NOVOZYMES BIOAG A/S

Patent Trials and Appeals Board

Jan 14, 2022

2021002465 (P.T.A.B. Jan. 14, 2022)

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. 16/284,800 02/25/2019 Chunquan Chen 12143-US-CNT[3] 8230 25908 7590 01/14/2022 NOVOZYMES NORTH AMERICA, INC. US PATENT DEPARTMENT 77 PERRYS CHAPEL CHURCH ROAD PO BOX 576 FRANKLINTON, NC 27525-0576 EXAMINER PRYOR, ALTON NATHANIEL ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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): DOCKETING@novozymes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHUNQUAN CHEN, EWA MARIA CHOLEWA, JOHN DAVID MCIVER, BIRGIT CAROLYN SCHULTZ, and YANG YANG ____________ Appeal 2021-002465 Application 16/284,800 Technology Center 1600 ____________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JOHN G. NEW, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from Examiner’s decision to reject claims 1-20 (Final Act.3 1). 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 “Novozymes BioAg A/S” (Appellant’s September 21, 2020, Appeal Brief (Appeal Br.) 3). 2 This Appeal is related to Appeal 2018-009186, Application 14/714,462, Decision, entered October 22, 2018, reversing the obviousness rejections of Appellant’s method claims over the same prior art relied upon on this record. 3 Examiner’s January 21, 2020, Final Office Action. Appeal 2021-002465 Application 16/284,800 2 STATEMENT OF THE CASE Appellant’s disclosure: [R]elates generally to the fields of horticulture including but not limited to flowers, fruits, vegetables, nuts, turfgrass, herbs, spices, ornamental shrubs and trees, aquatic plants and mushrooms grown outdoors or in greenhouses or indoors for both commercial or personal use and agriculture and more specifically to the use of Lipo-chitooligosaccharides (LCOs) and compositions thereof to induce early flowering, increase the number of buds and flowers, initiate earlier fruiting, earlier maturity and increase yields in plants and to methods of inducing earlier flowering and initiation of earlier fruiting in plants by exposure to LCOs and compositions of same. (Spec.4 1.) Appellant’s claims 1 and 12 are reproduced below: 1. A composition comprising a lipo-chitooligosaccharide (LCO) in an amount effective to initiate early flowering of a non-leguminous plant when said composition is foliarly applied to said non-leguminous plant prior to flowering of said non- leguminous plant. (Appeal Br. 9.) 12. A composition comprising a lipo-chitooligosaccharide (LCO) in an amount effective to initiate early fruiting of a non- leguminous plant when said composition is foliarly applied to said non-leguminous plant prior to fruiting of said non- leguminous plant. (Id. at 10.) 4 Appellant’s February 25, 2019, Specificaiton. Appeal 2021-002465 Application 16/284,800 3 Grounds of rejection before this Panel for review:5,6 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ’778.7 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ’465.8 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? ANALYSIS As Examiner explains, Appellant’s claims are directed to compositions not methods (see Ans.9 6, 8). The compositions of Appellant’s independent claims 1 and 12, reproduced above, comprise an amount of LCO. The specific, i.e. “effective,” amount of LCO present in the claimed compositions is functionally recited in Appellant’s claims 1 and 12. Specifically, independent claims 1 and 12 require that the compositions contain an amount of LCO that is effective to initiate early flowering (claim 1) or early 5 We recognize that Appellant’s Terminal Disclaimer filed May 21, 2020, was approved May 21, 2020. Therefore, the rejection of Appellant’s claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,258,037 (see Final Act. 7) is moot (see generally Appeal Br. 8). 6 We decline to address the objection of claims 5-11 and 14-20 under 37 C.F.R. § 1.75 as substantial duplicates of Appellant’s claim 1, which is a petitionable rather than an appealable issue. 7 Smith et al., WO 00/04778, published Feb. 3, 2000. 8 Smith et al., WO 01/26465 A1, published Apr. 19, 2001. 