Dow AgroSciences LLCDownload PDFPatent Trials and Appeals BoardAug 2, 20212020006328 (P.T.A.B. Aug. 2, 2021) Copy Citation 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. 15/070,005 03/15/2016 Robbi J. Garrison 77199-US-NP 3212 25212 7590 08/02/2021 CORTEVA AGRISCIENCE LLC 9330 ZIONSVILLE RD INDIANAPOLIS, IN 46268 EXAMINER GOUGH, TIFFANY MAUREEN ART UNIT PAPER NUMBER 1651 NOTIFICATION DATE DELIVERY MODE 08/02/2021 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): Patents@corteva.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBBI J. GARRISON ____________ Appeal 2020-006328 Application 15/070,005 Technology Center 1600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and RICHARD M. LEBOVITZ, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims 1–5, 7–9, 13, 14, and 16–18 (Appeal Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Dow Agro Sciences LLC (‘DAS’),” which “is a subsidiary of Corteva AgriscienceTM” (Appellant’s March 30, 2020, Appeal Brief (Appeal Br.) 3). Appeal 2020-006328 Application 15/070,005 2 STATEMENT OF THE CASE Appellant’s disclosure relates to “compositions and methods for the cryopreservation of eukaryotic cells in a media composition containing a phosphatidylcholine compound.” (Spec.,2 Abstr.). Appellant’s claims 1, 17, and 18 are reproduced below: 1. A medium composition, comprising: (i) an aqueous solution including at least one cryopreservation agent, a cell suspension medium, and a phosphatidylcholine, wherein the phosphatidylcholine is added to the medium composition at a concentration from 0.05% to 50% of the total volume of the medium composition; and, (ii) a plant cell, wherein the plant cell is a plant suspension cell line, or a photoautotrophic suspension cell line. (Appeal Br. 21.) 17. The medium composition of claim 1, wherein the medium composition is frozen. (Id. at 22.) 18. The medium composition according to claim 17, wherein the medium composition comprises a temperature of about 0°C to about -196°C. (Id.) Grounds of rejection before this Panel for review: Claim 18 stands rejected under 35 U.S.C. § 112(b). 2 Appellant’s March 15, 2016, Specification. Appeal 2020-006328 Application 15/070,005 3 Claims 1–5, 7–9, 13, 14, and 16–18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Garrison,3 Herickhoff,4 Yoon,5 and Yoshida.6 Claims 1–5, 7–9, 13, 14, and 16–18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ainley,7 Herickhoff, Yoon, and Yoshida. Claims 1–3, 7–9, 14, and 16–18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kadkade,8 Herickhoff, Yoon, and Yoshida. DEFINITENESS: ISSUE Does the preponderance of evidence support Examiner’s conclusion that Appellant’s claim 18 is indefinite? ANALYSIS Appellant’s claim 18, reproduced above, depends ultimately from Appellant’s claim 1 and requires that the medium composition is frozen and comprises a temperature of about 0°C to about -196°C. We find no error in 3 Garrison, US 2009/0023214 A1, published Jan. 22, 2009. 4 Herickhoff et al., US 2015/0037783 A1, published Feb. 5, 2015. 5 Yoon et al., Phosphatidylcholine isolation from egg yolk phospholipids by high-performance liquid chromatography, 949 J. CHROMATOGR. A 209–216 (2002). 6 Yoshida et al., Phospholipid Degradation in Frozen Plant Cells Associated with Freezing Injury, 53 PLANT PHYSIOL. 509–511 (1974). 7 Ainley et al., WO 2006/052835 A2, published May 18, 2006. 8 Kadkade et al., US 2005/0158699 A1, published July 21, 2005. Appeal 2020-006328 Application 15/070,005 4 Examiner’s conclusion that Appellant’s claim 18 is indefinite in reciting that the composition comprises a temperature. Appellant contends that “[t]he boundaries of the temperature range [set forth in its claim 18] are clearly stated and one with skill in the art could ascertain these measurements of temperature as they apply to the medium composition” and, thus, claim 18 “particularly point[s] out and distinctly claim[s] the subject matter which the Appellant[] regards as the invention for dependent claim 18 (i.e., a medium composition with a temperature of about 0°C to about -196°C)” (Appeal Br. 19). We are not persuaded. “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the [S]pecification.” Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)). On this record, Appellant failed to establish that those of ordinary skill in this art, reading Appellant’s claim 18 in light of Appellant’s Specification, would reasonably understand how to formulate a composition that “comprises” a temperature range (see Ans. 3 (Examiner finds that “[i]t is not clear how a media composition comprises a temperature”)). In view of the foregoing, we recognize Examiner’s recommended amendment to Appellant’s claim 18 to overcome this rejection: “It is suggested that the claim be amended to ‘wherein the medium composition is frozen to a temperature of about. . .’ to more distinctly claim the invention” (Ans. 21). CONCLUSION The preponderance of evidence supports Examiner’s conclusion that Appellant’s claim 18 is indefinite. Appeal 2020-006328 Application 15/070,005 5 The rejection of claim 18 under 35 U.S.C. § 112(b) is affirmed. OBVIOUSNESS: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? ANALYSIS Because the same issue is dispositive for all three obviousness rejections, we consider the rejections together. Examiner finds that each of Garrison, Ainley, and Kadkade make obvious Appellant’s claimed media composition, with the exception of phosphatidylcholine at a concentration from 0.05% to 50% of the total volume of the medium composition (see Ans. 4, 9, and 12). Examiner relies on, inter alia, the combination of Herickhoff and Yoon to make up for the foregoing deficiency in each of Garrison, Ainley, and Kadkade.9 Specifically, Examiner finds: 9 We recognize Examiner’s reliance on Yoshida to disclose that plants experience compositional changes during freezing, “which result in deleterious changes in the membranes of plants,” including the degradation and reduction of phosphatidylcholine during freezing (Ans. 7, 10, and 14 (citing Yoshida 510 and Figs. 1–2)). We, however, find Yoshida unnecessary to support a conclusion of obviousness on this record and will not further discuss the reference. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (In affirming an obviousness rejection, the Board may rely upon less than all the references cited by the Examiner.). For the foregoing reasons, we do not address Appellant’s contentions regarding Yoshida (see generally Appeal Br. 9 and 13–15). Appeal 2020-006328 Application 15/070,005 6 Henrickhoff [sic10] teaches a media composition comprising a cryopreservation agent selected from acetamide, DMSO, glycerol, ethylene glycol, methanol, propylene glycol in amounts ranging from about 2-20% (0025-0027), a cell suspension media (0027) and a eukaryotic plant cell including plant seeds and shoots (0040). The composition also comprises lipids including phosphatidylcholine (0035) to protect the cells from damage during cryopreservation (0032-0035) as well as serve as a membrane stabilizer and antioxidant or radical scavenger for specific cell types (0033, 0039) during freezing/cryopreservation. Henrickhoff teach[es] adding lipids in amounts of 20, 23 and 29% (0042-0044). It is noted that Henrickhoff teaches a total lipid concentration of up to 29% and teaches total lipid content is 20% egg yolk. However, egg yolk comprises 80% phosphotidylcholine (see Yoon et al., 2002, abstract) and therefore, one would have a reasonable expectation of having a concentration of phosphatidylcholine in the media composition of 0.05% of total volume of composition. (Ans. 4–5; see also id. at 9, and 12–13.) Based on any of Garrison, Ainley, or Kadkade in combination with Herickhoff and Yoon, Examiner concludes that, before the effective filing date of the claimed invention, it would have been prima facie obvious to add phosphatidylcholine at the concentration taught by Henrickhoff to a media composition of Garrison, [Ainley, or Kadkade,] because Henrickhoff teach the addition of lipids including phosphatidylcholine (0035) to protect the cells from damage during cryopreservation (0032-0035) as well as serve as a membrane stabilizer and antioxidant or radical scavenger 10 The Examiner consistently refers to Herickhoff as “Henrickhoff,” but the Examiner’s intended meaning is clear. Appeal 2020-006328 Application 15/070,005 7 for specific cell types (0033, 0039) during freezing/cryopreservation. (Ans. 5; see also id. at 9–10 and 13.) More specifically, Examiner concludes that it would have been prima facie obvious: to add phosphatidylcholine to a media composition comprising a eukaryotic cell, specifically a plant cell, a cryopreservation agent and a cell suspension media as disclosed by Garrison, [Ainley, or Kadkade,] because Henrickhoff teach the addition of lipids including phosphatidylcholine (0035) to protect the cells from damage during cryopreservation (0032-0035) as well as serve as a membrane stabilizer and antioxidant or radical scavenger for specific cell types (0033, 0039) during freezing/cryopreservation.). (Ans. 7; see also id. at 11 and 14.) A reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Therefore, we are not persuaded by Appellant’s contention that “the only working example in Herickhoff is for the cryopreservation of bull semen” (Appeal Br. 8; see also Reply Br. 3; cf. Herickhoff ¶ 40 (Herickhoff discloses that its cryopreservation composition may be added to a variety of cells, including plant cells); see also id. ¶¶ 71, 88–89, 114, and 131–132). Herickhoff discloses the modification of egg yolk lipid by sonication prior to its addition to cryopreservation fluid to dilute cells (see Herickhoff ¶ 42). Herickhoff further discloses that “cryopreserved cells [are] negatively affected” when non-modified egg yolk lipid is used in the cryopreservation fluid (id. at ¶ 43). Because Appellant’s claim 1 does not exclude the use of egg yolk lipid, which comprises phosphatidylcholine that has been modified according to Herickhoff’s disclosure, we are not persuaded by Appellant’s Appeal 2020-006328 Application 