Ex Parte Rodekohr et al

Patent Trial and Appeal BoardApr 18, 2016

11568927 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111568,927 84331 7590 MMWVIP,LLC 7900 Westpark Drive Suite AIOO McLean, VA 22102 0510412007 04/20/2016 FIRST NAMED INVENTOR Diana Rodekohr 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. 2923343-073000 2497 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): docketing@mmwvlaw.com cgmoore@mmwvlaw.com dwoodward@mmwvlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIANA RODEKOHR, UWE PRIESNITZ, and FRANK ROSENFELDT 1 Appeal2013-008616 Application 11/568,927 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and CHRISTOPHER G. PAULRAJ, 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. 4. Appeal2013-008616 Application 11/568,927 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 23-36.2 Specifically, claims 23 and 25-36 stand rejected as unpatentable under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Schutte et al. (US 5, 783,203, July 21, 1998) ("Schutte") and Doller et al. (US 2006/0247242 Al, November 2, 2006) ("Doller"). Claims 23 and 24 stand rejected as unpatentable under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Schutte, Doller, and Baode Wang et al., Evaluation of Insecticides for Controlling the Asian Longhorned Beetle, Anoplophora glabripennis - a Synthesis Presentation, Proceedings: 2002 US. DEPARTMENT OF AGRICULTURE INTERAGENCY RESEARCH FORUM 97-99 (2002) ("Wang"). 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to a method of improving the growth of plants comprising applying to said plant or the locus thereof at least one 2 Claims 1-22 are canceled. App. Br. 22. 3 The Examiner states that this paper is authored by "Shields et al." Final Act. 6. However, the first author of the reference provided, which bears the identical title and citation, is Baode Wang and there is no author listed by the name of "Shields." We consequently employ the author's name listed on the reference when referring to that reference. 2 Appeal2013-008616 Application 11/568,927 compound selected from the class of agonists and antagonists of the nicotinic acetylcholine receptors in combination with a fertilizer. Abstract. REPRESENTATIVE CLAIM Claim 23 is representative of the claims on appeal, and recites: 23. A process for improving the growth of a forest tree or an amenity tree comprising applying to said forest tree or amenity tree or the locus thereof at the time of planting imidacloprid in combination with a fertilizer in the form of granules or a shaped article, wherein said forest tree or amenity tree is in need of said growth and wherein said imidacloprid and fertilizer are present in amounts which synergistically improve the growth of the forest tree or amenity tree. App. Br. 22. ISSUES AND ANALYSES A. Claims 23, 25-27, and 30-35 Issue 1 Appellants argue the Examiner erred in finding the combined cited prior art provides a reason why one of ordinary skill in the art would expect that mixtures of imidacloprid and a fertilizer would improve the growth of a forest tree or an amenity tree or result in a synergistic improvement in the growth of such trees. App. Br. 8. Analysis Appellants dispute the Examiner's conclusion that, although the combination of Schutte and Doller teaches the limitations of claim 23 in the context of a tree insecticide, "a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the 3 Appeal2013-008616 Application 11/568,927 claim patentable." App. Br. 9 (citing Final Act. 5 (quoting Jn re Best, 562 F.2d 1252, 1254--55 (C.C.P.A. 1977)). Appellants argue that, although Schutte and Doller teach applying imidacloprid in combination with a fertilizer to control pests, the likelihood of the application of the combination improving the growth of a forest or an amenity tree is only a possible outcome. Id. Appellants argue that the facts of the present appeal are distinguishable from those of Best because the combination of Schutte and Doller neither teaches nor suggests the limitation of claim 23 requiring a synergistic improvement of growth. Id. Furthermore, Appellants argue, neither Schutte nor Doller teach continuous treatment using the compositions and, therefore, there is no more than a possibility that forest or amenity trees treated for the target pests would be treated with a sufficient amount to synergistically improve growth of the tree. App. Br. 9. Appellants contend Federal Circuit case law supports their position that the burden does not shift to Appellants to demonstrate a nonobvious feature over the cited art because, Appellants argue, "inherency has nothing to do with obviousness." App. Br. 9 (citing, inter alia, In re Spormann, 363 F.2d 444, 448 (C.C.P.A. 1966); In re Shetty, 566 F.2d 81, 86 (C.C.P.A. 1977)). Appellants argue further the Examiner's conclusion of obviousness is impermissibly based upon hindsight analysis. App. Br. 10. Appellants assert claim 23 has been amended to include a similar limitation that the method is to be practiced on a "forest tree or amenity tree [that] is in need of said growth." Id. Appellants contend that, because Schutte and Doller 4 Appeal2013-008616 Application 11/568,927 neither teach nor suggest the need to improve the growth of plants, the Examiner's rejection is based upon impermissible hindsight. Id. Finally, Appellants argue, the Examiner's primafacie case of obviousness is overcome by the unexpected results of applying imidacloprid and fertilizer to a forest or amenity tree as prescribed by claim 23; viz., a synergistic growth effect. App. Br. 12-13. Appellants point to Tables 1 and 2 of their Specification as evidence of the synergistic growth achieved by application of their claimed invention. Id. at 13. The Examiner states that, when a prima facie case of obviousness is established, the burden shifts to Appellants to come forward with arguments and/or evidence to rebut the primafacie case. Ans. 7-8 (citing MPEP Â§ 2145). The Examiner finds, with respect to whether improving the growth of a forest or amenity is merely a possibility, that the recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. Id. at 8 (citing In re Wiseman, 596 F.2d 1019, 1023 (C.C.P.A. 1979). The Examiner finds the fact that Appellants recognize another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Id. (citing Ex parte Obiaya, 227 USPQ 58, 60 (B.P.A.I. 1985). In the present appeal, the Examiner finds the method steps claimed are the same as those found in the prior art. Ans. 8. Additionally, the Examiner finds the inclusion of fertilizer in a composition would necessarily improve the growth of a forest tree, as would the presence of an insecticide. Id. Therefore, the Examiner finds, the claimed features would necessarily have been present in the prior art. Id. 5 Appeal2013-008616 Application 11/568,927 With respect to Appellants' allegation of impermissible hindsight analysis, the Examiner finds the specific combination of elements claimed is explicitly taught by the prior art. Ans. 9. The Examiner therefore finds the effect of improving plant growth would necessarily follow from the teachings of Schutte and Doller. Id. Finally, with respect to Appellants' assertion of unexpected synergistic results, the Examiner finds Schutte explicitly teaches the combination of imidacloprid with a fertilizer. Ans. 9. The Examiner finds the expected beneficial result of applying imidacloprid is evidence of the obviousness of the claimed invention, just as unexpected results are evidence ofnonobviousness. Id. (citing In re Gershon, 372 F.2d 535, 538 (C.C.P.A. 1967). We do not agree with Appellants' arguments. As an initial matter, we are not persuaded by Appellants' argument that because neither Schutte nor Doller teach continuous treatment using the compositions, there is no more than a possibility that forest or amenity trees treated for the target pests would also be treated with a sufficient amount to synergistically improve their growth. See App. Br. 9. "[C]ontinuous treatment using the composition" is not within the scope of the appealed claims, which require, rather, "applying [the composition] to said forest tree or amenity tree or the locus thereof at the time of planting." Claim 23. The language of the claim thus may be read as requiring applying the composition to the tree or to the locus at time of planting, but it does not require a continuous application of the composition, as Appellants argue. Moreover, we disagree with Appellants' contention that, although the Examiner has made a prima facie case of obviousness, the burden of 6 Appeal2013-008616 Application 11/568,927 showing unexpected properties of the invention does not shift to them. Appellants do not argue that the combination Schutte and Doller neither teaches nor suggests applying a combination of a fertilizer and imidacloprid. Rather, they argue that the prior art neither teaches nor suggests "wherein said forest tree or amenity tree is in need of said growth and wherein said imidacloprid and fertilizer are present in amounts which synergistically improve the growth of the forest tree or amenity tree." Nevertheless, the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We agree with the Examiner that a person of ordinary skill in the art would reasonably expect that the application of a fertilizer combined with a pesticide to a tree would normally result in enhanced or increased growth. Consequently, the burden shifts to Appellants to demonstrate that the claims are not obvious. Appellants argue that it is the synergistic effect of the imidacloprid and the fertilizer on tree growth that is evidence of the nonobviousness of their invention, citing Tables 1 and 2 of the Specification in support of their contention. See App. Br. 12-13. Tables 1 and 2 present data from two separate studies, respectively, in which trees were treated with fertilizer, imidacloprid, both fertilizer and imidacloprid, or left untreated (control). We are not persuaded by Appellants' evidence. As an initial matter, Appellants provide no information with respect to the amounts of fertilizer or imidacloprid applied during the study, whereas the Colby test requires that equal amounts of both be applied to each experiments population. See Spec 18. Moreover, only the normalized mean values of tree growth in each experimental group are presented; there is no statistical analyses of the intra- 7 Appeal2013-008616 Application 11/568,927 and intergroup growth of each group. Appellants' Specification recites: "All results are statistically evaluated having a significance level of 5%. Besides the mean value comparison the Fisher's PLSD test has been applied" but it is not otherwise informative of statistical variation or significance. See Spec. 19. Consequently, it is not possible to determine with a reasonable degree of certainty whether the effects presented in the Specification actually do show synergy. Moreover, the Board has previously observed: On the issue of whether or not synergism has been demonstrated, generalizations such as the Colby formula are not particularly useful. The Colby equation inherently results in an expectation of a less than additive effect for any combination of herbicides. There is no evidence of record that this approach is considered to be valid by a significant number of ordinarily skilled workers or authorities in this area of technology. It could reasonably be argued that at least additive results should be expected, and an argument can even be made out for the proposition that in most cases better than additive results could be expected. The examiner has indicated certain clear anomalies that the Colby equation gives rise to. We would, however, mention several additional reasons for expecting better than additive results with the use of two or more, different herbicides. Ex Parte Quadranti, 25 USPQ2d 1071, 1072 (B.P.A.I. 1992). We agree that the Colby formula, upon which Appellants rely, is a considerably imperfect tool for demonstrating synergy. Finally, and more importantly, although the data presented in Tables 1 and 2 of the Specification may demonstrate a synergistic effect, we do not agree with Appellants that the supposed synergistic effects are sufficient to overcome the Examiner's primafacie case of obviousness. Although Appellants' Specification may show the superior results of combining 8 Appeal2013-008616 Application 11/568,927 unknown amounts of fertilizer and imidacloprid, we agree with the Examiner that this secondary consideration does not overcome the strong showing of obviousness in this appeal. 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 tree growth caused by the claimed invention 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 explicitly adopt as our own the Examiner's findings and conclusion that claims 22, 25-27, and 30-35 are obvious over the combined cited prior art and we affirm the Examiner's rejection of the claims. B. Claim 24 Issue Appellants argue dependent claim 24 separately. App. Br. 14. Claim 24 recites: "The process according to claim 23 wherein the forest tree or the amenity tree is selected from Horse Chestnut, Plane tree, lime tree and maple tree." Id. at 22. Appellants contend neither Schutte nor Doller, alone or in combination, provide a reason to select the particular forest tree or amenity tree as required by claim 24. Id. at 14. 