Ex Parte Hartle et alDownload PDFBoard of Patent Appeals and InterferencesDec 18, 200810982252 (B.P.A.I. Dec. 18, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JEFFREY E. HARTLE and WILLIAM C. CARLSON ____________ Appeal 2008-4802 Application 10/982,252 Technology Center 3600 ____________ Decided: December 18, 2008 ____________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and MELANIE L. McCOLLUM, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge LEBOVITZ. Dissenting Opinion filed by Administrative Patent Judge McCOLLUM. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the final rejection of claims 1-4 and 10-19. Jurisdiction is under 35 U.S.C. § 6(b). We affirm. Appeal 2008-4802 Application 10/982,252 STATEMENT OF THE CASE The claims are directed to a manufactured seed and a method for improving germination using the seed. Claims 1-4 and 10-19 stand rejected under 35 U.S.C. § 103(a) as obvious over Hartle et al. (U.S. Pat. No. 6,119,395, Sept. 19, 2000) and Carlson et al. (U.S. Pat. No. 5,236,469, Aug. 17, 1993). We select claims 1, 3, and 15 as representative. Claims 1, 2 (upon which claim 3 depends), 3, and 15 read as follows: 1. A method for improving germination of a manufactured seed, comprising inserting a plant embryo having a shoot end into a shoot restraint comprising an interior surface, wherein at least one of the interior surface of the shoot restraint and the plant embryo is contacted with a hydrated gel before or after inserting the plant embryo into the shoot restraint. 2. The method of Claim 1, at least one of the interior surface of the shoot restraint and the plant embryo is contacted with a hydrated gel before inserting the plant embryo into the shoot restraint. 3. The method of Claim 2, wherein the interior surface of the shoot restraint is contacted with the hydrated gel before inserting the plant embryo into the contacted shoot restraint. 15. A manufactured seed comprising a shoot restraint and a plant embryo having a shoot end, wherein at least the shoot end of the plant embryo is disposed within the shoot restraint and wherein a hydrated gel is disposed between the shoot restraint and the plant embryo. ISSUE ON APPEAL The principal issue in this rejection is whether persons of ordinary skill in the art would have had reason to contact the interior surface of the 2 Appeal 2008-4802 Application 10/982,252 shoot restraint or embryo inside the shoot restraint as described by Hartle with an oxygenated gel as taught by Carlson. PRINCIPLES OF LAW In making an obviousness determination, the following factors must be taken into consideration: (1) the scope and contents of the prior art; (2) the differences between the prior art and the claimed subject matter; (3) the level of skill in the pertinent art; and (4) evidence of secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In addition, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “During [patent] examination, the examiner bears the initial burden of establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005). One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of “unexpected results,” i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). To establish unexpected results, the claimed subject matter must be compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); see also In re Johnson, 747 F.2d 1456, 1461 (Fed. Cir. 1984); In re Merchant, 575 F.2d 865, 869 (CCPA 1978). Unexpected results must be “commensurate in scope with the degree of protection sought by the claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). 3 Appeal 2008-4802 Application 10/982,252 FINDINGS OF FACT (FF) In making an obviousness determination, the scope and content of the prior art must be ascertained. Graham, 383 U.S. at 17. Thus, we first turn to the disclosures of the Hartle and Carlson patents which form the basis of the obviousness rejection. THE HARTLE PATENT 1. Hartle describes a manufactured seed which comprises a manufactured seed coat (252), a hydrated gel (258) contained within the seed coat, and shoot restraint (260) within the hydrated gel for holding the plant embryo (Hartle, at col. 14, l. 27 to col. 15, l. 18; at col. 11, ll. 39-45; see Hartle’s Figures 1A and 1B for numbered elements 252, 258, and 260). 2. Hartle states that the “plant tissue is preferably disposed relative to, and preferably surrounded by or in contact with, a hydrated gel so as to allow the transfer of liquid, dissolved solutes, and gases from the gel to the plant tissue” (Hartle, at col. 2, ll. 29-32). 3. The hydrated gel can comprise various constituents, including nutrients, antibiotics, plant growth regulators, and oxygen (Hartle, at col. 9, l. 46 to col. 11, l. 38). 4. “The seed coat 252 can be filled with the hydrated gel 258 by any of a number of means that will [be] apparent to those of ordinary skill in the art” (Hartle, at col. 15, l. 27-29). 5. A shoot restraint with an open end and closed end is provided to orient the seed and prevent it from becoming entrapped in the hydrated gel (Hartle, at col. 15, l. 1-7; at col. 16, l. 22-52). 6. The growing end of the elongating seed shoot pushes against the sides and closed end of the shoot restraint (Hartle, at col. 16, l. 29-35); in this 4 Appeal 2008-4802 Application 10/982,252 manner, the shoot end is urged out of the tube and out of the hydrated gel (id.). 7. Hartle states that the “shoot restraint can be achieved via a number of ways” and lists several different examples (Hartle, at col. 11, l. 58 to col. 12, 43). 8. In the examples, Hartle describes the shoot restraint as being formed from a cavity in the hydrated gel, and then lining it with porous substances, including gel powder (Hartle, at col. 11, l. 65; at col. 12, ll. 3-5, 9-13, and 27-39), and “glassy, metal, elastomeric, ceramic, clay, plaster, cement” materials (id. at col. 11, l. 65 to col. 12, l. 2). 9. Hartle also teaches that the shoot end can be dipped in the porous substance (Hartle, at col. 12, ll. 14-16). THE CARLSON PATENT 10. In summarizing the background of its invention, Carlson states that hydrated gels supplemented with plant hormones and other compounds beneficial to plant growth have been shown to improve germination of plant embryos in some species (Carlson, at col. 1, l. 52 to col. 2, l. 7). 11. Carlson describes an “analog of botanic seed” which comprises a plant embryo “encapsulated, or at least in contact with, a hydrated oxygenated gel” (Carlson, at col. 2, ll. 46-50). 12. The gel can further comprise nutrients and other compounds beneficial for plant growth (Carlson, at col. 2, ll. 50-55). 13. Carlson teaches that there is need for elevated concentrations of oxygen in the gel (Carlson, at col. 2, ll. 13-45; at col. 2, l. 61 to col. 3, l. 2; at col. 3, ll. 40-46; see Ans. 3-4). 5 Appeal 2008-4802 Application 10/982,252 14. Carlson examined the effect of varying the amount of surface area of embryos exposed to air and found that complete encapsulation of an embryo in a gel is an impediment to germination without providing oxygen (Carlson at col. 19, ll. 35-38; at col. 20, ll. 46-49 and 59-62; see Table II). 15. Carlson states that the plant embryo “need[s]” to “contact the hydrated oxygenated gel” (Carlson, at col. 3, 41-42). “It is important that the embryo have contact with the gel” (id. at col. 11, ll. 34-36). 16. Carlson describes different methods of contacting a plant embryo with a hydrated gel (Carlson, at col. 11, 29-45). 17. The analog botanic seed (embryo and hydrated gel) can be further encased in rigid shell to provide protection “from physical injury, desiccation, and other adverse environmental forces” (Carlson, at col. 12, ll. 17-21). 18. The shell “preferably also has an opening 46 toward which the radicle 48 of the embryo 12 is oriented so as to facilitate protrusive growth of the radicle 48 from the analog 40 during germination. Otherwise, the radicle could become trapped inside the analog 40 and be prevented from successfully germinating” (Carlson, at 12, ll. 40-46; see Carlson’s Figure 2A). Differences between the prior art and the claimed invention After the scope and content of the prior art has been determined, the differences between the prior art and the claimed invention must be ascertained. Graham, 383 U.S. at 17. The following findings are relevant to this determination. 19. The difference between Hartle and claims 1 and 15 is that Hartle does not describe a hydrated gel in contact with an interior surface of a shoot 6 Appeal 2008-4802 Application 10/982,252 restraint or in contact with a plant embryo disposed within the shoot restraint as required by the claims. 20. However, Carlson describes a plant embryo in contact with a hydrated gel. Level of ordinary skill in the art In addition to the scope and content of the prior art, an obviousness determination requires consideration of the level of ordinary skill in the art. Graham, 383 U.S. at 17. With respect to this factor, we make the following factual findings: 21. Persons of ordinary skill in the art were familiar with different methods for: manufacturing artificial seeds (i.e., Hartle’s manufactured seed method and Carlson’s analog botanic seed method), filling a seed coat with gel (FF4), manufacturing shoot restraints (FF8), and contacting a plant embryo with a hydrated gel (FF11, 16). 22. Thus, based on the evidence before us, we find that the level of skill in the art of manufacturing artificial seeds was high, and included making determinations as to production methods (FF21) and how to provide hydrated gel to the embryo (FF4, 10, 16). Reason to combine Hartle and Carlson After ascertaining the prior art, the differences between the prior art and the claimed invention, and the level of skill in the art, the next step is to identify a reason as to why persons of ordinary skill in the art would have been prompted to combine the prior art to have made the claimed invention. KSR, 127 S. Ct. at 1741. The Examiner makes the following factual findings with regard to the reason to combine Hartle and Carlson: 7 Appeal 2008-4802 Application 10/982,252 23. The Examiner states that it “would have been obvious to one of ordinary skill in the art to modify the plant embryo of Hartle . . . with the plant embryo oxygenated gel coating of Carlson . . . to provide sufficient amount of oxygen to the embryo to prevent the embryo from becoming oxygen starved” (Ans. 3-4). 24. The Examiner finds: Carlson establishes motivation and expectation of success by teaching that it is known to have an oxygenated hydrated gel in direct contact or close proximity with the plant embryo to prevent oxygen starvation and to promote healthy germination and storage of the embryo (Carlson Col. 3 le [line] 40-45). Placing the oxygenated coat on a portion of the embryo and inserting it into the shoot restraint of Hartle or vice-versa placing the embryo in the oxygenated gel contained inside the shoot restraint would have been obvious to one of ordinary skill in the art to ensure sufficient levels of oxygen are available to the embryo. The combination is made based on the evidence provided in the cited art. (Ans. 5.) ANALYSIS Claims 1, 2, and 10-14 The difference between Hartle and claim 1 is that Hartle does not teach that either “the interior surface of the shoot restraint” or “the plant embryo” is “contacted with a hydrated gel before or after” the plant embryo is inserted into the shoot restraint as recited in claim 1. However, Carlson teaches the importance of having a hydrated oxygen gel in contact with the plant embryo to improve germination and maintain a suitable oxygen concentration (FF13-15). Thus, we agree with the Examiner that persons of ordinary skill in the art, experienced in the manufacture of artificial seeds (FF21-22), would have had reason to place an oxygenated hydrated gel in 8 Appeal 2008-4802 Application 10/982,252 Hartle’s seed coat (FF23-24). Having provided a logical reason for combining the cited Hartle and Carlson patents, we conclude that sufficient evidence has been provided to establish prima facie obviousness of claim 1. See Kumar, 418 F.3d at 1366; KSR, 127 S. Ct. at 1741. Consequently, we turn to Appellants’ rebuttal arguments and evidence. Appellants contend that Hartle “teaches directly away from the claimed invention” because it emphasizes the importance of separating hydrated gel from the interior surface of the shoot restraint in order to prevent the shoot from becoming entrapped in the gel (App. Br. 11; see also App. Br. 13). This argument does not convince us that the Examiner erred in the obviousness determination. Hartle utilizes a shoot restraint to orient the elongating seed shoot and prevent it from becoming trapped in the surrounding gel as the shoot grows (FF5-6). We do not understand how including gel in the restraint would lead to shoot entrapment, as Appellants contend, when the side and closed end walls of the restraint would still retain their stated function to urge the elongating shoot out from the restraint’s open end (FF6). Consistent with this, Carlson teaches an embodiment in which a hydrated gel with a plant embryo is surrounded by a rigid shell with an “opening 46 . . . to facilitate protrusive growth of the radicle [plant embryo] 48 from the analog 40 during germination. Otherwise, the radicle could become trapped inside the analog 40 and be prevented from successfully germinating” (FF18; Carlson, at col. 12, ll. 40-46; see Carlson’s Figure 2A). In other words, Carlson describes a structure with a similar function to a shoot restraint which also comprises a hydrated gel. Carlson specifically states that this structure is intended to prevent the plant from 9 Appeal 2008-4802 Application 10/982,252 becoming entrapped inside. Consequently, we find that the preponderance of the evidence of record does not support Appellants’ argument that Hartle teaches away from claim 1. In addition to this, Hartle expressly teaches that the plant tissue in its manufactured seed is preferably in contact with hydrated gel “so as to allow the transfer of liquid, dissolved solutes, and gases from the gel to the plant tissue” (FF2; Hartle, at col. 2, ll. 29-32). Carlson also describes the “need” and importance for the embryo to contact the gel (FF15). Simply put, placing the embryo in contact with hydrated and oxygenated gel is taught by the prior art and a logical scientific step to enhance seed germination and achieve efficient diffusion of nutrients into the plant tissue. The Dissent states that neither Carlson’s nor the Examiner’s rationale provides a sufficient reason to dispose an oxygenated hydrated gel inside Hartle’s shoot restraint because Carlson indicates that contact with the oxygenated gel can be via a water-permeable bridge and Hartle states that the gel outside the restraint can be oxygenated (infra at p. 18-19). However, neither of these teachings deny the known benefit of contacting the plant embryo directly with hydrated oxygenated gel (see FF15), irrespective of what material is chosen as the shoot restraint (see FF8). A “finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). In other words, an invention may be suggested by the prior art and therefore obvious, even if inferior, less desirable, or simply alternative to embodiments that would be made by following other prior art suggestions. 10 Appeal 2008-4802 Application 10/982,252 Appellants also argue that Carlson teach away from the claimed invention because its results “indicate that complete encapsulation of the shoot end cotyledons in the gel was associated with high percentages of abnormal development and trapped cotyledons (Col. 20, Table II, and Col. 22, Table III, for example)” (App. Br. 11). This argument is not persuasive. The results in Table II appear to establish that the complete encapsulation of an embryo in a gel is an impediment to germination unless oxygen is provided (Carlson at col. 19, ll. 35-38; at col. 20, ll. 46-49 and 59-62; see Table II; FF14). Thus, we do not agree that Table II teaches that complete encapsulation is a detriment. To the contrary, it explicitly suggests that were an embryo completely encapsulated, oxygen would be needed for optimal germination. Furthermore, claim 1 is not limited to a completely encapsulated embryo. Rather, claim 1 simply recites that either “the interior surface of the shoot restraint” or “the plant embryo” is “contacted with a hydrated gel.” Thus, Appellants appear to be arguing that the prior art teaches away from a limitation which is not required by claim 1. As to the results in Carlson’s Table III, Appellants do not explain how this teaches away from complete encapsulation. As this is not a limitation of claim 1, and for the reasons addressed above, we do not find this disclosure any more persuasive that the Examiner erred. On page 12 of their Appeal Brief, Appellants state that the cited references fail to teach all elements of the invention. However, while Appellants have identified an element lacking from Hartle, the Examiner had found this element in Carlson and a proper reason for adding it to Hartle’s structure (FF23-24). Consequently, this argument is not persuasive. 11 Appeal 2008-4802 Application 10/982,252 On page 19 of the Specification, Appellants argue it is demonstrated that germination of Douglas-fir somatic embryos was improved when hydrated gel was contacted with the gel restraint surface and plant embryo, respectively, as compared germination in the gel’s absence (Spec. 19: 5-17 (Table 4); App. Br. 14). We have considered these results but are not persuaded they are sufficient to rebut the Examiner’s prima facie case. Unexpected results must be “commensurate in scope with the degree of protection sought by the claimed subject matter.” Harris, 409 F.3d at 1344. In this case, the results reported in the Specification are achieved with one embryo species (Douglas-fir) and one concentration and type of nutrient medium (NM1) (Spec. 17-18). However, claim 1 is not limited to a particular plant species nor does it require that the hydrated gel contain nutrients, let alone those in NM1 medium. To establish unexpected results, the claimed subject matter must be compared with the closest prior art. Baxter, 952 F.2d at 392; see also Johnson, 747 F.2d at 1461; Merchant, 575 F.2d at 869. The comparison described in the Specification is with an embryo in a shoot restraint alone versus an embryo in contact with a gel within a shoot restraint. However, Carlson teaches the importance of embryo contact with gel (FF15). Thus, it is not evident whether Appellants have chosen the closest prior art. In addition, we note that Appellants state the results would not have been “predicted from the prior art” (App. Br. 14). However Appellants have not addressed whether the improvement described on page 19 of the Specification would have been predicted in view of the prior art teaching about the importance of contact between gel and the plant embryo (FF2, 15) 12 Appeal 2008-4802 Application 10/982,252 and the general knowledge in the prior art about the benefit of hydrated gels for plant germination (FF10). Appellants assert that “Hartle et al. teaches that the cotyledons should not be in direct contact with the hydrated gel” (App. Br. 15). We do not agree. As pointed out above, Hartle actually states that contact with the gel is preferred to permit transfer solutes and gases into the plant tissue (FF2). In examples, Hartle describes forming the restraint with a porous substance or dipping the shoot end in it (FF8-9). Thus, it is evident from reading Hartle that persons of skill in the art would not be dissuaded from contacting the shoot with the hydrated gel. According to Appellants, [b]ecause Hartle et al. teaches that the shoot restraint is preferably porous, one of skill in the art would not be motivated to place the hydrated gel inside the shoot restraint . . . because this proposed modification would defeat the purpose of having a porous shoot restraint, which already allows the plant tissue access to moisture, gases and nutrients. (Reply Br. 3.) This argument is unpersuasive. The Examiner clearly based the rejection on the motivation to have utilized an oxygenated gel in the shoot restraint (FF23-24). Therefore, even in the presence of a porous material, there would still be a reason to utilize an oxygenated hydrated gel for the benefits described by Carlson. For the foregoing reasons, we affirm the rejection of claim 1. Claims 2 and 10-14 fall with claim 1 because separate reasons for their patentability were not provided. 37 C.F.R. § 41.37(c)(1)(vii). 13 Appeal 2008-4802 Application 10/982,252 Claims 3 and 4 Since claims 3 and 4 were argued as a group, we select claim 3 as representative. Claim 3 states that “the interior surface of the shoot restraint is contacted with the hydrated gel before inserting the plant embryo into the contacted shoot restraint.” The Examiner states Hartle as modified teaches a list of ways to make the shoot restraint and including the concept of coring a cavity into a gel for an embryo insertion, but does not limit it to the list (Hartle Col. 11 line 58-60). Hartle as modified is silent on the interior surface of the shoot restraint is contacted with the hydrated gel before inserting the plant embryo into the contacted shoot restraint. However, it would have been obvious to one of ordinary skill in the art to modify the teachings of Hartle at the time of the invention since the modification is merely reversing the steps for ease of automated assembly line manufacturing and does not present a patentably distinct limitation. (Ans. 4.) Appellants argue that “the Examiner has not provided any basis as to why the proposed modification would ease automated assembly line manufacturing” (App. Br. 17). The Examiner has the better argument. Persons of ordinary skill in the art were familiar with different methods for: manufacturing artificial seeds (i.e., Hartle’s manufactured seed method and Carlson’s analog botanic seed method), filling a seed coat with gel (FF4), manufacturing shoot restraints (FF8), and contacting a plant embryo with a hydrated gel (FF17). Thus, based on the evidence before us, we find that the level of skill in the art of manufacturing artificial seeds was high, and included making determinations as to production methods (FF21). For this reason, we agree with the Examiner that altering the steps in which contact with the gel is 14 Appeal 2008-4802 Application 10/982,252 achieved would have been commensurate with the level of skill in the art. Furthermore, Hartle’s teaching of dipping a shoot in a porous substance (FF9) reasonably suggests, when combined Carlson, contacting with a hydrated gel prior to inserting the embryo into the shoot restraint as recited in claim 3. Claims 15-19 Claim 15 is directed to a manufactured seed in which “at least the shoot end of the plant embryo is disposed within the shoot restraint and wherein a hydrated gel is disposed between the shoot restraint and the plant embryo.” The Examiner rejected claim 15 for the same reasons as for claim 1. To the extent that Appellants’ arguments are the same as for claim 1, we rely on our analysis as set forth above. In addition to those arguments, Appellants further contend that “Carlson et al., Figures 4 and 5 clearly show the shoot ends of the embryos growing into the gel” (App. Br. 18). However, Appellants do not explain how these figures detract from Hartle’s teaching of the advantages of a shoot restraint (FF5, 6) and Carlson’s additional teachings about using a shell with an opening to prevent the shoot from becoming trapped in the gel (FF18). We affirm the rejection of claim 15. Claims 16-19 were not separately argued and therefore fall with claim 15. CONCLUSION OF LAW We conclude that persons of ordinary skill in the art would have had reason to contact the interior surface of the shoot restraint or embryo inside 15 Appeal 2008-4802 Application 10/982,252 the shoot restraint as described by Hartle with an oxygenated gel as taught by Carlson. For this reasons and for those articulated above, we affirm the rejection of claims 1-4 and 10-19 as obvious over Hartle and Carlson. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006). AFFIRMED cdc 16 Appeal 2008-4802 Application 10/982,252 McCOLLUM, Administrative Patent Judge, dissenting. I disagree with the Majority’s conclusion that the Examiner has set forth a prima facie case that claims 1 and 15 would have been obvious over Hartle in view of Carlson. Claim 1 is directed to a method for improving germination of a manufactured seed. The method comprises contacting “at least one of the interior surface of the shoot restraint and the plant embryo . . . with a hydrated gel before or after inserting the plant embryo into the shoot restraint.” Consistent with the majority opinion (see FF19), I agree that Hartle does not disclose a method comprising this contacting step.1 Claim 15 is directed to a manufactured seed comprising a shoot restraint, a plant embryo having a shoot end disposed within the shoot restraint, and a hydrated gel disposed between the shoot restraint and the plant embryo. It is undisputed that Hartle does not disclose a hydrated gel disposed between the shoot restraint and the plant embryo. 1 Instead, I agree with Appellants that the Examiner’s statement that the rejection of claim 1 “can actually be viewed as a 35 USC 102(b) rejection” (Ans. 8) is based on a mischaracterization of Hartle (Reply Br. 3). In particular, I agree with Appellants that Hartle is not disclosing that the shoot end breaks through tube 260 and thereby comes into contact with the hydrated gel. Instead, Hartle specifically states that the “closed end 264 on the tube 260 . . . prevents the shoot end or cotyledons 268 growing inside the tube 260 from penetrating the tube and expanding into the gel 258” (Hartle, col. 16, ll. 22-26). In addition, Hartle states that, “[a]s the shoot elongates during germination, it impinges upon the closed end of the tube, which prevents entrapment of the shoot and urges the radicle to emerge from the open end of the porous tube” (id. at col. 11, ll. 54-57). Thus, I agree with Appellants that Hartle discloses a process in which the plant tissue emerges out of the open end 263 of tube 260, rather than breaking through the closed end 264 into the gel. 17 Appeal 2008-4802 Application 10/982,252 The Examiner argues, however, that it would have been obvious “to modify the plant embryo of Hartle . . . with the plant embryo oxygenated gel coating of Carlson . . . to provide sufficient amount of oxygen to the embryo to prevent the embryo from becoming oxygen starved” (Ans. 3-4). Based on the Examiner’s reasoning, I conclude that the Examiner has set forth a prima facie case that it would have been obvious to oxygenate Hartle’s hydrated gel. In fact, Hartle discloses oxygenating its hydrated gel (Hartle, col. 10, l. 65, to col. 11, l. 1, & col. 14, ll. 53-55). However, I agree with Appellants that the Examiner has not set forth a sufficient reason why one of ordinary skill in the art would have disposed this oxygenated hydrated gel inside Hartle’s shoot restraint. As argued by Appellants (Reply Br. 2-3), Hartle’s shoot restraint separates the hydrated gel itself from the plant embryo while allowing the beneficial components of the gel, including oxygen, to pass from the gel to the plant embryo (Hartle, col. 11, ll. 39-57, & col. 16, ll. 22-29). In particular, Hartle discloses that the shoot restraint “permits transfer of water, nutrients, and oxygen from the gel to the . . . plant tissue” (id. at col. 11, ll. 49-51). Although Carlson discloses placing the plant embryo in “contact” with the hydrated oxygenated gel (FF15), Carlson indicates that this “contact” can be direct or “via an intervening water-permeable ‘bridge’ such as filter paper” (Carlson, col. 11, ll. 34-36). Thus, given that Hartle’s seed already includes a relatively large mass of hydrated gel outside its water- permeable shoot restraint and discloses oxygenating this hydrated gel and that the shoot restraint permits oxygen transfer from the gel to the plant embryo, I do not agree that Carlson or the Examiner’s rationale provides a sufficient reason to dispose an oxygenated hydrated gel inside Hartle’s shoot 18 Appeal 2008-4802 Application 10/982,252 restraint. Therefore, I do not agree that the Examiner has set forth a prima facie case that it would have been obvious to dispose an oxygenated hydrated gel between the shoot restraint and the plant embryo, as recited in claim 15, or to contact the interior surface of the shoot restraint or the plant embryo “with a hydrated gel before or after inserting the plant embryo into the shoot restraint,” as recited in claim 1. The Majority states that, “even in the presence of a porous material, there would still be a reason to utilize an oxygenated hydrated gel for the benefits described by Carlson” (supra 13). As discussed above, I do not dispute that it would have been obvious to use an oxygenated hydrated gel. I merely dispute that the Examiner has provided an adequate reason why it would have been obvious to dispose this gel inside Hartle’s shoot restraint. For these reasons, I would reverse the rejection of claims 1 and 15 and of claims 2-4, 10-14, and 16-19, which depend from either claim 1 or claim 15. Accordingly, I dissent from the Majority’s decision to affirm the rejection of these claims. DISSENTING WEYERHAEUSER COMPANY INTELLECTUAL PROPERTY DEPT., CH 1J27 P.O. BOX 9777 FEDERAL WAY WA 98063 19 Copy with citationCopy as parenthetical citation