Daniel Ader et al.

Patent Trials and Appeals Board

Feb 2, 2021

2020002276 (P.T.A.B. Feb. 2, 2021)

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.
13/612,925 09/13/2012 Daniel Ader P34109US01/0024021.00170 9715
66056 7590 02/02/2021
Arnold & Porter Kaye Scholer LLP
601 Massachusetts Ave., NW
Washington, DC 20001-3743
EXAMINER
KOVALENKO, MYKOLA V
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL ADER, ZHAOLONG LI, RONAK HASMUKH SHAH,
MENGBING TAO, DAFU WANG, and HEPING YANG
____________

Appeal 2020-002276
Application 13/612,9251
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and
DAVID COTTA, Administrative Patent Judges.

COTTA, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a method
of plant control. The Examiner rejected the claims on appeal as obvious
under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Bayer AG is the real party in
interest. Appeal Br. 3.

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STATEMENT OF THE CASE
The Specification discloses that “[t]he EPSPS (5-
enolpyruvylshikimate-3-phosphate synthase) enzyme catalyzes the
conversion of shikimate-3-phosphate into 5-enolpyruvyl-shikimate-3-
phosphate, an intermediate in the biochemical pathway for creating three
essential aromatic amino acids (tyrosine, phenylalanine, and tryptophan).”
Spec. 1–2. According to the Specification, “[t]he EPSPS enzyme is the
target for the herbicide N-phosphonomethyl glycine also known as
glyphosate.” Id. at 3. The Specification discloses, “a method of plant
control comprising an external application to a plant or plant part a
composition comprising a polynucleotide and a transfer agent, wherein the
polynucleotide is essentially identical or essentially complementary to an
EPSPS gene sequence or fragment thereof, or to the RNA transcript of said
EPSPS gene sequence or fragment thereof.” Id. at 3.
Claims 1, 2, 5–12, 16–22, 27–34, 38, 39, and 42–49 are on appeal.
Claim 1 is representative and reads as follows:
1. A method of plant control comprising: topically
applying a composition to a plant surface to modulate 5-
enolpyruvylshikimate-3-phosphate synthase (EPSPS) gene
expression in said plant, wherein said composition comprises a
double-stranded RNA (dsRNA) and a transfer agent, wherein
said dsRNA comprises a sequence that is from 18 to about 700
nucleotides in length and is identical or complementary to at least
18 contiguous nucleotides of an RNA sequence of an EPSPS
gene sequence, wherein said EPSPS gene sequence is selected
from the group consisting of SEQ ID NOs: 11, 18, 19, 21, 22,
53-55, 61, 72, 74, 75, 84, 88, 99, 101, 110, 115, and 119, wherein
said transfer agent conditions the surface of said plant for
permeation by said dsRNA, whereby said plant’s growth,
development, or reproductive ability is reduced or said plant is
more sensitive to an EPSPS inhibitor herbicide relative to an
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untreated plant.
Appeal Br. 68.
The claims stand rejected as follows:
Claims 1, 5, 10, 11, 21, and 42–47 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Hou,2 Yao,3 and Riggins.4
Claims 2, 6–9, 12, 16–20, 22, 38, 39, 48, and 49 were rejected under
35 U.S.C. § 103(a) as obvious over the combination of Hou, Yao, Riggins,
Shaner,5 Singh,6 and Sun.7
The Examiner also objected to claims 1, 11, 21, and 44 due to an
“informality.” Ans. 32 (explaining that these claims “were not rejected as
indefinite, but objected to for an informality”). Objections or other
requirements imposed by an Examiner are reviewed by way of a petition to

2 Hou, CN 101914540 A; published Dec. 15, 2010 (hereinafter “Hou”).
Hou is a Chinese language document. All citations herein are to the Google
translation of Hou that is of record in this proceeding.
3 Yao et al., US 2005/0044591 A1; published Feb. 24, 2005 (hereinafter
“Yao”).
4 Riggins et al., Characterization of de novo transcriptome for waterhemp
(Amaranthus tuberculatus) using GS-FLX 454 pyrosequencing and its
application for studies of herbicide target-site genes, Society of Chemical
Industry, Pest Management Science, Vol. 66, 1042–1052 (2010),
www.soci.org, last visited Dec. 2020 (hereinafter “Riggins”).
5 Shaner, The impact of glyphosate-tolerant crops on the use of herbicides
and on resistance management, Society of Chemical Industry, Pest
Management Science, Vol. 56, 320–326 (2000) (hereinafter “Shaner”).
6 Singh, et al., Absorption and translocation of glyphosate with
conventional and organosilicone adjuvants, Weed Science Society of Japan,
Weed Biology and Management, Vol. 8, 104–111 (2008) (hereinafter
“Singh”).
7 Sun, CHARACTERIZATION OF ORGANOSILICONE SURFACTANTS AND THEIR
EFFECTS ON SULFONYLUREA HERBICIDE ACTIVITY, PhD Thesis, Virginia
Polytechnic Inst. and State University (1996) (hereinafter “Sun”).
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the Director under Rule 181. 37 C.F.R. §§ 1.113, 1.181. As such, we do not
address this objection herein.8

OBVIOUSNESS OVER HOU, YAO, AND RIGGINS
Claims 1, 11, 21, and 44
Appellant argues claim 1, 11, 21, and 44 together. Appeal Br. 22–52.
We designate claim 1 as representative.
In finding claim 1 obvious, the Examiner found that Hou disclosed a
“method for introducing siRNA into a plant, comprising synthesizing the
siRNA according to a target gene sequence, preparing a solution of said
siRNA in water, and spraying that solution directly onto the surface of plant
leaves.” Ans. 6. The Examiner noted that Hou taught using “a 21-
nucleotide long RNA” and that the “stomatal and epidermal cell of the plants
can absorb the siRNA,” which can be confirmed by flow cytometry. Id.
The Examiner acknowledged, however, that Hou does not disclose applying
its method to target an EPSPS gene, as recited in claim 1.
The Examiner relied on Yao and Riggins as providing teachings that
would have suggested targeting an EPSPS gene. Id. at 6–12. With respect
to Yao, the Examiner found that Yao taught “using siRNAs targeting an
essential plant gene . . . as herbicides.” Id. at 6. The Examiner further found
that Yao taught that “siRNA may be sprayed onto plants” and that it was
“well-known that siRNAs comprising 21 to 23 nucleotides can trigger
silencing of genes in plants.” Id. Finally, the Examiner found that Yao

8 The Examiner withdrew the rejection of claims 44 and 45 on the basis that
they contained an improper Markush grouping. Ans. 33. Accordingly, this
rejection is no longer part of this appeal.
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teaches that “methods for designing siRNA based on an mRNA target are
known in the art.” Id. at 6.
With respect to Riggins, the Examiner found that Riggins taught that
“EPSPS is the target for glyphosate, one of the world’s most widely used
herbicides,” and that “the inhibition of EPSPS interrupts the production of
essential aromatic amino acids.” Id. at 7. The Examiner also found that
Riggins disclosed a “method and primers for identifying ESPS genes . . .
from seven Amaranthus species, including A. palmeri and A. hybridus” and
provided “GenBank Accession numbers for complete coding cDNAs of
EPSPS from A. palmeri and A. tuberculatus.” Id. According to the
Examiner, “[t]he primers of Riggins et al show a 95% and 100% sequence
identity to the instant SEQ ID NO: 10” and “GenBank Accession number
FJ861243, which is taught by Riggins et al as an EPSPS cDNA from A
palmeri, shows 99% identity with the instant SEQ ID NO: 12 over the
majority of the length of the latter.” Id. at 7–8.
Based on the combined teachings of Hou, Yao, and Riggins, the
Examiner concluded:
it would have been prima facie obvious to one having ordinary
skill in the art to modify the method of Hou in view of the
teaching of Yao et al and Riggins et al and use the siRNA,
which is double-stranded RNA, to target the EPSPS of weeds,
including that of Amaranthus sp. in order to reduce the
expression of the endogenous EPSPS. It would have been
obvious to use the primers of Riggins et al to isolate the coding
and the genomic sequences of the endogenous EPSPS gene
from A. tuberculatus (syn. A. rudis) and Amaranthus palmeri,
and to design siRNA targeting said gene. It would have been
also obvious to design said siRNA using the EPSPS coding
sequences of the GenBank Accession Numbers taught by
Riggins et al. The siRNA thus obtained would be a functional
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equivalent of the claimed dsRNA sequences derived from SEQ
ID NO: 11, for example. Moreover, given that SEQ ID NO: 11
is a fragment of genomic DNA from A. palmeri, and in view of
the fact that the primers of Riggins et al could be used to isolate
genomic EPSPS sequences, one would have predictably arrived
at the sequence that would comprise at least 18 contiguous
nucleotides of the gene comprising SEQ ID NO: 11.
Id. at 10.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art and agree that claims 1, 11, 21, and 44
would have been obvious over Hou, Yao, and Riggins. We address
Appellant’s arguments below.
Appellant argues that the Examiner “relies on an improper
interpretation of the term transfer agent to allege that the water of Hou is a
transfer agent.” Appeal Br. 30. According to Appellant, “[w]ater is not one
of the seven categories of transfer agent described in the Specification.” Id.
at 24. Citing the Declaration of Dr. Gregory R. Heck as support, Appellant
contends that the ordinary artisan would “understand that water serves as a
carrier or solvent of a transfer agent” rather than as the transfer agent itself.9
Id. (citing Heck Decl. ¶ 26). Accordingly, Appellant argues that the term
“transfer agent” should be construed to exclude water. Id. We are not
persuaded.
Appellant relies heavily on the fact that water is not listed among the
seven categories of transfer agents identified in the Specification. Appeal
Br. 24. However, the portion of the Specification cited by Appellant is
exemplary only, and does not limit transfer agents to the categories listed.

