Dow AgroSciences LLC

Patent Trials and Appeals Board

Aug 2, 2021

2020006328 (P.T.A.B. Aug. 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.
15/070,005 03/15/2016 Robbi J. Garrison 77199-US-NP 3212
25212 7590 08/02/2021
CORTEVA AGRISCIENCE LLC
9330 ZIONSVILLE RD
INDIANAPOLIS, IN 46268
EXAMINER
GOUGH, TIFFANY MAUREEN
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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):
Patents@corteva.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBBI J. GARRISON
____________

Appeal 2020-006328
Application 15/070,005
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–5, 7–9, 13, 14, and 16–18 (Appeal Br. 3). 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 “Dow Agro
Sciences LLC (‘DAS’),” which “is a subsidiary of Corteva AgriscienceTM”
(Appellant’s March 30, 2020, Appeal Brief (Appeal Br.) 3).
Appeal 2020-006328
Application 15/070,005

2
STATEMENT OF THE CASE
Appellant’s disclosure relates to “compositions and methods for the
cryopreservation of eukaryotic cells in a media composition containing a
phosphatidylcholine compound.” (Spec.,2 Abstr.). Appellant’s claims 1, 17,
and 18 are reproduced below:
1. A medium composition, comprising:
(i) an aqueous solution including at least one
cryopreservation agent, a cell suspension medium, and a
phosphatidylcholine, wherein the phosphatidylcholine is added
to the medium composition at a concentration from 0.05% to
50% of the total volume of the medium composition; and,
(ii) a plant cell, wherein the plant cell is a plant
suspension cell line, or a photoautotrophic suspension cell line.
(Appeal Br. 21.)
17. The medium composition of claim 1, wherein the medium
composition is frozen.
(Id. at 22.)
18. The medium composition according to claim 17, wherein
the medium composition comprises a temperature of about 0°C
to about -196°C.
(Id.)

Grounds of rejection before this Panel for review:
Claim 18 stands rejected under 35 U.S.C. § 112(b).

2 Appellant’s March 15, 2016, Specification.
Appeal 2020-006328
Application 15/070,005

3
Claims 1–5, 7–9, 13, 14, and 16–18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Garrison,3 Herickhoff,4
Yoon,5 and Yoshida.6
Claims 1–5, 7–9, 13, 14, and 16–18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Ainley,7 Herickhoff, Yoon,
and Yoshida.
Claims 1–3, 7–9, 14, and 16–18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kadkade,8 Herickhoff,
Yoon, and Yoshida.

DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claim 18 is indefinite?
ANALYSIS
Appellant’s claim 18, reproduced above, depends ultimately from
Appellant’s claim 1 and requires that the medium composition is frozen and
comprises a temperature of about 0°C to about -196°C. We find no error in

3 Garrison, US 2009/0023214 A1, published Jan. 22, 2009.
4 Herickhoff et al., US 2015/0037783 A1, published Feb. 5, 2015.
5 Yoon et al., Phosphatidylcholine isolation from egg yolk phospholipids by
high-performance liquid chromatography, 949 J. CHROMATOGR. A 209–216
(2002).
6 Yoshida et al., Phospholipid Degradation in Frozen Plant Cells Associated
with Freezing Injury, 53 PLANT PHYSIOL. 509–511 (1974).
7 Ainley et al., WO 2006/052835 A2, published May 18, 2006.
8 Kadkade et al., US 2005/0158699 A1, published July 21, 2005.
Appeal 2020-006328
Application 15/070,005

4
Examiner’s conclusion that Appellant’s claim 18 is indefinite in reciting that
the composition comprises a temperature.
Appellant contends that “[t]he boundaries of the temperature range
[set forth in its claim 18] are clearly stated and one with skill in the art could
ascertain these measurements of temperature as they apply to the medium
composition” and, thus, claim 18 “particularly point[s] out and distinctly
claim[s] the subject matter which the Appellant[] regards as the invention for
dependent claim 18 (i.e., a medium composition with a temperature of about
0°C to about -196°C)” (Appeal Br. 19). We are not persuaded.
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the
[S]pecification.” Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870,
875 (Fed. Cir. 1993)). On this record, Appellant failed to establish that those
of ordinary skill in this art, reading Appellant’s claim 18 in light of
Appellant’s Specification, would reasonably understand how to formulate a
composition that “comprises” a temperature range (see Ans. 3 (Examiner
finds that “[i]t is not clear how a media composition comprises a
temperature”)).
In view of the foregoing, we recognize Examiner’s recommended
amendment to Appellant’s claim 18 to overcome this rejection: “It is
suggested that the claim be amended to ‘wherein the medium composition is
frozen to a temperature of about. . .’ to more distinctly claim the invention”
(Ans. 21).
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
Appellant’s claim 18 is indefinite.
Appeal 2020-006328
Application 15/070,005

5
The rejection of claim 18 under 35 U.S.C. § 112(b) is affirmed.

OBVIOUSNESS:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Because the same issue is dispositive for all three obviousness
rejections, we consider the rejections together.
Examiner finds that each of Garrison, Ainley, and Kadkade make
obvious Appellant’s claimed media composition, with the exception of
phosphatidylcholine at a concentration from 0.05% to 50% of the total
volume of the medium composition (see Ans. 4, 9, and 12).
Examiner relies on, inter alia, the combination of Herickhoff and
Yoon to make up for the foregoing deficiency in each of Garrison, Ainley,
and Kadkade.9 Specifically, Examiner finds:

9 We recognize Examiner’s reliance on Yoshida to disclose that plants
experience compositional changes during freezing, “which result in
deleterious changes in the membranes of plants,” including the degradation
and reduction of phosphatidylcholine during freezing (Ans. 7, 10, and 14
(citing Yoshida 510 and Figs. 1–2)). We, however, find Yoshida
unnecessary to support a conclusion of obviousness on this record and will
not further discuss the reference. See In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976) (In affirming an obviousness rejection, the Board may rely
upon less than all the references cited by the Examiner.). For the foregoing
reasons, we do not address Appellant’s contentions regarding Yoshida (see
generally Appeal Br. 9 and 13–15).
Appeal 2020-006328
Application 15/070,005

6
Henrickhoff [sic10] teaches a media composition comprising a
cryopreservation agent selected from acetamide, DMSO,
glycerol, ethylene glycol, methanol, propylene glycol in
amounts ranging from about 2-20% (0025-0027), a cell
suspension media (0027) and a eukaryotic plant cell including
plant seeds and shoots (0040). The composition also comprises
lipids including phosphatidylcholine (0035) to protect the cells
from damage during cryopreservation (0032-0035) as well as
serve as a membrane stabilizer and antioxidant or radical
scavenger for specific cell types (0033, 0039) during
freezing/cryopreservation. Henrickhoff teach[es] adding lipids
in amounts of 20, 23 and 29% (0042-0044). It is noted that
Henrickhoff teaches a total lipid concentration of up to 29% and
teaches total lipid content is 20% egg yolk. However, egg yolk
comprises 80% phosphotidylcholine (see Yoon et al., 2002,
abstract) and therefore, one would have a reasonable
expectation of having a concentration of phosphatidylcholine in
the media composition of 0.05% of total volume of
composition.
(Ans. 4–5; see also id. at 9, and 12–13.)
Based on any of Garrison, Ainley, or Kadkade in combination with
Herickhoff and Yoon, Examiner concludes that, before the effective filing
date of the claimed invention, it would have been prima facie obvious
to add phosphatidylcholine at the concentration taught by
Henrickhoff to a media composition of Garrison, [Ainley, or
Kadkade,] because Henrickhoff teach the addition of lipids
including phosphatidylcholine (0035) to protect the cells from
damage during cryopreservation (0032-0035) as well as serve
as a membrane stabilizer and antioxidant or radical scavenger

10 The Examiner consistently refers to Herickhoff as “Henrickhoff,” but the
Examiner’s intended meaning is clear.
Appeal 2020-006328
Application 15/070,005

7
for specific cell types (0033, 0039) during
freezing/cryopreservation.
(Ans. 5; see also id. at 9–10 and 13.) More specifically, Examiner concludes
that it would have been prima facie obvious:
to add phosphatidylcholine to a media composition comprising
a eukaryotic cell, specifically a plant cell, a cryopreservation
agent and a cell suspension media as disclosed by Garrison,
[Ainley, or Kadkade,] because Henrickhoff teach the addition
of lipids including phosphatidylcholine (0035) to protect the
cells from damage during cryopreservation (0032-0035) as well
as serve as a membrane stabilizer and antioxidant or radical
scavenger for specific cell types (0033, 0039) during
freezing/cryopreservation.).
(Ans. 7; see also id. at 11 and 14.)
A reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Therefore, we are not persuaded by Appellant’s contention that “the only
working example in Herickhoff is for the cryopreservation of bull semen”
(Appeal Br. 8; see also Reply Br. 3; cf. Herickhoff ¶ 40 (Herickhoff
discloses that its cryopreservation composition may be added to a variety of
cells, including plant cells); see also id. ¶¶ 71, 88–89, 114, and 131–132).
Herickhoff discloses the modification of egg yolk lipid by sonication
prior to its addition to cryopreservation fluid to dilute cells (see Herickhoff
¶ 42). Herickhoff further discloses that “cryopreserved cells [are] negatively
affected” when non-modified egg yolk lipid is used in the cryopreservation
fluid (id. at ¶ 43). Because Appellant’s claim 1 does not exclude the use of
egg yolk lipid, which comprises phosphatidylcholine that has been modified
according to Herickhoff’s disclosure, we are not persuaded by Appellant’s
Appeal 2020-006328
Application 15/070,005

8
contentions regarding the use of non-modified egg yolk lipid (see Appeal Br.
8–9). For the foregoing reason, we are not persuaded by Appellant’s
contention that Herickhoff teaches away from the use of phosphatidylcholine
in a cryopreservation medium (see Appeal Br. 15–16).
Kadkade “relates to methods for the cryopreservation of plant cells
and to methods for the recovery of plant[] cells which have been
cryopreserved” (Kadkade ¶ 2). Therefore, we are not persuaded by
Appellant’s contention “that Kadkade teaches that methods and
compositions for use in animal cell cryopreservation (e.g., bull semen) are
not generally applicable for use in plant cell cryopreservation” and
“[a]ccording to Kadkade, the person having skill in the art would not be
compelled to use methods and compositions from a disclosure for the
cryopreservation of animal cells (e.g., bull semen) to be applied to plant cell
cryopreservation” (Appeal Br. 10).
As discussed above,
Henrickhoff teach[es] adding lipids in amounts of 20, 23 and
29% (0042-0044). It is noted that Henrickhoff teaches a total
lipid concentration of up to 29% and teaches total lipid content
is 20% egg yolk. However, egg yolk comprises 80%
phosphatidylcholine (see Yoon et al., 2002, abstract) and
therefore, one would have a reasonable expectation of having a
concentration of phosphatidylcholine in the media composition
of 0.05% of total volume of composition.
(Ans. 5, 9, and 12–13.) Therefore, we are not persuaded by Appellant’s
contention that any of Garrison, Ainley, or Kadkade in combination with
Herickhoff and Yoon fails to make obvious the specific concentration of
phosphatidylcholine in a medium composition comprising a plant cell
(Appeal Br. 11; see also id. at 13 (Appellant contends that “[n]owhere does
Herickhoff teach or suggest a specific concentration of phosphatidylcholine
Appeal 2020-006328
Application 15/070,005

9
to be added to the plant suspension cell or photo-autotrophic suspension
cell,” i.e. plant cells made obvious by any of Garrison, Ainley, or Kadkade)).
For the foregoing reasons, we are not persuaded by Appellant’s contention
that Examiner’s rejection involved the use of “Picking and choosing the
claim element of ‘phosphatidylcholine’ from the Herickhoff . . . reference[]”
(id. at 11–12).
As discussed above the combination of Herickhoff and Yoon makes
obvious the addition of phosphatidylcholine, in the concentration required
by Appellant’s claimed invention, to the plant cell cryopreservation media
made obvious by any of Garrison, Ainley, or Kadkade. Therefore, we are
not persuaded by Appellant’s contention that Herickhoff “discloses an
exhaustive genus and provides no guidance that would have led the skilled
artisan to the species recited in the claimed subject matter,” specifically the
“concentration of phosphatidylcholine in a medium composition for the
cryopreservation of ‘plant suspension cell lines’ or ‘photo-autotrophic
suspension cell lines’,” which as discussed above is made obvious by any of
Garrison, Ainley, or Kadkade (Appeal Br. 18–19).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s rejection is based on “mere conclusory
statements” or improper hindsight (Appeal Br. 14 and 17).
As discussed above, Examiner found that Herickhoff discloses the
addition of lipids including phosphatidylcholine, in an amount within the
scope of Appellant’s claim 1, to cryopreservation media to protect, inter
alia, plant cells, from damage during cryopreservation as well as serve as a
membrane stabilizer and antioxidant or radical scavenger during
freezing/cryopreservation. Therefore, we are not persuaded by Appellant’s
Appeal 2020-006328
Application 15/070,005

10
contention that the improved recovery and storage stability associated with
the use of a cryopreservation media comprising phosphatidylcholine in the
concentration required by Appellant’s claimed invention is a surprising
benefit not accounted for by the evidence relied upon by Examiner (see
Reply Br. 3–4).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 1–5, 7–9, 13, 14, and 16–18 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Garrison, Herickhoff,
Yoon, and Yoshida is affirmed.
The rejection of claims 1–5, 7–9, 13, 14, and 16–18 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Ainley, Herickhoff, Yoon,
and Yoshida is affirmed.
The rejection of claims 1–3, 7–9, 14, and 16–18 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kadkade, Herickhoff,
Yoon, and Yoshida is affirmed.

Appeal 2020-006328
Application 15/070,005

11
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18 112(b) Indefiniteness 18
1–5, 7–9, 13,
14, 16–18
103 Garrison,
Herickhoff, Yoon,
Yoshida
1–5, 7–9,
13, 14,
16–18

1–5, 7–9, 13,
14, 16–18
103 Ainley,
Herickhoff, Yoon,
Yoshida
1–5, 7–9,
13, 14,
16–18

1–3, 7–9, 14,
16–18
103 Kadkade,
Herickhoff, Yoon,
Yoshida
1–3, 7–9,
14, 16–18

Overall
Outcome
1–5, 7–9,
13, 14,
16–18

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