Ex Parte Penner et al

Patent Trial and Appeal Board

Aug 21, 2017

13772007 (P.T.A.B. Aug. 21, 2017)

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.
13/772,007 02/20/2013 Donald Penner 6550-000095-US-COD 3269
27572 7590 08/23/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
STEADMAN, DAVID J
ART UNIT PAPER NUMBER
1656
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD PENNER and MARULAK SIMARMATA1
Appeal 2015-008273
Application 13/772,007
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Appellants’ claims 74, 76—78, and 80-87.2
Specifically, claims 74, 76—78, 80-83, and 87 stand rejected as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of M.
Simarmata, The Study of Glyphosate Resistance in Rigid Ryegrass {folium
rigidum Gaud.) from California, Ph.D. Dissertation submitted to Michigan
State University, 2004 (“Simarmata”), S.R. Baerson et al., Glyphosate-
1 Appellants state the real party-in-interest is the Board of Trustees of
Michigan State University. App. Br. 1.
2 Claims 1—73, 75, and 79 are canceled. Claims 88—90 are withdrawn See
App. Br. 3.
Appeal 2016-008273
Application 13/772,007
Resistant Goosegrass. Identification of a Mutation in the Target Enzyme 5-
Enolpyruvylshikimate-3-Phosphate Synthase 129 Plant Physiol. 1265—1275,
(2002) (Baerson) and as evidenced by M. Simarmata and D. Penner, The
Basis for Glyphosate Resistance in Rigid Ryegrass (Lolium rigidum) from
California, 56 Weed Sci. 181—188 (2008) (“Simarmata 2”).
Claims 84—86 stand rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over the combination of Simarmata, Baerson, and Shah et
al., (US 4,940,835, July 10, 1990) (“Shah”), and as evidenced by Simarmata
2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
REPRESENTATIVE CLAIM
Claim 74 is representative of the claims on appeal and recites:
74. An isolated glyphosate resistance polynucleotide
comprising a cDNA sequence at least 97% identical to the
nucleotide sequence of SEQ ID NO: 1, and wherein the isolated
glyphosate resistance polynucleotide encodes a functional
glyphosate-resistant 5-enolpyruvylshikimate-3-phosphate
synthase (EPSPS).
Claim App’x 1.
ISSUES AND ANALYSES
Except as otherwise indicated herein, we agree with the Examiner’s
findings and conclusions that the appealed claims are obvious over the
combined cited prior art under § 103(a). We address the arguments raised
by Appellants below.
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Issue 1
Appellants argue that the Examiner erred in apparently finding that,
because the non-prior art reference Simarmata 2 reports cDNA and amino
acid sequences similar to those of the claims, that their claimed cDNA
sequence is inherent in light of Simarmata and Baerson. App. Br. 10.
Analysis
The Examiner finds Simarmata teaches extracting and purifying EPSP
synthase (“EPSPS”) from the crown tissue of rigid ryegrass plants of the 5th
and 4th selection cycles of the original collection from an almond orchard in
Chico, California that had been intensively treated with glyphosate since
1984 and assaying the EPSP synthase activity. Final Act. 4 (citing
Simarmata 72—73, 76). The Examiner finds Simarmata teaches that
decreased sensitivity of EPSPs to glyphosate in the resistant “R”) biotype
appears to be a major contributor to the observed glyphosate resistance. Id.
(citing Simarmata 76).
The Examiner finds Simarmata does not expressly disclose that the
EPSPS is the same as an EPSPS comprising the amino acid sequence of
SEQ ID NO:2 and that is encoded by a cDNA comprising the nucleotide
sequence of SEQ ID NO: 1. Final Act. 4. However, it is the Examiner’s
position that the EPSPS of Simarmata comprises the amino acid sequence of
SEQ ID NO:2, and, consequently, is encoded by a cDNA comprising the
nucleotide sequence of SEQ ID NO: 1. Id. at 4—5. The Examiner
acknowledges that the difference between Simarmata and Appellants’
claimed invention is that Simarmata does not disclose a cDNA encoding the
glyphosate resistant EPSP synthase. Id. at 5.
