Ex Parte Narusaka et al

Patent Trial and Appeal Board

Jun 20, 2018

13056604 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/056,604 03/24/2011
23373 7590 06/22/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Y oshihiro N arusaka
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.
Ql2271 l 5223
EXAMINER
UYENO, STEPHEN G
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIHIRO NARUSAKA,
MARI NARUSAKA, and KEN SHIRASU
Appeal2017-008395
Application 13/056,604 1
Technology Center 1600
Before DONALD E. ADAMS, JAMES A. WORTH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 5, 6, and
9-11 (Reply Br. 2). Examiner entered a rejection under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "RIKEN" as the real party in interest (App. Br. 2).
Appeal2017-008395
Application 13/056,604
STATEMENT OF THE CASE
Appellants' disclosure "relates to a method for providing a plant with
resistance to two or more pathogens by introducing a combination of two or
more resistance genes to the pathogens into the plant; a transgenic plant
produced by the method; and a portion thereof or a propagation material"
(Spec. 1: 5-9). Appellants' claim 5 is representative and reproduced below:
5. A transgenic plant resistant to species of the genus
Colletotrichum, and resistant to at least one additional pathogen
selected from the group consisting of Pseudomonas syringae
pv. Tomato and Ralstonia solanacearum, said plant comprising
a RPS4 and a RCH2 gene isolated from an Arabidopsis ecotype
selected from the group consisting of Ws-0, No-0, Nd-I, Aa-0,
Eil-0, Rrs-7, Sha, Tamm-2, Tsu-I, Fei-0, Ts-I, Bsch-0, Br-0,
Est-I, Rrs-10, Van-0, Nfa-8, and Bay-0 introduced therein,
which provides the transgenic plant with resistance to species of
the genus Colletotrichum, and resistance to at least one
additional pathogen selected from the group consisting of
Pseudomonas syringae pv. Tomato and Ralstonia
solanacearum.
(App. Br. 24-25.)
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Application 13/056,604
Appellants' claims stand rejected as follows:
Claims 1, 2, 5, 6, and 9-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Maruthasalam, 2 Geneseq, 3 Tair, 4
Narusaka 2008, 5 Zhang, 6 and Uniprot. 7
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Maruthasalam discloses that "[g]enetic engineering is a promising
strategy to generate crop plants with disease resistance against economically
important plant diseases like rice sheath light and bacterial blight"
(Maruthasalam 791; see generally Ans. 10-11 ).
FF 2. Maruthasalam discloses "rice cultivars [] cotransformed with genes
expressing a rice chitinase [] and a thaumatin-like protein [] conferring
2 Maruthasalam et al., Pyramiding transgenic resistance in elite indica rice
cultivars against the sheath blight and bacterial blight, 26 Plant Cell Rep.,
791-804 (2007).
3 Geneseq Accession No. AAB67879, first published June 29, 2001 (see
Ans. 2, 4-7).
4 Tair Accession No: Locus21587485, Locus: AT5G45260, Arabidopsis.org
(2007).
5 Narusaka et al., Identification of Arabidopsis Genes Resistant to a
Pathogen of Cruciferous Vegetable Anthracnose, 49 Abstracts of the
Japanese Society of Plant Physiologiests Annual Meeting, 340: Abst. No.
P413 (948) (2008).
6 Zhang et al., RPS4-Mediated Disease Resistance Requires the Combined
Presence of RPS4 Transcripts with Full-Length and Truncated Open
Reading Frames, 15 The Plant Cell 2333-2342 (2003).
7 UniProtKB-Q9SCX7 (RPS4R ARATH),
http://www.uniprot.org/uniprot/Q9SCX7, last accessed August 11, 2017.
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Application 13/056,604
resistance to fungal pathogens and a serine-threonine kinase [] conferring
bacterial blight resistance, through particle bombardment, with a view to
pyramiding sheath blight and bacterial blight resistance" (Maruthasalam
791; see also Ans. 3).
FF 3. Maruthasalam does not disclose plants transformed or cotransformed
with either the RPS4 or RCH2 gene or plants exhibiting resistance to a
species of the genus Colletotrichum or a pathogen selected from the group
consisting of Pseudomonas syringae pv. Tomato and Ralstonia
solanacearum (see Ans. 3-4).
FF 4. Appellants disclose
Bacterial leaf spot of tomato (pathogenic bacterium
Pseudomonas syringae pv. tomato) [] infects mainly Solanaceae
plants and[] has an avirulence gene avrRps4 .... [B]acterial
wilt (Ralstonia solanacearum) [] infects and blights over 200
species of plants such as Solanaceae and Cruciferous plants and
[] causes detrimental damage in agriculture.
