Ex Parte Watrin

Patent Trial and Appeal BoardMar 30, 2018

13806180 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/806,180 03/08/2013 Clifford Watrin 26748 7590 04/03/2018 Syngenta Crop Protection LLC Patent Department PO Box 12257 9 Davis Drive Research Triangle Park, NC 27709-2257 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. 72836-US-REG 8456 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 04/03/2018 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): global.patents@syngenta.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte CLIFFORD WATRIN Appeal2017-001842 Application 13/806, 180 Technology Center 3600 Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 seeks our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 5 and 17- 21.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The real party in interest is identified as Syngenta Crop Protection, LLC. App. Br. 3. 2 Claims 9, 10, and 13-16 are withdrawn from consideration. Final Act. 1. Appeal2017-001842 Application 13/806, 180 Claimed Subject Matter The claimed subject matter "relates to methods of controlling Fusarium virguliforme and Soybean Sudden Death Syndrome (SSDS) using thiabendazole." Spec. para. 1. Claim 5, the sole independent claim, is reproduced below and illustrates the claimed subject matter. 5. A method for suppressing, controlling, or reducing Sudden Death Syndrome in plants comprising: applying thiabendazole to a plant seed prior to planting, wherein said plant seed contains a precursor to Sudden Death Syndrome; and planting said plant seed. Rejection I. Claims 5 and 17-21 stand rejected under pre-AIA 35 U.S.C. Â§ 102(e) as anticipated by Kohn (WO 2010/135324 Al, published Nov. 25, 2010). Final Act. 2-3. DISCUSSION Appellant argues Kohn does not disclose: (1) any plant seed that "contains a precursor to Sudden Death Syndrome;" (2) the step of applying thiabendazole onto a plant seed that contains a precursor to Sudden Death Syndrome; and (3) the step of planting a plant seed that (i) contains a precursor to Sudden Death Syndrome, and (ii) has been treated with thiabendazole. App. Br. 7-8. Appellant contends Kohn discloses applying a formulation or mixture comprising glyphosate onto a soybean plant or soybean seed to suppress multiple diseases, that "Kohn discloses hundreds (if not thousands) of possible additional components," and that "Kohn discloses thiabendazole 2 Appeal2017-001842 Application 13/806, 180 as one fungicide within a list of about 155 possible fungicides that could be used in the formulations or mixtures comprising glyphosate." Id. at 6-7 (citing Kohn 1:24--2:9, 18:27, 20:33). Applying thiabendazole to a plant seed that contains a precursor to Sudden Death Syndrome prior to planting would anticipate claim 5, even if it was not known that such application would suppress, control, or reduce Sudden Death Syndrome in plants. Based on Appellant's arguments, the dispositive issue on appeal is "whether the number of categories and components" disclosed in Kohn is so large that the use of thiabendazole in the manner claimed "would not be immediately apparent to one of ordinary skill in the art." See Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1382 (Fed. Cir. 2015) (internal quotations omitted). On the record before us, the Examiner does not explain how the claimed use of thiabendazole would have been immediately apparent to one of ordinary skill in the art from Kohn. The Examiner reasons that use of the transitional term "comprising" in claim 5 is "inclusive or open-ended and does not exclude additional, unrecited elements or method steps" such as the use of glyphosate, which is the primary ingredient in Kohn's composition. Ans. 2-3. The Examiner also highlights teachings from Kohn that address individual limitations within claim 5, such as applying the glyphosate composition "post- infection" and applying the composition to the seed at or prior to planting. Ans. 4--6. Kohn also specifically identifies at least one of the fungal strains that is recited in dependent claim 17 and is identified in Appellant's Specification as a precursor to SSDS. Compare Kohn 2:2-3 ("In some embodiments, the field contains propagules of Fusarium virguliformae 3 Appeal2017-001842 Application 13/806, 180 ... . "),with Spec. para. 3 ("Fusarium virguliforme . .. is a soybean pathogen ... [that] later develops into the disease Soybean Sudden Death Syndrome (SSDS)."). In this case, however, we determine that the Examiner's identification of thiabendazole as one in a long list of fungicides that may be included in Kohn's glyphosate compound or mixture is insufficient, standing alone, to establish that one of ordinary skill in the art would have at once envisaged its use in the manner recited in claim 5. Kohn's list of possible fungicides to include in its glyphosate compound is extensive. See Kohn 20-21. It is unclear whether, despite the length of the list, use of thiabendazole in the manner claimed would have been immediately apparent to one of skill in this particular art. We cannot determine on the record before us whether one of skill in the art might have, for example, formulated Kohn's glyphosate compound with a large number of the fungicides listed in Kohn, such that the universe of compositions fairly disclosed in Kohn would have been likely to include thiabendazole. We also cannot determine whether one of the smaller list of commercial fungicides identified in Kohn contains thiabendazole. See Kohn 21 :29--22:5. Although Appellant's Specification states that "[t]hiabendazole is a benzimidazole fungicide commonly used to control certain types of mold (e.g. blue and grey molds) and blight," Spec. para. 2, this admission does not indicate particular ways in which thiabendazole was known to be applied and is not relied on by the Examiner. Thus, the record before us does not establish by a preponderance of evidence that it was known to apply thiabendazole to a plant seed that contains a precursor to Sudden Death Syndrome prior to planting, as recited in claim 5. 4 Appeal2017-001842 Application 13/806, 180 In view of the foregoing, we do not sustain the rejection of claim 5 as anticipated by Kohn. For the same reasons, we do not sustain the rejection of claims 17-21, which depend therefrom and are rejected on the same ground. DECISION We reverse the Examiner's rejection of claims 5 and 17-21 as anticipated by Kohn. REVERSED 5