Sourdive, David

Patent Trials and Appeals Board

May 13, 2020

13813705 - (D) (P.T.A.B. May. 13, 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.
13/813,705 03/07/2013 David Sourdive DI2010-03US1 1038
76392 7590 05/13/2020
ARRIGO, LEE, GUTTMAN & MOUTA-BELLUM LLP
2200 Pennsylvania Ave NW
Suite 400E
WASHINGTON, DC 20037
EXAMINER
KEOGH, MATTHEW R
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
05/13/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SOURDIVE
Appeal 2019-003293
Application 13/813,705
Technology Center 1600

Before DONALD E. ADAMS, DEBORAH KATZ, and TAWEN CHANG,
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 17–24, 26–31, and 40–43. 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 Cellectis.
Appeal Br. 3.
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BACKGROUND
“Applications of algal products range from . . . biomass production for
food, feed and fuels to . . . products such as cosmetics, pharmaceuticals,
pigments, sugar polymers and food supplements.” Spec. 1:16–18.
According to the Specification, “commercial or technological application
involving algae will be greatly facilitated by having the ability to perform
targeted genomic manipulations . . . within algae genomes,” and there is a
need for “endonucleases with tailored specificities [that] cleav[e] chosen
sequences with the same selectivity as wild-type endonucleases.” Id. at
3:18–22, 3:32–4:2. Further according to the Specification, “[t]he invention
relates to endonucleases cleaving DNA target sequences from algae
genomes, to appropriate vectors encoding such endonucleases, to cells or to
algae modified by such vectors and to the use of these endonucleases and
products derived therefrom for targeted genomic engineering in algae.” Id.
at 1:9–12.

CLAIMED SUBJECT MATTER
The claims are directed to a method for targeted genomic engineering
in an algal cell. Claim 17 is illustrative:
17. A method for targeted genomic engineering in an
algal cell comprising:
introducing into the algal cell an endonuclease capable of
inducing a double-stranded cleavage at a specific target site of
interest in the nuclear genome of the algal cell;
inducing a double-stranded break at the specific target
site of interest in the nuclear genome of the algal cell with the
endonuclease; and
isolating an algal cell having a modified targeted nuclear
genomic site of interest;
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wherein a targeted knock-out in the algal cell is induced
by the endonuclease at the specific target site of interest in the
nuclear genome, and
wherein the algal cell is selected from the group
consisting of Amphora, Anabaena, Anikstrodesmis,
Botryococcus, Chaetoceros, Chlamydomonas, Chlorella,
Chlorococcum, Cyclotella, Cylindrotheca, Dunaliella, Emiliana,
Euglena, Hematococcus, lsochrysis, Monochrysis,
Monoraphidium, Nannochloris, Nannochloropsis, Navicula,
Nephrochloris, Nephroselmis, Nitzschia, Nodularia, Nostoc,
Oochromonas, Oocystis, Oscillartoria, Pavlova,
Phaeodactylum, Playtmonas, Pleurochrysis, Porhyra,
Pseudoanabaena, Pyramimonas, Stichococcus, Synechococcus,
Synechocystis, Tetraselmis, Thalassiosira, and Trichodesmium
algal cells.
Appeal Br. 38–39 (Claims App.).

REJECTION(S)
A. Claims 17, 18, 20–23, 26, 30, 31, 40, 42, and 43 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cai2 and
Trimbur.3 Ans. 5.
B. Claims 19, 31, and 414 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Puchta5 and Poulsen.6 Ans. 4.

2 Cai et al., US 2009/0111188 A1, published Apr. 30, 2009.
3 Trimbur et al., US 2009/0061493 A1, published Mar. 5, 2009.
4 The Examiner did not include claim 41 in this rejection in the Final
Rejection or the Answer. However, we understand this to be a typographical
error, as the Examiner indicated in the Final Office Action that all pending
claims were rejected. Final Act. 1.
5 Puchta et al., US 2005/0172365 A1, published Aug. 4, 2005.
6 Nicole Poulsen & Patrick M. Chesley, Molecular Genetic Manipulation of
the Diatom Thalassiosira Pseudonana (Bacillariophyceae), 42 J. PHYCOLOGY
1059 (2006).
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C. Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cai, Trimbur, and Poulsen. Ans. 8.
D. Claims 27–29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Cai, Trimbur, and Smith.7 Ans. 9.

OPINION
A. Issue
Claims 17 and 19 are the only independent claims on appeal. The
same issue is dispositive for all of the rejections; we therefore consider the
rejections together.
With respect to claim 17, the Examiner finds that Cai teaches almost
all of the limitations of the claim, except that Cai does not teach modifying
any specific algal species. Ans. 6–7. However, the Examiner finds that
Trimbur teaches “microalgae comprising lipid metabolic gene that alter the
fatty acid composition of the oil produced” and further teaches “alter[ing]
the fatty acid composition in algae from certain species of interest including
species from the Chlorella and Thalassiosira.” Id. at 7.
The Examiner concludes that, at the time of filing, it would have been
prima facie obvious to a skilled artisan to “use the method of Cai . . . to
introduce the fatty acid metabolic gene . . . into the genome of the oil
producing microalgae including Chlorella or Thalassiosira as [it] is well
known . . . that genomic location can influence expression of a transgene.”
Ans. 7. The Examiner finds that a skilled artisan would have had reason to
combine the teachings of Cai and Trimbur in order to “minimiz[e] variability

7 Smith et al., US 2007/0117128 A1, published May 24, 2007.
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of expression of the different transgenic events, which in turn would
minimize the need for screening for algae with the desired levels of
expression.” Id.
With respect to claim 19, the Examiner finds that Puchta discloses
almost all of the elements of the claim, except that Puchta does not teach that
“algae are transformed by electroporation or bombardment.” Ans. 4–5.
However, the Examiner finds that, at the time of filing, it would have been
prima facie obvious to a skilled artisan “to use the bombardment
transformation method of Poulsen . . . in the method of Puchta . . . and to
introduce the DNA constructs into some algal species including
Thalassiosira pseudonana.” Id. at 5.
Appellant contends that a skilled artisan would not have had a
reasonable expectation of success in performing the claimed method.
The issue with respect to the rejections is whether a preponderance of
the evidence of record supports the Examiner’s finding that a skilled artisan
would have had a reasonable expectation of success in arriving at the
claimed invention based on the teachings of the cited prior art combination.
B. Findings of Fact
1. Cai teaches “zinc fingers” comprising CCHC zinc coordinating
residues, proteins comprising such zinc fingers, and methods of using the
proteins for gene editing and regulation. Cai Abstract.
2. Cai teaches that “[z]inc finger binding domains can be
engineered to bind a sequence of choice.” Id. ¶ 205.
3. Cai teaches methods for targeted cleavage of cellular chromatin
and/or genetic recombination in a plant host cell comprising (1) expressing
zinc fusion proteins in the cell and (2) the fusion proteins “cleav[ing] DNA
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located between the target sequences” or “wherein the target sequences of
the fusion proteins are present in a chosen host target locus.” Id. ¶¶ 37–42.
4. Cai teaches embodiments wherein
the fusion protein is a zinc finger nuclease (ZFN) comprising
one or more CCHC zinc fingers as described herein and a
cleavage domain (or cleavage half-domain). The zinc fingers
can be engineered to recognize a target sequence in any
genomic region of choice and, when introduced into a cell, will
result in binding of the fusion protein(s) to its (their) binding
site(s) and cleavage within or near said genomic region. Such
cleavage can result in alteration of the nucleotide sequence of
the genomic region (e.g., mutation) following non-homologous
end joining. Alternatively, if an exogenous polynucleotide
containing sequences homologous to the genomic region is also
present in such a cell, homologous recombination occurs at a
high rate between the genomic region and the exogenous
polynucleotide, following targeted cleavage by the ZFNs.
Homologous recombination can result in targeted sequence
replacement or targeted integration of exogenous sequences,
depending on the nucleotide sequence of the exogenous
polynucleotide.
Id. ¶ 226; see also id. ¶ 274 (“In certain embodiments, targeted
cleavage in a genomic region by a ZFN results in alteration of the
nucleotide sequence of the region, following repair of the cleavage
event by non-homologous end joining (NHEJ).”).
5. Cai teaches that “[t]he cleavage domain portion of the ZFNs
disclosed herein can be obtained from any endonuclease or exonuclease,”
such as restriction endonucleases and homing endonucleases, and that “a
cleavage half-domain can be derived from any nuclease or portion thereof,
. . . , providing the cleavage half-domain requires dimerization for cleavage
activity.” Id. ¶¶ 228–229.
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6. Cai teaches that, “[i]n certain embodiments, fusion polypeptides
are used for targeted double-stranded DNA cleavage.” Id. ¶ 172. Cai
further teaches a ZFN comprising the Type IIS restriction endonuclease Fok
I, which catalyzes targeted double-stranded cleavage of DNA. Id. ¶¶ 230–
231.
7. Cai teaches that “a nucleic acid encoding one or more [zinc
finger proteins (ZFPs)] or ZFP fusion proteins (e.g., ZFNs) can be cloned
into a vector for transformation into . . . cells for . . . expression.” Id. ¶ 242.
Cai further teaches that “DNA construct[s] may be introduced into a plant
cell using techniques such as electroporation and microinjection of plant cell
protoplasts, or . . . directly to plant tissue using biolistic methods, such as
DNA particle bombardment.” Id. ¶ 251.
8. Cai teaches embodiments of its method wherein the plant is
eukaryotic algae. Id. ¶ 46.
9. Puchta teaches “recombination systems and methods for
eliminating nucleic acid sequences from the chromosomal DNA of
eukaryotic organisms, and to transgenic organisms—preferably plants—
which comprise these systems or were generated using these methods.”
Puchta Abstract.
10. Puchta teaches that “[t]he generation of sequence-specific
double-strand breaks with the aid of restriction enzymes in eukaryotic
genomes such as yeast . . . , mammalian cells . . . [,] or plants [has been]
described.” Id. ¶ 10 (citations omitted).
11. Puchta describes a prior art method “for eliminating a genetic
locus in which . . . one recognition sequence of the homing restriction
endonuclease I-SceI is inserted at the respective end of the sequence to be
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deleted,” wherein “[t]reatment with the endonuclease leads to double-strand
breaks at both ends of the sequence to be deleted” and the free ends are then
