MONSANTO TECHNOLOGY LLC

Patent Trials and Appeals Board

Jun 15, 2020

14996093 - (D) (P.T.A.B. Jun. 15, 2020)

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.
14/996,093 01/14/2016 Robert E. McGowen DPLN:132US 3215
73905 7590 06/15/2020
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
KRUSE, DAVID H
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT E. MCGOWEN
__________

Appeal 2019-006060
Application 14/996,093
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ELIZABETH A. LAVIER, and
MICHAEL A. VALEK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a cotton
plant variety. The Examiner rejected the claims as obvious and on the
ground of obviousness-type double patenting. 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 Bayer Crop
Sciences, Inc., the parent company of assignee Monsanto Technology LLC.
(see App. Br. 1).
2 We have considered and refer to the Specification of Jan. 14, 2016
(“Spec.”); Final Action of June 13, 2018 (“Final Act.”); Appeal Brief of Feb.
3, 2019 (“Appeal Br.”); Examiner’s Answer of June 10, 2019 (“Ans.”); and
Reply Brief of Aug. 12, 2019 (“Reply Br.”).
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Statement of the Case
Background
“The goal of a commercial cotton breeding program is to develop
new, unique and superior cotton varieties. In cotton, important traits include
higher fiber (lint) yield, earlier maturity, improved fiber quality, resistance to
diseases and insects, tolerance to drought and heat, and improved agronomic
traits” (Spec. 2:8–11). “[T]he invention relates to the novel cotton variety
14R913B2XF” (Spec. 2:5–6).
The Claims
Claims 1–22 are on appeal. Independent claim 1 is representative and
reads as follows:
1. A plant of cotton variety 14R913B2XF, wherein a
sample of seed of said variety has been deposited under ATCC
Accession No. PTA-123148.

The Issues
A. The Examiner rejected claims 1–22 under 35 U.S.C. § 103(a) as
obvious over McGowen ’3243 and Brinker4 (Final Act. 2–9).
B. The Examiner rejected claims 1–22 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 12–15
of McGowen ’484 and Brinker (Final Act. 10–11).
A. 35 U.S.C. § 103(a) as obvious over McGowen ’324 and Brinker
The Examiner finds the Specification teaches “cotton variety
14R913B2XF was developed by introducing transgene event MON 88701
using cotton variety 07W799B2R2 as a recurrent parental line, backcrossing

3 McGowen ’324, US 2012/0304324 A1, published Nov. 29, 2012.
4 Brinker et al., US 2012/0255050 A1, published Oct. 4, 2012.
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to the recurrent parental line at least three times” (Final Act. 2). The
Examiner finds “McGowen teaches cotton variety 07W799B2R2” and
teaches using this variety “to introduce a single locus converted plant using
art routine methods” (id. at 3). The Examiner finds that routine methods
including “backcrossing to introduce a genetic locus [were] routine in the
art” (id. at 3). The Examiner acknowledges that McGowen “does not teach
cotton variety 14R913B2XF or transgene event MON 88701” (Id.).
The Examiner finds Brinker teaches “a cotton plant comprising
transgene event MON 88701” and that the ordinary artisan “could combine
event MON 88701 with events MON 88913 and MON 15985” (Final Act.
3). The Examiner finds the combination obvious because
Brinker teaches that one of ordinary skill in the art would want
to convert a cotton plant having MON 88913 and 15985
transgenes (such as McGowan’s cotton plant) with a cotton
plant comprising the MON 88701 event using standard methods
such as those taught by McGowan to introduce a single locus
conversion comprising a transgene.

(Ans. 4).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that the combination of McGowen and Brinker
render claim 1 prima facie obvious?
(ii) If so, has Appellant provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Findings of Fact
1. McGowen ’324 teaches:
a continuing goal of plant breeders is to develop stable, high
yielding cotton varieties that are agronomically sound. The
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reasons for this goal are obviously to maximize the amount and
quality of the fiber produced on the land used and to supply
fiber, oil and food for animals and humans. To accomplish
this goal, the cotton breeder must select and develop plants that
have the traits that result in superior cultivars.
