Ex Parte Narva et al

Patent Trials and Appeals Board

Apr 11, 2019

14577811 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/577,811 12/19/2014 Kenneth E. Narva
80834 7590 04/15/2019
Magleby Cataxinos & Greenwood/Dow AgroSciences LLC
170 S. Main Street
Suite 1100
Salt Lake City, UT 84101
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.
2971-12016.1US(74683-US-N 3809
EXAMINER
ZHENG,LI
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
ptomail@mcgiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH E. NARVA, HUARONG LI, CHAOXIAN GENG,
KANIKA ARORA, BALAJI VEERAMANI, PREMCHAND GANDRA,
SARAH WORDEN, ANDREAS VILCINSKAS, EILEEN KNORR,
ELANE FISHILEVICH, MURUGESAN RANGASAMY, and
MEGHAN FREY
Appeal2018-006168
Application 14/577,811
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-006168
Application 14/577,811
Appellants 1 seek our review, under 35 U.S.C. § I34(a), of the
Examiner's decision to reject claims 1, 2, 4, 7, 8, 12, 16-18, 21, and 31-38
(Appeal Brief filed October 10, 2017 ("App. Br.") 2.)
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appellants' Specification provides nucleic acid molecules for the
control of coleopteran pests, including for example, Diabrotica virgifera
LeConte (western com rootworm), Meligethes aeneus Fabricius, (pollen
beetle), and hemipteran pests, including for example, Euschistus heros
(Fabr.) (Neotropical brown stink bug). (Specification dated December 19,
2014 ("Spec.") ,r 22.) The nucleic acid molecules may be used for post-
transcriptional inhibition of a gene-encoding Ras-opposite protein ("ROP").
(Spec. ,r 23.) ROP contains a conserved domain of the Seel family of
proteins, which are known to be involved in synaptic transmission and
general secretion. (Spec. ,r 242.) The nucleic acid molecule may include a
double stranded RNA ( dsRNA) that inhibits target gene expression through
RNA interference. (Spec. ,r,r 15, 145.)
Appellants' claim 1 recites:
A double-stranded ribonucleic acid ( dsRNA) molecule
comprising a first polyribonucleotide consisting of at least 23
contiguous nucleotides of the polyribonucleotide encoded by a
polynucleotide selected from the group consisting of SEQ ID
NO: 1, SEQ ID NO: 115, SEQ ID NO: 120, SEQ ID NO: 122,
SEQ ID N0:124, SEQ ID N0:126, SEQ ID NO: 131, and SEQ
IDNO: 133,
wherein the first polyribonucleotide is hybridized in the
dsRNA molecule to a second polyribonucleotide that is the
1 Appellants report that the real party in interest is Dow AgroSciences.
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Appeal2018-006168
Application 14/577,811
complement or reverse complement of the first
polyribonucleotide, and
wherein delivery of the dsRNA molecule inhibits the
expression of a target gene in a coleopteran or hemipteran
insect selected from the group consisting of Diabrotica
virgifera, Euschistus heros, and Meligethes aeneus.
(App. Br. 6-9.)
The Examiner rejects the claims under the judicially approved
improper Markush grouping doctrine. (Final Office Action mailed May 10,
2017) ("Final Act.") 2.)
Analysis
"A Markush claim contains an 'improper Markush grouping' if: (1)
The species of the Markush group do not share a 'single structural
similarity,' or (2) the species do not share a common use." Supplementary
Examination Guidelines for Determining Compliance With 35 U.S.C. 112,
and for Treatment of Related Issued in Patent Applications, 76 FR 7162,
7166 (2011) ("Guidelines").
The Examiner finds "the nucleotide sequences listed in claim 1 have
distinct structure." (Examiner's Answer mailed March 22, 2018 ("Ans.") 3.)
According to the Examiner, a substantial structural feature should be
identified at a nucleotide sequence level, but no conserved region among the
nucleotide sequences listed in the Markush group was presented. (See Ans.
5---6.)
Appellants argue that the Examiner erred in rejecting the claims
because the polynucleotides recited share substantial structural features.
(See App. Br. 5.) Appellants argue that the recited polynucleotides each
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Appeal2018-006168
Application 14/577,811
encode a polyribonucleotide consisting of at least 23 contiguous nucleotides
which hybridizes in dsRNA to a second complementary polyribonucleotide.
(See App. Br. 5.) Appellants also argue that the recited polynucleotides
encode ROP proteins of specified plant pests. (See id.) According to
Appellants, "a single structural similarity does not require nucleotide
sequence level granularity" and "the 'art recognized class' may simply be
that of polyribonuc[l]eotides." (Reply Brief filed May 22, 2018 ("Reply
Br.") 3, citing MPEP 706.03(y).)
As to a common use, Appellants argue that the claimed
polynucleotide sequences are functionally identical for inhibiting the
expression of target genes encoding the ROP proteins of plant pests. (Reply
Br. 5.) Appellants argue further that the claimed sequences share a common
utility such that the sequences can "be substituted one for the other, with the
expectation that the same intended result would be achieved." (Id., citing
MPEP 706.03(y).)
We agree with Appellants that the claimed Markush group is not
improper, as the claimed species share a single structural similarity and a
common use. (See Guidelines). The nucleic acid sequences recited in the
rejected claims belong to the same recognized chemical class of
polyribonucleotides that are hybridized in dsRNA molecules and encode
ROP proteins. While the individual sequences differ because they are drawn
to ROP sequences of different insects ( e.g., SEQ ID NO: 1 and 115) or
different portions of the ROP sequence (e.g., SEQ ID N0:120, 131, and
133), all of the sequences share the common use of silencing ROP proteins.
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Appeal2018-006168
Application 14/577,811
Accordingly, we conclude that the Examiner erred in rejecting claims
1, 2, 4, 7, 8, 12, 16-18, 21, and 31-38.
Conclusion
Upon consideration of the record and the reasons given, the rejection
of claims 1, 2, 4, 7, 8, 12, 16-18, 21, and 31-38 is not sustained.
Therefore, we reverse the decision of the Examiner.
REVERSED
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