Ex Parte Suty-Heinze

Patent Trial and Appeal BoardOct 17, 2017

12831990 (P.T.A.B. Oct. 17, 2017)

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. 12/831,990 07/07/2010 Anne SUTY-HEINZE ES-6487-0044 3531 143374 7590 10/19/2017 Nixon & Vanderhye PC / Bayer 901 N. Glebe Rd., 11th Floor Arlington, VA 22203 EXAMINER BROWN, COURTNEY A ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 10/19/2017 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): ptomail@nixonvan.com pair_nixon @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANNE SUTY-HEINZE Appeal 2017-004036 Application 12/831,99c1 Technology Center 1600 Before ERIC B. GRIMES, ELIZABETH A. LaVIER, and DAVID COTTA, Administrative Patent Judges. LaVIER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the Examiner’s final rejection of claims 1, 2, and 4—6. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons of record and those set forth below, we AFFIRM. BACKGROUND The Specification describes using penflufen to “increas[e] the seedling growth and/or the early emergence of crops.” Spec. 1:2—3. Penflufen, i.e., N- (2-( 1,3-dimethylbutyl)anilino} -1,3-dimethyl-5-fluor-4-pyrazol, is a known anti-fungal pyrazol compound. Spec. 2:20-3:3. 1 Appellant states the real party in interest is Bayer Intellectual Property GmbH. Br. 3. Appeal 2017-004036 Application 12/831,990 Claim 1 is illustrative: 1. A method for promoting early emergence of a crop, comprising applying to one or more seeds in need thereof a compound of formula (I) \ i i. / 0} in an amount effective to promote the early emergence of crops, wherein the crop is a soybean crop or a potato crop such that early emergence occurs in the absence of pest pressure. Br. 15 (Claims Appendix). APPEALED REJECTION Claims 1,2, and 4—6 stand rejected 35 U.S.C. § 103(a) as unpatentable over Elbe2 as evidenced by ASL-STEM.3 Final Action 5. DISCUSSION Elbe teaches the use of penflufen, among other related compounds, to treat seeds of crop plants, including soybeans and potatoes. Final Action 6— 7 (citing Elbe H 41, 224, 381, 385). Elbe notes that, in addition to the fungicidal effect of these compounds, “treatment according to the invention may also result in superadditive (‘synergistic’) effects,” including better growth and accelerated maturation. Elbe 1384; see Final Action 7. The 2 Elbe et al., WO 03/010149 Al, published Feb. 6, 2003 (German); US 2004/0204470 Al, published Oct. 14, 2004 (English). Citations to Elbe refer to the U.S. Application. 3 ASL-STEM Forum, Pest Pressure Hypothesis (2009), http://aslstem.cs.washington.edu/topics/view/697 (last visited Mar. 7, 2011). 2 Appeal 2017-004036 Application 12/831,990 Examiner finds that Elbe differs from claim 1 insofar as Elbe does not “expressly teach a method wherein seed is treated in the absence of a pest pressure.” Final Action 8. However, relying on ASL-STEM’s definition of “pest pressure hypothesis,” the Examiner finds that Elbe “teach[es] a method wherein seed is treated in the absence of a pest pressure especially in the case of seed treatment wherein the seed is treated before planting and is thus is [sic] treated in absence of a pest pressure.” Id. (emphasis omitted). The Examiner reasons that the ordinarily skilled artisan would have been motivated to treat seeds in the absence of pest pressure “to receive the expected benefit of having a method of seed treatment that protects seed before being exposed to potential pests.” Id. at 9. A. Claim Construction Appellant begins by arguing that the Examiner’s rejection relies on a misinterpretation of “absence of pest pressure.” Br. 5. According to Appellant, this limitation “goes to the method of using Penflufen as a seed coating to enhance the early emergence of the plant, not to treat or prevent fungus.” Id. at 6. For support, Appellant points to the data in the Specification comparing treated to untreated seeds, all of which were grown in a pest-free environment. See id. Further, Appellant cites the Suty-Heinze Declaration4 as evidence that the growth-enhancement properties of penflufen are not common to all fungicides, as plants treated with the fungicide pencycuron were shorter than untreated controls. See id. at 6—7. 