joined by, e.g., non-homologous end-joining (NHEJ) event. Id. ¶ 9.
12. However, Puchta teaches that “[t]he problem of lacking
efficacy in homologous recombination, which is serious predominantly in
plants, is generally known to the skilled worker” and that “[i]ncreasing the
efficacy of homologous recombination has long been a need in plant
biotechnology.” Id. ¶ 14.
13. Puchta teaches that its invention is directed to “systems and
methods that enable the predictable elimination of defined nucleic acid
sequences from the chromosomal DNA of a eukaryotic organism and allow
the repeated, successive application to the same organism.” Id. ¶ 16; see
also id. ¶ 33.
14. In particular, Puchta teaches a method wherein
the sequence to be eliminated is flanked by recognition sequences
for the site-directed induction of DNA double-strand breaks (for
example recognition sequences of rare-cleaving restriction
enzymes) and combined with homologous sequences in the region
of the cleavage sites. A double-strand break is induced by an
enzyme suitable for inducing DNA double-strand breaks at the
recognition sequence for the site-directed induction of DNA
double-strand breaks (for example a sequence-specific nuclease),
which, in consequence, triggers the homologous recombination of
homologous sequences located at the break, and thus the deletion
of any nucleic acid sequences located between the sequences. The
recognition sequence for the site-directed induction of DNA
double-strand breaks is likewise deleted, and the method can thus
be used repeatedly for further controlled genetic modifications.
Id. ¶ 33.
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15. Puchta teaches that,
[s]urprisingly, this induced homologous recombination takes
place with high efficacy and precision, which is in contrast to
previous experience in the field of homologous recombination,
including in plants. The frequency can be compared with the
parallel, nonhomologous events (for example non-homologous
end-joining events) (cf. Example 5). This is a remarkable
finding which is in contrast to earlier observations, according to
which the frequency of homologous recombination—above all
in the case of plants—is secondary, almost negligible, in
comparison with the “illegitimate” events.
Id. ¶ 34.
16. Puchta teaches that “[t]he sequences which are deleted are those
located between the homology sequences A and B” and suggests that,
“[o]wing to the sequence-specific induction of the double-strand breaks, the
homologous recombination efficacy between the homology sequences A and
B is increased considerably, indeed enabled in the first place in some cases.”
Id. ¶ 35.
17. Puchta teaches that “[a] particularly preferred embodiment
encompasses [its method taking place in] compartments of a eukaryotic cell
such as, for example, the nucleus.” Id. ¶ 41.
18. Puchta teaches that enzymes suitable for use in its method
include “all those enzymes which are capable of generating double-strand
breaks in double[-]stranded DNA in a sequence specific manner,” including,
for example, restriction endonucleases (type II), preferably homing
endonucleases. Id. ¶¶ 67–68.
19. Puchta teaches that “[t]he sequences encoding for such homing
endonucleases can be isolated for example from the chloroplast genome of
Chlamydomonas” and that such endonucleases “are small . . . and their open
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reading frame (ORF) has a ‘coding usage’ which is suitable directly for
nuclear expression in eukaryotes.” Id. ¶ 76.
20. Puchta teaches that, for purposes of its invention, “[e]ukaryotic
organism, starting organism or host organism refers to higher and lower,
single- and multi-celled eukaryotic organisms,” including “eukaryotic
microorganisms such as . . . algae.” Id. ¶ 172. Puchta teaches that “[h]ost or
starting organisms which are preferred as transgenic organisms are
especially plants” and that “[p]lants which may be mentioned by way of
example . . . are . . . algae such as Chlorophyceae, Phaeophpyceae,
Rhodophyceae, Myxophyceae, Xanthophyceae, Bacillariophyceae (diatoms)
and Euglenophyceae.” Id. ¶ 176. See also id. ¶ 181 (stating that “[p]lant
organisms are furthermore, for the purposes of the invention, other
organisms which are capable of photosynthetic activity, such as . . . algae”
and that “[p]referred algae are green algae, such as, for example, algae of the
genus Haematococcus, Phaedactylum tricornatum, Volvox or Dunaliella”).
21. Puchta teaches that “[s]uitable methods” for “transient or stable
transformation” of plants include “biolistic methods such as the gene gun
(‘particle bombardment’ method)” and electroporation. Id. ¶ 183.
22. The Specification states that “[t]he endonuclease according to
the invention can . . . be a homing endonuclease . . . , a chimeric Zinc-
Finger nuclease (ZFN) resulting from the fusion of engineered zinc-finger
domains with the catalytic domain of a restriction enzyme such as FokI . . .
or a chemical endonuclease.” Spec. 8:25–31. The Specification states that
“[t]he endonuclease according to the invention is preferably a homing
endonuclease, also known as meganuclease,” including, e.g., I-Sce I. Id. at
9:3–4; see also id. at 13:11–12.
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23. The Specification states that the present invention includes “a
method for making a targeted knock-out in algae wherein a targeted double-
stranded cleavage at a site of interest inside the algae genome is induced by
an endonuclease, and repaired by the non-homologous end-joining pathway
(NHEJ), resulting in loss of gene function.” Id. at 13:8–11; see also id. at
27:29–28:17.
C. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the Examiner’s rejection of claims 17 and 19 (Final Act.
2–6, 9–13; Ans. 3–7, 10–24; FF1–FF23) and agree that a preponderance of
the evidence of record supports the Examiner’s finding that a skilled artisan
would have had a reasonable expectation of success in practicing the
claimed invention in light of the prior art. We address Appellant’s
arguments below.
Appellant argues that “[a] skilled artisan would not have had any
expectation of success of performing the claimed method in algae.” Appeal
Br. 16–21, 36. In particular, Appellant argues that “[n]one of the cited
references performed any targeted genomic modifications in algae,” while
the Sourdive Declaration(s)8 show that it was known at the time of invention
that (1) “many plant species, especially non-domesticated ones, could not be
successfully manipulated with this technology”; (2) “large differences in the
ability to genetically modify an organism existed between plants, animals,
fungi, and bacteria”; (3) “DNA repair [mechanisms] . . . differ between these

8 Declaration of David Sourdive under 37 C.F.R. § 1.132 (Mar. 21, 2017)
(Sourdive Decl. I); Declaration of David Sourdive under 37 C.F.R. § 1.132
(Dec. 11, 2017) (Sourdive Decl. II).
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organisms”; (4) genetically modifying plants and algae was difficult, and (5)
differences between organisms “might result in genome editing with
[endonucleases such as] meganucleases, Zinc Finger Nucleases and
[transcription activator–like effector nucleases (TALENs)] being
unsuccessful in algae.” Id. at 16–18, 20, 21–22; see also Reply Br. 4.
Appellant similarly argues based on the declaration(s) that the
inventor would not have known at the time of invention whether
“meganucleases, Zinc Finger Nucleases and TALENs[] would be useful for
genome editing in algae,” especially for chromophytes such as those recited
in claims 19, 31, and 40–43 and whether “mechanisms existed in algae to
allow . . . cleavage at a targeted site by the endonuclease, deletion/insertion
. . . at the cleaved site, and ligation . . . to reform a continuous nucleic acid
and . . . mutations at the targeted site.” Appeal Br. 19, 21–22; see also
Reply Br. 4–5.
We are not persuaded. Dr. Sourdive cites Tzfira9 as teaching that
“gene targeting by homologous recombination (HR) . . . [is] still difficult or
nearly impossible to achieve even in plant cells” in 2012, because “most
foreign DNA molecules . . . are randomly integrated via non-homologous
end joining (NHEJ) and not HR,” and cites Kilian10 as teaching that “even in
2011[] efficient targeted insertion of DNA constructs into the nuclear
genome had been demonstrated in very few photosynthetic eukaryotes.”
Sourdive Decl. II ¶¶ 7–8, 17; see also id. ¶¶ 27, 43. Dr. Sourdive also cites

9 Tzvi Tzfira et al., Genome Modifications in Plant Cells by Custom-Made
Restriction Enzymes, 10 PLANT BIOTECHNOLOGY J. 373 (2012).
10 Oliver Kilian et al., High-Efficiency Homologous Recombination in the
Oil-Producing Alga Nannochloropsis sp., 108 PNAS 21265 (2011).
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Zorin11 as teaching that the “efficiency of HR and NHEJ was extremely
variable between different organisms” and that “in many lower eukaryotes
like algae, and especially in most higher eukaryotes, the ratio of homologous
to non-homologous recombination events was very low.” Id. ¶¶ 9–13, see
also id. ¶¶ 27, 43. Dr. Sourdive further cites De Riso12 for the teaching that
“there is no evidence for homologous recombination events in diatoms” and
that “it [was] unlikely that targeted gene disruption, via homologous
recombination [could] be developed as a standard approach” for diatoms.
Id. ¶¶ 14–16; see also id. ¶¶ 40, 45.
In short, Dr. Sourdive asserts that there is no reasonable expectation
of success with respect to the claimed method because organisms have
variable efficiencies of homologous versus non-homologous recombination,
and algae, particularly diatoms, have low ratio of homologous to non-
homologous recombination events. As the Examiner points out, however,
the claims are not limited to genetic modification through homologous
recombination. Ans. 21. Indeed, the Specification explicitly states that the
invention includes “a method for making a targeted knock-out in algae
wherein a targeted double-stranded cleavage at a site of interest inside the
algae genome is induced by an endonuclease, and repaired by the non-
homologous end-joining pathway (NHEJ), resulting in loss of gene
function.” FF23 (emphasis added).

11 Boris Zorin et al., Nuclear-Gene Targeting by Using Single-
Stranded DNA Avoids Illegitimate DNA Integration in Chlamydomonas
reinhardtii, 4 EUKARYOTIC CELL 1264 (2005).
12 Valentina De Riso et al., Gene Silencing in the Marine Diatom
Phaeodactylum tricornutum, 37 NUCLEIC ACID RES. e96 (2009).
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Moreover, while Tzfira does teach that gene targeting by HR “has
been found to be difficult or nearly impossible to achieve in plant cells,”
Tzfira distinguishes traditional gene targeting by HR from gene targeting
using double-strand breaks (DSBs) such as those contemplated in the claims,
teaching that genomic DSBs “can lead to enhanced HR” because they may
“act as traps for the integration of foreign DNA molecules, and
. . . once directed to DSBs, [the foreign DNA] molecules could potentially
be directed to integration via HR.” Tzfira 373–374, bridging paragraph; see
also id. at 376, left column (explaining that “[s]tudies have shown that DSBs
can stimulate the HR DNA repair machinery” in addition to being repaired
“by . . . NHEJ DNA repair machinery”). Tzfira further teaches that “in the
past few years . . . breakthroughs have been made in the development of
novel restriction enzymes (NREs) and their use for genome editing in
eukaryotes, including plants.” Id. at 374, left column.
Although Tzfira acknowledges that “the number of plant species that
have been genetically manipulated using [the NRE] technology
. . . is still small” and that “success of this technology may also depend on a
better understanding of plant genetic transformation processes and
mechanisms of DNA repair in plant cells,” Tzfira ultimately concludes that
“[t]he advances in NRE technology . . . for genome editing in animals,
animal cells and human cells . . . are being embraced by plant biologists and
biotechnologists, who have demonstrated the use of this advanced
technology for genome modification in plant species.” Id. at 385–386
(citations omitted). Similarly, the portions of Kilian, Zorin, and De Riso
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cited by Dr. Sourdive are not directed to targeted genetic manipulation by
the claimed method (i.e., creation of DSBs using endonucleases).13
Given the above, the Sourdive Declarations and the art cited therein
do not persuade us that a skilled artisan would not have had a reasonable
expectation of success of using, in algae, the particular methods described in
Puchta and/or Cai (i.e., creation of double-stranded breaks using
endonucleases), to arrive at the claimed invention. This is particularly the
case because Puchta and Cai explicitly teach that their methods may be used
in algae, and Puchta specifically includes diatoms in its description of algae.
FF8, FF20. In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (“[A] prior art
printed publication cited by an examiner is presumptively enabling barring
any showing to the contrary by a patent applicant or patentee.”).
Although Dr. Sourdive acknowledges that “meganucleases, Zinc
Finger Nucleases and TALENs[] had been shown useful for genome editing
in plant species,” he asserts that “the number of plant species that had been
genetically manipulated using this technology (relative to the number of
species[] which have been genetically transformed) was even smaller in
2012.” Sourdive Decl. II ¶¶ 22–24; see also id. ¶¶ 28 (citing Tzfira as
teaching that “plants were known to be relatively resistant to genome editing
with meganucleases”), 42.

13 We note that, like Tzfira, Zorin acknowledges that “recombination . . . can
be stimulated by the introduction of double-stranded breaks into duplex
DNA substrates,” at least in yeasts, even though Zorin also acknowledges
that finding a restriction enzyme suitable for a specific target can be
difficult. Zorin 1264, right column.
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We are not persuaded. Table 2 of Tzfira lists examples of restriction
enzyme-mediated genome editing in plants, including the use of three types
of enzymes (homing endonucleases or meganucleases, zinc finger nucleases
(ZFNs), and transcription activator-like effector nucleases (TALENs)) on
various target genes in six different plant species. Tzfira 377, Table 2. Dr.
Sourdive does not explain how this evidence shows that “plants were known
to be relatively resistant to genome editing with meganucleases, Zinc Finger
Nucleases and TALENs,” as he appears to suggest. Sourdive Decl. II ¶ 28.
Likewise, Dr. Sourdive states that, “[i]n [his] opinion, the successful
demonstration of this technology in only six plant species, and the well
know[n] failure of this technology in many (all) commercially GMO crops
for food or feed, indicates that many other plant species, especially non-
domesticated ones, could not be successfully manipulated with this
technology.” Sourdive Decl. II ¶ 24. However, Dr. Sourdive cites no
supporting evidence for the statement that the claimed technology has failed
in all commercial GMO crops. Id.; see also Ans. 17. Dr. Sourdive also
provides no reasoning for his opinion that the fact that the technology was
demonstrated in six plant species indicates that the technology could not be
successfully used in many other plant species. Sourdive Decl. II ¶ 24.
“[O]pinion evidence . . . has little value without factual support.” In re
Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992).
Dr. Sourdive asserts that organisms differ widely in their DNA repair
mechanism and their ability be genetically modified, and Appellant argues
that, thus, “there was a real uncertainty as [to] whether meganucleases could
be used to induce double strand break in the nuclear genome of living algal
cells” given that “homing endonucleases . . . had only been isolated in the
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chloroplastic genome (and never seen in the nuclear genome).” Appeal Br.
9; Sourdive Decl. II ¶¶ 19–21, 38; see also id. ¶ 25 (citing Tzfira as
“indicat[ing] that the success of this technology may depend on a better
understanding of the mechanisms of . . . DNA repair in plant cells”), ¶¶ 29–
37 (citing Riha,14 Bray,15 Farlow,16 Orel,17 and Waterworth18 as teaching
differences in DNA repair among different species and/or different
kingdoms/phylas of organisms), ¶¶ 40–41, 44–45.
We are not persuaded. While it may be true that organisms differ in
their DNA repair mechanisms and their ability to be genetically modified,
Dr. Sourdive has not provided persuasive evidence that an ordinarily skilled
artisan would not have a reasonable expectation of successfully practicing
the methods taught in Puchta and Cai in algae because of these differences.19

14 Karel Riha et al., Living with Genome Instability: Plant Responses to
Telomere Dysfunction, 291 SCIENCE 1797 (2001).
15 Clifford M. Bray & Christopher E. West, DNA Repair Mechanisms in
Plants: Crucial Sensors and Effectors for the Maintenance of Genome
Integrity, 168 NEW PHYTOLOGIST 511 (2005).
16 Ashley Farlow et al., DNA Double-Strand Break Repair and the Evolution
of Intron Density, 27 TRENDS IN GENETICS 1 (2011).
17 Nadiya Orel & Holger Puchta, Differences in the Processing of DNA Ends
in Arabidopsis thaliana and Tobacco: Possible Implications for Genome
Evolution, 51 PLANT MOLECULAR BIOLOGY 523 (2003).
18 Wanda M. Waterworth et al., DNA Ligase I Deficient Plants Display
Severe Growth Defects and Delayed Repair of Both DNA Single and Double
Strand Breaks, 9 BMC PLANT BIOLOGY 79 (2009).
19 Appellant asserts that “homing endonucleases . . . had only been isolated
in the chloroplastic genome (and never seen in the nuclear genome).”
Appeal Br. 9. Assuming this to be true, Appellant does not explain why a
skilled artisan would not have a reasonable expectation of success in
achieving nuclear expression of endonucleases naturally found in the
chloroplastic genome, particularly given Puchta’s teaching that “[t]he
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18
In this regard, we note that “the expectation of success need only be
reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007). Cf. Morsa, 713 F.3d at 109 (explaining that prior art is
presumptively enabling barring showing by patent applicant or patentee to
the contrary).
Indeed, the Examiner notes that the method of using endonucleases to
facilitate targeted integration of DNA into chromosomal DNA has been
demonstrated in plants, animals, fungi, Protista, and bacteria despite the
differences in DNA repair mechanism between these organisms. Ans. 11–
12, 23. In the Reply Brief, Appellant argues that these references should be
discounted because “they do not show an expectation of success in algae, as
claimed by Appellant.”20 Reply Br. 3. Citing Dr. Sourdive’s declaration
testimony, Appellant asserts that “the skilled artisan would not have
expected success until such an experiment had successfully been performed
in algae” and that “[t]he Examiner has overlooked the many differences
between algae and the species that worked.” Id. at 3–4.

sequences encoding for . . . homing endonucleases can be isolated for
example from the chloroplast genome of Chlamydomonas” and that such
endonucleases “are small . . . and their open reading frame (ORF) has a
‘coding usage’ which is suitable directly for nuclear expression in
eukaryotes.” FF19.
20 Appellant also asserts that the Examiner should be precluded from relying
on these references because they were not included as part of the rejection.
Reply Br. 2–3. To the extent Appellant contends that the Answer contains
an undesignated new ground of rejection, however, such contention relates
to a petitionable matter and not to an appealable matter. See MPEP
§ 1002.02(c)(6) (9th Ed., Rev. 08-2017, Jan. 2018).
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19
We are not persuaded for the reasons already discussed. Although the
prior art cited in the rejection (Puchta and Cai) do not exemplify use of the
claimed method in algae, they teach that such methods may be practiced in
algae. FF8, FF20. While it is not disputed that algae is different from
animals, other plants, fungi, Protista, and bacteria, Appellant has not
persuasively explained why these differences would lead a skilled person to
doubt the teachings of Puchta and Cai that the claimed methods may be
practiced in algae, particularly when these methods have been successfully
practiced in a variety of organisms that are also very different from each
other. Again, “the expectation of success need only be reasonable, not
absolute.” Pfizer, 480 F.3d at 1364.
Appellant further argues that the Examiner failed to view the
invention “as a whole.” Appeal Br. 35. Appellant argues that the Examiner
has impermissibly “substituted his own personal opinions regarding the prior
art[] without explaining why the [facts cited in the Sourdive Declarations]
are insufficient to overcome the rejection” and fails to provide “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 20, 23, 36; see also Reply Br. 5. We are not persuaded
for the reasons discussed above and for the reasons cited in the Examiner’s
Answer. See, e.g., Ans. 10–24 (responding to Appellant arguments).
Appellant also takes issue with the Examiner’s statements that “‘[t]he
steps taken in the instant disclosure to practice the invention are nothing
more than what anyone of ordinary skill in the art would have taken to make
genome modifications in algae’ and ‘[n]o non-standard method steps were
required to practice the claimed invention.’” Appeal Br. 23. In particular,
Appellant argues that, since “none of the cited references performed any
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20
targeted genomic modifications in algae, . . . they can’t begin to define what
might be ‘standard’ for algae.” Id. at 23. Appellant further argues that the
Examiner does not provide any evidence that various claim steps “had ever
been done before” in an algae cell and/or in the nuclear genome of an algae
cell. Id. at 24.
We are not persuaded. As discussed above, although Puchta and Cai
do not exemplify targeted genomic modifications in algae, they do teach
embodiments of their methods wherein the host cell for the genetic
modification is an algae cell. FF8, FF20. A reference is prior art for all that
it teaches, not merely for its working examples. See, e.g., Beckman Insts.,
Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).
Furthermore, Appellant’s argument conflates an obviousness rejection with
an anticipation rejection: While to anticipate “it is not enough that the prior
art reference discloses part of the claimed invention, which an ordinary
artisan might supplement to make the whole, or that it 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), the test for obviousness is “what the combined
teachings of the references would have suggested to those of ordinary skill in
the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (emphasis
added, internal quotations omitted).
Finally, Appellant’s citation to Regents of University of California v.
Broad Institute, Inc., 903 F.3d 1286 (Fed. Cir. 2018), is inapposite. Appeal
Br. 17. In Broad Institute, the Federal Circuit affirmed a decision by the
Board that a skilled artisan would not have had a reasonable expectation of
success in implementing the CRISPR-Cas9 system in eukaryotes for targeted
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21
cutting of DNA molecules, despite the natural occurrence of the CRISPR-
Cas systems in prokaryotes. Id. at 1289, 1291–1292.
Unlike Appellant in this case, however, appellees in Broad Institute
not only provided expert testimony regarding the differences between
prokaryotic and eukaryotic systems, but also specific reasons why these
differences “rendered the application of the CRISPR-Cas9 system in
eukaryotic cells unpredictable.” Id. at 1292. Also in the record was an
article from appellant’s expert witness concluding that “whether the
CRISPR-Cas9 system will work in eukaryotes ‘remains to be seen’ and
‘[o]nly attempts to apply the system in eukaryotes will address these
concerns.’” Id. at 1292–1293. The Board was further presented with
“evidence of statements by [appellant’s] inventors acknowledging doubts
and frustrations about engineering CRISPR-Cas9 systems to function in
eukaryotic cells and noting the significance of [Appellee’s] success.” Id. at
1293. In short, appellees’ in Broad Institute provided significantly more
evidence directly related to the expectation of success with respect to the
claimed invention.
Accordingly, for the reasons discussed above, we affirm the
Examiner’s rejections of claims 17 and 19 as obvious over, respectively, Cai
and Trimbur and Puchta and Poulsen. Claims 18, 20–24, 26–31, 40–43,
which are not separately argued, fall with claims 17 and 19.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 18, 20–
23, 26, 30,
31, 40, 42, 43
103(a) Cai, Trimbur

17, 18,
20–23,
26, 30,
31, 40,
42, 43

19, 31, 41 103(a) Puchta, Poulsen

19, 31, 41
24 103(a) Cai, Trimbur,
Poulsen

24
27–29 103(a) Cai, Trimbur, Smith

27–29
Overall
Outcome
17–24,
26–31,
40–43

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) (2018).

AFFIRMED