Ex Parte Reuzeau

Patent Trial and Appeal Board

Mar 22, 2017

12302295 (P.T.A.B. Mar. 22, 2017)

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.
12/302,295 11/25/2008 Christophe Reuzeau 074029-0042-US-287190 5836
123223 7590 03/24/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
BURAN, ASHLEY KATE
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
03/24/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHE REUZEAU1
Appeal 2016-000979
Application 12/302,295
Technology Center 1600
Before JOHN G. NEW, RICHARD J. SMITH, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to methods for
improving plant growth characteristics through transformation with nucleic
acid sequences. The Examiner entered final rejections that the claims lack
adequate written description, are anticipated, and are obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant identifies the Real Party in Interest as CropDesign N. V. of
Zwijnaarde, Belgium. Br. 1.
Appeal 2016-000979
Application 12/302,295
STATEMENT OF THE CASE
Background
The Specification discloses:
a method for improving various plant growth characteristics by
modulating expression in a plant of a nucleic acid encoding a
GRP (Growth Related Protein). . . [and] concerns plants having
modulated expression of a nucleic acid encoding a GRP, which
plants have improved growth characteristics relative to
corresponding wild type plants or other control plants . . . [and]
constructs useful in the methods.
Spec 1:4—9.
A[n] important trait [for improved crop yield] is that of
improved abiotic stress tolerance. Abiotic stress is a primary
cause of crop loss worldwide, reducing average yields for most
major crop plants by more than 50% . . . Abiotic stresses may
be caused by drought, salinity, extremes of temperature,
chemical toxicity and oxidative stress. The ability to improve
plant tolerance to abiotic stress would be of great economic
advantage to farmers worldwide and would allow for the
cultivation of crops during adverse conditions and in territories
where cultivation of crops may not otherwise be possible.
Spec. 2:17-23.
It has now been found that various growth characteristics may
be improved in plants by modulating expression in a plant of a
nucleic acid encoding a GRP (Growth Related Protein Of
Interest) in a plant.
Spec. 3:2-4.
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The Claims
Claims 180-199 are on appeal. Independent claims 180 and
190 illustrate the appealed subject matter and read as follows:
180. A method for increasing seed yield and/or biomass in a
plant relative to a corresponding control plant, comprising:
(a) introducing and expressing in a plant or plant cell a
nucleic acid encoding a polypeptide having at least
95% sequence identity to the amino add sequence of
SEQ ID NO: 252; and
(b) selecting for a plant having increased seed yield
and/or biomass under abiotic stress conditions
relative to a corresponding control plant.
190. A method for producing a plant having increased seed
yield and/or biomass relative to a corresponding control plant,
comprising:
(a) introducing into a plant or plant cell a construct
comprising:
(i) a nucleic acid encoding a polypeptide
having at least 95% sequence identity to
the amino acid sequence of SEQ ID NO:
252;
(ii) one or more control sequences capable
of driving expression of the nucleic acid
of (i); and optionally
(iii) a transcription termination sequence;
and
(b) selecting for a plant having increased seed
yield and/or biomass under abiotic stress
conditions relative to a corresponding control
plant.
Br. 19 (Appendix A, p. Al—A2).
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The Issues
The following rejections are before us to review:
Claims 180—181, 183—191, and 193—199 are rejected under 35 U.S.C.
§112 (pre-AIA), first paragraph, as lacking adequate written description.
Ans. 2.
Claims 180—187, 189-197, and 199 are rejected under pre-AIA
35 U.S.C. § 102(e) as anticipated by Ravanello.2 Ans. 6.
Claims 180-199 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Ravanello and de Pater.3 Ans. 10.
Written Description:
ISSUE
Does the preponderance of evidence relied on by the Examiner
support a conclusion of that the Specification does not provide sufficient
descriptive support for the objected-to claims?
ANALYSIS
The Examiner finds that “[t]he essential features of claims 180 and
190 is a nucleic acid sequence encoding a polypeptide that shares at least
95% identity with SEQ ID NO: 252 and that confers enhanced seed yield/or
2 US 2008/0301839 Al, claiming priority to US 60/713,150, filed Aug. 30,
2005 (“Ravanello”).
3 B. Sylvia de Pater, The promoter of the rice gene GOS2 is active in various
different monocot tissues and binds rice nuclear factor ASF-1. 2(6): The
Plant Journal 837-44 (1992).
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biomass on a plant under abiotic stress conditions” but the Specification
describes only a “single expression construct comprising a GOS promoter
operably linked to SEQ ID NO: 251.” Ans. 3. The Examiner finds this
construct does not provide sufficient descriptive support for the claims,
which “encompass a broad genus of sequences that have unspecified
changes to the nucleotide sequence of SEQ ID NO: 251 and the polypeptide
sequence of SEQ Id. NO: 252.” Id. The Examiner notes that the
Specification discloses “sequences predicted to be related to SEQ ID NO:
251 set forth in SEQ ID NOs: 277—281 and 286—291” but argues there is no
sample data provided to permit the skilled artisan to confirm that any of the
sequences disclosed “confer the claimed phenotype of enhanced abiotic
stress resistance, increased seed yield, increased biomass, increased seed
weight, increased TKW, increased number of filled seeds, increased shoot
biomass, and/or root biomass.” Id. at 3^4. The Examiner further notes that
the Specification identifies “putative conserved domains” for certain
disclosed sequences, but “fails to provide a nexus between the putative
conserved domains” and the claimed benefits. Id. at 4.
Appellant argues the working examples, including Example 45,
demonstrate that
rice plants overexpressing a nucleic acid encoding a
polypeptide having the amino acid sequence of SEQ ID NO:
252 exhibited increased seed yield, such as increased number of
filled seeds, increased total weight of seeds, and increased
thousand kernel weight (TKW), and increased biomass, such as
increased shoot biomass and increased root biomass, when
grown under abiotic stress conditions, such as nutrient
deficiency stress conditions, as compared to the control plants.
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Br. 6. Appellant argues the claims “recite the nucleic acid suitable for
practicing the claimed subject matter by referring to a specific polypeptide
combined with a defined sequence identity.” Id. at 7. Appellant argues the
high identity of the claimed sequence “is a structural feature of each of the
polypeptides within the claimed genus” that provides sufficient description
to satisfy the written description requirement. Id.
We agree with Appellant that the Examiner has not shown that the
Specification fails to adequately describe the claimed method. A description
adequate to satisfy 35 U.S.C. § 112, first paragraph,
must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” In other
words, the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject
matter as of the filing date.
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(citation omitted, alteration in original). “The descriptive text needed to
meet these requirements varies with the nature and scope of the invention at
issue, and with the scientific and technologic knowledge already in
existence.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
We agree with Appellant that the Specification shows possession of a
method for increasing seed yield and/or biomass in a plant relative to a
corresponding control plant, and a method for producing that plant. “[T]he
description requirement does not demand any particular form of disclosure,
or that the specification recite the claimed invention in haec verba.” Ariad,
598 F.3d at 1352 (citation omitted). Rather, “the test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
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those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. at 1351.
The Specification describes a method for improving various plant
growth characteristics by introducing and expressing in a plant or plant cells
a nucleic acid encoding a GRP. Spec. 1:4—6. Both independent claims
recite 95% sequence identity to SEQ ID NO: 252 and the dependent claims
disclose the sequences of all nucleotide sequences claimed. It is clear
Appellant possessed these limitations of the claims at the time the
application was filed as disclosure of an amino acid sequence effectively
puts those of skill in the art in possession of the entire genus of DNA
sequences that encode the amino acid sequence (See In re Wallach, 378 F.3d
1330, 1333 (Fed. Cir. 2004)) and techniques of introducing and expressing
DNA in a plant or plant cells are taught. See, e.g., Spec. Spec. 220-229:31
Appellant provides 45 examples that illustrate methods of identifying
the protein homologues of the disclosed nucleic acid sequences suitable for
use in the method, transforming plants with appropriate encoding sequences
to obtain protein expression, and evaluating the results through measurement
of seed yield or biomass. Spec. 172:20-229:31. The evaluation methods
include a nitrogen use efficiency screen, methods for measuring the
parameters used for evaluating whether the plant growth characteristics have
been improved (e.g., more efficient use of nitrogen), and methods for
statistical analysis of the results. Id. Examples 38-45 demonstrate
successful implementation of the method with the pGOS2::SYR gene
construct. Spec. 220-229:31.
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The fact that no experimental data is provided for certain disclosed
sequences and that the nexus between the conserved domains of certain
disclosures and the ability to confer the claimed benefits has not been
provided does not mean that Appellant was not in possession of the claimed
method as of the filing date, as the claims would have been understood at
that time, and with the information provided in the Specification to assist the
skilled artisan in performing the method. The Examiner has not shown that
a person of ordinary skill in the art would not have recognized possession of
the claimed method, based on the knowledge in the art at the time of filing,
from the Specification’s written description. Accordingly, we find the
preponderance of the evidence favors Appellant’s argument that the
Specification allow persons of ordinary skill in the art to recognize that the
inventors had possession of the claimed method of increasing seed yield
and/or biomass in a plant through transformation with nucleic acid
sequences. Ariad, 598 F.3d at 1351. We therefore reverse the rejection
under 35U.S.C. § 112, first paragraph, for lack of adequate written
description.
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Anticipation:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Ravanello teaches Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF1. The Examiner cites Ravanello as disclosing a polypeptide
sequence SEQ ID NO: 364 encoded by SEQ ID NO: 171 that is 100%
identical to Appellant’s SEQ ID NO: 252. Ans. 6—8. The Examiner
concludes SEQ ID NO: 364 comprises the conserved domains of SEQ ID
NOS: 256, 260 and 261, and that SEQ ID NO: 171 comprises the entire
coding sequence for the encoded protein. Id. The Examiner provides
sequence alignments of (1) SEQ ID NOs: 256, 260, and 261 to SEQ ID NO:
364; (2) SEQ ID NO: 252 to SEQ ID NO: 364; and (3) SEQ ID NO: 251 to
SEQ ID NO: 171 at Ans. 8—10. The Examiner concludes Ravanello’s
disclosure anticipates SEQ ID NO: 252. Id. at 8. Appellant does not contest
the identity of the alignments.
FF2. Claim 1 of Ravanello recites:
A plant cell with stably integrated, recombinant DNA
comprising a promoter that is functional in plant cells and that
is operably linked to DNA from a plant, bacteria or yeast that
encodes a protein having at least one domain of amino acids in
a sequence
wherein said plant cell is selected from a population of plant
cells with said recombinant DNA by screening plants that are
regenerated from plant cells in said population and that express
said protein for an enhanced trait as compared to control plants
that do not have said recombinant DNA; and wherein said
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enhanced trait is selected from group of enhanced traits
consisting of enhanced water use efficiency, enhanced cold
tolerance, increased yield, enhanced nitrogen use efficiency,
enhanced seed protein and enhanced seed oil.
FF3. Claim 2 of Ravanello recites:
A plant cell of claim 1 wherein said protein has an amino acid
sequence with at least 90% identity to a consensus amino acid
sequence in the group of consensus amino acid sequences
consisting of the consensus amino acid sequence constructed
for [sequences including SEQ ID NO: 364, listed in Table 7].
FF4. Claim 12 of Ravanello recites:
A method for manufacturing non-natural, transgenic seed that
can be used to produce a crop of transgenic plants with an
enhanced trait resulting from expression of stably integrated,
recombinant DNA comprising a promoter that is (a) functional
in plant cells and (b) is operably linked to DNA from a plant,
bacteria or yeast that encodes a protein having at least one
domain of amino acids in a sequence that [satisfies a sequence
alignment standard] wherein said enhanced trait is selected
from the group of enhanced traits consisting of enhanced water
use efficiency, enhanced cold tolerance, increased yield,
enhanced nitrogen use efficiency, enhanced seed protein and
enhanced seed oil, said method for manufacturing said seed
comprising: (a) screening a population of plants for said
enhanced trait and said recombinant DNA, wherein individual
plants in said population can exhibit said trait at a level less
than, essentially the same as or greater than the level that said
trait is exhibited in control plants which do not express the
recombinant DNA, (b) selecting from said population one or
more plants that exhibit the trait at a level greater than the level
that said trait is exhibited in control plants, (c) verifying that
said recombinant DNA is stably integrated in said selected
plants, (d) analyzing tissue of a selected plant to determine the
production of a protein having the function of a protein encoded
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by nucleotides in a sequence of one of SEQ ID NO: ID NO:l-
193; and (e) collecting seed from a selected plant.
