Ex Parte Macom et al

Patent Trial and Appeal Board

Apr 29, 2016

12284708 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/284,708 09/23/2008 Thomas E. Macom
26111 7590 04/29/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
2400.4520002/JMC/L-Z 3110
EXAMINER
HIRT,ERINE
ART UNIT PAPER NUMBER
1616
MAILDATE DELIVERY MODE
04/29/2016 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 THOMAS E. MACOM, REINER FISCHER,
GERHARD BARON, ERICH SANWALD, REED NATHAN ROY ALTY,
XAVIER ALAIN MARIE VAN W AETERMEULEN, UDO RECKMANN,
ALEXANDRA GLADBACH, STEPHEN KRUEGER, and
PETER MARCZOK 1
Appeal2014-003381
Application 12/284,708
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
RICHARD J. SMITH, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Bayer Intellectual Property
GmbH. App. Br. 3.
Appeal2014-003381
Application 12/284,708
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 34, 36-40, 42, 44, 46, 55, and 56. 2
Specifically, claims 34, 36-40, 42, 44, 55, and 563 stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Lieb et al. (US 2002/0010204 Al, January 24, 2002)
("Lieb"), Himmler et al. (WO 2004/007448 Al, Jan. 22, 2004) with (US
2007/0032539 Al, February 8, 2007) being used as an English translation
("Himmler"), and Boyd et al. (US 6,001, 772, December 14, 1999) ("Boyd").
Claims 34, 36-40, 42, 44, 55, and 56 also stand rejected as
unpatentable under 35 U.S.C. § 103(a) as unpatentable under 35 U.S.C.
§ 103 (a) as being obvious over the combination of Himmler and Boyd. 4
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to compounds which are suitable for
controlling animal pests such as insects and/or spider mites and/or
2 Claims 1-33, 35, 41, 43, 45, and 47-54 are canceled. App. Br. 22-23.
3 In their Brief, Appellants argue claims 34, 36-40, 42, 44--53, 55, and 56 on
appeal. See, e.g., App. Br. 5. However claims 45 and 47-54 are also listed
as canceled. See App. Br. 23. We therefore do not consider those canceled
claims in our analysis.
4 Claims 34, 36-40, 42, and 44 were also rejected as unpatentable under the
nonstatutory doctrine of obviousness-type double patenting. Final Act. 3--4.
This rejection has been withdrawn by the Examiner. Ans. 2.
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Application 12/284,708
nematodes by treating the soil/ growth substrate by drenching or drip
application or dipping or soil injection. Abstract
REPRESENTATIVE CLAIM
Claim 34 is representative of the claims on appeal and recites:
34. A method of controlling animal pests, comprising
applying a compound of formula (I-4)
to the animal pests or their locus by drenching soil or artificial
growth substrate, or by drip application onto soil or artificial
growth substrate, wherein the animal pests are a member of the
family Aphididae or Tetranychidae.
App. Br. 22.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are prima facie obvious over the cited prior art
references. We address the arguments raised by Appellants on appeal
below.
A. Claims 34, 36-40, 42, 44, 55, 56, 55, and 56
Issue 1
Appellants argue the Examiner erred by impermissibly employing
hindsight analysis in concluding the claims are obvious over the combined
cited prior art. App. Br. 8.
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Application 12/284,708
Analysis
Appellants argue the Examiner failed to provide a sufficient reason
why a person of ordinary skill in the art would have specifically selected the
claimed drench or drip technique to pests of the families Aphididae or
Tetranychidae, over the more common and advantageous application
techniques, e.g., a spray or dip. App. Br. 8.
Appellants contend neither Himmler nor Lieb teach or suggest
applying compound I-4 to animal pests or their locus by drenching or by drip
application onto soil or an artificial growth substrate in circumstances in
which the animal pests are a member of the family Aphididae or
Tetranychidae. App. Br. 9. According to Appellants, all of the examples
one of Lieb and Himmler disclose applying the compounds directly to the
plant or plant parts by dipping or spraying. Id. Appellants point out that the
only example of Himmler where an active compound is poured on to the soil
does not disclose the actual compounds used, or the efficacy of the
technique. Id. (citing Himmler i-f 32, Example K).
Appellants argue further that none of the examples of Himmler or
Lieb explicitly direct a person of ordinary skill to the use of specific
compound (I-4) with the specific pests of the family Aphididae or
T etranychidae, as required by the claims on appeal. Id.
Furthermore, argue Appellants, Boyd does not cure the alleged
deficiencies of Himmler and Lieb. App. Br. 9. Appellants contend Boyd is
directed to soil pesticide compositions containing, inter alia, a pre-emergent
pesticide and a soil desalinating substance, and methods of making and
using them. Id. Appellants point out that the pesticides in Boyd are not
compound I-4, and argue that Boyd's pesticide compositions are for
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Application 12/284,708
eradicating and controlling weeds, and not for controlling animal pests. Id.
(citing Boyd, Abstract; col. 3, 11. 34--54.) Therefore, Appellants argue, a
person of ordinary skill in the art would have had no reason to employ the
soil injection method disclosed in Boyd, which is directed to eradicating and
controlling weeds or soil-borne pests, by applying compound I-4 directly to
the soil by dripping or drenching, to control animal pests on the leaves or the
plant itself. Id. at 10.
The Examiner responds by stating that the claims are rejected over the
combination teachings of the cited prior art and not over a single reference
alone. Ans. 3. The Examiner finds Lieb explicitly teaches Appellants' I-4
compound and further teaches that these compounds are useful as broad
spectrum insecticides for controlling animal pests, in particular insects and
arachnids, and exhibit particularly good effect in controlling pests that are
injurious to plants. Id. (citing Lieb i-fi-f 199--235; Table 1, entry 26,
preparation examples I-1-a-4, I-1-c-4; i-fi-1462; 485). The Examiner finds
Lieb further teaches that its compositions can be made into the customary
formulations, specifically, concentrates, and that artificial growth substrates
such as diatomaceous earth, clays, quartz, crushed rock, pumice, and
synthetic granules of inorganic and organic meals and granules of organic
materials such as sawdust, coconut shells, etc., are useful as carriers of these
actives. Id. (citing Lieb i1 490).
The Examiner also finds Lieb teaches examples in which the
compounds are employed in a customary manner and, specifically, teaches
examples in which the Appellants' I-3 and I-4 compounds are applied via
dipping the plant/plant parts (leaves and bean plants were dipped) or
spraying the plants. Ans. 4 (citing Lieb Examples A-H).
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The Examiner finds Himmler also expressly teaches Appellants' 1-4
compositions can be used for controlling a broad spectrum of insect pests via
application to plants and plant parts (which includes all plant parts above
and below ground, including leaves, shoots, flowers, roots, tubers/bulbs,
etc.). Ans. 4. The Examiner finds Himmler teaches the application of
Appellants' compositions using various customary application methods, and
specifically mentions immersion (i.e., dipping/pouring/deluge/drenching the
soil), spraying, evaporation, fogging, scattering, painting on, and applying
one or more coats. Id. (citing Himmler i-fi-190 (l-a-1 ); 92 (l-b-2); 189--21 O;
212-213; 497, Table G). The Examiner finds Himmler further teaches the
compounds are useful for treating all varieties of plants including transgenic
species and explicitly states: "the active compounds are suitable for
controlling animal pests, in particular insects, arachnids and nematodes ...
[and] may be preferably employed as plant protection agents. They are
active against normally sensitive and resistant species .... " Id. (citing
Himmler i-f 189). More specifically, the Examiner finds Himmler also
teaches these compositions are useful for controlling aphids
(Aphididae/Pemiphigidae ), and spider mites (Tetranychidae) via the
customary application methods. Id. at 5 (citing Himmler i-fi-f 16; 212-213;
217-218; Examples A-L; claims 24--25). The Examiner further finds
Himmler teaches the compositions provide an efficacy which is observed for
up to a week after application. Id. (citing Himmler Examples A-K).
The Examiner finds that although neither Lieb nor Himmler teaches
drip application of these compounds as a customary method of application to
control pests, Boyd teaches application of insecticidal compositions via
irrigation/dripping to plants as a customary form of application. Ans. 5---6
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(citing Boyd col. 4, 11. 23-27; col. 9, 11. 27-33). The Examiner therefore
concludes that the combination of Lieb, Himmler and Boyd render the
methods of Appellants' claims primafacie obvious because the combined
prior art teaches the claimed compounds I-3 and I-4 off er increased
insecticidal efficacy when applied to plants. Ans. 6.
