Ex Parte Fischer et al

Patent Trial and Appeal Board

Sep 20, 2018

12740487 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/740,487 04/29/2010
84331 7590 09/24/2018
McBee Moore Woodward & Vanik IP, LLC
7900 Westpark Drive, Suite AIOO
McLean, VA 22102
FIRST NAMED INVENTOR
Reiner Fischer
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.
2903925-358000 8983
EXAMINER
QAZI, SABIHA NAIM
ART UNIT PAPER NUMBER
1621
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINER FISCHER, ROBERT STEFFENS, JOHN W. BELL,
MANUEL JIMENEZ, STEPHEN KRUEGER, and JOHN L. PERRY JR.
Appeal2017-002369 1
Application 12/740,487
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FRED MAN, and
DAVID COTTA, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to methods for
controlling soil-dwelling plant-damaging nematodes in annual and perennial
crops. The Examiner rejected the claims for anticipation and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 The Real Party in Interest is Bayer CropScience AG, Manheim,
Germany. Appeal Br. 3.
Appeal2017-002369
Application 12/740,487
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 10-18, under 35 U.S.C. § I02(b) as anticipated by
Himmler2 (Ans. 3---6);
(2) Claims 10-18, under 35 U.S.C. § I02(b) as anticipated by
Funke3 (Ans. 6-8); and
(3) Claims 10-18, under 35 U.S.C. § I03(a) as obvious over
Himmler and Funke (Ans. 8-13).
Claim 10, the only independent claim on appeal, is representative and
reads as follows:
10 A method for controlling soil-dwelling plant-damaging
nematodes in annual and perennial crops comprising applying a
compound of formula (I-1) and/or formula (I-2)
CHs
{1-1)
'cH 3
2 US 2007 /0032539 Al (published Feb. 8, 2007). In citing to Himmler, the
Examiner cites to the issued version of the published application, US
7,638,547 B2 (issued Dec. 29, 2009). See, e.g., Ans. 4. We do the same for
consistency. We note the Examiner's citation of CA 2 492 096 for the same
disclosure. See Ans. 2. CA 2 492 096 does not appear to be of record in this
application, however.
3 US 2007/0270416 Al (published Nov. 22, 2007).
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Application 12/740,487
to an annual and or perennial crop by foliar treatment to control
the nematodes in the soil in which the crop grows.
Appeal Br. 20.
ANTICIPATION-HIMMLER
The Examiner cited Himmler as disclosing the compounds recited in
Appellants' claim 10, application of the compounds to the leaves of crop
plants, and the use of the compounds to inhibit nematodes. Ans. 3---6.
Appellants state that "they have not argued that Himmler et al does
not teach foliar treatment of leaves and have not argued that Himmler et al
does not teach treatment of plants by treatment of the soil in which they
grow" and acknowledge that Himmler "teaches that treatment of leaves can
protect treated leaves and that treatment of roots can protect treated roots
and even acknowledge that treatment at the roots might be able to protect
stems and leaves." Appeal Br. 7-8.
Appellants contend, however, that Himmler "does not teach that
foliar application to leaves - clearly an above-ground treatment locus -
would provide effective control of nematodes that live in the soil in which
plants grow." Id. at 8. In particular, Appellants contend, claim 10 recites a
new use of the claimed compounds, like the treatment of sunburnt skin
discussed in Perricone v. Medicis Pharm. Corp., 432 F.3d 1368 (Fed. Cir.
2005). Appeal Br. 8-9; Reply Br. 6.
Appellants contend, moreover, that as evidenced by the Himmler
reference, as well as Appellants' Specification and the Hellwege
Declaration, 4 a skilled artisan would not have expected that foliar
4 Declaration under 37 C.F.R. § 1.132 of Dr. Elke Hellwege, signed January
14, 2013. In citing to the Hellwege Declaration we cite to the first page as if
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Application 12/740,487
application of the claimed compounds would have been able to control
nematodes present in the soil, as recited in Appellants' claim 10. Appeal Br.
10-13.
As stated inJn 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.
Having carefully considered the arguments and evidence advanced by
Appellants and the Examiner, we are persuaded that the preponderance of
the evidence supports the Examiner's determination that Himmler
anticipates the process recited in Appellants' claim 10.
As noted above, Appellants do not dispute that Himmler discloses the
compounds recited in claim 10, nor do Appellants dispute that Himmler
discloses the application of those compounds to the leaves of annual and
perennial crops, as claim 10 also recites. We acknowledge, as Appellants
contend (see Reply Br. 4--5), that Himmler includes no specific express
disclosure teaching or suggesting that application of the claimed compounds
to the leaves of the crops will control nematodes present in the soil in which
the crops grow, as claim 10 further recites.
Nonetheless, it is inherent that applying the compounds of Appellants'
claim 10 to the leaves of annual and perennial crops, as Himmler
undisputedly discloses, will control nematodes present in the soil in which
it was numbered as page 1, and to the remaining pages as if numbered
consecutively.
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Application 12/740,487
the crops grow, as shown by Appellants' own Specification. See Spec. 10
(Appellants' Example 1 showing in-soil nematicidal effect of foliar
application). That the Himmler reference, or other prior art of record, failed
to recognize the inherent result of Himmler's foliar application does not
undermine the Examiner's finding of anticipation. See MEHL/Biophile Int'!
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) ("Inherency is not
necessarily coterminous with knowledge of those of ordinary skill in the art.
Artisans of ordinary skill may not recognize the inherent characteristics or
functioning of the prior art.").
We note that claim 10 recites that the foliar application of the claimed
compounds is "to control the nematodes in the soil in which the crop
grows." Appeal Br. 20. It is unclear from this language, however, whether
nematode control is merely an intended effect of the foliar application, or
whether nematodes must actually be present in the soil in which the treated
crops are growmg.
Our reviewing court has explained that, during examination, the PTO
must interpret terms in a claim using "the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
As explained further in In re Zietz, 893 F.2d 319, 322 (Fed. Cir.
1989), the reason for this rule of interpretation is that "during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed."
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Application 12/740,487
In the present case, given the ambiguity of the language in the claim,
as well as certain disclosures in the Specification, we determine that, when
claim 10 is given its broadest reasonable interpretation consistent with the
Specification, claim 10 's recitation of performing foliar application "to
control the nematodes in the soil in which the crop grows" (Appeal Br. 20),
is directed to an intended effect of the foliar application, and is therefore
akin to "[a] 'whereby' clause that merely states the result of the limitations
in the claim [but] adds nothing to the patentability or substance of the
claim." Texas Instruments, Inc. v. International Trade Comm., 988 F.2d
1165, 1172 (Fed. Cir. 1993).
This interpretation is consistent with the disclosure in Appellants'
Specification that foliar application to control nematodes may be performed
prophylactically, for protective purposes, regardless of whether nematodes
are known to be necessarily present in the soil. See Spec. 2 (listing "crops to
be protected"). We note, moreover, that claim 10 does not recite a positive
step of determining whether nematodes are present in the soil in which the
crops are growing, before the compounds are applied to the leaves of the
crops.
Indeed, Appellants do not identify any difference between Himmler's
application of the claimed compounds to crop leaves, and the application
recited in Appellants' claim 10, other than the intended effect of controlling
nematodes in the soil. As seen in Appellants' Specification noted above,
that effect is an inherent result that necessarily occurs when the claimed
compounds are applied to the crop leaves, including when applied to the
leaves in accordance with Himmler's disclosure.
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We find, moreover, that because claim 10 may reasonably be
interpreted as encompassing application of the claimed compounds for
protective purposes to provide an intended effect, claim 10 is similar to the
sunburn prevention claim that was held to be anticipated in Perricone. See
432 F. 3d at 1379 ("Because all skin surfaces are susceptible to sunburn
damage, and because one can only realistically apply a composition to a skin
surface when that surface is exposed, Pereira's [prior art] 'topical
application' encompasses the application step of claim 8.").
