MONSANTO TECHNOLOGY LLC

Patent Trials and Appeals Board

Sep 9, 2020

2019006060 (P.T.A.B. Sep. 9, 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.
14/996,093 01/14/2016 Robert E. McGowen DPLN:132US 3215
73905 7590 09/09/2020
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
KRUSE, DAVID H
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
09/09/2020 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROBERT E. MCGOWEN
__________

Appeal 2019-006060
Application 14/996,093
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ELIZABETH A. LAVIER, and
MICHAEL A. VALEK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the decision entered June 15, 2020
(“Decision”) that affirmed the Examiner’s obviousness rejection under 35
U.S.C. § 103(a) over McGowen ’3241 and Brinker2 and obviousness-type
double patenting rejection over McGowen ’4843 and Brinker.
We deny the requested relief.

DISCUSSION
Appellant asserts two specific errors under 37 C.F.R. § 41.52: (1)
that the Decision misapprehends the legal standard for establishing a

1 McGowen ’324, US 2012/0304324 A1, published Nov. 29, 2012.
2 Brinker et al., US 2012/0255050 A1, published Oct. 4, 2012.
3 McGowen ’484, US 9,066,484 B2, issued June 30, 2015.
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reasonable expectation of success (Req. 2–4); and (2) that the Decision
overlooks the overwhelming evidence of record establishing no expectation
of success (Req. 4–8). We will address these in order.
Reasonable Expectation of Success – Legal Standard
Appellant asserts:
The Decision misapprehends the applicable standard by boiling the
invention down . . . the claimed invention is a single specific cotton
variety (cotton variety 14R913B2XF), which has a very specific and
well-defined set of agronomic traits that differ significantly from the
cited art in at least the following seven performance characteristics:
micronaire, fiber length, uniformity index, elongation, fiber maturity
ratio, short fiber content, and bolls open percent.
(Req. 2–3). Appellant asserts a requirement “to establish by substantial
evidence a reasonable expectation of success in creating a cotton variety that
differed from the McGowen variety in all of these traits in the same way”
(id. at 3). Appellant asserts that the traits “differ significantly” from those
found in other cotton varieties (id. at 3). Appellant asserts “overwhelming
evidence of record shows the inherent unpredictability of plant breeding,
clearly indicating that such an expectation would be lacking” (id. at 4).
We remain unpersuaded by this argument for several reasons. First,
we discussed the legal standard for reasonable expectation of success, noting
that:
An “obviousness finding was appropriate where the prior art ‘contained
detailed enabling methodology for practicing the claimed invention, a
suggestion to modify the prior art to practice the claimed invention, and
evidence suggesting that it would be successful.”’ In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 902
(Fed. Cir. 1988). Kubin stated that “[r]esponding to concerns about
uncertainty in the prior art influencing the purported success of the
claimed combination, this court [in O’Farrell] stated: ‘[o]bviousness
does not require absolute predictability of success … all that is required
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is a reasonable expectation of success.”’ Kubin, 561 F.3d at 1360 (citing
In re O’Farrell, 853 F.2d at 903–904).
(Dec. 17). Here, the evidence met that standard because, as we explained in the
Decision, McGowen ’324 and Brinker provide detailed enabling methodologies,
suggestions to modify the prior art, and evidence of successfully generated plants (see
Dec. 3–6, FF 1–11).
Second, as we noted in the Decision, the evidence of record does not
support a finding that the traits relied upon are “significantly different” as
argued by Appellant. We noted that “neither the Declarants nor Appellant
provides details or explanation of whether the differences disclosed in Table
1 of the M. Butruille Declaration or Table 2 of the Specification were
differences of degree or kind” (Dec. 11). Indeed, we noted the “differences
shown in Table 1 range from 0.08% change in the fiber length (from 1.18 to
1.19) to a 4% change for elongation (from 9.78 to 9.38)” (Dec. 11). Neither
Appellant nor the Declarants identified any real-world impact of these
differences that “represent a ‘difference in kind’ that is required to show
unexpected results.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Third, as to the question of whether there would have been a reasonable
expectation of success in obtaining these traits, we noted that the prior art both
suggests parameters of interest and provides specific guidance on how to use
techniques like backcrossing to obtain such traits:
Both Brinker and McGowen ’324 teaches using techniques such as
backcrossing to obtain the desirable cotton plants (FF 4, 11). McGowen
’324 specifically suggests optimizing the plants to obtain “desired
characteristics include higher fiber (lint) yield, earlier maturity,
improved fiber quality, resistance to diseases and insects, tolerance to
drought and heat, and improved agronomic traits” (FF 8; cf. FF 7).
McGowen ’324 specifically teaches features that may be optimized
include “fiber qualities such as strength, fiber length, micronaire, fiber
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elongation, uniformity of fiber and amount of fiber” (FF 8).
(Dec. 16). Indeed, while we did not quote the entirety of the McGowen ’324
patent in the Decision, McGowen ’324 evidences that plant breeding is
routine to the ordinary artisan and provides extensive discussion of standard
techniques for breeding desired traits (see McGowen ’324 ¶¶ 34–64).
Appellant provides no evidence that the ordinary artisan would have
required more than routine techniques to optimize these well-known traits
disclosed in McGowen ’324 as optimizable to match those of the claimed
plant. Instead, Appellant wishes to create a per se bright line rule that any
differences in a plant, however insignificant and however obvious and
disclosed in the prior art as optimizable variables, fails to satisfy the
reasonable expectation of success requirement unless the prior art actually
anticipates and generates the particular plant. As in POD-NERS, Appellant
“followed normal and well-established agricultural methods and techniques”
and did not show any differences that “have any meaningful impact on the
properties of the” cotton plants. In re POD-NERS, LLC, 337 Fed. Appx.
901, 903 (Fed. Cir. 2009).
Reasonable Expectation of Success – Evidence
Appellant asserts the Decision “fail[s] to articulate how a POSITA
could produce the morphological and physiological characteristics of the
claimed invention” (Req. 5). Appellant asserts “lack of any articulated
motivation as to the direction (increase or decrease in the relevant unit value
compared to recurrent parent) of the trait changes observed illustrates the
complete lack of predictability a POSITA would face in trying to achieve the
claimed invention” (id.). Appellant asserts:
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(1) the specification discloses numerous other fiber characteristics and
other types of traits and any of these could also potentially be
modified, with no explanation from the Decision why a POSITA
would not seek to alter these, exponentially increasing the number of
possible alternatives; (2) there is no accounting for the magnitude of
the change, and (3) there is no consideration given for the
unpredictability in how the genomic composition of each parent will
interact, such as due to epistatic interactions.
(id. at 5–6). Appellant similarly cites the D. Buitruille Declaration and the
Specification to assert unpredictability (id. at 6).
Appellant also asserts the “present case is analogous to the situation in
In re Stepan Co., 868 F.3d 1342 (Federal Circuit 2017)” where the court
found “the Board failed to articulate why an ordinarily skilled person would
have had a reasonable expectation of success in arriving at the claimed
invention.” (Req. 7). Appellant further asserts the “Decision fails to address
Appellants’ detailed showing that there was a complete lack of any
expectation that the cotton variety as claimed could have been produced, as
established in the specification teaching and Declarations of Drs. M.
Butruille and D. Butruille” (Req. 8).
We find these arguments unpersuasive for several reasons. First, for
the reasons given in the Decision, we do not agree that the differences are
significant (see Dec. 11–15). See In re Soni, 54 F.3d 746, 751 (Fed. Cir.
1995) (“Mere improvement in properties does not always suffice to show
unexpected results.”) For example, Appellant provides no evidence that a
fiber length value of 1.18 meaningfully differs from 1.19, especially with an
asserted P value ≤ 0.10 (see Marymar Buitrille Decl. 5). In addition,
Appellant provides neither reason nor evidence as to why the direction of
any of the trait changes are beneficial or evince any secondary consideration.
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Here, as discussed above, we do not find that the claimed plant has an
unpredictable property, but even if it did, that does not necessarily mandate a
finding of unobviousness. See In re Chupp, 816 F.2d 643, 646 (Fed. Cir.
1987) (“[T]he mere submission of some evidence that a new compound
possesses some unpredictable properties does not require an automatic
conclusion of nonobviousness in every case.”)
Second, McGowen ’324 provides detailed guidance on selecting
morphological and physiological characteristics, specifically teaching:
for the purpose of developing novel cotton varieties, it will typically
be desired to choose those plants which themselves exhibit one or
more selected desirable characteristics. Examples of potentially
desired characteristics include higher fiber (lint) yield, earlier
maturity, improved fiber quality, resistance to diseases and insects,
tolerance to drought and heat, and improved agronomic traits.
(Dec. 5; FF 8). McGowen ’324 teaches “[p]opular selection methods
commonly include pedigree selection, modified pedigree selection, mass
selection, recurrent selection and backcrossing” (Dec. 4; FF 4). Thus,
contrary to Appellant’s argument, the prior art directly discloses how to
generate plants with desirable qualities as identified by the ordinary artisan.
We are also unpersuaded by Appellant’s appeal to the number of
possible obvious changes based on the known parameters because, as
explained above and in the Decision, Appellant has not demonstrated that
any of the fiber characteristics inherent in the plant of claim 1 evidence an
unexpected difference in kind from those exhibited in the prior art. In any
claim to a biological material as in the plant here, many different genes may
be differentially expressed relative to the closest prior art biological material.
To accept Appellant’s argument that any unclaimed difference later
measured by Appellant must be more expressly suggested than here, where
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McGowen ’324 and Brinker specifically suggest optimizing the traits at
issue, would vitiate the possibility of obviousness in a case like this where
the prior art specifically suggests the combination of traits and optimization
of characteristics that yielded the claimed variety. In effect, Appellant
maintains that an obviousness rejection can be overcome simply by
measuring more and more known properties of a plant, until some threshold
of per se nonobviousness is attained. We do not agree that the caselaw
mandates that an Appellant may overcome an obviousness rejection by
continuing to measure multiple known properties4 of a plant. See In re
D’Ancicco, 58 CCPA 1057, 1063–64 (CCPA 1971) (“Whether this
difference was ‘striking’ depends, not alone on the numerical ratio of the
quantified value of the property being compared, but on the significance of
that difference. In this case, there has been no showing that either of the
asserted differences between appellants’ foams and the prior art foams is of
any practical advantage.”).
We appreciate that in situations where the parameters at issue are
unknown, there may be an issue of reasonable expectation of success (see,
e.g., O’Farrell, 853 F.2d at 903 “[W]here the prior art gave . . . no indication
of which parameters were critical.”). However, in the instant situation,
McGowen ’324 specifically identifies desirable characteristic parameters
including those recited in Table 1 of the Marymar Butruille Declaration (see
Dec. 5; FF 7–8).
We also find Appellant’s reliance on Stepan unavailing. In Stepan,

4 This is particularly true here, where the properties are obvious properties
suggested by the prior art of McGowen ’324 and Brinker, as discussed in the
Decision (see Dec. 5).
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the court there found the Board did not “articulate why a person of ordinary
skill in the art would have had a reasonable expectation of success to
formulate the claimed surfactant system with a cloud point above at least
70°C.” Stepan, 868 F.3d at 1347. In the current case, McGowen ’324 and
Brinker disclose precisely how a person of ordinary skill would proceed,
with Brinker teaching that the Mon 88701, Mon 88913, and Mon 15985
events “can be crossed with other transgenic cotton plants to produce a plant
having the characteristics of both transgenic parents . . . resulting in a
progeny plant or seed that is tolerant to dicamba and glufosinate and has at
least one or more additional traits” (Dec. 6; FF 11). McGowen ’324
provides a number of art-recognized methods to obtain desired traits as
discussed above, including teaching “during the breeding process,
‘[s]elections were based on lint yield, lint percent, and acceptable fiber
qualities’” (Dec. 5; FF 7; cf. FF 4, 8). Thus, the prior art discloses precisely
how and why the ordinary artisan would proceed in order to obtain a plant
with desired tolerances and cotton characteristics. “Obviousness does not
require absolute predictability of success . . . all that is required is a
reasonable expectation of success.” Kubin, 561 at 1360.
In the absence of persuasive evidence of unexpected results, as
extensively discussed in the Decision (see Dec. 8–14), we reiterate that
simply measuring routinely optimizable traits that have specific, but
obvious, values is insufficient to rebut the Examiner’s reasonable
expectation of success. As our reviewing court
and its predecessors have long held . . . even though applicant’s
modification [may have] result[ed] in great improvement and utility
over the prior art, it may still not be patentable if the modification was
within the capabilities of one skilled in the art, unless the claimed
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ranges produce a new and unexpected result which is different in kind
and not merely in degree from the results of the prior art.
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
CONCLUSION
We have reviewed the Decision in light of Appellant’s request, but we find no
point of law or fact which we overlooked or misapprehended in arriving at our
decision. Therefore, Appellant’s request is denied.

Outcome of Decision on Rehearing:
Claim 35 U.S.C. § Basis Granted Denied
1–22 103 McGowen
’324, Brinker
1–22
1–22 Double Patenting McGowen
’484, Brinker
1–22

Final Outcome of Appeal after Rehearing
Claim 35 U.S.C.
§
Basis Affirmed Reversed New
Ground
1–22 103 McGowen ’324,
Brinker
1–22
1–22 Double
Patenting
McGowen ’484,
Brinker
1–22

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED