E. I. DU PONT DE NEMOURS AND COMPANY et al.

Patent Trials and Appeals Board

Sep 14, 2020

2020001230 (P.T.A.B. Sep. 14, 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.
14/913,614 02/22/2016 Andrew Cigan BB2284-US-PCT 2600
27310 7590 09/14/2020
PIONEER HI-BRED INTERNATIONAL, INC.
7250 NW 62ND AVENUE
PO BOX 552
JOHNSTON, IA 50131-0552
EXAMINER
COLLINS, CYNTHIA E
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
09/14/2020 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 ANDREW MARK CIGAN, SAVERIO CARL FALCO,
HUIRONG GAO, ZHONGSEN LI, ZHAN-BIN LIU,
L. ALEKSANDER LYZNIK, JINRUI SHI, SERGEI SVITASHEV, and
JOSHUA K. YOUNG
____________

Appeal 2020-001230
Application 14/913,614
Technology Center 1600
____________

Before ERIC B. GRIMES, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal2 under 35 U.S.C. § 134(a) involving
claims to a method for editing a nucleotide sequence in the genome of a

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Pioneer Hi-Bred International, Inc.
and E.I. DuPont de Nemours & Company as the real parties in interest.
Appeal Br. 4. Herein, we refer to the Final Office Action mailed October 4,
2018 (“Final Act.”); Appellant’s Response after the Final Action filed
January 4, 2019 (“Response”); Examiner’s Advisory Action mailed
February 7, 2019 (“Adv. Act.”); Appellant’s Appeal Brief filed April 1,
2019 (“Appeal Br.”); Examiner’s Answer mailed October 4, 2019 (“Ans.”);
and Appellant’s Reply Brief filed December 3, 2019 (“Reply Br.”).
2 This Appeal is related to Appeal 2019-003067 (Application 14/463,687),
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plant cell that have been rejected for anticipation under 35 U.S.C. § 102 and
obviousness under 35 U.S.C. § 103. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
“Recombinant DNA technology has made it possible to insert foreign
DNA sequences into the genome of an organism, thus, altering the
organism’s phenotype.” Spec. 1. According to the Specification,
“[a]lthough several approaches have been developed to target a specific site
for modification in the genome of a plant, there still remains a need for more
efficient and effective methods for producing a fertile plant, having an
altered genome comprising specific modifications in a defined region of the
genome of the plant.” Id. at 2.
Appellant’s Specification describes “compositions and methods for
genome modification of a target sequence in the genome of a plant or plant
cell” that “employ a guide RNA/Cas endonuclease system, wherein the Cas
endonuclease is guided by the guide RNA to recognize and optionally
introduce a double strand break at a specific target site into the genome of a
cell.” Spec. 27. A Cas endonuclease is a protein encoded by a “CRISPR-
associated (Cas)” gene such as Cas9. Id. at 28–29.
“Once a genomic target site is identified, a variety of methods can be
employed to further modify the target sites such that they contain a variety
of polynucleotides.” Spec. 27. According to the Specification, “[s]uch
methods can employ homologous recombination to provide integration of

Decision affirming the rejections of record entered June 24, 2020.
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the polynucleotide of Interest at the target site” through the use of “a donor
DNA construct,” i.e., “a DNA construct that comprises a polynucleotide of
Interest to be inserted into the target site of a Cas endonuclease.” Id. at 39.
Such constructs have “region[s] of homology that flank the polynucleotide
of Interest” and “share homology to a first and a second genomic region,
respectively, present in or flanking the target site of the plant genome” so as
“to promote homologous recombination at the cleaved target site.” Id.
Claims 29, 31, 32, and 38 are on appeal and can be found in the
Claims Appendix of the Appeal Brief. Claim 29 is illustrative of the claims
on appeal. It reads as follows:
29. A method for editing a nucleotide sequence in the
genome of a plant cell, the method comprising:
(a) introducing at least one guide RNA and at least one
polynucleotide modification template into a plant cell
comprising at least one Cas endonuclease, wherein the Cas
endonuclease introduces a double-strand break at a target site in
the genome of said cell, wherein said polynucleotide
modification template comprises at least one nucleotide
substitution, insertion, deletion, or a combination thereof, as
compared to the sequence of the target site; and
(b) obtaining a whole plant from the plant cell, wherein
the plant comprises the nucleotide sequence edit introduced at
the target site in the genome of at least one cell of the plant.
Appeal Br. 22.
Appellant seeks review of the following rejections:3
I. Claims 29, 31, 32, and 38 under 35 U.S.C. § 102(a)(2) as anticipated
by Yang;4 and

3 Appellant does not appeal Examiner’s rejections of claim 43. Appeal Br.
5, 7.
4 US 2015/0067922 A1, published March 5, 2015 (“Yang”). Yang claims
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II. Claims 29, 31, and 38 under 35 U.S.C. § 103 as unpatentable over
Zhang5 in view of Li.6
Appeal Br. 7.
I. ANTICIPATION REJECTION OVER YANG
Issue
Appellant does not argue the rejection of dependent claims 31, 32, and
38 separately from the rejection of independent claim 29. Accordingly, we
focus our analysis on claim 29, and the other claims stand or fall with claim
29. See 37 C.F.R. § 41.37(c)(iv).
The issue for this rejection is whether a preponderance of the evidence
supports Examiner’s conclusion that Yang anticipates the method recited in
claim 29.
Findings of Fact
FF1. Yang discloses “compositions and methods for specific gene
targeting and precise editing of DNA sequences in plant genomes using the
CRISPR (cluster regulatory interspaced short palindromic repeats)
associated nuclease.” Yang, Abstr.; ’737 Provisional 79.7 Yang teaches that

priority to provisional application no. 61/828,737, filed on May 30, 2013
(“’737 Provisional”).
5 US 9,840,713 B2, issued Dec. 12, 2017 (“Zhang”). Zhang claims priority
to a number of applications, including provisional application no.
61/835,931, filed on June 17, 2013 (“’931 Provisional”).
6 Ting Li et al., High-efficiency TALEN-based Gene Editing Produces
Disease-resistant Rice, 30 Nature Biotechnology 390–92 (2012) (“Li”).
7 We include parallel citations to supporting disclosure in the ’737
Provisional. The ’737 Provisional was filed prior to the earliest possible
effective filing date of Appellant’s present application. Appellant does not
dispute that the ’737 Provisional provides written description support for one
or more claims in Yang.
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“[n]on-transgenic, genetically modified crops can be produced using these
compositions and methods.” Yang, Abstr.
FF2. Yang discloses:
a series of plant-specific RNA-guided Genome Editing vectors
(pRGE plasmids) . . . provided for expression of the
CRISPR/Cas9 system in plants. The plasmids may be
optimized for transient expression of the CRISPR/Cas9 system
in plant protoplasts, or for stable integration and expression in
intact plants via Agrobacterium-mediated transformation. In
one aspect, the plasmid vector constructs include a nucleotide
sequence comprising a DNA-dependent RNA polymerase III
promoter, wherein said promoter operably linked to a gRNA
molecule and a Pol III terminator sequence, wherein said gRNA
molecule includes a DNA target sequence; and a nucleotide
sequence comprising a DNA-dependent RNA polymerase II
promoter operably linked to a nucleic acid sequence encoding a
type II CRISPR-associated nuclease.
Yang ¶ 17; ’737 Provisional 3, 37–38 (describing plasmid vectors).
FF3. Yang teaches “gene editing may be obtained . . . via deletion or
insertion” by co-introducing a polynucleotide modification template, i.e., a
“donor DNA fragment,” with the CRISPR/Cas system. Yang ¶ 23; ’737
Provisional 4. Specifically, Yang discloses that “a donor DNA fragment
with positive (e.g., herbicide or antibiotic resistance) and/or negative (e.g.,
toxin genes) selection markers could be co-introduced with the CRISPR/Cas
system into plant cells for targeted gene repair/correction and knock-in (gene
insertion and replacement) via homologous recombination.” Id.; see also
Yang ¶ 69; ’737 Provisional 10–11 (further describing use of “a ‘donor’
molecule to template repair of a ‘target’ molecule (i.e., the one that
experienced the double-strand break)”).
