Ex Parte Dutzmann et al

Patent Trial and Appeal Board

Nov 14, 2012

09843396 (P.T.A.B. Nov. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/843,396 04/26/2001 Stefan Dutzmann 2400.2440002/RWE/PDL 4187
26111 7590 11/15/2012
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
CHOI, FRANK I
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
11/15/2012 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 STEFAN DUTZMANN,
KLAUS STENZEL, and MANFRED JAUTELAT
__________

Appeal 2012-006602
Application 09/843,396
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
fungicidal composition and to a method for controlling fungi. The Examiner
has rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Claims 13-16 and 18-30 are pending and on appeal (App. Br. 5).
Claims 13, 16, and 27 are representative. Claim 13 reads as follows:
Appeal 2012-006602
Application 09/843,396

2
13. A fungicidal composition comprising synergistically effective
amounts of:
(a) a 2-[2-(1-chlorocyclopropyl)-3-(2-chlorophenyl)-2-
hydroxypropyl]2,4-dihydro-[1,2,4]-triazole-3-thione of the formula

and
(b) a triazole derivative of the formula

wherein the weight ratio of active compound of the formula (I) to the
active compound of the formula (III) is from 1:0.2 to 1:10.
Claim 16 is similar to claim 13, except that it recites a narrower
weight ratio range. Claim 27 is similar to claim 13, except that it is directed
to a method in which the composition is applied to control fungi selected
from the group consisting of Erysiphe, Puccinia, and Fusarium.
Claims 13-16 and 18-30 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jautelat et al. (WO 96/16048 A1, May 30, 1996) (Ans. 4).
Appeal 2012-006602
Application 09/843,396

3
The Examiner relies on Jautelat for disclosing
the combination of prothioconazole with other fungicides,
including tebuconazole, for treatment of fungal infections,
including Erysiphe species, Puccinia species and Fusarium
species, to widen the spectrum of action, to prevent build of
resistance and that the activity of the mixture in many cases
exhibits synergistic activity . . . and that application
concentrations of the active compounds depend on the nature
and occurrence of the microorganisms to be controlled and on
the composition of the material to be protected and the
optimum amount to be employed can be determined by a series
of tests.
(Id. at 4-5).
The Examiner finds that the “difference between [Jautelat] and the
claimed invention is that [Jautelat] does not expressly disclose the
combination of prothiocona[]zole with tebuconazole” (id. at 5). However,
the Examiner concludes that “it would have been well within the skill of and
one of ordinary skill in the art would have been motivated to combine
prothioconazole with tebuconazole with the expectation that the combination
would be more effective than each alone” (id.).
FINDINGS OF FACT
1. Jautelat discloses triazolyl derivatives and their use as
microbicides (Jautelat, col. 1, ll. 5-71).
2. In particular, Jautelat discloses compound (I) of claim 13 and
that it is effective in the Erysiphe test (id. at cols. 41-42).

1 The pinpoint citations to WO 96/16048, referred to herein as Jautelat, are
to US. Patent No. 5,789,430, which issued from the U.S. National Stage
application of the PCT Application that was published as WO 96/16048.
Appeal 2012-006602
Application 09/843,396

4
3. Jautelat also discloses:
When used in plant protection, the active compounds according
to the invention can be used as such or . . . as a mixture with
known fungicides, bactericides, acaricides, nematicides or
insecticides, for example so as to widen the spectrum of action
or to prevent the build up of resistance. In many cases, this
results in synergistic effects, i.e. the activity of the mixture
exceeds the activity of the individual components.
(Id. at col. 32, ll. 24-31.)
4. In addition, Jautelat discloses that suitable fungicides for the
mixture include, inter alia, tebuconazole (id. at col. 32, l. 32, to col. 33,
l. 21), which is compound (III) of claim 13 (Spec. 3).
5. Jautelat also discloses that the “compositions used for the
protection of industrial materials in general contain the active compounds in
an amount from 1 to 95%, preferably from 10 to 75%” (id. at col. 34, ll. 49-
51).
6. In addition, Jautelat discloses:
The application concentrations of the active compounds . . .
depend on the nature and the occurrence of the microorganisms
to be controlled and on the composition of the material to be
protected. The optimum amount to be employed can be
determined by a series of tests. In general, the application
concentrations are in the range from 0.001 to 5% by weight,
preferably from 0.05 to 1.0% by weight, based on the material
to be protected.
(Id. at col. 34, ll. 52-59.)
7. Jautelat also discloses that “[f]ungicides are employed in plant
protection for combating Plasmodiophoromycetes, Oomycetes,
Chytridiomycetes and Zygomycetes, Ascomycetes, Basidiomycetes and
Deuteromycetes” and that “[s]ome causative organisms of fungal and
Appeal 2012-006602
Application 09/843,396

5
bacterial diseases which come under the generic names listed” include, inter
alia, Erysiphe species, Puccinia species, and Fusarium species (id. at col. 29,
l. 61, to col. 30, l. 31).
ANALYSIS
In view of the foregoing findings of fact (FF), we conclude that the
Examiner has set forth a prima facie case that the compositions of claims 13
and 16 and the method of claim 27 would have been obvious. We recognize
that Jautelat teaches each of compounds (I) and (III) as members of a group
of compounds (FF 1-2 & 4). However, Jautelat clearly points towards
compound (I) (FF 2). In addition, we do not agree with Appellants that the
group of compounds of which compound (III) is a member is so large as to
make this the “needle-in-the-haystack” situation discussed in In re Luvisi,
342 F.2d 102, 106 (CCPA 1965).
With regard to Appellants’ alleged evidence of unexpected results, we
understand Appellants’ argument that it is unpredictable whether any
particular combination will be synergistic (App. Br. 18). We also note the
following statement in the Specification:
Surprisingly, the fungicidal activity of the [24] active
compound combinations according to the invention[, which
includes the combination of compounds (I) and (III),] is
considerably higher than the sum of the activities of the
individual active compounds. Thus, an unforeseeable, true
synergistic effect is present, and not just an addition of
activities.
(Spec. 10.) However, given that Jautelat teaches that, “[i]n many cases,
[mixture with known fungicides] results in synergistic effects” (FF 3), we do
not agree with Appellants that the evidence of synergy is sufficiently
Appeal 2012-006602
Application 09/843,396

6
unexpected, on balance, to render the compositions of claims 13 and 16 or
the method of claim 27 unobvious.
CONCLUSION
The evidence supports the Examiner’s conclusion that claims 13, 16,
and 27 would have been obvious. We therefore affirm the obviousness
rejection of claims 13, 16, and 27.
Claims 14, 15, 23, 26, and 28-30 are argued with claim 13; claims 18,
19, 21, 22, 24, and 25 are argued with claim 16; and claim 20 is argued with
claim 27 (App. Br. 10 & 13). Therefore, claims 14, 15, 18-26, and 28-30
fall with claims 13, 16, and 27. 37 C.F.R. § 41.37(c)(1)(vii).
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

dm