We agree with the Examiner. Appellants do not dispute the
Examiner's findings that both Lieb and Himmler teach that the I-4
compound was well-known in the art to have insecticidal properties at the
time of invention. However, Appellants argue neither Lieb nor Himmler
discloses applying compound I-4 to animal pests or to their locus by
drenching soil or artificial growth substrate, or by drip application onto soil
or artificial growth substrate, in circumstances in which the animal pests are
a member of the family Aphididae or Tetranychidae. See App. Br. 9.
However, "one cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981). Although
both Lieb and Himmler explicitly teach Appellants' claimed compound,
neither provides explicit examples of the application of compounds I-4 to
plants infested with aphids or spider mites. However, Himmler does teach
the use of other compounds in the same genus are efficacious against both
families of insects. See Himmler Tables A, E. Moreover, although we agree
with Appellants that neither Lieb nor Himmler teach drenching soil or
artificial growth substrate, or drip application onto soil or artificial growth
substrate; we agree with the Examiner that Boyd teaches that both methods
were conventional means of applying pesticide that were well-known in the
art at the time of invention. See Boyd col. 4, 11. 23-27; col. 9, 11. 27-33.
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We further agree with the Examiner that it would have been obvious
to a person of ordinary skill in the art to combine the teachings of Lieb and
Himmler of an insecticide compound effective against aphids and spider
mites with the conventional application methods of drenching or dripping
onto the soil or artificial growth substrate, as taught by Boyd.
Nor are we persuaded by Appellants' argument that the Examiner
impermissibly employed hindsight analysis. It is well-established that any
judgment on obviousness is necessarily a reconstruction based upon
hindsight reasoning, "but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the claimed invention
was made and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d
1392, 1395 (C.C.P.A. 1971). Appellants adduce no evidence that the
Examiner's findings were beyond the level of ordinary skill in the art at the
time of invention, nor do they point to any of the Examiner's findings that
could have been taken only from Appellants' Specification. We
consequently uphold the Examiner's findings and conclusion on this ground.
Issue 2
Appellants argue the results presented in the Declaration of Dr. Elke
Hellwege Declaration (the "Hellwege Declaration"), filed February 10,
2012, are unexpected and therefore overcome the Examiner's primafacie
conclusion of obviousness. App. Br. 11.
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Analysis
Appellants assert the results presented in the Hellwege Declaration
demonstrate that for each of the tests, the application method according to
the present invention yields unexpectedly superior results when compared to
an application method taught by the prior art. App. Br. 12. By way of
example, Appellants point to the Table of the Hellwege Declaration, which
Appellants argue shows that when compound I-4 is applied to cabbage
leaves infested by the green peach aphid, Myzus persicae, by dipping the
leaves, the efficacy at 6 days after application is 70% and 10% for 4 ppm
and 0.8 ppm, respectively. Id. In contrast, Appellants argue, when the same
insect is targeted by the soil drench technique, the percent efficacy
significantly increases to 95% and 85% for 4 ppm and 0.8 ppm, respectively.
Id. (citing Hellwege Deel. 5, Table 11. 1-2; 11-12).
Similarly, Appellants argue, when compound I-4 is applied to bean
plants heavily infested with all stages of the two-spotted spider mite
(Tetranychus urticae) by dipping the plant into a solution of compound I-4
at a concentration of 0.8 ppm, the percent efficacy at 7 days after application
is 40%. In contrast, the percent efficacy after a soil drench application is
98% even at 14 days after application. App. Br. 12 (citing Hellwege Deel. 5
Table, 11. 13-14).
Appellants dispute the Examiner's finding that, because Himmler
shows long term efficacy in regards to controlling aphids via dipping the
plant, such an effect would be obvious by application of the compound I-4
by drenching soil or substrate, or dripping onto soil or substrate. App. Br.
12. Appellants argue the Examiner has not specifically explained why the
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Application 12/284,708
evidence submitted in the Hellwege Declaration is insufficient, and allege
the Examiner is substituting her opinion for that of the expert. Id. at 11.
The Examiner responds that Appellants' alleged unexpected results
would not, in fact, have been unexpected to one of ordinary skill in the art at
the time of the instant invention because Himmler expressly teaches the
preparation of Appellants' I-4 compound and, in Example K, teaches
insecticide is poured into the soil, i.e., drenching, to control insects. Ans. 7.
The Examiner also finds Himmler also teaches that analogs of I-4 are
effective at killing insects at comparable rates and for comparable durations
as shown in the Hellwege Declaration. Id.
