Ex Parte Kohno

Board of Patent Appeals and Interferences

Jul 17, 2009

10007186 (B.P.A.I. Jul. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YASUSHI KOHNO,
Appellant
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Appeal 2009-003985
Application 10/007,1861
Technology Center 3600
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Decided:2 July 17, 2009
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Before CAROL A. SPIEGEL, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
Appellant appeals under 35 U.S.C. § 134 from an Examiner's final
rejection of all pending claims, claims 1, 4, and 5. We have jurisdiction
under 35 U.S.C. § 134. We REVERSE.

1 Application 10/007,186 ("the 186 application" or "Spec.") was filed 5
November 2001. The real party in interest is AGRITECNO YAZAKI CO.,
LTD. (Brief on Appeal filed 4 June 2008 ("App. Br.") at 2).
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003985
Application 10/007,186

2
The subject matter on appeal is directed to methods of preventing
defective germination and/or rosette formation of a plant seed by
hydroconditioning the seed at 0oC to 15oC in a dark place, then drying the
seeds. Claim 4 is illustrative and reads (App. Br. 14-15):
4. A method of preventing defective germination
and rosette formation of a plant seed which tends
to suffer from defective germination and rosette
formation during growth thereof comprising the
steps of:
a) leaving the plant seed to stand in a highly
watery condition at a low temperature in a dark
place for a period of time of from several days to
several months to inhibit defective germination
and rosette formation of the plant seed, the dark
place being sufficiently dark to prevent the plant
seed from germinating; and
b) drying the plant seed in a dark place, before the
seed becomes active, being sufficiently dark to
prevent the plane [sic, plant] seed from
germinating, said drying takes place immediately
after leaving the plant seed to stand in the highly
watery condition at the low temperature in a dark
place,
wherein in the step a) of leaving the plant seed in a
highly watery condition the plant seed is exposed
to an environment having a relative humidity of
about 100% and a temperature of from 0 oC to 15
oC.
Claim 1 parallels claim 4 but specifies that the "highly watery condition" is
immersion in water. Claim 5 also specifies that the "highly watery
condition" is immersion in water, but only refers to preventing rosette
formation.
Appeal 2009-003985
Application 10/007,186

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The Examiner has rejected claims 1, 4, and 5 as unpatentable under 35
U.S.C. § 103(a) over Ohkawa3 in view of Coolbear4 and Khan5 (Ans.6 3-5).
II. Findings of Fact ("FF")
The following findings of fact are supported by a preponderance of
the evidence of record.
A. The 186 application
[1] The 186 application describes hydroconditioning plant seeds which
tend to suffer from defective germination or rosette formation, such as
Eustoma russellianum seeds, seed starches, and sweet pea seeds, by
immersing the seeds in water or maintaining them at approximately
100% relative humidity at 0oC to 15oC in a place sufficiently dark that
the seeds do not germinate, usually for several days to several months
(Spec. 3, ¶4, to 4, ¶4).
[2] Since wet seeds are hard to handle, the hydroconditioned seeds are
subsequently dried using conventional means, such as exposure to
dry, ventilated air (Spec. 4, ¶5, to 5, ¶4).
B. Ohkawa
[3] Ohkawa hypothesized that "temperatures during seed ripening . . .
influence[d] rosette formation based on the observation that

3 Ohkawa et al., "Influence of Temperature Prior to Seed Ripening and at
Germination on Rosette Formation and Bolting of Eustoma Grandiflorum,"
53 Scientia Horticulturae 225-30 (1993) ("Ohkawa").
4 Coolbear et al., "An Evaluation of the Potential of Low Temperature Pre-
sowing Treatments of Tomato Seeds as a Means of Improving Germination
Performance," 110 Ann. app. Biol. 185-94 (1987) ("Coolbear").
5 US Patent 5,294,593, Inducing Dormancy in Non-Dormant Seeds, issued
15 March 1994 to Anwar A. Khan ("Khan").
6 Examiner's Answer mailed 16 July 2008 ("Ans.").
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Application 10/007,186

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temperatures during seed hydration influence the low temperature
treatment response" (Ohkawa 226, ¶2).
[4] Ohkawa tested his hypothesis with two experiments (Ohkawa 226,
¶¶3-4).
[5] In Experiment 1, seeds of Eustoma grandiflorum were germinated and
grown until flower buds were visible and then transferred to natural
light phytotrons set at 33/28, 28/23 or 23/18o C day/night temperature.
Seeds were then harvested from the plants and in turn sown and
grown under the same lighting and temperature conditions. Water
was supplied by subirrigation for 5 weeks after sowing, followed by
overhead irrigation. Eight weeks after seed hydration, the number of
seedlings which had bolted were counted. [Ohkawa 226, ¶3.]
[6] In Experiment 2, "[s]eeds …were hydrated at 28/23oC for up to 3 days
and then stored at 3 or 10o C for 5 weeks. These treatments were
given under continuous irradiance ... [then] seedlings were transferred
into a 33/28 or 28/23oC (day/night) phytotron. At that time, control
seeds were sown and also maintained at 33/28 or 28/23oC
(day/night)." [Ohkawa 226, ¶4.]
[7] Ohkawa reported that
[r]osette formation and subsequent bolting
of Eustoma grandiflorum are influenced by
temperature conditions prior to seed ripening and
after germination has commenced. Rosette
formation was decreased if parent plants were
matured at 23/18oC (day/night) temperature and
was increased at 33/28oC. Further low temperature
seed treatment of hydrated seeds at 3oC or 10oC for
5 weeks decreased rosette formation and enhanced
subsequent seedling bolting. [Ohkawa abstract.]
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C. Coolbear
[8] Coolbear evaluated the potential of low temperature pre-sowing
treatments ("LTPST") of tomato seeds comprising allowing the seeds
to imbibe distilled water, while being kept continually moist, in the
dark, i.e., in lidded boxes, at 10oC on germination performance
(Coolbear abstract; 186, ¶4).
[9] Low temperatures prevent seeds from germinating (Coolbear 186, ¶3).
[10] At 10oC, Moneymaker tomato seeds exhibited a very low germination
rate of about 1% after 21 days (Coolbear 187, ¶6; 188, Figure 1).
[11] According to Coolbear, LTPST of tomato seeds, at least, is of limited
economic potential and agronomical effects (Coolbear 193, ¶¶2-3).
[12] However, Coolbear concluded that further investigation into the use of
LTPST to improve uniformity of germination or to prevent or repair
damage when seeds are stored under less than optimal conditions is
needed (Coolbear 193, ¶3).
D. Khan
[13] Khan discloses a method of inducing dormancy in nondormant seeds
which require gibberellin synthesis for germination, comprising (a)
soaking the nondormant seeds in an aqueous solution of a gibberellin
synthesis inhibitor, such as tetcyclacis, preferably in the dark at 25oC
to 35oC, for at least 24 hours, (b) washing to remove the inhibitor, and
(c) drying to the original seed weight (Khan abstract; 3:1-49).
[14] According to Khan, one method of releasing the induced dormancy
comprises chilling the dormant seeds, preferably at 5oC, with moisture
present for 4 to 40 days, preferably in the dark (Khan 4:13-20).

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E. Definition
[15] Vernalization is the "induction in plants of the competence or ripeness
to flower by the influence of cold, that is, at temperatures below the
optimal temperature for growth" (McGraw-Hill7 1713).
III. Discussion
A. The Examiner's findings and conclusions
The Examiner found that Coolbear teaches essentially the same
methods claimed but for (i) treating the seeds for period of time ranging
from several days to several months and (ii) drying the treated seeds in the
dark (Ans. 4 and 7). According to the Examiner, the method of Coolbear
is equivalent to "vernilization" and, therefore, prevents defective
germination and inherently prevents rosette formation to some degree
(Ans. 5).
Further according to the Examiner, Ohkawa provides evidence of
general knowledge in the art of keeping hydrated seeds at 3o-10o C for 5
weeks, i.e., from several days to several months (Ans. 8). The Examiner
also found that Ohkawa teaches essentially the same method as claimed
but for teaching that the plant seed undergoes drying after immersion in
water and that the immersion and drying are conducted in a dark place
(Ans. 4).
The Examiner found that Khan teaches that it is known to chill seeds
in water at 2oC-10oC from 4 to 40 days, including in the dark (Ans. 7-8)
and that it is conventional wisdom to dry seeds in the dark to prevent loss
of dormancy, thereby allowing the seeds to be stored for several months
(Ans. 5).

7 McGraw-Hill Dictionary of Scientific and Technical Terms (2d ed. 1978).
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The Examiner found that it is general knowledge in the art that light
and darkness have effects on germination (Ans. 5).
The Examiner concluded that it would have been obvious to treat and
store seeds that germinate in response to light in the dark in order to
prevent premature germination as taught by Ohkawa and Coolbear (Ans.
5). The Examiner also concluded that it would have been obvious to dry
seeds and to store them in the dark to prevent a loss of dormancy and to
permit storage for several months as taught by Khan (Ans. 5). According
to the Examiner, the claimed steps are merely a combination of old and
notoriously well-known measures in the art of plant husbandry known to
yield predictable results (Ans. 8).
B. Appellant's arguments
Appellant argues that Ohkawa is primarily directed to subjecting
plants, not seeds, to low temperature treatments after germination but
before seed ripening (App. Br. 7). Appellant further argues that the
hydrated seeds referred to in Ohkawa's abstract correspond to the hydrated
seeds of Ohkawa Experiment 2 (App. Br. 7-8; Reply Br.8 2). Therefore,
according to Appellant, Ohkawa does not teach the claimed steps of (i)
leaving the plant seed to stand in a highly watery condition at a low
temperature (ii) in a dark place, (iii) for a period of time of from several
days to several months, and (iv) drying the seeds immediately after leaving
the seeds stand in the highly watery condition (App. Br. 8; Reply Br. 2).
Further according to Appellant, Ohkawa does not teach or suggest
hydrating seeds for 3 days in a "highly watery condition" as claimed or
storing the hydrated seeds in the dark (App. Br. 9 and 11; Reply Br. 2).

8 Reply Brief filed 16 September 2008 ("Reply Br.").
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In addition to the deficiencies in Coolbear noted by the Examiner,
Appellant contends that Coolbear is silent on the relationship, if any,
between LTPST and rosette formation and/or defective germination (App.
Br. 9).
Appellant argues that soaking seeds in the gibberellin synthesis
inhibitor solution of Khan does not correspond to step a) of the claimed
methods and that the intervening wash step in Khan precludes the drying
step of Khan from corresponding to step b) of the claimed methods (App.
Br. 10-11).
Finally, Appellant argues that Ohkawa does not support the
Examiner's position that the method steps of Coolbear and Khan inherently
prevent rosette formation because Coolbear and/or Khan fail to teach or
suggest the claimed method steps (Reply Br. 2-4).
C. Issue
At issue is whether Appellant has shown that the Examiner erred in
failing to identify a reason that would have prompted one of ordinary skill
in the art combine the teachings of the applied prior art references as
claimed.
D. Legal principles
"Section 103 forbids issuance of a patent when 'the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
said subject matter pertains.'" KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of
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the prior art, (2) any differences between the claimed subject matter and
the prior art, (3) the level of skill in the art, and (4) where in evidence, so-
called secondary considerations. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966). In KSR, the Supreme Court reaffirmed principles based on
its precedent that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. The Court emphasized that
“rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
"Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
circumstance is not sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA
1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
E. Analysis
According to the 186 specification, Eustoma russellianum seeds are
among the plant seeds which tend to suffer from defective germination or
rosette formation (FF 1). Ohkawa studied the effect of temperature after
germination but before seed ripening on rosette formation and bolting of
another Eustoma flowering plant, Eustoma grandiflorum (FF 3-7).
Experiment 2 of Ohkawa described hydrating seeds at 28/23o C (day/night)
for up to 3 days and then storing the seeds at 3 or 10o C for 5 weeks, both
under continuous irradiance (FF 6). Ohkawa did not define, and the
Examiner did not find that, "hydrating" a seed requires soaking it in water or
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Application 10/007,186

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maintaining it in a 100% relative humidity environment. Notably, Ohkawa
hydrated the seeds at a temperature from 23o to 28o C, not at a temperature of
0o to 15o C as claimed. Moreover, Ohkawa not only failed to disclose
treating and storing seeds in the dark as claimed, but rather expressly
described the opposite, i.e., treating and storing seeds in the light (under
continuous irradiance) (FF 6). The Examiner relies on Coolbear and Khan
to remedy the deficiencies of Ohkawa.
Coolbear studied the effect of low temperature pre-sowing treatments
of tomato seeds on germination performance, which treatments included
allowing the seeds to imbibe water at 10oC while being kept in the dark (FF
8). The Examiner equated the method of Coolbear with vernalization and,
by extension, with prevention of defective germination (Ans. 5). In addition,
according to the Examiner, preventing defective germination inherently
prevents rosette formation to some degree (Ans. 5). However, the Examiner
did not explain or support these statements. For example, the Examiner did
not explain how defective germination necessarily, not "to some extent,"
prevents rosette formation. Furthermore, Coolbear suggested that its LTPST
treatment may produce uniformity of germination (FF 12). The plain
language of "uniformity of germination" suggests that the seeds germinate at
the same time, not that the germination per se is defective. In addition, the
Examiner did not explain why one of ordinary skill in the art would have
combined the teachings of Ohkawa and Coolbear, especially in view of
Coolbear's teaching that LTPST of tomato seeds, at least, is of limited
economic potential and agronomical effects (FF 11). “One cannot use
hindsight reconstruction to pick and choose among isolated disclosures in
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the prior art to deprecate the claimed invention.” In re Fine, 837 F.2d 1071,
1075 (Fed. Cir. 1988).
The Examiner relied on Khan to show the conventionality of drying
and storing seeds in the dark to prevent a loss of dormancy (Ans. 5).
However, step b) of the claimed invention not only requires drying the seeds
in the dark, but also drying the seeds immediately after hydrating the seeds
by immersion in water or by exposure to an environment having a relative
humidity of about 100%. Khan teaches the former limitation of step b), but
not the latter (FF 13). Moreover, Khan is silent regarding defective
germination and rosette formation.
Thus, we find that the Examiner has failed to provide either an
adequate factual basis or to explain the specific understanding or principle
within the knowledge of a skilled artisan that would have motivated one
with no knowledge of the claimed invention to combine the teachings of
Ohkawa, Coolbear, and Khan. Thus, we infer that the Examiner selected
these references with the assistance of hindsight. Accord In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998). "One cannot use hindsight reconstruction
to pick and choose among isolated disclosures in the prior art to deprecate
the claimed invention." Fine, 837 F.2d at 1075.
F. Conclusion
Appellant has shown that the Examiner erred in failing to identify a
reason that would have prompted one of ordinary skill in the art combine the
teachings of the applied prior art references as claimed.
Therefore, based on the foregoing, we reverse the rejection of claims
1, 4, and 5 under § 103 over the combined teachings of Ohkawa, Coolbear,
and Khan.
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IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 1, 4,
and 5 as unpatentable under 35 U.S.C. § 103(a) over Ohkawa in view of
Coolbear and Khan is REVERSED.
REVERSED

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