Kinya Ogawa et al.

Patent Trials and Appeals Board

Nov 20, 2019

13491208 - (D) (P.T.A.B. Nov. 20, 2019)

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.
13/491,208 06/07/2012 Kinya Ogawa 035576/419951 9141
128144 7590 11/20/2019
Rimon PC
One Embarcadero Center
Suite 400
San Francisco, CA 94111
EXAMINER
LEE, ANDREW P
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
11/20/2019 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.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KINYA OGAWA and TATSUYA HOJO
____________

Appeal 2018-008408
Application 13/491,208
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Shin-Etsu
Chemical Co., LTD” (Appellant’s January 23, 2018 Appeal Brief (Appeal
Br.) 1).
Appeal 2018-008408
Application 13/491,208

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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a so-called mating disruption
method and a mating disruptant used therefor, wherein the former is a pest
control method of releasing a sex pheromone substance of an insect pest in a
field to disrupt the mating behavior of the insect pest” (Spec. 1). Claims 1–3
are representative and reproduced below:
1. A mating disruption method comprising a step of starting
to apply a mating disruptant after mating and oviposition of
imagoes of the first generation of an insect pest are
substantially over and before imagoes of the second generation
of the insect pest emerge, with neither the use of the mating
disruptant nor the use of an insecticide against the first
generation,
the mating disruptant targeting at least one kind of insect
pest which comprises one or more kinds of acetates as a natural
sex pheromone, the insect pest being selected from the group
consisting of tortricid (Leafroller), armyworm (Spodoptera),
Sesiidae (Synanthedon), pink bollworm (Pectinophora
gossypiella: PBW), European grapevine moth (Lobesia botrana:
EGVM), tomato pinworm (Keiferia lycopersicella: TPW), light
brown apple moth (Epiphyes postvittana: LBAM), Grapholita
dimorpha Komai (Grapholita dimorpha), apple leafminer
(Phyllonorycter ringoniella), tomato leafminer (Tuta absoluta)
and European goat moth (Cossus cossus ), all of which are
substantially free of alcohol or alcohols derived from the
acetates as well as oriental fruit moth (Grapholitha molesta:
OFM) and omnivorous leafroller (Platynota stultana), both of
which comprise 1.5% by weight or less of alcohol or alcohols
derived from the acetates; and
the mating disruptant comprising the acetates and the
alcohol or alcohols derived from the acetates wherein each
amount of the alcohol or alcohols is 1.5 to 10% by weight
relative to each amount of the acetates.
(Appeal Br. 12.)
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Application 13/491,208

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2. The mating disruption method according to claim 1,
wherein the insect pest is an insect pest which emerges earlier
between two kinds of insect pests having different emergence
times, and the step of starting to apply is carried out after
mating and oviposition of imagoes of the first generation are
substantially over and before imagoes of the second generation
of the insect pest emerge, and before emergence of the first
generation of an insect pest which emerges later between the
two kinds of insect pests.
(Id.)
3. The mating disruption method according to claim 2, wherein
the insect pest which emerges earlier is oriental fruit moth and
the insect pest which emerges later is peach twig borer or
codling moth.
(Id. at 13.)

Grounds of rejection before this Panel for review:
Claims 1–3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ogawa,2 Johnson,3 and McGhee.4

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Ogawa et al., US 2010/0021417 A1, published Jan. 28, 2010.
3 Johnson et al., Organic Fruit Production Needs and Pest Management
Practices in the Southeastern United States, 873 Acta. Hort. 37–44 (2010).
4 Stelinski et al., Sprayable Microencapsulated Sex Pheromone
Formulations for Mating Disruption of Four Tortricid Species: Effects of
Application Height, Rate, Frequency, and Sticker Adjuvant, 100 J. Econ.
Entomol. 1360–69 (2007). We refer to this document as McGhee as it was
relied upon by Appellant and Examiner.
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Application 13/491,208

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ANALYSIS
Examiner finds that although Ogwa discloses Appellant’s claimed
method but for:
[A]n insect pest which emerges earlier between two kinds of
insect pests having different emergence times, and the step of
starting to apply is carried out after mating and oviposition of
imagoes of the first generation are substantially over and before
imagoes of the second generation of the insect pest emerge
without use of the mating disruptant against the first generation,
and before emergence of the first generation of an insect pest
which emerges later between the two kinds of insect pests.
Ogawa does not teach such a method wherein the earlier
emerging insect pest is the oriental fruit moth and the later
emerging insect pest is the codling moth.
(Ans.5 3–4 (citing Ogawa, Abstract and claims 1–9); see also Appeal Br. 4.)
To make up for this deficiency in Ogawa, Examiner relies on Johnson
to disclose a pest management practice relating to “organic fruit production
in the southeastern United States,” wherein “mating disruption applied
against mid-season generations of codling moth and oriental fruit moth can
result in less than 1% fruit damage at harvest” (Ans. 4 (citing Johnson,
Abstract and 38: fourth paragraph); see also Appeal Br. 4).
Thus, based on the combination of Ogawa and Johnson, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been
implicit to one of ordinary skill in the art to treat before the first
generation of codling moth [CM], which would occur after the
oviposition of the first generation of oriental fruit moth [OFM]
and before the emergence of the second generation of . . .
[OFM] since the start of the first generation of . . . [CM] (May
13) occurs after the first generation of . . . [OFM] (April 29) but

5 Examiner’s August 2, 2018 Answer.
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before the second generation of . . . [OFM] (June 25) as
evidenced by McGhee (pg. 1363).
(Ans. 4.) We are not persuaded.
Ogawa discloses that the pest control effect of sex pheromone is
reduced as the pest population density increases (Ogawa ¶ 62). In this
regard, Ogawa discloses that application of mating disruptants against the
second or later generation of insect pest resulted in insufficient pest control
effects (id.). In contrast, Ogawa discloses that stable results were obtained
when the application of mating disruptants were switched from the second or
later generation to application against the first generation, which has a low
population density (id.). Thus, we agree with Appellant’s contention that
Ogawa “teaches away from delayed application of a mating disruptant,” as
set forth in Appellant’s claimed invention (Appeal Br. 8).

In addition, we agree with Appellant’s contention that it is not clear
from Johnson: (a) “how the mating disruptant was applied,” i.e., whether or
not the mating disruptant was applied in combination with an insecticide,
and (b) “what was meant by mid-season generations” (Appeal Br. 5; see also
Reply Br. 5). Therefore, we look to Aselage,6 as relied upon by Johnson, to
provide context to Johnson’s disclosure.7

6 Aselage et al., From IPM to organic and sustainable agriculture, In: E.B.
Radcliffe, W.D. Hutchison and RE. Cancelado (eds.), Integrated
Pest Management: Concepts, Tactics, Stategies and Case Studies, 489–505,
Cambridge University Press, New York (2009). Appellant refers to this
document as Johnson 2009.
7 Appellant explains:
The fourth paragraph on page 38 of Johnson states the
following:
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As Appellant explains, Aselage’s Table 39.2 makes clear that the
insecticides Intrepid and Guthion were repeatedly applied throughout the
season and “no mating disruptant was applied against CM,” which were
instead “controlled by [the] insecticides . . . Intrepid and Guthion” (see
Appeal Br. 6 (citing Aselage’s Table 39.2) (describing “[i]nsecticides (active
ingredient) and mating disruption (MD) sprayable pheromone applied to the
conventional and alternative management apple blocks in Berryville, AR,
2004); see also Reply Br. 5–6). In addition, although Aselage’s Table 39.2
discloses that an OFM disruptant was applied June 24, July 12 and July 26,
2004, Aselage “does not[, as Appellant explains,] show that the disruptant
was applied after mating and oviposition of imagoes of the first generation
of an insect pest are substantially over and before imagoes and the second
generation of the insect pest emerge” (id. (citing Aselage’s Table 39.2)).
Similarly, Aselage’s Table 39.3 discloses that the application of
mating disruptant “against CM in combination with insecticide Sevin on
May 3-6, 2005,” with “no mating disruptant . . . applied against OFM” (see
Appeal Br. 7 (citing Aselage’s Table 39.3) (describing “[i]nsecticides (active
ingredient) and mating disruption (MD) pheromone ties applied to the

“early and late season use of CMGV [codling moth granulosis
virus] and Bt [Bacillus thuringiensis] could be integrated with
mating disruption against mid-season generations of CM and
OFM [oriental fruit moth], resulting in less than 1% fruit
damage at harvest (Aselage and Johnson, 2008).”
(Id. at 4–5 (alteration original).) We agree with Appellant’s contention that
the reference to Aselage on page 38 of Johnson includes a typographical
error with respect to the year, wherein 2008 should have been 2009 (see id.
at 5; see Johnson 41 (citing Aselage’s 2009 publication)).

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conventional and alternative management apple blocks in Berryville, AR,
2005)). In addition, although Aselage’s “Table 39.3 of does not [, as
Appellant explains,] teach that the disruptant was applied after mating and
oviposition of imagoes of the first generation of an insect pest are
substantially over and before imagoes of the second generation of the insect
pest emerge” (id.).
Thus, with the benefit of the context provided by Aselage, we agree
with Appellant’s contention that “Johnson does not teach applying a mating
disruptant after mating and oviposition of imagoes of the first generation of
an insect pest are substantially over and before imagoes of the second
generation of the insect pest emerge, as recited in [Appellant’s] claims” (id.).
Appellant further contends that “McGhee does not cure the[]
deficiencies” in the combination of Ogawa and Johnson (id. at 9). As
Appellant explains, although McGhee “discloses several experiments
evaluating various parameters of mating disruption,” in all of McGhee’s
experiments “the mating disruptant was applied to each moth generation,
including the first generation” (see id. (citing McGhee 1361–63)). Thus, we
agree with Appellant’s contention that
McGhee fails to teach or suggest a mating disruption method
comprising applying a mating disruptant after mating and
oviposition of imagoes of the first generation of an insect pest
are substantially over and before imagoes of the second
generation of the insect pest emerge, with neither the use of the
mating disruptant nor the use of an insecticide against the first
generation.
(Id.)
We recognize Examiner’s assertion that “McGhee is only relied on as
evidentiary support of the start of the first generation of codling moth (May
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13) occurring after the first generation of oriental fruit moth (April 29) but
before the second generation of oriental fruit moth (June 25)” (Ans. 6). As
Appellant explains, however, McGhee discloses experiments “conducted at
the Trevor Nichols Research Complex (TNRC) of Michigan State University
in Fennville, MI” (Reply Br. 6). Therefore, “the date of the start of each
moth generation [in McGhee] means the date in Michigan” (id.). In contrast,
Johnson discloses experiments performed in Arkansas, wherein “the start of
the first generation of OFM . . . [, due to climatic differences between
Arkansas and Michigan, is] about one month earlier than that in Michigan
(id.). Thus, as Appellant explains, McGhee’s Michigan dates are not
indicative of OFM and CM generations in Arkansas, as disclosed by
Johnson and evidenced by Aselage (see id.).
For all of the foregoing reasons, which include, inter alia, application
of mating disruptant: (a) against the first generation, (b) together with
insecticide, and (c) on different dates due to climatic differences in the
geographic region of application, we are not persuaded by Examiner’s
assertion, that based on the combination of Ogawa, Johnson, and McGhee,
those of ordinary skill in this art at the time of Appellant’s claimed invention
would have arrived at a mating disruption method that comprises the specific
timing and manner of applying a mating disruptant that is required by
Appellant’s claimed invention through routine experimentation (Ans. 6).

CONCLUSION
The preponderance of evidence relied upon by Examiner does not
support a conclusion of obviousness. The rejection of claims 1–3 under 35
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Application 13/491,208

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U.S.C. § 103(a) as unpatentable over the combination of Ogawa, Johnson,
and McGhee is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103 Ogawa, Johnson,
McGee
1–3

REVERSED