Ex Parte Ursin et al

Patent Trial and Appeal Board

Jul 27, 2017

13551602 (P.T.A.B. Jul. 27, 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.
13/551,602 07/17/2012 Virginia Ursin MONS:044USD1 2049
73905 7590
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIRGINIA URSIN, BYRON FROMAN, JENNIFER SIMMONS,
THOMAS J. LAROSA, FENGGAO DONG, and STEVEN SCREEN
Appeal 2016-000817
Application 13/551,6021
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal1 2 under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 53, 56—61, 63, and 64 in the above-identified
application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse.
1 According to Appellants, the real party in interest is Monsanto Company,
the parent company of assignee Monsanto Technology LLC. Appeal Br. 2,
Mar. 6,2015.
2 Appeal Br.; Reply Br., Oct. 27, 2015.
3 Final Office Action, Oct. 8, 2014 [hereinafter Final Action]; Examiner’s
Answer, Aug. 27, 2015 [hereinafter Answer], While the Examiner lists
claims 53—64 as rejected, see Final Action 3, Appellants had previously
canceled claims 54, 55, and 62. See Response to Non-Final Office Action 5,
June 18, 2014.
Appeal 2016-000817
Application 13/551,602
BACKGROUND
Appellants’ invention “relates generally to desaturase enzymes that
modulate the number and location of double bonds in long chain poly­
unsaturated fatty acids (LC-PUFA’s). In particular, the invention relates to
improvement of fatty acid profiles using desaturase enzymes and nucleic
acids encoding such desaturase enzymes.” Spec.4 2:9-12. Claim 53, the
sole independent claim, is representative:
53. An endogenous soybean seed oil comprising ALA (alpha-
linolenic acid), SDA (stearidonic acid), and GLA (gamma-
linolenic acid), wherein the ratio of SDA/GLA in said vegetable
oil is at least about 2.0.
Appeal Br. 11 (emphasis added to reflect key limitation).
The Examiner rejects claims 53, 56—61, 63, and 645 under 35 U.S.C.
§ 103(a) as being unpatentable over Knutzon6 in view of Trimbo.7 See Final
Action 3—6.
DISCUSSION
The Examiner finds that Knutzon teaches “a vegetable oil comprising
stearidonic acid (SDA) in amounts of about 5% to 30%.” Id. at 3 (citing
Knutzon 52:1—10); see also Answer 9 (citing Knutzon 11:30-40). The
Examiner also finds that because Knutson teaches
that polyunsaturated fatty acids are considered to be useful for
nutritional. . . purposes[, i]t is of interest to obtain genetic mate­
rial involved in PUFA biosynthesis from species that naturally
produce these fatty acids and to express the isolated material
4 Specification, Sept. 27, 2010 [hereinafter Spec.].
5 See supra n.3.
6 Knutzon, US 6,459,018 B1 (issued Oct. 1, 2002).
7 Trimbo, EP 0 696 453 A2 (published Feb. 14, 1996).
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Appeal 2016-000817
Application 13/551,602
alone or in combination in a heterologous system which can be
manipulated to allow production of commercial quantities of
PUFAS.
Id. The Examiner finds that Knutzon “teaches [that] oils containing SDA,
ALA, and GLA can be used for nutritional purposes,” but “does not teach
ratios in which GLA and ALA can be present in the oil composition.” Id.
According to the Examiner, Trimble teaches an oil that “contains GLA
and ALA,” where “GLA makes up 15% or less of the fatty acids present in
the composition,” and where “ALA provides less than ... or equal to 3% of
the total calories.” Id. at 3^4 (citing Trimble 1:54—56). The Examiner
determines that the combined teachings of Knutzon (up to 30% SDA in a
vegetable oil) and Trimble (up to 15% GLA by calorie content in an oil
mixture of at least GLA and ALA) “suggest the claimed ratio” of SDA/GLA.
Id.
The Examiner also finds that, “[a]s to the claimed ratio[] of SDA to
GLA . . ., it is to be expected that a change in temperature or in
concentration, or in both would be an unpatentable modification.” Id. at 4
(citing In reAller, 220 F.2d 454, 456 (CCPA 1955)). Thus, the Examiner
concludes, “it would have been obvious to one skilled in the art to vary the
amount of SDA, GLA and ALA based on the nutritional requirements of the
patient.” Id. at 5.
The Examiner gives no weight to the term endogenous because it
“merely reflects the source material of the oil and how the oil is procured,”
and is, therefore, a process limitation. See Answer 7 (citing In re Thorpe,
111 F.2d 695, 698 (Fed. Cir. 1985)). Likewise, the Examiner determines
that the phrase soybean seed oil is non-limiting because the claims are open-
ended and “do not exclude the addition of different types of oil.” Id. at 8.
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Appeal 2016-000817
Application 13/551,602
Appellants argue that the phrase endogenous soybean seed oil in claim
53 is limiting because it reflects structural characteristics of the oil. Appeal
Br. 5—8; Reply Br. 4—8. In support, Appellants direct our attention to an
affidavit of Dr. Toni Voelker dated February 24, 2014. See Appeal Br. 6—8.
According to Dr. Voelker, “an endogenous vegetable oil is an oil that has not
been supplemented with ALA, SDA, or GLA,” and as recited in the claims,
the oil “endogenously comprises ALA, SDA, and GLA, wherein the ratio of
SDA/GLA in said vegetable oil is at least about 2.0.” Voelker Deck 14. Dr.
Voelker states that this interpretation “is consistent with the ordinary
meaning of ‘endogenous’ as ‘originating or produced within an organism,
tissue, or cell.’” Id. (citing Voelker Ex. 1 (a printout of a website containing
several dictionary entries for endogenous)). Dr. Voelker also states that a
person of ordinary skill in the art would be able to distinguish between (1)
an endogenous vegetable oil containing a mixture of different fatty acids and
(2) a non-endogenous vegetable oil containing the same proportion of fatty
acids. See id. 6—11 (citing Reske et al., Triaglycerol Composition and
Structure in Genetically Modified Sunflower and Soybean Oils, 74 JAOCS
989 (1997)), Voelker Ex. 2). Dr. Voelker states that “a supplemented
vegetable oil according to a combination of Trimbo and Knutzon is not an
endogenous vegetable oil” as recited in the claims. Id. 1 5.
The Examiner does not dispute Dr. Voelker’s testimony in the Answer,
and we find that testimony persuasive of reversible error in the Examiner’s
rejection. The preponderance of the evidence on this record shows that the
phrase endogenous soybean seed oil imparts structural features to the oil as
recited in claim 53, and is entitled to patentable weight. Moreover, the plain
meaning of claim 53 is that the endogenous soybean seed oil has the
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Appeal 2016-000817
Application 13/551,602
SDA/GLA ratio recited in claim 53 prior to any supplementation with other
oils. While the claim is open ended, the term comprising modifies the
phrase endogenous soybean seed oil, and simply indicates that the
endogenous oil may contain components other than ALA, SDA, and GLA.
For the above reasons, we reverse the Examiner’s rejection of claim
53. We likewise reverse the Examiner’s rejection of claims 56—61, 63, and
64 because they depend directly or indirectly from claim 53, and the
Examiner’s additional findings regarding these claims do not cure the
deficiencies in the rejection of claim 53.
DECISION
The Examiner’s decision is reversed.
REVERSED
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