Rajeev Gupta et al.

Patent Trials and Appeals Board

Sep 26, 2019

14626178 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/626,178 02/19/2015 Rajeev Gupta 2707-US-DC2 5327
27310 7590 09/26/2019
PIONEER HI-BRED INTERNATIONAL, INC.
7250 NW 62ND AVENUE
PO BOX 552
JOHNSTON, IA 50131-0552
EXAMINER
BUI, PHUONG T
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
IPsupport@corteva.com
sue.smith@corteva.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RAJEEV GUPTA and KANWARPAL SINGH DHUGGA1
__________

Appeal 2019-004229
Application 14/626,178
Technology Center 1600
__________

Before ERIC B. GRIMES, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of increasing maize yield, which have been rejected as anticipated or
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
“Several independent lines of evidence indicate that glutamine
synthetase (GS) is involved in yield formation and its expression levels

1 Appellant identifies the real party in interest as Pioneer Hi-Bred
International, Inc. Appeal Br. 3.
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affect nitrogen use efficiency (NUE) in maize.” Spec.2 3:3–5. “The current
invention involves efforts to over-express the cytosolic isoforms of GS
under the control of different promoters in maize to improve NUE and thus
grain yield.” Id. at 3:20–21.
Claims 9, 10, and 12–14 are on appeal. Claim 9 is the only
independent claim and reads as follows:
9. A method of increasing yield in a maize plant, the
method comprising:
a. increasing expression of a polynucleotide encoding a
glutamine synthetase in the maize plant, wherein the
polynucleotide is operably linked to a heterologous
regulatory element, and wherein the glutamine synthetase
comprises an amino acid sequence that has at least 90%
sequence identity to SEQ ID NO: 52; and
b. growing the maize plant in a plant growing environment
thereby increasing the yield.

The claims stand rejected as follows:
Claims 9, 10, and 12–14 under 35 U.S.C. § 102(b) as anticipated by,
or alternatively under 35 U.S.C. § 103(a) as obvious based on, Hershey WO3
in light of Hershey US4 (Ans. 3–4) and
Claims 9, 10, and 12–14 under 35 U.S.C. § 102(b) as anticipated by,
or alternatively under 35 U.S.C. § 103(a) as obvious based on, La Rosa5
(Ans. 5).

2 Substitute Specification, filed May 4, 2015.
3 Hershey et al., WO 2007/092704 A2, Aug. 16, 2007.
4 Hershey et al., US 2007/0300323 A1, Dec. 27, 2007.
5 La Rosa et al., US 2004/0214272 A1, Oct. 28, 2004.
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I
The Examiner has rejected all of the claims on appeal as anticipated
by or obvious in view of Hershey WO in light of Hershey US. The Examiner
finds that Hershey WO
teaches a method of increasing grain yield in a maize plant by
expressing a sequence encoding SEQ ID NO:136, operably
linked to a heterologous regulatory element, such as a root-
preferred promoter, in a maize plant, and growing the maize
plant in a plant growing environment, thereby increasing the
yield of the maize plant.
Ans. 4. In support of this finding, the Examiner cites Hershey WO at “claims
1, 4, 7, 19–21 and 25; pp. 2, 4, 12, 65 and 66; Examples 10 and 11.” Id. The
Examiner notes that Hershey WO does not disclose the amino acid sequence
of its SEQ ID NO:136, but cites Hershey US as having the same Sequence
Listing, and showing that SEQ ID NO:136 of both references is 99.5%
identical to SEQ ID NO:52 of the instant claims. Id.
The Examiner reasons that,
[b]ecause the method steps are the same and are applied to the
same population of plants, and the sequence being expressed is
the same other than the three conservative amino acid
substitutions, the method of Hershey would inherently produce
the increased yield including grain yield in maize upon
expression of SEQ ID NO:136.
Id. at 4–5.
Appellant argues that “Hershey did not make any plant with increased
expression of glutamine synthetase. In the absence of any plant with
increased expression of glutamine synthetase, the inherency argument
‘would inherently produce’ does not meet the legal standards for
anticipation.” Appeal Br. 8. “Glutamine synthases were mentioned along
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with other genes, but no experimental support of any kind was provided to
meet the high standards of anticipation.” Id.
Appellant also argues that the Examiner
has not established a prima facie case of obviousness because
the missing elements and evidence from Hershey is not cured
by another objective evidence, other than the examiner
impermissibly relying on applicant’s instant application for the
missing piece – the missing piece being demonstrated yield
increase in maize. Similarly, SEQ ID NO: 136 of Hershey is
just one of the many unrelated sequences mentioned as part of a
sequence listing.
Id. at 14.
We agree with Appellant that the Examiner has not shown that the
method of claim 9 is disclosed by Hershey WO or would have been obvious
to a person of ordinary skill in the art based on the Hershey references.
Hershey WO states that it “presents methods to alter the genetic composition
of crop plants, especially maize, so that such crops can be more productive.
. . . The utility of this class of invention is then both yield enhancement and
reduced fertilizer costs.” Hershey WO 2:5–9.
Hershey WO discloses nitrogen use efficiency (NUE) genes. Id. at
2:2–4. Among the disclosed genes is “the nucleotide sequence encoding an
amino acid sequence comprising SEQ ID NO: . . . 136.” Id. at 2:30–34.
Hershey WO describes SEQ ID NO:136 as glutamine synthase. Id. at 60.
Hershey WO discloses “a recombinant expression cassette comprising
a nucleic acid as described. Additionally, the present invention relates to a
vector containing the recombinant expression cassette. Further, the vector
containing the recombinant expression cassette can facilitate the
transcription and translation of the nucleic acid in a host cell.” Id. at 4:7–11.
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Hershey WO describes types of promoters that can be used in its invention.
Id. at 12.
Hershey WO also discloses “a transgenic plant or plant cells,
containing the nucleic acids of the present invention. . . . In another
embodiment, the transgenic plant is a maize plant.” Id. at 4:15–20. Hershey
WO provides prophetic examples describing different ways of transforming
and regenerating transgenic maize plants. Id. at 63–66. Hershey WO states
that “T0 transgenic maize plants containing the NUE construct under the
control of a promoter were generated. These plants were grown in
greenhouse conditions.” Id. at 77:14–15. No further description is provided
regarding which “NUE construct,” under the control of which promoter, is
intended. No results are described for the transgenic plants or their progeny.
“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). “[I]t is not enough that the prior art
reference . . . includes multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Id.
Here, the Examiner relies on multiple, distinct teachings in Hershey
WO in order to meet the limitations of the claims on appeal. In order to
anticipate claim 9, however, the reference must disclose all of the limitations
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arranged or combined as recited in the claim, not as separate elements that
could be combined in such a way that they would meet the claim limitations.
The Examiner has not pointed to a disclosure in Hershey WO of a single,
specific method that includes all of the limitations of claim 9, and therefore,
has not shown that claim 9 is anticipated by Hershey WO.
With regard to the alternative, § 103, basis of the rejection, the
