Ex Parte Mclver et al

Patent Trial and Appeal Board

Oct 26, 2017

11919886 (P.T.A.B. Oct. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/919,886 01/26/2009 John Mclver NOVO-127US 8301
23122 7590 10/30/2017
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NOTIFICATION DATE DELIVERY MODE
10/30/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN McIVER, CHUNQUAN CHEN, BIRGIT SCHULTZ, and
HANNAH McIVER
Appeal 2017-004883
Application 11/919,8861
Technology Center 1600
Before ULRIKE W. JENKS, RYAN H. FLAX, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
SAWERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 33—55 and 57. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify NOVOZYMES BIOAG A/S as the real party in
interest. Br. 2.
Appeal 2017-004883
Application 11/919,886
STATEMENT OF THE CASE
Claims 33—55 and 57 are on appeal and stand rejected as unpatentable
under 35 U.S.C. § 112, first paragraph, for lack of written description, and
under 35 U.S.C. § 103(a) for obviousness over Smith2 in view of Pan.3
Final Off. Act. 2—\. We choose independent claim 33 as representative. See
37 C.F.R. § 41.37(c)(l)(iv). Claim 33 provides:
33. A method of improving plant growth, comprising:
applying, to a non-leguminous seed, a composition that
comprises at least one isoflavonoid and that is devoid of
nitrogen-fixing bacteria,
wherein, upon planting said seed in a growth medium
that comprises one or more nitrogen-fixing bacteria, application
of said composition results in improved germination of said
seed and/or earlier emergence, increased yield, increased stand
density, improved vigor, improved growth, increased biomass
and/or earlier fruiting of a plant that germinates from said seed,
as compared to an untreated control seed.
Appeal Br. 9.
2 R. Stewart Smith et. al., U.S. Pub. No. US 2005/0187107 A1 (Aug.
25, 2005) (“Smith”).
3 B. Pan & D. L. Smith, Genistein and Daidzein Concentrations and
Contents in Seedling Roots of Three Soybean Cultivars Grown under Three
Root Zone Temperatures, 180 J. Agronomy & Crop Sci. 77—82 (1998)
(“Pan”).
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Application 11/919,886
DISCUSSION
Written Description
The Examiner rejected claims 33—55 and 57 under 35U.S.C. § 112,
first paragraph, for lack of written description. Final Act. 2—3. The first
paragraph of § 112 requires that the specification contain a written
description of the claimed invention. 35 U.S.C. § 112,11 (2011). “[T]he
hallmark of written description is disclosure.” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written
description requirement is met when the specification “conveys to those
skilled in the art that the inventor had possession of’ and “actually invented”
the claimed subject matter. Id.
A written-description question often arises when an applicant, after
filing a patent application, subsequently adds “new matter” not present in the
original application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed.
Cir. 1991). When an applicant amends or adds claims during prosecution,
for example, the newly claimed subject matter must find written description
support in the original specification. Id.', see also TurboCare Div. of Demag
Delavel Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001). Without written description support, claims containing new
matter are properly rejected under § 112. Ariad, 598 F.3d at 1348. This
required compliance with § 112 ensures that the applicant fully possessed
the entire scope of the claim as of the original filing date. TurboCare, 264
F.3d at 1118.
In this case, Appellants amended their claims to specify that the
isoflavonoid composition used to treat non-leguminous seed is “devoid of
nitrogen-fixing bacteria.” Final Off. Act. 3. The Examiner asserts that the
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claims lack written description support because Appellants’ “amendment to
restrict the method to treating non-leguminous seed with isoflavonoid devoid
of nitrogen-fixing bacteria is not supported by the original disclosure.” Id.
In particular, the Examiner asserts that “[tjhere are no explicit examples or
other evidence in the disclosure that suggests Applicant had possession of
the claim limitation at the time of filing.” Id.
We reverse the Examiner’s rejection. As Appellants point out and we
agree, the Specification as filed describes several experiments in which non-
leguminous seeds were treated with a composition that comprised at least
one isoflavonoid, but was devoid of nitrogen-fixing bacteria. Appeal Br. 3.
For example, the Specification describes experiments where the inventors
applied an isoflavonoid composition to “com seed and other legume and
non-legume species,” and planted the seeds in soil having an “indigenous
rhizobial population” to cause “increased growth at the seedling stage . . .
and . . . other desirable effects.” Spec. 8. “This concept was then
broadened,” the Specification continues, “to encompass horticultural crops
where the seeding and potting mix could be seeded with a level of
Bradyrhizobium ... or of other Rhizobium species” to “act as a growth
stimulant to non-leguminous bedding plants and horticultural crops.” Id. at
9.
Thus, we agree with Appellants that the Specification contemplates
both treating seeds with an isoflavonoid composition lacking a nitrogen­
fixing bacteria and treating seeds with an isoflavonoid composition
containing a nitrogen-fixing bacteria. Appeal Br. 3. In the former case, the
seeds not previously treated with a nitrogen-fixing bacteria are planted in
soil containing the nitrogen-fixing bacteria. For example, the Specification
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Application 11/919,886
describes coating com seed with various levels of the isoflavonoid genistein,
and then planting that seed in potting soil inoculated with Bradyrhizobium
japonicum. Spec. 9; see also id. at 18—21 (Tables 3—5).
Because the Specification provides adequate support for “devoid of a
nitrogen-fixing bacteria” with respect to the coating that is applied to the
seed, we reverse the Examiner’s rejection of claims 33—55 and 57 under 35
U.S.C. § 112, first paragraph.
Obviousness
The Examiner rejected claims 33—55 and 57 under 35 U.S.C. § 103(a)
for obviousness over Smith in view of Pan. Final Off. Act. 4—6. A claimed
invention is unpatentable if the differences between it 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.” 35
U.S.C. § 103(a) (pre-AIA). To assess whether the subject matter would
have been obvious, the Board follows guidance in Graham v. John Deere
Co., 383 U.S. 1 (1966) and KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398
(2007). Under that guidance, the “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. Thus, 35 U.S.C.
§ 103 requires an inquiry into “‘whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.’” Monolithic Power Sys., Inc. v. Micro Int'lLtd, 558 F.3d 1341,
1352 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 417). The obviousness
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
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KSR, 550 U.S. at 418. After considering the entirety of the evidence and
Appellants’ arguments, we conclude that the weight of the evidence favors
the Examiner’s conclusion of obviousness.
Smith teaches the “surprising discovery that superior results with
respect to plant stand, growth, vigor or yield of leguminous and non-
leguminous plants or crops are achieved using a treatment of fungicide,
insecticide, or a combination thereof, with nod factors, either with or without
a rhizobial inoculant.” Smith 111. Smith defines the “nod factor” as “a
signal molecule produced under the direct control of Nod genes of rhizobia
in response to flavonoid or isoflavonoid secretion by a host plant,” or “a
synthetic or bioengineered version of naturally occurring nod gene
products.” Id. 123. Smith also describes a method for producing a nod
factor as follows:
A method for producing nod factor products may include treating
cells, such as Bradyrhizobium japonicum or other rhizobia, with
a plant signal molecule such as genistein or other nod factor
inducer, in an agriculturally suitable carrier to produce an
induced culture nod factor product. The induced culture nod
factor product may be further modified by tangentially filtering
out the cells from the culture to produce a cell-free induced
culture nod factor product, which may then be passed through a
resin column to produce a purified nod factor product. Nod
factors may be further purified by removing any solvent present,
purifying the nod factor with HPLC, and freeze-drying the nod
factor to produce a further purified nod factor product.
Id. 129.
Appellants argue that “[w]hile the cell-free induced nod factor product
as described in 129 of Smith comprises a nod factor, there is no teaching or
suggestion that the cell-free induced nod factor product would necessarily
comprise a plant signal molecule such as genistein.” Appeal Br. 6. Instead,
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Appellants assert, genistein is “used to treat cells such as Bradyrhizobium
japonicum or other rhizobia to produce a nod factor.'1'’ Id. (emphasis added).
Put differently, Appellants’ argue that, although Smith discloses genistein as
a nod-factor inducer, see Smith 129, “Smith does not disclose implicitly
applying to a non-leguminous seed a composition that comprises an
isoflavonoid such as genistein,” Appeal Br. 6. Appellants emphasize that
“nod factor expression is mediated by the direct binding of isoflavonoids to
NodD proteins,” and assert that the ordinarily skilled artisan would have
reasonably expected the isoflavonoid genistein to be removed during the
Smith’s process for producing a nod factor product. Appeal Br. 6.
Even if Appellants’ assertions are correct, we find that they do not
overcome the Examiner’s obviousness rejection. The Examiner’s rejection
is based on the combination of Smith and Pan, rather than Smith
individually. See Final Off. Act. 4—6; see also In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”). Here, the Examiner
acknowledges that Smith does not expressly recite isoflavonoids such as
genistein and daidzein in its compositions, and “[i]t is for this reason that
Pan et al. is joined.” Final Off. Act. 5. Pan teaches that daidzein and
genistein “are plant-to-bacterium signal compounds” that “induce nod gene
expression in Bradyrhizobium japonicum.'” Pan (Abstract). Pan also teaches
that daidzein and genistein concentration and content increased in cultivars
over time. Id. at 78. The Examiner reasoned that “[i]t would have been
prima facie obvious ... to include treating seed with [daidzein] and
genistein with a reasonable expectation of success since Pan et al. teaches
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that they are known nod inducers and increase in concentration in the
presence of Bradyrhizobium japonicum in soybeans.” Final Off. Act. 5.
We conclude that the Examiner has established a prima facie case of
obviousness that Appellants did not persuasively rebut. Pan teaches that the
isoflavonoids daidzein and genistein induce the expression of nod genes, see
Pan (Abstract), and Smith teaches applying that expression product—the
nod factors—to seeds (with or without a rhizobial inoculant) to enhance the
growth, vigor, and yield of non-leguminous plants, see Smith 111. We
agree with the Examiner that an artisan of ordinary skill would have been
motivated to also include the isoflavonoids daidzein and genistein in Smith’s
compositions for enhancing plant characteristics. Final Act. 5. Specifically,
it was known in the art that these isoflavonoids are “plant-to-bacterium
signal compounds,” Pan (Abstract), see also Smith 129, that increase in
concentration as a plant matures, Pan 80. Appellants have pointed us to no
contradictory evidence, such as a teaching away in the art or evidence of
unexpectedly superior results. Thus, we are not persuaded that the Examiner
erred.
Appellants also argue that, because “daidzein or genistein may induce
nod factor production by B. japonicum used to inoculate the soybean plants
[in Pan], one of ordinary skill in the art would have been motivated to
apply[] to seeds a composition comprising an isoflavonoid (e.g., genistein or
daidzein) and nitrogen-fixing bacteria.” Appeal Br. 8 (emphasis added).
But even if an ordinarily skilled artisan would have been so motivated, this
alone does not negate a motivation to add isoflavonoids to Smith’s
compositions already lacking nitrogen-fixing bacteria. See Allergan, Inc. v.
SandozInc., 726 F.3d 1286, 1292 (Fed. Cir. 2013) (“Motivation to combine
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may be found in many different places and forms . . . Indeed, Appellants
have not provided us with sufficient persuasive evidence or scientific
reasoning tending to show that an artisan of ordinary skill would not expect
an isoflavonoid coated on a seed to induce nod gene expression of bacteria
once the seed is planted in soil inoculated with a nitrogen-fixing bacteria,
especially given that Smith teaches that the seeds may be planted at any time
after treatment with the composition. Smith 134.
SUMMARY
We affirm the rejection of claims 33—55 and 57 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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