Syngenta Participations AG

Patent Trials and Appeals Board

Mar 31, 2022

2021003010 (P.T.A.B. Mar. 31, 2022)

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. 15/571,575 11/03/2017 Jérôme Yves CASSAYRE SYG-0207PA(115479.000122) 4035 153842 7590 03/31/2022 BakerHostetler Washington Square, Suite 1100 Washington, DC 20036-5304 EXAMINER RODRIGUEZ, RAYNA B ART UNIT PAPER NUMBER 1628 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JÉRÔME YVES CASSAYRE, ANDRÉ JEANGUENAT, and ELKE MARIA HILLESHEIM ____________ Appeal 2021-003010 Application 15/571,575 Technology Center 1600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN E. SCHNEIDER, 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 6, 15, 16, 18, 25, and 27-36 (Appeal Br. 5).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 “Syngenta Participations AG” (Appellant’s November 19, 2020, Appeal Brief (Appeal Br.) 3). 2 Pending claims 14, 17, and 26 stand withdrawn from consideration (see Appeal Br. 5). Appeal 2021-003010 Application 15/571,575 2 STATEMENT OF THE CASE Appellant’s disclosure “relates to methods for controlling and/or preventing infestation of stinkbugs, particularly stinkbugs of the genus Euschistus, more particularly Euschistus heros” (Spec.3 1:5-6). Appellant’s independent claim 6 is reproduced below: 6. A method of controlling infestation of stinkbugs comprising applying to a crop of plants, the locus thereof, or propagation material thereof, a compound selected from and . (Appeal Br. 24.) 3 Appellant’s November 3, 2017, Specification. Appeal 2021-003010 Application 15/571,575 3 Due to a restriction requirement and species election we limit the scope of our review to Appellant’s elected invention, which is directed to a method of controlling infestation of stinkbugs comprising applying the compound: to a crop of plants, the locus thereof, or propagation material thereof (see Appeal Br. 7). Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). Claims 6, 15, 16, 18, 25, and 27-36 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Maue ’5004 and Maue ’436.5 4 Maue et al., WO 2014/122083 A1, published Aug. 14, 2014 (“Maue ’083”). Examiner explains that Maue ’083 “is the PCT counterpart to [Maue et al., US 2015/0353500 A1, published Dec. 10, 2015 (“Maue ’500”)]” (Examiner’s February 1, 2021, Answer (“Ans.”) 5). Examiner further explains that “[b]ecause . . . [Maue ’083 and Maue ’500] appear to have identical disclosures, and because . . . [Maue ’083] was published in German language . . ., [Maue ’500], which is the National Stage entry of [Maue ’083], . . . is being used as a translation of . . . [Maue ’083]. As such, any reference hereinafter to column and line numbers will be based upon [Maue ’500] . . ., but should be interpreted as referring to the corresponding disclosure of the aforementioned . . . [Maue ’083] counterpart” (Ans. 5). 5 Maue et al., WO 2016/020436 A1, published Feb. 11, 2016. Appeal 2021-003010 Application 15/571,575 4 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Maue ’500 “relates to novel halogen-substituted compounds, to processes for their preparation and to their use for controlling animal pests, in particular arthropods and especially insects, arachnids and nematodes” (Maue ’500 ¶ 1; see generally Ans. 5). FF 2. Maue ’500 discloses “[s]urprisingly, it has now been found that certain halogen-substituted compounds and their N-oxides and salts have biological properties and are particularly suitable for controlling animal pests, and can therefore be employed particularly well in the agrochemical field and in the animal health sector” (Maue ’500 ¶ 7; see generally Ans. 5). FF 3. Maue ’500 discloses that compounds, within the scope of its disclosure, “can be used as agents for controlling animal pests, preferably as crop protection agents” (Maue ’500 ¶ 192; see Ans. 5). FF 4. Maue ’500 discloses compound Ic-2, which has the following structure: (Maue ’500 35: Table 3; see Ans. 6-7.) Appeal 2021-003010 Application 15/571,575 5 FF 5. Maue ’500 discloses that “[a]ll plants and plant parts can be treated in accordance with . . . [its disclosure],” wherein treatment . . . of the plants and plant parts with the active compounds is effected directly or by allowing them to act on the surroundings, habitat or storage space thereof by the customary treatment methods, for example by dipping, spraying, evaporating, fogging, scattering, painting on, injecting, and, in the case of propagation material, especially in the case of seeds, also by applying one or more coats. (Maue ’500 ¶¶ 197-198; see Ans. 5-6.) FF 6. Maue ’500 discloses that compositions, comprising compounds within the scope of its disclosure, are suitable for protecting seed of any plant variety as already mentioned above which is employed in agriculture, in the greenhouse, in forests or in horticulture. In particular, this takes the form of seed of maize, peanut, canola, oilseed rape, poppy, soya, cotton, beet (for example sugar beet and fodder beet), rice, millet, wheat, barley, oats, rye, sunflower, tobacco, potatoes or vegetables (for example tomatoes, cabbage species). The compositions according to the invention are likewise suitable for treating the seed of fruit plants and vegetables as already mentioned above. The treatment of the seed of maize, soya, cotton, wheat and canola or oilseed rape is of particular importance. (Maue ’500 ¶ 276; see Ans. 6.) FF 7. Examiner finds that Maue ’500 does not “explicitly teach controlling infestation of stinkbugs” (Ans. 7). FF 8. Maue ’436 “relates to novel halogen-substituted compounds, to processes for their preparation and to their use for controlling animal pests, in particular arthropods and especially insects, arachnids and nematodes” (Maue ’436 ¶ 1; see generally Ans. 8). Appeal 2021-003010 Application 15/571,575 6 FF 9. Maue ’436 discloses “[s]urprisingly, it has now been found that certain halogen-substituted compounds and their N-oxides and salts have biological properties and are particularly suitable for controlling animal pests, and can therefore be employed particularly well in the agrochemical field and in the animal health sector” (Maue ’436 ¶ 7; see also id. ¶ 24 (Maue ’436 discloses “a method for controlling pests, characterized in that a compound of the present invention is allowed to act on the pests and/or their habitat”); id. ¶ 565 (Maue ’436 discloses the controlling infestations of stinkbugs of the genus Euschistus, including Euschistus heros); see generally Ans. 8). FF 10. Maue ’436 discloses “the use of . . . compounds of the formula (I) as pesticides, in particular crop protection agents” (Maue ’436 ¶ 563; see generally Ans. 8). FF 11. Maue ’436 discloses: The halogen-substituted compounds according to . . . [its disclosure] are defined by the general formula (I) in which Z1 represents perhalogenated (C1-C2)-alkyl, preferably CF3 or C2F5; Appeal 2021-003010 Application 15/571,575 7 Z2 represents -S(O)0-2-(C1 -C2)-alkyl or -S(O)0-2-(C1-C2)- halogenalkyl, preferably -S(O)0-2-CH3-S(O)0-2-C2H5 or -S(O)0-2- CH2-CF3; Z3 represents (C1-C2)-alkyl, preferably CH3; R1 represents hydrogen (H) or (C1-C2)-alkyl, preferably H or CH3, more preferably H; R2 represents H or cyano (CN); R3 represents CH3 or chlorine (Cl); and A1 represents CH or nitrogen (N) with the proviso that the two compounds characterized by the following combinations are excluded: (Maue ’436 ¶ 32 (emphasis added).) FF 12. Maue ’436 discloses “preferred embodiments [in which] any substituent R1 to R3, A1, Z1 to Z3 of compounds of formula (I) has the meaning as defined in [FF 11] if not defined otherwise in the preferred embodiment.” (Maue ’436 ¶ 33.) In one “preferred embodiment Z2 is -S-CF3, -SO-CF3, -SO2-CF3, -S-CH2CF3, -SO-CH2CF3, -SO2-CH2CF3.” Id. ¶ 41 (emphasis added). FF 13. Maue ’436 discloses that “[a]ll plants and plant parts can be treated in accordance with . . . [its disclosure],” wherein [t]reatment according to the invention of the plants and plant parts with the compounds of the formula (I) is carried out directly or by allowing the compounds to act on the surroundings, environment or storage space by the customary treatment methods, for example by immersion, spraying, Appeal 2021-003010 Application 15/571,575 8 evaporation, fogging, scattering, painting on, injection and, in the case of propagation material, in particular in the case of seeds, also by applying one or more coats. (Maue ’436 ¶¶ 602-603; see also id. ¶¶ 602, 605 (Maue ’436 discloses that plants, including soybean may be treated with compounds within the scope of its disclosure); see generally Ans. 8.) ANALYSIS Appellant’s claim 6 is reproduced above. Appellant’s claims 15, 16, 18, 25, and 27-36 depend directly or indirectly from Appellant’s claim 6. Examiner finds that Maue ’436 and Maue ’500 both disclose insecticidal compounds for application to plants and plant parts (see FF 1- 13). In addition, Examiner finds that Maue ’436 establishes that compounds structurally similar to Maue ’500’s compound Ic-2 “are suitable for controlling pests including the stinkbug, Euschistus heros in soybean” (Ans. 13). We agree with Examiner’s finding that Maue ’436 discloses a compound that is structurally similar to Maue ’500’s compound Ic-2. Specifically, Maue ’436 discloses a compound of the following formula: wherein, Z1 is C2F5; Z2 is -S(O)0-2-CH2-CF3; Appeal 2021-003010 Application 15/571,575 9 Z3 is CH3; R1 is hydrogen (H); R2 is cyano (CN); R3 is chlorine (Cl); and A1 is CH. (FF 11.) Maue ’436 also discloses a preferred embodiment in which Z2 is -S-CF3. (FF 12.) The foregoing Maue ’436 compound differs from Maue ’500’s compound Ic-2 only at the Z2 position, wherein Maue ’436 discloses that the Z2 substituent may be S-CF3 while the corresponding substituent in Maue ’500 is CF3. Based on the combination of Maue ’500 and Maue ’436, Examiner concludes that, before the effective filing date of Appellant’s claimed invention, it would have been prima facie obvious to control infestation of stinkbugs by applying Maue ’500’s insecticidal compound Ic-2 to crop plants as suggested by the combination of Maue ’500 and Maue ’436 (see Ans. 8; see also FF 1-13). Examiner further concludes that Maue ’436 provides a reasonable expectation of success in controlling pests including stinkbug infestations of crop plants, because Maue ’436 establishes that compounds structurally similar to Maue ’500’s compound Ic-2 “are suitable for controlling pests including the stinkbug, Euschistus heros in soybean” (Ans. 13). We agree. See In re Dillon, 919 F. 2d 688, 692 (Fed. Cir. 1990) (“[S]tructural similarity between claimed and prior art subject matter . . . where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and . . . the burden (and opportunity) then falls on an applicant to rebut that prima facie case.”). Appeal 2021-003010 Application 15/571,575 10 Maue ’500 expressly discloses compound Ic-2 (see FF 4), therefore, we are not persuaded by Appellant’s contention that there was no motivation to modify Maue ’500 Ic-2 compound, which, according to Appellant, reads on Appellant’s “elected species” (Appeal Br. 13, 17). Maue ’500 further discloses the application of compound Ic-2 to crop plants and plant parts (see FF 5-6), therefore, we are not persuaded by Appellant’s contention that the prior art fails to provide motivation for the use of compound Ic-2 as an insecticidal for application to crop plants. For the foregoing reasons, we find that the combination of Maue ’500 and Maue ’436 makes obvious the control of a stinkbug infestation by application of compound Ic-2 to, inter alia, crop plants as required by Appellant’s claim 6 (see FF 1-13). We further find that those of ordinary skill in this art would have had a reasonable expectation of success in controlling such a stinkbug infestation with compound Ic-2, because Maue ’436 discloses the application of structurally similar compounds to, inter alia, crop plants to, inter alia, control stinkbug infestation (see id.). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner’s conclusion of obviousness lacks motivation, because “stinkbugs are difficult to control” and “are unique in terms of both resistance and tolerance and it is unclear how effective a general pesticide Appeal 2021-003010 Application 15/571,575 11 would be against stinkbugs” (Appeal Br. 17-18 (citing Spec. 1:19-30; Sosa- Gómez6 767; US EPA;7 O’Brien8); see also Reply Br. 3-4; cf. FF 1-13). “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Therefore, we are not persuaded by counsel’s assertion that “Maue [’500] appears to disclose that not all compounds are equally effective against all pests” (Appeal Br. 14). In addition, we find no limitation in Appellant’s claim 6 that requires the elected compound to have equivalent or better insecticidal activity than any other compound or perform in an equivalent or better manner than any other compound at controlling an infestation of stinkbugs among a crop of plants. Thus, we are not persuaded by Appellant’s contention that its Specification establishes that “Compound 3 was approximately 64x more active than Compound 4,” which, according to Appellant, is an unexpected result. See In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (In order to be persuasive of non-obviousness, “[e]vidence of secondary considerations must be reasonably commensurate with the scope of the claims.”). For the foregoing reasons, we are not persuaded by Appellant’s contention that 6 Sosa-Gómez, et al., Neotropical brown stink bug (Euschistus heros) resistance to methamidophos in Paraná, Brazil, 45 Pesq. Agropec. Bras., Brasilia 767-769 (2010). 7 Brown Marmorated Stink Bug, Pest Control and Pesticide Safety for Consumers, US EPA, available at https://www.epa.gov/safepestcontrol/brown-marmorated-stink-bug, last accessed Feb. 6, 2020. 8 Dennis O’Brien, ARS, Combating the Brown Marmorated Stink Bug, A new Threat for Agriculture, a Nuisance for Homeowners, Agricultural Research 14-15 (July 2009). Appeal 2021-003010 Application 15/571,575 12 “[t]he unexpected results in the specification rebut the alleged case of prima facie obviousness” (Appeal Br. 22; see generally Reply Br. 2-3). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner “fails to consider the applied art as a whole,” “ignores the state of art,” “commits legal error by disregarding the unexpected results in the [S]pecification,” “has not provided any reason why a person of ordinary skill in the art would select compound Ic-2 from Maue [’500] as a compound for stinkbugs,” and “ignores the state of the art because stinkbugs are more difficult to control than other pests” (Appeal Br. 21-22 (emphasis omitted)). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner’s prima facie case of obviousness is based in improper hindsight (Reply Br. 5-6). CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 6 under 35 U.S.C. § 103 as unpatentable over the combination of Maue ’500 and Maue ’436 is affirmed. Claims 15, 16, 18, 25, and 27-36 are not separately argued and fall with claim 6. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 6, 15, 16, 18, 25, 27-36 103 Maue ’500, Maue ’436 6, 15, 16, 18, 25, 27-36 Appeal 2021-003010 Application 15/571,575 13 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED