Ex Parte Buyyarapu et al

Patent Trials and Appeals Board

Mar 15, 2019

14212469 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/212,469 03/14/2014
25212 7590 03/19/2019
DOW AGROSCIENCES LLC
9330 ZIONSVILLE RD
INDIANAPOLIS, IN 46268
FIRST NAMED INVENTOR
Ramesh Buyyarapu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl 1485.2US(72022-US-NP2) 1039
EXAMINER
STANKOVIC, BRATISLAV
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
PatentsUS@pioneer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMESH BUYY ARAPU, RUIHUA REN,
MUSTAFA MCPHERSON, SIVAP. KUMPATLA,
CHANDRA CHANNABASA V ARAHY A, JOE SPINKS, and
KELLY PARLIAMENT
Appeal2018-006665
Application 14/212,469
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to methods for producing a cotton plant comprising reniform
nematode (RN) resistance. The Examiner rejected the claims on the basis
1 Appellants identify the real party in interest as Dow AgroSciences, LLC.
App. Br. 2. Herein we refer to the Final Office Action mailed April 12,
2017 ("Final Act."), Response After Final Action filed June 12, 2107
("Response After Final"), Appeal Brief filed November 14, 2017 ("App.
Br."), Examiner's Answer mailed April 12, 2018 ("Ans."), and Reply Brief
filed June 12, 2018 ("Reply Br.").
Appeal2018-006665
Application 14/212,469
that they contain an improper Markush grouping. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Claims 12, 16-19, 23, 33, 34, 36 and 37 are on appeal and can be
found in the Claims Appendix of the Appeal Brief. Claims 16-19, 23, 33,
34, 36 and 37 all depend from claim 12. Claim 12 contains the Markush
group noted in italics below:
12. A method for producing a cotton plant comprising
reniform nematode (RN) resistance, the method comprising:
crossing a first parental cotton plant comprising the trait
of RN resistance with a second parental cotton plant that is
sensitive to RN infection as compared to the first parental
cotton plant, to produce progeny cotton plants, wherein the first
parental cotton plant comprises at least one marker that is
linked to the RN resistance trait, the marker being selected from
the group consisting of SEQ ID NOs:58-62, and wherein the
second parental cotton plant does not comprise the marker that
is linked to the RN resistance trait;
isolating genomic DNA from the progeny cotton plants;
screening the genomic DNA of the progeny cotton plants
for the presence of the marker that is linked to the RN
resistance trait; and
selecting a progeny cotton plant having genomic DNA
comprising the marker that is linked to the RN resistance trait,
thereby producing a cotton plant comprising RN resistance.
App. Br. 16 (emphasis added).
The claimed Markush group consists of five distinct nucleotide
sequences listed as SEQ ID NOs:58-62. These sequences range from about
300-600 nucleotides in length and are referred to in the Specification as
DASCTP _28910_164, DC7 _56523319, DCTE 1_240981_97,
DCTE1_317966_63 and DASCTP_1656_527. Ans. 6-7; App. Br. 3. Like
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Application 14/212,469
all nucleotide sequences, the markers corresponding to SEQ ID NOs:58-62
share a common sugar-phosphate backbone. But, as Appellants
acknowledge, their primary structure, i.e., the "series of nucleobases" joined
by that common sugar-phosphate backbone, is "different." App. Br. 11.
Examiner determined that the Markush grouping in claim 12 is
improper and finally-rejected Appellants' claims on that basis. There are no
other rejections before us on appeal. 2
Accordingly, the issue is: Does the evidence of record support
Examiner's determination that claim 12, and claims 16-19, 23, 33, 34, 36
and 37 by dependency, contain an improper Markush grouping?
Analysis
According to the MPEP, "[a] Markush claim contains an 'improper
Markush grouping' if either: ( 1) the members of the Markush group do not
share a 'single structural similarity' or (2) the members do not share a
common use." MPEP § 706.03(y)(II). Moreover, where the members do
not belong to a recognized physical, chemical or art-recognized class, "the
common use must flow from the substantial structural feature."
MPEP § 706.03(y)(II)(B). Whether a Markush group is proper depends on
the particular facts at issue and "must be decided on a case-by-case basis."
MPEP § 706.03(y)(IV).
Examiner finds that the markers in the five member Markush group
here "do not share a substantial [structural] feature and/or common use that
flows from the substantial structural feature," because "they have no
conserved structure throughout the genus other than a phosphodiester
2 Claim 35 was rejected for indefiniteness, but has since been cancelled.
Response after Final 5.
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Appeal2018-006665
Application 14/212,469
backbone." Final Act. 3--4. Examiner also determines that they share no
common use because they "have different effects on trait expression, as
evidenced by the different LOD numbers and different% explanation."
Ans. 11 (referring to Spec. ,r 253, Table 2).