9 Appeal2013-008616 Application 11/568,927 Analysis Appellants repeat their arguments supra with respect to independent claim 23. App. Br. 14. Appellants argue further that neither Schutte nor Doller teach or suggest the additional limitation of claim 24. Id. The Examiner responds that Wang, and not Schutte or Doller, was cited as teaching the limitation in question. Ans. 1 O; see Final Act. 6. We agree with the Examiner. Appellants may not argue against the prior art by omitting or ignoring the Examiner's findings. Wang explicitly teaches the use of imidacloprid on red and sugar maples, which are included in the genus of maples in the limitation of claim 24. See Wang i-fi-1 98-99. We consequently affirm the Examiner's rejection of claim 24. C. Claims 28-29 Issue Appellants argue dependent claims 28 and 29 together. App. Br. 14. Claim 28 is representative and recites: "The process according to claim 25 wherein said granules comprise from 0. 5 to 3 0% by weight of imidacloprid." Id. at 22. Appellants contend the Examiner erred in finding the combined cited prior art teaches or suggests the limitations of claims 28 and 29. Id. at 14. Analysis Appellants repeat their arguments with respect to independent claim 23 supra, and argue further that "[ n ]either Schutte nor Doller, either alone or in combination, disclose any weights for imidacloprid in the granule." Id. at 14. 10 Appeal2013-008616 Application 11/568,927 As an initial matter, Appellants bare assertion that the limitation is neither taught nor suggested by the combined cited prior art, unsupported by evidence of record, is insufficient to overcome the Examiner's findings and prima facie conclusion of obviousness. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Moreover, Schutte explicitly teaches "imidacloprid granules, 5%" in exemplary embodiments. See Schutte col. 9, 11. 24--32. These granules fall within the range of0.5%----30% required by claim 28 and the range of 3%---- 15% required by claim 29. We consequently affirm the Examiner's rejection of claims 28----29. D. Claim 36 Issue Appellants argue dependent claim 36 separately. App. Br. 16. Claim 36 recites: "The process according to claim 35 wherein said increase in said forest tree or amenity tree height is at least 10%." Id. at 23. Appellants argue the Examiner erred in finding the combined cited prior art teaches or suggests the limitation of claim 36. Id. at 16. Analysis Appellants repeat their arguments supra with respect to claim 23. App. Br. 16. Appellants argue further that: "Neither Schutte nor Doller, either alone or in combination, disclose any reason why one of ordinary skill in the art would expect that mixtures of imidacloprid with a fertilizer would 11 Appeal2013-008616 Application 11/568,927 improve the growth of a forest tree or an amenity tree let alone result in an increase in height of at least 10%." Id. We are not persuaded. As we have stated supra, a mere assertion, unsupported by evidence of record, that the combined references do not teach or suggest the contested limitation is insufficient. Geisler, 116 F.3d at 1470. Furthermore, we have also related supra that we agree with the Examiner that a person of reasonable skill in the art would realize, upon reading the teachings of the combined cited prior art, that adding fertilizer and insecticide would likely result in a healthier, more well-nourished tree, free of insect parasites, than a tree not so treated. Moreover, the amounts of fertilizer and imidacloprid applied can be varied, based on those concentrations taught by Schutte and Doller, to achieve optimal results, making these results-effective variables. We find altering the amounts of fertilizer and imidacloprid applied, as taught by the prior art, to achieve a growth increase of 10% would require only optimization of the treatment taught by the combination of Schutte and Doller and would be well within the skill of an ordinary artisan. See In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). We therefore affirm the Examiner's rejection of claim 36. E. Claims 23 and 24 Issue Appellants argue further that the Examiner erred in rejecting claims 23 and 24 over the combination of Schutte, Doller, and Wang. App. Br. 19. Appellants set forth the same arguments presented with respect to claim 23 above. We have already stated our reasons for adopting the Examiner's 12 Appeal2013-008616 Application 11/568,927 findings and conclusions and we incorporate that same reasoning by reference here. We therefore affirm the Examiner's rejection of claims 23 and 24. CONCLUSION We conclude that the Examiner has established a prima facie case of obviousness on the evidence before us which has not been rebutted by Appellants. DECISION The Examiner's rejection of claims 23-36 as unpatentable under 35 U.S.C. Â§ 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. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13