The opponent filed an appeal against the decision of the OD that maintained the opposed patent on the basis of the first auxiliary request.
Claim 1 of this request reads as follows:
1. A method for controlling glyphosate-susceptible weeds and a glyphosate-tolerant first plant species growing in a crop of a glyphosate-tolerant second plant species, comprising: first applying a non-glyphosate herbicide to the crop of the glyphosate-tolerant second plant species, the non-glyphosate herbicide being toxic to the first plant species and non-toxic to the second plant species, at a rate of application sufficient to control the first plant species, wherein the non-glyphosate herbicide is selected from the group consisting of quizalofop, clethodim, sethoxydim, fluazifop, imazamox and fenoxaprop; and, second applying a glyphosate herbicide to the crop of the glyphosate-tolerant second plant species at a rate of application sufficient to control the glyphosate-susceptible weeds, wherein the first applying and the second applying steps can be performed in either order or simultaneously.
According to the opponent, document D6 explicitly disclosed a method for controlling a glyphosate-tolerant first plant species (the volunteer Roundup ReadyTM corn) growing in a crop of a glyphosate-tolerant second plant species (the Roundup ReadyTM soybean) comprising the application of a non-glyphosate herbicide (fluazifop-p, clethodim, quizalofopethyl, sethoxydim). The elements of the claimed method not explicitly taught in this document were the control of glyphosate-susceptible weeds (growing in the Roundup ReadyTM soybean crop) via the application of glyphosate herbicide. It was however axiomatic that glyphosate (RoundupTM) would be applied to the Roundup ReadyTM soybean explicitly mentioned in document D6 in order to control glyphosate-susceptible weeds for the simple reason that this is the very reason why Roundup ReadyTM crops were developed. This element was one implicit feature of document D6.
The patent proprietor pointed out that the sequential or simultaneous application of a glyphosate herbicide and one of the non-glyphosate herbicides listed in claim 1 in order to efficiently control glyphosate-susceptible weeds and volunteer glyphosate-tolerant corn in a glyphosate-tolerant soybean crop was not disclosed in document D6. Since Roundup ReadyTM corn was deregulated on November 1997 and not available before the 1998 growing season, volunteer corn plants which are the progeny of a crop of corn grown the previous season in the same field could not have occurred in a crop of a glyphosate-resistant plant until 1999 after the priority date of the patent in suit as shown by document D21.
The Board found claim 1 to lack novelty:
[2.1] The last sentence of paragraph D on page 50 of document D6 reads as follows:
“Even in the case of a rotation involving Roundup ready soybeans, it should be considered that a) no-till - cultivation which is used on 35% of the soybean acreage, reduces dramatically the occurrence of the volunteers and b) control of Roundup Ready corn volunteers will remain possible with an application of grass-killer herbicides such as fluazifop-p, clethodim, quizalofop-ethyl, sethoxydim, currently used in soybean crops for volunteer corn control.”
The use of RoundupTM (glyphosate) on Roundup ReadyTM soybeans to control the Roundup ReadyTM corn volunteers with application of clethodim and sethoxydim is, therefore, disclosed.
Furthermore, the process of claim 1 of the patent in suit mentions that not only glyphosate-tolerant plant species are controlled but also glyphosate-susceptible weeds. Although the passage cited above in point [2.1] does not refer to the control of weeds, Roundup (glyphosate herbicide) has been developed in order to spare the crop and to kill weeds. This point is confirmed by the disclosure of document D6 (see page 49, two first lines of the third paragraph), which mentions that weeds are not tolerant to glyphosate and up to now no resistance to glyphosate has been observed for weeds. Therefore, the treatment of Roundup ReadyTM soybeans with a glyphosate herbicide will automatically control the glyphosate-susceptible weeds.
[2.2] The respondent’s argument based on the deregulation of Roundup ReadyTM corn in November 1997 […] did not convince the board.
[2.2.1] Whether the disclosure of document D6 has been applied in a field before the priority date of the patent in suit is irrelevant for assessing novelty, since the mere disclosure of a teaching, disregarding whether this teaching has actually been reduced into practice, is enough to make it available to the public as required by A 54.
That document D6 was available to the public at the priority date of the patent in suit is confirmed by document D7. This point was never disputed by the respondent and the board does not see any reason to contest this point.
[2.3] The respondent also argued that the sequential or the simultaneous application was not mentioned in document D6.
[2.3.1] However, document D6 recites that the grass-killer herbicides listed (see point [2.1]) are applied. Since, Roundup (glyphosate herbicide) is also applied to the plants, it must thus be inferred therefrom that the application of the said glyphosate herbicide is performed either before or after or at the same time as the application of the grass-killer herbicide. Hence, the method of applying the herbicides mentioned in claim 1 cannot distinguish the claimed process from the disclosure of document D6, since it includes all the possible methods of applying the two herbicides.
[2.4] Thus, claim 1 of the main request lacks novelty (A 54).
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