James Petrie et al.

Patent Trials and Appeals Board

Jul 29, 2020

14834914 - (D) (P.T.A.B. Jul. 29, 2020)

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.
14/834,914 08/25/2015 James Robertson Petrie 81870-AA/JPW 5753
23432 7590 07/29/2020
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
KEOGH, MATTHEW R
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
DUSPTO@cooperdunham.com
patcomm-in-grp@cooperdunham.com
pdocketing@cooperdunham.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ROBERTSON PETRIE, THOMAS VANHERCKE,
PUSHKAR SHRESTHA, QING LIU, and SURINDER PAL SINGH
Appeal 2019-005619
Application 14/834,914
Technology Center 1600

Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 85 and 86.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Commonwealth Scientific and Industrial Research Organisation (“CSIRO”).
Appeal Br. 3.
2 Claims 83–92 and 94–99 are currently pending in the instant application.
While an appeal, when taken, is presumed to be taken from the rejection of
all claims under rejection unless cancelled by an amendment filed by the
applicant and entered by the Office, 37 C.F.R. § 41.31(c) (2018), in this case
Appellant explicitly stated in the Appeal Brief that “[t]he claims being
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Application 14/834,914

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STATEMENT OF THE CASE
“Plant lipids such as seedoil triacylglycerols (TAGs) have many
uses,” including for the production of biofuel. Spec. 1:13–17. “[T]he
primary TAG synthesis pathway found in plants is the Kennedy, or glycerol
phosphate[,] pathway.” Id. at 2:12–14. “To maximise yields for the
commercial production of lipids, there is a need for further means to increase
the levels of lipids, particular non-polar lipids such as [diacylglycerols
(DAGs)] and TAGs, in transgenic organisms or parts thereof such as plants,
seeds, leaves, algae[,] and fungi.” Id. at 2:12, 3:4–7.
“The monoacylglycerol acyltransferase (MGAT) enzyme is associated
with mammals, primarily with the intestine in mammals where it catalyzes
the synthesis of . . . DAG[] directly from monoacylglycerol (MAG) and fatty
acyl-CoA.” Id. at 2:10–12. According to the Specification, “[t]he present
inventors have surprisingly demonstrated that the transgenic expression of a
MGAT gene or a related gene results in significant increases in lipid yield in
cells such as plant cells” and “have also identified a new pathway for the
synthesis of DAG and TAG in transgenic organisms such as plants, which is
different to the well-known Kennedy pathway.” Id. at 3:10–14.

appealed are claims 85 and 86.” Appeal Br. 5. Thus, we limit our
consideration to these claims. We note that Appellant argues in the Reply
Brief that claims 84 and 94 also “should not be included in the [nonstatutory
double patenting] rejection.” Reply Br. 2. However, Appellant has waived
arguments with respect to these claims because the rejection as to these
claims were not timely appealed. Cf. Ex parte Nakashima, 93 USPQ2d
1834, 1837 (BPAI 2010) (informative) (explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief).
Appeal 2019-005619
Application 14/834,914

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CLAIMED SUBJECT MATTER
Claims 85 and 86, the only claims on appeal, are directed to a plant
comprising certain exogenous polynucleotides and the recited level of
triacylglycerol in a unicellular or the vegetative part of a plant. These claims
and claims 83 and 84, from which they depend, are reproduced below:
83. A plant comprising
i) a first exogenous polynucleotide which encodes a
monoacylglycerol acyltransferase (MGAT) and
which is expressed in a vegetative part of the plant
or, if the plant is a unicellular plant, in the
unicellular plant,
ii) a second exogenous polynucleotide which encodes
a diacylglycerol acyltransferase (DGAT), a
glycerol-3- phosphate acyltransferase (GPAT), or
both, and which is expressed in a vegetative part of
the plant or, if the plant is a unicellular plant, in the
unicellular plant, and
iii) a level of triacylglycerol (TAG) in the vegetative
part of the plant or in the unicellular plant that is
greater on a relative basis when compared to such
a vegetative part of a plant or unicellular plant,
respectively, lacking the first exogenous
polynucleotide and comprising the second
exogenous polynucleotide.

84. The plant of claim 83, wherein the level of TAG in the
vegetative part of the plant or in the unicellular plant is at
least 10% greater on a relative basis when compared to
the vegetative part of the plant or unicellular plant
lacking the first exogenous polynucleotide and
comprising the second exogenous polynucleotide.

85. The plant of claim 84, wherein the level of TAG in the
vegetative part of the plant or in the unicellular plant is at
least 30% greater on a relative basis when compared to
the vegetative part of the plant or unicellular plant
Appeal 2019-005619
Application 14/834,914

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lacking the first exogenous polynucleotide and
comprising the second exogenous polynucleotide.

86. The plant of claim 85, wherein the level of TAG in the
vegetative part of the plant or in the unicellular plant is at
least 90% greater on a relative basis when compared to
the vegetative part of the plant or unicellular plant
lacking the first exogenous polynucleotide and
comprising the second exogenous polynucleotide.
Appeal Br. App. A.1 1–3 (Claims App.).
REJECTION
Claims 85 and 86 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1–20
of U.S. Patent No. 9,127,288 (’288 patent).

OPINION
A. Issue
The Examiner asserts that, although the claims on appeal are not
identical to claims 1–20 of the ’288 patent, they are not patentably distinct
from each other because, among other things, (1) “the instantly claimed
plants would have need to have been produced” in order to practice the
methods claimed in the ’288 patent; (2) the Specification in the instant
application is identical to the specification of the ’288 patent; and (3) “the
instantly claimed embodiments were also taught in the specification of the
[’288 patent].” Ans. 4.
Appellant contends that the Examiner has not set forth a proper
obviousness-type double patenting rejection of the pending claims because
the Examiner has not “set forth the required claim by claim analysis between
any rejected claim and any single cited claim” or “asserted or explained
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where any element of any one of the rejected claims is allegedly disclosed in
any single cited claim.” Appeal Br. 8.
Appellant contends that “it would not have been obvious from any
claim of [’288 patent] that a plant comprising (i) an exogenous MGAT and
(ii) an exogenous DGAT, an exogenous GPAT, or both, would have 30% or
90% greater TAG than a plant comprising an exogenous DGAT without an
exogenous MGAT.” Appeal Br. 10–11. Appellant contends that, while
“claim 20 [of the ’288 patent] recites that the plant part which comprises an
exogenous MGAT and GPAT has 10% greater TAG than such a plant part
comprising an exogenous Arabidopsis thaliana DGAT1 and GPAT,” “[t]his
relative increase . . . is not the same as the relative increase recited in claim
85 or in claim 86,” which requires that “in plants that comprise an
exogenous GPAT, an exogenous DGAT, or both, MGAT causes an at least
30% or at least 90% increase in TAG.” Id. Appellant further contends that
“there is no rationale of record for concluding that the relative increase in
TAG recited in claims 85 and 86 could be obvious from claim 20 of [the
’288 patent].” Id. at 12.
The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s conclusion that claims 85 and 86 are not
patentably distinct from one or more of the claims of the ’288 patent.
B. Analysis
To facilitate our analysis, below we provide a chart comparing the
claim limitations of instant claims 85 and 86, including the claim limitations
of claims 83 and 84, from which claims 85 and 86 depend, and the claim
limitations of claim 18–20 of the ’288 patent, including the claim limitations
of claim 1, from which claim 18–20 depend.
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Claim
number
’914 application
(application on appeal)
Claim
number
’288 patent
(reference patent)
83. A plant comprising i) a
first exogenous
polynucleotide which
encodes a
monoacylglycerol
acyltransferase (MGAT)
and which is expressed in
a vegetative part of the
plant or, if the plant is a
unicellular plant, in the
unicellular plant,
1.

A method of producing
extracted lipid, the method
comprising the step of:
a) selecting a vegetative
part of a plant or a
unicellular plant i)
expressing an exogenous
monoacylglycerol
acyltransferase (MGAT);
83. ii) a second exogenous
polynucleotide which
encodes a diacylglycerol
acyltransferase (DGAT),
a glycerol-3-phosphate
acyltransferase (GPAT),
or both, and which is
expressed in a vegetative
part of the plant or, if the
plant is a unicellular
plant, in the unicellular
plant, and
18.

The method of claim 1,
wherein the plant or
vegetative part of the plant
or unicellular plant further
comprises an exogenous
glycerol-3-phosphate
acyltransferase (GPAT).

83. iii) a level of
triacylglycerol (TAG) in
the vegetative part of
the plant or in the
unicellular plant that is
greater on a
relative basis when
compared to such a
vegetative part of
a plant or unicellular
plant, respectively,
lacking the
first exogenous
polynucleotide and
1. ii) comprising a level of
triacylglycerol (TAG) that
is greater on a relative
basis when compared to
such a vegetative part of a
plant or unicellular plant
lacking the exogenous
MGAT,
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comprising the second
exogenous
polynucleotide.
84/85/86 The plant of claim
83/84/85, wherein the
level of TAG in the
vegetative part of the
plant or in the unicellular
plant is at least 10%/at
least 30%/at least 90%
greater on a relative basis
when compared
to the vegetative part of
the plant or unicellular
plant lacking
the first exogenous
polynucleotide and
comprising the second
exogenous
polynucleotide.
20. The method of claim 19,3
wherein the level of TAG
in the vegetative part of
the plant or unicellular
plant is at least 10%
greater on a relative basis
when compared to such a
vegetative part of a plant
or unicellular plant
lacking the exogenous
MGAT.

Based on the above comparison of claims, we determine that claims
18, 19, and 20 of the ’288 patent each meet all of the limitations of claims 85
and 86 on appeal, except that the reference claims do not explicitly disclose
a TAG level in the vegetative plant part or unicellular plant that is “at least
30% greater” (claim 85) or “at least 90% greater” (claim 86) on a relative
basis when compared to the vegetative plant part or unicellular plant lacking
MGAT (i.e., the first exogenous polynucleotide) but comprising either
DGAT or GPAT (i.e., the second exogenous polynucleotide).

3 Claim 19 recites “[t]he method of claim 18, wherein the exogenous GPAT
has phosphatase activity to produce MAG.” ’288 patent 89:16–17 (claim
19).
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However, claim 18 and claim 19 (which depends from claim 18) both
recite a vegetative plant part or unicellular plant expressing both an
exogenous MGAT and an exogenous GPAT and comprising a TAG level
that is “greater” on a relative basis when compared to that vegetative plant
part or unicellular plant lacking the exogenous MGAT. Similarly, claim 20
(which depends from claim 19) recites a level of TAG that is “at least 10%
greater” on a relative basis. The reference claims therefore disclose a TAG
level that overlaps the levels recited in claims 85 and 86 on appeal.
The predecessor to our reviewing court has explained that, “where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456 (CCPA 1955). In this case, claims 18–20 of the
’288 patent recite the “general conditions” of appealed claims 85 and 86—
i.e., expression of certain exogenous polynucleotides in the vegetative part
of a plant or a unicellular plant and a greater level of TAG in such plant part
or plant on a relative basis. Appellant has not provided any persuasive
evidence why the levels of TAG specifically recited in the claims on appeal
result from anything other than routine optimization or selection, or are
otherwise unexpected. We therefore agree with the Examiner that claims 85
and 86 are unpatentable on the ground of nonstatutory double patenting as
being obvious over claim 18, 19, or 20 of the ’288 patent.4

4 To the extent the Examiner’s nonstatutory double patenting rejection of
claims 85 and 86 is based on the rationale that claims 85 and 86 are obvious
over one or more of claims 1–17 of the ’288 patent, we do not agree with
and do not adopt the Examiner’s reasoning. In particular, as Appellant
points out, none of claims 1–17 requires a vegetative part of a plant or a
unicellular plant that expresses an exogenous DGAT or GPAT, as recited in
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Appellant argues that the Examiner has not “set forth the required
claim by claim analysis between any rejected claim and any single cited
claim.” Appeal Br. 8; see also id. at 10.
We do not agree with Appellant’s position. Our reviewing court has
explained that
the PTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the
applicant . . . [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original).
In this case, the Examiner set forth in the Answer a comparison
between claim 18 of the ’288 patent and independent claim 83 of the instant
application, id. at 8–9, noted that claim 84 of the instant application and
claim 20 of the ’288 patent both recite that TAG is increased by at least 10%
on a relative basis, id. at 9, and pointed out that, while claims 85 and 86
differ from claim 84 in that “[they] require that TAG [levels are] increased
30% and 90% on a relative basis, respectively,” a skilled artisan would have
had reason to try to increase TAG production through routine optimization,
id. at 10. In our view, therefore, the Examiner explained the basis of the
rejection adequately to allow Appellant to recognize and respond to the
rejection.5

instant claim 83, from which claims 85 and 86 depend, and the Examiner has
not persuasively explained why a skilled artisan would have found it obvious
to express such polynucleotides in light of claims 1–17 of the ’288 patent.
5 To the extent the Examiner’s nonstatutory double patenting rejection of
claims 85 and 86 is based on the rationale that claims in the ‘288 patent may
be combined to support a obviousness-type double patenting rejection,
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Appellant also argues that no claim of the ’288 patent recites
a vegetative plant part or unicellular plant with “a level of . . . TAG[]
in the vegetative part of the plant or in the unicellular plant [that] is at
least 30% [or at least 90%] greater on a relative basis when compared
to . . . such a vegetative part of the plant or unicellular plant . . .
lacking the first exogenous polynucleotide and comprising the second
exogenous polynucleotide[,]” as recited in claim[s] 85 [and 86].
Appeal Br. 9–10; see also Reply Br. 8. Appellant further argues that “there
is no rationale of record for concluding that the relative increase in TAG
recited in claims 85 and 86 could be obvious from claim 20 of [the ’288
patent].” Appeal Br. 12.
To the extent Appellant is arguing that claims 18–20 of the ’288
patent do not recite or render obvious the specific amounts of increase in
TAG levels recited in appealed claims 85 and 86, see, e.g., Appeal Br. 11
(arguing that, “[o]f claims 18-20 of [the ’288 patent,], which recite a

however, we disagree with and do not adopt the Examiner’s reasoning.
Such a combination would amount to using the disclosures in the claims as
prior art. “[T]he disclosure of a patent cited in support of a double patenting
rejection cannot be used as though it were prior art, even where the
disclosure is found in the claims.” General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281 (Fed. Cir. 1992). For
similar reasons, to the extent the Examiner’s rejection is based on the fact
that the ’288 patent and the instant application have identical specifications,
or is otherwise based on disclosures in the ’288 patent, we disagree with and
do not adopt the Examiner’s reasoning. While the reference patent’s
specification “may be used to determine whether a claim ‘merely define[s]
an obvious variation of what is earlier disclosed and claimed,’ ‘to learn the
meaning of [claim] terms,’ and to ‘interpret [] the coverage of [a] claim,’”
Sun Pharm. Indus. Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 1387 (Fed. Cir.
2010), the Examiner has not persuasively shown that any use of the
specification of the ’288 patent in the nonstatutory double patenting
rejection in this instance would fall within these categories.
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vegetative plant part or unicellular plant further comprising an exogenous
GPAT, only claim[] 20 recites a minimum relative increase in level of
TAG”), Reply Br. 8, we are not persuaded for the reasons already discussed.
Appellant also argues, however, that “[t]he relative increase recited in
claims 85 and 86 is that, in plants that comprise an exogenous GPAT, an
exogenous DGAT, or both, MGAT causes an at least 30% or at least 90%
increase in TAG,” which is in contrast to and different from the increase in
TAG recited in claim 20 of the ’288 patent, which is that, “in plants that
comprise an exogenous GPAT, MGAT causes an increase in TAG that is at
least 10% greater than the increase in TAG that an exogenous Arabidopsis
DGAT causes.” Appeal Br. 11–12; see also Reply Br. 8–9.
We are not persuaded. As the Examiner points out, claim 20 of the
’288 patent does not recite a vegetable plant part or a unicellular plant
comprising an exogenous Arabidopsis DGAT, or require that “MGAT
causes an increase in TAG that is at least 10% greater than the increase in
TAG that an exogenous Arabidopsis DGAT causes.” Ans. 9; ’288 patent
87:65–88:9, 89:13–22 (claims 1, 18–20). Rather, claim 20 recites a
vegetative part of a plant or a unicellular plant expressing an exogenous
MGAT and an exogenous GPAT, wherein the exogenous GPAT has
phosphatase activity to produce MAG, and wherein “the level of TAG in the
vegetative part of the plant or unicellular plant is at least 10% greater on a
relative basis when compared to such a vegetative part of a plant or
unicellular plant lacking the exogenous MGAT.”6

6 We note that in an amendment submitted with the Request for Continued
Examination on March 24, 2015, then-claim 123, which eventually became
claim 20 of the ’288 patent, recited “[t]he method of claim 122, wherein the
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Accordingly, we affirm the Examiner’s rejection of claims 85 and 86
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 18–20 of the ’288 patent.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
85, 86

Nonstatutory
Double Patenting
85, 86

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

level of TAG in the vegetative part of the plant or unicellular plant is at least
10% greater on a relative basis when compared to such a vegetative part of a
plant or unicellular plant lacking the exogenous MGAT but comprising an
exogenous Arabidopsis thaliana DGAT1.” March 24, 2015 Amendments to
the Claims 4–5. However, this language was not in the ’288 patent as
issued.