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However, the Examiner finds the amino acid sequence and the
polynucleotide sequence resulting in that amino acid sequence are inherent
to Simarmata’s EPSPS. Id. In particular, the Examiner explains that the
source of the disclosed and claimed EPSPS comprising the amino acid
sequence of SEQ ID NO: 2 is identical to the EPSPS of Simarmata and that
Simarmata 2 describes the amino acid sequence that is inherent to
Simarmata and the polynucleotide sequence from which the amino acid
sequence was translated. Final Act. 5 (comparing Spec. 35—36, 93—94
with Simarmata 28, 50, 72—73 and as disclosed by Simarmata 2 184—86).
The Examiner points out that the “express, implicit, and inherent disclosures
of a prior art reference may be relied upon in the rejection of claims under
35 U.S.C. 102 or 103.” Final Act. 5 (citing MPEP § 2112).
The Examiner further finds that Baerson teaches a method for cloning
a cDNA encoding a glyphosate resistant EPSP synthase from goosegrass.
Final Act. 5 (citing Baerson 1272—73).
The Examiner therefore concludes that a person of ordinary skill in
the art would have found it obvious to combine the teachings of Simarmata
and Baerson to clone a cDNA encoding Simarmata’s EPSP synthase. Final
Act. 5—6. The Examiner finds an ordinary artisan would have been
motivated to do so to express and molecularly characterize Simarmata’s
EPSP synthase and would have had a reasonable expectation of success in
doing so based upon the combined teachings of Simarmata and Baerson. Id.
at 6.
Appellants take issue with the Examiner’s finding that “the amino
acid sequence of Simarmata’s glyphosate resistant EPSP synthase and the
nucleotide sequence of the cDNA encoding Simarmata’s glyphosate
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resistant EPSP synthase would have been inherent features as shown by the
evidentiary reference Simarmata-2....” App. Br. 10 (quoting Final Act. 9).
Appellants also contend that the Examiner erroneously relied on In re Crish,
393 F.3d 1253 (Fed. Cir. 2004) and In re Kubin, 561 F.3d 1351 (Fed. Cir.
2009) to allegedly support the conclusion that the cDNA sequence is
inherent in light of Simarmata and Baerson. Id.
Appellants distinguish the facts of the instant appeal from those of
Crish. In Crish, Appellants argue, the prior references disclosed various
aspects of the gene promoter, including its function, size, and location on the
plasmid. App. Br. 12. In other words, assert Appellants, a plasmid
including the claimed DNA sequence was in existence prior to Crish’s
application and, consequently, the claimed DNA sequence of the promoter
was not novel because the promoter was already known, used, and
characterized. Id. In contrast to Crish, Appellants contend, none of the prior
art references relied on by the Examiner describe the cDNA sequences
recited in the current claims. Id.
With respect to Kubin, Appellants argue, Simarmata does not disclose
a cDNA for an EPSPS that results in glyphosate resistance, nor does it
disclose a method for making such a cDNA. App. Br. 13. Appellants
concede that Baerson discloses a mutant EPSPS from goosegrass, but
arguest that Baerson 2 teaches away from generating an EPSPS cDNA from
rigid ryegrass. Id.
Moreover, Appellants argue, the Examiner’s conclusion fails as matter
of law because obviousness cannot be established over more than one
reference on the basis of inherency. App. Br. 13 (citing B. Duft and E.
Mirabel, Principles of Inherency, 540 J. Pat. Off. Soc’y 539, 548 (1995).
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Appellants contend that, although there are several cases3 affirming § 103
rejections over a single reference based on inherency of a claimed feature,
such cases are irrelevant to the instant appeal, which is predicated on a
combination of references. Id. at 13—14. Rather, Appellants assert, these
cases stand for the proposition that inherency is not obviousness and that
inherency cannot sustain a conclusion of obviousness over a combination of
references where none of the references appreciate or recognize an alleged
inherent result or characteristic. Id. at 14 (citing, e.g., In re Spormann, 363
F.2d 444, 448 (C.C.P.A. 1966) (“Obviousness cannot be predicated on what
is unknown”).
The Examiner responds that a person of ordinary skill in the art would
have recognized that Baerson is more relevant than Baerson 2 to the claimed
invention and, given the striking similarities between the teachings of
Simarmata and Baerson, i.e., glyphosate-resistant EPSPS that is a major
contributor to the observed glyphosate resistance of the plant, it is the
Baerson reference, in combination with Simarmata, that would have
motivated and provided a reasonable expectation of success to one of
ordinary skill in the art to make the claimed invention. Ans. 11—12.
The Examiner finds this case to be similar to Kubin. Id. at 13. The
Examiner finds that, in this instance, the record shows that the prior art
3 Appellants cite, e.g., In reMousa, 479 Fed. Appx. 348, 352 (Fed. Cir.
2012); In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011); In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d212,216
(C.C.P.A. 1981); In re Fitzgerald, 619 F.2d 67, 70 (C.C.P.A. 1980); In re
Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977); In re Skoner, 517 F.2d 947, 950
(C.C.P.A. 1975); In reLudtke, 441 F.2d 660, 664 (C.C.P.A. 1971); In re
Myers, 401 F.2d 828, 831 (C.C.P.A. 1968).
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teaches a protein of interest (Simarmata’s EPSPS), a motivation to isolate a
cDNA encoding that protein, and illustrative and routine methodology for
cloning this cDNA (Baerson's disclosed method). Id. (noting that the prior
art’s disclosure of the glyphosate resistant EPSPS and a detailed method for
isolating a cDNA encoding a glyphosate-resistant EPSPS establishes the
possession of Simarmata’s glyphosate resistant EPSPS amino acid sequence
and provides a reasonable expectation of success in obtaining a cDNA
encoding Simarmata’s glyphosate resistant EPSPS.) The Examiner finds
that, eventhough the sequence of Simarmata’s EPSPS was not explicitly
disclosed, the protein’s existence in the prior art, and the routine skill of
obtaining the encoding cDNA would have rendered obvious the claimed
polynucleotides. Id. (citing In re Crish, 393 F.3d 1253, 1258 (Fed. Cir.
2004) (a claimed promoter sequence obtained by sequencing a prior art
plasmid that was not previously sequenced was anticipated by the prior art
plasmid which necessarily possessed the same DNA sequence as the claimed
oligonucleotides)). The Examiner points out that our reviewing court held in
Crish that “just as the discovery of properties of a known material does not
make it novel, the identification and characterization of a prior art material
also does not make it novel.” Id.
Analysis
We agree with Appellants that the cDNA SEQ ID NO: 1 recited in the
claims is not expressly disclosed by the cited prior art references. However,
we are not persuaded by Appellants’ arguments that the Examiner erred in
finding the prior art would have rendered that sequence obvious.
As found by the Examiner, Simarmata teaches isolation of an EPSPS
that is resistant to glyphosate and that Baerson teaches that it was well-
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known in the art that an isolated EPSPS could be sequenced and a cDNA
nucleotide constructed. See Baerson 1268. Moreover, because isolation of
the EPSPS enzyme in glyphosate-resistant California rigid ryegrass is taught
in the prior art, we agree that the identification of its amino acid sequence
and the construction of a cDNA of such an EPSPS are properties of, or
derive directly from the properties of, the EPSPS disclosed in Simarmata.
See Crish, 393 F.3d at 1258. Indeed, as the Federal Circuit held in Crish,
“its structure is its identity, not merely one of its properties.” Id. Thus, the
absence of express disclosure of these sequences in the prior art does not
render the cDNA nonobvious. Moreover, Simarmata 2, although it does not
quality as prior art, teaches that the glyphosate-resistant EPSPS in California
Lolium rigidum—the source of the glyphosate-resistatnt EPSPS in
Simarmata— actually possesses both the disclosed amino acid, SEQ ID
NO:2, which is encoded by the disclosed cDNA SEQ ID NO: 1. We
consequently agree with the Examiner that Simarmata 2 is properly cited as
an evidentiary reference to show that the polynucleotide encoding
Simarmata’s glyphosate resistant EPSPS is the same as SEQ ID NO: 1. See
Ans. 8.
Issue 2
Appellants argue the Examiner erred by impermissibly applying
hindsight analysis in concluding that the claims are obvious under 35 U.S.C.
§ 103(a). App. Br. 5.
Background
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Appellants argue that the prior art “cannot render the current claims
obvious because none of the references discloses a cDNA molecule having a
sequence of SEQ ID NO: 1 or SEQ ID NO:2.” App. Br. 6. Appellants
assert that the Examiner “has failed to show the prior existence of a cDNA
molecule described by the claims.” Id. Rather, contend Appellants, “the
Examiner has allegedly selected convenient selections from the art of record
and pieced them together in order to generate the rejections.” Id.
In that regard, Appellants assert that, although Simarmata teaches
glyphosate resistance in rigid ryegrass (Lolium rigidum), Simarmata teaches
only that the decreased 5-enolpyruvylshikimate-3-phosphate synthase
(EPSPS) sensitivity to glyphosate in resistant (R) compared to sensitive (S)
plants appears to be a contributor in glyphosate resistance in rigid ryegrass.
App. Br. 6 (citing Simarmata 68).
Appellants assert that Simarmata neither teaches nor suggests that the
decrease in EPSPS activity is due to a difference in its primary DNA
sequence, nor does it teach any cDNA sequences. Id.; see also id. at 7
(“Simarmata does not suggest that glyphosate resistance is conferred from
an EPSPS allele.”)
Appellants next argue that, to remedy this deficiency in Simarmata,
the Examiner relies upon Simarmata 2, which Appellants concede describes
a cDNA sequence for glyphosate-resistant EPSPS. App. Br. 7. Appellants
allege that the Examiner improperly relies upon Simarmata 2 as evidence for
the Examiner’s finding that the ryegrass of Simarmata inherently embodies
the cDNA sequences described in the claims, both because it is not prior art
to their application, and because Simarmata does not suggest that glyphosate
resistance is conferred from an EPSPS allele. Appellants argue further that,
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even if Simarmata taught a similar ryegrass as Simarmata 2, one that
contains a genomic DNA sequence that would result in a similar cDNA
sequence as that described in Simarmata 2, these facts would be irrelevant to
an “obviousness-type analysis” because Simarmata fails to recognize or
suggest that the primary sequence of EPSPS is relevant or that a cDNA
molecule should be generated. Id.
Id.
Appellants also state that the Examiner also relies upon Baerson as
reporting a method for cloning cDNA, presumably providing motivation to
arrive at the claimed cDNA from Simarmata, when viewed in light of
Simarmata 2. Id. However,
Appellants point out that Simarmata cites another reference by Baerson et
al., i.e., S.R. Baerson et al., Investigating the Mechanism of Glyphosate
Resistance in Rigid Ryegrass (Lolium rigidum), 50 Weed Sci. 721—730
(2002) (“Baerson 2”), that it contends is more relevant. Id. Appellants
assert that Baerson 2 teaches the molecular basis of glyphosate resistance in
rigid ryegrass and concludes that the basis of the resistance is a non-target
mechanism but is rather due to multiplication and overexpression of the
EPSPS gene. App. Br. 7. Appellants contend that Baerson 2 is more
relevant to the current claims than Baerson because Baerson 2 teaches rigid
ryegrass. Id. at 7—8. Specifically, Appellants contend that Baerson 2 studied
the inhibition of EPSPS by glyphosate, and found that the percent inhibition
provided by resistant and sensitive EPSPS enzymes were similar. Id. at 8.
