David Duncan et al.

Patent Trials and Appeals Board

Feb 12, 2021

2020002919 (P.T.A.B. Feb. 12, 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.
10/708,724 03/19/2004 David R. Duncan MONS:126US 2723
73905 7590 02/12/2021
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
BURAN, ASHLEY KATE
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
02/12/2021 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. DUNCAN and VLADIMIR SIDOROV
Appeal 2020-002919
Application 10/708,724
Technology Center 1600

Before DEBORAH KATZ, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–3, 6–8, and 16–19.1 See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the real
party in interest is Bayer US LLC, the parent company of Monsanto
Technology LLC. Appeal Br. 1.
Appeal 2020-002919
Application 10/708,724

2
CLAIMED SUBJECT MATTER
The claims are directed to a novel method generating transformed
corn plants from mature seed. Claim 1, reproduced below, is illustrative of
the claimed subject matter:

1. A method of obtaining transformable callus tissue
comprising:

germinating a mature corn seed in tissue culture media
containing an effective amount of an auxin and an effective
amount of a cytokinin, wherein the tissue culture media is solid
and wherein the cytokinin is benzylaminopurine (BAP), further
wherein the BAP concentration is between about 0.1 mg/L and
about 10 mg/L, to produce a growing seedling containing a
nodal section capable of producing callus;

isolating the nodal section from the seedling; and

culturing the nodal section on a callus induction media
comprising auxin, to produce Type I embryogenic callus and/or
Type II embryogenic callus suitable for transformation.
Appeal 2020-002919
Application 10/708,724

3
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Jones US 5,188,655 Feb. 23, 1993
Young US 6,570,068 B1 May 27, 2003
Bhaskaran Control of Morphogenesis in Sorghum by 2,4
Dichlorophenoxyacetic Acid and Cytokinins,
Annuals of Botany, Vol. 64, 217–224 (1989)
1989
Grando Optimizing embryonic callus production and
plant regeneration from ‘Tifton 9’ bahiagrass
seed explants for genetic manipulation, Plant
Cell, Tissue and Organ Culture, Vol. 71, 213–
222 (2002)
2002
Sigma-
Aldrich
6-Benzylaminopurine plant cell culture
tested, Sigma Aldrich, (2014) (accessed Dec.
10, 2020).
http://www.sigmaaldrich.com/catalog/product
/sigma/b3408?lang=en®ion=US

Dec. 22, 2014

REJECTION
Claims 1–3, 6–8, and 16–19 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Young in view of Bhaskaran, Jones, and
Grando as evidenced by Sigma-Aldridge.2

2 Claims 20–23 are pending in the application but have been withdrawn
from consideration. Final Act. 2.
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Application 10/708,724

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OPINION
Issue
The sole issue before us is whether a preponderance of the evidence
supports the Examiner’s conclusion that the subject matter of the rejected
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Young combined with Jones, Bhaskaran and
Grando.
The Examiner finds that Young teaches the regeneration of maize
tissue from mature seeds where the seeds are germinated in a medium
comprising plant growth regulators. Final Act. 3. The Examiner finds that
Young teaches isolating a nodal section from the seedling produced from
germinating the seed and then growing the explant in a callus induction
medium. Id. The Examiner finds that Young teaches that the callus induction
medium may include an auxin such as 2,4 D. Id. at 4. The Examiner finds
that Young teaches the seeds can be germinated in a medium comprising a
cytokinin such as benzyladenine (“BAP”). Id. at 5.
The Examiner finds that given that the callus is grown in the same
medium as recited in the claims, one skilled in the art would expect the
formation of an embryonic callus to occur. Id. at 5–6.
The Examiner finds that Young does not teach germinating maize
seed in the presence of both an auxin and a cytokinin. Id. at 7.
The Examiner finds that Bhaskaran teaches the germination of
monocot, Sorghum bicolor, seeds in a medium containing both an auxin and
BAP. Id. at 7. The Examiner finds that Bhaskaran teaches that callus from
the resulting seedling was excised and grown with different media. Id. The
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Examiner finds that the explant of Bhaskaran grown in auxin alone resulting
in an embryogenic callus. Id.at 7–8.
The Examiner finds that Jones teaches application of a composition
comprising both an auxin and a cytokinin to seeds to enhance growth of the
seeds. Id. at 8. The Examiner finds that Jones teaches that the composition
can be used with corn. Id. at 8–9.
With respect to Grando, the Examiner finds that the reference teaches
germination of a monocot from seeds using a composition comprising both
an auxin and a cytokinin. Id. at 9. The Examiner finds that Grando teaches
excising a portion of the resulting seedlings and including development of an
embryogenic callus. Id.
The Examiner concludes
It would have been obvious to one of ordinary skill in the
art to germinate a mature corn seed on medium comprising an
auxin and the cytokinin BAP to produce a growing seedling (as
taught by Young, Grando, and Bhaskaran). One would have
been motivated to do so because it was known that growing
mature seeds in the presence of auxins and cytokinins ( and in
particular corn seeds in the presence of BAP) improves the
overall germination rate, reduces time to germination, enhances
the health and development of plants grown from the seeds,
reduces root growth at the nodal section (desirable trait for
excising the nodal section), and improves yield of said plants
and thus provides advantages to the plant that are "evident" and
of “significant economic value” (as taught by Jones).
Additionally, the art teaches that corn seeds grown in medium
comprising BAP also produced healthier and more robust plants
than those germinated in cytokinin-lacking environments (see
Young). Therefore, one would have expected that growing
mature corn seeds in medium comprising an auxin and the
cytokinin BAP would produce plants superior to those grown in
medium lacking the hormones and that the seedlings would
have nodal sections that are easier to excise for further culturing
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(Young). It would have been obvious to utilize healthier and
more robust seedlings as the starting material for tissue culture
and ultimately transformation of the callus produced from
culturing the nodal section.

Additionally, Grando et al teach that mature seeds are the
preferred starting material and that many different plant tissues
were known to be capable of producing embryogenic callus,
and Young teaches that seedlings grown from mature seeds are
larger than those grown from immature embryos. Thus, it
would have been obvious to utilize mature maize seeds as the
starting material and to germinate the seeds in the presence of
an auxin and BAP with the expectation of obtaining a growing
seedling comprising at least one nodal section. It would have
been obvious to excise the nodal section of seedlings 3 to 30 or
7 to 10 days after germination (as taught by Young and
Bhaskaran) in the hormone-containing medium, and to culture
said nodal section in medium comprising an auxin to induce
embryogenic callus (as taught by Young and Bhaskaran). For
one, the prior art teaches excising the nodal section of
seedlings, which would be expected to be obtained during this
range of days. Nevertheless, the particular days after
germination (DAG) age of the seedling is merely a design
choice optimized with routine experimentation and
conventional means. Nevertheless, Young teaches germinating
the mature maize com seed for not more than 10 days before
excising the nodal section (claims), and one in art understands
that there is a minimum number of days that must pass for a
seedling to even be produced. Thus, this optimization of DAG
for excision of the nodal section is well within the ordinary skill
of one in art and does not provide any surprising or unexpected
results. Furthermore, one would have been motivated to culture
the excised nodal section in the presence of an auxin because
(i) Grando et al and Bhaskaran et al, al teach that embryogenic
callus can be formed from seedlings grown from mature seeds,
and in particular from mature com seeds; and (ii) Bhaskaran et
al teach that it was known that embryogenic calli can be formed
at an excised nodal section from monocots when cultured with
auxin; and (iii) it was known that the addition of a cytokinin at
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particular levels resulted in regeneration of a plantlet. Thus, one
would have been motivated to culture the nodal section in the
presence of auxin to initiate embryogenic calli.

Id. at 10–11.
Appellant contends that the prior art does not teach germination of
corn seeds in the presence of both auxin and BAP. Appeal Br. 3–4.
Appellant contends that the Examiner has conceded that Young does not
teach this limitation and that the references cited in Young confirm this
point. Id. at 4–5. With respect to Jones, Appellant contends that Jones does
not relate to tissue culture or callus production and require the presence of
gibberellin. Id. at 5.
Appellant contends that Bhaskaran is directed to organogenesis and
that to the extent embryogenesis occurs it occurs with a low frequency. Id. at
6. Appellant contends that Grando is directed to direct production of
embryonic cells and does not teach production of a nodal section followed
by callus production. Id.
Appellant contends that one of ordinary skill in the art would not have
had a reasonable expectation of success. Id. at 6–11. Appellant contends that
the teachings of Young would not lead one skilled in the art to have a
reasonable expectation of success as Young does not teach the use of auxin
in the germination stage and results of using auxin would not be predictable.
Id. at 6–7. Appellant also contends that the increased clumps recited in
Young related to organogenesis and does not reflect the use of an auxin and
a cytokinin. Id. at 7.
Appellant contend that the advantage cited by the Examiner as
stemming from Bhaskaran and Grando relate to organogenesis. Id. at 8.
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Appellant contends that neither reference teaches any advantage to the use of
both an auxin and BAP during germination. Id.
Appellant contends that while Jones teaches germination of seeds
using both an auxin and a cytokinin, Appellant contends that Jones does not
teach or suggest production of a callus. Id at 9. Appellant contends that
Jones is non-analogous art as it relates to the use of gibberellins in addition
to auxins and cytokinins for whole plant growth. Id. at 10. Appellant
contends that Joes cannot be properly combined with Young as the presence
of gibberellins precludes one skilled in the art from having any expectation
of success in using an auxin combine with cytokinins. Id.
Appellant also contends that the Examiner has engaged in the
improper use of hindsight in making the rejection. Id.at 12. Appellant
contends that there is no teaching in any of the references which would lead
on skilled in the art to conclude that there was any advantage to using the
combination of an auxin and BAP to germinate a seed. Id.
Appellant contends that its arguments are factually supported by the
Declaration of Dr. Moeller.3

Principles of Law
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, No. 91–1026, 977 F.2d 1443, 1445
(Fed. Cir. 1992).

3 Declaration of Lorena Moeller under 37 C.F.R. § 1.132, filed March 31,
2017 (Appeal Br., Ex. J, hereinafter “Moeller Decl.”).
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“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. [The reference] must be read, not in isolation, but
for what it fairly teaches in combination with the prior art as a whole.” In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The “case law is clear that obviousness cannot be avoided simply by a
showing of some degree of unpredictability in the art so long as there was a
reasonable probability of success. . . . Indeed, a rule of law equating
unpredictability to patentability . . . would mean that any new salt—
including those specifically listed in the [prior art patent] itself—would be
separately patentable, simply because the formation and properties of each
salt must be verified through testing. This cannot be the proper standard
since the expectation of success need only be reasonable, not absolute.”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but 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.”
Application of McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).

Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established a
prima facie showing that the subject matter of the claims would have been
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obvious over Young combined with Bhaskaran, Jones and Grando to a
person of ordinary skill in the art at the time the invention was made.
Appellant has not produced persuasive evidence showing, or persuasively
argued, that the Examiner’s determinations on obviousness are incorrect.
Only those arguments made by Appellant in the Briefs have been considered
in this Decision. Arguments not presented in the Briefs are waived.
See 37 C.F.R. § 41.37(c)(1)(iv). We have identified claim 1 as
representative; therefore, all claims fall with claim 1. We address
Appellant’s arguments below.
We begin by noting that many of Appellant’s arguments relate to the
specific teaching of the individual references. See, e.g., Appeal Br. 2–5
(discussion of Young reference). Similarly, the Declaration of Dr. Moeller
critiques the teachings of specific references and the Examiner’s analysis of
the references but does not address the combined teachings of the references
except for a general statement that the teachings of the references do not lead
to the claimed invention. See Moeller Decl. ¶¶ 2–21. The attacks on the
individual references do not effectively rebut the Examiner’s finding of
obviousness. Merck, 800 F.2d at 1097.
Appellant begins by contending that Young does not teach or suggest
the use of an auxin and BAP to germinate seeds. Appeal Br. 3–4. The
Examiner however, acknowledges this deficiency and cites to Jones and
Bhaskaran for teaching this limitation. Final Act. 7–8. Jones teaches the use
of a growth enhancing composition comprising gibberellins, auxins and
cytokinins including application to mature seeds for germination. Jones
Abstract, col. 1, ll. 15–23. Jones teaches that germination with the recited
composition results in faster germination and growth. Id. col. 9, ll. 1–55.
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Jones also teaches the applicability of the germination preparation to corn.
Id. col. 14, ll. 28–31. Bhaskaran teaches germination seeds in a composition
comprising 2,4 D and BAP. Bhaskaran, 218. Grando also teaches
germination of seeds using a composition containing auxins and BAP.
Grando, 214. Thus, while Young does not teach germinating seeds with a
composition comprising auxin and BAP, the remaining references teach this
limitation.
Appellant contends that because Jones teaches the use of gibberellins
and is related to whole plant development, that Jones is not relevant. Appeal
Br. 9–10. We are not persuade by these arguments.
Claim 1 calls for germinating seeds in a culture media “containing an
effective amount of an auxin and an effective amount of a cytokinin.”
Appeal Br. 16 (Claims App.). Like the term comprising, the term containing
is construed to be open-ended permitting the presence of other compounds.
“[L]ike the term ‘comprising,’” the claim term “containing” is open-ended.
Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1375–1376 (Fed. Cir. 2004). Thus
claim 1 is not limited to a germination composition comprising only an
auxin and BAP. Jones also specifically teaches that the composition aids in
germination of seeds resulting in quicker germination time and seedling
development. Jones col. 9, ll. 1–55. We agree with the Examiner that the
teachings of Jones are relevant to the instant invention. See Ans. 20.
Appellant’s contention with respect to Bhaskaran being directed to
organogenesis is also not persuasive. A reference is relevant for all it
teaches. In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Bhaskaran
teaches that development of an embryonic callus using an auxin. Bhaskaran
218–220, 223. While Appellant’s assertion that the development of an
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embryonic callus occurs at a low frequency, the claims do not require any
specific level of callus development only that an embryonic callus is
developed. Moreover, Bhaskaran teaches differentiation with 2,4 D results in
an embryonic callus. Id. at 223.
Appellant contends that Grando teaches the direct production of
embryogenic callus and not organogenic production of a nodal section of a
callus. Appeal Br. 6. While this may be correct, the Examiner cites to
Grando for the teaching of germination seed in the presence of an auxin and
BAP. Ans. 20. The Examiner cites to Young as teaching the development of
a callus from excised nodal tissue. Id. at 18 citing claim 13 of Young. Hence
we are not persuaded by this argument.
Appellant contends that one skilled in the art would not have had a
reasonable expectation of success in combining the references. Appeal Br. 6.
Appellant contends that the benefits cited by the Examiner all relate to the
sequential application of cytokinin and an auxin for seed germination. Id.at
6–7. Appellant contends that the effect of simultaneous application of the
two compounds would have been unpredictable. Id. at 7. Again we are not
persuaded by this argument.
As discussed above, Jones teaches that treating seeds with a
composition containing an auxin and a cytokinin results quicker germination
time and seedling development. Jones col. 9, ll. 1–55. In addition,
Bhaskaran and Grando teach the successful application of a composition
comprising both an auxin and a cytokinin to germinate seeds. Bhaskaran,
218; Grando Abstract. We find that the teachings of Jones, Bhaskaran and
Grando would have lead on skilled in the art to have has a reasonable
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expectation of success in germinating seeds with a composition containing
an auxin and a cytokinin.
Appellant contends that the Examiner engaged in the improper use of
hindsight in making the rejection. Appeal Br. 12. Appellant contends that
none of the references would have lead one skilled in the art to germinate
seeds in the presence of an auxin and BAP as recited by the claims. Id. at
12–13. Appellant contends that the present situation equates to improper
application of an “obvious to try standard.” We remain unpersauded.
As discussed above, Jones, Bhaskaran and Grando teach germinating
seeds in the presence of an auxin and a cytokinin. Bhaskaran specifically
teaches the use of BAP. Bhaskaran, 220, Fig. 2. Thus the references
themselves teach the use of the claimed composition to germinate seeds.
Appellant has not persuasively shown nor do we discern any knowledge
gleaned solely from the present disclosure.
Appellant concludes by arguing that the Moeller declaration supports
it’s contention that the references do not teach the claimed invention. Appeal
Br. 13–14. We, like the Examiner, have considered the Moeller declaration
and find it unpersuasive. As noted above, the Moeller declaration addresses
the perceived deficiencies of the individual references but does not address
the combined teachings of the references. For example, Dr. Moeller states
that Bhaskaran teaches application of plant hormones to sorghum and that
one skilled in the art would not apply the teaching to corn.
Moeller Decl. ¶ 17. This ignores the fact that Jones teaches the application
of similar compositions to corn. Jones col. 14, ll. 28–31.

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CONCLUSION
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that the subject matter of claim 1 would have been
obvious to one of ordinary skill in the art at the time the invention was made
over Young combined with Jones, Bhaskaran and Grando. Claims 2, 3, 6–8,
and 16–19 were not argued separately and therefore fall with claim 1.
37 C.F.R. § 41.37(c)(iv).
CONCLUSION
The Examiner’s decision to reject claims 1–3, 6–8, and 16–19 under
35 U.S.C. § 103 as unpatentable over Young combined with Jones,
Bhaskaran and Grando is affirmed.
DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–8,
16–19
103 Young, Jones,
Bhaskaran and
Grando
1–3, 6–8,
16–19

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).

AFFIRMED