Ex Parte Webb

Board of Patent Appeals and Interferences

Aug 17, 2010

10352418 (B.P.A.I. Aug. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID M. WEBB
__________

Appeal 2009-011137
Application 10/352,418
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011137
Application 10/352,418

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STATEMENT OF THE CASE
The following claim is representative and read as follows:

7. A method of selecting at least one soybean plant by marker
assisted selection of a quantitative trait locus ("QTL") associated with
soybean cyst nematode resistance, wherein said QTL is localized to a
chromosomal interval on linkage group G above the marker pk69 and on or
below the marker php02366, the sequence of marker php02366 having been
deposited with the ATCC as Accession Number 69934, said method
comprising testing at least one marker on said chromosomal interval for said
QTL and selecting said soybean plant comprising said QTL.

Cited References
The Examiner relies on the following prior art references:
Concibido et al., DNA Marker Analysis of Loci underlying Resistance to
Soybean Cyst Nematode (Heterodera glycines Ichinohe), Crop Science 34,
pp. 240-246 (1994).

Keim et al., RFLP Mapping in Soybean: Association Between Marker Loci
and Variation in Quantitative Traits, Genetics 126, pp. 735-742 (1990).

Boutin et al., Soybean Genetics Newsletter, Vol. 19, pp. 123-127 (1992).

Grounds of Rejection
Claims 7, 8, 12 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Concibido in view of Boutin, taken with the evidence of
Keim.

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Discussion
ISSUE
The Examiner concludes that
Concibido et al teach a method of selecting at least one soybean plant
by marker assisted selection of a QTL associated with soybean cyst
nematode resistance wherein said QTL is localized to a chromosomal
region, said method comprising testing at least one marker (pB 32) on
a chromosomal interval (chromosomal interval of linkage group A)
(see, for example, page 137, last paragraph to page 138, lines 1-9) and
selecting a soybean plant comprising said QTL (see page 138, Figure
1).
Concibido et al do not teach a QTL localized to a chromosomal
interval on linkage group G above the marker pk69 and on or below
the marker php07366, Boutin et al teach RFLP marker pK69 and that
it is associated with soybean cyst nematode resistance (see page 125,
last paragraph). It would have been obvious to one of ordinary skill in
the art to select other markers above and below marker pK69 to
determine if other markers are associated with soybean cyst nematode
resistance.

(Ans. 4-5.)
Appellant contends that “the use of markers above pk69 was not
obvious…because pk69 was thought [in the prior art] to be at the top of
linkage group G.” (App. Br. 5-6.)
The issue is: Do the cited references render the claimed method prima
facie obvious?

PRINCIPLES OF LAW
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
Appeal 2009-011137
Application 10/352,418

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(2007). “Often, it will be necessary . . . to look to interrelated teachings of
multiple [references] . . . and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed[.]” Id. at 418. “[T]his analysis should be made explicit” (id. at 418),
and it “can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” (id.). “[T]here must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
When evaluating claims for obviousness, “the prior art as a whole
must be considered. The teachings are to be viewed as they would have
been viewed by one of ordinary skill.” In re Hedges, 783 F.2d 1038, 1041
(Fed. Cir. 1986).

FINDINGS OF FACT
The Examiner’s fact finding is set forth in the Answer at pages 3-6.

ANALYSIS
The Examiner concludes that
one of ordinary skill in the art would have understood [from the prior
art] that markers close to marker pk69 could also have been associated
with soybean cyst nematode [SCN resistance] and therefore would
have been motivated to search for them.
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(Ans. 8.)
Appellant argues that the claims require testing at least one marker on
the “chromosomal interval on the linkage group G above the marker pk69
and on or below the marker php02366.” (App. Br. 5.) The Appellant argues
that “Boutin et al. teach marker pk69 on linkage group B, not linkage group
G. (Id. at 7.) Appellants further argue that Keim generally teaches that some
markers on linkage group B have duplicates on linkage group G. (Id.)
Appellants conclude that each of the references “failed to recognize that
linkage group G extended beyond pk69 and that a QTL for SCN resistance
was located on linkage group G above pk69.” (Id. at 8.) The use of markers
above pk69 was not obvious because pk69 was thought to be the top of
linkage group G. (App. Br. 5-6.)
We essentially agree with Appellant’s arguments as set forth in the
Brief and Reply Brief. We find no evidence to support recognition in the
prior art cited that linkage group G extended beyond pk69 and that a QTL
for SCN resistance was located on linkage group G above pk69.

Appeal 2009-011137
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CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejection and do not disclose the claimed method.

REVERSED

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