4 Declaration under 37 C.F.R. § 1.132 of Anne Suty-Heinze (filed Aug. 3, 2011). 3 Appeal 2017-004036 Application 12/831,990 Practicing claim 1 comprises applying penflufen to seeds of soybeans or potatoes, in an amount effective to promote early emergence. The language “such that early emergence occurs in the absence of pest pressure” states a downstream effect of practicing the method, not a step. Cf. In re Montgomery, 677 F.3d 1375, 1381 (Fed. Cir. 2012) (“[EJfficacy is inherent in carrying out the claim steps.”). Claim 1 does not require, for example, the seed to be planted in a greenhouse or other pest-controlled environment. The data from the Specification and the Suty-Heinze Declaration are exemplary, and do not implicitly limit the scope of claim 1. See In re Morris, 111 F.3d 1048, 1054—56 (Fed. Cir. 1997) (“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO’s definition unreasonable when the PTO can point to other sources that support its interpretation.”). Accordingly, we discern no error in the Examiner’s interpretation of “in the absence of pest pressure” to encompass treating a seed before planting, i.e., before the seed is exposed to a pest pressure. See Final Action 8. B. Obviousness Appellant argues that the Examiner ignores the “early emergence” requirement of claim 1 (Br. 7), asserting that “Elbe is completely silent about early emergence of crops” {id. at 8). While Elbe does not use the term “early emergence,” the Examiner points out that Elbe teaches various synergistic effects, including better plant growth and accelerated maturation. Ans. 5—6 (citing Elbe 1384). And although penflufen is not the only compound taught in Elbe {see Elbe Table 1), we are not persuaded by 4 Appeal 2017-004036 Application 12/831,990 Appellant’s suggestion (see Br. 7—8) that the Examiner engaged in too much picking and choosing in rejecting claim 1. Instead, we agree with the Examiner that Elbe “teach[es] the claimed active step of applying the compound of instant formula I to soybean and potato seed which would inherently promot[e] early emergence of a crop.” Ans. 5. Appellant counters that the Examiner misapplies inherency, as the “property of early emergence of a crop is absent from the cited art and does not flow naturally from the cited art.” Br. 10.5 We disagree; as noted above, Elbe teaches synergistic effects of its fungicidal treatment, including “better plant growth” and “accelerated maturation” (Elbe 1384). Appellant further argues that treatment in the “absence of pest pressure” is not suggested by Elbe, which “assumes pests are present and that plants and their seeds need to be protected from them,” or by ASL- STEM. Br. 9. As discussed above, we agree with the Examiner that claim 1 encompasses treating a seed before planting, which Elbe teaches. Somewhat relatedly, and equally unpersuasively, Appellant suggests that the recitation of applying penflufen “to one or more seeds in need thereof’ makes claim 1 analogous to therapeutic use claims (see Br. 11—12), such that claim 1 is “limited to achieving a particular objective” {id. at 11). As noted above, claim 1 is not limited to a specific growth environment. Nor is claim 1 limited to a distinct population of soybean or potato seeds, for example. Having considered all of Appellant’s arguments, we are not persuaded that the Examiner erred in rejecting claim 1. Claims 2 and 4—6 are not argued separately, and fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 5 The quoted statement was Appellant’s attempt to distinguish the present case from Ex parte Obiaya, 227 USPQ 58 (BPAI 1985). 5 Appeal 2017-004036 Application 12/831,990 Accordingly, as explained herein and for the reasons of record, we affirm the rejection. CONCLUSION The rejection of claims 1, 2, and 4—6 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)(iv). AFFIRMED 6