9 Declaration of Gregory R. Heck under 37 C.F.R. § 1.132, signed, August
30, 2018 (hereinafter “Heck Decl.”).
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Spec 16 (“Chemical agents for conditioning or transfer include (a)
surfactants, (b) an organic solvent or an aqueous solution or aqueous
mixtures of organic solvents, (c) oxidizing agents, (d) acids, (e) bases, (f)
oils, (g) enzymes, or combinations thereof.”) (emphasis added). We do not
find in this statement, or elsewhere in the record, a basis for limiting the
term “transfer agent” to the seven categories of “chemical agents for . . .
transfer” identified in the Specification. Id.
Moreover, the Specification expressly defines the term “transfer
agent.” It states: “As used herein, a transfer agent is an agent that, when
combined with a polynucleotide in a composition that is topically applied to
a target plant surface, enables the polynucleotide to enter a plant cell.” Spec.
16. This broad definition does not exclude water, so long as water “enables
the polynucleotide to enter a plant cell” when “topically applied to a target
plant surface.” Id. As the term “transfer agent” is expressly defined in the
Specification, we are not persuaded by Dr. Heck’s testimony that “[a] person
of ordinary skill in the art would not identify water as a transfer agent.”
Heck Dr. ¶ 26. Accordingly, we do not construe the term “transfer agent” to
exclude water. Rather, in accord with the express definition provided in the
Specification, we construe “transfer agent” to mean: an agent that, when
combined with a polynucleotide in a composition that is topically applied to
a target plant surface, enables the polynucleotide to enter a plant cell. We
note that, “during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Having construed the term “transfer agent” not to exclude water, we
agree with the Examiner that the water disclosed in Hou meets the definition
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of a transfer agent. More specifically, Hou teaches that water is combined
with a polynucleotide and topically applied to a target plant surface. Hou
Abstract (disclosing a method comprising “preparing a 1 to 10 percent
solution of siRNA by using double distilled water” and “spraying the
solution of siRNA on the surface of plant leaves”). Hou further teaches that
“[a]ccording to the method, the RNA interference is introduced into the
plants from the surface of the leaves, and stomatal cells and epidermic cells
of the plants can absorb the siRNA.” Id. Hou thus discloses that water
enables the polynucleotide to enter the plant cell. Id. Accordingly, we agree
with the Examiner that the water in Hou corresponds to the claimed transfer
agent.
Appellant argues that Hou does not enable its teaching that a topically
applied solution of water and siRNA introduces the siRNA into the plant
and, more specially, that the solution is absorbed into stomatal and
epidermic cells. According to Appellant, “there is no credible evidence that
any siRNA entered the leaves of Hou.” Appeal Br. 31. Appellant points out
that the only data in Hou “lacks any control whatsoever” and that Hou never
“materialized into a granted patent.” Id. Appellant also presents the
testimony of Dr. Heck, who provides reasons why the ordinary artisan:
1) would doubt Hou’s teaching that Hou was able to confirm the
presence of siRNA in plan cells using flow cytometry (Heck Decl. ¶¶
10–15);
2), would doubt the reliability of Hou’s Figure 1, which Hou describes
as showing the effect of various concentrations of siRNA on plants
that have Apple chlorotic leaf spot virus (“ACLSV”) (id. ¶¶ 16–20);
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3) would understand that Hou’s teachings were limited to plants
having ACLSV (which damages leaves allowing siRNA to penetrate)
and would not extend to healthy plants (Heck Decl. ¶ 21–23); and
4) would not have a reasonable expectation of success that a solution
of water and siRNA (which is a large, highly charged molecule)
would be able to permeate the surface of a plant (id. ¶¶ 24–32).
Appellant’s arguments do not persuaded us that the Examiner erred in
crediting Hou’s teaching of introducing siRNA into plants by topically
applying a solution of siRNA in water. As an initial matter, regardless of
whether it ever “materialized into a granted patent,” prior art is presumed to
be enabled. In re Sasse, 629 F.2d 675, 681 (CCPA 1980); see also In re
Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). Once such a
prior art reference is found, the burden is on the Appellants to provide
evidence rebutting the presumption. Id. Here, Hou discloses a method in
which a solution of water and siRNA is topically applied to plants. Hou,
Abstract. Hou broadly teaches that when this method is used, siRNA is
absorbed into the plants. Id. Hou states:
The method comprises the following steps of: 1, designing and
synthesizing siRNA according to a target gene sequence; 2,
preparing 1 to 10 percent solution of siRNA by using double
distilled water; and 3, spraying the solution of siRNA on the
surface of plant leaves. According to the method, the RNA
interference is introduced into the plants from the surface of the
leaves, and stomatal cells and epidermic cells of the plants can
absorb the siRNA.
Hou, Abstract. Hou exemplifies this broad teaching by applying 1%, 5%,
and 10% siRNA solutions to peach tree leaves “once every 3 days” and
conducting a “reverse transcription — PCR analysis” “detect treatment
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effect on ACLSV.” Id. ¶¶ 24, 27. The results are provided in Figure 1
(reproduced below).
In Figure 1, “[lane] 1 represents 10% siRNA solution results; [lanes] 2, 3
represent[] 5% siRNA solution results; [lane] 4 shows the effect of 1%
siRNA solution; [and lane] 5 represents a DNA marker.” Id. ¶ 28.
According to Hou, the 1% solution was “the worst among the three”
concentrations, the 5% solution provided a “better treatment,” and the 10%
solution provided the “best treatment.” Id. These teachings are presumed to
enabled.
We acknowledge that some of Dr. Heck criticisms of Hou’s disclosure
may have merit. Heck Decl. ¶¶ 10–20. In particular, we agree that Hou’s
disclosure would have been improved by the use of a control. We also
acknowledge Dr. Heck’s testimony that an ordinary artisan would not have
expected Hou’s method to work. Id. ¶¶ 24–32. However we are not
persuaded that this testimony is sufficient to overcome the presumption that
Hou’s teachings are enabled. In this regard, we note that Dr. Heck’s
criticisms are not supported by experimental evidence showing that Hou’s
method does not work. Instead Dr. Heck’s testimony relies principally on
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his informed opinion. In contrast, Hou purports to have conducted an
experiment confirming its teachings. Hou ¶¶ 20–28. Considering the
totality of the evidence, we give greater weight to Hou’s experimentally
confirmed, presumed-enabled teaching that its method works as described,
than to Dr. Heck’s opinion-based testimony that it would not work. See In
re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
Board is entitled to weigh the declarations and conclude that the lack of
factual corroborations warrants discounting the opinions expressed in the
declarations.”)
In addition to criticizing of Hou’s methods and testifying that the
ordinary artisan would not have expected Hou’s methods to work, Dr. Heck
also testifies that the ordinary artisan would understand that Hou’s teachings
were limited to plants having ACLSV (which, according to Appellant,
damages leaves allowing siRNA to penetrate) and would not extend to
healthy plants. Heck Decl. ¶ 21–23. We do not find this testimony
persuasive because Hou’s teachings are not limited to plants having ACLSV.
See Hou, Abstract (teaching broadly that using its method, siRNA is
introduced into plants). Moreover, it is not clear that claim 1 is limited to
application to healthy plants.10
Appellant argues that “Hou does not even mention EPSPS gene, let
alone a dsRNA targeting EPSPS gene sequences selected from the recited

10 At oral argument, when the Board observed that the claims did not appear
to be limited to healthy plants, Appellant responded that the claim language
requires that the transfer agent condition the surface of said plant for
permeation by said dsRNA. Tr. 8. It is not clear to us how this claim
language limits the plant surfaces conditioned by the transfer agent to
healthy plants.
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SEQ ID NOs.” Appeal Br. 29. We are not persuaded because the Examiner
does not rely on Hou alone for that teaching. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Here, Yao teaches that it is “well known that small interfering RNA
(siRNA) with 21 to 23 nucleotides can trigger silencing of genes containing
the same nucleotide sequences in plants.” Yao ¶ 163. Yao further teaches
that siRNA from the Pin1 gene of a weed species can be used as an herbicide
and “should only silence the weed Pin1 gene and cause weed death but not
affect crop plants. Id. ¶ 164. Finally, Yao teaches that “[t]he siRNA agent
may be generated using in vitro transcription techniques and sprayed onto
plants.” Id. ¶ 166.
Riggins teaches that EPSPS is “the target for glyphosate, which is one
of the most widely used herbicides in the world.” Riggins, 1050. Riggins
also discloses primers for EPSPS. (id. at 1045 (Table 2)) as well as the Gen
Bank Accession number for an EPSPS cDNA from A. palmeri ((id. at 1050);
see also Ans. 8).
In view of the disclosures of Yao and Riggins, we agree with the
Examiner that it would have been obvious to modify the method of Hou to
“target the EPSPS of weeds . . . in order to reduce the expression of the
endogenous EPSPS.” Ans. 10. As the Examiner explains:
One would have been motivated to combine said teachings for
the following reasons. First, one would have selected the
EPSPS gene given that its product is a well-known herbicide
target, whose inhibition disrupts essential biochemical
pathways, as taught by Riggins et al. Second, one would have
been motivated to topically apply the siRNA directly to the
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leaves of an Amaranthus sp. weed because of the convenience
and low cost of that approach, as taught by Hou,11 and in view
of the express suggestion of Yao et al that siRNA be used as an
herbicide. One would have been motivated to target amaranth
weeds, including A. palmeri, given that they constitute
agriculturally important and aggressive weeds, as taught by
Riggins et al.
Ans. 11. We further agree with the Examiner that:
[G]iven that SEQ ID NO: 11 is a fragment of genomic DNA
from A. palmeri, and in view of the fact that the primers of
Riggins et al. could be used to isolate genomic EPSPS
sequences, one would have predictably arrived at the sequence
that would comprise at least 18 contiguous nucleotides of the
gene comprising SEQ ID NO: 11.
Ans. 10. Accordingly, we are not persuaded by Appellant’s argument that
Hou fails to disclose targeting the EPSPS gene.
Appellant argues that Hou “does not teach or suggest an effect on
treated plants.” Appeal Br. 30. Again, we are not persuaded because the
Examiner does not rely on Hou alone for that teaching. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
As discussed above, we agree with the Examiner that it would have
been obvious to use a siRNA sequence comprising at least 18 contiguous
nucleotides of the gene comprising SEQ ID NO: 11 in Hou’s method. Given
Hou’s teaching that siRNA applied using its method is absorbed into plants
(Hou, Abstract), Yao’s teaching that siRNA can be used as an herbicide
because it triggers silencing of genes in plants (Yao ¶¶ 162–166), and

11 Hou teaches that its method “has the advantages of simple and convenient
operation, high speed, low cost, quick response, high timeliness, stability,
high efficiency, low using cost, easy popularization and the like.” Hou,
Abstract.
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Riggins’ teaching that “inhibition of EPSPS interrupts the production of
essential amino acids” (Riggins, 1050), the ordinary artisan would
reasonably have expected that treating plants with siRNA comprising 18
contiguous nucleotides of the gene comprising SEQ ID NO: 11 would
reduce a plant’s growth, development or reproductive ability relative to
untreated plants. As the Examiner explains, because “EPSPS is an enzyme
that is essential for aromatic amino acid synthesis and is a target for
glyphosate, one would have reasonably expected that inhibiting it would
result in suppression of the plant’s growth, development or reproductive
ability, or that said plant would be more sensitive to glyphosate.” Ans. 11–
12
Appellant argues that “Yao at most generates transgenic plants by
using the conventional Agrobacterium-mediated transformation in which a
gene of interest is stably incorporated into the genome of the transformed
plant.” Appeal Br. 38. Appellant thus contends that “Yao does not spray
any plants with anything, let alone dsRNA with a transfer agent.” Id. We
are not persuaded.
Yao discloses that its herbicidal siRNA “may be generated using in
vitro transcription techniques and sprayed onto plants.” Yao ¶ 166. We
recognize that Yao also discloses other methods of incorporating siRNA into
plants, including via Agrobacterium-mediated transformation. However,
Yao’s disclosure is not limited to these other methods. Merck & Co. Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“But in a section 103 inquiry,
‘the fact that a specific [embodiment] is taught to be preferred is not
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controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”)).
Appellant argues that Yao’s disclosure of spraying actually refers to a
“biolistic” method in which “RNAs or DNAs are loaded on gold particles
and delivered to plant leaves using a particle gun.” Appeal Br. 40. We are
not persuaded. As an initial matter, it is not clear to us that Yao uses the
terms “biolistics” and “spraying” synonymously. Indeed, the choice of
different words suggests different meanings. Appellant points to Yao’s
statement that “siRNA can be delivered into plant cells using a range of
techniques, such as biolistics,[] Agrobacterium infiltration[,] and viral
infection” (Yao ¶ 163), and argues that Yao’s subsequent reference to
applying siRNA by spraying must refer back to one of these three
techniques. Appeal Br. 40. But, Yao nowhere limits the techniques by
which siRNA can be delivered to the three techniques identified in this
statement. Indeed the words “such as” make clear that the three techniques
are exemplary, as does Yao’s statement that “[o]ther means to generate and
deliver siRNA may also be used.” Yao ¶ 166. Moreover, even if, contrary
to the evidence, Yao did not teach topically applying its herbicide, Hou does.
See Hou, Abstract (disclosing that its method includes “spraying the solution
of siRNA on the surface of plant leaves”). While Yao’s disclosure facially
provides further support for spraying siRNA onto plant leaves, it is not
necessary to the rejection.
Appellant argues that “Riggins does not teach or suggest a dsRNA, let
alone a dsRNA of a recited SEQ ID NO for topical application to a plant
surface in a method of plant control.” Appeal Br. 42. We are not persuaded
because, as discussed above, we agree with the Examiner that based on the
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disclosure of Riggins “one would have predictably arrived at the sequence
that would comprise at least 18 contiguous nucleotides of the gene
comprising SEQ ID NO: 11.” Ans. 24. And the teachings of siRNA
necessarily disclose dsRNA because siRNAs are double stranded RNAs.
Ans. 10 (Examiner’s undisputed finding that siRNA “is double-stranded
RNA”).
Appellant argues that the Examiner failed to examine claim 1 as a
whole and does not provide a reason to combine. Appeal Br. 42–48. We do
not agree. The Examiner did not simply find each of the limitations recited
in claim 1 to be present in the cited art. Rather, the Examiner identified
reasons, grounded in the prior art, why the ordinary artisan would have
modified Hou’s method to target the EPSPS gene with a reasonable
expectation of success. Ans. 3–12. In so doing, the Examiner explained
how the resulting method would include all of the limitations of claim 1.
Appellant argues that cost and convenience are not reasons to
combine. Appeal Br. 45–48. But Appellant relies exclusively on attorney
argument, which cannot take the place of evidence. See Id; see also In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); and In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). Moreover, as the Examiner explains, “low
cost of the siRNA approach would not have been the only reason why one
would have been motivated to arrive at the instant invention.” Ans. 27.
More specifically “the advantages over conventional herbicides, as taught by
Hou and Yao . . . would have also motivated one to use siRNA to inhibit an
endogenous EPSPS in a commercially important weed.” Id. The additional
benefits taught by Hou include simplicity, “high speed,” “quick response,
high timeliness, stability, high efficiency,” “easy popularization and the
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like.” Hou, Abstract. The benefits taught by Yao with respect to its Pin1
gene based siRNA herbicide include that it “can be highly species specific.”
Yao ¶ 164. Yao also asserts, more generally, that its method “has
advantages over herbicides currently available in the market.” Id.
Appellant argues that an ordinary artisan “would not have had a
reasonable expectation of success that a large, highly charged molecule such
as dsRNA would be able to permeate a surface of a plant.” Appeal Br. 48.
Similarly, Appellant argues that Dr. Heck expressed contemporaneous
skepticism that applying siRNA topically to plants would work. Appeal Br.
50–51. We are not persuaded because, as discussed above, Hou teaches that
siRNA topically applied to plants is introduced into the plant. Yao further
supports that siRNA applied to plants can act as an herbicide. Yao ¶¶ 162–
166.
Appellant argues that “Yao leads away from the claimed invention by
requiring Agrobacterium-mediated transformation, biolistics methods, or
viral infection, to make transgenic plants, features not described in the
Specification or recited in the claims.” Appeal Br. 51–52. As discussed
above, we are not persuaded that Yao is limited to applying siRNA using
Agrobacterium-mediated transformation, biolistics methods, or viral
infection. See e.g., Yao ¶ 166 (“Other means to generate and deliver the
siRNA may also be used.”). But even if it were so limited, Appellant does
not identify, and we do not find, any disclosure in the art that discourages
topical application of a composition comprising siRNA. Accordingly, the
record does not support that the prior art taught away from the claimed
method. See, DyStar Textilfarben GmbH & Co. Deutschland Kg v. C.H.
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Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”)
Appellant argues that the Examiner incorrectly treats the “wherein”
clause reciting “wherein said transfer agent conditions the surface of said
plant for permeation by said dsRNA,” as an intended use, giving it no
patentable weight. Appeal Br. 25–26. According to Appellant this
“wherein” clause “further defines [the] transfer agent by its function, i.e., its
ability to condition the surface of a plant for permeation by a dsRNA, and is
thus a claim limitation.” Id. at 25. We are not persuaded.
We have already construed the term “transfer agent” to mean: “an
agent that, when combined with a polynucleotide in a composition that is
topically applied to a target plant surface, enables the polynucleotide to enter
a plant cell.” The “wherein” claim language does not further limit the claim
beyond this construction. As discussed above, the water in Hou’s method
enables the polynucleotide to enter the plant cell and thus, even if we were to
give weight to the “wherein” claim language, the cited art teaches this
limitation.
Appellant argues that the Examiner incorrectly treats the “whereby”
clause reciting “whereby said plant’s growth, development, or reproductive
ability is reduced or said plant is more sensitive to an EPSPS inhibitor
herbicide” relative to an untreated plants as an intended use. Id. at 26.
According to Appellant, this clause “effectively limit[s] the recited
dsRNA[s] to only those that are capable of achieving the desired results as
recited in the claims.” Id. at 26.
Appellant’s argument that the whereby clause limits claim 1 to only a
subset of the specifically recited SEQ ID’s is in tension with an argument it
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made with respect to the Examiner’s rejection of claims 44 and 45 as
reciting an improper Markush group of EPSPS gene sequences. More
specifically, Appellant argued that the EPSPS sequences recited in these
claims, which encompass all of the sequences recited in claim 1, share a
common function, and thus do not present an improper Markush group
because “all of SEQ ID NOs 1–120, which encompass all sequences recited
in claims 44 and 45, ‘suppress, repress or otherwise delay the expression of
the target EPSPS gene.’” Appeal Br. 64 (omitted citation). This is
consistent with the Specification, which suggests that the disclosed method
encompasses application of any of the recited SEQ IDs. For example, it
states:
[T]he invention provides a method of plant control comprising
an external application to a plant or plant part a composition
comprising a polynucleotide and a transfer agent . . . wherein
said EPSPS gene sequence is selected from the group consisting
of SEQ ID NO: 1–120 or a polynucleotide fragment thereof.
As a result of such application, the plant growth or development
or reproductive ability is reduced or the plant is made more
sensitive to an EPSPS inhibitor herbicide relative to a plant not
treated with said composition.
Spec. 3; see also, id. 24 (identifying SEQ ID NO:1–120 as “target gene
RNA and DNA polynucleotide molecules”). Appellant does not identify,
and we do not find, anything in the Specification to support that only a
subset of the specifically recited SEQ IDs would be expected to achieve the
results recited in the claims.
In any event, even if claim 1 is construed to require that the treated
plant’s growth, development, or reproductive ability is reduced or said plant
is more sensitive to an EPSPS inhibitor herbicide relative to an untreated
plants, the prior art fairly suggests this feature. As discussed above, we
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agree with the Examiner that it would have been obvious to use a siRNA
sequence comprising at least 18 contiguous nucleotides of the gene
comprising SEQ ID NO: 11 in Hou’s method. Given Hou’s teaching that
siRNA applied using its method is absorbed into plants, Yao’s teaching that
siRNA can be used as an herbicide because it triggers silencing of genes in
plants (Yao ¶¶ 162–166), and Riggins’ teaching that “inhibition of EPSPS
interrupts the production of essential amino acids” (Riggins, 1050), the
ordinary artisan would reasonably have expected that treating plants with
siRNA comprising 18 contiguous nucleotides of the gene comprising SEQ
ID NO: 11 would reduce a plant’s growth, development or reproductive
ability relative to untreated plants.
Accordingly, we affirm the Examiner’s rejection of claim 1. Because
they were not argued separately, claims 11, 21, and 44 fall with claim 1.

