Ex Parte Penner

Patent Trial and Appeal Board

Oct 19, 2016

10972624 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/972,624 10/25/2004
4743 7590 10/21/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Donald Penner
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.
322131714 9164
EXAMINER
KLINKEL, KORTNEY L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD PENNER
Appeal2013-006482
Application 10/972,624
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Examiner requests reconsideration of the decision entered June 8,
2016 ("Decision") that, in part, reversed the rejection of claims 53 and 54
under 35 U.S.C. § 103(a) and obviousness-type double patenting.
The Examiner's Request for Reconsideration ("Req.") has been
granted, and we modify our Decision to affirm the rejection of claims 53 and
54 under 35 U.S.C. § 103(a) over Penner, 1 Steelman,2 and Ohsumi3 and to
affirm the rejection of claims 53 and 54 under obviousness-type double
1 Penner et al., US 6,235,682 Bl, issued May 22, 2001 ("Penner").
2 Steelman et al., US 4,211,778, issued July 8, 1980 ("Steelman").
3 Ohsumi et al., US 4,514,406, issued Apr. 30, 1985 ("Ohsumi")
Appeal2013-006482
Application 10/972,624
patenting over claims 14--17 of US 6,235,682 in view of Steelman and
Ohsumi.
DISCUSSION
The Examiner contends that "[i]t is respectfully submitted that the
rejection under 35 U.S.C. § 103(a) would have been sustained if the cited
Ohsumi et al. reference was given proper consideration" (Req. 2). The
Examiner specifically points out that,
the rejection relies on Ohsumi et al., not the opinion of the
Examiner, to specifically teach "that it is known that several
insecticides including organic phosphate insecticides, organic
chlorine insecticides and carbamate insecticides which are
useful in controlling or preventing harmful insects exhibit high
phytotoxicity (col. 13, lines 18-26)." (See 04 May 2012 Final
Office action page 24 as well as Examiner's Answer page 21 ).
(Req. 3).
Upon reconsideration, we agree with the Examiner that the cited
portion of Ohsumi provides evidentiary support for the proposition that
pesticides or insecticides administered without herbicide may have
phytotoxic activity. In the context of the rejection of claims 53 and 54,
Ohsumi' s teaching that some pesticides were known to have phytotoxicity
reasonably supports the Examiner's obviousness position that:
"[g]iven these three pieces of knowledge from the prior art, it
would have been obvious to have included an insecticide of
Ohsumi et al. in the repellent adjuvant of Penner et al. and
applied it to riceland areas which are known to harbor
mosquitoes as taught by Steelman et al. with the reasonable
expectation that damage to plants would be reduced and
mosquitoes would be controlled. One would have been
motivated to do so in order to protect crops from attack by
harmful insects and to prevent and control mosquitoes growing
2
Appeal2013-006482
Application 10/972,624
in riceland ecosystems. It is well known that crops suffer loss
due to insect damage and the rice growing ecosystems provide
a convenient breeding ground for mosquitoes. It is also known
that commonly employed insecticides used to control these
harmful insects can be phytotoxic in nature, just as herbicides
are. In using the repellent adjuvant composition of Penner
consisting of 35. 7 % by weight N-(2-Aminoethyl)-3-
aminopropyltrimethylsilane, 58.2 % by weight
methyltrimethoxysilane and 6.1 % by weight water one of
ordinary skill in the art would be imbued with a reasonable
expectation that crop damage by the phytotoxic insecticide
would be minimized" (See Examiner's Answer sentence
bridging page 21 (bottom)-22 (top).
(Req. 3).
Appellant, in the Reply to the Request for Reconsideration ("Reply"),
contends that:
As indicated in Ohsumi, only some insecticides exhibit a high
phytotoxicity. Firstly, there is no evidence of record that any of
the organic phosphort1s, organic chlorine, or carbamate series
insecticides disclosed in Ohsumi are effective to treat
mosquitoes as asserted in the proposed combination of
references. Further, even if some of the organic phosphorus,
organic chlorine, or carbamate series insecticides disclosed in
Ohsumi are effective to treat mosquitoes, there is no evidence
that these are the same insecticides that also exhibit
phytotoxicity. Yet further, "phytotoxic" is broad generic term
that simply means "poisonous to plants." Clearly, the severity
of any such phytotoxic character will be plant-dependent, and
there is no evidence whether or to what extent the organic
phosphorus, organic chlorine, and carbamate series insecticides
disclosed in Ohsumi are actually phytotoxic to the specific
plants in the riceland ecosystem set forth in the proposed
combination of references.
(Reply 4; footnote omitted).
3
Appeal2013-006482
