DONALD DANFORTH PLANT SCIENCE CENTER

Patent Trials and Appeals BoardMay 6, 2021

2019006231 (P.T.A.B. May. 6, 2021)

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. 14/905,394 01/15/2016 Sona Pandey DDPSC0048-502-US 9608 128387 7590 05/06/2021 Donald Danforth Plant Science Center 975 North Warson Road Saint Louis, MO 63132 EXAMINER KUMAR, VINOD ART UNIT PAPER NUMBER 1663 MAIL DATE DELIVERY MODE 05/06/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SONA PANDEY and SWARUP ROY CHOUDHRY1 ____________ Appeal 2019-006231 Application 14/905,394 Technology Center 1600 ____________ Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the Donald Danforth Plant Science Center as the real party-in-interest. App. Br. 2. Appeal 2019-006231 Application 14/905,394 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3, 5–10, and 17. Specifically, claims 1, 3, 5, 7, 9, 10, and 17 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Li et al. (CN 102586264 A, July 18, 2012) (“Li I”), da Costa e Silva et al. (US 7,714,190 B2, May 11, 2010) (“da Costa”), and D.K. Yadav et al., Rice Heterotrimeric G-protein Gamma Subunits (RGG1 and RGG2) Are Differentially Regulated under Abiotic Stress, 7(7) Plant Signaling & Behav., 733–40 (2012) (“Yadav”). Claim 6 stands rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Li I, da Costa, Yadav, and Creelman et al. (US 7,511,190 B2, March 31, 2009) (“Creelman”). Claim 8 stands rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Li I, da Costa, Yadav, and Neuhaus et al. (WO 2011/120549 A1, October 6, 2011) (“Neuhaus”). Claims 1, 3, 5, 7, 9, 10, and 17 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of S. Li et al., The Plant-Specific G-Protein γ Subunit AGG3 Influences Organ Size and Shape in Arabidopis thaliana, 194 NEW PHYSIOLOGIST 690–703 (2012) (“Li II”), da Costa, and Yadav. Claim 6 stands rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Li II, da Costa, and Yadav, and Creelman. Appeal 2019-006231 Application 14/905,394 3 Claim 8 stands rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of Li II, da Costa, and Yadav, and Neuhaus. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to plants that express type III Gγ protein AGG3, and that exhibit faster vegetative and reproductive growth, accompanied by an increase in photosynthetic efficiency, and increases stress tolerance and plant yield. Spec. Abstr. REPRESENTATIVE CLAIM Independent claim 1 is representative of the claims on appeal and recites: 1. A transgenic plant, other than a rice plant or Arabidopsis, wherein said transgenic plant comprises within its genome a heterologous nucleotide sequence that encodes a type III Gγ protein, wherein said heterologous nucleotide sequence comprises the nucleotide sequence set forth in SEQ ID NO:1 that encodes the type III Gγ protein comprising the amino acid sequence set forth in SEQ ID NO:3, which is expressed, and wherein said transgenic plant expressing said type III Gγ protein comprising the amino acid sequence set forth in SEQ ID NO:3 exhibits enhanced resistance to an abiotic stress that disrupts the normal redox state of plants compared to the resistance to said abiotic stress exhibited by a control plant of the same species lacking said heterologous nucleotide sequence comprising the nucleotide sequence set forth in SEQ ID NO:1 Appeal 2019-006231 Application 14/905,394 4 that encodes said type III Gγ protein comprising the amino acid sequence set forth in SEQ ID NO:3 and grown under the same conditions. App. Br. 54. ISSUES AND ANALYSIS We decline to adopt the Examiner’s findings, reasoning, and conclusion that the claims are obvious over the combined cited prior art. We address below the arguments raised by Appellant. A. Claims 1, 3, 5, 7, 9, 10, and 17 over Li I or Li II, da Costa, and Yadav Issue Appellant argues that the Examiner erred in finding that the teachings of Li I or Li II inherently teach the limitation of claim 1 reciting a: [T]ransgenic plant expressing said type III Gγ protein comprising the amino acid sequence set forth in SEQ ID NO:3 exhibits enhanced resistance to an abiotic stress that disrupts the normal redox state of plants compared to the resistance to said abiotic stress exhibited by a control plant of the same species lacking said heterologous nucleotide sequence. App. Br. 11. Analysis The Examiner finds that Li I and Li II teach transgenic plants of the genus Arabidopsis, and a method of producing such plants, comprising transforming the plants with a recombinant expression vector comprising a promoter (35S CaMV, a constitutive promoter), operably linked with a Appeal 2019-006231 Application 14/905,394 5 nucleotide sequence of SEQ ID NO:1 (also called STON1 by Li I and II), which encodes the protein of SEQ ID NO:2. Final Act. 5. The latter protein has 100% identity with the AGG3 protein of SEQ ID NO:3 (a variant Gγ subprotein of a heterotrimeric GTP-binding protein). Id. (citing Spec. 3). The Examiner finds that the transgenic plants exhibited increased yield- related phenotypes, such as increased number of leaf blades, increased leaf blade area, larger size of petals, increased length of horsetail, increased number of seeds, increased weight of seeds and increased length of seeds. Id. The Examiner also finds that Li I and II additionally teach that the method has great potential in producing crops with higher yields. Id. (citing Li I, Abstr., ¶¶ 3, 4, 6, 8, 27, 41, SEQ ID NOs: 1, 2, Fig. 1 (parts A-J)). The Examiner also finds that Li I and II do not teach transgenic plants other than Arabidopsis that have enhanced resistance to a redox stress or enhanced oil levels by expressing Li’s STON1 (i.e., AGG3) protein of SEQ ID NO: 2. Final Act. 5. However, the Examiner finds that da Costa teaches GTP-binding stress related proteins (“GBSRP”), and expressing those GTP- binding proteins in transgenic plant environments. Id. The Examiner further finds that da Costa teaches that these GTP-binding proteins include heterotrimeric alpha, beta, and gamma subunits. Id. The Examiner finds that da Costa also teaches expressing the coding sequences of several such GTP-binding proteins in plants like rapeseed/canola (a vegetable oil crop), soybean (an oil and food crop), corn or wheat (a cereal crop), to produce abiotic stress-tolerant (e.g., to drought, cold, salt, heat, etc.) transgenic plants that overexpress these GTP-binding proteins. Id. at 5–6 (citing, generally, da Costa cols. 31–46, Exs. 10–14, claims 1–15). Appeal 2019-006231 Application 14/905,394 6 Appellant disputes the Examiner’s conclusion that Li I and Li II each provide motivation to express AGG3 in plants, which corresponds to the claimed type III Gγ protein. The Examiner finds that each reference teaches methods of improving plant yield by expressing STON1 (SEQ ID NO:1), which is equivalent to AGG3 (SEQ ID NO:3) as recited in the claims. Appellant argues that Li I and Li II teach that Arabidopsis plants expressing STON1 (AGG3) exhibit improved phenotypic organ characteristics, including increased seed number, seed weight, seed length, a greater number of, and larger, leaves, larger flower petals, and longer siliques. App. Br. 11 (citing, e.g., Li I Abstr., 8–9, claims 5–7).2 Appellant argues that Li I also teaches the broad genera of “improving plant yield,” “crop high-yield breeding,” “improved plant yield-related phenotype,” “high seed yield,” and “increased biomass” that might be obtainable by expressing STON1 (AGG3) in transgenic plants, but fails to identify which specific yield characteristics are included within these broad genera. Id. at 11–12. With respect to Li II, Appellant argues that the reference similarly teaches that Arabidopsis plants expressing STON1 display improved phenotypic characteristics in terms of increased fruit length, seed number per fruit, and seed size. App. Br. 12 (citing Li II, Summary, 691, 701, Figs. 3(a)–(h)). However, Appellant disputes the Examiner’s conclusion that enhanced resistance to an abiotic stress that disrupts the normal redox state of plants (Claim 1) and enhanced oil production in seeds (Claim 8), “naturally flow” by expressing AGG3 in plants, thereby allegedly rendering 2 Appellant relies upon the ProQuest English translation of Li I, which is of record. Appeal 2019-006231 Application 14/905,394 7 these claims obvious. Id. Appellant contends that the Examiner provides no evidence of record to support these conclusions. Id. Appellant asserts that the Examiner’s conclusion that the claimed properties naturally flow from the teachings of Li I or II requires clear evidence prior to filing that the claimed results “necessarily flow,” and cannot be based on unsupported speculation or conjecture. Id. at 16 (citing, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418–19 (2007)). Consequently, Appellant asserts, the Examiner’s conclusion that Li I and II’s teaching of the genus including “crop high-yield breeding,” “high seed yield,” and “increased biomass,” also inherently includes the claimed properties obtainable by expressing STON1 (AGG3) in transgenic plants, merely invites further investigation, thereby rendering rejection of the claimed features improper. App. Br. 17 (citing Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367 (Fed. Cir. 2004)) (holding that a “prior art reference that discloses a genus still does not inherently disclose all species within that broad category” and “simply invites further experimentation to find such association”). Appellant next argues that a person of ordinary skill in the art, upon comprehending the teachings of the combined cited prior art, could have had no reasonable expectation of success in combining the teachings of the references to arrive at a “transgenic plant, other than a rice plant or Arabidopsis” that exhibits the claimed properties of “enhanced resistance to an abiotic stress that disrupts the normal redox state of plants” (claim 1) or “an enhanced amount of oil in seeds” (claim 8). App. Br. 18–19. Appellant repeats that Li I and Li II teach transgenic Arabidopsis plants expressing STON1 cDNA (SEQ ID NO:2) that encodes STON1 Appeal 2019-006231 Application 14/905,394 8 protein (SEQ ID NO:1), which are, respectively, identical to AGG3 cDNA (SEQ ID NO:1) and AGG3 protein (SEQ ID NO:3), as recited in the present claims. Id. Appellant asserts that da Costa teaches GTP binding stress related proteins (PpGBP-1 through PpGBP-5) from the moss Physcomitrella patens, having amino sequences SEQ ID NOs: 11–15. App. Br. 20. Appellant argues that da Costa teaches only improved drought tolerance and freezing tolerance in transgenic Arabidopsis expressing P. patens proteins PpGBP-1 through PpGBP-5. Id. (citing da Costa Ex. 7). Appellant further asserts that da Costa discusses improved salt tolerance in such transgenic plants, but notes that da Costa provides no supporting data. Id. Furthermore, contends Appellant, the teachings of da Costa concerning drought, salt, and cold resistance in soybeans, rapeseed/canola, corn, and wheat are only prophetic examples without any data. Id. (citing da Costa Exs. 10–13). According to Appellant, da Costa neither teaches nor suggests that any of the P. patens PpGBP proteins enhances, or could enhance, resistance to an abiotic stress that disrupts the normal redox state of plants, or enhance oil production in seeds as recited in the claims. Id. Appellant contends that Yadav teaches that upregulation of mRNA transcription of rice heterotrimeric G-protein gamma subunits RGG1(I) and RGG2(I) is differentially regulated in rice following salt, cold, heat, and ABA (abscisic acid) treatments. App. Br. 21. Appellant asserts that Yadav does not teach the sequence of, or experiments employing, AGG3 homolog RGG3. Id. (citing Yadav Abstr., 734, 738, Fig. 3). We are persuaded by Appellant that the Examiner has failed to establish a prima facie case of obviousness over the combined teachings of Appeal 2019-006231 Application 14/905,394 9 the cited prior art. As both Appellant and the Examiner agree, Li I and Li II both teach that expression, or overexpression, of the AGG5 Gγ subunit results in the expression of various positive phenotypes in Arabidopsis, including increased organ growth. See, e.g., Li I Abstr.; Li II 700. Appellant’s claimed invention arises from Appellant’s discovery that expression (or overexpression) of Arabidopsis type III Gγ protein AGG3 subunit of the trimeric G-protein enhances resistance to redox stresses, and enhances oil content in seeds of Camelina (false flax), an oil crop plant. See Spec. 4–5. We are not persuaded by the Examiner’s conclusion that Li I and II inherently teach that overexpression of the AGG3 Gγ subunit protein promotes resistance to abiotic redox stress or an increase in seed oil content in plants other than Arabidopsis and rice. It is possible that the overexpression of AGG3 in Arabidopsis could result in expression of the claimed phenotypic properties, if so, it would be a latent property of the transfected Arabidopsis plant, and a claim directed to such a plant would not be patentably distinguishable from the teachings of Li I and II. However, there is no evidence to support the notion that this