Ex Parte Ghulam KadirDownload PDFPatent Trial and Appeal BoardJul 12, 201612874170 (P.T.A.B. Jul. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/874,170 09/01/2010 Ahmad Parveez GHULAM KADIR 23552 7590 07114/2016 MERCHANT & GOULD P,C P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 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. 943/0-000600US-878899 6698 EXAMINER SHAPIRO, JARED T ART UNIT PAPER NUMBER 1663 NOTIFICATION DATE DELIVERY MODE 07/14/2016 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): USPT023552@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AHMAD PARVEEZ GHULAM KADIR Appeal2014-006396 Application 12/874,170 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FRED MAN, and TA WEN CHANG, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. § 134 involving claims to a method for producing a genetically-modified oil palm plant. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellant identifies the Real Party in Interest as Malaysian Palm Oil Board (see App. Br. 3). Appeal2014-006396 Application 12/874, 170 Statement of the Case Background "[T]he primary objective of plant gene manipulation in most cases is to provide significant improvement of quality and more particularly for increasing total yield of the respective crop" (Spec. 1:21-22). "[O]ne of the most important perennial crops amenable for such technological solutions with respect to the production of excellent quality products is the oil palm (E. guineensis)" (Spec. 2: 1-3). The Claims Claims 1, 2, 4, 7, 9, 10, 12, 15, 17, and 18 are on appeal. Claim 1 is representative and reads as follows: 1. A method for producing a genetically-modified oil palm plant comprising the steps of: (a) preparing an explant from an oil palm plant; (b) preparing embryogenic callus from said prepared oil palm explant; ( c) bombarding a foreign gene mixture into the oil palm embryogenic callus of step (b ), wherein the foreign gene encodes acetyl CoA carboxylase (ACCase ); ( d) selecting transformed embryogenic callus of step ( c) on selection agents; ( e) proliferating and regenerating the selected embryogenic callus into a whole fruit-bearing plant thus producing a transgenic plant; (t) confirming the presence and expression of the foreign gene in said plant; and (g) proving the presence of foreign gene product or foreign protein in the kernel of the plant fruits; wherein the production of the foreign gene product or foreign protein in the kernel section of oil palm fruits is directed by driving the foreign gene with a promoter which is specific to kernel of oil palm. 2 Appeal2014-006396 Application 12/874, 170 The issue2 The Examiner rejected claims 1, 2, 4, 7, 9, 10, 12, 15, 17, and 18 under 35 U.S.C. § 103(a) as obvious over Ghulam Kadir, 3 Gengenbach, 4 and Abdullah5 (Final Act. 6-12). The Examiner finds it obvious to "modify the use of the biolistic method for the production of transgenic oil palm as taught by [Ghulam Kadir], by incorporating the use of the cDNA sequences or partial DNA sequences encoding acetyl CoA carboxylase and methods for altering the oil content of plants as taught by Gengenbach" (Final Act. 10). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Ghulam Kadir, Gengenbach, and Abdullah render the claims obvious? Findings of Fact 1. Ghulam Kadir teaches "a process of producing transgenic plants and more particularly transgenic oil palm plants carrying exogenous genetic material which confers on said plants or cells of said plants particular phenotypic traits" ( Ghulam Kadir i-f 1 ). 2 We note that the Examiner has withdrawn the indefiniteness rejection (see Ans. 3) and that the double patenting rejection is moot in view of the abandonment of copending US Application 12/874, 174, mailed Apr. 15, 2016. 3 Ghulam Kadir, US 2003/0159175 Al, published Aug. 21, 2003 (We note that Appellant refers to this reference as "Parveez" but we will refer to the reference as listed on the publication as "Ghulam Kadir"). 4 Gengenbach et al., US 6,222,099 Bl, issued Apr. 24, 2001. 5 Abdullah et al., US 2008/0250532 Al, published Oct. 9, 2008. 3 Appeal2014-006396 Application 12/874, 170 2. Ghulam Kadir teaches a step (a) of "obtaining an explant from an oil palm plant" and a step (b) of "establishing a transformable and regenerable embryonic callus therefrom" (Ghulam Kadir i-fi-133-34). 3. Ghulam Kadir teaches a step ( c) of "transforming the said callus cells" where "the introduction of desired genetic material into the cells of embryogenic callus including suspension embryogenic callus or immature embryo explant of an oil palm plant is effected via a microparticle bombardment" (Ghulam Kadir i-fi-135, 125). 4. Ghulam Kadir teaches that the step ( c) genetic material "may be employed to confer on ... an oil palm plant cell, specifically-desired traits such as, for example, an increased yield of oil" and that "[ u ]seful genes and their modified versions for effecting such outcomes includes ... acetyl CoA carboxylase (ACCase )" (Ghulam Kadir i-f 126). 5. Ghulam Kadir teaches a step ( d) to "facilitate identification of transformed cells, the embryogenic callus is bombarded with a further genetic construct, comprising a selectable or screenable marker gene" and that the resulting "transformed embryogenic callus cells of the present invention are selected under any one of a number of suitable selective agents" (Ghulam Kadir i-fi-f 127-128). 6. Ghulam Kadir also teaches, that for step ( d), "putatively- transformed embryogenic callus cultures are then subjected to selection under an appropriate selection environment. For example, selection of transformed cells may be achieved using a variety of chemical agents, such as antibiotics (e.g. hygromycin and/or geneticin (G418)) or herbicides (e.g. Basta (trademark))" (Ghulam Kadir i-f 138). 4 Appeal2014-006396 Application 12/874, 170 7. Ghulam Kadir teaches a step ( e) of regenerating the embryonic callus into transgenic plants where "[ t ]ransformed polyembryogenic cultures are finally transferred to an appropriate shoot-inducing medium .... After incubation at 28° C. for at least about 2 months, the plantlets are then transferred to soil" (Ghulam Kadir i-f 141). 8. Ghulam Kadir teaches a step (t) of confirming the presence of the foreign gene in the plant where "PCR and Southern blot hybridization analyses were carried out to ensure that the Basta (registered trademark)- resistant embryogenic calli were actually transformed and were not escapes" (Ghulam Kadir i1208). Ghulam Kadir further teaches regarding step (t) that "[ m ]olecular and protein analyses have been performed to verify the transgenic status of the plants regenerated" ( Ghulam Kadir i1210). 9. Ghulam Kadir teaches, regarding step (g), that "targeting the gene expression into the mesocarp is important. Therefore, isolation of tissue-specific promoter is essential. Useful promoters for effecting such outcomes include ... kernel specific" (Ghulam Kadir i-f 126). 10. Gengenbach teaches "a need to increase the oil and/ or fatty acid content of the plants and seeds" (Gengenbach, col. 4, 11. 2--4). 11. Gengenbach teaches "an isolated and purified DNA molecule comprising a DNA segment encoding a maize acetyl CoA carboxylase gene and methods for conferring herbicide tolerance and/or altering the oil content of plants by introducing and expressing a plant acetyl Co A carboxylase gene in the plant cells" ( Gengenbach, col. 4, 11. 10-15). 12. Gengenbach teaches that a plasmid encoding the ACCase gene can "be used to transform plant cells such as tobacco, Brassica and 5 Appeal2014-006396 Application 12/874, 170 Arabidopsis cells using protoplast or biolistic transformation" (Gengenbach, col. 39, 11. 43--46). 13. Abdullah teaches that "[ s ]ince the endosperm is the site of oil synthesis in oil palm kernel, the promoter of pOP-KT21 may be used to regulate expression of trans genes to modify kernel oil composition without interfering with mesocarp oil synthesis" (Abdullah i-f 169). Principles of Law "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417. Analysis We adopt the Examiner's findings regarding the scope and content of the prior art (Final Act. 6-12; FF 1-13) and agree that the claimed method would have been obvious over the teachings of Ghulam Kadir, Gengenbach, and Abdullah. We address Appellant's arguments below. Appellant contends that Ghulam Kadir does not teach at least half of the requirements of claim 1. Whereas claim 1 sets forth at least 8 separate requirements (i.e., steps (a) - (g), plus the "wherein" clause, [ Ghulam Kadir] fails to disclose or suggest at least Yz of these requirements (i.e., steps ( c ), ( e) and (g) plus the wherein clause thereof). (App. Br. 14). We do not find this argument persuasive because Ghulam Kadir teaches each of the requirements of claim 1 (FF 1-9). As Appellant appears 6 Appeal2014-006396 Application 12/874, 170 to concede, Ghulam Kadir clearly teaches steps (a), (b ), ( d), and ( f) (FF 2, 5, 8). Ghulam Kadir suggests step ( c ), teaching to bombard an oil palm embryogenic callus with a foreign gene (FF 3) and teaching that a foreign gene desirable for expression in oil palm is the ACCase gene (FF 4 ). Ghulam Kadir suggests step ( e ), teaching