Ex Parte KIM et alDownload PDFPatent Trials and Appeals BoardMay 8, 201914327905 - (D) (P.T.A.B. May. 8, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/327,905 07/10/2014 WooTaekKIM 28997 7590 05/10/2019 Harness Dickey (St. Louis) 7700 Bonhomme, Suite 400 ST. LOUIS, MO 63105 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. 6680L-00004 l -US 4165 EXAMINER STANKOVIC, BRATISLAV ART UNIT PAPER NUMBER 1663 NOTIFICATION DATE DELIVERY MODE 05/10/2019 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): stldocket@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte WOO TAEKKIM, JAE HWAN HWANG, and DONG HYE SE0 1 Appeal2018-003541 Application 14/327,905 Technology Center 1600 Before ERICA A. FRANKLIN, JAMES A. WORTH, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's rejection of claims to a method for improving tolerance to a salt stress in a plant which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the Real Party in Interest as Industry-Academic Cooperation Foundation, Yonsei University. Appeal Br. 3. 2 We have considered and herein refer to the Specification of July 10, 2014 ("Spec."); Final Office Action of Feb. 1, 2017 ("Final Act."); Appeal Brief of Aug. 17, 2017 ("Appeal Br."); Examiner's Answer of Dec. 19, 2017 ("Ans."); and Reply Brief of Feb 19, 2018 ("Reply Br."). Appeal2018-003541 Application 14/327,905 STATEMENT OF THE CASE Abiotic stresses, such as high salt, can limit growth and development of crop plants. Spec. 1. The Specification describes a method for transforming plants to improve salt tolerance. Id. at 3. Claims 1-3, 6, 9, and 10 are on appeal. 3 Claim 1 is representative of the rejected claims and reads as follows: 1. A method for preparing transformed Arabidopsis thaliana exhibiting improved tolerance to a salt stress, the method comprising: (a) introducing a transformation vector into the AtSRG 1 gene, wherein the transformation vector inhibits an expression of a nucleotide sequence encoding the amino acid sequence consisting of SEQ ID N0:3 into aArabidopsis thaliana cell; (b) obtaining the transformed Arabidopsis thaliana exhibiting improved salt stress tolerance from the Arabidopsis thaliana cell of (a); and ( c) growing the transformed Arabidopsis thaliana under a salt stress condition. Appeal Br. 1 7. Claims 1-3, 6, 9, and 10 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Cho4 in view of Salk. 5 3 Claims 7 and 8 are pending in the application but have been withdrawn from consideration. Final Act. 1. 4 Seok Keun Cho et al., ARABIDOPSIS PUB22 AND PUB23 AS HOMOLOGOUS U-Box E3 UBIQUITIN LIGASES THAT PLAY COMBINATORY ROLES IN RESPONSE TO DROUGHT STRESS, 20 The Plant Cell 1899 (2008) ("Cho"). 5 The Arabidopsis Information Resource, POLYMORPHISM: SALK_012549, last modified Oct 8, 2009, https://www.arabidopsis.org/servlets/Tair0bject?id=39621&type=locus ("Salk"). 2 Appeal2018-003541 Application 14/327,905 OBVIOUSNESS Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner's conclusion that the subject matter of the claims would have been obvious over Cho combined with Salk. The Examiner finds that Cho teaches that U-box containing proteins function as E3 Ub ligases which participate in a plant's response to drought stress. Final Act. 4. The Examiner finds that Cho teaches that PUB30 is a U-box containing protein and that PUB30 corresponds to At3g498IO. Id. The Examiner finds that Cho teaches that plants having T-DNA insertion mutations of PUB22 and PUB23 were more drought resistant than pants without the mutations. Id. The Examiner finds that Salk discloses a line of Arabidopsis thaliana containing a T-DNA mutation which encodes for a protein with E3 ubiquitin activity that is involved in regulation of salt stress. Id. at 5. The Examiner finds that it would have been obvious to obtain a mutant containing PUB30 knockout T-DNA mutation and test the plant for salt tolerance as taught by Cho. Id. at 5---6. Appellants argue that Salk is not prior art to the present claims as the Examiner has not established that the publication date of Cho is before the filing date of the present application. Appeal Br. 5-7. Appellants also argue that the references do not teach all of the elements of the claims including introducing into a cell of the Arabidopsis thaliana a transformation vector which inhibits expression of a nucleotide sequence encoding for the amino acid sequence consisting of SEQ ID N0:3. Id. at 7-8. Appellants also 3 Appeal2018-003541 Application 14/327,905 contend that the Examiner improperly construed the claims by ignoring the limitation that the method produces a plant with improved tolerance to salt stress. Appeal Br. 9--10. Principles of Law [T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A proper § 103 analysis requires "a searching comparison of the claimed invention-including all its limitations-with the teachings of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Analysis We have considered the arguments advanced by the Examiner and Appellants and conclude that the Examiner has not established a prima facie case of obviousness. The Examiner has not pointed to any teaching in the references which teaches the step of introducing a transformation vector into the AtSRG 1 gene, wherein the transformation vector inhibits an expression of a nucleotide sequence encoding for the amino acid sequence consisting of SEQ ID N0:3 into a Arabidopsis cell. Cho discloses a series of experiments to determine what effect PUB22 and PUB23 genes have on drought tolerance. Cho, Abstract. Plants overexpressing PUB22 and PUB23 were compared against plants with loss- 4 Appeal2018-003541 Application 14/327,905 of-function for PUB22 and PUB23. Id. The loss-of-function plants were double knockout mutations. Id. at 1899-1900. Cho teaches that the double knockout mutants were generated by crossing PUB22 with PUB23 as described in the prior art. Id. at 1911 ("Plant Materials and Growth Conditions"). Thus Cho does not teach introducing a transformation vector to create the mutants tested. Salk simply describes an analysis of Arabidopsis thaliana lines with one or more TDNA insertion elements. Salk 1. Nothing in Salk describes how the mutations were introduced into the plants. As demonstrated above, the references, either alone or in combination, do not teach or suggest all of the steps of the claimed method. Since the references do not teach or suggest all of the limitation of claim 1 a prima facie case of obvious cannot be established and the rejection cannot be affirmed. Conclusion of Law We conclude that a preponderance of the evidence does not support the Examiner's conclusion that the subject matter of the claims would have been obvious over Cho combined with Salk. SUMMARY We reverse the rejection under 35 U.S.C. § 103(a). REVERSED 5 Copy with citationCopy as parenthetical citation