We are not persuaded by Appellants' arguments. As an initial matter,
we are not persuaded that the Hellwege Declaration sets forth data that is
persuasive of unexpected results. No indication is presented in the
Declaration of the number of plants or leaves so tested, nor whether single or
multiple experimental runs of the tests were performed. Nor is there any
statistical treatment of the data. Absent such information, and reviewing the
Declaration on its face, we are not persuaded by Appellants' assertion that
the Hellwege Declaration demonstrates a significant demonstration of
unexpected results.
Similarly, we are not persuaded that the Examiner is impermissibly
substituting the Examiner's own judgment for that of the Appellants' expert,
Dr. Hellwege. In point of fact, Dr. Hellwege provides no opinion in her
Declaration that the results are unexpected or significant. The Declaration
attests to Dr. Hellwege' s education and employment, a description of the
experiments performed (with the limitations related supra), a Table,
presenting the results, and Dr. Hellwege' s affirmation as to the truth of the
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Application 12/284,708
Declaration. Dr. Hellwege expresses no opinion or statement with respect to
the significance of the results of the presented study whatsoever. We
therefore disagree with Appellants' assertion that the Examiner is
substituting her own opinion for that of Appellants' expert.
More importantly, even if we accept, arguendo, Appellants' assertion
that the results in the Hellwege Declaration demonstrate an increase in
efficacy when compared to the methods of application recited in Himmler,
we are not persuaded that the increase in efficacy is sufficient to overcome
the Examiner's strongprimafacie case of obviousness. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("Although secondary
considerations must be taken into account, they do not necessarily control
the obviousness conclusion"). In the instant appeal, we find that the alleged
improvement in the efficacy of Appellants' I-4 pesticide when applied by the
methods recited in the claims does not represent the "difference in kind" that
is required to show unexpected results and therefore does not overcome the
Examiner's conclusion that the claims are obvious over the combined cited
prior art. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Consequently, we affirm the Examiner's rejection of claims 34, 36-
40, 42, 44, 55, 56, 55, and 56.
B. Claim 55
Issue
Appellants also argue independent claim 55 separately. App. Br. 14.
Claim 55 recites:
A method of controlling animal pests, compnsmg
applying a compound of formula (1-4) ... to the animal pests or
their locus by dipping a root, a tuber or a bulb of a plant, wherein
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Application 12/284,708
the animal pests are a member of the family Pemphigidae,
Tarsonemidae, Thripidae, Aleyrodidae, Coccidae,
Pseudococcidae, Aphelenchoididae or Agromyzidae.
App. Br. 23-24 (illustration of the compound of formula I-4 omitted).
Appellants argue the Examiner erred by finding that the combined cited
prior art teaches the limitations of claim 55. Id. at 14.
Analysis
Appellants argue that, for the same reasons argued supra with respect
to claims 34, 36-40, 42, 44, 55, 56, 55, and 56, a person of ordinary skill in
the art would have had no reason to use the application methods disclosed in
Lieb and Himmler for controlling animal controlling animal pests as
described in claim 55. App. Br. 14. According to Appellants, Himmler
teaches dipping all plant parts, but does not provide any specific examples
where such a technique is used. Id. Appellants contend Lieb discloses only
customary formulations in a "laundry list" of formulations; such as
solutions, emulsions, wettable powders, suspensions, powders, etc. Id.
(citing Lieb i-f 534). Appellants assert the Examiner admits Lieb "does not
specifically teach wherein the compounds of formula (I) are used to
specifically control [the pests recited in claim 5 5] ... , Lieb also does not
expressly teach examples wherein the compounds are used to control insects
in the families listed in claim 55." Id. at 14--15 (quoting Final Act. 9).
Therefore, argue Appellants, neither Himmler nor Lieb, alone or in
combination with Boyd, provide any reason to direct a person of ordinary
skill in the art to dip a root, tuber or bulb to control the recited pests on the
plant. Id. at 15.
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Appellants also point to Example 16 of their Specification, which,
they argue, demonstrates that bulb dipping unexpectedly provided much
greater efficacy than leaf dipping. App. Br. 15. Appellants assert that, when
bulbs of lily plants are dipped into a solution of compound I-4 and planted,
the resulting plants remain uninfested even at 92 days after application. Id.
In comparison, Appellants contend, foliar (leaf) treatment of the plant
resulted in 6 of 14 plants being infested by the foliar nematode
Aphelenchoides fragariae (Family Aphelenchoididae ). Id. (citing Spec. 39,
11. 11-22).
The Examiner responds that both Lieb and Himmler expressly teaches
Appellants' 1-4 compound, which can be applied using customary methods
(i.e. drench, spray, dipping, etc.) to control animal pests, "in particular
insects, arachnids and nematodes." Ans. 8. The Examiner also finds
Himmler teaches application of its compounds by all customary methods
and explicitly teaches immersion and drenching as appropriate methods for
delivering these compounds. Id. at 8-9 (citing Himmler i-fi-1212-213,
Examples A-K). The Examiner further finds that Himmler teaches its
claimed compounds all exhibit enhanced/long-term killing effects of insects
when applied by customary methods (including dipping and drenching) and
that these killing effects are observed even a week after application of the
actives. Id.
We are not persuaded by Appellants' arguments. Himmler explicitly
teaches:
All plants and plant parts can be treated in accordance with
the invention .... Plant parts are to be understood as meaning all
parts and organs of plants above and below the ground, such as
shoot, leaf, flower and root, examples which may be mentioned
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being leaves, needles, stalks, stems, flowers, fruit bodies, fruits,
seeds, roots, tubers and rhizomes.
Treatment according to the invention of the plants and
plant parts with the active compounds is carried out directly or
by allowing the compounds to act on the surroundings,
environment or storage space by the customary treatment
methods, for example by immersion, spraying, evaporation,
fogging, scattering, painting on and, in the case of propagation
material, in particular in the case of seeds, also by applying one
or more coats.
Himmler i-fi-1 212-213 (emphases added); see also Final Act. 6. We agree
with the Examiner's conclusion that a person of ordinary skill in the art
would, upon reading these teachings of Himmler, realize that dipping (i.e.,
immersing) a bulb (a root structure of a plant) would be obvious.
Moreover, Himmler also explicitly teaches: "The active compounds
are suitable for controlling animal pests, in particular insects, arachnids and
nematodes, which are encountered in agriculture, in forestry, in the
protection of stored products and of materials, and in the hygiene sector, and
have good plant tolerance and favourable toxicity to warm-blooded
animals." Himmler i1189. Similarly, Lieb teaches:
The active compounds are suitable for controlling animal
pests, preferably arthropods and nematodes, in particular insects
and arachnida, which are encountered in agriculture, in forestry,
in the protection of stored products and of materials, and in the
hygiene field. They are active against normally sensitive and
resistant species and against all or some stages of development.
Lieb i-f 462.
We agree with the Examiner that a person of ordinary skill in the art
would understand the teachings of both Himmler and Lieb with respect to
insects, arachnids and nematodes encompasses the "famil[ies] Pemphigidae,
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Tarsonemidae, Thripidae, Aleyrodidae, Coccidae, Pseudococcidae,
Aphelenchoididae or Agromyzidae" recited in claim 55, all of which are
members of the Class Insecta or Arachnida or the Phylum Nematoda, and
against which both Himmler and Lieb teach their compositions are effective.
We consequently agree with the Examiner's the combined cited prior art,
and we affirm the Examiner's rejection.
C. Claims 34, 36-40, 42, 44, 55, 56, 55, and 56 over the combination of
Himmler and Boyd
Appellants repeat their arguments presented supra with respect to the
rejection of claims 34, 36-40, 42, 44, 55, 56, 55, and 56 as unpatentable
under 35 U.S.C. § 103(a) over the combination of Lieb, Himmler, and Boyd.
App. Br. 15. However, Appellants make no specific argument as to why the
removal of the teachings of Lieb from the combined references is fatal to the
Examiner's finding that the combined teachings of Himmler and Boyd teach
or suggest the limitations of the claims. We therefore agree with the
Examiner's findings that the combination of Himmler and Boyd teach all of
the limitations of the claims and we affirm the rejection.
D. Claim 55
Appellants similarly repeat their arguments made with respect to the
rejection of claims 34, 36-40, 42, 44, 55, 56, 55, and 56 as unpatentable
under 35 U.S.C. § 103(a) over the combination of Lieb, Himmler, and Boyd.
We have related supra with respect to the latter rejection, that Himmler
alone teaches the limitations of claim 55 without the need for recourse to
Lieb, i.e., that Lieb reinforces Himmler's teaching that the claimed
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compound is effective against insects, arachnids and nematodes. We
consequently affirm the Examiner's rejection of claim 55.
DECISION
The Examiner's rejection of claims 34, 36-40, 42, 44, 46, 55, and 56
as unpatentable under 35 U.S.C. § 103(a) is affirmed.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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