FF5. Claim 15 of Ravanello recites: “A method of claim 12 wherein
said selecting is effected by identifying plants with said enhanced trait.”
FF6. Claim 16 of Ravanello recites: “A method of claim 12 wherein
said seed is com, soybean, cotton, alfalfa, wheat or rice seed.”
FF7. Ravanello discloses:
constitutive promoters are active under most environmental
conditions and states of development or cell differentiation.
These promoters are likely to provide expression of the
polynucleotide sequence at many stages of plant development
and in a majority of tissues. A variety of constitutive promoters
are known in the art. Examples of constitutive promoters that
are active in plant cells include but are not limited [citing
examples and incorporating reference Patents].
Ravanello 151.
FF8. Ravanello discloses:
As used herein, an “agronomic trait” means a
characteristic of a plant, which includes, but are not limited to,
plant morphology, physiology, growth and development, yield,
nutritional enhancement, disease or pest resistance, or
environmental or chemical tolerance. In the plants of this
invention the expression of identified recombinant DNA
confers an agronomically important trait, e.g., increased yield.
An “enhanced agronomic trait” refers to a measurable
improvement in an agronomic trait including, but not limited to,
yield increase, including increased yield under non-stress
conditions and increased yield under environmental stress
conditions. Stress conditions may include, for example,
drought, shade, fungal disease, viral disease, bacterial disease,
insect infestation, nematode infestation, cold temperature
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Application 12/302,295
exposure, heat exposure, osmotic stress, reduced nitrogen
nutrient availability, reduced phosphorus nutrient availability
and high plant density. “Yield” can be affected by . . .
efficiency of. . . nitrogen fixation, efficiency of nutrient
assimilation, resistance to biotic and abiotic stress.
Ravanello 143.
FF9. Ravanello discloses screening plants for enhanced argronomic
traits:
Transgenic plants having enhanced agronomic traits are
identified from populations of plants transformed as described
herein by evaluating the trait in a variety of assays to detect an
enhanced agronomic trait. These assays also may take many
forms, including but not limited to, analyses to detect changes
in the chemical composition, biomass, physiological properties,
morphology of the plant.
Ravanello 1 88. Example 10 (paragraphs 131—142) provides methods for
evaluating the existence of an enhanced agronomic trait.
FF10. Ravanello teaches selecting plants with enhanced nitrogen use
efficiency based on transformation with the nucleic acids of the invention.
Ravanello 118.
FF11. Ravanello teaches:
Progeny transgenic plants are selected from a population
of transgenic cotton events under specified growing conditions
and are compared with control cotton plants . . . Enhanced
water use efficiency is indicated by increased yield, improved
relative water content, enhanced leaf water potential, increased
biomass, enhanced leaf extension rates, and improved fiber
parameters.
Ravanello 1152.
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FF12. The Specification discloses “[performance of the methods of
the invention gives plants grown under conditions of nutrient deficiency,
particularly under conditions of nitrogen deficiency, increased yield relative
to control plants grown under comparable conditions.” Spec. 53:5—7.
FF13. The Examiner concludes that because Ravanello discloses
transforming plants with the nucleotide sequence, the plants produced by
that method would inherently exhibit the claimed benefits, such as increased
seed yield and biomass. Based on these findings, the Examiner concludes
Ravanello anticipates the claims. Ans. 8.
ANALYSIS
The Examiner finds that Ravanello discloses a polypeptide sequence
SEQ ID NO: 364 encoded by SEQ ID NO: 171 “that shares 100% identity
with instant SEQ ID NO: 252 and therefore comprises the conserved
domains” of SEQ ID NOS: 256, 260 and 261, and that “SEQ ID NO: 171
comprises the entire coding sequence for the encoded protein.” Ans. 6—7;
FF1. The Examiner concludes Ravanello’s disclosure anticipates SEQ ID
NO: 252. Id. at 8. Appellant does not contest the identity of the alignments.
The Examiner further finds Ravanello discloses
a plant cell exogenously expressing recombinant DNA
comprising a promoter operably linked to a sequence encoding
SEQ ID NO: 364, wherein said plant cell is regenerated into a
plant and screened (or selected) for enhanced water use
efficiency, cold tolerance, yield, nitrogen use efficiency (which
is a plant nutrient), seed protein, or seed yield
a method of producing transgenic seed to produce a crop of
transgenic plants having an enhanced trait comprising expressing
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in a plant said recombinant DNA, screening a population of
plants produced from said seed for said enhanced trait, and
selecting plants exhibiting said trait at a greater level than control
plants, wherein said trait is enhanced water use efficiency, cold
tolerance, yield, nitrogen use efficiency (which is a plant
nutrient), seed protein, or seed yield, wherein said plant seed is
rice [and] several constitutive promoters that may be used to
drive expression.
Ans. 7; FF2-4. The Examiner finds Ravanello discloses that “increased
yield may be obtained under abiotic stress conditions that yield traits
encompass[ing] seed number ear, seed size, and seed fill (i.e. seed yield).”
Ans. 7—8; FF4—11. The Examiner further finds Ravanello discloses
screening plants “for the enhanced trait under abiotic stress conditions
including nitrogen deficiency,” including by growing the plans under limited
nitrogen conditions and measuring their growth, and “specifically discloses
selecting plants for increased yield under drought conditions and increased
nitrogen use efficiency.” Ans. 8; FF4—FF11.
The Examiner concludes that “‘nitrogen use efficiency’” is equivalent
to or encompassed by the term “‘nutrient deficient stress’” based on the
Specification’s statement that nutrient deficiency encompasses nitrogen
deficiency. Ans. 8; FF12. Accordingly, the Examiner concludes that
nutrient deficient stress is one type of abiotic stress as claimed. Ans. 8.
The Examiner finds that because Ravanello discloses transforming
plants with the nucleotide sequence of SEQ ID NO: 171, which would lead
to creation of a polypeptide of SEQ ID NO: 364 in the resulting plants, any
plants produced by that method would inherently exhibit the claimed
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benefits, such as increased seed yield and biomass. Ans. 8. Based on these
findings, the Examiner concludes Ravanello anticipates the claims. Id.
We agree with the Examiner’s factual findings and conclusion that
Ravanello teaches methods for improving plant growth characteristics
through transformation with nucleic acid sequences. FF13.
Appellant argues Ravanello does not anticipate the alleged invention
because “the polypeptide of SEQ ID NO: 364, which is identified by the
Examiner as sharing 100% sequence identity with the polypeptide of SEQ
ID NO: 252 recited in the present claims” is “[a]mong thousands of
sequences disclosed in Ravanello” and not exemplified by any transgenic
plants. Br. 12. Appellant further argues that although Table 1 of Ravanello
discloses ‘“lead genes,’” the disclosed polypeptides
have diverse functions, including kinases, synthases, and
transcription factors . . . Accordingly, one skilled in the art
would not expect from the teaching of Ravanello that each of
the disclosed sequences would affect every one of the disclosed
traits. Furthermore, it would not be clear to the skilled artisan
reading Ravanello which, if any, of the disclosed traits would
be affected by the polypeptide of SEQ ID NO: 364 disclosed
therein, or whether increased or decreased expression would be
necessary to improve those traits.
Id. at 12—13.
Appellant further argues that because SEQ ID NO: 364 is not included
in Table 10, which provided the amino acid sequence of expressed proteins
that were shown to be associated with an enhanced trait, it is implied that
“this particular sequence was not associated with any of the disclosed traits.”
Id. at 13. For this reason, Appellant also contends that “the disclosure
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provided in Ravanello does not enable one of ordinary skill in the art to
make the invention claimed without undue experimentation.” Id. at 14.
These arguments are not persuasive. Ravanello highlights that SEQ
ID NO: 364 is an important polypeptide of the invention because it discloses
and claims SEQ ID NO: 364 in claims 1 and 2. FF2, FF3. The sequences of
claim 1 and 2 are disclosed for the claimed method of “manufacturing non­
natural transgenic seed that can be used to produce a crop of transgenic
plants with an enhanced trait resulting from expression” of the sequence.
FF4 (claim 12). Although Ravanello does not create a transgenic plant using
the nucleotide of SEQ ID NO: 364, Ravanello teaches how to do so by
providing all steps and a working example of a similar sequence in Example
45. “[A] reference can anticipate a claim even if it “d[oes] not expressly
spell out” all the limitations arranged or combined as in the claim, if a
person of skill in the art, reading the reference, would “at once envisage” the
claimed arrangement or combination.” See Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1392 (Fed. Cir. 2015) (finding a reference
can anticipate a claim where there is no evidence that the claimed
combination was in fact created, but where the claimed combination is
plainly suggested as an alternative embodiment). See also Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed.Cir.2001)
(“Rather, anticipation only requires that those suggestions be enabled to one
of skill in the art.”) Here, the skilled artisan is taught methods to create a
transgenic plant as claimed, and provided SEQ ID NO: 364 as a suitable
polypeptide for use in the method. Using this information, the skilled artisan
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can “at once envisage” the claimed method. Id. In addition, the Examiner
responds that
[w]hile it would have required some experimentation to
produce plants overexpressing SEQ ID NO: 364 and select
plants for the phenotypes disclosed by Ravanello, given the
high degree of skill of one in the art, this experimentation
would have been merely routine. Therefore, the reference is
enabling, and one would reasonably expect instant SEQ ID NO:
252 to increase seed yield and/or biomass under abiotic stress
conditions given that Ravanello explicitly teaches this.
Ans. 20—21.
The Examiner has the better position. To the extent Appellants argue
Ravanello teaches away from use of SEQ ID NO: 364, that argument is
unpersuasive as it is inapplicable to an anticipation analysis. See
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012). Furthermore, we agree with the Examiner that Ravanello teaches
that the nucleotide encoding SEQ ID NO: 364 is among the lead genes
useful for transforming plants to create crops useful for thriving despite
abiotic stress. Ans. 20—21.
Appellant next argues that a statement made by the Examiner during
prosecution of the Ravanello patent demonstrates that Ravanello is not an
enabling disclosure. Br. at 14—15. Appellant does not provide evidence
establishing non-enablement.
We are not persuaded. “[A] prior art printed publication cited by an
examiner is presumptively enabling barring any showing to the contrary by a
patent applicant.” In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir.
2012). Given the examples and disclosure of Ravanello discussed above,
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Appellant’s argument without evidence does not demonstrate that Ravanello
is non-enabling with regard to the polypeptide of SEQ ID NO: 364.
Finally, Appellant argues that the skilled artisan “reading the present
specification would not interpret the selection step as reading on mentally
selecting a plant or simply identifying transformants having a selectable
marker.” Br. 15. Rather, Appellant argues the present claims do not read on
“selecting a plant or selecting plants with a selectable marker.” Id. We are
not persuaded that Ravanello does not teach this limitation of claim 180. As
noted by the Examiner,
Ravanello discloses growing the transgenic plants under
low nitrogen stress and drought conditions and selecting plants
for increased yield and/or biomass. See in particular [0018],
which states “planting seed having plant cells of the invention
which are selected for enhanced nitrogen use efficiency” . . .
obtaining plants] by growing the plants under low nitrogen
stress, measuring various plant tissues, and selecting plants
having increased yield and/or biomass in comparison to control.
Ans. 17—18.
Thus, Ravanello anticipates “selecting” in the same manner as claim 180, as
the Specification discloses that nitrogen deficiency is a form of abiotic
stress. FF12.
We affirm the rejection of claim 180. Claims 181—187, 189-197, and
199, having not been separately argued, are also affirmed. 37 C.F.R.
§ 41.37(c)(l)(iv).
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Obviousness
ISSUE
Does the preponderance of evidence relied on by the Examiner
support a conclusion of obviousness?
FACTUAL FINDINGS
FF14. de Pater teaches “[w]hen the upstream region [of the GOS2
gene] was translationally fused to the reporter gene gusA, it was found to
drive expression in a variety of rice tissues and in cell suspensions of other
monocot species. . . .Therefore, the GOS2 promoter is potentially useful for
genetic engineering of monocots.” de Pater Abstract.
ANALYSIS
The Examiner rejects claims 180—199 as obvious over Ravanello and
de Pater. Appellant repeats the arguments presented supra with respect to
the Examiner’s rejection of claims 180—187, 189-197, and 199 under
35 U.S.C. § 102(b). Because we affirm the claims as being anticipated by
Ravanello, we, for the same reasons, affirm the rejections under 35 U.S.C.
§ 103(a). See In re Kalm, 378 F.2d 959, 962 (1967) (Anticipation is the
epitome of obviousness). Therefore, we limit our analysis to whether the
combination of Ravanello and de Pater renders claims 188 and 198 obvious.
Both claims specify that the method is used with a GOS2 constitutive
promoter. Br. (Claims Appendix) Al—A2.
The Examiner finds that Ravanello “fails to teach the constitutive
GOS2 promoter operably linked to a nucleotide sequence encoding a
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polypeptide sharing at least 95% identity to SEQ ID NO: 252” but that “de
Pater et al teach that the GOS2 promoter drives transcription of an operably
linked gusA reporter gene sequence in a variety of rice tissues, and
therefore, the GOS2 promoter may be used to genetically engineer
transgenic rice plants (abstract).” Ans. 12; FI4. Based on these teachings,
the Examiner concludes the ordinary artisan would have substituted the
GOS2 promoter for one of the constitutive promoters taught in Ravanello.
Ans. 12-13.
The Examiner provides sound fact-based reasoning for combining
Ravanello and de Pater. We adopt and incorporate by reference the
Examiner’s findings and conclusions as presented in the Final Action mailed
November 18, 2014, and Answer.
Appellant argues that de Pater does not remedy the alleged
deficiencies of Ravanello identified in Appellant’s earlier arguments with
regard to anticipation. Br. 16—17. We have addressed those arguments
above. Appellant further argues de Pater is relied upon
solely for allegedly teaching the GOS promoter and its use in
genetically engineering transgenic rice plants. Thus, it is clear
that the combined teaching of Ravanello and de Pater still fails
to teach or suggest that the polypeptide of SEQ ID NO: 364
disclosed in Ravanello would have any advantageous effect
when expressed in a plant, particularly in increasing seed yield
and/or biomass under abiotic stress conditions. As such, the
skilled person would not have been motivated to engage a
selection step to select for a plant having increased seed yield
and/or biomass under abiotic stress conditions as recited in the
present claims.
Id. at 17.
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Appeal 2016-000979
Application 12/302,295
The Examiner responds that because Ravanello teaches selecting
plants expressing SEQ ID NO: 364 for increased seed yield and/or biomass
under abiotic stress conditions,
de Pater is relied upon [only] for teachings regarding the
constitutive GOS2 promoter, and given that Ravanello teaches
that various constitutive promoters may be used to express the
sequence of interest in the plant (i.e. SEQ Id. NO: 364), it
would be obvious to use any constitutive promoter to do so, and
the specific constitutive promoter utilized is merely a design
choice between functional equivalents.
Ans. 22.
The Examiner has the better position. Ravanello teaches the claimed
method, including the use of a constitutive promoter. FF1—11. de Pater
teaches successful use of the GOS2 promoter in rice. FF14. Absent
evidence to the contrary, which Appellant does not provide, the simple
substitution of promoters suggested by the Examiner would have been
obvious to the skilled artisan at the time of the invention. See In re Mayne,
104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants merely
substituted one element known in the art for a known equivalent, this court
affirms [the rejection for obviousness].”). We therefore affirm the rejection
of claims 188 and 198, in addition to claims 180—187, 189-197, and 199.
SUMMARY
We reverse the rejection of claims 180-181, 183—191, and 193—199
under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement.
We affirm the rejection of claims 180-187, 189-197, and 199 under
pre-AIA 35 U.S.C. § 102(e) as anticipated by Ravanello.
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Appeal 2016-000979
Application 12/302,295
We affirm the rejection of claims 180—199 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Ravanello and de Pater.
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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