Ex Parte Watrin et al

Patent Trial and Appeal BoardSep 11, 2013

11813057 (P.T.A.B. Sep. 11, 2013)

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. 11/813,057 05/30/2008 Clifford George Watrin 70591 6017 85981 7590 09/11/2013 Syngenta Corp Protection, Inc. 410 Swing Road Greensboro, NC 27409 EXAMINER THOMAS, TIMOTHY P ART UNIT PAPER NUMBER 1628 MAIL DATE DELIVERY MODE 09/11/2013 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 CLIFFORD GEORGE WATRIN and GILBERTO OLAYA __________ Appeal 2012-003869 Application 11/813,057 Technology Center 1600 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for anticipation and obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-003869 Application 11/813,057 2 STATEMENT OF CASE 1. A method of controlling Pythium infection of plants comprising treating the plant or plant propagation material with a strobilurin to control Pythium infection of the plant or plant propagation material. Cited References Asrar et al. ‘371 2003/0060371 A1 Mar. 27, 2003 Asrar et al. ‘732 2004/0259732 A1 Dec. 23, 2004 Watrin 7,071,188 B2 Jul. 4, 2006 Grounds of Rejection Claims 1-7, 9, 11-13, 15-16 and 18-19 are rejected under 35 U.S.C. § 102(b) as being anticipated by Asrar ‘371. Claims 1-7, 9, 11-13, 15-16 and 18-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 16, 22, 27-29 of Watrin in view of Asrar ‘732.1 FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 4- 11. Discussion ISSUE 1 In addition to the rejections listed above, the Examiner also provisionally rejected the pending claims for obviousness-type double patenting based on Application 11/720,905. According to USPTO records, the ‘905 application has been abandoned. We therefore reverse the provisional obviousness-type double patenting rejection. Appeal 2012-003869 Application 11/813,057 3 The Examiner concludes that Asrar ‘731 teaches each element claimed. Appellants argue that Asrar ‘731 fails to teach: (1) a method of controlling Pythium infection of plants (claims 1 and 15); (2) a method of controlling Pythium infection of plants comprising treating the plant or plant propagation material with a strobilurin to control Pythium infection of the plant or plant propagation material (claims 1 and 15); and (3) a method of controlling Pythium infection of plants comprising treating the plant or plant propagation material with (i) a strobilurin to control Pythium infection of the plant or plant propagation material, and (ii) a further pesticide either simultaneously or in succession to the strobilurin (claim 15). (App. Br. 8.) The issue is: Does the cited prior art teach each element of the invention, as claimed? PRINCIPLES OF LAW In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “‘The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise extension of [a] patent for the same invention or an obvious modification thereof.’” In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1375 (Fed. Cir. 2008). The proscription against double Appeal 2012-003869 Application 11/813,057 4 patenting takes two forms: (1) statutory double patenting, which stems from 35 U.S.C. § 101 and prohibits a later patent from covering the same invention, i.e., identical subject matter, as an earlier patent, and (2) obviousness-type double patenting, which is a judicially created doctrine that prevents a later patent from covering a slight variation of an earlier patented invention. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372-73 (Fed. Cir. 2005); Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1377-1378 n.1 (Fed. Cir. 2003). The second type of double patenting, obviousness-type double patenting, prohibits “claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” In re Basell, 547 F.3d at 1375. An obviousness-type double patenting analysis, which “compares claims in an earlier patent to claims in a later patent or application,” Geneva, 349 F.3d at 1378 n.1, consists of two steps, Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1363 (Fed. Cir. 2008). First, the court “construes the claim[s] in the earlier patent and the claim[s] in the later patent and determines the differences.” Id. Second, the court “determines whether those differences render the claims patentably distinct.” Id. “A later claim that is not patentably distinct from,” i.e., “is obvious over[] or anticipated by,” an earlier claim is invalid for obviousness-type double patenting. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001). ANALYSIS Appellants have elected the strobilurin compound, azoxystrobin, for prosecution in the Application. (Ans. 4.) When the examiner has required the applicant to elect single species for examination, the issue on appeal is Appeal 2012-003869 Application 11/813,057 5 the patentability of the single elected species. It is appropriate to limit discussion to that single issue and take no position respecting the patentability of the broader generic claims, including the remaining, non- elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). We agree with the Examiner’s fact finding, statement of the rejection and responses to Appellants’ arguments as set forth in the Answer and adopt them as our own. We find that the Examiner has provided evidence to support a finding of anticipation. We therefore agree with the Examiner that “applicant’s argued discovery that strobilurin could be used to effectively control Pythium infection of plants when the plant or plant propagation material is treated with a strobilurin, is taken to be a discovery of a previous unappreciated property of a prior art method.” (Ans. 8.) “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990). We provide the following additional comment to the argument set forth in the Appeal Brief. Claim Interpretation Our mandate is to give claims their broadest reasonable interpretation. In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). It is during prosecution that applicants have “the opportunity to amend the Appeal 2012-003869 Application 11/813,057 6 claims to obtain more precise claim coverage.” In re American Academy Of Science Tech Center, 367 F.3d at 1364. Claim 1 recites, “[a] method of controlling Pythium infection of plants comprising treating the plant or plant propagation material with a strobilurin to control Pythium infection of the plant or plant propagation material.” Thus, the claim involves a single step of treating the plant or plant propagation material with a strobilurin fungicide. The Examiner has interpreted the claims as follows: [T]he claims have been construed in a manner consistent with the language of claim 1, “controlling Pythium infection ...” and “to control Pythium infection”, having the meaning where “controlling” reads on prophylactic or protective application of the recited strobilurin to the plant or plant seed. The claimed method, therefore, reads on application the elected strobilurin compound (azoxystrobin) to a plant or plant seed (i.e., “treating” the plant or seed), whether the plant has Pythium infection, or does not have Pythium infection. (Ans. 12.) In addition, the Examiner finds that, “[b]ecause ‘controlling’ Pythium infection (including by species of Pythium recited in dependent claims) has been construed in a manner where it does not require Pythium infection is present, the controlling language is not considered to patentably distinguish the teachings of this reference from the instant method steps.” (Id. at 13.) Moreover, the Examiner finds that, “[t]he instant claimed methods do not require infection of the plant or seed, or diagnosis of the plant having Pythium infection, before treating with azoxystrobilurin, or any other step that differentiates the prior art method steps from the instant claimed methods.” (Id. at 14.) Appeal 2012-003869 Application 11/813,057 7 Appellants fail to address the Examiner’s claim interpretation (other than their preamble argument which is addressed below), or provide reference to the Specification to support an alternative claim interpretation. Thus, Appellants have left unrebutted the Examiner’s claim interpretation. Appellants argue that Asrar ‘371, ¶¶ [0031] and [0034] suggests that the fungicides of Asrar have only weak, no significant activity, or no activity against pythium infection. (App. Br. 7.) Regardless of what Asrar ‘371 says about the activity of its fungicides, however, Appellants have failed to show that the reference does not disclose the same step recited in the claims – treating a plant or plant propagation material with a strobilurin, specifically azoxystrobilurin. See Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it.”). As to Appellants’ claim “preamble” argument, Appellants’ Specification does not specifically indicate what is meant by the term “controlling” Pythium infection, which the Examiner has found to encompass prophylactic or protective application of the claimed fungicide. In addition, in the present case Appellants have defined “a structurally complete invention in the claim body” and use the preamble “only to state a purpose or intended use for the invention.” In such circumstances, the preamble is not a claim limitation. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Furthermore, even if the preamble of the claim is given weight, the preamble encompasses protective application of the claimed fungicide. Appellants have failed to distinguish Asrar ‘371’s application of the claimed fungicide from the claimed method step. Therefore, while Appellants argue they have provided a new solution to an unrecognized problem (App. Br. 8), Appeal 2012-003869 Application 11/813,057 8 the pending claims, as written, amount to the discovery of a previously unappreciated property of a prior art method. Appellants provide separate argument for claim 2. (Id. at 10-11.) We agree with the Examiner that The claimed method, therefore, reads on application the elected strobilurin compound (azoxystrobin) or combination of compounds to a plant or plant seed (i.e., “treating” the plant or seed), whether the plant has Pythium infection, or does not have Pythium infection, including the types of Pythium recited in claims 2, 3 and 18-19. (Ans. 17.) Appellants’ arguments with respect to the obviousness-type double patenting rejection, track those presented for the anticipation rejection over Asrar ‘371. (App. Br. 12-16.) We affirm this rejection for the reasons set forth in the Answer and of the record. This Decision is limited to the elected species and we take no position respecting the patentability of the broader generic claims, including the remaining, non-elected species. CONCLUSION OF LAW The cited references support the Examiner’s anticipation and obviousness-type double patenting rejection with respect to the elected species. 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