Ex Parte Spangenberg et al

Patent Trials and Appeals Board

Mar 1, 2019

14020694 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/020,694 09/06/2013 German Spangenberg
80834 7590 03/05/2019
Magleby Cataxinos & Greenwood/Dow AgroSciences LLC
170 S. Main Street
Suite 1100
Salt Lake City, UT 84101
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.
10992.lUS (72292-US-NP) 1053
EXAMINER
ZHONG, WAYNESHAOBIN
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
ptomail@mcgiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERMAN SP AN GENBERG, SAREENA SAHAB,
and JOHN MASON
Appeal2018-004443
Application 14/020,694
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to methods for producing transgenic plants from plant protoplasts.
The Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Claims 15, 18, and 26-36 are on appeal and can be found in the
1 Appellants identify the real party in interest as Dow AgroSciences, LLC.
App. Br. 2. Herein we refer to the Final Office Action mailed March 9,
2017 ("Final Act."), Appeal Brief filed July 10, 2017 ("App. Br."),
Examiner's Answer, mailed January 26, 2018 ("Ans."), and Reply Brief
filed March 23, 2018 ("Reply Br.").
Appeal2018-004443
Application 14/020,694
Claims Appendix of the Appeal Brief. Claims 15 and 26 are the only
independent claims. They read as follows:
15. A method for producing a transgenic plant, the method
compnsmg:
providing a population of plant protoplasts having at least
one protoplast encapsulated by sodium alginate, comprising a
polynucleotide of interest, a fluorescent marker, and a zinc-finger
nuclease, such that the polynucleotide of interest is capable of
being integrated in the genome of the plant protoplast(s) by
homologous recombination at a recognition site of the zinc-
finger nuclease;
separating the protoplast( s) comprising the polynucleotide
of interest and the fluorescent marker from the remaining plant
protoplasts in the population by fluorescence-activated cell
sorting (F ACS); and
regenerating the transgenic plant from the protoplast(s).
26. A method for generating a plant from a population of plant
protoplasts, the method comprising:
separating a plant protoplast encapsulated by sodium
alginate from a population of plant protoplasts by fluorescence-
activated cell sorting (FACS), wherein the sodium alginate-
encapsulated plant protoplast comprises a polynucleotide of
interest and a fluorescent marker, and wherein the population of
plant protoplasts is substantially free of plant protoplasts
comprising the fluorescent marker and not comprising the
polynucleotide of interest; and
regenerating a plant from the sodium alginate-
encapsulated plant protoplast that is separated from the
population of plant protoplasts.
App. Br. 12.
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Appeal2018-004443
Application 14/020,694
Appellants seek review of Examiner's rejection of claims 15, 18, and
26-36 under 35 U.S.C. § 103 as unpatentable over Cai,2 Bargmann, 3 and
Vijayalaxmi. 4
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the cited prior art renders obvious the claimed
methods of generating plants from protoplasts encapsulated by sodium
alginate, as claimed?
Findings of Fact
FF 1. Cai teaches methods for transforming plant cells, including
protoplasts, by using zinc finger nuclease-mediated homologous
recombination to introduce a polynucleotide sequence of interest into a
predetermined site in a plant genome. Cai, Abstract, ,r,r 168, 286-89, 294.
In this technique, zinc finger nucleases are used to introduce an exogenous
nucleotide sequence, including a gene of interest and/ or a marker gene, into
the genome of a plant cell. Id. ,r,r 316-17, 320, Fig. 1. Cai teaches that
"fluorescence-activated cell sorting" may be used to identify and quantify
those cells in which transformation has occurred. Id. ,r 377.
FF2. Bargmann teaches the use of fluorescence-activated cell sorting
or F ACS to select and sort transformed plant protoplasts. Bargmann,
Abstract. In Bargmann, protoplasts were harvested from the roots of
2 Qihua Cai et al., US 2010/0257638 Al, published Oct. 7, 2010 ("Cai").
3 Bastiaan O.R. Bargmann et al., Positive Fluorescent Selection Permits
Precise, Rapid, and In-depth Overexpression Analysis in Plant Protoplasts,
Plant Physiology, Vol. 149, 1231-1239 (2009) ("Bargmann").
4 G Vijayalaxmi et al., Plaint Regeneration from Protoplasts of Indica Rice
cv. Tellahamsa, Proceedings of the Indian Nat'l Sci. Acad., B63, No. 6,
1231-1239 (1997) ("Vijayalaxmi").
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Application 14/020,694
seedlings grown from seeds plated on MS agar. Bargmann 1238. The roots
were placed in "[p ]rotoplasting solution" and then transfected with a
plasmid. Id. After incubation, the protoplast solutions were FACS sorted
"using phosphate-buffered saline as a sheath fluid." See id. ("Flow
Cytometry and FACS" section).
FF3. Vijayalaxmi teaches the regeneration of plants from plant
protoplasts. Vijayalaxmi, Abstract. Vijayalaxmi teaches that protoplasts
were isolated from suspension cells and then cultured using three different
culture techniques: "(a) Alginate bead technique, (b) Agarose bead, and ( c)
Agarose entrapment" in various media. Id. at 632-33. "Protoplast derived
embryogenic compact calli" were then regenerated into whole plants. Id. at
633. Vijayalaxmi reports that "AA medium combined with alginate bead
technique (figure le) was found to be better in obtaining high plating
efficiency." Id. at 644, Table 1.
Analysis
Appellants argue that their claims are patentable over the cited prior
art because none of those references teach F ACS of protoplasts encapsulated
by sodium alginate, which is a requirement of all of the claims on appeal.
App. Br. 5. According to Appellants, Cai and Bargmann do not disclose
encapsulating protoplasts in sodium alginate, or any other material, during
sorting. Reply Br. 6. Appellants contend that Vijayalaxmi teaches alginate
only as a material that improves plant regeneration because it allows the
protoplast "'to develop further."' App. Br. 8 ( quoting Vijayalaxmi 636). In
their view, "[t]his benefit and use has no perceivable relevance to
fluorescence-activated cell sorting of single protoplasts prior to
regeneration." App. Br. 8. Thus, Appellants urge that Examiner has not
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Application 14/020,694
articulated a sufficient rationale to modify these teachings such that
transformed protoplasts are encapsulated in sodium alginate for F ACS, as
claimed.
Examiner's position is that Cai and Bargmann teach the use of "agar
for suspending, transforming, and sorting cells" and that sodium alginate is
the "functional equivalent" of agar and agarose. Final Act. 8-9. According
to Examiner, Vijayalaxmi teaches that sodium alginate "is made/used for
gene transfer/transformation of protoplasts" and "produces higher
regeneration efficiency than agarose." Id. at 9. Thus, Examiner states it
would be obvious to substitute sodium alginate for agar in the transformation
and sorting processes taught in Cai and Bargmann. Id. at 9-10.
On this record, we find that Appellants have the better position. First,
Examiner has not established that the references support the finding that Cai
and Bargmann teach the use of agar to encapsulate protoplasts for sorting.
At most, Cai discloses that agar is used to suspend whole cells for
transformation (Cai ,r 343) or plant embryos for selection (id. ,r 388). While
Cai teaches that F ACS can be used to identify and quantify transformed cells
(FF 1 ), Examiner has not sufficiently articulated how those teachings support
a finding that Cai discloses protoplasts encapsulated in agar for FACS. In
Bargmann, protoplasts were harvested from the roots of seedlings grown
from seeds plated on agar. FF2. Those protoplasts were suspended in
solution, transformed, and then F ACS sorted "using phosphate-buffered
saline as a sheath fluid." Bargmann 1238. Examiner has not articulated how
that teaching supports a finding that Bargmann's protoplasts are
encapsulated in agar for F ACS. Accordingly, Examiner has not established
the premise, i.e., that the prior art teaches sorting of agar or agarose
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Application 14/020,694
encapsulated protoplasts, for Examiner's determination that it would be
obvious to substitute sodium alginate as a functional equivalent for agar in
the sorting process.
We also disagree with Examiner's finding that Vijayalaxmi teaches
the use of sodium alginate to encapsulate protoplasts for transformation.
Vijayalaxmi is directed to the regeneration of protoplasts into whole plants.
FF3. There, untransformed protoplasts were first isolated from cell
suspension and then cultured using "AA medium combined with alginate
bead technique" to produce to calli that were then regenerated into whole
plants. Vijayalaxmi 633-34. Vijayalaxmi suggests that its regeneration
techniques could be used in genetic transformation. See id. ("Establishment
of regenerable embryogenic suspension cultures is a prerequisite for its
subsequent use in genetic transformation via protoplast system."). But even
so, Examiner has not sufficiently articulated a rationale to combine
Vijayalaxmi's "alginate bead technique" to encapsulate protoplasts for
F ACS ( as expressly required by Appellants' claims) rather than later after
the transformed protoplasts have already been sorted and isolated. This is
particularly so because the higher plating efficiency that Vijayalaxmi reports
for "AA medium combined with alginate bead technique" resulted when the
technique was applied after isolation of the protoplasts-not before, as
claimed here. Id. at 633-34.
For the reasons discussed above, we conclude that Examiner did not
establish by a preponderance of the evidence that Appellants' claims would
have been obvious over the cited prior art references. Accordingly, we
reverse Examiner's obviousness rejection.
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Application 14/020,694
SUMMARY
We reverse the rejection of claims 15, 18, and 26-36 as unpatentable
under 35 U.S.C. § 103 over Cai, Bargmann, and Vijayalaxmi.
REVERSED
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