Ex Parte Hartle et al

Board of Patent Appeals and Interferences

Dec 18, 2008

10982252 (B.P.A.I. Dec. 18, 2008)

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.
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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
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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).
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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
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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).
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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
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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:
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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
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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
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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.
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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.
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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)
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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).

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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
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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
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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
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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.
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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
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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

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