SYNGENTA PARTICIPATIONS AG et al.Download PDFPatent Trials and Appeals BoardJun 1, 202014775829 - (D) (P.T.A.B. Jun. 1, 2020) Copy Citation 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. 14/775,829 09/14/2015 Catherine SAVINELLI SYG-0140PA(115479.000048) 1003 153842 7590 06/01/2020 BakerHostetler Washington Square, Suite 1100 Washington, DC 20036-5304 EXAMINER PALLAY, MICHAEL B ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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 CATHERINE SAVINELLI and ERIN LEANN RICHMOND __________ Appeal 2019-005742 Application 14/775,829 Technology Center 1600 __________ Before DONALD E. ADAMS, FRANCISCO C. PRATS, and ELIZABETH A. LAVIER, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 7–13, and 16–20. 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 states that the real party in interest is Syngenta Participations AG, of Basel, Switzerland. Appeal Br. 4. Appeal 2019-005742 Application 14/775,829 2 STATEMENT OF THE CASE The following rejections are before us for review: (1) Claims 1, 4, 7, 10–13, 16, and 18–20, under 35 U.S.C. § 103(a) as being unpatentable over Fish2 and Mallarino3 (Final Act. 3–5 (entered July 13, 2018)); (2) Claims 1, 4, 7, 8, 10–13, and 16–20, under 35 U.S.C. § 103(a) as being unpatentable over Fish, Mallarino, and Thompson4 (Final Act. 5–6); and (3) Claims 1, 4, 7–13, and 16–20, under 35 U.S.C. § 103(a) as being unpatentable over Fish, Mallarino, Thompson, and Cush5 (Final Act. 6–7). Appellant’s claim 1 is representative and reads as follows: l. A method of controlling insect damage in a corn plant, the method comprising: applying, at planting ± 5 days, a a tefluthrin insecticide and a pop-up fertilizer, wherein the pop-up fertilizer is an N:P:K ratio fertilizer, wherein N is in the ratio range of 4 to 12, P is in the range of 12-40, and K is in the ratio range of 1-10, and wherein the insect damage is damage from a cutworm or a rootworm. Appeal Br. 22. 2 US 6,289,829 B1 (issued Sept.18, 2001). 3 Antonia P. Mallarino, Phosphorus and Potassium Placement Methods For Corn And Soybean: An Iowa Perspective, 48 PROC. OF THE 2009 WISCONSIN CROP MANAGEMENT CONFERENCE 109–115 (2009). 4 US 5,407,134 (issued Apr. 18, 1995). 5 US 2011/0105332 A1 (published May 5, 2011). Appeal 2019-005742 Application 14/775,829 3 STANDARD OF REVIEW As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. OBVIOUSNESS—FISH AND MALLARINO The Examiner’s Prima Facie Case In rejecting claims 1, 4, 7, 10–13, 16, and 18–20 over Fish and Mallarino, the Examiner cited Fish as disclosing a process having nearly all of the steps and features recited in the rejected claims, but conceded that Fish differs from the rejected claims in that, “[a]though Fish et al. discloses fertilizer, Fish et al. does not disclose N:P:K fertilizer as claimed.” Final Act. 4. The Examiner cited Mallarino as disclosing a “commercial liquid starter fertilizer for application to corn seed furrow at planting (i.e., pop-up fertilizer) as N:P:K 9-18-9 (page 112 first full paragraph). 5-10 lb/acre N, 15-25 lb/acre P, and 0-7 lb/acre K are applied (i.e., a total of 20-42 lb nutrients/acre) (Figure 4).” Final Act. 4. Based on the references’ combined teachings, the Examiner reasoned that a skilled artisan would have considered it obvious “to use the 9-18-9 fertilizer of Mallarino, applied in an amount of 20-42 lb nutrients/acre, as the fertilizer in the method of Fish . . . with a reasonable expectation of success.” Final Act. 4. The Examiner further reasoned that the skilled artisan would have been motivated to combine Fish and Mallarino in the posited manner Appeal 2019-005742 Application 14/775,829 4 “because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07, and the 9-18-9 fertilizer of Mallarino was known for application to corn seed furrow at planting (i.e., pop-up fertilizer).” Final Act. 4. Analysis Appellant does not persuade us that a preponderance of the evidence does not support the Examiner’s conclusion of obviousness as to claim 1 in view of Fish and Mallarino. Fish discloses a machine for planting corn that applies an insecticide to a furrow at the time of planting. See Fish, abstract; see also id. at 2:48–57 (objectives of Fish’s invention include “applying pesticidal compositions in a furrow,” “applying liquid pesticidal compositions in a furrow,” and “provid[ing] an improved method of controlling soil-borne pests in corn”). Fish discloses using its corn planting machine to apply a tefluthrin insecticide and a pop-up fertilizer,6 the two active agents recited in Appellant’s claim 1: In a highly preferred embodiment, the liquid composition may be applied as a mixture with a fertilizer, more preferably a pop-up fertilizer. When the pesticide is an insecticide, the pesticide may be: (a) an organophosphate insecticide, for example, chlorpyrifos, chlorethoxyfos, terbufos or terbupirimfos; (b) an N-methylcarbamate insecticide, for example, carbofuran; (c) a pyrethroid insecticide, for example, tefluthrin, 6 Appellant states that a pop-up fertilizer is a fertilizer “placed in direct contact with the seed.” Appeal Br. 15. Appeal 2019-005742 Application 14/775,829 5 permethrin, fenvalerate, esfenvalerate, cypermethrin, cyhalothrin, lambda-cyhalothrin, bifenthrin or deltamethrin; or (d) an insecticidal 1-aryl pyrazole. Fish 3:45–59 (emphases added). As required by Appellant’s claim 1, Fish discloses that its methods are useful for controlling corn rootworm. See Fish 2:39–45 (disclosing that Fish’s inventive planting machine overcomes prior art methods of in-furrow methods of controlling corn rootworms); id. at 7:18–23 (disclosing that configuration of Fish’s inventive planting machine applies pesticide in a manner that better protects from corn rootworm and the like). Although Fish does not specify its pop-up fertilizer as having the N:P:K ratio recited in Appellant’s claim 1, Mallarino discloses that, when planting corn, it is useful to apply a fertilizer undisputedly having the N:P:K ratio recited in claim 1 into the furrow. See Mallarino 112 (disclosing application of various liquid starter fertilizers to seed furrow including one with a 9-18-9 N:P:K ratio); see also id. at 114 (Fig. 4 showing greater early plant growth in NPK-treated corn as compared to plants treated with “check” formulation). Thus, to summarize, Fish describes a method of controlling corn rootworm by applying an insecticide at the time of planting, and discloses a highly preferred embodiment in which the insecticide may be tefluthrin, and in which the insecticide is applied in combination with a pop-up fertilizer. And, Mallarino discloses that at the time of planting corn it is useful to apply a fertilizer having a 9-18-9 N:P:K ratio to the seed furrow. Given these teachings, we agree with the Examiner that a skilled artisan had a good reason for, and a reasonable expectation of success in, applying a tefluthrin Appeal 2019-005742 Application 14/775,829 6 insecticide in combination with a pop-up fertilizer, the pop-up fertilizer having a 9-18-9 N:P:K ratio. We therefore also agree with the Examiner that the process recited in Appellant’s claim 1 would have been prima facie obvious to a skilled artisan. Appellant’s arguments do not persuade us to the contrary. In particular, Appellant does not persuade us that a skilled artisan lacked a reasonable expectation of success in combining a tefluthrin insecticide and a pop-up fertilizer as recited in claim 1. See Appeal Br. 10–11. In support of this argument Appellant cites an article by James F. Wilkinson (Appeal Br., App’x A (“Wilkinson”7)), which Appellant asserts was submitted during prosecution along with the response filed March 28, 2018. Appeal Br. 10. In response, the Examiner asserts as follows: [A]ppellant has provided no indication of where, when, or even if, the Wilkinson document was published, nor does the Wilkinson document contain such information on its face, and neither was the Wilkinson document provided in declaration or affidavit form. Since evidence must be provided in declaration or affidavit form, or be a publication (i.e., be published), per 35 U.S.C. 25, 18 U.S.C. 1001, and MPEP 716.02(g), the Wilkinson document is inadequate to establish a lack of reasonable expectation of success in combining tefluthrin and a pop-up fertilizer. Ans. 4. 7 Appellant provides the following citation for Wilkinson: 47th Annual Michigan Turfgrass Conference Proceedings, Volume 6, January 18–19, pages 58–61, 1997. Appeal 2019-005742 Application 14/775,829 7 Appellant replies as follows: Wilkinson is a published article. Wilkinson was published in the “47th Annual Michigan Turfgrass Conference Proceedings” Volume 6, January 18-19, pages 58-61, 1997. Access to the article may be reached through the Michigan State University library archive: http://archive.lib.msu.edu/tic/mitgc/browse.html, and more specifically at http://archive.lib.msu.edu/tic/mitgc/article/ 197759.pdf. This information may be ascertained by a brief search on the article title and author. As the Wilkinson document is a proper publication, the Examiner’s assertion that the document is inadequate is incorrect. Reply Br. 2. Notwithstanding the fact that Appellant did not clearly establish Wilkinson’s status as a prior art publication until filing its Reply Brief, Appellant does not persuade us that Wilkinson shows that a skilled artisan lacked a reasonable expectation of success in combining a tefluthrin insecticide and a pop-up fertilizer as recited in claim 1. It is well settled that “[o]bviousness does not require absolute predictability of success. . . . For obviousness under § 103, all that is required is a reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (quoting In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (emphasis removed). In the present case, the evidence supporting a reasonable expectation of success is Fish’s express disclosure, in a “highly preferred embodiment,” specifically stating that a tefluthrin insecticide and a pop-up fertilizer may be applied together when planting corn. See Fish 3:45–59. In contrast, Appellant identifies no teaching in Wilkinson suggesting that tefluthrin insecticides, specifically, were known to be incompatible with any particular type of fertilizer. Nor does Appellant identify any teaching in Appeal 2019-005742 Application 14/775,829 8 Wilkinson stating that incompatibility between pesticides and fertilizers is even likely. Thus, at best, Wilkinson shows that some pesticides, not specifically tefluthrin, might be incompatible with some fertilizers. And ultimately, Wilkinson provides a simple solution—testing the potential combination. See Wilkinson 61 (“The ultimate test, of course, is to mix up your various combinations and actually try it on a piece of turf.). Appellant does not persuade us that Wilkinson’s non-specific disclosure of potential incompatibility is sufficient to show that a skilled lacked a reasonable expectation of success in following Fish’s express disclosure of combining a tefluthrin insecticide and a pop-up fertilizer. The fact that a skilled artisan might have tested the combination to ensure compatibility does not persuade us that there was no reasonable expectation of success. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (upholding conclusion of obviousness of prior art-suggested drug/salt combination despite the fact that testing would have been required to verify viability of combination). Appellant also does not persuade us that Fish is non-analogous art. See Appeal Br. 11–13. Specifically, because Fish, like the process of Appellant’s claim 1, involves methods of controlling corn rootworm (see Fish 2:39–45), we find that Fish is not only in the same field of endeavor as the claimed invention, but also would have been pertinent to the problem faced by the inventors. Moreover, because the Examiner’s conclusion of obviousness is based on the teachings discussed above in the prior art references, Appellant does not persuade us that the Examiner used improper hindsight in evaluating the obviousness of claim 1. See Appeal Br. 14. Appeal 2019-005742 Application 14/775,829 9 Appellant also does not persuade us that Mallarino fails to suggest using a fertilizer having a 9-18-9 N:P:K ratio. See Appeal Br. 14–15. Appellant states that a pop-up fertilizer is a fertilizer “placed in direct contact with the seed.” Id. at 15. As noted above, Mallarino discloses that it is useful to put a liquid fertilizer having a 9-18-9 N:P:K ratio into the furrow when planting corn. See Mallarino 112. Because Mallarino discloses applying its liquid fertilizer to the furrow at the time of planting, and because Mallarino gives no indication that the fertilizer should not contact the seed despite being applied to the furrow, Appellant does not persuade us that the Examiner erred in finding that Mallarino would have suggested using its fertilizer as the pop-up fertilizer in Fish’s highly preferred embodiment of controlling rootworm. Lastly, Appellant does not persuade us that it has advanced evidence of unexpected results sufficient to outweigh the prior art evidence of prima facie obviousness advanced by the Examiner. See Appeal Br. 15 (citing Spec. ¶ 29 (Table 1)). In particular, Appellant does not persuade us that claim 1 is commensurate in scope with the data it presented. Appellant’s Table 1 shows results for tefluthrin combined with either 15% or 30% by weight Nachurs 6-24-6 fertilizer. See Spec. ¶ 29 (Table 1). Appellant’s claim 1, in contrast, recites no specific percentage of the pop-up fertilizer, and therefore encompasses applications of very small amounts of fertilizer, for which Appellant provides no data. Appellant does not point to any evidence suggesting that the small amounts of fertilizer encompassed by Appellant’s claim 1 would produce results similar to those seen in Table 1. We are not persuaded, therefore, that claim 1 is commensurate in scope with the asserted showing of unexpectedness. Appeal 2019-005742 Application 14/775,829 10 We note, moreover, that when combined with 400 ppm AI (active ingredient (tefluthrin)), 15% Nachurs 6-24-6 has a 96% mortality effect, whereas 400 ppm AI by itself has a 100% mortality effect. See Spec. ¶ 29 (Table 1). Thus, Appellant’s Table 1 shows that, rather than potentiating the effect of the tefluthrin, the fertilizer has an inhibitory effect at certain concentrations. This supports the Examiner’s finding that the asserted unexpected results would not be consistently present throughout the full range of active agent concentrations and N:P:K ratios encompassed by claim 1. In sum, for the reasons discussed, Appellant does not persuade us that a preponderance of the evidence does not support the Examiner’s conclusion of obviousness as to claim 1 in view of Fish and Mallarino. Because they were not argued separately, claims 4, 7, and 10–13 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that claim 16 is patentable over Fish and Mallarino “for similar reasons as discussed above with respect to claim 1.” Appeal Br. 19. As discussed above, we do not find those arguments persuasive. Accordingly, we also affirm the Examiner’s rejection of claim 16 over Fish and Mallarino. Appellant also does not persuade us that the Examiner erred in concluding that the process recited in Appellant’s claim 18 would have been obvious over Fish and Mallarino. Claim 18 recites “[t]he method of claim 1, wherein the tefluthrin insecticide (AI) is applied in the range of about 0.1 lb AI/acre to about 0.3 lb AI/acre.” Appeal Br. 24. As evidence that claim 18’s process would have been obvious, the Examiner cited Examples 1 and 2 of Fish as disclosing an insecticide Appeal 2019-005742 Application 14/775,829 11 (fipronil) application rate encompassed by claim 18. See Final Act. 3 (“Application of insecticide may be at about 0.13 lb/acre (Examples 1, 2).”); see also Fish 8:3–4 (Example 1 disclosing fipronil application of 0.13 lb/acre); Fish 8:37–39 (Example 2 repeating application of Example 1). Based on the disclosure in Fish’s examples that 0.13 lb/acre was a suitable application rate for one insecticide, the Examiner found that a skilled artisan would have considered 0.13 lb/acre also to be a suitable application rate for another insecticide—the tefluthrin insecticide recited in Appellant’s claim 18. See Final Act. 4–5. Thus, the Examiner’s basis for determining that claim 18’s tefluthrin application rate was obvious was Fish’s disclosure in its examples that another compound (fipronil) having properties in common with tefluthrin (insecticidal activity) was applied at a rate encompassed by claim 18. Because the Examiner’s reasoning was based on the common insecticidal properties of fipronil and tefluthrin disclosed in Fish, Appellant does not persuade us that the Examiner’s conclusion of obviousness lacks support in the art. We acknowledge Appellant’s contention that fipronil and tefluthrin are different classes of insecticide. Appeal Br. 20. Appellant, however, points to no evidence suggesting that the Examiner was unreasonable in finding that skilled artisans would have considered Fish’s exemplified fipronil application rate to be a suitable application rate for tefluthrin, based on Fish’s disclosure that both compounds were useful insecticides in its highly preferred embodiment. Nor does Appellant identify any evidence suggesting that, contrary to the Examiner’s finding, fipronil and tefluthrin were known to have a potency differential on the order of what might be Appeal 2019-005742 Application 14/775,829 12 found between aspirin and fentanyl. See Reply Br. 2. We note, moreover, that Appellant identifies nothing unexpected coming from its selection of the application rate recited in claim 18. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (“Where ‘the difference between the claimed invention and the prior art is some range or other variable within the claims . . ., the [applicant] must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results.’”) (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). In sum, for the reasons discussed, Appellant does not persuade us that a preponderance of the evidence does not support the Examiner’s conclusion that claim 18’s process would have been obvious. We therefore affirm the Examiner’s rejection of claim 18 over Fish and Mallarino. Appellant also does not persuade us that the Examiner erred in determining that the process recited in Appellant’s claim 19 would have been obvious to a skilled artisan. Claim 19 recites “[t]he method of claim 1, wherein the pop-up fertilizer is applied in the range of about 3 lb nutrients/acre to about 50 lb nutrients/acre.” Appeal Br. 24. As noted above, the Examiner cited Mallarino’s Figure 4 as disclosing an application rate for its starter fertilizers of a total of about 20–42 lb nutrients/acre, a range undisputedly overlapping the range in claim 19, and reasoned that would be a suitable rate of application for the fertilizer in Fish’s highly preferred embodiment using a combination of tefluthrin and a pop-up fertilizer. See Final Act. 4. Appellant identifies no disclosure in either Fisher or Mallarino, nor does Appellant identify any other evidence of record, suggesting that a Appeal 2019-005742 Application 14/775,829 13 skilled artisan would have considered the fertilizer application rate disclosed in Mallarino to be unsuitable when applied in combination with tefluthrin. See Appeal Br. 20. Appellant does not persuade us, therefore, that the Examiner erred in concluding that a skilled artisan would have considered claim 19’s process obvious in view of Fish and Mallarino. Accordingly, we affirm the Examiner’s rejection of claim 19 over Fish and Mallarino. Appellant also does not persuade us that the Examiner erred in determining that the process recited in Appellant’s claim 20 would have been obvious to a skilled artisan. Claim 20 recites “[t]he method of claim 1, wherein the tefluthrin insecticide and the pop-up fertilizer are applied in a weight ratio in the range of 1:30 to 1:500.” Appeal Br. 24. The Examiner determined that the tefluthrin:fertilizer ratio recited in claim 20 would have been obvious based in the tefluthrin application rate suggested by Examples 1 and 2 of Fish, and the fertilizer application rate disclosed in Mallarino, both of which are discussed above in relation to claims 18 and 19, respectively. See Final Act. 5. Appellant contends that the Examiner’s conclusion of obviousness is erroneous, based on the arguments presented in traversing the rejections of claims 18 and 19. See Appeal Br. 20–21. As discussed above, we do not find those arguments persuasive. We therefore affirm the Examiner’s rejection of claim 20 over Fish and Mallarino. OBVIOUSNESS— FISH, MALLARINO, AND THOMPSON In rejecting claims 1, 4, 7, 8, 10–13, and 16–20 over Fish, Mallarino, and Thompson, the Examiner relied on the teachings in Fish and Mallarino discussed above in relation to claims 1, 4, 7, 10–13, 16, and 18–20, and cited Appeal 2019-005742 Application 14/775,829 14 Thompson as evidence that it would have been obvious to combine the tefluthrin and fertilizer in Fish’s process using the mixing method recited in claims 8 and 17. See Final Act. 5–6. Appellant does not persuade us that the Examiner erred in concluding that the process recited in claims 8 and 17 would have been obvious. See Appeal Br. 16–17, 19. In traversing this rejection, Appellant merely reiterates its arguments, addressed above, that the Examiner improperly relied on hindsight in concluding that, based on the teachings in Fish and Mallarino, it would have been obvious to combine tefluthrin and a pop-up fertilizer. See id. at 17. As discussed above, we do not find those arguments persuasive. Accordingly, we affirm the Examiner’s rejection of claims 8 and 17 over Fish, Mallarino, and Thompson, as well as the rejection of the remaining claims subject to this ground of rejection. OBVIOUSNESS— FISH, MALLARINO, THOMPSON, AND CUSH In rejecting claims 1, 4, 7–13, and 16–20 over Fish, Mallarino, Thompson, and Cush, the Examiner relied on the teachings in Fish, Mallarino, and Thompson discussed above in relation to claims 1, 4, 7, 8, 10–13, and 16–20, and cited Cush as evidence that it would have been obvious to include a surfactant as recited in Appellant’s claim 9 when combining tefluthrin and fertilizer as suggested by the other references. See Final Act. 7. Appellant does not persuade us that the Examiner erred in concluding that the process recited in claim 9 would have been obvious. See Appeal Br. 18. As the Examiner found, Cush discloses that it is useful to combine a surfactant encompassed by claim 9 with pesticides, including insecticides, to Appeal 2019-005742 Application 14/775,829 15 improve the re-suspension properties of pesticide suspensions. See Cush, abstract, ¶ 47. Appellant points to no evidence supporting its contention that surfactants are incompatible with fertilizers. See Appeal Br. 18. Accordingly, we are not persuaded that the Examiner erred in concluding that it would have been obvious to include a surfactant as recited in Appellant’s claim 9 when combining tefluthrin and fertilizer as suggested by the other references. We therefore affirm the Examiner’s rejection of claim 9 over Fish, Mallarino, Thompson, and Cush, as well as the rejection of the remaining claims subject to this ground of rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 4, 7, 10–13, 16, 18– 20 103(a) Fish, Mallarino 1, 4, 7, 10– 13, 16, 18– 20 1, 4, 7, 8, 10–13, 16–20 103(a) Fish, Mallarino, Thompson 1, 4, 7, 8, 10–13, 16– 20 1, 4, 7– 13, 16– 20 103(a) Fish, Mallarino, Thompson, Cush 1, 4, 7–13, 16–20 Overall Outcome 1, 4, 7–13, 16–20 Appeal 2019-005742 Application 14/775,829 16 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). AFFIRMED Copy with citationCopy as parenthetical citation