Moreover, although we have reviewed Appellants' evidence of
unexpected results in their Specification and the Hellwege Declaration,
evidence of unexpected results is evidence of nonobviousness, which is
irrelevant to the issue of anticipation. See In re Paulsen, 30 F.3d 1475, 1482
n.11 (Fed. Cir. 1994) ("[E]vidence of nonobviousness is irrelevant for
patentability purposes when an invention is anticipated under section 102.").
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner's
determination that Himmler discloses a process having all of the steps and
features recited in Appellants' claim 10. We, therefore, affirm the
Examiner's rejection of claim 10 as anticipated by Himmler. Because they
were not argued separately, claims 11-18 fall with claim 10. 37 C.F.R.
§ 4I.37(c)(l)(iv).
ANTICIPATION-FUNKE
The Examiner cited Funke as disclosing the compounds recited in
Appellants' claim 10, application of the compounds to the leaves of crop
plants, and the use of the compounds to inhibit nematodes. Ans. 6-8.
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Appellants concede that, although the Examiner's rejection appears to
have cited passages from Himmler rather than Funke, Funke discloses
compound I-2 of Appellants' claim 10. Appeal Br. 14.
Appellants contend, however, that Funke discloses a pesticidal effect
for compound I-2 only when used in combination with other compounds.
Id. at 15. In addition, Appellants contend, when Funke discloses the
application of its combination of agents to the leaves of plants, the agents are
"applied to leaves to kill only pests that feed on the leaves. See Examples
(B) through (D) at pages 27-31. Nothing in these examples even remotely
suggests effects elsewhere in the plant, much less control of nematodes
living in the soil." Id. at 15.
For reasons similar to those discussed above as to Himmler, we affirm
this rejection as well. We acknowledge that the Examiner identified no
specific express disclosure in Funke teaching or suggesting that application
of the claimed compounds to the leaves of the crops will control nematodes
present in the soil in which the crops grow, as claim 10 recites.
Similar to the discussion above as to Himmler, however, it is inherent
that applying the compounds of Appellants' claim 10 to the leaves of annual
and perennial crops, as Funke undisputedly discloses, will control nematodes
present in the soil in which the crops grow, as shown by Appellants' own
Specification. Thus, on the current record, as with Himmler, Funke's
undisputed disclosure of applying a compound recited in claim 10 to annual
and perennial crops necessarily results in the intended effect, recited in claim
10, of controlling nematodes in the soil in which the crops are growing.
We acknowledge that Funke' s disclosure is directed to applying
combinations of more than one type of compound. See Funke, abstract.
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Appellants' claim 10, however, uses the transitional term "comprising" to
describe the recited steps (Appeal Br. 20), and therefore does not exclude
applying compounds in addition to those expressly recited in the claim to the
crops' leaves. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
Cir. 1997) ("'Comprising' is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.").
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner's
determination that Funke discloses a process having all of the steps and
features recited in Appellants' claim 10. We, therefore, affirm the
Examiner's rejection of claim 10 as anticipated by Funke. Because they
were not argued separately, claims 11-18 fall with claim 10. 37 C.F.R.
§ 4I.37(c)(l)(iv).
OBVIOUSNESS-HIMMLER AND FUNKE
In rejecting claims 10-18 as obvious over Himmler and Funke, the
Examiner stated:
It would have been obvious to one skilled in the art to
prepare additional beneficial compositions of known
spirocyclic compounds as presently claimed for controlling soil
damaging nematodes because (1) Plant parts are to be
understood as meaning all parts and organs of plants above
and below the ground, such as shoot, leaf, flower and root,
examples which may be mentioned being leaves, needles,
stalks, stems, flowers, fruit bodies, fruits, seeds, roots, tubers
and rhizomes. The plant parts also include harvested material,
and vegetative and generative propagation material, for
example cuttings, tubers, rhizomes, offsets and seeds. It
discloses that treatment according to the invention of the plants
and plant parts with the active compounds is [ carried] out
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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,
evaporation, fogging, scattering, painting on and, in the case of
propagation material, in particular in the case of seeds, also by
applying one or more coats.
Ans. 11-12.
Appellants reiterate their argument, discussed above, regarding the
deficiencies of Funke, contending in particular that Funke "does not teach or
suggest that above-ground foliar treatment of leaves would provide effective
control of nematodes that reside in the soil." Appeal Br. 15-16.
Therefore, Appellants contend "for reasons similar to those discussed
above in the anticipation rejection, particularly with respect to the
unexpected test results, Appellants respectfully submit that their claimed
method is not rendered obvious by Funke et al." Id. at 16; see also Reply
Br. 6 (The "lack of efficacy [ shown by the Hellwege Declaration] for
spirotetramat [the compound I-2 of Appellants' claim 1 OJ when applied by
drenching is particularly surprising in view of the excellent efficacy of the
compound against soil-dwelling nematodes when applied by foliar
application instead of drenching" shown in Appellants' Specification.). 5
We first note that the Examiner's obviousness rejection is based on
the combination of Himmler and Funke. See Ans. 9; see also Non-Final
Action 10 (entered June 22, 2015 (Examiner's action from which this appeal
was taken)).
As discussed above, moreover, Appellants do not persuade us that the
Examiner erred in determining that both Himmler and Funke anticipate
5 The Appeal Brief uses the term "spirotetramat" to refer to compound I-2 of
Appellants' claim 10. Appeal Br. 12.
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Appellants' claim 10. As our reviewing court has explained, "[i]t is well
settled that 'anticipation is the epitome of obviousness."' In re McDaniel,
293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears, Roebuck &
Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Thus, because we discern no
error in the Examiner's determination that both Himmler and Funke
anticipate Appellants' claim 10, we discern no error in the Examiner's
determination that Himmler and Funke would have rendered the process
recited in claim 10 obvious to an ordinary artisan.
As to Appellants' evidence of unexpected results, we note that our
reviewing court has held that, even in instances where the question presented
is one of obviousness, evidence of unexpectedness is insufficient to
distinguish claims over the prior art when the claimed process at issue is old,
as is the case here. See In re Baxter-Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) ("Mere recognition of latent properties in the prior art does
not render nonobvious an otherwise known invention."); see also In re
Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (obviousness rejection
affirmed where using claimed elements in the manner suggested by the prior
art necessarily resulted in claim-recited effect).
We note, moreover, that where the evidence of prima facie
obviousness is particularly strong, evidence regarding unexpected results
may be insufficient to overcome the evidence of prima facie obviousness.
See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007). In this
instance, we find that there can be no stronger evidence of prima facie
obviousness than the evidence of anticipation, discussed above, advanced by
the Examiner.
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Lastly, we note that both the Hellwege Declaration and Example 1 of
Appellants' Specification involve only compound I-2, also termed
spirotetramat. See Hellwege Declaration 2; Spec. 10. In contrast,
Appellants' claim 10 recites the use of compound I-2 "and/ or" compound I-
I. Appeal Br. 20. Appellants' evidence of unexpected results, therefore, is
not commensurate in scope with the full scope of the claimed subject matter.
In sum, for the reasons discussed, Appellants do not persuade us that
the preponderance of the evidence fails to support the Examiner's
determination that the combination Himmler and Funke teaches or suggests
a process having all of the steps and features recited in Appellants' claim 10.
For the reasons discussed, we are also not persuaded that Appellants have
advanced objective evidence of nonobviousness sufficient to outweigh the
evidence of obviousness advanced by the Examiner. We, therefore, affirm
the Examiner's rejection of claim 10 for obviousness over the combination
of Himmler and Funke. Because they were not argued separately, claims
11-18 fall with claim 10. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
For the reasons discussed, we affirm each of the Examiner's
rejections.
TIME PERIOD
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
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