Appellants argue that, in addition to their common sugar-phosphate
backbone, the claimed markers share a structural feature because they are all
located in "close physical proximity to the RN resistance locus on
chromosome 21." App. Br. 12. According to Appellants, this feature is
"directly responsible for their shared function of being linked to RN
resistance, because their proximity results in the co-segregation of the
markers with the RN resistance." Id. Moreover, according to Appellants,
the fact that the markers have different nucleotide sequences is, in fact,
integral to their common use because it allows them to be used collectively
in "common assays" to "provide[] a better result than their independent use."
Id. at 13. Thus, Appellants urge that Examiner erred by applying "a hard
rule that different nucleotide sequences cannot be presented" in a Markush
group, rather than considering the structure of the claimed markers as a
whole in light of the particular facts of this case. Reply 6-8.
On the record before us, we determine that Appellants have the better
position. The MPEP makes clear that the propriety of a particular Markush
grouping is a fact-specific inquiry that "must" be decided on a case-by-case
basis. MPEP § 706.03(y)(IV); see also In re Harnisch, 631 F.2d 716, 722
(CCPA 1980) ("[W]e decide this and like cases on their facts on a case-by-
case basis."). To the extent Examiner applied a bright-line rule that focused
solely on the sequence differences without consideration of other structural
similarities, that approach is incorrect. See Harnish, 631 F.2d at 722 ("[l]n
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Application 14/212,469
determining the propriety of a J\;larkush grouping the compounds must be
considered as wholes and not broken down into elements or other
components.''); see also MPEP § 706.03 (y)(IV). Accordingly, we look to
whole of the structure in the context of the particular facts of the claimed
invention to determine whether the nucleotide sequences in SEQ ID
NOs:58-62 are properly grouped together.
Here, the record supports, and Examiner does not dispute, that the
claimed markers were selected out of a larger set of identified markers and
grouped together because these five sequences are particularly tightly linked
to the RN resistance trait locus in cotton. See Spec. ,r 251 ("The major QTL 3
region was concentrated at the distal end of the chromosome, between O and
32.63 cM, with a maximum LOD score of 13.93 observed between
DASCTP_28910_164 and DASCTP_1656_527. This major QTL explained
29.8% of the variation in the resistance phenotype."). The Specification
further teaches that all five of these markers are physically located proximate
to each other in a particular region, i.e., the distal end between about 29-32
cM in chromosome 21. Id. at ,r,r 251; 253, Table 2. Accordingly, in addition
to sharing a sugar-phosphate backbone, each member of the claimed
Markush group shares an additional structural feature, i.e., their specific
physical proximity to each other and overall location within cotton genome.
The record further demonstrates that each of the five group members
shares a common use that directly flows from this shared structural
similarity. The Specification teaches that "[i]n general, the closer one
marker is to another marker or gene ... the more tightly they are linked."
3 According to the Specification, "QTL" stands for "quantitative trait locus."
Spec. ,r 44.
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Spec. ,r 89. Thus, the physical location of the claimed sequences is at least
partially responsible for their utility as markers to screen for RN resistance
in cross-bred cotton plants. In addition, the Specification reports that the
five members of this Markush group have the highest LOD and%
Explanation values out of a much larger set of markers identified though
Appellants' experiments. Id. ,r 154, Table 2. That data supports Appellants'
argument that these sequences are particularly suited for use as markers to
be used, alone or in combination, to screen for RN resistance in the cross-
bred progeny plants of the claimed method. See Reply 7.
We disagree with Examiner's argument that there is no common use
because the Specification reports slightly different LOD and% Explanation
values for each of the five markers in the claimed group. See Ans. 11. At
most, the data evidences that some members of the Markush group may be
slightly more indicative of RN resistance than others. That is a difference in
degree, not kind. There is no evidence, nor does Examiner find, that the
members of the claimed Markush group are not alternatively useful as
markers for RN resistance. For all of these reasons, we determine that
Examiner's rejection is not supported by the evidence of record and
therefore reverse.
SUMMARY
We reverse the rejection of claims 12, 16-19, 23, 33, 34, 36 and 37 on
the basis that they contain an improper Markush group.
REVERSED
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