Ex Parte Liu et al

Board of Patent Appeals and Interferences

Aug 16, 2011

10425114 (B.P.A.I. Aug. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/425,114 04/28/2003 Jingdong Liu 38-21(53313)-0000 4946
66057 7590 08/17/2011
MONSANTO COMPANY (A&P)
800 N. LINDBERGH BOULEVARD
MAILZONE E1NA
ST. LOUIS, MO 63167
EXAMINER
BUI, PHUONG T
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
08/17/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JINGDONG LIU, YIHUA ZHOU, DAVID K. KOVALIC,
STEVEN E. SCREEN, JACK E. TABASKA, and YONGWEI CAO
____________

Appeal 2010-012548
Application 10/425,114
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 2, and 6-10, the
only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a recombinant DNA construct. Claim 1 is
representative and is reproduced below:
1. A recombinant DNA construct comprising a polynucleotide
comprising the nucleic acid sequence of SEQ ID NO: 25,638.

Appeal 2010-012548
Application 10/425,114

2
Claims 6-9 stand rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1, 2, and 6-10 stand rejected under the written description
provision of 35 U.S.C. § 112, first paragraph.
Claims 1, 2, and 6-10 stand rejected under 35 U.S.C. § 101 and the
enablement provision of 35 U.S.C. § 112, first paragraph as lacking a
patentable utility.
Claims 1, 2, and 6-10 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 5-7, 10-14, 21-31, 36, and 39 of La Rosa.
1

We affirm the rejections under 35 U.S.C. § 101 and the enablement
provision of 35 U.S.C. § 112, first paragraph and the provisional
obviousness-type double patenting rejection. We reverse the rejections
under 35 U.S.C. § 112, second paragraph and the written description
provision of 35 U.S.C. § 112, first paragraph.

Definiteness:
ISSUE
Does the preponderance of evidence support a conclusion that a
person of ordinary skill in the art could not determine the metes and bounds
of Appellants‟ claimed invention?

1
La Rosa et al., US 2008/0229439 A1, published September 18, 2008.
Appeal 2010-012548
Application 10/425,114

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FACTUAL FINDINGS
FF 1. The Examiner finds that “[t]he metes and bounds of „at least about‟
are unclear. „At least‟ sets a minimum value and „about‟ encompasses
values below the minimum value” (Ans. 3).
ANALYSIS
Given the foregoing factual finding, the Examiner concludes that
“while „at least‟ and „about‟ may be definite when used separately in certain
situations, the metes and bounds of „at least about‟ are unclear when used
together in the context of sequence identity as set forth in the claims” (Ans.
8). We are not persuaded.
As Appellants explain the term „“about‟ . . . encompass[es] a
reasonable range of sequence identity within the context of the claims”
(App. Br. 7). Accordingly, “the claims specify a sequence identity that is at
its least within that range” (id.). The Examiner fails to establish an
evidentiary basis to support a conclusion that a person of ordinary skill in
this art would have been unable to ascertain the scope of the claims when
these terms are used together in the context of sequence identity.
CONCLUSION OF LAW
The preponderance of evidence fails to support a conclusion that a
person of ordinary skill in the art could not determine the metes and bounds
of Appellants‟ claimed invention. The rejection of claims 6-9 under 35
U.S.C. § 112, second paragraph, as indefinite is reversed.

Appeal 2010-012548
Application 10/425,114

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Written Description:
ISSUE
Does the preponderance of evidence on this record support the
Examiner‟s conclusion that Appellants‟ Specification fails to provide written
descriptive support for the claimed invention?
FACTUAL FINDINGS
FF 2. The Examiner finds that “SEQ ID NO: 62284 does not begin with an
initiation codon such as methionine . . . and thus SEQ ID NO: 25638 appears
to be a partial gene sequence encoding a protein fragment” (Ans. 7).
FF 3. The Examiner finds that “[t]here are insufficient relevant identifying
characteristics to allow one skilled in the art to predictably determine the
complete structure of the gene coding sequence containing SEQ ID NO:
25638 or the complete protein sequence containing SEQ ID NO: 62284
based upon the disclosure of a partial sequence” (id.).
ANALYSIS
Based on the foregoing factual findings the Examiner concludes that
“[s]ince the claimed genus of sequences containing SEQ ID NO: 25638 and
62284 encompasses undisclosed genes/proteins or genes/proteins yet to be
discovered, the disclosed structural feature does not constitute a substantial
portion of the claimed genus” (Ans. 7). We are not persuaded.
The sequence, defined by SEQ ID NO, in each of Appellants‟ claims
establishes the common structural feature upon which the remainder of the
claim is evaluated. Each of Appellants‟ claims is drawn to a recombinant
DNA construct that has, or has at least a specific degree of identity to, the
structural feature defined by the SEQ ID NO. Therefore, notwithstanding
the Examiner‟s assertion to the contrary, each of Appellants‟ claims is
Appeal 2010-012548
Application 10/425,114

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limited to the foregoing structural features. Simply stated, a recombinant
DNA construct either comprises a polynucleotide with the identity set forth
in Appellants‟ claims or it does not (see App. Br. 15).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support the
Examiner‟s conclusion that Appellants‟ Specification fails to provide written
descriptive support for the claimed invention. The rejection of claims 1, 2,
and 6-10 under the written description provision of 35 U.S.C. § 112, first
paragraph is reversed.

Utility:
ISSUE
Does the preponderance of evidence of record support the Examiner‟s
finding that Appellants‟ claimed invention lacks patentable utility due to its
not being supported by a specific, substantial, and credible utility or, in the
alternative, a well-established utility?
FACTUAL FINDINGS
FF 4. The Examiner finds that SEQ ID NO: 25638 “is a partial sequence”
and “it is unclear whether SEQ ID NO: 62284 contains the region(s)
necessary for its functional activity” (Ans. 4).
FF 5. “Table 1 indicates SEQ ID NO: 25638 is a myb transcription factor
gene sequence based solely upon sequence alignment with prior art
sequences” (id.).
FF 6. “Appellant[s] provide[ ] no working example of the claimed
sequence having functional activity” (id.).
FF 7. The Examiner finds that even if
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SEQ ID NO: 25638 encodes a myb transcription factor having
functional activity . . . [s]ince every gene involves transcription
factors, without knowing which gene(s) SEQ ID NO: 25638
regulates, and what particular useful outcome is obtained by
having SEQ ID NO: 25638 expressed or suppressed, one skilled
in the art would not be able to use the claimed invention.

(Ans. 5.)
FF 8. The Examiner finds that Appellants disclosed “possible uses for
genes and proteins in general to modify plant processes for the 73128
sequences disclosed . . . these [generic utilities] are not specific to
Appellant‟s claimed sequences” (id.).
FF 9. The Examiner finds that “[w]hile having the ability to regulate
expression of certain genes at particular stages of plant growth and
development may be useful, further guidance is necessary as to what gene(s)
are regulated, and how such regulation would ultimately result in a useful
outcome” (id.).
FF 10. The Examiner finds that “[t]he claimed sequence[s] do[ ] not have a
well-established utility for making antibodies or for use as probes and
primers for diagnostic purposes because the nucleic acid and protein
sequence do not have utility for the reasons indicated above” (Ans. 6).
FF 11. The Examiner finds that Schmitz2 teaches “there are various classes
of Myb genes (Abstract)” (Ans. 11).
FF 12. The Examiner finds that Schmitz “teaches a tomato myb
transcription factor RNAi caused reduction in lateral shoots and flower
numbers” (Ans. 9).

2
Gregor Schmitz, et al., The tomato Blind gene encodes a MYB
transcription factor that controls the formation of lateral meristems, 99(2)
Proc. Natl. Acad. Sci. 1064-1069 (2002).
Appeal 2010-012548
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FF 13. The Examiner finds that Appellants‟ Specification “does not teach
SEQ ID NO: 25638 can be used as a RNAi to reduce the number of lateral
shoots and the number of flowers per inflorescence” (Ans. 11).
ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Based on the foregoing factual findings we find no error in the
Examiner‟s finding that Appellants‟ claimed invention “is not supported by
either a specific, substantial asserted utility or a well[-]established utility”
(Ans. 4).
Appellants contend that since their Specification “notates SEQ ID
NO: 25,638 as a „myb family transcription factor‟ . . . [the claimed]
recombinant DNA constructs can be used to modify the expression of myb
transcription factor proteins to alter plant growth” (App. Br. 10). We are not
persuaded (see FF 4-7; see also Ans. 10).
Given the foregoing factual findings, we are not persuaded by
Appellants‟ contention that “the Examiner has not met [her] . . . burden” of
providing “evidence or sound scientific reasoning to rebut Appellants‟
assert[ed]” utility (App. Br. 11).
Appellants contend that their Specification discloses that the claimed
constructs may be used as antisense constructs to regulate gene expression
(App. Br. 11). We are not persuaded (see FF 8-9; see also Ans. 10-11
(“there is no disclosure as to how antisense or cosuppression of SEQ ID NO:
25638 would result in a „real world‟ benefit”)). Similarly, we are not
persuaded by Appellants‟ contention that their Specification “shows that the
claimed nucleic acid constructs comprising SEQ ID NO: 25,638 have
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utilities specific to them, such as encoding a sequence correlated to a myb
transcription factor protein and altering plant growth. These utilities alone
are specific” (App. Br. 12). We are not persuaded (see FF 4-10 and 13).
Relying on Schmitz, Appellants contend that “a skilled artisan,
reading the specification as filed would recognize the utilities of constructs
comprising myb transcription factor protein sequences” (App. Br. 11). We
are not persuaded (see FF 11-13; see also Ans. 11 (“[i]t is unclear whether
the myb transcription factor of Schmitz is the same as Appellant‟s claimed
sequence, as Schmitz teaches there are various classes of Myb genes”)).
CONCLUSION OF LAW
The preponderance of evidence of record supports the Examiner‟s
finding that Appellants‟ claimed invention lacks patentable utility due to its
not being supported by a specific, substantial, and credible utility or, in the
alternative, a well-established utility. The rejection of claim 1 under 35
U.S.C. § 101 and the enablement provision of 35 U.S.C. § 112, first
paragraph as lacking a patentable utility is affirmed. Because they are not
separately argued, claims 2 and 6-10 fall together with claim 1.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence on this record support the
Examiner‟s rejection under the judicially created doctrine of obviousness-
type double patenting?
FACTUAL FINDINGS
FF 14. “SEQ ID NO: 25,638 contains 648 nucleotides” (App. Br. 8).
FF 15. “SEQ ID NO: 2897 [of La Rosa] contains 1025 nucleotides” (id.).
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FF 16. “SEQ ID NO: 62,284 contains 215 amino acids” (id.).
FF 17. “SEQ ID NO: 8326 [of La Rosa] contains 317 amino acids” (id.).
ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Given the foregoing factual findings (FF 14-17), we find no error in
the Examiner‟s conclusion that “[t]he longer sequence[s of La Rosa] fully
disclose[ ] the shorter sequence[s of Appellants‟ claims], and given the
„comprising‟ language in the instant application, the shorter sequence[s] of
the instant application [are] not patentably distinct from the longer
sequence[s] of” La Rosa (Ans. 9). That is, the longer sequences of the
copending claims are encompassed by the instant claims. See Eli Lilly &
Co. v. Barr Labs., Inc., 251 F.3d 955, 971 (Fed. Cir. 2001) (“[A] later genus
claim limitation is anticipated by, and therefore not patentably distinct from,
an earlier species claim.”). Accordingly, we are not persuaded by
Appellants‟ contention that the sequences set forth in Appellants‟ claims are
not obvious in view of La Rosa‟s larger sequences (see App. Br. 8).
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner‟s rejection under the judicially created doctrine of obviousness-
type double patenting. The rejection of claim 1 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 5-7, 10-14, 21-31, 36, and 39 of La Rosa is affirmed. Because they
are not separately argued, claims 2 and 6-10 fall together with claim 1.

Appeal 2010-012548
Application 10/425,114

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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