is so, and, more importantly, the claims at issue here expressly require that the transfection be in plant genera other than Arabidopsis or rice. Furthermore, although a person of ordinary skill in the art might indeed have been motivated to overexpress the AGG3 Gγ subunit in a plant species other than Arabidopsis or rice so as to obtain the beneficial phenotypic characters taught by Li I and II, there could be no realistic expectation that the overexpression of AGG3 in the transfected non- Arabidopsis plant would also inherently, and thus necessarily, exhibit Appeal 2019-006231 Application 14/905,394 10 increased tolerance to abiotic redox stress or increased seed oil production. Indeed, the teachings of Li I and II provide little more than an invitation to experimentation that would be obvious to try. Such experimentation, in view of the teachings of Li I and II, is insufficient to establish a prima facie conclusion of obviousness. See In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (holding that when what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, and where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it, was insufficient to establish a conclusion of prima facie obviousness). Furthermore, the teachings of da Costa and Yadav do not help the Examiner’s conclusion that the claims are obvious. Da Costa teaches five G-proteins, GBP-1 through GBP-5, obtained from the spreading earthmoss, Physcomitrella patens, and further teaches that these proteins, when overexpressed, confer increased tolerance to environmental stress. See da Costa col. 3, ll. 31–43. However, the Examiner provides no evidence that any of these G-proteins, or their constituent subunits, are analogs of Arabidopsis AGG3. Indeed, Da Costa teaches that, of the five G-proteins that are taught, one (GBP-4) is a homolog of the dynamin family of G- proteins, and GBP-2 is homologous to the β-subunit of heterodimeric G- proteins. Da Costa, col. 6, ll. 1–23, 41–44. GBP-1 of da Costa is similar to a particular class of yeast small G-proteins, Sar-1, and GBP-3 is similar to the large family of Rab small G-proteins. Id. at ll. 4–6, 8–10. Finally, GBP- 5 is taught by da Costa as being homologous to the large family of Ran G- proteins, found in mammalian as well as in plant systems and associated with cell cycle processes. Id. at ll. 48–52. Notably, none of these G-proteins Appeal 2019-006231 Application 14/905,394 11 is taught by da Costa as being homologous to the heterotrimer G-protein taught by Li I and II or to its AGG3 Gγ subunit protein. We therefore fail to see the relevance of the teachings of da Costa to those of Li I and II. Similarly, although Yadav teaches that the heterotrimeric G-protein Gγ subunit RGG3 from rice is homologous to the AGG3 subunit of Arabidopsis, Yadav makes no further mention of AGG3, but rather teaches that the nonhomologous Gγ subunits RGG1 and RGG2 are upregulated following salt, cold, heat, and abscisic acid (”ABA”) exposure. Yadav 734, Abstr. Again, we can discern no relevance of the teachings of Yadav to those of Li I and II, which are directed to overexpression of the nonhomologous AGG3 Gγ G-protein subunit in Arabidopsis. In summary, we find that the Examiner has not articulated sufficient reasoning as to why a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the references to arrive at the claimed invention. Indeed, we find that the references provide only a very general suggestion that it would have been “obvious to try” to combine the very loosely-related teachings. “In such circumstances, where a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” Kubin, 561 F.3d at 1359. We do not so succumb, and we reverse the Examiner’s rejection of independent claims 1 and 8. Furthermore, because we find that this conclusion is dispositive of the appeal, we do not reach Appellant’s other arguments. Appeal 2019-006231 Application 14/905,394 12 CONCLUSION The rejection of claims 1, 3, 5–10, and 17 as unpatentable under 35 U.S.C. § 103 is reversed. REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 7, 9, 10, 17 103 Li I, da Costa, Yadav 1, 3, 5, 7, 9, 10, 17 6 103 Li I, da Costa, Yadav, Creelman 6 8 103 Li I, da Costa, Yadav, Neuhaus 8 1, 3, 5, 7, 9, 10, 17 103 Li II, da Costa, Yadav 1, 3, 5, 7, 9, 10, 17 6 103 Li II, da Costa, Yadav, Creelman 6 8 103 Li II, da Costa, Yadav, Neuhaus 8 Overall Outcome 1, 3, 5– 10, 17