Ex Parte Gupta et al

Patent Trial and Appeal Board

Aug 30, 2016

11548937 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111548,937 10/12/2006
28624 7590 09/01/2016
WEYERHAEUSER COMPANY
INTELLECTUAL PROPERTY DEPT., CH 1127
P.O. BOX 9777
FEDERAL WAY, WA 98063
FIRST NAMED INVENTOR
Pramod K. Gupta
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.
25564A 6161
EXAMINER
HWU,JUNE
ART UNIT PAPER NUMBER
1661
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
patents@weyerhaeuser.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRAMOD K. GUPTA, DIANE G. HOLMSTROM,
BONNIE LARSON, SUSAN D. RAYFIELD,
andANTHONYP. SWANDA1
Appeal2015-006499
Application 11/548,937
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
JOHN G. NEW, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
embryo development method. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1---6 and 8-11 are pending and on appeal (App. Br. 3).
Claim 1 is representative and reads as follows (emphasis added):
1 Appellants identify the real party in interest as Weyerhaeuser NR Company
(App. Br. 1 ).
Appeal2015-006499
Application 11/548,937
1. A method for developing conifer, cotyledonary, somatic
embryos, the method comprising:
(a) culturing conifer embryogenic cells in, or on, a maintenance
medium to form conifer pre-cotyledonary somatic embryos;
(b) providing a porous membrane, wherein the porous membrane
consists essentially of a material selected from the group consisting of nylon
membrane, nylon fiber, wire mesh, plastic mesh and polymeric fibers that do
not absorb liquid development medium;
( c) disposing the conifer pre-cotyledonary somatic embryos
cultured in accordance with step (a) on the porous membrane;
( d) contacting intermittently a portion of the conifer pre-
cotyledonary somatic embryos disposed on the porous membrane with the
liquid development medium, wherein the conifer pre-cotyledonary somatic
embryos disposed on the porous membrane are not completely immersed in
the liquid development medium; and
( e) culturing the conifer pre-cotyledonary somatic embryos on the
porous membrane for a period of time sufficient to produce conifer,
cotyledonary, somatic embryos from the conifer pre-cotyledonary somatic
embryos.
Claims 1---6 and 8-11 stand rejected under 35 U.S.C. § 103(a) as
obvious Gupta2 in view ofLevin3 and Becwar4 (Ans. 2).
The Examiner relies on Gupta for teaching "a method of developing
Douglas fir cotyledonary embryo in a bioreactor" (id. at 3). In particular, the
Examiner finds that Gupta teaches:
The initiation of the embryo suspensor mass (ESM) was cultured
onto a solid medium then the ESM cultures were maintained in
liquid medium . . . . ESM is an immature embryo at predome and
dome stages which is before the development of cotyledon (pre-
2 Pramod K. Gupta & Roger Timmis, Conifer Somatic Embryo Production
From Liquid Culture, Plant Biotechnology & In Vitro Biology in the 21st
Century 49-52 (1999).
3 Levin, US 5,141,866, issued Aug. 25, 1992.
4 Becwar et al., US 5,506,136, issued Apr. 9, 1996.
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Application 11/548,937
cotyledonary). In the bioreactor, the ESM was placed on a pad
soaked with liquid development medium . . . . The ESM in the
bioreactor was larger and grew better than the shake flasks . . . .
Weyerhaeuser, in Gupta et al, used a bioreactor in developing
Douglas fir cotyledonary embryo . . . . In the Weyerhaeuser
bioreactor of Gupta et al, the liquid development medium [was]
pumped ... semi-continuously (intermittently) from the lower
surface of the pads to the embryos on top (not completely
immersed) . . . . After a few hours, the liquid development
medium was pumped out into a reservoir at regular intervals until
mature cotyledonary embryos developed . . . . The intermittent
cycle produced good quality embryos.
(Id.) However, the Examiner finds that Gupta does "not teach contacting a
portion of the conifer pre-cotyledonary somatic embryos disposed on the
porous membrane that is essentially of nylon membrane ... which does not
absorb liquid development medium" (id. at 4).
The Examiner relies on Levin for teaching "a process of plant tissue
culture, wherein the plant tissue vessel contains a flat nylon screening
element ... , wherein liquid medium is in contact with a portion of the plant
tissue disposed on the screening element" (id.). In particular, the Examiner
finds that Levin discloses:
The liquid medium flowed through the screening element while
the plant tissue lies on top . . . . The passing of the liquid medium
continues until the level of the liquid medium reaches the level
of the screen which produces a thin layer on top of the medium
base ... , wherein the plant tissues are not completely immersed
in the liquid medium. The screening element has a preferred
mesh size of 500-700 microns .... The screening element is a
nylon screen ... which does not absorb the liquid medium. The
use of a nylon screen allowed the liquid medium to flow easily
to the plant tissue disposed on the nylon screen which would
allow the liquid medium to contact the lower surface of plant
tissue disposed on the nylon screen. The even distribution of
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Application 11/548,937
liquid medium to the plant tissue promoted growth and
development of the plant tissue .... Furthermore, the plant tissue
of Levin was not completely immersed in liquid medium which
provided optimal growth and development of the plant tissue.
(Id.) The Examiner also finds that "Levin taught that his invention of semi-
automatic plant tissue propagation may be applicable to the propagation of
forest tree[ s] ... which would include conifer trees" (id. at 5).
The Examiner relies on Becwar for teaching features of dependent
claims (id.).
The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify the method of
Gupta et al so as to include a porous membrane that consists of
nylon membrane which does not absorb the liquid development
medium as taught by Levin because Levin taught that the nylon
screen support is sterilizable and thus could be reused[,] ... the
use of nylon membrane would save time and money[, and] ...
the plant tissue disposed on the nylon membrane would allow the
liquid medium to reach a portion of the plant tissue which
promoted good growth and development of the plant tissue to
plantlet ....
(Id. at 6.)
FINDINGS OF FACT
1. Gupta "describes somatic embryo development and maturation
of Douglas-fir ... from liquid medium" (Gupta 49).
2. In particular, Gupta discloses: "Embryonal suspensor mass
(ESM) is initiated from immature embryos at predome and dome stages
(before development of cotyledons) of Douglas-fir. . . . ESM cultures are
maintained in liquid medium." (Id.)
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Application 11/548,937
3. Gupta also discloses:
[W]e have used a bioreactor for cotyledonary embryo
development of Douglas-fir. In the bioreactor, the medium was
supplied semi-continuously from the lower surface of the pads to
the developing embryos on the top. Development medium was
pumped from the reservoir into the bioreactor until it made
contact with the lower surface of the pads. Medium was
absorbed in the pads by capillary action, and after few hours,
medium was pumped out to the reservoir. This was repeated at
regular intervals until mature cotyledonary embryos developed.
Higher yields of good quality embryos were produced in this
bioreactor.
(Id. at 51-52.)
4. Levin "relates to a process for plant tissue culture propagation"
(Levin, col. 1, 11. 11-12).
5. Levin discloses that "the process may make projects such as
clonal propagation of forest trees ... feasible" (id. at col. 17, 11. 13-15).
6. Levin also discloses:
a plant tissue culture vessel provided with a substantially flat fine
screening element elevated above the inner bottom surface of the
vessel, said vessel being sterilizable, substantially sealable and
adapted for growing plant tissue cultures supported on the
surface of said screening element in optimal contact with culture
medium filling said vessel to the level of said screening element,
said screening element being sized to permit the passage of said
culture medium therethrough while retaining said tissue culture
on the surface thereof.
(Id. at col. 17, 11. 31--42.)
7. In addition, Levin discloses:
When a mixture of plant tissue and medium is dispensed
to the presently proposed vessel the medium passes through the
screen while the plant tissue is held by the screen. When the
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Application 11/548,937
mixture is added until the level of the medium reaches the level
of the screen, the plant material lies on an even layer on top of a
medium base ....
(Id. at col. 18, 11. 26-31.)
8. In particular, Levin discloses "an autoclavable polycarbonate
vessel 25 fitted with a fine 600 micron mesh autoclavable nylon screen 26
one cm above the inner bottom surface 27 of the vessel" (id. at col. 18,
11. 56-58).
9. Levin also discloses:
In operative use, medium/plant tissue mixture is evenly
dispensed on the surface of the screen 26. When the medium
reaches the level of the screen-dispensing is terminated. The
vessel is thus filled in such a manner that an even layer of plant
tissue rests on/and in good contact with a medium base and the
vessel is then sealed with its cover 30.
(Id. at col. 19, 11. 3-9.)
ANALYSIS
In view of the foregoing findings of fact (FF), we conclude that the
Examiner has set forth a prima facie case that the method of claim 1 would
have been obvious (Ans. 3---6).
Appellants argue, however, that Gupta "simply does not teach or
suggest a method for developing conifer, cotyledonary, somatic embryos
that includes contacting intermittently a portion of the conifer pre-
cotyledonary somatic embryos disposed on the porous membrane with the
liquid development medium" (App. Br. 10). In particular, Appellants argue:
The soaked, absorbent pads are not likely to dry between regular
applications of liquid development medium because they are re-
soaked for hours at a time, at regular intervals, and because the
pads are sealed within the bioreactor .... As a result, the soaked,
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absorbent pads retain a significant amount of liquid development
medium, and the somatic embryos are in constant and continuous
contact with liquid development medium that is provided to the
somatic embryos through the soaked, absorbent pads.
(Id. at 11.) We are not persuaded.
First, we note that Gupta specifically states that "the medium was
supplied semi-continuously from the lower surface of the pads to the
developing embryos on the top" (FF 3). Appellants have not provided
sufficient evidence that Gupta's method instead provides "constant and
continuous contact with liquid development medium" (App. Br. 11 ). "An
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
In addition, Gupta discloses: "Development medium was pumped
from the reservoir into the bioreactor until it made contact with the lower
surface of the pads ... , and after few hours, medium was pumped out to the
reservoir. This was repeated at regular intervals until mature cotyledonary
embryos developed." (FF 3.) Levin discloses a "vessel 25 fitted with a fine
600 micron mesh autoclavable nylon screen 26 one cm above the inner
bottom surface 27 of the vessel" and "filling said vessel to the level of said
screening element" (FF 6 & 8). Whether or not the porous membrane of the
present invention completely dries between contacting, we conclude that
Appellants have not adequately explained why the Examiner's combination
fails to suggest "contacting intermittently a portion of the ... embryos ...
with the liquid development medium," as recited in claim 1 (App. Br. 16).
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Application 11/548,937
Appellants also argue that the "cited references, alone or in
combination, provide no expectation that conifer pre-cotyledonary somatic
embryos could successfully develop given intermittent contact with liquid
development medium" (id. at 14). Moreover, Appellants argue:
[W]hile the cited references may suggest the use of a nylon
membrane support, none of the cited references teach or suggest
that a nylon membrane that does not absorb development
medium could be successfully used in a method where the
conifer pre-cotyledonary somatic embryos themselves are only
intermittently contacted with liquid development medium.
Accordingly, any benefits derived from the use of a nylon
membrane, as postulated by the Examiner, are irrelevant if the
conifer pre-cotyledonary somatic embryos do not thrive because
they are deprived of constant and continuous contact with the
liquid development medium.
(Id. at 15.) We are not persuaded.
As noted above, Gupta discloses that "the medium was supplied semi-
corztirzuously from the lower surface of the pads to the developing embryos
on the top" and that "good quality embryos were produced" (FF 3 (emphasis
added)). Appellants have not adequately explained why this fails to suggest
intermittent contacting, nor have Appellants adequately shown that there
would not have been a reasonable expectation for success.
We acknowledge Appellants' argument stating:
Unlike an absorbent pad, . . . a porous, non-absorbent nylon
membrane would permit the liquid development medium to drain
away from the pre-cotyledonary somatic embryos disposed
thereon and the embryos would not be in constant and continuous
contact with the liquid development medium. It would be clear
to one skilled in the art that any droplet of medium that does
remain in contact with the nylon membrane after draining would
be quickly depleted of its nutrients.
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(Reply Br. 3.) However, although the type of membrane may affect the
frequency and/or duration with which the contacting needs to occur,
Appellants' argument does not persuade us that there would not have been a
reasonable expectation for success.
CONCLUSION
The evidence supports the Examiner's conclusion that Gupta, Levin,
and Becwar suggest the method of claim 1. We therefore affirm the
obviousness rejection of claim 1. Claims 2---6 and 8-11 have not been
argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
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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