Appellants assert that Baerson 2 concludes that “a change in inhibition
kinetics caused by an EPSPS variant, if present, would likely have been
detected.... These results clearly indicate that resistance is not associated
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with a predominant, glyphosate-insensitive EPSPS activity.” App. Br. 8
(quoting Baerson 2 727—28). Appellants also note that Baerson 2 examined
EPSPS genes by restriction analysis involving digesting genomic DNA from
sensitive and resistant ryegrasses and hybridizing the digests to a labeled
wild type cDNA probe (GenBank accession number, AF349754). Id.
Appellants point out that Baerson 2 concludes that: “Given the number of
different enzymes used, coupled with the fact that a nearly full-length
EPSPS cDNA clone was used to generate hybridization probes, it is likely
that novel polymorphisms would have been detected had gene amplification
occurred.” Id. (quoting Baerson 2 728). Appellants therefore conclude that
Baerson 2 teaches that the mechanisms of EPSPS resistance in rigid ryegrass
is unlikely to be the same as that used in commercially developed
glyphosate-resistant crops. Id. (quoting Baerson 2 729) and that “several
distinct processes including elevated shikimate pathway activity, differential
induction of EPSPS activity by glyphosate, as well as reduced herbicide
uptake may be involved in the resistance mechanism.” Id.
Appellants further assert that, based upon the data, Baerson 2
hypothesizes that glyphosate resistance in rigid ryegrass is based on gene
overexpression, whereas Baerson teaches the same restriction analysis, but
performed on goosegrass, which provides opposite results leading to the
synthesis of the cDNA. App. Br. 8. Appellants summarize, therefore, that
although Baerson suggests a target-based mechanism for glyphosate -
resistance in goosegrass, Baerson-2 teaches away from such a mechanism
and suggests that other non-target-based mechanisms provide glyphosate
resistance in rigid ryegrass, which is the subject plant of Simarmata. Id. at
8-9.
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The Examiner responds that Simarmata teaches that the activity of
EPSPS from the glyphosate-resistant (R) biotype of ryegrass is less sensitive
to glyphosate and concludes that decreased sensitivity of EPSPS to
glyphosate in the R biotype appears to be a major contributor to the observed
resistance. Ans. 6 (citing Simarmata 76). The Examiner finds Simarmata
cites Baerson, and notes that Baerson teaches that, in glyphosate-resistant
goosegrass, decreased sensitivity of EPSPS to glyphosate is also observed.
Id.
The Examiner finds Baerson teaches cloning and comparing cDNAs
encoding both S and R biotypes of goosegrass and teaches that the decreased
sensitivity of the R biotype is due to a single nucleotide polymorphism in the
cDNA, which results in a single amino acid change in the EPSPS
polypeptide. Ans. 6 (citing Baerson 1268). The Examiner finds Baerson
further teaches that the glyphosate-resistant EPSPS in the R plants provides
a “significant component of the glyphosate resistance mechanism.” Id.
(citing Baerson 1272). The Examiner concludes that, given the similarities
in the subject matter taught by Simarmata and Baerson (i.e., glyphosate-
resistant EPSPS in glyphosate-resistant plants), a person of ordinary skill in
the art would have been motivated to clone the cDNAs encoding EPSPS in
the R and S biotypes of ryegrass to express and molecularly characterize
Simarmata’s EPSPS, as taught by Baerson. Id. at 6—7.
The Examiner further finds that the significance of glyphosate-
resistant EPSPS to the development of herbicide-resistant plants and the
desire to isolate cDNAs encoding glyphosate-resistant EPSPS was well-
known at the time of the invention as shown by, e.g., Baerson and Alibhai et
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al. (WO 2004/074443 A2, September 2, 2004) (“Alibhai”).4 Ans. 7. The
Examiner therefore concludes that a person of ordinary skill would have
been motivated to isolate the cDNA encoding glyphosate-resistant EPSPS,
as taught by Simarmata. Id. Furthermore, the Examiner finds that the
teachings of both Baerson and Alibhai demonstrate that only routine
experimentation would have been required to isolate the cDNA encoding
Simarmata’s glyphosate-resistant EPSPS and, therefore, a person of ordinary
skill in the art would have had a reasonable expectation of success. Id.
The Examiner notes that the facts of the instant appeal are similar to
those of In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) in that the prior art
teaches a protein of interest (glyphosate-resistant EPSPS), a motivation to
isolate a cDNA encoding that protein, and illustrative instructions to isolate
the cDNA encoding the protein. Consequently, and as in Kubin, the
Examiner concludes that Appellants’ claimed invention is “the product not
of innovation but of ordinary skill and common sense.” Ans. 7 (quoting
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 402-A03 (2007)).
With respect to the teachings of Baerson 2, the Examiner finds
Simarmata’s teachings are directed to rigid ryegrass from California,
whereas Baerson 2 is directed to rigid ryegrass from Australia. Ans. 9. The
Examiner finds Simarmata expressly establishes geographic as well as
phenotypical differences in the two types of rigid ryegrass; teaching that:
“decreased sensitivity of EPSPS in R plants appeared to be a major
contributor to the observed resistance in California rigid ryegrass. This is in
contrast to results reported with Australian rigid ryegrass” as reported by
4 Cited by the Examiner during prosecution as a Foreign Reference on Form
PTO-892, May, 24, 2013.
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Baerson 2. Id. (quoting Simarmata 76). The Examiner finds Simarmata
subsequently cites to Baerson, noting that Baerson “observed decreased
sensitivity of EPSPS to glyphosate.” Id.
The Examiner finds that, given the strong similarities between the
teachings of Simarmata and Baerson, i.e., glyphosate resistant EPSPS that is
less sensitive to glyphosate and is a major contributor to the observed
glyphosate resistance, the teachings of Baerson are more relevant than
Baerson 2 to the claimed invention. Ans. 9.
We are not persuaded by Appellants’ arguments. We agree with the
Examiner that Simarmata teaches EPSPS from a glyphosate-resistant (R)
biotype of ryegrass that it determined is less sensitive to glyphosate.
Simarmata summarizes its teachings by stating: “[MJetabolism appears not
to be the basis for glyphosate resistance in rigid ryegrass collected from
California. Decreased sensitivity of EPSP synthase to glyphosate in the R
biotype appears to be a major contributor to the observed resistance.”
Simarmata 76.
Baerson is directed to: “examin[ing] and compar[ing] expression
levels, sensitivity to glyphosate, as well as describing] cloning experiments
and kinetic analysis for the herbicide target site, EPSPS, in glyphosate-
resistant and -sensitive goosegrass biotypes collected in Malaysia.” Baerson
1266. Baerson teaches that:
We have obtained evidence that a simple amino acid substitution
in the EPSPS enzyme expressed in the resistant biotype
contributes to the underlying basis for resistance. This is the first
report to our knowledge for a glyphosate resistance mechanism
involving an altered EPSPS enzyme to have evolved in any plant
species.
Id.
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Specifically, Baerson teaches:
The identification of a Pro-106 —> Ser substitution in the (R)
biotype EPSPS is of particular significance because the same
amino acid substitution at the corresponding residue in the
Salmonella typhimurium aroA gene (EPSPS) was previously
determined to be the genetic basis of glyphosate resistance in an
ethyl methanesulfonate (EMS)-mutagenized strain. More recent
studies have shown that the analogous change made to the
petunia EPSPS enzyme via site-directed mutagenesis results in
an approximately 7.5-fold increase in Ki(app)(glyphosate),
reflecting a significant reduction in affinity for glyphosate.
Id. at 1268 (internal citations omitted).
We consequently agree with the Examiner that a person of ordinary
skill in the art, given the teachings of Simarmata and Baerson, would
understand that the decreased sensitivity of EPSPS in glyphosate-resistant
strains of California rigid ryegrass, as taught by Simarmata, could
reasonably be expected to reside in “a simple amino acid substitution in the
EPSPS enzyme expressed in the resistant biotype,” as taught by Baerson.
Thus, we do not find persuasive Appellants argument that Simarmata neither
teaches nor suggests that the decrease in ESPSPS activity is due to a
difference in its primary DNA sequence, because it fails to consider the
combination of Simarmata and Baerson. That is Simarmata’s teaching that:
“Decreased sensitivity of EPSP synthase to glyphosate in the R biotype
appears to be a major contributor to the observed resistance,” combined with
Baerson’s teaching that “a simple amino acid substitution in the EPSPS
enzyme expressed in the resistant biotype contributes to the underlying basis
for resistance,” directly suggests that a difference in the primary DNA
sequence of glyphosate-resistant ESPS underlies the mechanisms of
resistance in rigid ryegrass from California. Given this teaching, even if the
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enzyme was not fully responsible for the resistance phenotype, one of
ordinary skill in that art would have had reason to determine the enzyme’s
sequence.
Although it is true that Simarmata does not expressly teach a cDNA
sequence and Baerson also does not disclose a cDNA of ryegrass, for the
reasons just discussed, we disagree with Appellants argument that the
Examiner has allegedly selected convenient selections from the art of record
and pieced them together in order generate the rejections. See App. Br. 6.
When a skilled artisan merely pursues “known options” from a “finite
number of identified, predictable solutions,” obviousness under § 103 arises.
KSR, 550 U.S. at 421. In this instance, the Examiner concludes, and we
agree, that a person of ordinary skill in the art would be motivated to use the
well-known methods taught by Baerson to isolate and characterize the
sequence of ESPS from glyphosate-resistant strains of California rigid rye
grass, based upon the express teachings and suggestions of Simarmata.
Nor are we persuaded by Appellants’ argument that the Examiner
improperly applied hindsight analysis in establishing a prima facie case of
obviousness. Although any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, “so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper.” In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). The
teachings of Simarmata and Baerson point directly to the sequence of the
glyphosate resistant EPSPS sequence as being the basis of resistance, and
the means of determining the sequence of EPSPS in glyphosate-resistant
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strains of grasses, as taught by Baerson, were well-known and routine in the
art. Appellants point to no evidence, nor can we discern any, that the
Examiner’sprima facie case was established by reliance solely upon
Appellants’ Specification.
Nor are we persuaded by Appellants’ argument that Baerson 2, when
viewed in light of the prior art as a whole, would discourage or dissuade a
person of ordinary skill in the art from characterizing the molecular
sequence of the glyphosate-resistant EPSPS of Simarmata, or lead such a
person in a direction divergent from the path that was taken. See In re
Gurley, 27 F.3d 551, 553 (Fed.Cir.1994). We agree with Appellants that
Baerson 2 suggests that that glyphosate resistance in Australian rigid
ryegrass is based, at least in part, on gene amplification and consequent
increased expression of EPSPS in response to glyphosate exposure. See
Baerson 2 724 (“The finding that increases EPSPS expression appears to
cosegregate with high levels of resistance among the rigid ryegrass 48118a
progeny suggests that EPSPS overexpression plays some role in the
resistance mechanism”). However, Simarmata expressly recognizes that
there is a difference between California rigid ryegrass and the Australian
ryegrass taught by Baerson 2, such that the “[decreased sensitivity of
EPSPS in R plants appeared to be a major contributor in glyphosate
resistance in rigid ryegrass from California .... in contrast to the results
reported with Australian rigid ryegrass by Baerson [2].” Simarmata 76.
Consequently, Simarmata points to a significant difference in the basis of
glyphosate resistance between California and Australian ryegrasses, such
that a person of ordinary skill in the art would not be discouraged or
dissuaded from applying the methods of Baerson to characterize the
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Appeal 2016-008273
Application 13/772,007
molecular structure of Simarmata’s glyphosate-resistant EPSPS from the
California rigid ryegrass.
Consequently, we affirm the Examiner’s rejection of the claims as
being obvious over the combination of the cited prior art references.
DECISION
The Examiner’s rejection of claims 74, 76—78, and 80-87 as
unpatentable under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
18