Claim 5, 42, and 43
Claim 5 depends from claim 1 and further requires that the recited
plant is selected from a group of specifically identified plants. Claim 42
depends from claim 1 and further requires that the plant is Amaranthus
palmeri. Claim 43 depends from claim 11 and likewise further requires that
the plant is Amaranthus palmeri. Appellant argues that “[n]one of the cited
references, alone or in combination, teach or suggest treating any of the
recited plant species in a method of plant control as recited” in claim 5 and,
more specifically, Amaranthus palmeri, as recited in claims 42 and 43.
Appeal Br. 52, and 54–55. We do not find this argument persuasive
because, as discussed above, Riggins discloses the Gen Bank Accession
number for an EPSPS cDNA from A. palmeri, one of the species recited in
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claim 5, and the Examiner provides persuasive reasoning why it would have
been obvious to target the EPSPS gene of A. palmeri. Riggins, 1050; see
also Ans. 11 (“One would have been motivated to target amaranth weeds,
including A. palmeri, given that they constitute agriculturally important and
aggressive weeds, as taught by Riggins et al.”).
Appellant also repeats several of the arguments it makes with respect
to claim 1. Appeal Br. 52–53. We do not find the repeated arguments
persuasive for the reasons already discussed.
Accordingly, we affirm the Examiner’s rejection of claims 5 and 42.

