Ex Parte Senn et al

Patent Trial and Appeal Board

Dec 28, 2012

10801405 (P.T.A.B. Dec. 28, 2012)

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.
10/801,405 03/16/2004 Robert Senn PI/5-20835C/D1 5092
85981 7590 12/31/2012
Syngenta Corp Protection, Inc.
410 Swing Road
Greensboro, NC 27409
EXAMINER
PRYOR, ALTON NATHANIEL
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
12/31/2012 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 ROBERT SENN, PETER MAIENFISCH, and PETER WYSS
__________

Appeal 2011-010061
Application 10/801,405
Technology Center 1600
__________

Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a process of
controlling pests. The Examiner entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 17, 18, 20, 24, 31, and 33-43 stand rejected and appealed
(App. Br. 3). Appellants have not argued the claims separately, so they
stand or fall together. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 43 is
representative and reads as follows:

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43. A method of controlling pests comprising applying a
synergistically effect amount of thiamethoxam and abamectin, to the
pests or to plants, plant propagation material, site where the
propagation material is brought out, or soil.

The sole rejection before us for review is the Examiner’s rejection of
claims 17, 18, 20, 24, 31, and 33-43 under 35 U.S.C. § 103(a) as obvious
over Maienfisch1 and The Agrochemicals Handbook2 (Ans. 3-4).
OBVIOUSNESS
The Examiner found that Maienfisch disclosed insecticidal
compounds “which are equivalent to instant compounds A.1 and A.3” (Ans.
3). The Examiner also found that Maienfisch taught that its insecticidal
compounds were suitably combined “with auxiliaries and optionally other
actives” and could be used to control insects by “applying the compounds to
the pests (insects), crop, seed, foliage, and soil” (id. at 4).
The Examiner conceded, however, that Maienfisch differed from
Appellants’ claims in that Maienfisch “does not teach the composition or
method compris[es] abamectin” (id.). To address that deficiency, the
Examiner cited the Agrochemicals Handbook as evidence that abamectin
was a known insecticide “and that abamectin is applied to crops and binds to
soils in order to control insects” (id.).
Based on the references’ teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious “to modify the invention
taught by Mainfisch [sic] to include the abamectin taught by The
Agrochemical Handbook” (id.). The Examiner reasoned:

1 U.S. Patent No. 5,852,012 (issued December 22, 1998).
2 THE AGROCHEMICALS HANDBOOK, entry A0891 (The Royal Society of
Chemistry, 3rd ed. 1991).
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One would have been motivated to do this since each reference
has the same utility, i.e. each reference discloses insecticidal
inventions and since Mainfisch [sic] welcomes the addition of
auxiliaries and other actives. It is automatic that Mainfisch’s
[sic] modified method would control insects since like instant
invention the same active step of applying the composition to
seed and plants is recited.

(Ans. 4-5.)
Appellants concede that Maienfisch discloses thiamethoxam as one of
its insecticidal compounds (App. Br. 7 (“It should be noted that the teaching
of Maienfisch specifically discloses thiamethoxam as a possible oxadiazine
derivative. See, for example, compound 1.3 in Table 1 of Example H4 in
column 20.”)).
Appellants argue, however:
[T]he teaching of Maienfisch does not provide any guidance to
one skilled in the art to (1) focus on thiamethoxam instead of
the other disclosed oxadiazine derivatives, (2) select abamectin
from The Agrochemicals Handbook when The Agrochemicals
Handbook contains 1500 pages relating to hundreds (if not
thousands) of possible pesticides, (3) utilize abamectin instead
of another insecticide from the hundreds of pesticides disclosed
in The Agrochemicals Handbook, and (4) subsequently
combine abamectin with thiamethoxam to form a pesticidal
composition.

(App. Br. 9.)
We are not persuaded that a preponderance of the evidence fails to
support the Examiner’s prima facie case.
Maienfisch discloses oxadiazine insecticidal compounds suitable for
protecting a variety of crops (see Maienfisch, col. 15, ll. 16-32) by
application to the plants themselves as well as the soil (see id. at col. 18, ll.
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12-34). As the Examiner found, and Appellants concede, Maienfisch
discloses that any of its oxadiazine insecticides, including thiamethoxam,
may be combined with additional insecticide compounds (id. at col. 17, ll.
50-53 (“The activity of the compositions according to the invention can be
broadened considerably and adapted to prevailing circumstances by addition
of other insecticidal active ingredients.”)).
As the Examiner also found, The Agrochemicals Handbook discloses
that abamectin is an insecticidal compound suitable for protecting a number
of the same crops that are protected by Maienfisch’s compounds (compare
The Agrochemicals Handbook A0891, to Maienfisch, col. 15, ll. 16-32).
Given Maienfisch’s explicit teaching of the suitability of combining
its compounds with additional insecticides, and given the cited references’
teachings that thiamethoxam and abamectin are suitable for protecting a
number of the same crops from insects, we are not persuaded that the
Examiner failed to provide an adequate rationale for combining the two
agents and applying them to crop plants, in the manner required by claim 43.
It may be true that abamectin is among many hundreds of known
insecticides that an ordinary artisan would have been prompted to combine
with the oxadiazine compounds disclosed by Maienfisch. However, as our
reviewing court has pointed out, the fact that a prior art reference might
disclose “a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose taught by the prior
art.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989).
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Thus, Appellants’ arguments do not persuade us that the Examiner
failed to make out a prima facie case of obviousness as to claim 43. We are
also not persuaded that Appellants have advanced evidence of unexpected
results sufficient to overcome the Examiner’s prima facie case.
While Appellants note their submission of the Hillesheim3 and
Fuquay4 Declarations, Appellants do not specifically discuss the substance
of those declarations in any clear detail (see App. Br. 10-11). The Examiner
noted that while the Tables in the Hillesheim Declaration showed some
results with an F/E value of greater than 1 “which indicates synergism,” a
number of tested ratios and concentrations of thiamethoxam and abamectin
were “less than 1.00, indicating antagonism” (Ans. 5).
We conclude that the Examiner has the better position here. We
acknowledge several assertions in the Hillesheim Declaration of
“unexpected synergism” (see Hillesheim Declaration ¶¶ 5, 6).
It is well settled, however, that “objective evidence of nonobviousness
must be commensurate in scope with the claims.” In re Kulling, 897 F.2d
1147, 1149 (Fed. Cir. 1990) (quoting In re Lindner, 457 F.2d 506, 508
(CCPA 1972)); see also In re Muchmore, 433 F.2d 824, 826 (CCPA 1970)
(evidence which “might” have shown that claim encompassed unexpectedly
superior processes held insufficient to overcome prima facie case of
obviousness where claim “read[] on both obvious and unobvious subject
matter”).

3 Declaration of Elke Hillesheim under 37 C.F.R. § 1.132 (declaration
executed June 2, 2008).
4 Declaration of Leslie Fuquay under 37 C.F.R. § 1.132 (declaration
executed February 27, 2009).
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Here, the activities stated as being unexpectedly synergistic are
limited to certain test organisms, whereas the process of claim 43 is not so
limited. Moreover, claim 43 is not limited to specific concentrations or
concentration ratios that yield synergistic results.
For example, the Hillesheim Declaration (¶ 5) points to an
unexpectedly high synergistic activity against Heliothis virescens at a
concentration of 0.23 ppm thiamethoxam and 0.05 ppm abamectin, with an
expected mortality rate of 22% (“E”), but an actually found mortality rate of
67% (“F”), resulting in an F/E ratio of 3.05 (Hillesheim Declaration p. 7
(Table 2a)). However, when tested on nymphs and adults of tetranychus, a
combination of the same concentrations of thiamethoxam and abamectin
produced a mortality rate of zero, for an F/E ratio of zero, despite an
expected mortality rate of 54.5 (see id. at p. 11 (Table 2e)).
Similarly, a combination of 0.0575 ppm thiamethoxam and 0.025
abamectin yielded a relatively high F/E ratio of 13.29 against Heliothis
virescens larvae (see id. at p. 8 (Table 2b)), yet a combination of the same
concentrations of the same agents yielded a much less than expected F/E
ratio of 0.23 when tested for ovicidal activity against tetranychus (see id. at
p. 10 (Table 2d)).
Moreover, the activities of the combinations also vary significantly as
to concentration, with non-synergistic activity (F/E about 1) being shown in
a number of instances at the same ratio that appears to give significant
synergistic activity (see, e.g. id. at p. 7 (Table 2a (thimethoxam:abamectin
ratio of 4.6:1 gives F/E ratio of zero or 1.04 at certain concentrations, but
apparently significantly higher F/E of 3.33 when 0.115 ppm thiamethoxam
and 0.025 ppm abamectin are used))).
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In sum, the activities asserted as being unexpectedly synergistic are
shown against certain organisms, but not against others. Moreover, apparent
synergistic activity is shown as being produced at certain concentrations of
the claimed insecticides, but not other concentrations. In contrast, claim
43’s process is not limited to controlling a particular pest organism, nor is
claim 43 limited to using a particular ratio or range of concentrations of the
claimed agents that consistently produces results that Appellants assert as
being unexpected.
Thus, as we are not persuaded that Appellants’ evidence of
unexpected results is commensurate in scope with the subject matter
encompassed by claim 43, and as we are also not persuaded, for the reasons
discussed above, that the Examiner failed to make out a prima facie case of
obviousness, we affirm the Examiner’s rejection of claim 43 as obvious over
Maienfisch and The Agrochemicals Handbook. The remaining claims fall
with claim 43. See 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD
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

cdc