(McGowen ’324 ¶ 51)
2. McGowen ’324 teaches “the invention relates to the novel
cotton variety 10R013B2R2” (McGowen ’324 ¶ 3).
3. McGowen ’324 teaches “07W799B2R2 was given the pre-
commercial name 10R013B2R2 in 2010” (McGowen ’324 ¶ 21)
4. McGowen ’324 teaches “[p]opular selection methods
commonly include pedigree selection, modified pedigree selection, mass
selection, recurrent selection and backcrossing” (McGowen ’324 ¶ 35).
McGowen ’324 further teaches:
Plants which are developed by a plant breeding technique
called backcrossing wherein essentially all of the desired
morphological and physiological characteristics of a variety
are recovered in addition to the characteristics conferred by the
single locus transferred into the variety via the backcrossing
technique. A single locus may comprise one gene, or in the
case of transgenic plants, one or more transgenes integrated
into the host genome at a single site (locus).
(McGowen ’324 ¶ 144).
5. McGowen ’324 teaches one loci used for providing improved
traits term “MON 15985 [that] produces the Cry1Ac and Cry2Ab proteins
conferring protection from feeding damage caused by lepidopteran insect
pests” (McGowen ’324 ¶ 18).
6. McGowen ’324 teaches another loci for improved traits, “MON
88913 produces a 5-enolpyruvylshikimate-3-phosphate synthase protein
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from Agrobacterium sp. Strain CP4 (CP4 EPSPS), which confers tolerance
to glyphosate, the active ingredient in the Roundup® family of agricultural
herbicides” (McGowen ’324 ¶ 18).
7. McGowen ’324 teaches that during the breeding process,
“[s]elections were based on lint yield, lint percent, and acceptable fiber
qualities” (McGowen ’324 ¶ 20).
8. McGowen ’324 teaches that:
In selecting a second plant to cross with 10R013B2R2 for the
purpose of developing novel cotton varieties, it will typically be
desired to choose those plants which themselves exhibit one or
more selected desirable characteristics. Examples of potentially
desired characteristics include higher fiber (lint) yield, earlier
maturity, improved fiber quality, resistance to diseases and
insects, tolerance to drought and heat, and improved agronomic
traits.
(McGowen ’324 ¶ 26; emphasis added). McGowen ’324 specifically
teaches “fiber qualities such as strength, fiber length, micronaire, fiber
elongation, uniformity of fiber and amount of fiber” (McGowen ’324 ¶ 120).
9. Brinker teaches “Cotton (Gossypium hirsutum) is an important
crop in many areas of the world, and the methods of biotechnology have
been applied to this crop in order to produce cotton with desirable traits.
One such desirable trait is herbicide tolerance” (Brinker ¶ 4).
10. Brinker teaches the “invention relates to transgenic Gossypium
hirsutum event MON 88701. The event exhibits tolerance to dicamba and
glufosinate herbicides” (Brinker ¶ 3). Brinker teaches generation “of cotton
seed comprising event MON 88701” (Brinker ¶ 101).
11. Brinker teaches:
For example, the MON 88701 containing dicamba and
glufosinate tolerant cotton can be crossed with other transgenic
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cotton plants to produce a plant having the characteristics of
both transgenic parents. One example of this would be a cross
of MON 88701 containing dicamba and glufosinate tolerant
cotton with a plant having one or more additional traits such as
herbicide tolerance (e.g. cotton event MON 1445 or cotton
event MON 88913) and/or insect control (e.g. cotton event
MON 15985, MON 757, or MON 531), resulting in a progeny
plant or seed that is tolerant to dicamba and glufosinate and has
at least one or more additional traits. Back-crossing to a
parental plant and out-crossing with a non-transgenic plant are
also contemplated.
(Brinker ¶ 57; emphasis added).
12. Table 1 from Exhibit A of the Declaration of Dr. Marymar
Goncalves Butruille5 is reproduced below:

5 Declaration of Dr. Marymar Goncalves Butruille, dated Sept. 28, 2017.
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Table 1 shows a comparison of twelve traits of two different cotton plants,
14R913B2XF, which is the claimed variety, and 10R013B2R2, which is a
variety disclosed by McGowan.
Principles of Law
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472–
1473 (Fed. Cir. 1984).
This court and its predecessors have long held, however, that
even though applicant’s modification results in great
improvement and utility over the prior art, it may still not be
patentable if the modification was within the capabilities of one
skilled in the art, unless the claimed ranges “produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art.
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
Analysis
Prima facie obviousness
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2–9; FF 1–11) and agree that
claim 1 is rendered obvious by McGowen ’324 and Brinker.
The Specification teaches that the claimed plant was made by crossing
a donor parent containing the gene events MON 15985 for lepidopteron
tolerance and MON 88913 for glyphosate tolerance with another parent
containing the gene event MON 88701 for dicamba and glufosinate
tolerance (see Spec. 5). The Specification teaches the resulting plants were
backcrossed along with using selection for events of interest (id.).
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McGowen ’324 teaches breeding of cotton plants (FF 1), including
backcross breeding (FF 4). McGowen ’324 teaches including two desirable
loci in the cotton plants, MON15985, that provides protection against insect
pests (FF 5) and MON 88913 that provides pesticide tolerance (FF 6).
McGowen ’324 teaches selection for desirable cotton properties (FF 7–8).
Brinker teaches a cotton plant with MON 88701 (FF 10). Brinker
further teaches “a cross of MON 88701 containing dicamba and glufosinate
tolerant cotton with a plant having one or more additional traits such as
herbicide tolerance (e.g. cotton event MON 1445 or cotton event MON
88913) and/or insect control (e.g. cotton event MON 15985, MON 757, or
MON 531)” (FF 11; emphasis added).
We agree with the Examiner that an ordinary artisan would have
found it obvious to perform the cross suggested by Brinker “because it
resulting in a progeny plant or seed that is tolerant to dicamba and
glufosinate and has at least one or more additional traits” (FF 11). An
ordinary artisan would have found back-crossing the resultant plants obvious
both because McGowan suggests back-crossing (FF 4) and Brinker also
suggests “[b]ack-crossing to a parental plant and out-crossing with a non-
transgenic plant are also contemplated” (FF 11).
Unexpected Results
Appellant
requests reversal of the rejection because (A) the evidence of
record establishes that non-obvious differences that are of both
statistical and practical significance exist between the claimed
invention and the combination of cited references; (B) those
differences would have been unexpected to one of ordinary skill
in the art; (C) those differences are equal to or outweigh any
expected properties of the claimed invention; and (D) one of
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ordinary skill in the art would have had no reasonable
expectation of success in arriving at the claimed invention
based on the cited art and knowledge of those of ordinary skill
in the art.
(Appeal Br. 2–3). Because the reasonable expectation of success issue is
linked to the asserted unexpected results, we will address these arguments
(A)–(D) in order.
Appellant contends, as to argument (A), that the Declaration of Dr. M.
Butruille6 “establishes that the claimed and cited varieties can be
unambiguously distinguished at least based upon differences in the
following industrial performance characteristics: micronaire, fiber length,
uniformity index, elongation, fiber maturity ratio, short fiber content, and
bolls open percent” (Appeal Br. 3). Appellant further cites to the Dr. D.
Butruille Declaration, which states the “performance differences between the
claimed and cited variety that were identified in Dr. [M.] Butruille’s
declaration are of meaningful, practical agronomic significance to cotton
breeders. The hypothesis testing described in that same declaration
accurately identifies these differences as statistically significant” (id. at 4;
citing Dr. D. Butruille Decl. ¶ 15).
Appellant further contends, “[o]ne of ordinary skill in the art would
unquestionably recognize that this type of analysis is capable of accurately
identifying intrinsic industrial performance differences that exist between
the claimed and cited varieties” (Appeal Br. 6). Appellant cites to the Dr. D.
Butruille Declaration, which states “the performance trials detailed by Dr.
[M.] Butruille were well-controlled, including for environmental factors, and

6 Declaration of Dr. David Butruille, dated Apr. 20, 2018.
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well-sampled. I therefore conclude, as did Dr. [M.] Butruille, that the data
generated from the head-to-head performance trials reflect the intrinsic
morphology and physiology of the claimed and cited varieties” (id., citing
Dr. D. Butruille Decl. ¶ 12).
Appellant contends, as to argument (B), “[e]ach one of the seven
performance differences that achieved statistical significance is therefore a
discrete point of evidence that strongly rejects this null hypothesis, and thus
objectively demonstrates the degree to which these two varieties differ is
unexpected” (Appeal Br. 9). Appellant further contends “a general
expectation that plants of the cited variety will differ morphologically and/or
physiologically from progeny plants derived therefrom is not sufficient to
conclude that the evidence presented by Dr. M. Butruille would be expected
by one of ordinary skill in the art” (id. at 11).
Appellant contends, as to argument (C), that
Table 2 of the Specification provides numerous examples of
head-to-head performance comparisons between the instant
cotton variety and other distinct cotton varieties. . . . one of
ordinary skill in the art would readily appreciate the practical
significance and industrial importance of the performance
differences that exist between the claimed and cited varieties.
(Appeal Br. 13).
We do not find these arguments (A)–(C) persuasive for several
reasons. First, Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1378 (Fed,
Cri. 2019) states that a Patent Owner “will bear the burden of proving that
the evidence of secondary considerations is attributable to the claimed
combination of [features], as opposed to, for example, prior art features in
isolation or unclaimed features.” It is reasonable to impose at least the same
burden on a Patent Applicant to demonstrate a nexus between the asserted
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unexpected results and claimed product, particularly as MPEP 716.01(b)
explains that this nexus is required for such evidence to be of probative
value.
While Dr. D. Butruille does state that the variations were of
“meaningful, practical agronomic significance” (D. Butruille Decl. ¶ 15),
neither the Declarants nor Appellant provides details or explanation of
whether the differences disclosed in Table 1 of the M. Butruille Declaration
or Table 2 of the Specification were differences of degree or kind. See In re
Huang, 100 F.3d 135, 139 (Fed.Cir.1996) (holding that claimed ranges must
“produce a new and unexpected result which is different in kind and not
merely in degree from results of the prior art”). In Harris, the Court
explained that a “32–43% increase in stress-rupture life, however, does not
represent a ‘difference in kind’ that is required to show unexpected results.”
In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
The differences shown in Table 1 range from 0.08% change in the
fiber length (from 1.18 to 1.19) to a 4% change for elongation (from 9.78 to
9.38) with the other changes falling within this range. Similarly, the
differences identified as statistically significant in Table 2 of the
Specification range from a 0.08 % change for fiber length between
14R913B2XF and DP 1050 B2RF to a 35% change for Leaf Hairs -
Trichomes between 14R913B2XF and DP 1050 B2RF (see Spec. 11, Table
2). We note, however, that DP 1050 B2RF is not the closest prior art to
McGowen.
None of these changes are as significant as the 43% change in Harris,
which was found insufficient to show a “difference in kind.” Harris, 409
F.3d at 1344. And other than bare statements by the Declarants that these
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differences are of practical significance, no evidentiary showing is provided
demonstrating that these differences represent a “difference in kind” rather
than simply a “difference in degree.”
Second, Table 1 in the M. Butruille Declaration recognizes that the
prior art cotton plant of McGowan had cotton that shared all of the features
of the claimed cotton plant, differing “with respect to at least micronaire
(MIC), fiber length (LNTH), uniformity index (UNIF), elongation (EL),
fiber maturity ratio (FMATR), short fiber content (SFC), and bolls open
percent (BOP)” (M. Butruille Decl. ¶ 6). However, there is no evidence
showing “that the results were unexpected to a significant degree beyond
what was already known about the” prior art cotton plant. Wm. Wrigley Jr.
Co v. Cadbury Adams USA LLC, 683 F.3d 1356, 1363 (Fed. Cir. 2012).
Wrigley cites with approval that “[i]t would at least be necessary to
demonstrate that the improvements observed were greater to an unobvious
extent than those which would have been expected from the reference
teachings and that those differences were of some significant, practical
advantage.” Id. (citing Ex Parte Nutrasweet Co., 19 USPQ2d 1586, 1589
(BPAI 1991)).
Similarly, in In re D’Ancicco, 439 F.2d 1244, 1063–64, (CCPA 1971),
the Appellant provided “affidavits [that] show that appellants’ foams exhibit
both greater compressive strength at room temperature and less
proportionate reduction in compressive strength at elevated temperatures
than do the foams with which they were compared.” However, the Court
found that even
[a]ccepting these facts as true, they do not establish that the
claimed mixtures were unobvious in view of the prior art. All
this record definitely establishes is that appellants' foams have
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different properties from the reference foams tested. Whether
this difference was ‘striking’ depends, not alone on the
numerical ratio of the quantified value of the property being
compared, but on the significance of that difference. In this
case, there has been no showing that either of the asserted
differences between appellants’ foams and the prior art foams is
of any practical advantage.
Id. at 1063. The two Butruille Declarations and Table 2 of the Specification
share the flaw that D’Ancicco found in their cited affidavits, a failure to
provide evidence regarding the significance of the differences and a failure
to show any specific practical advantage that results from those differences.
See id. at 1063.
Third, as the Examiner points out, McGowen ’324 recognizes that
the advanced testing stage the selection of lint yield, lint
percent, fiber quality, are all done for any cotton plant as these
are generally agronomically important and present in the
breeding history of most cotton varieties. It is also important to
note that the instant specification does not call out any trait
itself as being significant or unexpected based on the breeding
history.
(Ans. 10; cf. FF 7, 8). “[W]here an unexpected increase in efficacy is
measured by a small percentage, as here, and the evidence indicates that
skilled artisans were capable of adjusting the percentage, the result
constitutes a difference in degree, not kind.” Galderma Labs. L.P. v.
Tolmar, Inc., 737 F.3d 731, 739 (Fed. Cir. 2013). Here, McGowen ’324
teaches that it was known to select for specific cotton traits that were
desirable (FF 7, 8) and teaches a variety of selection methods (FF 4),
supporting the Examiner’s position that the changes shown in Table 1 of the
M. Butruille Declaration constitute a difference in degree, not a difference in
kind.
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Finally, we agree with the Examiner’s statement that Appellant’s
position requires “a policy that anytime a new plant is produced via a locus
conversion the resultant plant would be allowable as each and every species
would likely have traits that are different from the recurrent parent” (Ans. 8).
As acknowledged by Appellant’s declarant, a skilled artisan would
recognize that there will be “genomic differences” between plants generated
by backcrossing due to variations based on sexual reproduction of the plants.
See D. Butruille Declaration ¶¶ 9–10. Therefore, a rule that established that
statistically significant differences in traits alone, without additional
evidence demonstrating that those differences have some practical impact,
e.g., on growth or use of the plant, would render any backcrossed plant
unobvious per se. In POD-NERS the Federal Circuit rejected such a rule,
finding the Patent Applicant did
not argue that seed coats falling within a particular range of
yellow colors have any meaningful impact on the properties of
the beans. Nor did he provide objective evidence of secondary
considerations that might show nonobviousness—that the
particular shades of yellow resulted in substantial sales of the
Enola beans, that there was a long need for beans of that color
that others were unable to supply, or that others copied the
Enola bean.
In re POD-NERS, LLC, 337 Fed. Appx. 901, 903 (Fed. Cir. 2009); see also
In re Eli Lilly & Co., 902 F.2d 943, 948 (Fed. Cir. 1990) (“evidence of
unobviousness did not outweigh the clear teaching of the prior art” where
applicant had “not shown unexpected superiority over the property taught in
the prior art”). The same result obtains here, where Appellants identify
particular attributes of the claimed cotton plant that differ from the
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McGowen cotton plant, but do not identify meaningful impacts of those
properties or other secondary considerations attributable to those properties.
Appellant contends, regarding argument (D), that the Examiner did
not demonstrate
the required reasonable expectation of success of generating a
plant with all of the morphological and physiological traits of
the claimed variety. This is because (I) the cited references do
not teach or suggest the breeding history of the claimed variety
and (II) routine experimentation would not have yielded plants
with all of the morphological and physiological characteristics
of the claimed variety.
(Appeal Br. 15). Appellant contends “Dr. D. Butruille highlights that a
nearly limitless combination of selection and advancing methodologies
could have been applied to each generation” (Appeal Br. 18). Appellant
concludes “[t]herefore, without knowledge of the breeding history of the
claimed variety, it would be nearly impossible to replicate the exact number
of backcrosses and specific selection and advancing methodologies that were
employed in breeding the claimed variety” (id.). Appellant contends “it is
improper to find obviousness where what would have been obvious to try
would have been to vary all parameters or try each of numerous possible
choices until one possibly arrived at a successful result, where the prior art
gave either no indication of which parameters were critical” (Appeal Br. 19;
cf. In re O’Farrell, 853 F.2d 894, 903 (Fed.Cir.1988)).
Appellant contends
it would have required more than routine experimentation to
produce a cotton plant with all of the morphological and
physiological characteristics of the claimed variety. Appellant
notes that an expectation of generating a plant with all the
morphological and physiological characteristics of the claimed
variety could only have been remotely possible provided that
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those morphological and physiological traits were known, and
thus involves impermissible hindsight.
(Appeal Br. 20).
We find Appellant’s arguments regarding whether the Examiner’s
rejection establishes a reasonable expectation of success unpersuasive.
Brinker directly suggests crossing a donor parent containing the gene events
MON 15985 for lepidopteron tolerance and MON 88913 for glyphosate
tolerance with another parent containing the gene event MON 88701 for
dicamba and glufosinate tolerance (FF 11) consistent with the genetic
elements disclosed in the Specification (see Spec. 5). Both Brinker and
McGowen ’324 teaches using techniques such as backcrossing to obtain the
desirable cotton plants (FF 4, 11). McGowen ’324 specifically suggests
optimizing the plants to obtain “desired characteristics include higher fiber
(lint) yield, earlier maturity, improved fiber quality, resistance to diseases
and insects, tolerance to drought and heat, and improved agronomic traits”
(FF 8; cf. FF 7). McGowen ’324 specifically teaches features that may be
optimized include “fiber qualities such as strength, fiber length, micronaire,
fiber elongation, uniformity of fiber and amount of fiber” (FF 8).
McGowen ’324’s selections are identical to that in the instant
Specification which suggests “desired characteristics include higher fiber
(lint) yield, earlier maturity, improved fiber quality, resistance to diseases
and insects, tolerance to drought and heat, and improved agronomic traits”
(Spec. 13:12–14). “[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA
1955). As already discussed, the evidence in Table 1 of the Dr. M. Butruille
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Declaration does not establish that the values are anything other than
optimized values identified by ordinary selection techniques such as those
disclosed by McGowen ’324 (FF 4).
Thus, consistent with the teachings of both Brinker and McGowen
’324, the ordinary artisan would have had a strong expectation that
backcrossing the three genetic events disclosed by Brinker and McGowen
’324, along with performing backcrossing with selection for characteristics
including higher fiber (lint) yield and improved fiber quality, would have
resulted in obtaining an improved cotton plant that included all three genetic
events and had improved fiber characteristics (FF 4, 7, 8, 11).
An “obviousness finding was appropriate where the prior art
‘contained detailed enabling methodology for practicing the claimed
invention, a suggestion to modify the prior art to practice the claimed
invention, and evidence suggesting that it would be successful.”’ In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853
F.2d 894, 902 (Fed. Cir. 1988). Kubin stated that “[r]esponding to concerns
about uncertainty in the prior art influencing the purported success of the
claimed combination, this court [in O’Farrell] stated: ‘[o]bviousness does
not require absolute predictability of success … all that is required is a
reasonable expectation of success.”’ Kubin, 561 F.3d at 1360 (citing In re
O’Farrell, 853 F.2d at 903–904).
Here, both Brinker and McGowen ’324 provide detailed enabling
methodology for selecting for plants with improved fiber qualities including
“strength, fiber length, micronaire, fiber elongation, uniformity of fiber and
amount of fiber” (FF 8) as well as lint yield and other characteristics (FF 8).
Brinker provides a direct suggestion to modify prior art cotton plants (FF 11)
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and shows success in generating a desired cotton plant including generation
“of cotton seed comprising event MON 88701” (FF 10).
We balance the detailed enabling methodology in Brinker and
McGowen ’324, the explicit suggestion in Brinker to create a cotton plant
with the specific genetic events, and the evidence showing that such cotton
plants can be generated (FF 1–11) with the Declaration of Dr. D. Butruille
who states
it would have been improbable for one of ordinary skill to
generate a plant with the morphological and physiological
characteristics of the claimed variety by merely traditional
backcrossing as the Actions appear to suggest. Even with
knowledge of the cited variety, cited event, and breeding
methods that were routine in the art, there would have been a
nearly limitless number of ways in which to introgress the cited
event into the cited variety.
(Dr. D. Butruille Decl. ¶ 14; cf. Appeal Br. 18).
While Dr. D. Butruille states an opinion regarding the probability of
generating a cotton plant with the claimed characteristics solely by
backcrossing, Dr. D. Butruille does not support this position with specific
evidence. More importantly, Dr. D. Butruille does not address the instant
situation, where the Brinker and McGowen ’324 suggest optimizing cotton
plant fiber qualities including “strength, fiber length, micronaire, fiber
elongation, uniformity of fiber and amount of fiber” as well as lint yield and
other characteristics (FF 8). McGowen ’324 is not limited to backcrossing
in order to obtain these traits but also teaches that “[p]opular selection
methods commonly include pedigree selection, modified pedigree selection,
mass selection, [and] recurrent selection” (FF 4). Thus, the evidence
suggests that the ordinary artisan had a number of selection methods to
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obtain cotton plants with the desired genetic events disclosed by Brinker and
the desirable fiber qualities disclosed by McGowen ’324. Dr. D. Butruille
does not explain why the use of these selection methods as motivated by
both prior art references, would not have had a reasonable expectation of
success in obtaining a cotton plant with the desired genetic events and fiber
qualities. See In re Am. Acad. Sci. Tech Ctr., 367 F.3d 1359, 1370 (Fed. Cir.
2004) (“[T]he Board is entitled to give such weight to declarations as it
deems appropriate.”)
Appellant contends that “under 35 U.S.C. § 103 patentability shall not
be negated by the manner in which the invention was made. Asserting that a
conclusion of obviousness is supported by properties of the manner in which
the claimed variety was generated therefore constitutes legal error” (Appeal
Br. 10).
We find this argument unpersuasive because the obviousness position
is not based on the manner in which the invention was made, but rather
based on the disclosures of the prior art and the suggestions of the prior art
for the reasons extensively discussed above.
Therefore, as we balance all of the evidence, including the evidence in
the Specification relating to the argued secondary considerations, the
Declaration evidence, and the evidence supporting Examiner’s prima facie
case, we find that a preponderance of the evidence supports the Examiner’s
finding that the claims would have been obvious over McGowen ’324 and
Brinker.
Conclusion of Law
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(i) A preponderance of the evidence of record support the Examiner’s
conclusion that the combination of McGowen ’324 and Brinker render the
claims obvious.
(ii) Appellant has not provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness.

B. Obviousness-Type Double Patenting
Appellant does not separately argue the obviousness-type double
patenting rejection, instead relying upon their arguments to overcome the
combination of McGowen ’324 and Brinker discussed above (see Appeal Br.
23). We do not find these arguments persuasive for the reasons given above.
The Examiner provides sound fact-based reasoning for combining the claims
of McGowen ‘’484 with Brinker (see Final Act. 10–11). Having affirmed
the obviousness rejection of the claims over McGowen ’324 and Brinker, we
find that the combination of the claims of McGowen ‘’484 with Brinker
render the rejected claims obvious for the reasons given by the Examiner.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–22 103 McGowen ’324,
Brinker
1–22
1–22 Obviousness-
type Double
Patenting
US 9,682,026 1–22
Overall
Outcome
1–22
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Application 14/996,093

21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED