Ex Parte Frank et al

Patent Trials and Appeals Board

Mar 13, 2019

13926393 - (D) (P.T.A.B. Mar. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/926,393 06/25/2013
27310 7590 03/15/2019
PIONEER HI-BRED INTERNATIONAL, INC.
7250 N.W. 62ND A VENUE
P.O. BOX552
JOHNSTON, IA 50131-0552
FIRST NAMED INVENTOR
Mary Frank
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4791-US-NP 3426
EXAMINER
BOGGS, RUSSELL T
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
03/15/2019 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):
sue.smith@pioneer.com
PTO-Legal.PRC@dupont.com
IPSupport@pioneer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY FRANK, RAJEEV GUPTA, KRISTIN HAUG COLLET,
BO SHEN, CARL R. SIMMONS, JINGRUI WU, and WENGANG ZHOU
Appeal2018-006032
Application 13/926,393
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-006032
Application 13/926,393
Appellants 1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 32, 38, and 40 (Appeal Brief filed
December 5, 2017 ("App. Br.") 3--4.). Claims 1-3, 5, 6, 8-31, 33, 35-37,
and 41--48 have been cancelled. (See App. Br. 15-16, Claims App'x.)
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants' Specification provides genetically modifying a plant to
increase the expression or activity of serine threonine protein phosphatase
("STPP"). (See Spec. 5:6-14, 22-25.) The Specification teaches that
modulating expression of STPP may increase yield and improve nitrogen
intake in plants, including maize plants. (See Spec. 3: 11-17; 5:22-25.)
Appellants' claim 32 recites:
A transgenic maize plant comprising in its genome a
recombinant polynucleotide encoding a polypeptide that is at
least 95% identical to SEQ ID NO: 2, wherein the maize plant
exhibits increased yield in a field compared to a control plant
not comprising the recombinant polynucleotide.
(App. Br. 15.)
Appellants do not present separate arguments for the patentability of
claims 38 and 40. Accordingly we focus on claim 32 in our review. See 37
C.F.R. § 4I.37(c)(iv).
1 Appellants report that the real party in interest is Pioneer Hi-Bred
International, Inc.
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Application 13/926,393
The Examiner rejects claims 32, 38, and 40 under 35 U.S.C. § 103 as
being obvious over Cao, 2 Tani, 3 and Schnable. 4 (Examiner's Answer mailed
March 22, 2018 ("Ans.") 2.)
The Examiner finds that Cao teaches a transgenic plant including a
recombinant DNA construct encoding a protein having an amino acid
sequence listed as SEQ ID NO: 12911. (Ans. 4, citing Cao 43:20-30; 44: 1-
12.) The Examiner finds that Cao's SEQ ID NO: 12911 is 99% identical to
SEQ ID N0:2 of the present claims. (Id.) The Examiner finds that Cao
teaches the DNA construct provides for an enhanced trait as compared to
control plants, including increased yield or enhanced nitrogen use efficiency.
(See Final Act. 21, citing Cao 44:1-5.) The Examiner further finds that the
transgenic plant includes a maize plant. 5 (See id., citing Cao 44: 10-20.)
The Examiner acknowledges that Cao "does not provide a working
example using SEQ ID NO: 12911." (Ans. 5.) However, the Examiner
determines that it would have been prim a facie obvious to a person of
ordinary skill in the art to produce a transgenic maize plant with any of the
transgenes taught by Cao, with a reasonable expectation of success in
creating and growing the transgenic plant. (See id.)
Appellants argue that "SEQ ID NO: 12911 of [Cao] is merely one of
22,000 unrelated sequences mentioned in the application ... [and thus] is
2 Cao et al., WO 2010/099084 A2, published September 2, 2010
3 Tani et al., Activation tagging in plants: a tool for gene discovery, 4 Funct.
Integr. Genomics 258-66 (2004).
4 Schnable et al., The B73 Maize Genome: Complexity, Diversity, and
Dynamics, 326 Science 1112-15 (2009).
5 Cao refers to com and maize interchangeably. See Cao 7:34. We will use
"maize" for consistency.
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Appeal2018-006032
Application 13/926,393
not an enabling disclosure for the obviousness analysis, because doing so,
creates an undue experimentation without predictable-finite results, as
mandated by KSR." (App. Br. 7.) Appellants further argue that the
Examiner applies an "obvious-to-try" rejection without a finite number of
predictable solutions. (See id. 6.)
These arguments are not persuasive because we find that Cao teaches
and claims a transgenic maize plant ( claims 8, 11) incorporating a sequence
that is 99% identical to the claimed SEQ ID N0:2 ( claim 4), for the identical
purpose of the claimed combination, i.e., an enhanced trait as compared to
control plants, e.g., increased yield ( claim 5). That Cao discloses a
multitude of effective combinations for creating a transgenic plant does not
render any particular transgenic plant less obvious. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). This is especially
true because the claimed transgenic plant is used for the identical purpose
taught by the prior art. (See id.)
Appellants' arguments regarding enablement and undue
experimentation are not persuasive because Cao provides the protein
sequence at issue and teaches that "[ n ]umerous methods for transforming
chromosomes in a plant cell nucleus with recombinant DNA are known in
the art." Cao 25: 10-11. Cao explains that the "transformed plant or its
progeny seed or plants can be ... selected for the presence of [the] enhanced
agronomic trait." Cao 28:32-33. In contrast, Appellants provide no
evidence or persuasive argument demonstrating undue experimentation
would have been required to generate a transgenic plant expressing the
protein of SEQ ID N0:12911.
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Appeal2018-006032
Application 13/926,393
We also find Appellants' arguments regarding Gleave unpersuasive
(see Reply Br. 4--5). In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
Claim 11 of Cao requires a com plant and depends on claim 5, which
requires a transgenic plant cell with enhanced agronomic trait. The
transgenic plants of claim 5 require a recombinant DNA construct of claim 4
that include proteins selected from the group of SEQ ID NO: 8105-14403
(see Cao 43--44, claims 4, 5, 11 ). Thus, Cao teaches a list of transgenic
maize plants that includes SEQ ID NO: 12911, resulting in a transgenic
maize plant that meets both the sequence requirement and the enhanced
agronomic trait requirement of claim 32. "It is well settled that 'anticipation
is the epitome of obviousness."' In re McDaniel, 293 F.3d 1379, 1385 (Fed.
Cir. 2002).
Gleave did not require that the sequences were drawn to the same
function or the same target, but simply stated that a "person of ordinary skill
in the art equipped with an IGFBP sequence is admittedly capable of
envisioning how to make any antisense sequence." Gleave, 560 F.3d at
1338 (see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376
(Fed.Cir.2005) (rejecting "the notion that [a compound] cannot anticipate
because it appears without special emphasis in a longer list."))
Here, the ordinary artisan, equipped with the sequences of Cao, is
capable of making the transgenic maize plant of claims 4, 5, and 11 of Cao
based on the knowledge of the ordinary artisan as discussed above. As
Gleave noted "it is not 'necessary that an invention disclosed in a
publication shall have actually been made in order to satisfy the enablement
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Appeal2018-006032
Application 13/926,393
requirement."' Gleave, 560 F.3d at 1338 ( citing In re Donohue, 766 F.2d
531,533 (Fed.Cir.1985)).
Appellants argue that the Examiner used hindsight to select SEQ ID
NO: 12911 from the multitude of sequences of Cao, absent any demonstrated
activity or actual data for the disclosed sequences. (See App. Br. 11.)
Appellants further argue that the sequence listing of Cao should be
considered general guidance under an "obvious-to-try" standard. (See App.
Br. 10.) Appellants cite Abbott Labs. v. Sandoz, Inc., which requires "[e]ach
case must be decided in its particular context, including the characteristics of
the science or technology, its state of advance, the nature of the known
choices, the specificity or generality of the prior art, and the predictability of
results in the area of interest." 544 F.3d 1341, 1352 (Fed. Cir. 2008)
These arguments are not persuasive, as the Examiner does not apply
an "obvious-to-try" standard. Rather than provide general guidance, we find
that Cao teaches incorporating a list of specific sequences into transgenic
plants, including maize, to provide enhanced nitrogen use efficiency. (See
Cao 4: 12-20.) Considering the particular characteristics of the nature of the
technology and the predictability of the results in the area of interest, we find
that Cao teaches using known databases to identify homo logs of proteins
encoded by the listed DNA sequences that may provide transgenic plants
having enhanced agronomic traits. (Cao 32-33.) In particular, we find the
sequence listing of Cao identifies SEQ ID N0:12911 as a maize (Zea mays)
protein that is a homo log of "Serine/threonine-protein phosphatase." (See
Cao sequence listing.) Despite the large number of sequences, Cao
establishes a routine method for identifying relevant proteins as compared to
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Appeal2018-006032
Application 13/926,393
known sequences, and the Examiner has identified a nucleic acid sequence
for expressing a homologous protein in the same plant as that claimed.
Appellants argue that Cao does not indicate SEQ ID N0:12911 is
reasonably expected to provide increased yield. (App. Br. 11.) Therefore,
Appellants argue that the Examiner has not established a reasonable
expectation of success in modifying the prior art. (See Reply Br. 2.)
These arguments are not persuasive, as the Examiner need only show
a reasonable expectation of success in creating the transgenic maize plant
incorporating SEQ ID NO: 12911. As discussed at length above, we find
that Cao teaches the specific sequence and suggests incorporating the
sequence into a transgenic plant. Cao further teaches "recombinant DNA
constructs are assembled using methods well known to persons of ordinary
skill in the art" and "numerous methods for transforming chromosomes in a
plant cell nucleus with recombinant DNA are known in the art." (Cao 20:2-
4; 25:10-12.) Based on the teachings of Cao, we find that a person of
ordinary skill would have had a reasonable expectation of success in
transforming a transgenic plant to incorporate SEQ ID NO: 12911. As to the
increased yield, "[i]t is not invention to perceive that the product which
others had discovered had qualities they failed to detect," particularly where
the prior art teaches a DNA sequence encoding the same protein. See In re
Kubin, 561 F.3d 1351, 1357-58 (Fed. Cir. 2009). Therefore, we are not
persuaded that the Examiner erred in determining the claims would have
been prima facie obvious over the prior art.
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Appeal2018-006032
Application 13/926,393
Conclusion
Upon consideration of the record and the reasons given, we sustain the
rejection of claims 32, 38, and 40 under 35 U.S.C. § I03(a).
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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