Ex Parte Zhang et al

Patent Trial and Appeal Board

Jan 25, 2017

12360991 (P.T.A.B. Jan. 25, 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.
12/360,991 01/28/2009 Xingping Zhang 60170USC11 7429
22847 7590 01/27/2017
SYNGENTA CROP PROTECTION LLC
PATENT DEPARTMENT
PO Box 12257
9 Davis Drive
Research Triangle Park, NC 27709-2257
EXAMINER
VISONE, LEE A
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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):
global.patents @ syngenta. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINGPING ZHANG and THOMAS VARE WILLIAMS1
Appeal 2015-004768
Application 12/360,991
Technology Center 1600
Before JOHN G. NEW, RICHARD J. SMITH, and DAVID COTTA,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
watermelon plant. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the written description rejection.
STATEMENT OF THE CASE
Background
“This invention is in the field of watermelon breeding, specifically
relating to diploid watermelons used to pollinate triploid watermelon plants
1 According to Appellants, the real party in interest is Syngenta
Participations AG. (Appeal Br. 2.)
Appeal 2015-004768
Application 12/360,991
for the commercial production of seedless watermelon fruit.” (Spec. 1,11.
11-13.)
Claims on Appeal
Claims 1, 2, 6—8, 12—17, 20, and 21 are on appeal. (Claims Appendix,
Appeal Br. 30-32.) Claim 1 is illustrative and reads as follows:
1. A watermelon plant comprising at maturity:
a) a fruit having a weight in the range of 2 lbs to 7 lbs and a rind
which breaks under a pressure of not more than 1,800 g when a
fruit tester with a 2 mm tip is used or under a pressure of not
more than 2,300 g when a fruit tester with a 3 mm tip is used;
b) a 5th leaf from the smallest new leaf on a vine having a surface
area of not more than 50 cm2, wherein said leaf is characterized
by deep, non-overlapping lobes;
and
c) heavily branching open or lacy vines.
Examiner’s Rejections
1. Claims 1, 2, 6—8, 12—17, 20, and 21 stand rejected under 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. (Ans. 2—6.)
Claims 1, 2, 6—8, 12—17, 20, and 21 were not separately argued, and
we therefore limit our discussion to claim 1.
2. Claims 1, 2, 6—8, 12—17, 20, and 21 stand rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated or, in the alternative, obvious under pre-AIA
35 U.S.C. § 103(a) over Porter,2 when taken with the evidence of Economic
2 Porter, Hilgardia 10(12), 489-509 (1937) (“Porter”).
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Application 12/360,991
Research Service,3 Buttrose,4 Karchi ’83,5 Sundstrom,6 and Karchi ’81.7
(Ans. 6—8.)
FINDINGS OF FACT
We adopt as our own the Examiner’s findings regarding the failure to
satisfy the written description requirement. The following findings are
included for emphasis and reference convenience.
FF 1. The Examiner finds that Appellants are in possession of “a narrow
invention limited to the watermelon pollenizer line NO1F3203B, also known
as SP-1 (see, for example, page 35, lines 1-13); however, they are
broadly claiming every watermelon plant having the claimed
characteristics.” (Ans. 2.)
FF 2. The Examiner finds that Appellants are not in possession of the
subject matter of claims 1, 2, 6—8, 12—17, 20, and 21. (Id. at 2—6.)
FF 3. The Specification states that
a watermelon (OW824) is selected having the characteristics of
a heavily branching lacy vine, early and prolific male flowers,
and small leaves with deep, non-overlapping leaf lobes. ... a
hybrid watermelon (OW823) is selected for its small fruit (2—3
kg) with brittle rind that splits easily . . . [cjrossing OW824 X
3 Economic Research Service, Watermelons: An Economic Assessment of the
Feasibility of Providing Multiple-Peril Crop Insurance, USD A (1994).
4 Buttrose et al., Some Effects of Light Intensity~ Daylength and
Temperature on Growth of Fruiting and Non fruiting
Watermelon (Citrullus lanatus) 42 Ann. Bot. 599-608 (1978).
5 Karchi et al., The Importance of Cultural Practices in Materializing Yield
Potential in a Tetraploid Watermelon Cultivar, 6 Cucurbit Genetic Coop.
59-61 (1983).
6 Sundstrom et al., Influence of K and Ca on Quality and Yield of
Watermelon, 108 J.Am Soc. Hort. Sci. 879-81 (1983).
7 Karchi et al., Alena Watermelon- A Quality Cultivar for Export and Local
Markets, 61 Hassadeh 1284—85 (1981).
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Application 12/360,991
OW823 generated progeny having the characteristics of the
enhanced pollenizer diploid watermelon of the present invention
(Spec. 9,1. 30-10,1. 8.)
FF 4. The Specification states that “NO1F3203B contains the traits that are
illustrative of the traits of the enhanced pollenizer of the invention. Other
enhanced pollenizer lines with similar characteristics were for example SP-2
with slightly larger leaves than SP-1, and SP-3 with slightly larger fruits than
SP-1 and a different fruit skin color.” (Id. at 10,11. 17—20.)
FF 5. The Specification states that “[cjlearly, due to various environmental
and physiological conditions, the size of the leaves of a watermelon plant
may vary.” (Id. at 11,11. 30-31.)
FF 6. The Specification states that “FIG. 1 illustrates the non-overlapping
characteristic of the deep, non-overlapping lobed leaves of the enhanced
pollenizer. Clearly, due to various environmental and physical forces, some
of the leaves in this population may have some overlapping lobes, but
overlapping lobes are not characteristic thereof.” (Id. at 16,11. 1 4.)
FF 7. The Specification states that “[t]he environmental conditions
generally influence the brittleness of the rind of a fruit of the present
invention. For example, the rind of fruits grown under warm and sunny
conditions tends to be more brittle than that of fruits grown under cooler and
shadier conditions.” (Id. at 18,11. 3—5.)
DISCUSSION
We adopt and agree with the Examiner’s findings and conclusions
regarding the written description rejection, as set forth in the Final Action
dated May 21, 2014 (Final Act. 4—10) and Examiner’s Answer (Ans. 2—6, 8—
31), and that rejection is affirmed. However, we disagree with the Examiner
regarding the rejection based on 35 U.S.C. § 102(b), or in the alternative
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Application 12/360,991
§ 103(a), and that rejection is reversed.
Rejection No. 1 — Written Description
Issue
Whether the Specification’s description shows that Appellants were in
possession of the watermelon plant recited in claim 1.
Principles of Law
In evaluating compliance with the written description requirement,
“the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(citing cases).
When claims are drawn to a genus, “a sufficient description of [the]
genus . . . requires the disclosure of either a representative number of species
falling within the scope of the genus or structural features common to the
members of the genus so that one of skill in the art can ‘visualize or
recognize’ the members of the genus.” Id. at 1350 (quoting Regents of the
University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568—69 (Fed.
Cir. 1997)). Moreover, when claims are drawn to a genus using functional
language to define a desired result, “the specification must demonstrate that
the applicant has made a generic invention that achieves the claimed result
and do so by showing that the applicant has invented species sufficient to
support a claim to the fimctionally-defmed genus.” AbbVie Deutschland
GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1299 (Fed. Cir.
2014) (quoting Ariad, 598 F.3d at 1349).
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Analysis
The Examiner finds that Appellants were not in possession of the
subject matter of claim 1. (FF 2.) In particular, the Examiner finds that
Although [Appellants] disclose[] a watermelon plant
having the claimed characteristics, one of skill in the art would
not recognize that [Appellants were] in possession of the broad
genus of watermelon plants having the characteristics as claimed.
[Appellants are] claiming any watermelon plant with the recited
characteristics, but the instant specification only discloses
watermelon pollenizer line NO1F3203B, also known as SP-1,
having the claimed characteristics and having the common
attribute of using watermelon lines OW824 and OW823 in the
initial cross.
(Ans. 5—6.)
The Examiner finds that Appellants have “not disclosed a
representative number of species falling within the scope of the genus.” {Id.
at 3.) In addition, the Examiner finds that Appellants have not disclosed
structural features common to the members of the genus, and that a skilled
artisan would readily appreciate that the claimed characteristics “are simply
the function of the genetic characteristics of the plant and the environment in
which the plant was grown.” {Id. at 4.) According to the Examiner,
In a given genus of plants, the genome would be the
common structural feature that is needed to establish a sufficient
structure-function relationship. However, the instant claims are
not directed to a specific variety with a constant genetic base; but
rather, they are directed to an extremely large genus of plants
whose structure {i.e. genome) could vary dramatically. Moreover
this extremely large and highly variable genus is claimed solely
on phenotypic characteristics that could change yearly or due to
any number of environmental influences.
{Id.)
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The Examiner states that “environmental conditions greatly affect
numerous watermelon phenotypic characteristics,” such as (1) the year and
location in which the plant was grown, (2) light intensity, day length, and
temperature, (3) fertilization and irrigation regimes, (4) shading, (5) soil
potassium levels, and (6) harvest point. (Ans. 3—4.) The Examiner cites to
several references in support of that position.8
Appellants advance several arguments in response to the Examiner’s
rejection. (See Appeal Br. 4—18; Reply Br. 2—10.) Appellants point to
specific language in the Specification as filed corresponding to the wording
of claim 1. (Appeal Br. 4—5.) Appellants also point to the Zhang
Declaration9 and the Zhang Supplemental Declaration10 as “showing clearly
that the recited traits of the claimed invention are not limited to the specific
genetics of the watermelon lines OW824 and OW823 or to the deposited
watermelon line NO1F3203B (SP-1).” (Id. at 5.) Appellants further argue
that the Zhang Declaration states that “the specification of the application
provides general guidance and a specific example of how to [] make the
enhanced pollenizer of the claimed invention.” (Id.)
Appellants also argue that the Specification discloses “more than the
single example” of SP-1, referring to SP-2 and SP-3. (Id.) In addition,
Appellants point to the Supp. Zhang Declaration showing third party
8 Karchi ’81, Buttrose, Karchi ’83, Sundstrom, Kano, J. Hort. Sci.
Biotechnol. 79:142-145 (2004), andNerson et al., Hassedeh 62:606-607
(1982)). (See Ans. 3^1; Appeal Br. 10-11.)
9 Declaration of Zingping Zhang, Ph.D. (Under 37 C.F.R. § 1.132), dated
Oct. 8, 2007 (“Zhang Declaration” or “Zhang Deck”).
10 Supplemental Declaration of Zingping Zhang, Ph.D. under 37 C.F.R.
§ 1.132, dated Jan. 28, 2013 (“Supp. Zhang Declaration” or “Supp. Decl.”).
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production of a watermelon pollenizer to argue that “others have been able
to follow the guidance provided by Appellants as set forth in the
specification.”11 {Id. at 5—6.) Appellants also argue that the claims are “not
limited to a single characteristic . . . but rather what is claimed are
watermelon plants comprising the specific combination of
characteristics.”12 {Id. at 10.)
In response to the Examiner’s position regarding environment
conditions and the corresponding references, Appellants argue that “at best
these publications show that plant phenotypes are controlled by genetics and
may be influenced by the environment.” {Id. at 11.) In addition, according
to Appellants,
none of the references cited by the Examiner provide any
evidence that rind brittleness or the surface area of 5th leaf from
the smallest new leaf on a vine, for example, are characteristics
that change so substantially in response to the environment such
that they are only functional components of the plant as
asserted by the Examiner.
(Id. at 13-14.)
Finally, Appellants argue that “the cited references simply do not
stand for the proposition that all plant phenotypes are controlled or even so
influenced by the environment that phenotypic descriptions become
meaningless.” {Id. at 15.)
11 We acknowledge Appellants’ explanation and arguments regarding the
benefits and advantages of Appellants’ watermelon pollinizer. (Appeal Br.
6—10.) However, those arguments do not address the issue of whether
Appellants’ Specification as filed shows that Appellants had possession of
the claimed subject matter as of the filing date.
12 This argument is made in response to an analogy made by the Examiner.
While we do not disagree with the point made by the Examiner, we do not
rely upon that analogy in reaching our decision.
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Application 12/360,991
We find that the Examiner has the better position. As an initial
matter, the written description requirement is not necessarily satisfied by
generalizations used in the Specification or by generic claim language in the
claims as filed. Ariad, 598 F.3d at 1351 (“generic language in the
application as filed does not automatically satisfy the written description
requirement”). Furthermore, the written description requirement must be
satisfied by the disclosure of the Specification and not, for example, by a
watermelon line (SP-4) referenced in the Zhang Declaration. (Id.)
Moreover, the ability of third parties to make and use the claimed invention
relates to the enablement requirement, not the written description
requirement, which is a separate requirement from enablement. (Id.)
Appellants argue that the Specification discloses “more than the single
example” of SP-1, and identify SP-2 and SP-3 as examples of species within
the claimed genus. (Appeal Br. 5.) We find that Appellants’ have only
disclosed a single species — watermelon pollenizer line NO1F3203B, also
known as SP-1. (FF 1.) Fines SP-2 and SP-3 are described as having
“similar characteristics” as SP-1, but are not described as falling within the
scope of claim 1. (FF 4.) Watermelon line SP-4, referenced in the Zhang
Declaration, is of no relevance because it is not described in the
Specification.
Regarding the issue of environmental conditions, the Specification
teaches that environmental conditions may influence both the leaves and
brittleness of the rind of a fruit. (FF 5—7.) Accordingly, we discern no error
in the Examiner’s reliance on environmental conditions as giving rise to a
level of unpredictability or variability that contributes to the lack of
sufficient written description support in this case. See AbbVie, 759 F.3d at
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1301; In re Curtis, 354 F.3d 1347, 1358 (Fed. Cir. 2004) (“patentee will not
be deemed to have invented species sufficient to constitute the genus by
virtue of having disclosed a single species when, as is the case here, the
evidence indicates ordinary artisans could not predict the operability in the
invention of any species other than the one disclosed.”).
Here, claim 1 describes a genus of watermelon plants based on their
phenotypic characteristics or traits. Appellants acknowledge that the traits
recited in claim 1 “are not limited to the specific genetics of the watermelon
lines OW824 and OW823 or to the deposited watermelon line NO1F3203B
(SP-1).” (Appeal Br. 5, referencing the Zhang Declaration and Supp. Zhang
Declaration.) Yet Appellants’ Specification discloses only a single species
(SP-1), and not a representative number of species, falling within the scope
of the genus. (Ans. 3.) Moreover, the characteristics recited in claim 1 are
a “function of the genetic characteristics of the plant and the environment in
which the plant was grown.” {Id. at 4.) Thus, claim 1 is drawn to a genus
defined using functional language but, again, the Specification does not
show that Appellants “invented species sufficient to support a claim to the
functionally-defined genus.” See AbbVie, 759 F.3d at 1299. Accordingly,
Appellants have not established that they were in possession of the broad
genus of watermelon plants as recited in claim 1.13
13 We acknowledge Appellants’ arguments regarding the existence of other
patents relating to plants (Reply Br. 6—7), but are unpersuaded, at least
because a written description analysis is highly fact specific. See Ariad, 598
F.3d at 1351. We also acknowledge Appellants’ arguments regarding plant
variety protection (PVP) certificates (Appeal Br. 15—16), but are
unpersuaded, at least because of the different scope of protection afforded by
PVP certificates. Seelmazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d
1560, 1564—68 (Fed. Cir. 1995).
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Conclusion
We find that the Examiner established a prima facie case of
unpatentability based on 35 U.S.C. § 112 (pre-AIA), first paragraph, for
failing to comply with the written description requirement, and that
Appellants’ arguments and evidence are not sufficient to overcome or rebut
that prima facie case. Accordingly, a preponderance of evidence of record
supports the Examiner’s finding that Appellants’ Specification fails to show
that Appellants were in possession of the genus of watermelon plants recited
in claim 1. Claims 2, 6—8, 12—17, 20, and 21 were not argued separately and
fall with claim 1.14
Rejection No. 2 — Anticipation/Obviousness
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection of claims 1, 2, 6—8, 12—17, 20, and 21 under pre-AIA
35 U.S.C. § 102(b) as anticipated or, in the alternative, obvious under pre-
AIA 35 U.S.C. § 103(a).
Analysis
The Examiner’s rejection is based on Porter’s teaching of a plant
having an explosive or brittle rind, that the brittle rind phenotype is linked to
gene e, and that “the plant of Porter would inherently have the same
characteristics” as claimed. (Ans. 6—7; see, e.g., characteristics a), b), and c)
of claim 1.) In addition, the Examiner points to the other references (cited in
14 While Appellants mention the recitations of claims 2, 20, and 21 (see, e.g.,
Appeal Br. 14, 17), such statements do not constitute a separate argument for
patentability. See 37 C.F.R. § 41.37(c)(l)(iv); see also In reLovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011).
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the rejection as evidence), and their teachings regarding environmental
conditions, to conclude that “the instantly claimed genus of watermelon
plants is anticipated, or alternatively obvious, in view of the explosive rind
watermelon plants taught by Porter.” {Id. at 8.)
We are not persuaded. The Examiner bears the initial burden of
establishing a prima facie case of anticipation or obviousness and has not
done so. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We agree
with Appellants that Porter does not disclose every limitation of the claimed
invention, either explicitly or inherently, as required for anticipation.
(Appeal Br. 19-21.); see In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). We also agree with Appellants that the prior art does not suggest all
of the limitations in the claims. See CFMT, Inc. v. Yieldup Int’l Corp., 349
F.3d 1333, 1342 (Fed. Cir. 2003) (a prima facie case for obviousness
“requires a suggestion of all limitations in a claim”).
The error in the Examiner’s analysis is the reliance on inherency for
the claimed traits or characteristics not recited in Porter. In order for the
claimed characteristics to be inherent in the plant of Porter, they must be the
“natural result” of the Porter plant. See Par Pharm., Inc. v. TWI Pharms.,
Inc., 773 F.3d 1186, 1194—96 (Fed. Cir. 2014) (discussing inherency in the
obviousness context). But the Examiner relies on environmental conditions
which, as discussed above, are variable and may have an unpredictable
effect on phenotypic characteristics. Thus, while a plant as disclosed by
Porter may result in a plant having the characteristics of the claims, that is
not sufficient to establish inherency. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (“Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
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from a given set of circumstances is not sufficient.”) (citations and internal
quotation marks omitted).
Conclusion
A preponderance of evidence of record fails to support the
Examiner’s rejection of claims 1, 2, 6—8, 12—17, 20, and 21 under pre-AIA
35 U.S.C. § 102(b) as anticipated or, in the alternative, obvious under pre-
AIA 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection of claims 1, 2, 6—8, 12—17, 20, and 21 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the rejection of claims 1, 2, 6—8, 12—17, 20, and 21 under
pre-AIA 35 U.S.C. § 102(b) as anticipated or, in the alternative, obvious
under pre-AIA 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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
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