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FF4. Yang discloses that such “DNA constructs may be introduced into the
genome of a desired plant host by a variety of conventional techniques.”
Yang ¶ 105; ’737 Provisional 33–34 (listing techniques and supporting
references). For instance, Yang discloses:
the gRNA-Cas construct can be introduced together with a
donor DNA construct into plant cells (via protoplast
transformation or the Agrobacterium-mediated transformation)
to create precise nucleotide alterations (substitution, deletion
and insertion) and sequence insertion. In one embodiment,
herbicide-tolerant crops can be generated by substitutions of
specific nucleotides in plant genes such as those encoding
acetolactate synthase (ALS) and protoporphyrinogen oxidase
(PPO). In addition to targeted mutation of single genes, gRNA-
Cas constructs can be designed to allow targeted mutation of
multiple genes, deletion of chromosomal fragment, site-specific
integration of transgene, site-directed mutagenesis in vivo, and
precise gene replacement or allele swapping in plants.
Therefore, the invention has . . . broad applications in gene
discovery and validation, mutational and cisgenic breeding, and
hybrid breeding. These applications should facilitate the
production of a new generation of genetically modified crops
with various improved agronomic traits such as herbicide
resistance, disease resistance, abiotic stress tolerance, high
yield, and superior quality.
Yang ¶ 122; ’737 Provisional 39.
FF5. Yang discloses that “[t]ransformed plant cells which are produced by
any of the above transformation techniques can be cultured to regenerate a
whole plant which possess the transformed genotype and thus the desired
phenotype.” Yang ¶ 108; ’737 Provisional 35. Yang cites references
describing techniques for both “[p]lant regeneration from cultured
protoplasts” and “regeneration . . . from plant callus, explants, organs,
pollens, embryos or parts thereof.” Id.
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FF6. In addition, Yang discloses a working example demonstrating the use
of a CRISPR-Cas9 system in rice protoplasts “for precise cleavage at the
desired sites [in the rice genome] and [to] introduce mutation (insertion or
deletion) by error prone non-homologous end joining DNA repairing.”
Yang ¶¶ 123–156; ’737 Provisional 40–44 (Ex. I); see also ’737 Provisional
54 (“These results demonstrate that the engineered gRNA-Cas9 can
precisely generate [double-strand breaks] at specific sites of the plant
genome, leading to targeted gene mutations introduced by the [non-
homologous end joining] DNA repairing machinery.”). According to Yang,
“[u]sing rice (a model plant and important crop) as an example, we
demonstrated that Cas9 could be guided by engineered gRNA for precise
cleavage and editing of the plant genome” and “[t]herefore, the CRISPR-Cas
system can be exploited as a powerful genome editing and gene targeting
tool for functional characterization of plant genes and genetic modification
of agricultural crops.” Yang ¶ 134; ’737 Provisional 56.
FF7. At least claim 1 of Yang is supported by the written description in the
’737 Provisional. See, e.g., ’737 Provisional 3–4, 10–11, 37–44, and 56.
Analysis
Examiner finds that Yang discloses “a method comprising introducing
at least one guide RNA into a plant cell comprising at least one Cas9 Type-II
CRISPR-associated nuclease” along with “a donor DNA fragment with
positive (e.g., herbicide or antibiotic resistance) and/or negative (e.g., toxin
genes) selection markers when co-introduced with the CRISPR/Cas system
into plant cells for targeted gene repair/correction and knock-in (gene
insertion and replacement) via homologous recombination.” Final Act 4.
