Ex parte Latorse

July 1, 2011 – Blog Post

In Ex parte Latorse (Appeal 2011-003703; U.S. Application 10/553,363; Decided June 23, 2011) the Board of Patent Appeals and Interferences reversed the Examiner’s anticipation rejection but affirmed the obviousness rejection for reasons that differed from the Examiner. The invention is a fungicidal composition and a method of controlling phytopathogenic fungi. The composition combined two specific agents: (a) 2,6-dichloro-N-{[3-chloro-5-(trifluoromethyl)-2-pyridinyl]methyl}benzamide (a.k.a., fluopicolide); and (b) chlorothalonil, in a fluopicolide to chlorothalonil weight ratio of 1:20 to 1:1.

The prior art used to reject the claims was WO 2003079788 to Foor that described a fungicidal composition comprising: (a) a compound of Formula I; and (b) a compound selected from the group consisting of (b1) to (b9), in an (a) to (b) weight ratio of 1:100 to 100:1, 1:30 to 30:1 or 1:10 to 10:1. Foor disclosed that fluopicolide is a preferred species of the genus of compounds of Formula I. Foor does not disclose a specific weight ratio of fluopicolide to chlorothalonil. Chlorothalonil, while taught as a specific combination with fluopicolide in Foor, is not a species within the definition of (b).

The Examiner’s rejection relied on Foor’s teachings for combining fluopicolide and chlorothalonil and inferred that the weight ratio of those two agents was 1:1. In reversing the anticipation rejection, the Board relied on Verdegaal Bros. v. Union Oil Co. of Cal., 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”) and held that the Examiner did not account for each and every element of the claimed invention. The Board concluded that “it is not apparent on its face that Foor intended fluopicolide and chlorothalonil to be combined in equal amounts, or that its discussion of ratios applied to a combination of fluopicolide and chlorothalonil.”

In affirming the obviousness rejection for different reasons, the Board relied on In re Aller, 105 USPQ 233, 235 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). The Board asserted that “[w]hile Foor did not expressly disclose a ratio for the combination of fluopicolide and chlorothalonil, we first find that the disclosed ratios for other combinations with fluopicolide suggested the same ratios for any of Foor’s fungicide compositions.” As a result, the Board concluded that it would have been obvious for a skilled artisan to prepare a fungicidal composition comprising fluopicolide and chlorothalonil in a weight ratio of 1:20 to 1:1 based on routine optimization.

The Board was unpersuaded by the Appellants’ assertion of unexpected results based on experimental data presented in their specification demonstrating that the claimed combination of fluopicolide and chlorothalonil in a weight ratio range of 1:20 to 1:1 exhibited synergism. The Board relied on In re Baxter Travenol Labs., 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviouness, the results must be shown to be unexpected compared with the closest prior art.”) and asserted that a skilled artisan would have expected a synergistic result from the claimed combination of fluopicolide and chlorothalonil because Foor mentions that “compositions containing the compound of Formula I and fungicides with a different mode of action exhibit synergistic effects.”

The Board appears to have got this one wrong. As is often the case with Examiner’s, who focus on selective portions of a prior art disclosure, the Board in this case has done so as well. Immediately following the disclosure relied upon by the Board, Foor goes on to state that “[t]he presence of a synergistic effect between two active ingredients (e.g., component (a) and component (b)) is established,” which arguably means that the “fungicides with a different mode of action” as taught by Foor are those fungicides of component (b), which Foor teaches in combination. However, as noted above, chlorothalonil is not a compound within the definition of component (b). A request for rehearing to have the Board reconsider this position in light of the entire disclosure of Foor may, in fact, be warranted in this case.