Ex Parte Spangenberg et al

Patent Trial and Appeal Board

Aug 4, 2016

13063992 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/063,992 03/15/2011
57381 7590
Larson & Anderson, LLC
P.O. BOX 4928
DILLON, CO 80435
08/04/2016
FIRST NAMED INVENTOR
German Spangenberg
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.
JOTL.P-017 8089
EXAMINER
DEVEAU ROSEN, JASON
ART UNIT PAPER NUMBER
1662
MAILDATE DELIVERY MODE
08/04/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte GERMAN SP AN GENBERG, AIDYN MOURADOV,
MEGAN ELIZABETH GRIFFITH, and
LUCIANO GASTON MARTELOTTO
Appeal2014-008645
Application 13/063,992
Technology Center 1600
Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
P AULRAJ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a genetic
construct and a method of transforming plants with such a construct. The
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
1 Appellants identify the Real Party in Interest as Agriculture Victoria
Services Pty Ltd. (See Appeal Br. 1 ).
Appeal2014-008645
Application 13/063,992
STATEMENT OF THE CASE
Background
According to the Specification, "Applicants have found that it is
possible to nutritionally enhance plants eg. forage grasses and/or to increase
plant biomass by spatial reprogramming of the fructan-biosynthesis pathway
in photosynthetic cells." Spec. 3, 11. 2--4. The Specification notes that "it is
thought that by bringing two enzymes in a pathway into close proximity, for
example by expressing a translational fusion, expression of the individual
enzymes may be co-ordinated thereby improving the efficiency of the
pathway." Id. at 11. 26-29. The Specification further notes that
by expressing a translational fusion of two or more FT genes
(e.g. Lpl-SST and Lp6G-FFT), problems associated with
differences in the expression patterns of these genes
independently integrated into the plant genome may be
alleviated, resulting in conversion of the sucrose molecules
directly to fructans, those exhibiting a low degree of
polymerisation ('low DP fructans') and a high degree of
polymerization ('high DP fructans'). Furthermore, the FT
proteins may physically associate with each other to form a
metabolic channel for the efficient biosynthesis of fructans.
Id. at 4, 11. 1-7. The claimed invention seeks to achieve the foregoing with a
genetic construct encoding a fusion protein of two or more fructan-
biosynthetic enzymes whose expression is controlled by a light-regulated
promoter. Id. at 14.
The Claims
Claims 39, 40, 45, 49, and 52-56 are on appeal. Independent claim 56
is representative and reads as follows:
A genetic construct, said genetic construct including a
light-regulated promoter operatively linked to nucleic acids
encoding two or more fructan biosynthetic enzymes, wherein
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Application 13/063,992
said nucleic acids are linked to form a fusion gene encoding a
fusion protein of said two or more enzymes.
The Rejections
The Examiner has rejected the claims as follows:
I. Claims 39, 40, 45, and 53-56 under 35 U.S.C. § 103(a) as being
unpatentable over Pilon-Smits, 2 Koops, 3 Tian, 4 and Shimizu-
Sato. 5
II. Claims 49 and 52 under 35 U.S.C. § 103(a) as being
unpatentable over Pilon-Smits, Koops, Tian, and Shimizu-Sato,
and further in view of Spangenberg. 6
ANALYSIS
Because it is dispositive as to all issues on appeal, we focus our
analysis on the rejection of independent claim 56, which is directed to the
genetic construct. Independent claim 55 recites a method that utilizes the
same genetic construct.
The Examiner finds that Pilon-Smits teaches a sugar beet transformed
with a genetic construct consisting of a constitutive promoter operatively
linked to a nucleic acid sequence encoding the 6-SFT enzyme, and that the
expression of this gene construct in sugar beet plants leads to the selection of
2 Pilon-Smits et al., Enhanced drought resistance infructan-producing sugar
beet, 37 Plant Physiol. Biochem. 313-317 (1999) ("Pilon-Smits").
3 Koops et al., US 6,664,444 B 1, issued Dec. 16, 2003 ("Koops").
4 Tian and Dixon, Engineering isoflavone metabolism with an artificial
bifunctional enzyme, 224 Planta 496-507 (2006) ("Tian").
5 Shimizu-Sato et al., A light-switchable gene promoter system, 20 Nature
Biotechnology 1041-1044 (2002) ("Shimizu-Sato").
6 Spangenberg et al., US 7,227,055 B2, issued June 5, 2007
("Spangenberg").
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Appeal2014-008645
Application 13/063,992
transfonnants with enhanced biomass. Ans. 3. The Examiner further finds
that Koops teaches:
a genetic construct capable of manipulating fructan biosynthesis
in photosynthetic cells of a plant wherein the construct is
chimeric (col. 23; Example 8) and includes the enhanced
CaMV35S (Penh35S) promoter (col. 14 bridging col. 15, lines
66-67 and line 1) operably linked to the a33 gene coding for 1-
SST (col. 6, lines 25-29) and the c86 gene coding for 1-FFT
(col 6, lines 38-44).
Id. at 4.
The Examiner acknowledges that neither Pilon-Smits nor Koops
teaches a) a fusion gene encoding a fusion protein of two or more fructan
biosynthetic enzymes orb) the use of a light-regulated promoter. The
Examiner relies upon Tian and Shimizu-Sato to make up for these
deficiencies. We determine that the Examiner has not made a prima facie
showing of obviousness.
First, with respect to the requirement of a fusion gene encoding for a
fusion protein, the Examiner has not sufficiently taken into account the
unpredictability associated with the expression of fusion genes, as
recognized by Tian. For example, Tian teaches that an in-frame fusion of
thiolase and reductase genes was constructed for polyhydroxybutyrate
biosynthesis, but "plants transformed with this construct produced less
polyhydroxybutyrate than plants expressing thiolase and reductase
individually." Tian, 497, col. 2. Tian further teaches that "[a] direct head to
tail fusion of two proteins together often restrains the correct folding of the
individual components, and hence leads to non-functional or mal-functional
enzymes." Id. at 503, col. 2. As such, the Examiner has not shown that the
skilled artisan would have a reasonable expectation of success in
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Application 13/063,992
extrapolating Tian's teachings regarding an IFS/CHI fusion protein to other
plant biosynthesis enzymes, and in particular to a fusion gene encoding for
the fructan biosynthesis enzymes required by the claimed genetic construct.
Second, with respect to the requirement for a light-regulated
promoter, the Examiner asserts that "one of ordinary skill in the art would be
motivated to control the expression of fructan biosynthetic genes under the
control of a light inducible promoter as taught by Shimizu-Sato because
different and precise levels of inulin can be produced." Ans. 10. The
Examiner, however, has not provided a reason why the skilled artisan would
want to control the production of inulin in such a manner. In particular, we
agree with Appellants that "the Examiner has not said why part time
expression, or expression only in certain plant parts [i.e., spatiotemporal
control] is desirable for the purposes of the other references." Appeal Br. 6.
For example, the Examiner has not shown that the skilled artisan would be
concerned with either over-expression or under-expression of fructan-
biosynthesis enzymes in the transgenic plants discussed in Koops or Pilon-
Smits, which could be remedied by the use of a light-regulated promoter.
For the foregoing reasons, we reverse the obviousness rejection of
claims 39, 40, 45, and 53-56 based on the combination of Pilon-Smits,
Koops, Tian, and Shimizu-Sato. Additionally, the Examiner has not shown
that the teachings of Spangenberg make up for the foregoing deficiencies in
the primary rejection, and therefore we also reverse the obviousness
rejection of claims 49 and 52.
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Appeal2014-008645
Application 13/063,992
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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