Ex Parte Garner et al

Patent Trial and Appeal BoardAug 9, 2017

14119927 (P.T.A.B. Aug. 9, 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. 14/119,927 11/25/2013 George Victor Garner Y18662USN1 7530 23550 7590 08/11/2017 HOFFMAN WARNTOK T T C EXAMINER 540 Broadway 4th Floor KRISHNAN, GAN APATHY ALBANY, NY 12207 ART UNIT PAPER NUMBER 1673 NOTIFICATION DATE DELIVERY MODE 08/11/2017 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE VICTOR GARNER, JAN ROGERS, and VICTORIA TAYLOR1 Appeal 2016-008608 Application 14/119,927 Technology Center 1600 Before ERIC B. GRIMES, RICHARD J. SMITH, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method for treating plants which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Arcis Biotechnology Holdings Limited. Appeal Br. 1. Appeal 2106-008608 Application 14/119,927 STATEMENT OF THE CASE Plants are subject to attack by various organisms including parasitic nematodes. Spec. 1. Nematodes are usually controlled using organophosphate compounds. Id. However, these compounds are toxic to humans and can cause environmental damage. Id. The Specification describes compositions which control nematodes as well as other plant parasites. Spec. 2. Claims 1—11 are on appeal. Claim 1 below is the sole independent claim and reads as follows: 1. A plant treatment method comprising contacting the plant with: (a) a compound of formula (I): T R4 R1 1 n+ Rs-----N----- l---- Si ™~R2 Rs R' (R or a derivative salt thereof wherein L is a linking group; each of R1, R2 and R3 is independently selected from an optionally substituted alkyl, alkenyl, aryl or alkoxy group; R4 is oxygen or an optionally substituted alkyl, alkenyl or aryl group; each of R5 and R6 is an optionally substituted alkyl, alkenyl or aryl group; (b) at least one cationic biocide; (c) a hydrocarbyl saccharide compound; and (d) a non-ionic surfactant. 2 Appeal 2106-008608 Application 14/119,927 The claims stand rejected as follows: Claims 1—11 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Schafer,2 in view of Fox3, in further view of Ahlgrim4 and Avery5 as evidenced by Cognis.6 Claims 1—11 are provisionally rejected on the ground of non-statutory obviousness-type double patenting over claims 1—11 of USSN 14/119,932.7 OBVIOUSNESS Issue The issue is whether a preponderance of evidence supports the Examiner’s conclusion that claims 1—11 would have been obvious over Schafer combined with Fox, Ahlgrim and Avery. The Examiner finds that Schafer teaches the use of quaternary ammonium silanes meeting the formula in claim 1 to control microorganisms on plants. Non-Final Act. 4. The Examiner finds that the compositions of Schafer can contain surfactants. Id. The Examiner finds that the compositions of Schafer do not adversely affect trees treated with the composition. Id. The Examiner finds that Fox teaches the use of 2 Schafer, WO 87/0006, published Jan. 15, 1987 (“Schafer”). 3 Fox et al., GB 1,434,040, published Apr. 28, 1976 (“Fox”). 4 Ahlgrim et al., WO 95/12977, published May 18, 1995 (“Ahlgrim”). 5 Avery et al., US 2003/0073600 Al, published Apr. 17, 2003 (“Avery”). 6 Cognis, Alkyl Polyglucosides (APG®): Benefits of Glucopon®-Types in Hard Surface Cleaning, CareChemicals (2005) (“Cognis”). 7 The Examiner also provisionally rejected claims 1—11 for non-statutory obviousness-type double patenting based on claims 12 and 13 of USSN 13/581,694. (Non-Final Act. 8.) However, the’694 application has been abandoned. 3 Appeal 2106-008608 Application 14/119,927 guanidines to combat fungi, bacteria and viruses that affect plants. Id. The Examiner finds that Ahlgrim teaches the use of a guanidines and alkylpolyglucosides to control nematodes and other parasites on plants. Id. at 4—5. The Examiner also finds that Avery teaches an aqueous biocidal composition containing all four of the components recited in the claims. Id. The Examiner concludes that Thus, the claimed invention as a whole is prima facie obvious over the combined teachings of the prior art. Method improvement is the motivation. One of ordinary skill in the art would be motivated to combine the claimed active agents since a single composition comprising all of the active agents would have an enhanced effect in combatting nematodes, bacteria, fungi and algae. Id. at 6. Appellants contend that Avery does not provide a proper motivation to combine the references in that Avery is directed to a hard surface cleaner which cannot be used to treat plants. Appeal Br. 4. Appellants argue that the Examiner has not provided an adequate motivation to combine the references. Id. Analysis We adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established that the subject matter of the claims would have been obvious over Schafer combined with Fox, Ahlgrim and Avery. Appellants have not produced evidence showing, or persuasively argued, that the Examiner’s determinations on obviousness are incorrect. Only those arguments made by 4 Appeal 2106-008608 Application 14/119,927 Appellants in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1 as representative; therefore, all claims fall with claim 1. We address Appellants’ arguments below. Appellants argue that Avery does not provide a motivation to combine the references in that Avery is directed to a completely different application and would result in a composition that would be harmful to plants. Appeal Br. 4. We are not persuaded. As the Examiner points out, Schafer, Fox and Ahlgrim teach that the individual components can be used safely to treat plant parasites. Ans. 10. The Examiner goes on to find that “[bjased on the teachings of Schafer, Fox and Ahlgrim one of ordinary skill in the art will recognize that an aqueous composition comprising all the claimed components (in water as the solvent) could also be used in the instant method of treating plants.” Id. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose. . . . [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). The Examiner has shown that all the components are known in the art and all have been used to treat microbes in plants. Ans. 10. Thus it would have been prima facie obvious to combine the components to treat microbes in 5 Appeal 2106-008608 Application 14/119,927 plants. Appellants have not offered any evidence to rebut the Examiner’s findings. Conclusion of Law We conclude that a preponderance of the evidence supports the Examiner’s conclusion that clams 1—11 would have been obvious over Schafer combined with Fox, Ahlgrim and Avery. OB VIOUNES S-TYPE DOUBLE PATENTING Appellants do not argue the propriety of this rejection and state that they have submitted Terminal Disclaimers to obviate the rejection. Appeal Br. 4—5. The disclaimers have been rejected by the Examiner as identifying a party who is not the applicant and the Examiner has maintained the rejection. Non-Final Act. 10. Since Appellants have not argued the merits of the rejection, we affirm the rejection. 37 C.F.R. § 41.37(c)(iv). DECISION We affirm the rejection under 35 U.S.C. § 103(a). We affirm the rejection for non-statutory obviousness-type double patenting. 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 6