Examiner relies on Hershey US only as evidence of the amino acid sequence
of Hershey WO’s SEQ ID NO:136. See Ans. 4. The Examiner also “takes
the position that such a disclosure [of Hershey WO] is sufficient to
anticipate Applicant’s claims, and/or render those claims obvious to one of
ordinary skill in the art.” Id. at 7.
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). “[I]t 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.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–19 (2007). “[T]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner has not set out a prima facie case of obviousness,
including articulated reasoning with rational underpinning, to show that a
person of ordinary skill in the art would have combined the elements of the
prior art in the manner required by claim 9.
We therefore reverse the rejection of claims 9, 10, and 12–14 under 35
U.S.C. § 102(b), or alternatively under 35 U.S.C. § 103(a), based on
Hershey WO in light of Hershey US.
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II
The Examiner has rejected all of the claims on appeal as anticipated
by or obvious in view of La Rosa. The Examiner finds that
La Rosa teaches a method of improving plant properties
including grain or seed yield by expressing a polynucleotide
encoding SEQ ID NO:252,576 which has 99.8% sequence
identity to SEQ ID NO:52 of the instant application, operably
linked to a heterologous regulatory element such as a promoter,
in a maize plant. . . . The plant is grown in a plant growing
environment to obtain the increased grain yield phenotype.
Ans. 5. In support of this finding, the Examiner cites La Rosa’s paragraphs
21 and 30, and its claims 2 and 3. Id.
The Examiner reasons that
[e]ven though La Rosa does not specifically correlate the
expression of SEQ ID NO:252576 with increased yield and
increased grain yield in maize, the method steps of La Rosa are
identical to those claimed, and are applied to the same
population of plants, and thus would inherently result in
increased yield and increased grain yield in a maize plant.
Id. With regard to the alternative, § 103, basis of the rejection, the Examiner
notes that “[t]he only obviousness analysis here is whether it would have
been prima facie obvious to replace one amino acid with a conservative
amino acid, as that is the only difference between La Rosa and Applicant’s
claimed invention.” Id. at 11.
Appellant argues that “La Rosa did not make any plant with increased
expression of glutamine synthetase. In the absence of any plant with
increased expression of glutamine synthetase, the inherency argument
‘would inherently produce’ does not meet the legal standards for
anticipation.” Appeal Br. 7. Appellant argues that the legal standard requires
that “the alleged teaching should be ‘necessarily present in the prior art’ and
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not simply an ‘invitation to investigate’, which was the case with respect to
La Rosa – an invitation to further investigate the functions of ~200,000
unrelated sequences.” Id. “[N]o plant was made by La Rosa and therefore
there was no increased expression of any glutamine synthetase in any plant,
let alone a maize plant.” Id. at 8.
We agree with Appellant that the Examiner has not shown that La
Rosa anticipates or would have made obvious the method of claim 9. La
Rosa discloses “polynucleotides for use in plant improvement . . . , in
particular, sequences from Zea mays and the polypeptides encoded by such
cDNAs.” La Rosa ¶ 4. “Polypeptides of the present invention are provided
as SEQ ID NO: 184,664 through SEQ ID NO: 369,326.” Id. ¶ 6. The
Examiner identifies the polypeptide of La Rosa’s SEQ ID NO: 252,576 as
being 99.8% identical to SEQ ID NO: 52 of claim 9. Ans. 5.
La Rosa discloses that its “polynucleotides . . . find particular use in
generation of transgenic plants to provide for increased or decreased
expression of the polypeptides encoded by the cDNA polynucleotides.” La
Rosa ¶ 21. La Rosa states that such plants can include crop plants, including
maize, and that various improved characteristics, including increased yield,
can result. Id.
La Rosa does not, however, disclose a transgenic maize plant
transformed with a polynucleotide sequence encoding the polypeptide of its
SEQ ID NO: 252,576 under the control of a heterologous regulatory
element, as required by claim 9. La Rosa, therefore, does not disclose all of
the limitations of claim 9 “arranged or combined in the same way as recited
in the claim.” Net MoneyIN, 545 F.3d at 1371. For that reason, “it cannot be
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said to prove prior invention of the thing claimed and, thus, cannot anticipate
under 35 U.S.C. § 102.” Id.
As noted above, the Examiner relies on § 103 only with regard to
“whether it would have been prima facie obvious to replace one amino acid
with a conservative amino acid.” Ans. 11. The Examiner, therefore, has not
set out a prima facie case of obviousness, including articulated reasoning
with rational underpinning, to show that a person of ordinary skill in the art
would have combined elements disclosed by La Rosa in the manner required
by claim 9.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
9, 10, 12–14 § 102(b)/§ 103
Hershey WO,
Hershey US  
9, 10, 12–14
9, 10, 12–14 § 102(b)/§ 103
La Rosa 
9, 10, 12–14
Overall Outcome 9, 10, 12–14

REVERSED