Ex Parte Sticklen

Board of Patent Appeals and Interferences

Sep 19, 2011

11489234 (B.P.A.I. Sep. 19, 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.
11/489,234 07/19/2006 Masomeh B. Sticklen MSU 4.1-804 (A) 9614
7590 09/19/2011
Ian C. McLeod
McLeod & Moyne, P.C.
2190 Commons Parkway
Okemos, MI 48864
EXAMINER
PAGE, BRENT T
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
09/19/2011 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 MASOMEH B. STICKLEN
__________

Appeal 2011-004681
Application 11/489,234
Technology Center 1600
__________

Before DONALD E. ADAMS, RICHARD LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
transgenic plant. The Patent Examiner rejected the claims on the ground of
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-004681
Application 11/489,234

2
STATEMENT OF THE CASE
The invention relates to transgenic plants that express enzymes such
as cellulase, that degrade cellulose into fermentable sugars. (Spec. 8,
[0017].) Fermentable sugars can be fermented to ethanol or other products.
“When the transgenic plants are harvested, the plants are ground to release
the cellulase . . . which then can be used to degrade the lignin and cellulose
of the transgenic plants or other plants to produce the fermentable sugars.”
(Id.)
Claims 1-5, 8, 9, 14-19, 21-23, 34, and 35 are on appeal. Claim 1 is
representative and reads as follows:
1. A transgenic plant capable of expressing one or more cell wall
degrading enzymes comprising:
(a) at least one DNA comprising a cell wall degrading β-
glucosidase enzyme coding region operably linked to a nucleotide
sequence encoding a signal peptide directing the cell wall degrading
β-glucosidase enzyme encoded by the DNA to a plastid or apoplast in
the leaves of the transgenic plant; and
(b) at least one DNA comprising a flowering locus c gene
coding region operably linked to a constitutive promoter, wherein the
transgenic plant expresses the one or more cell wall degrading
enzymes and a transcription factor encoded by the flowering locus c
gene that delays flowering while increasing biomass and enabling
isolation of increased amounts of the cell wall degrading enzymes
from the transgenic plant as compared to a non-transgenic plant from
which the transgenic plant is derived.

The Examiner rejected claims 1-5, 8, 9, 14-19, 21-23, 34, and 35
under 35 U.S.C. § 103(a) as unpatentable over Austin-Phillips,1 Amasino,2

1 Sandra Austin-Phillips et al., US 6,818,803 B1, issued Nov. 16, 2004.
2 Richard Mark Amasino et al., US 6,693,228 B1, issued Feb. 17, 2004.
Appeal 2011-004681
Application 11/489,234

3
Lin,3 and Xie.4 Appellant states that “claims 1-5, 8-10, 14-19, 21-23, and
34-39 are grouped and argued as a single unit with claim 1.” (App. Br. 12.)
We note however that claims 10 and 36-39 were not rejected, having been
withdrawn from examination. (App. Br. 5.) Claims 2-5, 8, 9, 14-19, 21-23,
34, and 35 have not been argued separately and therefore stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issues
The Examiner found that Austin-Phillips described a transgenic plant
used for biomass that differed from the plant defined in Appellants’ claim 1
by not including DNA encoding a flowering locus c gene coding region.
(Ans. 4-6.) However, because Amasino taught that yield from biomass
crops can be increased by delaying flowering with the flowering locus c
(FLC) gene, the Examiner concluded that it would have been obvious to add
Amasino’s FLC gene to Austin-Phillips’ plants. (Id. at 6-8.)
Appellant contends that the rejection erred by:
(a) assuming that Amasino’s FLC gene could be incorporated into
Austin-Phillips’ cellulase-expressing transgenic plant, with the resulting
plant still being able to express a cellulase along with a delayed flowering
time (App. Br. 15-16);

3 LL Lin et al., Cloning, sequencing and analysis of expression of a
Butyrivibrio fibrisolvens gene encoding a beta-glucosidase, 136 J. GEN.
MICROBIOL. 1567-1576 (1990) (abstract).
4 Yong Xie et al., Nucelotide sequence of a ribulose-1,5-bisphosphate
carboxylase/oxygenase small subunit gene (rbcS) in rice, 16 NUCLEIC ACIDS
RES. 7749 (1988).
Appeal 2011-004681
Application 11/489,234

4
(b) inferring that Austin-Phillips’ cellulase was expressed during the
vegetative growth phase, and that increased biomass means increased
cellulase expression (id. at 16-17); and
(c) by using Appellant’s disclosure as a template to bring the Austin-
Phillips and Amasino references together in a hindsight reconstruction (id. at
17).

Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the prior art.

Principles of Law
“One of the ways in which a patent’s subject matter can be proved
obvious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
patent’s claims.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20
(2007). See also, Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.,
411 F.3d 1332, 1339 (Fed. Cir. 2005) (affirming obviousness where “the
nature of the problem called for exactly the solutions in the prior art”);
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1366 (Fed. Cir. 2006) (“the ‘evidence’ of motive will likely
consist of an explanation of the well-known principle or problem-solving
strategy to be applied”).
“Obviousness does not require absolute predictability of success. . . .
[A]ll that is required is a reasonable expectation of success.” In re
O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). The presence of a
Appeal 2011-004681
Application 11/489,234

5
reasonable expectation of success is measured from the perspective of a
person of ordinary skill in the art at the time the invention was made. Life
Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000).

Analysis
We affirm the rejection for the reasons given in the “Grounds of
Rejection.” (Ans. 4-8.) We find Appellant’s contentions unpersuasive and
agree with the “Response to Argument” section of the Examiner’s Answer.
(Id. at 8-12.)
Appellant’s allegations of “hindsight reconstruction” are rebutted by
the evidence. Improving biomass yield was an art-recognized problem, but
the claimed invention simply applies known approaches to the problem,
yielding results suggested by the Amasino and Austin-Phillips disclosures.
See KSR, 550 U.S. at 419-20; Princeton Biochemicals, 411 F.3d at 1339;
DyStar, 464 F.3d at 1366. The rejection specifically identified evidence that
the prior art suggested exactly the problem solution that Appellant claims.
Appellant’s allegations of erroneous assumptions or inferences in the
rejection are likewise unpersuasive. The rejection provided evidence
supporting a reasonable expectation of successfully adding the FLC gene to
Austin-Phillips’ plant and exploiting its function. Appellant provides no
evidence that a person of ordinary skill in the art would have expected a
contrary result. See, e.g., Life Techs., 224 F.3d at 1326.

Appeal 2011-004681
Application 11/489,234

6
SUMMARY
We affirm the rejection of claims 1-5, 8, 9, 14-19, 21-23, 34, and 35
under 35 U.S.C. § 103(a) as unpatentable over Austin-Phillips, Amasino,
Lin, and Xie.

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

lp