15/070,005 8 contentions regarding the use of non-modified egg yolk lipid (see Appeal Br. 8–9). For the foregoing reason, we are not persuaded by Appellant’s contention that Herickhoff teaches away from the use of phosphatidylcholine in a cryopreservation medium (see Appeal Br. 15–16). Kadkade “relates to methods for the cryopreservation of plant cells and to methods for the recovery of plant[] cells which have been cryopreserved” (Kadkade ¶ 2). Therefore, we are not persuaded by Appellant’s contention “that Kadkade teaches that methods and compositions for use in animal cell cryopreservation (e.g., bull semen) are not generally applicable for use in plant cell cryopreservation” and “[a]ccording to Kadkade, the person having skill in the art would not be compelled to use methods and compositions from a disclosure for the cryopreservation of animal cells (e.g., bull semen) to be applied to plant cell cryopreservation” (Appeal Br. 10). As discussed above, Henrickhoff teach[es] adding lipids in amounts of 20, 23 and 29% (0042-0044). It is noted that Henrickhoff teaches a total lipid concentration of up to 29% and teaches total lipid content is 20% egg yolk. However, egg yolk comprises 80% phosphatidylcholine (see Yoon et al., 2002, abstract) and therefore, one would have a reasonable expectation of having a concentration of phosphatidylcholine in the media composition of 0.05% of total volume of composition. (Ans. 5, 9, and 12–13.) Therefore, we are not persuaded by Appellant’s contention that any of Garrison, Ainley, or Kadkade in combination with Herickhoff and Yoon fails to make obvious the specific concentration of phosphatidylcholine in a medium composition comprising a plant cell (Appeal Br. 11; see also id. at 13 (Appellant contends that “[n]owhere does Herickhoff teach or suggest a specific concentration of phosphatidylcholine Appeal 2020-006328 Application 15/070,005 9 to be added to the plant suspension cell or photo-autotrophic suspension cell,” i.e. plant cells made obvious by any of Garrison, Ainley, or Kadkade)). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner’s rejection involved the use of “Picking and choosing the claim element of ‘phosphatidylcholine’ from the Herickhoff . . . reference[]” (id. at 11–12). As discussed above the combination of Herickhoff and Yoon makes obvious the addition of phosphatidylcholine, in the concentration required by Appellant’s claimed invention, to the plant cell cryopreservation media made obvious by any of Garrison, Ainley, or Kadkade. Therefore, we are not persuaded by Appellant’s contention that Herickhoff “discloses an exhaustive genus and provides no guidance that would have led the skilled artisan to the species recited in the claimed subject matter,” specifically the “concentration of phosphatidylcholine in a medium composition for the cryopreservation of ‘plant suspension cell lines’ or ‘photo-autotrophic suspension cell lines’,” which as discussed above is made obvious by any of Garrison, Ainley, or Kadkade (Appeal Br. 18–19). For the foregoing reasons, we are not persuaded by Appellant’s contention that Examiner’s rejection is based on “mere conclusory statements” or improper hindsight (Appeal Br. 14 and 17). As discussed above, Examiner found that Herickhoff discloses the addition of lipids including phosphatidylcholine, in an amount within the scope of Appellant’s claim 1, to cryopreservation media to protect, inter alia, plant cells, from damage during cryopreservation as well as serve as a membrane stabilizer and antioxidant or radical scavenger during freezing/cryopreservation. Therefore, we are not persuaded by Appellant’s Appeal 2020-006328 Application 15/070,005 10 contention that the improved recovery and storage stability associated with the use of a cryopreservation media comprising phosphatidylcholine in the concentration required by Appellant’s claimed invention is a surprising benefit not accounted for by the evidence relied upon by Examiner (see Reply Br. 3–4). CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claims 1–5, 7–9, 13, 14, and 16–18 under 35 U.S.C. § 103(a) as unpatentable over the combination of Garrison, Herickhoff, Yoon, and Yoshida is affirmed. The rejection of claims 1–5, 7–9, 13, 14, and 16–18 under 35 U.S.C. § 103(a) as unpatentable over the combination of Ainley, Herickhoff, Yoon, and Yoshida is affirmed. The rejection of claims 1–3, 7–9, 14, and 16–18 under 35 U.S.C. § 103(a) as unpatentable over the combination of Kadkade, Herickhoff, Yoon, and Yoshida is affirmed. Appeal 2020-006328 Application 15/070,005 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18 112(b) Indefiniteness 18 1–5, 7–9, 13, 14, 16–18 103 Garrison, Herickhoff, Yoon, Yoshida 1–5, 7–9, 13, 14, 16–18 1–5, 7–9, 13, 14, 16–18 103 Ainley, Herickhoff, Yoon, Yoshida 1–5, 7–9, 13, 14, 16–18 1–3, 7–9, 14, 16–18 103 Kadkade, Herickhoff, Yoon, Yoshida 1–3, 7–9, 14, 16–18 Overall Outcome 1–5, 7–9, 13, 14, 16–18 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED Copy with citationCopy as parenthetical citation