(Spec. 2: 11-19; see Ans. 13 ("It is well known that the pathogens
Colletotrichum higginsianum and Pseudomonas syringae pv. Tomato are
responsible for significant economic losses ranging from temperate to tropic
regions. Ralstonia solancearum is an additional pathogen that results in
significant economic losses").)
FF 5. Examiner finds that Geneseq discloses "plant pathogen resistance
protein RRS1-R and SLHl," which Examiner finds are synonyms for the
same protein, and "nucleic acid [ for this protein that may be used] to
produce transgenic plants resistant to Ralstonia solanacearum" (Ans. 4; see
also id. 5-6).
FF 6. Examiner finds that Tair discloses "that the Arabidopsis thaliana
locus of AT5G45260 is also referred to as SLHl, ... RRS1, and RRS1-R"
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Application 13/056,604
and "is described as conferring resistance to Ralstonia solanacearum" (Ans.
4).
FF 7. Zhang discloses that "[t]he Arabidopsis RPS4 gene specifies disease
resistance to Pseudomonas syringae pv tomato strain DC3000 [] expressing
avrRps4" (Zhang 2333; see also Ans. 7 (Examiner finds that Zhang
discloses "that the RPS4 pathogen resistance gene, isolated from
Arabidopsis ecotype Ler-0, is responsible for resistance to the tomato
pathogen Pseudomonas syringae pv. Tomato).
FF 8. Examiner finds that Uniprot discloses a sequence for "rps4 disease
resistance protein" (Ans. 7).
FF 9. Narusaka 2008 discloses that although Colletotrichum higginsianum
infects Arabidopsis ecotype Col-0, other Arabidopsis ecotypes, including
Ws-0, are resistant to Colletotrichum higginsianum (Narusaka).
FF 10. Narusaka 2008 discloses that Colletotrichum higginsianum
"resistance was dominant and controlled at one locus ... the R gene
(RCH2[)] ... located on [the bottom arm ofJ chromosome 5" (Narusaka; see
also Ans. 4 (Examiner finds that Narusaka 2008 discloses "that the RCH2
pathogen resistance gene is responsible for resistance to pathogen
Colletotrichum higginsianum").
FF 11. Narusaka declares that "[t]he 'R gene' described in the Narusaka
[2008] publication is not the RCH2 gene, rather, it is the RPS4 gene"
(Narusaka Dec. 2). s, 9 _
8 Declaration of Yoshihiro Narusaka, signed March 13, 2014.
9 We note that Declarant incorrectly identifies the publication date of the
Narusaka' 2008 publication as 2009 (see Narusaka Dec. 1 ("Narusaka et al.,
Japanese Soc. Plant Phys. Meeting Abstracts, 49:340 (2009)('Narusaka
2009')"); cf supra n. 5).
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Application 13/056,604
FF 12. Appellants disclose: "Gassmann et al. has identified that RCH2 (in
the literature, referred to as RRSl-R) in the Arabidopsis ecotypes Nd-1 and
Ct-1 is a resistance gene to a bacterial wilt pathogen (soilbome pathogenic
bacterium Ralstonia solanacearum) which infects Solanaceae and
Cruciferous plants" (Spec. 6: 4-9).
ANALYSIS
Maruthasalam discloses "[g]enetic engineering [techniques, such as
cotransfection, are] a promising strategy to generate crop plants with disease
resistance against economically important plant diseases" (FF 1-2). In
addition, Maruthasalam established that plants may be cotransformed with
two different disease resistant genes to confer resistance to plant diseases
(FF 2).
Although Maruthasalam does not discuss Pseudomonas syringae pv.
Tomato and Ralstonia solancearum, Examiner finds that these pathogens are
responsible for economically important plant diseases (FF 3-4). Geneseq
discloses that nucleic acid encoding the RRS 1-R plant pathogen resistance
protein may be used to produce transgenic plants resistant to R.
solanacearum (FF 5; see also FF 6). In addition, Zhang discloses that "[t]he
Arabidopsis RPS4 gene specifies disease resistance to Pseudomonas
syringae pv tomato strain DC3000 [] expressing avrRps4" (FF 7).
Thus, we find no error in Examiner's conclusions that, at the time of
Appellants' claimed invention, a person of ordinary skill in this art would
have found it prima facie obvious to cotransfect a plant with the RRSJ-R and
RPS4 genes to produce a plant resistant to both Pseudomonas syringae pv.
Tomato and Ralstonia solancearum (see Ans. 10-11; see also id. at 15
("Examiner notes that the claims are prima facie obvious because one of
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Application 13/056,604
ordinary skill in the art would have been motivated to utilize the RPS4 gene
and the ... [RRS 1] gene to generate a plant that is double resistant to
Ralstonia solancearum and Pseudomonas syringae pv. Tomato")). As
Appellants appreciate, "persons of ordinary skill in the art would have
expected the total effects of introducing RPS4 and RCH2 genes into a plant
... to be resistance to P. syringae and R. solanacearum" (App. Br. 17-18).
We recognize, Appellants observation that a plant comprising both the
RRSJ-R (referred to by Appellants as RCH2) and RPS4 genes is also
resistant to Colletotrichum higginsianum (see App. Br. 15-16). As
Examiner properly explains, however, resistance to Colletotrichum
higginsianum is nothing more than a latent property of the plant suggested
by the prior art (see Ans. 16). See In re Prindle, 297 F .2d 251, 254 ( CCP A
1962) ("mere recognition of ... latent properties [in the prior art] does not
render the otherwise obvious [invention] unobvious"); See also Ex parte
Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) ("The fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious").
We are not persuaded by Appellants' contentions regarding the
different nomenclature associated with the R. solanacearum RRSJ-R gene,
referred to by Appellants' as RCH2 (App. Br. 8-14; Reply Br. 4-6).
Identical language between the prior art and claims is not required to sustain
a prior-art rejection. In re Skoner, 517 F.2d 947, 950 (CCPA 1975) ("Any
other result would permit the allowance of claims drawn to unpatentable
subject matter merely through the employment of descriptive language not
chosen by the prior art").
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Application 13/056,604
For the reasons set forth above, we are not persuaded by Appellants'
contention that Narusaka 2008's disclosure that Colletotrichum
higginsianum "resistance was dominant and controlled at one locus ... the R
gene [RCH2]" 10 is necessary to establish a prima facie case on this record
(see App. Br. 8-14). The Board may rely upon less than all the references
cited by the Examiner. See In re May, 574 F.2d 1082, 1090 (CCPA 1978);
In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Thus, we are not
persuaded by Appellants' contentions regarding Narusaka 2008 (see App.
Br. 8-14).
We recognize, and have fully considered, Appellants' contentions that
their observation that a plant comprising both the RRSJ-R (referred to by
Appellants as RCH2) and RPS4 genes is resistant to Colletotrichum
higginsianum amounts to an unexpected result that outweighs Examiner's
strong prima facie case of obviousness on this record (App. Br. 14-22). We
are, however, not persuaded. Notwithstanding Appellants' contentions to
the contrary, we agree with Examiner's assertion that "[i]t is not necessary
that the prior art suggest the combination to achieve the same advantage or
result discovered by Appellant" (Ans. 15-16 ( emphasis omitted)). See In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("[T]he law does not require
that the references be combined for the reasons contemplated by the
inventor"). See also, In re Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) ("[I]t
is not required ... that the prior art disclose or suggest the properties newly-
10 Narusaka later declares that "[t]he 'R gene' described in the Narusaka
[2008] publication is not the RCH2 gene, rather, it is the RPS4 gene" (FF
11).
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Application 13/056,604
discovered by an applicant in order for there to be a prima facie case of
obviousness").
To be clear, the evidence on this record suggests a plant comprising
both the RRSJ-R (referred to by Appellants as RCH2) and RPS4 genes,
which, as Appellants' recognize, would have been expected by those of
ordinary skill in this art to be resistance to both P. syringae and R.
solanacearum (see FF 1-7; Ans. 10-11 and 15; App. Br. 17-18). Although
this plant may have additional latent properties that were unrecognized by
the prior art at the time of Appellants' claimed invention, "it is not required
... that the prior art disclose or suggest the properties newly-discovered by
an applicant in order for there to be a prima facie case of obviousness." See
Dillon, 919 F .2d at 697. Appellants' evidence and contentions regarding
these properties has not been disregarded or ignored (see App. Br. 20; Reply
Br. 6-8). To the contrary, Appellants' contentions and evidence that their
observations relating to the plants' latent property of exhibiting resistance to
Colletotrichum higginsianum 11 and the mechanism by which this latent
property is expressed, 12 have been fully considered and found insufficient to
outweigh Examiner's strong prima facie case of obviousness on this record
and, thereby, not persuasive. See Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d
714, 719 (Fed. Cir. 1991).
11 See App. Br. 17-18 ("persons of ordinary skill in the art would have
expected the total effects of introducing RPS4 and RCH2 genes into a plant
... to be resistance to P. syringae and R. solanacearum, not resistance to
these two pathogens and resistance to C. higginsianum").
12 See App. Br. 22 ("both genes are required for producing normal (non-
dwarfed) plants resistant to C. higginsianum, and the experiments in the
specification demonstrate this").
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CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Maruthasalam, Geneseq,
Tair, Narusaka 2008, Zhang, and Uniprot is affirmed. Claims 1, 2, 6, and 9-
11 are not separately argued and fall with claim 5.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
10