Ex Parte Christensen et al

Patent Trial and Appeal Board

Sep 26, 2016

11779266 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111779,266 07/17/2007
127226 7590 09/28/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Cory CHRISTENSEN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2750- l 670PUS3 1889
EXAMINER
KUMAR, VINOD
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORY CHRISTENSEN, JACK OKAMURO, SHING KWOK, and
ROGER PENNELL1
Appeal2014-008411
Application 11/779,266
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and RICHARD J. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of producing a plant or increasing cold tolerance in a plant. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is CERES, INC.
(Appeal Br. 1.)
Appeal2014-008411
Application 11/779,266
STATEMENT OF THE CASE
Claims on Appeal
Claims 2, 5, 21, 22, and 27-30 are on appeal. 2 (Claims Appendix,
Appeal Br. 15-16.) Claim 2 is illustrative and reads as follows:
2. A method of producing a plant, said method comprising growing a plant
cell comprising an exogenous nucleic acid, said exogenous nucleic acid
comprising a regulatory region operably linked to a nucleotide sequence
encoding a polypeptide having 95 percent or greater sequence identity to
SEQ ID NO: 20, and wherein a plant produced from said plant cell has
increased cold tolerance as compared to a control plant that does not
comprise said nucleic acid.
Examiner's Rejection
Claims 2, 5, 21, 22, and 27-30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kim, 3 Yamada,4 and Tomes. 5 (Ans. 2.)
FINDINGS OF FACT
We adopt as our own the Examiner's findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. Kim teaches three ribosomal protein genes (cDNA clones), isolated
from soybean, that were induced by low-temperature treatment. (Kim
Abstract.)
2 Claims 9-16 and 23-26 are withdrawn from consideration as being drawn
to a non-elected invention. (Non-Final Act. 3, dated Sept. 15, 2010.)
3 Kim et al., Molecular cloning of low-temperature-inducible ribosomal
proteins from soybean, 55 Journal of Experimental Botany 399, 1153-55
(2004) ("Kim").
4 NCBI, GenBank Sequence Accession No. AYll 7196 (Sept. 18, 2002)
("Yamada").
5 Tomes et al., US 5,990,387, issued Nov. 23, 1999 ("Tomes").
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Application 11/779,266
FF 2. Kim teaches that one of those genes (GmRPL37) encodes a protein
that has high homology with the 60S ribosomal protein L37 of Arabidopsis
thaliana (AF370216). (Kim Abstract; 1154, Table 1.)
FF 3. Kim teaches that "[t]he induction of ribosomal protein genes might
enhance the translation process or help the proper ribosome assembly and
functioning under low-temperature conditions." (Kim 1154, col. 1---col. 2.)
FF 4. The Examiner finds that Yamada teaches "a nucleic acid sequence
encoding 60S ribosomal protein L3 7 which has 100% sequence identity to
instant SEQ IDNO: 20" (AY117196). (Ans. 6, citing Yamada 1-2.)
FF 5. Tomes teaches a method of transforming plant cells and regenerating
the transformed cells into a whole, fertile plant, including the use of an
expression vector to introduce an exogenous gene into the plant cells.
(Tomes col. 1, 1. 65---col. 2, 1. 67.)
ISSUE
\Vhether a preponderance of the evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
DISCUSSION
The Examiner concluded that, given Kim's teachings (FF 1-3), a
person of ordinary skill in the art would have been
motivated to over-express a nucleic acid sequence encoding any
plant 60S ribosomal protein L3 7, including [the] Yamada [] 60S
ribosomal protein L3 7 in any plant species ... using any method
of plant transformation, including Tomes ... for the purpose of
obtaining a transgenic plant with improved cold tolerance, and
thus arrive at [Appellants'] invention with a reasonable
expectation of success.
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Application 11/779,266
(Ans. 7.) The Examiner also concluded that it would have been obvious to a
person of ordinary skill in the art "to choose from a finite number of
predictable cDNA sequences encoding plant 60S ribosomal protein L37 that
were known in the prior art" and obvious to try to over-express them in a
transgenic plant. (Id.) In addition, the Examiner concluded that it would
have been obvious to a person of ordinary skill in the art "to screen and
select for transgenic plants with increased cold tolerance" because that
would have been "the ultimate useful goal." (Id. at 8.)
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellants have not overcome that
prima facie case.
Claims 2 and 22
Appellants argue that, based on the Examiner's rejection under the
"obvious to try" framework, the prior art did not teach a "finite number of
identified, predictable solutions." (Appeal Br. 8-12, citing KSR, 500 U.S. at
421.)
Finite Number of Solutions
Appellants argue that, based on the size of the Arabidopsis genome,
"more than about 2600 genes are regulated during cold acclimation," that is
a "very large number of choices" of genes, and that nothing in Kim suggests
"that only three genes are involved in cold responses." (Appeal Br. 10;
Reply Br. 2.) Appellants also argue that Kim only presents data regarding
RNA transcription, and "[t]here is no data presented that transformants were
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Application 11/779,266
produced and screened for increased cold tolerance." (Appeal Br. 10; see
also Reply Br. 3.) Thus, according to Appellants, there is "no teaching in
the art to direct one skilled in the art to any 'finite number of identified'
sequences, and certainly not to Appellants' claimed sequences." (Appeal Br.
10.)
We are not persuaded. As the Examiner points out, the issue is not the
number of plant genes upregulated under cold or freezing stress conditions,
or whether more than one type of plant gene was implicated in cold
tolerance. (Ans. 9-11.) Rather, the issue is "whether there was any reason
based on prior art teachings that would have motivated one of ordinary skill
in the art to try expressing (obvious to try, emphasis added) a 60S ribosomal
protein L37 ... in a plant to produce [a cold] stress tolerant transgenic
plant." (Id. at 9-10.) Moreover, in this case, "there is a finite number of
plant 60S ribosomal protein L37 ... and [Kim] clearly teach[ es] the cold-
tolerant property associated with plant 60S ribosomal protein L37." (Id. at
11.)
Predictability of Solutions
Appellants argue that "it does not predictably follow from the prior art
that upregulation of an endogenous gene under a stress condition equates to
a phenotype that tolerates stress conditions when the endogenous gene is
overexpressed in a transgenic plant." (Appeal Br. 11.) In support of this
contention, Appellants point to the Cheng article, 6 regarding the ribosomal
SOL34 protein, as showing "that [transgenic plants] overexpressing [the
6 Cheng et al., Overexpression of Soybean (Glycine max (L.) Meer.) L34
Gene Leads to Reduced Survival to Cold Stress in Transgenic Arabidopsis,
Plant Mol. Biol. Rep. 28, 41--48 (2010) ("Cheng").
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Application 11/779,266
SOL34 gene] were more sensitive to cold stress than wild-type plants." (Id.)
Appellants also argue that Kim "does not discloses the sequence of his
protein" and that "a comparison of the AF370216 protein and the Yamada[]
AYl 17196 protein (aka SEQ ID NO: 20) ... shows that these two proteins
have as little as 22% sequence identity and at best only 30% identity." (Id.
11-12.) Based on the foregoing, Appellants argue that the obviousness
rejection is "the antithesis of a 'finite number of identified, predictable
solutions.'" (Id. at 12.)
We are not persuaded. As the Examiner points out, the Cheng
ribosomal protein SOL34 is a different class of ribosomal protein than 60S
ribosomal protein L37. (Ans. 12-13.) As such, it is inappropriate "to
compare the teachings of Kim[] with the teachings of Cheng." (Id. at 13.)
The Examiner also notes that, while there is no dispute that Kim does not
teach the amino acid sequence of the GmRPL37 protein, the "RPL37 cDNA
sequence prepared from cold-stressed soybean cells and encoding ribosomal
protein L37" was available in the prior art,7 and published prior to Kim's
publication date of March 12, 2004. (Ans. 14.)
As further stated by the Examiner, the issue is not whether Kim's
protein is highly homologous or identical in sequence to SEQ ID NO: 20;
rather, "the issue is whether there was any teaching in the state of the prior
art which would have led one of ordinary skill in the art to conclude that 60S
ribosomal L37 protein(s) are induced under cold stress and act as positive
regulator of cold stress response." (Ans. 15.) In this case, Kim teaches that
7 The Examiner cites to and reproduces GenBank sequence accession No.
A Y 453395, published Mar. 8, 2004.
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60S ribosomal proteins L37 are induced in plants under cold stress, and that
such induction "enhances the translational process and thus help[s] proper
ribosome functioning under low-temperature stress conditions." (Ans. 16;
FF 1-3.) Accordingly, it would have been obvious "to overexpress a nucleic
acid sequence encoding any plant 60S ribosomal protein L37, including
Yamada[] ribosomal protein L37[,] in any plant species, using any method
of plant transformation, including Tomes." (Ans. 16.)
Appellants take issue with Kim's use of the word "might" with regard
to the disclosed genes and low-temperature conditions. (Reply Br. 3--4; FF
3.) However, Appellants are reminded that the proper standard is a
reasonable expectation of success and not absolute predictability. See In re
0 'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) ("Obviousness does not
require absolute predictability of success. Indeed, for many inventions that
seem quite obvious, there is no absolute predictability of success until the
invention is reduced to practice."). Based on the art of record and the
Examiner's analysis thereof, we discern no error in the Examiner's finding
of a reasonable expectation of success. 8 (Ans. 7.)
Claim 5
Appellants rely on the same arguments as set forth above, and those
arguments are unpersuasive for the reasons set forth above. In addition,
Appellants argue that "claim 5 recites the step of 'introducing' the
8 We also acknowledge, but are unpersuaded by, Appellants' use of the word
"hindsight." (Appeal Br. 10; Reply Br. 4.) Appellants point to no evidence
that any of the Examiner's findings were beyond the level of ordinary skill at
the time of the invention or could have been taken only from Appellants'
Specification. See In re McLaughlin, 443 F.2d 1392, 1395(CCPA1971).
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Application 11/779,266
exogenous nucleic acid into a plant cell." (Appeal Br. 12.) According to
Appellants, "[t]he cited prior art does not suggest actively introducing the
recited exogenous nucleic acid into a plant cell in order to increase cold
tolerance of a plant." (Id.)
We are not persuaded. Transforming plant cells or plants with an
exogenous nucleic acid, followed by subsequent screening and selection of
transformed plants, was routine in the art of plant transformation as taught
by Tomes. (Ans. 17; FF 5.) Moreover, the transformation included the step
of introducing an exogenous nucleic acid into the plant cell. (Ans. 18; see
also Tomes col. 2, 11. 2--42.)
Claim 21
Appellants rely on the same arguments as set forth above, and those
arguments are unpersuasive for the reasons set forth above. In addition,
Appellants argue that claim 21 recites an "introducing" step, and the step of
"selecting" plants, "i.e., a step for specifically screening for cold tolerant
plants." (Appeal Br. 13.)
We are not persuaded. As noted above, transforming plant cells or
plants, followed by subsequent screening and selection, was routine in the
art of plant transformation as taught by Tomes. (Ans. 17; FF 5.) Moreover,
as stated by the Examiner, "selection of a transgenic plant with a useful
phenotype, such as [a] cold-tolerant property[,] would have been the
ultimate useful goal." (Ans. 8.)
CONCLUSION OF LAW
A preponderance of evidence of record supports the Examiner's
conclusion that claims 2, 5, 21, and 22 are obvious under 35 U.S.C. § 103(a).
Claims 27-29 were not argued separately and fall with claim 2. Claim 30,
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which is dependent on both claims 2 or 21, was not argued separately and
falls with claims 2 and 21.
SUMMARY
We affirm the rejection of all claims on appeal.
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
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