Claim 10
Claim 10 depends from claim 1 and further recites that the
composition comprises two or more of said dsRNAs. Appellant argues that
“[n]one of the cited references, alone or in combination, teach or suggest a
dsRNA targeting EPSPS gene sequences for use in a method of plant control
as claimed, let alone two or more of such dsRNAs.” Appeal Br. 53. We are
not persuaded because, for the reasons discussed above, it would have been
obvious to employ a composition comprising siRNA targeting the EPSPS
gene. As the Examiner explains, “a composition [comprising] two or more
of said RNAs, both of them targeting the same endogenous EPSPS gene
would have been obvious because, ‘[i]t is prima facie obvious to combine
two compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition to be used for the very
same purpose. . . . [T]he idea of combining them flows logically from their
having been individually taught in the prior art.’” Ans. 30 (quoting In re
Kerkhoven, 626 F.2d 846, 850, 205 USPG 1069, 1072 (CCPA 1980)).
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Appellant also repeats several of the arguments it makes with respect
to claim 1. Appeal Br. 53. We do not find the repeated arguments
persuasive for the reasons already discussed.
Accordingly, we affirm the Examiner’s rejection of claim 10.

Claim 45
Claim 45 depends from claim 44 and further limits the SEQ ID NOs
recited in the Markush group. Notably, the narrowed Markush group of
claim 45 does not recite SEQ ID NO: 11. Appellant argues that “[n]one of
the cited references, alone or in combination, teach or suggest any of the
SEQ ID NOs as recited in the claims.” Appeal Br. 54. The Examiner’s
Answer does not address this argument. See generally, Ans. Moreover, the
Examiner’s obviousness rationale posits that the ordinary artisan “would
have predictably arrived at the sequence that would comprise at least 18
contiguous nucleotides of the gene comprising SEQ ID NO: 11.” Ans. 10.
As noted above, SEQ ID NO. 11 is not recited in claim 45.
As the Examiner does not explain why any of the sequences recited in
claim 45 would have been obvious, we reverse the Examiner’s rejection of
claim 45.

Claim 46
Claim 46 depends from claim 44 and further recites that the plant is
selected from a specifically recited group of plants. Notably, the recited
plants do not include Amaranthus palmeri. Appellant argues that “[n]one of
the cited references, alone or in combination, teach or suggest treating any of
the recited plant species in a composition for plant control as recited.”
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Appeal Br. 56. The Examiner’s Answer does not address this argument.
See generally, Ans. Moreover, while the Examiner explains why it would
have been obvious to target A. plameri, the Examiner does not explain why
it would have been obvious to target any of the plant species recited in claim
46.
Accordingly, we reverse the Examiner’s rejection of claim 46.

Claim 47
Claim 47 depends from claim 44 and further recites that the transfer
agent is a chemical agent. Appellant argues that “[n]one of the cited
references, alone or in combination, teach or suggest treating any of the
recited plant species in a composition for plant control as recited.” Appeal
Br. 57. We are not persuaded because claim 47 does not recite any
particular plant species.
Appellant also repeats several of the arguments it makes with respect
to claim 1. Appeal Br. 57. We do not find the repeated arguments
persuasive for the reasons already discussed.
Accordingly, we affirm the Examiner’s rejection of claim 47.
OBVIOUSNESS OVER HOU, YAO, RIGGINS, SHANER,
SINGH, AND SUN

In rejecting claims 2, 6–9, 12, 16–20, 22, 38, 39, 48, and 49 as
obvious over the combination of Hou, Yao, Riggins, Shaner, Singh, and
Sun, the Examiner applied Hou, Yao, and Riggins as discussed in
connection with claim 1. The Examiner acknowledge, however, that Hou,
Yao, and Riggins do not “expressly teach using an EPSPS inhibitor or a co-
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herbicide in said composition; and do not teach the use of an organosilicone
surfactant.” Ans. 12.
The Examiner found, however, that Shaner taught that “‘combinations
of glyphosate with 2, 4-D or dicamba are needed to give adequate control’ to
the populations of weeds, including Amaranthus sp. that are developing
glyphosate resistance.” Id. The Examiner further found that Singh taught
that “organosilicone-based adjuvants increase glyphosate translocation in
Amaranthus retroflexus . . . and that ‘[o]rganosilicone adjuvants have the
potential to provide greater rainfastness to glyphosate on redroot pigweed
and, to a lesser extent, on guineagrass.’” Id. at 13. Finally, the Examiner
found that Sun disclosed that “organosilicone surfactants generally increase
the efficacy and uptake of herbicides, including that of glyphosate.” Id. 12.
Based on these disclosures, the Examiner concluded that it would
have been obvious to include in the composition used in Hou’s method,
modified as discussed above, “an EPSPS inhibitor, such as glyphosate, either
alone or in combination with another herbicide directed to a different target,
such as dicamba or 2, 4-D, taught by Shaner” as well as “an organosilicon
surfactant, such as those taught by Sun and Singh.” Id. at 13.

Claims 6–9 and 16–20
Appellant argues claims 6–9 and 16–20 together. Appeal Br. 58–59.
We designate claim 6 as representative.
Claim 6 depends from claim 1 and further requires that the
composition comprises an EPSPS inhibitor herbicide. Appellant argues that
“Shaner at most discusses ‘the effect of glyphosate-tolerant crops may have
on the use and availability of other herbicides and the impact that the
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widespread adoption of this technology will have on herbicide resistance
management.’” Appeal Br. 58. Appellant thus argues that Shaner “does not
provide any teaching, suggestion, or motivation that any EPSPS inhibitor
herbicide and/or other herbicides can be used in a composition with a
transfer agent and a dsRNA targeting EPSPS gene sequences in a method of
plant control as recited.” Id. We are not persuaded.
Shaner teaches that “combinations of glyphosate and 2, 4-D or
dicamba are needed to give adequate control” of weed populations that are
developing glyphosate resistance, including Amaranthus sp. Shaner, 324.
We find that this would have motivated the ordinary artisan to combine the
siRNA herbicidal composition suggested by the cited art with another
herbicide. In re Kerkhoven, 626 F.2d 846, 850, 205 USPG 1069, 1072
(CCPA 1980).
Appellant also repeats several of the arguments it makes with respect
to claim 1. Appeal Br. 58–59. We do not find the repeated arguments
persuasive for the reasons already discussed.
Accordingly we affirm the Examiner’s rejection of claim 6. Because
they were not argued separately, claim 7–9 and 16–20 fall with claim 6.

Claims 2, 12, 22, 38, 39, 48, and 49
Appellant argues claims 2, 12, 22, 38, 48, and 49 together. We
designate claim 2 as representative.
Claim 2 depends from claim 1 and further requires that the transfer
agent is “an organosilicon surfactant composition or an organosilicone
compound contained therein.” Appellant argues that “Sun at best discusses
the physico-chemical properties of organosilicone surfactants and their
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effects on herbicide activity on weedy plants” and “Singh at most
‘measure[s] the effects of adjuvants on the absorption and translocation of
glyphosate using selected conventional and organosilicone adjuvants.’”
Appeal Br. 59. Appellant argues that Sun and Singh do not support that an
organosilicone surfactant would inherently function as a transfer agent. Id.
at 60–61.
We agree with the Examiner that the disclosures of Sun and Singh
would have suggested the use of an organosilicone surfactant in Hou’s
method. As the Examiner explains:
Sun and Singh et al teach the advantages of using
organosilicone surfactants when an agricultural composition is
applied to the surface of a plant. Sun teaches that
organosilicone surfactants generally increase the efficacy and
uptake of herbicides, including that of glyphosate (except in a
few grass species). Importantly, Sun also teaches that
organosilicone surfactants increase the spreading area of
aqueous solutions on a plant leaf, and have been used as
adjuvants to enhance penetration not only of herbicides but also
growth regulators and foliar nutrients. Singh et al teach that
organosilicone-based adjuvants increase glyphosate
translocation in Amaranthus retroflexus.
Ans. 31. We agree with the Examiner that these teachings would have
motivated the ordinary artisan to use an ornanosilicone surfactant in a
composition comprising a siRNA targeting the endogenous EPSPS gene. Id.
We are not persuaded by Appellant’s inherency argument because the
Examiner relies not on inherency, but on the teaching in the art that
organosilicone surfactants enhance penetration of herbicides, growth
regulators and foliar nutrients, and increase the efficacy and uptake of
herbicides. Sun 2–3, 4–6, 9–10; see also Singh, Abstract, 110. Moreover,
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the Examiner does not propose to eliminate water, which Hou teaches has
the properties of a transfer agent. See supra.
Appellant also repeats several of the arguments it makes with respect
to claim 1. Appeal Br. 61. We do not find the repeated arguments
persuasive for the reasons already discussed.
Accordingly, we affirm the Examiner’s rejection of claim 2. Because
they were not argued separately, claims 12, 22, 38, 48, and 49 fall with claim
2.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 10,
11, 21,
42–47
103(a) Hou, Yao, Riggins 1, 5, 10, 11,
21, 42–44,
47
45, 46
2, 6–9,
12, 16–
20, 22,
38, 39,
48, 49
103(a) Hou, Yao, Riggins,
Shaner, Singh, and
Sun
2, 6–9, 12,
16–20, 22,
38, 39, 48,
49

Overall
Outcome
1, 2, 5–12,
16–22, 38,
39, 42–44,
47–49
45, 46

No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).

AFFIRMED IN PART