Ex Parte PennerDownload PDFPatent Trial and Appeal BoardOct 19, 201610972624 (P.T.A.B. Oct. 19, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation