Ex Parte Holtkamp

Board of Patent Appeals and Interferences

Apr 23, 2008

10046968 (B.P.A.I. Apr. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Reinhold Holtkamp Sr.
____________

Appeal 2007-4136
Application 10/046,968
Technology Center 1600
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Decided: April 23, 2008
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Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-3 and 5-8.
Claim 4, the only remaining claim pending in this application, “is pending
and objected to, but would be allowable if written in independent form”
(App. Br. 3). Accordingly, claim 4 is not before us on appeal (see e.g., App.
Br. 24). We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2007-4136
Application 10/046,968

INTRODUCTION
The claims are directed to an African Violet plant (claims 1-3), a
method of producing an African Violet plant (claims 5 and 6), African
Violet seeds produced by the method of claim 5 (claim 7), and a method of
increasing the number of flower stems per leaf axil in an African Violet
plant (claim 8). Claims 1 and 5 are illustrative:
1. An African Violet plant comprising at least one leaf axil that
produces more than one flower stem.
5. A method of producing an African Violet plant having at least one
leaf axil with more than one flower stem and a second desirable trait, the
method comprising the steps of crossing, as the male or female parent, a first
African Violet plant that has at least one leaf axil with more than one flower
stem, with a second African Violet plant having a second desirable trait but
only 1 flower stem, with a second African Violet plant having a second
desirable trait but only 1 flower stem on any leaf axil, and selecting progeny
that have at least one leaf axil with more than one flower stem and the
second desirable trait.

The Examiner relies on the following prior art references to show
unpatentability:
Holtkamp, Sr. US PP13,786 P2 May 6, 2003
Holtkamp, Sr. US PP13,789 P2 May 6, 2003
Holtkamp, Sr. US PP13,818 P2 May 13, 2003
Holtkamp, Sr. US PP13,842 P2 May 20, 2003

Biology of Plants 134-35 (Fifth ed., Peter H. Raven, et al. eds., Worth
Publishers, New York, NY 1992)

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Hartl, Genetics 474-475 (Third ed., Jones and Bartlett Publishers, Boston,
MA 1994)

Van Harten, Mutation Breeding Theory and Practical Applications 111-137
(Cambridge University Press, New York, NY 1998)

The rejection as presented by the Examiner are as follows:
1. Claims 1-3 and 5-8 stand rejected under the enablement provision of 35
U.S.C. § 112, first paragraph.
2. Claims 1-3 and 7 stand rejected under the written description provision of
35 U.S.C. § 112, first paragraph .
We reverse.

DISCUSSION
“African Violet plants produce a flower stem that grows from the leaf
node or leaf axil” (Spec. 3). “The leaf node or leaf axil refer to the place
where a leaf joins the main axis of the plant” (id.). “[T]raditional breeding
techniques have failed to produce African Violet cultivars that stably
produce more than one flower stem from one leaf node or leaf axil” (id.).
Appellant discloses that a mutant plant “SB 4-2 Muflo” was obtained
which exhibits the multiflorescence trait (Spec. 8). “Multiflorescence means
that a leaf node may have at least 2 flower stems” (Spec. 2). Appellant
discloses that
‘SB 4-2 Muflo’ was crossed to diverse African Violet
plants to introgress the multiflorescence trait into diverse
genetic backgrounds. Seeds from the cross of ‘SB 4-2 Muflo’
with ‘P 6/6’ have been deposited with the American Type
Culture Collection (10801 University Blvd. Manassas, VA
20110-2209) and accorded ATCC Accession No. . . . [PTA-
3982].
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(Spec. 8; App. Br. Exhibit A.) “Plants from the seeds produced, from the
cross of ‘SB 4-2 Muflo’ with ‘P 6/6’ and deposited with the ATCC can be
crossed with any African Violet plant to produce progeny that exhibit the
multiflorescence trait” (Spec. 8). Claim 5 is drawn to such a method of
crossing - a method of producing an African Violet plant having at least one
leaf axil with more than one flower stem and a second desirable trait, the
method comprising the steps of crossing, as the male or female parent, a first
African Violet plant that has at least one leaf axil with more than one flower
stem, with a second African Violet plant having a second desirable trait but
only 1 flower stem, with a second African Violet plant having a second
desirable trait but only 1 flower stem on any leaf axil, and selecting progeny
that have at least one leaf axil with more than one flower stem and the
second desirable trait (Claim 5). Claim 1 is drawn to a plant that may result
from such a cross - an African Violet plant comprising at least one leaf axil
that produces more than one flower stem (Claim 1).

Enablement:
The Examiner acknowledges that
it would take a very low quantity of experimentation to create a
multi-florescent African violet plant by crossing ‘SB 4-2
Muflo’ or one of its progeny [(e.g., ‘SB 4-2 Muflo’ with ‘P
6/6’)] with an African violet plant that has other desirable traits,
as the multi-florescent trait discovered appears to be dominant
and stably transmissible.

(August 7, 2007 Office Action 31.)

1 This document is not paginated, accordingly we refer to page numbers as if
the document was paginated consecutively beginning with the first page.
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Nevertheless, the Examiner asserts that while Appellant's Specification
provides an enabling disclosure “for multiflorescent African Violet plants
derived from the deposited material and methods using the same, [it] does
not reasonably provide enablement for multi-florescent [sic] African violets
made by any other method” (August 7, 2007 Office Action 2). According to
the Examiner,
[i]t would take a very high quantity of experimentation to
produce an African violet plant comprising at least one leaf axil
that has the multi-florescent [sic] trait – applicant exposed
25,000 seeds to radiation and zero gravity for a period of six
years with the help of the space program to transform one (1)
plant with the multi-florescent [sic] trait.

(August 7, 2007 Office Action 3.)
However, as Appellant correctly points out,
the law makes clear that the specification need teach only one
mode of making and using a claimed invention. Engel Indus.
Inc. v. Lockformer Co., 946 F.2d 1528, 1533 . . . (Fed. Cir.
1991). See also Johns Hopkins Univ. v. Cellpro Inc. 152 F.3d
1342, 1361 . . . (Fed. Cir. 1998) (holding that the enablement
requirement is met if the description enables any mode of
making and using the invention.); Amgen, Inc. v. Hoechst
Marion Roussel, Inc., 126 F. Supp. 2d 69 . . . (D. Mass. 2001)
(holding that there is no requirement that the specification
enable every mode for making and using the claimed products).

(Reply Br. 5.)
On this record, the starting material (seeds from ‘SB 4-2 Muflo’
crossed with ‘P 6/6’) has been deposited and the Examiner admits that
performing a cross with this starting material and another African Violet
plant is routine in this art (August 7, 2007 Office Action 3). Accordingly,
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we reverse the rejection of claims 1-3 and 5-8 under the enablement
provision of 35 U.S.C. § 112, first paragraph.

Written Description:
According to the Examiner
[t]he claims encompass all African violet plants with a
particular inflorescence architecture, regardless of its origin, all
African violet plants produced by cross breeding with plants
exhibiting a particular inflorescence architecture, and all seeds
or plants grown from some deposited seeds. Plants have many
phenotypical traits, which vary independently, so millions of
possible phenotypes are possible and claimed. The
specification discloses only a few specific multi-florescent [sic]
African Violet plants but not the heterozygous population
claimed.

(August 7, 2007 Office Action 3.) The Examiner asserts that “[t]he limited
disclosure in the specification is not deemed sufficient to reasonably convey
to one skilled in the art that Applicants [sic] were in possession of the huge
genera recited in the claims at the time the application was filed” (id.).
According to the Examiner, Appellant “should not be permitted to claim all
multi-florescent [sic] African Violets produced by any method, as it is
impossible to predict whether or not multi-florescent [sic] African Violets
could be developed by an alternate, non-obvious method during the patent
term of the instant claims” (id.).
“The ‘written description’ requirement serves a teaching function, . . .
in which the public is given ‘meaningful disclosure in exchange for being
excluded from practicing the invention for a limited period of time.’”
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 922 (Fed.
Cir. 2004) (citation omitted). Another “purpose of the ‘written description’
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requirement is . . . [to] convey with reasonable clarity to those skilled in the
art that, as of the filing date [ ], [the applicant] was in possession of the
invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991). See also Enzo Biochem Inc. v. Gen-Probe Inc., 296 F.3d 1316, 1329
(Fed. Cir. 2002). The requirement is satisfied when the Specification “set[s]
forth enough detail to allow a person of ordinary skill in the art to
understand what is claimed and to recognize that the inventor invented what
is claimed.” Rochester, 358 F.3d at 928. Whether or not a Specification
satisfies the requirement is a question of fact, which must be resolved on a
case-by-case basis. Vas-Cath, 935 F.2d at 1562-63. Further, it is the
Examiner’s “initial burden [to] present[ ] evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the
invention defined by the claims.” In re Wertheim, 541 F.2d 257, 263 (CCPA
1976).
The claims require an African Violet plant comprising at least one leaf
axil that produces more than one flower stem (Claim 1), at least 3 flower
stems (Claim 2), at least 4 flower stems (Claim 3), and African Violet seeds
produced by the method of claim 5, wherein the seeds produce a plant
comprising at least one leaf axil that has more than one flower stem (Claim
7). Thus the only phenotypic requirement of the claimed African Violet
plants and seeds is that they have, or produce a plant that has, more than one
flower stem – e.g. they exhibit the multiflorescence trait.
Appellant's Specification discloses that “[p]lants from the seeds
produced, from the cross of ‘SB 4-2 Muflo’ with ‘P 6/6’ and deposited with
the ATCC can be crossed with any African Violet plant to produce progeny
that exhibit the multiflorescence trait” (Spec. 8). The Examiner asserts,
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however, that “[t]he problem with the appealed claims is that Appellant has
shown possession of only ‘SB 4-2 Muflo’ and its progeny, rather than all
multiflorescent African Violets having this particular characteristic” (Ans.
13). We are not persuaded. The Examiner offers no persuasive evidence on
this record to support the assertion that Appellant was not in possession of
the genus of plants and seeds as claimed.
Further, we find the Examiner’s position on this record inconsistent.
On one hand, the Examiner asserts that the evidence in the Specification
runs contrary to Appellant's assertion that the multiflorescence trait is
dominant (Ans. 11); on the other the Examiner asserts that “the multi-
florescent trait discovered appears to be dominant and stably transmissible”
(August 7, 2007 Office Action 3). Notwithstanding the Examiner’s
inconsistent position, the Examiner concludes that one would not be able to
“predict the percentage of multiflorescent African Violets arising from
crosses with ‘SB 4-2 Muflo’ and its progeny” (Ans. 12). However, as
Appellant explains “there is no statutory requirement than an invention
operate at a specified efficiency or predictable percentage” (Reply Br. 12).
We agree. Accordingly, we are not persuaded by the Examiner’s argument.
Lastly, the Examiner asserts that “no written description is present in
the specification for claims 2 and 3, which are directed to plants where the
leaf axil displays ‘at least 3’ or ‘at least 4’ flower stems” (Ans. 11). We
note, however, that Appellant's Specification discloses that
[t]he instant invention provides African Violet plant
selections that have 2, 3, 4, 5 or more flower stems at a leaf
axil. African Violet plants that have 2, 3, 4, 5 or more flower
stems at each leaf axil carry the multiflorescence trait. Also
provided is a method of producing new African Violet
selections that produce 2, 3, 4, 5 or more flower[ ] stems at a
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leaf axil by crossing a first plant selection carrying the
multiflorescence trait with a second plant selection that does not
carry the multiflorescence trait but exhibits a second trait of
interest, and selecting progeny that exhibits multiflorescence
and the second trait of interest.

(Spec. 3-4.) Further, contrary to the Examiner’s assertion, Appellant's
Figure 1 “shows [an African violet plant with] three flower stems, all
coming out of one single leaf axil, each one in a different stage of
development” (Spec. 5; Fig. 1).
For the foregoing reasons we find that the Examiner failed to meet her
initial burden of presenting the evidence or argument necessary to sustain
the rejection. Accordingly, we reverse the rejection of claims 1-3 and 7
under the written description provision of 35 U.S.C. § 112, first paragraph.

CONCLUSION
In summary, we reverse the rejections of record.

REVERSED

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