UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte TERRY W. BALKO, JOHN F. DAEUBLE, PAUL R. SCHMITZER, CARLA N. YERKES, and THOMAS L. SIDDALL Technology Center 1600 Before DEMETRA J. MILLS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. 134 involving claims to herbicide compounds. The Examiner rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. 6(b). We affirm.
Statement of the Case Background The Specification teaches that certain 6-(poly-substituted aryl)-4- aminopicolinic acids and their derivatives are superior herbicides with a broad spectrum of weed control against woody plants, grasses and sedges as well as broadleaves and with excellent crop selectivity. The compounds further possess excellent toxicological or environmental profiles (Spec. 1, ll. 16-20). The Claims Claims 18 and 19 are on appeal and can be found at pages 7-10 of the evidence appendix of the Appeal Brief. The issues A. The Examiner rejected claim 18 under 35 U.S.C. 102(b) as anticipated by Watanabe 1 (Ans. 3-4). B. The Examiner rejected claim 19 under 35 U.S.C. 103(a) over Ledoussal 2 (Ans. 5-9). A. 35 U.S.C. 102(b) The Examiner finds that Watanabe et al disclose the following compound [see attached abstract from STN search results] : 1 Watanabe et al., Calculation of systematic set of bond dissociation enthalpies of polyhalogenated benzenes, 682 THEOCHEM 63-72 (2004). 2 Ledoussal et al., WO 99/35117 A1, published Jul. 15, 1999. 2
(Ans. 4.) :::... The above compound anticipates claim 18, when L is Br, W1 is F, Xl is F and Y1 is halogen in applicants compound belongs to group (a). Appellants acknowledge that Watanabe s compound arguably anticipates the Markush group of claim 18 (App. Br. 3). Appellants contend that Watanabe et al. is a theoretical paper calculating bond dissociation enthalpies for numerous permutations of polyhalogenated benzenes (id.). Appellants contend that Watanabe et al. does not describe how to make this or any other of the listed polyhalogenated benzenes; nor does Watanabe et al. contain any experimental data for anything other than the experimental bond dissociation enthalpies of monohalogenated benzenes listed in Table 1 (id. at 4). The issue with respect to this rejection is: Does the evidence of record support the Examiner s conclusion that claim 18 is anticipated? Findings of Fact 1. We adopt the Examiner s findings of fact (see Ans. 4). 2. The Specification teaches that the compounds of Formula I can be made using well-known chemical procedures. The required starting materials are commercially available or readily synthesized utilizing standard procedures (Spec. 10, ll. 19-21). 3
Principles of Law [W]hen the PTO cited a disclosure which expressly anticipated the present invention... the burden was shifted to the applicant. He had to rebut the presumption of the operability... by a preponderance of the evidence. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Analysis The instant fact pattern is governed by Sasse. It is undisputed that Watanabe teaches a compound which anticipates claim 18 (Ans. 4; App. Br. 3). While Appellants contend that Watanabe is nonenabling because it is a theoretical paper (App. Br. 3), Appellants provide no evidence to support this position. That is, there is no evidence that undue experimentation would have been required to synthesize the compound disclosed by Watanabe. In fact, Appellants own Specification teaches that the compounds of Formula I can be made using well-known chemical procedures. The required starting materials are commercially available or readily synthesized utilizing standard procedures (Spec. 10, ll. 19-21; FF 2). This supports the finding that the prior art would also have been enabling for Watanabe. In the absence of any rebuttal evidence, Appellants have not met their burden to demonstrate inoperability of Watanabe. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ( Attorney s argument in a brief cannot take the place of evidence. ). Conclusion of Law The evidence of record supports the Examiner s conclusion that claim 18 is anticipated. 4
B. 35 U.S.C. 103(a) The Examiner finds Ledoussal et al teach the following formula... 1-bromo-2, 4-difluoro-3-methoxy-benzene, which renders instant applicants compound 1-bromo-2, 4-difluoro-5-methoxybenzene obvious (Ans. 5). The Examiner finds that Ledoussal et al deficient in the sense that it fails to teach applicants compounds wherein methoxy group is at position 5 of benzene ring. However, the position isomers are obvious (id.). The Examiner finds that it is well established that position isomers are prima facie structurally obvious even in the absence of a teaching to modify. The isomer is expected to be preparable by the same method and to have generally the same properties. This expectation is then deemed the motivation for preparing the position isomers. (Ans. 5-6, bold font omitted). Appellants contend that Ledoussal is concerned with making antimicrobial quinoline compounds, not the 6-aryl-4-aminopicolinate herbicides of the present invention. The antimicrobials... are not analogous to the herbicides of the present invention and one skilled in the art seeking to make herbicides would not turn to the art of antimicrobials for guidance (App. Br. 4). Appellants contend that the science of treating plants is not so predictable as the Examiner contends. Even in the antimicrobial area, activity is not so predictable as the Examiner believes. (Id. at 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner s conclusion that claim 19 is obvious over Ledoussal? 5
Findings of Fact 3. We adopt the Examiner s findings of fact (see Ans. 5). Principles of Law The analysis for obviousness of chemical variations is based on a long line of Federal Circuit and CCPA decisions. In In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990), the Federal Circuit noted: Analysis In brief, the cases establish that if an examiner considers that he has found prior art close enough to the claimed invention to give one skilled in the relevant chemical art the motivation to make close relatives (homologs, analogs, isomers, etc.) of the prior art compound(s), then there arises what has been called a presumption of obviousness or a prima facie case of obviousness. In re Henze, 181 F.2d 196, 37 CCPA 1009, 85 USPQ 261 (CCPA 1950); In re Hass, 141 F.2d 122, 127, 130, 31 CCPA 895, 60 USPQ 544, 548, 552 (CCPA 1944). The burden then shifts to the applicant, who then can present arguments and/or data to show that what appears to be obvious, is not in fact that, when the invention is looked at as a whole. In re Papesch, 315 F.2d 381, 50 CCPA 1084, 137 USPQ 43 (CCPA 1963). The cases of Hass and Henze established the rule that, unless an applicant showed that the prior art compound lacked the property or advantage asserted for the claimed compound, the presumption of unpatentability was not overcome. The current facts fall squarely within the ambit of Dillon, Henze and Hass. Dillon specifically states that once the Examiner has found a close relative such as an isomer, the burden of proof shifts to Appellants. Dillon 919 F.2d at 696. In this case, the Examiner has found a very close positional isomer, where Ledoussal teaches a compound that differs from the claimed 6
compound in placing a methoxy group at the 3 position of the benzene ring rather than at the 5 position of the benzene ring (see Ans. 5). While we acknowledge Appellants argument that sometimes there may be unpredictability or an unexpected result in the function of a positional isomer, Appellants provide no evidence that the claimed positional isomer has any unexpected advantage or other property as required by Dillon, Hass and Henze to overcome the prima facie case of obviousness. Appellants citation of Kavali, 3 a reference not considered by the Examiner and not included in Appellants evidence appendix, is inconsistent with 37 C.F.R. 41.37(c)(1)(ix)( Reference to unentered evidence is not permitted in the brief ). In addition, Kavali does not relate to the instantly claimed compounds, but rather to other compounds which do not fall within the scope of the claims or teachings of the prior art. Thus, Kavali does not reasonably demonstrate any unexpected result for the instant claims. Conclusion of Law The evidence of record supports the Examiner s conclusion that claim 19 is obvious over Ledoussal. SUMMARY In summary, we affirm the rejection of claim 18 under 35 U.S.C. 102(b) as anticipated by Watanabe. 3 Kavali et al., 1,5-Benzodiazepine derivatives of 3-arylsydnones: synthesis and antimicrobial activity of 3-aryl-4-[2 -aryl- 2,4,6,7 - tetrahydro-(l H)-l,5 -benzodiazepine-4 -yl]sydnones, 55 IL FARMACO 406-409 (2000). 7
We affirm the rejection of claim 19 under 35 U.S.C. 103(a) over Ledoussal. 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 cdc 8