly from claim 7 and that
Warner fails to teach or suggest Appellants’ claimed method for at least the
reasons presented in connection with claim 7. {Id. at 16.) Appellants further
argue that the teachings of Warner fail to teach or suggest that any of its
glyphosate-containing formulations “provide visually detectable signs of
phytotoxicity within 5 days following application.” (Id.)
We are not persuaded for the reasons of record and as set forth above
in connection with claims 7 and 8. Moreover, as further discussed above,
neither claim 7 nor claims 8 or 12 recite that the claimed glyphosate-
containing formulation provides visually detectable signs of phytotoxicity
within 5 days of application; therefore, Warner’s alleged failure to teach that
purported limitation is inapt in connection with the claims at issue. See Self,
671 F.2d at 1348.
Appellants further argue that:
In addition, when each of Ri and R2 are alkyl groups as opposed
to aryl or alkylaryl groups in Warner’s formula, the teaching of
Warner guides one skilled in the art towards Warner’s "Cn-15
secondary alcohol 9 EO" surfactants, not a “branched chain
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Application 13/821,183
alcohol ethoxylate” “in the form of a composition wherein y is
an integer between 5 to 8 inclusive, and R1 is a branched C12-C14
alkyl chain” as recited in dependent claim 12.
(Appeal Br. 16.)
We are not persuaded. A prior art reference may be read for all that it
teaches, In reMouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), and “[a]ll the
disclosures . . . must be evaluated, including nonpreferred embodiments.” In
re Mills, 470 F.2d 649, 651 (CCPA 1972). Accordingly, even if we accept
Appellants’ attorney argument regarding what “the teaching of Warner
guides one skilled in the art towards,” we are not persuaded of any error in
the Examiner’s rejection of claim 12.
Accordingly, for the reasons of record and as set forth above, the
rejection of claim 12 is affirmed
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
rejection of claims 7—9 and 12 under 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection of all claims on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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