Application 10/972,624
We do not find these arguments persuasive. The first argument relates
to the question of whether insecticides that exhibit phytotoxicity also treat
mosquitoes. This argument does not address a limitation of claim 53, which
is broadly drawn to treatment of any insect, and is therefore focused on
claim 54, which drawn to a pesticide that treats mosquitoes. However,
Ohsumi teaches that the desired insecticide treats "Diptera: housefly (Musca
domestica ), melon fly (Dacus cucurbilae ), common mosquito (Cul ex pipiens
pall ens), yellow fever mosquito (Aedes aegyptl), malaria mosquito
(Anopheles sp.), etc." (Ohsumi 14:25-30). Ohsumi, in the phytotoxicity
discussion, contrasts Ohsumi's inventive insecticides with the prior art
"organic phosphorus series insecticides, organic chlorine series insecticides
or carbamate series insecticides" that exhibit high phytotoxicity and notes "a
resistivity to the insecticides has recently become noticed in certain insects
such as house flies" ( Ohsumi 13: 17-26). Thus, Ohsumi recognizes that the
prior art insecticides were effective against house flies, a member of the
Diptera order of insects, to which mosquitoes also belong (see Ohsumi
14:25-30). Thus, Ohsumi is reasonably interpreted as evidencing that some
insecticides with high phytotoxicity are effective to treat mosquitoes.
Appellant's second argument is that there may be no overlap between
phytotoxicity and particular insecticidal targets such as mosquitoes. Again,
claim 53 broadly encompasses all foliage and insects. Claim 54
encompasses all foliage and is not limited to a "riceland ecosystem" as
argued by Appellant, but is limited to mosquitoes, so the argument is
relevant only to claim 54. However, Steelman teaches applying an inventive
insecticide "to substrates containing said insects or their larvae, especially
4
Appeal2013-006482
Application 10/972,624
Diptera, and more especially mosquitoes to kill a major portion of a given
population of the insects" (Steelman 2: 1--4) and further teaches that the
active ingredient "has heretofore been recognized as a herbicide" (Steelman
2:6-7). Thus, we agree with the Examiner's position that the ordinary
artisan would have found it obvious to incorporate a repellant as taught by
Penner when applying insecticides targeted to mosquitoes such as those of
Steelman or Ohsumi that are also phytotoxic because the ordinary artisan
"would be imbued with a reasonable expectation that crop damage by the
phytotoxic insecticide would be minimized" (Ans. 21 ).
The third argument relates to the degree of phytotoxicity, but the
ordinary artisan would recognize "a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006). Here, the artisan would balance the degree of
phytotoxicity with the insect infestation to determine whether to apply the
particular insecticide and whether to incorporate the repellant to protect the
crops or other desirable foliage.
Appellant also argues that:
the skilled artisan would not use one of Ohsumi' s phytotoxic
insecticides against mosquitoes, in particular because (a)
Ohsumi itself teaches that its oxime esters are useful against
mosquitoes and overcome problems with such phytotoxic
insecticides (Ohsumi, 13:27-35), (b) Steelman's carbothiolates
are useful against mosquitoes, and ( c) there is nothing
suggesting the use of Ohsumi' s phytotoxic insecticides against
mosquitoes as a specific pest.
(Reply 5).
5
Appeal2013-006482
Application 10/972,624
We do not find this argument persuasive because, as noted above,
Ohsumi teaches the phytotoxicity of the insecticides against the order
Diptera that includes mosquitoes (see Ohsumi 13:20-26, 14:25-30), and
because the ordinary artisan would have found that Penner provides a
solution to concerns with phytotoxicity in teaching that "the repellent
adjuvant prevents retention of the composition by the plant. Thus, herbicidal
injury to the cultivated plant is reduced" (Penner 2:52-54). As the Examiner
pointed out,
it would have been obvious to one of ordinary skill in the art to
utilize the repellant adjuvant of Penner et al. in combination
with a phytotoxic insecticide of Ohsumi et al. in order to
control insects, including mosquitoes in or around crop plants at
the time of the instant invention with a reasonable expectation
that no harm would befall the crop plants.
(Req. 4). "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
CONCLUSION
The Examiner's Request for Reconsideration to affirm the rejection of
claims 53 and 54 under 35 U.S.C. § 103(a) over Penner, Steelman, and
Ohsumi and to affirm the rejection of claims 53 and 54 under obviousness-
type double patenting over claims 14--17 of US 6,235,682 in view of
Steelman and Ohsumi is granted.
6
Appeal2013-006482
Application 10/972,624
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
GRANTED
7