9 Examiner’s December 22, 2020, Answer. Appeal 2021-002465 Application 16/284,800 4 fruiting (claim 12) of a non-leguminous plant when the composition is foliarly applied to the non-leguminous plant prior to flowering (claim 1) or fruiting (claim 12) of the non-leguminous plant. Examiner finds that Appellant’s Specification discloses that the amount of LCO encompassed by Appellant’s claimed invention ranges from 10 to 1,000 ng (see Ans. 3, 5, 7-8). Thus, a prior art disclosure of a composition comprising 10-1,000 ng LCO reads on Appellant’s claimed invention, because such a composition will necessarily achieve the same result required by Appellant’s claimed invention when the composition is foliarly applied to the non-leguminous plant prior to flowering (claim 1) or fruiting (claim 12) of the non-leguminous plant. The rejection over Smith ’778: Examiner finds that LCO has a molecular weight of “about 1317 g/mole” (Ans. 3). Smith ’778 discloses separate compositions comprising LCO in an amount of 10-6 M (1,317 ng), 10-7 M (131.7 ng), 10-8 M (13.17 ng), 10-9 M (1.317 ng), 10-10 M (0.1317 ng), 10-11 M (0.01317 ng), 10-12 M (0.001317 ng), 10-13 M (0.0001317 ng), and 10-14 M (0.00001317 ng) (see Smith ’778 21: Table 1; see also Ans. 2). Thus, Smith ’778 expressly discloses compositions comprising LCO that fall within the scope of Appellant’s claimed invention (see, e.g., Ans. 3). For the foregoing reasons, we find no error in Examiner’s conclusion that Smith ’778 makes obvious Appellant’s claimed invention. As discussed above, Appellant’s claimed invention is directed to compositions not methods. Therefore, we are not persuaded by Appellant’s contention that Smith ’778 does not use its LCO compositions as intended Appeal 2021-002465 Application 16/284,800 5 by Appellant (see Appeal Br. 4-5; see also id. at 5 (Appellant contends that “[i]t is . . . clear that Smith ’778 is directed to the treatment of plant seeds and plant roots and not to the treatment of plant foliage”)). A “mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969). For the same reasons, we are not persuaded by Appellant’s contention that the obviousness rejection on this record should be reversed for the same reason that the obviousness rejection of Appellant’s method claims were reversed in Appeal 2018-009186 (see Appeal Br. 5-6). Appellant’s claims 1 and 12 does not limit the scope of non- leguminous plant, therefore, we are not persuaded by Appellant’s contentions relating to “plant type” (see Appeal Br. 7). The rejection over Smith ’465: Examiner finds that LCO has a molecular weight of “about 1317 g/mole” (Ans. 3). Smith ’465 discloses separate compositions comprising LCO in an amount of 10-6 M (1,317 ng), 10-8 M (13.17 ng), and 10-10 M (0.1317 ng) (see Smith ’465 29: Table 3; see also Ans. 4-5). Thus, Smith ’465 expressly discloses compositions comprising LCO that fall within the scope of Appellant’s claimed invention (see, e.g., Ans. 4-5). For the foregoing reasons, we find no error in Examiner’s conclusion that Smith ’465 makes obvious Appellant’s claimed invention. As discussed above, Appellant’s claimed invention is directed to compositions not methods. Therefore, we are not persuaded by Appellant’s Appeal 2021-002465 Application 16/284,800 6 contention that Smith ’465 does not use its LCO compositions as intended by Appellant (see Appeal Br. 6-7). For the same reasons, we are not persuaded by Appellant’s contention that the obviousness rejection on this record should be reversed for the same reason that the obviousness rejection of Appellant’s method claims were reversed in Appeal 2018-009186 (see Appeal Br. 6-7). Appellant’s claims 1 and 12 does not limit the scope of non- leguminous plant, therefore, we are not persuaded by Appellant’s contentions relating to “plant type” (see Appeal Br. 7). CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claims 1 and 12-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ’778 is affirmed. Claims 2-11 and 13- 20 are not separately argued and fall with claims 1 and 12, respectively. The rejection of claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Smith ’465 is affirmed. Claims 2-11 and 13-20 are not separately argued and fall with claims 1 and 12, respectively. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 103(a) Smith ’778 1-20 1-20 103(a) Smith ’465 1-20 Overall Outcome 1-20 Appeal 2021-002465 Application 16/284,800 7 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