to form plantlets from transformed embryogenic callus (FF 7). Ghulam Kadir suggests expression using kernel specific promoters (FF 9) and suggests verifying the expression of the gene product and protein (FF 8). Finally, with regard to the "wherein" clause, Ghulam Kadir suggests the use of kernel specific promoters (FF 9) in oil palm plants (FF 1) along with expression of the ACCase gene for increased oil yield (FF 4), suggestions that the ordinary artisan would reasonably find render obvious the "wherein" clause for production of the foreign gene product using a kernel specific promoter. Moreover, Gengenbach also teaches to increase oil production using the ACCase gene (FF 10-11) and Abdullah teaches a specific promoter that is kernel specific and functions to modify kernel oil composition in palm oil plants (FF 13). These additional references further support the Examiner's obviousness case by demonstrating prior art knowledge of foreign ACCase genes and particular kernel specific promoters that function to modify kernel oil composition. Appellant contends that "reliance on Gengenbach is improper as Gengenbach relates to manipulation of maize plants, whereas the present invention is directed to oil palm plants. Therefore, Gengenbach is not properly combined with [Ghulam Kadir]" (App. Br. 14). 7 Appeal2014-006396 Application 12/874, 170 We do not find this argument persuasive. The test for non-analogous art is first whether the art is within the field of the inventor's endeavor and, if not, whether it is "reasonably pertinent to the particular problem with which the inventor was involved." In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). "A reference is reasonably pertinent if, even though it may be in a different field" of endeavor, it logically would have commended itself to an inventor's attention in considering his problem "because of the matter with which it deals." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In this case, Gengenbach satisfies both prongs of the test, because Gengenbach is in the same field of endeavor as the inventor and Ghulam Kadir, because Gengenbach is interested in increasing the oil content of plants and seeds (FF 10) by introducing the ACCase gene into plant cells (FF 11 ). Moreover, because Ghulam Kadir specifically suggests the use of ACCase genes in general (FF 4 ), the ordinary artisan would have found Gengenbach's teachings for increasing oil levels using ACCase genes from a particular other species such as maize pertinent to raising oil levels in palm oil plants as desired by Ghulam Kadir (FF 1, 4 ). Appellant does "not claim to have identified any novel regulatory elements; instead, it is the combination of steps (i.e., steps (a)- (g)), and the specific materials employed in each step that distinguish the present invention over the art" (App. Br. 14). We find this argument unpersuasive both because Ghulam Kadir teaches the specific materials and combinations of steps (FF 1-9), particularly when combined with Gengenbach and Abdullah (FF 10-13), but also because such a combination is merely a "predictable use of prior art 8 Appeal2014-006396 Application 12/874, 170 elements according to their established functions." KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant does not identify, and we do not find, any evidence establishing secondary considerations, or evidence demonstrating any degree of unpredictability in following the directions suggested by Ghulam Kadir for increased oil production in oil palm plants (FF 1-9). Appellant contends that "it is once again only with benefit of improper hindsight that the Examiner can assert that the combination of references is proper. Absent Appellants' [sic] disclosure, one of skill in the art would have no reason to combine the teachings of the asserted references" (App. Br. 14). We are not persuaded. While we are fully aware that hindsight bias may plague determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. In the instant case, producing a genetically- modified oil palm plant as suggested by Ghulam Kadir using the steps specifically taught by Ghulam Kadir and further rendered obvious by Gengenbach and Abdullah reasonably renders the claims obvious (FFl-13). Conclusion of Law The evidence of record supports the Examiner's conclusion that Ghulam Kadir, Gengenbach, and Abdullah render the claims obvious. 9 Appeal2014-006396 Application 12/874, 170 SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Ghulam Kadir, Gengenbach, and Abdullah. Claims 2, 4, 7, 9, 10, 12, 15, 17, and 18 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation