Ex Parte Ma et al

Patent Trial and Appeal BoardAug 21, 2017

12809747 (P.T.A.B. Aug. 21, 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. 12/809,747 06/21/2010 Jianyi Ma HCH-125US 1248 56352 7590 08/21/2017 GLOBAL IP SERVICES 7285 Eagle Court Winton, CA 95388 EXAMINER BROWN, COURTNEY A ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 08/21/2017 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 JIANYI MA and LIQIN ZHANG1 __________ Appeal 2017-002007 Application 12/809,747 Technology Center 1600 __________ Before JOHN G. NEW, TAWEN CHANG, 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 pesticides which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Camptothecin has been found to be an effective pesticide. Spec. 2. Its commercial use has been limited by its relative insolubility. Spec. 3. The 1 Appellants identify the Real Party in Interest as Zhejiang Forestry College. Appeal Br. 3. Appeal 2017-002007 Application 12/809,747 2 present Specification describes the use of salts of camptothecin as pesticides. Spec. 3. Claims 1 and 3 are on appeal. Claim 1 is representative of the rejected claims and reads as follows: 1. A pesticide composition solution for planthoppers, aphids, Chilo stem borers, yellow rice borers, rice leaf folders, tobacco whiteflies, Empoasca vitis, diamondback moths and Cabbage caterpillar comprising an effective amount of active ingredient according to the formula I and a pesticide adjuvant, Wherein: R1 is Na or K, and R2 is H or OH. wherein the active ingredient is 0.05-2.5% by weight of the pesticide composition solution and is selected from a group consisting of open-ring camptothecin potassium salt, open-ring 10-hydroxycamptothecin sodium salt or open-ring 10- hydroxycamptothecin potassium salt; wherein the pesticide adjuvant is 0.05-7.4% by weight of the pesticide composition solution and is at least one selected from a group consisting of calcium lignin benzenesulfonate, sodium lignosulfonate, sodium dodecylbenzene sulfonate, calcium dodecylbenzene sulfonate, sodium dodecylsulfate and wetting agent. Claims 1 and 3 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Ma2 in view of Li3 and Wall.4 2 Ma et al., CN 1759675, published Apr. 19, 2006 (“Ma”). 3 Li, US 2002/0018762 A1. Published Feb. 14, 2002 (“Li”). 4 Wall et al., Plant Antitumor Agents 30. Synthesis and Structure Activity of Novel Camptothecin Analogs, 36 J. Med. Chem. 2689 (1993) (“Wall”). Appeal 2017-002007 Application 12/809,747 3 DISCUSSION Issue The issue is whether a preponderance of evidence supports the Examiner’s conclusion that claims 1 and 3 would have been obvious over Ma combined with Li and Wall. The Examiner finds that Ma teaches the use of camptothecin and camptothecin derivatives as pesticides. Final Act. 6. The Examiner finds that while Ma does not teach the use of camptothecin salts, Wall teaches the preparation of such salts. Id. at 7. The Examiner also finds that Li teaches the use of dust formulations of Camptotheca products as pesticides. Id. The Examiner concludes that: It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to combine the teachings MA JIANYI ZHANG et al. and Wall et al. to arrive at a pesticidal composition comprising the compound of instant formula I wherein R1 is Na or K (i.e., open-ring camptothecin sodium or potassium salts). MA JIANYI ZHANG et al. teach that it is difficult to solubilize natural alkaloids, especially camptothecin, in water which lead to poor efficacy (see [0008]) and that their goal is to overcome this problem (see [0010]). Wall et al. teach that since most Camptothecin (CPT) analogs are water insoluble, they prepared a number of water- soluble CPT sodium salts (see page 2689, introduction section). One would have been motivated to make this combination in order to receive the expected benefit of providing a pesticidal composition wherein camptothecin is easily dissolved into solution due to its open-ring camptothecin sodium form thus providing better efficacy. Therefore, given the state of the art as evidenced by the teachings of the cited references, and absent any evidence to the contrary, there would have been a reasonable expectation of success in combining the teachings of Appeal 2017-002007 Application 12/809,747 4 the cited references to form a pesticidal formulation comprising open-ring camptothecin sodium salt. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to combine the teachings MA JIANYI ZHANG et al. and Li to arrive at a pesticidal composition comprising the compound of instant formula I the pesticide composition solution is formulated as a dry powder. Li teaches that that CPTs are known in the art to be used as pesticides which may be in liquid, aerosol, or dust formulations ([0026]). Thus, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Id. at 7–8. Appellants contend that the invention is not obvious. Appeal Br. 9. Appellants point to the declaration of the inventors to support the position that the claimed composition is an improvement over the prior art. Id. Appellants next contend that Wall does not teach the specific analogs recited in the claims nor does Wall teach the use of the salts as pesticides. Id. at 10. With respect to Li, Appellants contend that Li in limited to the use of water insoluble compositions and does not teach or suggest the present invention. Findings of Fact We adopt the Examiner’s findings as our own, including with regard to the scope and content of, and motivation to modify or combine, the prior art. The following findings are included for emphasis and reference purposes. Appeal 2017-002007 Application 12/809,747 5 FF1. Ma teaches an insecticide composition comprising camptothecin or a camptothecin derivative. Ma ¶ 12. FF2. Ma discloses the use of camptothecin derivatives including 9- nitro camptothecin, 9-amino camptothecin, 10- hydroxy camptothecin, 10,11-methylenedioxy - camptothecin, fluoroethyl camptothecin, and 10- alkoxy -20- camptothecin, or 9-nitro camptothecin. Ma ¶ 14. FF3. The active ingredients recited in claim 1 include the sodium and potassium salts of open ring 10-hydroxycamptothecin. Appeal Br. 14 (Claims App’x). FF4. Ma teaches the use of surfactants including calcium dodecylbenzenesulfonate. Ma ¶ 16. FF5. The composition of claim 1 further comprises a surfactant which may include sodium dodecylbenzene sulfonate. Appeal Br. 14 (Claims App’x). FF6. Ma teaches that camptothecin and its derivatives are poorly water soluble, which adversely affects their efficacy. Ma ¶ 8. FF7. Wall discloses the preparation of water soluble sodium salts of camptothecin derivatives. Wall 2689, 2691. FF8. Li teaches the use of Camptotheca products as pesticides. Li Abstract. FF9. Camptothecin is a Camptotheca product. Li ¶¶ 18–20. FF10. Li teaches that the Camptothecin can be applied as a dust formulation. Li. ¶ 26. Appeal 2017-002007 Application 12/809,747 6 Principles of Law “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “[I]t is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). Analysis Appellants do not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that the device recited in claim 1 would have been obvious to an ordinary artisan in view of Ma combined Appeal 2017-002007 Application 12/809,747 7 with Wall and Li. To the contrary, we agree with the Examiner’s findings of fact, and conclusion of obviousness derived therefrom, and adopt them as our own. We include the discussion below for emphasis. Appellants contend that the declaration of the inventors establishes that the claimed invention is not obvious. Appeal Br. 9, Reply Br. 1–2. In the declaration, the inventors state that the claimed Camptothecin salts are different from the pesticides recited in Ma and are a “big improvement” over Ma. Decl.5 1–2. We have considered Appellants’ argument and declaration and find them unpersuasive. The issue before us is not whether the claimed compound is the same as what is taught in the prior art but whether it would have been obvious over the teachings of the recited evidence. Appellants’ argument and declaration are conclusory and offer no reasoning or evidence as to why the invention is not obvious. Appellants’ statement that the present invention is a big improvement over Ma appears to argue unexpected results demonstrating that that the invention is not obvious. Again, this is unpersuasive. As noted above, the declaration contains only a conclusory statement that the present invention is a “big improvement.” Decl. 1. Appellants offer no evidence to support the statement. Neither did Appellants offer evidence that any alleged improvement is unexpected. The conclusory statement, without supporting evidence of unexpected properties, is insufficient to overcome the Examiner’s conclusion of obviousness. 5 Declaration filed July 28, 2015. Appeal 2017-002007 Application 12/809,747 8 Appellants next argue that Wall does not teach the specific camptothecin analog recited in claim 1 and Wall does not teach the use of the analogs as pesticides. Appeal Br. 10. While Appellants may be correct as to the teachings of Wall, we find Appellants arguments unpersuasive. The Examiner relies on Wall for the teaching of the preparation of water soluble salts of camptothecin derivatives. Ans. 4. Ma discloses the use of the specific camptothecins as pesticides. FF1–3. We agree with the Examiner that one skilled in the art would have been motivated to combine the teachings of Ma and Wall to provide a pesticidal composition which can be easily dissolved providing better efficacy. Id. With respect to Li, Appellants argue that Li only teaches the use of water insoluble camptothecins and does not address the use of the claimed compositions. Appeal Br. 10–11. We remain unpersuaded. As the Examiner points out, Li is relied upon only for the teaching that camptothecins can be applied as a dry powder, a limitation of claim 3. Ans. 8–10. We agree with the Examiner that given the combined teachings of the references, a person of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Ans. 10. Conclusion of Law We conclude that a preponderance of the evidence supports the Examiner’s conclusion that claims 1 and 3 would have been obvious over Ma combined with Wall and Li. Appeal 2017-002007 Application 12/809,747 9 SUMMARY We affirm the rejection under 35 U.S.C. § 103(a). 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