Ex Parte Hanes

Patent Trial and Appeal Board

Jul 31, 2017

12876291 (P.T.A.B. Jul. 31, 2017)

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.
12/876,291 09/07/2010 Mitchell E. Hanes 72425-US-REG-D-NAT-1 1007
22847 7590 08/02/2017
SYNGENTA CROP PROTECTION LLC
PATENT DEPARTMENT
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
EXAMINER
KRUSE, DAVID H
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
global.patents @ syngenta. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITCHELL E. HANES1
Appeal 2015-006459
Application 12/876,291
Technology Center 1600
Before TAWEN CHANG, RYAN H. FLAX, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
Pelargonium hortorum plant having certain anthocyanin content, which have
been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
According to the Specification,
[f] lower color is predominantly due to two types of pigment:
flavonoids and carotenoids. Flavonoids contribute to a range of
colors from yellow to red to blue. Carotenoids impart a
reddish-orange or yellow tinge and are commonly the only
pigment in yellow or orange flowers. The flavonoid molecules
1 Appellant identifies the real party in interest as Syngenta Participations
AG. (Appeal Br. 2.)
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Application 12/876,291
which make the major contribution to flower color are the
anthocyanins[,] which are . . . derivatives of cyanidin,
delphinidin, petunidin, peonidin, malvidin and pelargonidin.
(Spec. 15.) The invention relates to certain geranium plants, Pelargonium
hortorum — interspecific, having dark red to burgundy or darker pigmented
flower petals. {Id. at 12.) The Specification states that it is anthocyanins
that “impart a range of dark red to burgundy to the Pelargonium hortorum —
interspecific flower petals.” {Id.)
Claims 1 and 21—23 are on appeal. Claims 1 and 23 are representative
and reproduced below:
1. A Pelargonium hortorum plant having an anthocyanin
content of at least about 26 mg per gram petal dry weight.
23. A Pelargonium hortorum plant having a pelargonidin
concentration less than 7.3 mg-g'1 dry weight of petal.
(Br. 8 (Claims App.).)
The Examiner rejects claims 1,21, and 22 under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Craig ’379,2 as evidenced by
Simonton3 and Sood.4 (Ans. 2.)
The Examiner rejects claim 23 under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Craig ’219,5 as evidenced by Simonton and Sood. {Id.
at 3.)
2 Craig, U.S. Plant Patent 6,379, issued Nov. 8, 1988 (“Craig ’379”).
3 W. Simonton, Physical Properties of Zonal Geranium Cuttings, 35
Transactions oftheASAE 1899 (1992) (“Simonton”).
4 Shweta Sood et al., Physiological and biochemical studies during flower
development in two rose species, 108 Scientia Horticulturae 390 (2006)
(“Sood”).
5 Craig, U.S. Plant Patent 6,219, issued July 12, 1988 (“Craig ’219”).
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Application 12/876,291
DISCUSSION
Issue
The Examiner has rejected claims 1,21, and 22 under pre-AIA
35 U.S.C. § 102(b) as anticipated by Craig ’379, as evidenced by Simonton
and Sood. The Examiner has rejected claim 23 under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Craig ’219, as evidenced by Simonton and Sood.
The same issue is dispositive for both rejections, and we discuss them
together.
The Examiner finds that Craig ’379 discloses two Pelargonium
hortorum cultivars, “719” and “Bruni,” and their petal anthocyanin content
in the form of mg anthocyanidin 3,5-diglucoside per gram fresh weight.
(Ans. 3.) The Examiner takes notice that the average moisture content of the
petals of Pelargonium hortorum is 80% to 90%, based on Simonton’s
disclosure that the tissues of Pelargonium hortorum have an average
moisture content of 90% and Sood’s disclosure that “the moisture content of
rose petals range between an average of 80% to 90% relative to the
developmental stage [of the plant].” {Id. at 2.) Accordingly, the Examiner
finds that Craig ’379 discloses a Pelargonium hortorum plant meeting the
limitation of claim 1 because, among other things, the Bruni cultivar’s
disclosed anthocyanin content per gram petal fresh weight corresponds to
38.73 to 77.47 mg (i.e., at least 26 mg) anthocyanin per gram petal dry
weight where the moisture content of the petal is 80% to 90%. (Id.)
With respect to claim 23, the Examiner finds that Craig ’219 discloses
a Pelargonium hortorum cultivar, “728.” {Id. at 4.) Based on the 728
cultivar’s disclosed pelargonidin content per gram petal fresh weight and the
finding that the average moisture content of a Pelargonium hortorum petal is
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Application 12/876,291
80% to 90% as discussed above, the Examiner finds that the 728 cultivar has
a pelargonidin concentration of 0.51 to 1.03 mg (i.e., less than 7.3 mg) per
gram dry weight of petal and anticipates claim 23. {Id. at 4.)
Appellant contends that the Examiner has not provided “a basis or
technical reasoning that would reasonably support the determination that
the . . . characteristics recited [in the claims] would ‘necessarily flow’ from
the teachings of Craig.” (Br. 5—6.)
Appellant does not separately argue the claims in the rejection of
claims 1,21, and 22 as anticipated by Craig ’379, and we limit our analysis
to claim 1 with respect to this rejection. The issues with respect to these
rejections are whether the evidence of record supports the Examiner’s
findings that claims 1 and 23 are anticipated, respectively, by Craig ’379 and
Craig ’219.
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 3—8; Ans. 2—9) and agree with
the Examiner that claims 1 and 23 are anticipated by Craig ’379 and Craig
’219, respectively, as evidenced by Simonton and Sood. We address
Appellant’s arguments below.
Appellant has not disputed that a cultivar disclosed in Craig ’379 and
Craig ’219 would anticipate claims 1 and 23, respectively, if the moisture
content of a Pelargonium hortorum (i.e., zonal geranium) flower petal is on
average 80% to 90%. Appellant argues, however, that the Examiner’s
anticipation rejections are based on am “impermissibl[e] extension] of
Simonton’s disclosure of Pelargonium hortorum main stem moisture content
to include petals” and that Sood’s disclosure, which relates to the moisture
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Application 12/876,291
content of rose petals rather than the petals of a geranium plant, also cannot
support such “erroneously assumed petal moisture content of Pelargonium
hortorum plants.” (Br. 5.)
We are not persuaded. While the Examiner bears the initial burden of
presenting a prima facie case of unpatentability, In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992), the predecessor to our review court has
explained, with respect to the burden required to overcome an inherency
rejection, that
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
In re Best, 562 F,2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart,
439 F.2d 210 (CCPA 1971)). The Court further explained that “[tjhis
burden ... is applicable to product and process claims reasonably considered
as possessing the allegedly inherent characteristics” and that the fairness of
this burden “is evidenced by the PTO’s inability to manufacture products or
to obtain and compare prior art products.” Id. at 1255.
In this case, we are persuaded the Examiner has provided sufficient
technical reasoning for finding that the Bruni cultivar inherently meets the
limitation of “having an anthocyanin content of at least about 26 mg per
gram petal dry weight” while the 728 cultivar inherently meets the limitation
of “having a pelargonidin concentration less than 7.3 mg-g'1 dry weight of
petal.” In particular, although Simonton and Sood do not explicitly disclose
the water moisture content of Pelargonium hortorum petals, their combined
disclosure of the moisture content of Pelargonium hortorum stems and rose
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Application 12/876,291
petals establishes a reasonable basis for believing that the water moisture
content of Pelargonium hortorum petals would be sufficiently similar (i.e.,
between about 80% and 90%) such that the cultivar(s) disclosed in Craig
’379 and Craig ’219 necessarily has an amount of anthocyanin (claim 1) or
pelargonidin (claim 23) falling within the claimed range.
Given the above, Appellant is required to provide persuasive
argument or evidence to show that the prior art cultivars do not, in fact,
possesses the claimed characteristics. We find that Appellant has not met
this burden. Appellant has not, for instance, provided any evidence that the
moisture content of Pelargonium hortorum petals is so dissimilar from that
of the stems or rose petals that the anthocyanin and pelargonidin
concentrations of fresh petals in the cultivars disclosed respectively in Craig
’379 and Craig ’219 would not necessarily fall within the claimed ranges.6
Neither has Appellant provided any direct testing data to show that the prior
art cultivars do not have the claimed anthocyanin or pelargonidin
concentrations.
Accordingly, we affirm the Examiner’s rejection of claim 1 as
anticipated by Craig ’379, as evidenced by Simonton and Sood. Claims 21
and 22, which were not separately argued, fall with claim 1. 37 C.F.R.
6 Appellant points out that there were “statistically significant differences”
between the moisture content of cuttings from the top (91.0%) and the
bottom (89.6%) of the Pelargonium hortorum stems reported in Simonton.
(Br. 5.) However, given the particular disclosed anthocyanin and
pelargonidin concentrations in the fresh petals of the Bruni and the 728
cultivars, Appellant fails to show that the difference between the moisture
content of the different parts of the plant may be so large that the cultivars
would not have the claimed anthocyanin and pelargonidin amounts per gram
of dry petal weight.
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Application 12/876,291
§ 41.37(c)(l)(iv). We further affirm the Examiner’s rejection of claim 23 as
anticipated by Craig ’219, as evidence by Simonton and Sood, for the same
reasons.
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1 and 21—23.
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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