Examiner further determines that Yang discloses its “transformed plant cells
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can be cultured to regenerate a whole plant . . . using techniques that were
known in the art.” Id. at 5. Examiner further determines these disclosures
are supported in the ’737 Provisional and, therefore, Yang is entitled to the
filing date of the ’737 Provisional for purposes of assessing it as prior art.
See Id. at 6. For these reasons, Examiner concludes that claim 29 is
anticipated by Yang. Id. at 5.
We agree with, and adopt, Examiner’s findings of fact and reasoning
supporting the determination that Appellant’s claims are anticipated by
Yang. See Final Act. 3–5; Ans. 9–31; FF1–FF7. We are not persuaded by
Appellant’s arguments, as explained below.
Appellant notes the Examiner’s findings regarding Yang’s disclosure
of co-introducing a donor DNA fragment along with a CRISPR/Cas system
into plant cells to affect gene editing through homologous recombination,
but points out that the “corresponding paragraph” in the ’737 Provisional
refers to a “Fig. 13” that cannot be found in the “publicly available file
history of the ‘737 provisional application.” Appeal Br. 9. Appellant urges
that because “Fig. 13” is missing, “[n]o specific guidance was given by
Yang for the use of a polynucleotide template for plant genome modification
before the priority date of the instant application” and, therefore, Yang does
not anticipate claim 29. Id.
We disagree. Yang discloses a genome editing method in which a
donor DNA template is “co-introduced” with a CRISPR/Cas system, i.e., a
guide RNA and Cas endonuclease, into a plant cell. FF2–FF3. Yang
explains the purpose of doing so is to create “precise nucleotide alterations
(substitution, deletion and insertion)” via homologous recombination. FF4.
These disclosures provide specific guidance to perform step (a) of claim 29.
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Yang further discloses that after the plant cells have been edited in this
manner, the whole plant comprising those edits can be obtained using
standard techniques. FF5. Thus, both Yang and its priority application
disclose all of the steps of claim 29 “arranged or combined in the same way
as in the claim.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
(quotations omitted). The fact that the ’737 Provisional additionally cites to
Figure 13, a figure that is apparently missing from that application, does not
change the fact that the other disclosure present in Yang and the ’737
Provisional is itself sufficient to anticipate claim 29.
Appellant’s argument that the “general molecular biology techniques”
disclosed in Yang are insufficient to anticipate claim 29 is also unpersuasive.
See Appeal Br. 11–12. Yang is a published patent application and its
disclosure of techniques for, inter alia, introducing DNA constructs into
plant cells and regenerating whole plants from edited plant cells “are
presumptively enabling.” See In re Antor Media Corp., 689 F.3d 1282, 1287
(Fed. Cir. 2012). It is the patent applicant who bears the burden to “submit
rebuttal evidence” to show these teachings are not enabled. Id. Appellant,
however, has not persuasively explained, much less provided evidence
demonstrating, that the anticipating disclosures in Yang (see FF1–FF5) are
not enabling.
We are unpersuaded by Appellant’s argument that Yang “did not
teach template-directed repair of a double strand break” because “Yang’s
work in protoplasts was limited to the error-prone NHEJ [i.e., Non-
Homologous End Joining] pathway.” Appeal Br. 9–10. As Examiner points
out, Yang provides a working example demonstrating the use of a guide
RNA and Cas endonuclease to induce targeted double-strand breaks at
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precise locations in the genome of rice protoplasts. See Ans. 25; FF6. In
this example, Yang used NHEJ to introduce mutations designed to knock out
genes at those locations. But Yang specifically discloses that “in addition to
targeted mutation” through NHEJ, “the gRNA-Cas construct can be
introduced together with a donor DNA construct . . . to create precise
nucleotide alterations,” such as the substitution of nucleotides encoding
particular genes, at those sites. FF4. Thus, Yang is not limited to the
specific repair pathway employed in Example I because it also discloses
methods in which a polynucleotide modification template is introduced with
the CRISPR/Cas system to introduce edits via homologous recombination.
Moreover, while the method in Yang Example I does not itself involve a
donor DNA template, it does demonstrate the successful use of a guide RNA
and Cas endonuclease to induce a targeted double-strand break in rice
protoplasts. FF6. In this regard, Example I provides additional disclosure to
help enable the practice of Yang’s methods of using CRISPR/Cas systems to
edit plant cells, including those involving the co-introduction of a donor
DNA template.
Appellant contends that Yang’s work with protoplasts does “not teach
Cas endonuclease-mediated editing of a polynucleotide in plant cells
comprising a cell wall (intact plant cell), as claimed in Claim 29.” Appeal
Br. 12. We disagree for several reasons. First, claim 29 is not limited to
plant cells comprising a cell wall, but rather recites a “plant cell” generally.8

8 The amendment Appellant proposed after the Final Office Action was not
entered. Advisory Act. 2; see Response 2 (seeking to amend claim 29 to
recite “an intact plant cell”).
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Moreover, as Examiner points out, Appellant’s Specification indicates that
“protoplasts” are plant cells:
The term “plant” refers to whole plants, plant organs, plant
tissues, seeds, plant cells, seeds and progeny of the same. Plant
cells include, without limitation, cells from seeds, suspension
cultures, embryos, meristematic regions, callus tissue, leaves,
roots, shoots, gametophytes, sporophytes, pollen and
microspores. Plant parts include differentiated and
undifferentiated tissues including, but not limited to roots,
stems, shoots, leaves, pollens, seeds, tumor tissue and various
forms of cells and culture (e.g., single cells, protoplasts,
embryos, and callus tissue).
Ans. 27–28 (quoting Spec. 85). Accordingly, the protoplasts described in
Yang constitute a “plant cell,” as recited in claim 29.
Second, the disclosure of plant cells in Yang is not limited to just
protoplasts. Yang states that its gene editing methods are broadly applicable
to editing plants and crops generally. See FF1, FF4, and FF5; see also Yang
¶¶ 101–103 (describing various monocot and dicot plants “the
polynucleotides and vectors described herein can be used to transform”).
Moreover, Examiner found and we agree, that Yang describes techniques for
introducing DNA constructs into plant cells “that are understood in the art to
be applicable to plant cells that retain their cell wall.” Ans. 24 (citing Yang
¶ 105); FF4. Thus, Yang discloses that its methods may be used to edit the
genome of protoplasts as well as plant cells comprising a cell wall. Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir.
2001) (holding that “anticipation does not require actual performance of
suggestions in a disclosure”).
We are also unpersuaded by Appellant’s argument that Yang does not
anticipate because “Yang did not obtain a whole plant with an edited
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genome because Yang’s cells were limited to isolated protoplasts.” Appeal
Br. 14–15 (emphasis omitted). Yang discloses various techniques for
obtaining a whole plant from edited plant cells and discloses that these
techniques may be used to regenerate a whole plant containing the
transformed genotype, i.e., the edited nucleotide sequence resulting from
Yang’s gene editing methods. FF5. Thus, Yang discloses a method
comprising both steps of claim 29.
Appellant’s arguments that Yang and/or the ’737 Provisional do not
“demonstrate generating a plant from a plant protoplast that was edited using
CRISPR-Cas endonuclease” and a donor DNA template are not persuasive.
See Appeal Br. 15 (emphasis added); Reply Br. 4–8 (asserting “Yang neither
demonstrated nor provided the requisite enabling guidance to show that the
instant claims are anticipated”). As Examiner correctly points out, Yang
need not provide a working example comprising both steps of the claimed
method to anticipate. Ans. 15. What is required is that the prior art
reference disclose a method comprising all of the steps “arranged or
combined in the same way as in the claim,” which Yang does. See Gleave,
560 F.3d at 1334. Appellant’s arguments that Yang does not demonstrate
the full method of claim 29 in a working example does not overcome the
presumption Yang’s disclosure is presumptively enabled because Appellant
has not explained, much less provided evidence to show, why Yang’s
detailed description of the claimed method, and supporting citations, is
insufficient to enable a skilled artisan to practice that method.
For these reasons, we determine that Examiner’s rejection is
supported by the preponderance of the evidence and therefore affirm the
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rejection of claim 29 as anticipated by Yang. We affirm the rejection of
Appellant’s other claims as anticipated for the same reasons.
II. OBVIOUSNESS REJECTION OVER ZHANG AND LI
Issue
Appellant does not argue the rejection of dependent claims 31 and 38
separately from the rejection of independent claim 29. Accordingly, we
focus our analysis on claim 29, and the other claims stand or fall with claim
29. See 37 C.F.R. § 41.37(c)(iv).
The issue for this rejection is whether a preponderance of the evidence
supports Examiner’s conclusion that Zhang in combination with Li renders
the method in claim 29 obvious.
Findings of Fact
FF8. Zhang teaches “[a] CRISPR-Cas complex-mediated method” for
producing a “genetically modified plant” that involves introducing a
“CRISPR-Cas vector system” comprising a guide RNA and a Cas
endonuclease into a plant cell to induce targeted cleavage of a
polynucleotide locus and teaches that this method may further include the
introduction of a “template” into the cleaved polynucleotide locus. Zhang
claims 1 and 14; ’931 Provisional ¶¶ 13, 15, 136, 145.9
FF9. Zhang teaches that
[t]he CRISPR/Cas or the CRISPR-Cas system (both terms are
used interchangeably throughout this application) does not
require the generation of customized proteins to target specific

9 We include parallel citations to supporting disclosure in the ’931
Provisional. The ’931 Provisional was filed prior to the earliest possible
effective filing date of Appellant’s present application. Appellant does not
dispute that the ’931 Provisional provides written description support for one
or more claims of Zhang.
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sequences but rather a single Cas enzyme can be programmed
by a short RNA molecule to recognize a specific DNA target, in
other words the Cas enzyme can be recruited to a specific DNA
target using said short RNA molecule.
Zhang 2:39–46; ’931 Provisional ¶ 6. Zhang explains that in these CRISPR-
Cas systems the Cas protein “directs cleavage of one or two strands at the
location of the target sequence” of the guide RNA. Zhang 3:40–42, 6:17–
19; ’931 Provisional ¶ 24.
FF10. Zhang teaches that “[i]n some embodiments, the method further
comprises repairing said cleaved target polynucleotide by homologous
recombination with an exogenous template polynucleotide, wherein said
repair results in a mutation comprising an insertion, deletion, or substitution
of one or more nucleotides of said target polynucleotide.” Id. at 7:38–44,
31:37–44; ’931 Provisional ¶¶ 15, 136.
FF11. Zhang teaches that its methods may be used to edit plant cells. Zhang
6:36–37, 35:17–19; ’931 Provisional ¶¶ 145, 148–150. For example, Zhang
explains that “[w]ith recent advances in crop genomics, the ability to use
CRISPR-Cas systems to perform efficient and cost effective gene editing
and manipulation will allow the rapid selection and comparison of single and
multiplexed genetic manipulations to transform such genomes for improved
production and enhanced traits.” Id. at 35:47–52; ’931 Provisional ¶ 148.
According to Zhang, the “present invention” provides “plant breeders . . .
with a new tool to induce mutations.” Id. at 36:33; ’931 Provisional ¶ 150.
“Accordingly, one skilled in the art can analyze the genome of sources of
resistance genes, . . . with more precision than previous mutagenic agents
and hence accelerate and improve plant breeding programs.” Id. at 36:33–
39; ’931 Provisional ¶ 150.
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FF12. Zhang further teaches that methods for producing transgenic plants
are known in the art (Zhang 35:23–25; ’931 Provisional ¶ 145) and
incorporates by reference the disclosures in “U.S. Pat. No. 6,603,061––
Agrobacterium-Mediated Plant Transformation Method; U.S. Pat. No.
7,868,149––Plant Genome Sequences and Uses Thereof and US
2009/0100536––Transgenic Plants with Enhanced Agronomic Traits” and
“Morrell et al ‘Crop genomics: advances and applications’ Nat Rev Genet.
2011 Dec. 29; 13(2):85-96.” Id. at 35:53–57; ’931 Provisional ¶ 148.
FF13. Zhang also provides Example 15, which is titled “Engineering of
Microalgae Using Cas9.” Zhang, 129:7–9; ’931 Provisional ¶¶ 475–491. In
Example 15, Zhang discloses three methods for delivering Cas9 and a guide
RNA into such plant cells and teaches that “[f]or Homologous
recombination . . . an additional homology directed template” is provided.
Zhang 129:12–130:13; ’931 Provisional ¶¶ 476–479. Zhang also provides
the nucleotide sequences for cassettes that include the Cas9 endonuclease as
well as a sequence for a guide RNA that may be used in these methods.
Zhang 129–132 (SEQ ID NOs: 275–277); ’931 Provisional ¶¶ 480–485.
FF14. Zhang Example 15 further teaches a method of producing “a line of
Chlamydomonas reinhardtii,” i.e., alga, “that expresses Cas9 constitutively.”
See Zhang 132:60–67; ’931 Provisional ¶¶ 487–488. Zhang teaches “[t]his
can be done by using pChlamy1 (linearized using PvuI) and selecting for
hygromycin resistant colonies” and provides the nucleotide sequence for
“pChlamy1 containing Cas9.” Id. According to Zhang, “to achieve gene
knockout” in such Cas9-expressing alga “one simply needs to deliver RNA
for the guide RNA” and “for homologous recombination” one “deliver[s]
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guideRNA as well as a linearized homologous recombination template.” Id.
at 132:64–67; ’931 Provisional ¶ 488.
FF15. At least claim 1 of Zhang is supported by the written description in
the ’931 Provisional. See, e.g., ’931 Provisional ¶¶ 7, 13–15, 24, 136, 145,
148, and 475–491.
FF16. Li describes the use of “TAL effector nucleases (TALENSs)” to
create site-specific gene modifications in plant cells, e.g., rice. Li 390. Li
further describes use of “TALEN technology to edit a specific S gene in rice
to thwart the virulence strategy of X. oryzae and thereby engineer heritable
genome modifications for resistance to bacterial blight.” Id. Li teaches that
after TALEN technology was used to edit the rice cells, “individual
transformant cells were selected, propagated and regenerated into whole
plants” that continued to exhibit the desired trait in subsequent generations.
Li 390–91.
Analysis
Regarding step (a) of claim 29, Examiner finds “Zhang teaches a
CRISPR-Cas complex-mediated method for the production of a multicellular
genetically modified plant” comprising the introduction of vectors encoding
a Cas9 protein and a guide RNA to “direct sequence-specific binding of the
CRISPR complex to one or more target sequences” and “obtain[] cleavage
of a polynucleotide loci [sic]” in a plant cell. Final Act. 8–9. In addition,
Examiner finds Zhang teaches the method
may further comprise repairing a cleaved target polynucleotide
by homologous recombination with an exogenous template
polynucleotide wherein the repair results in a mutation
comprising an insertion, deletion, or substitution of one or more
nucleotides . . . within or near a target sequence nicked or
cleaved by a CRISPR enzyme as part of a CRISPR complex.
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Id. at 9. Examiner further finds that Zhang’s claims and teachings are
supported by and disclosed in the ’931 Provisional. Id. However, Examiner
acknowledges that Zhang does “not teach obtaining a whole plant from a
plant cell,” as recited in step (b) of claim 29. Id.
For step (b), Examiner relies on the teachings in Li. According to
Examiner, Li “teach[es] methods for obtaining a whole plant from a plant
cell comprising TALEN-generated mutations, wherein the plant comprises
the mutation introduced at the target site in the genome of at least one cell of
the plant.” Final Act. 10. Examiner concludes that it would have been
obvious to combine Zhang’s teachings regarding the use of an “engineered,
non-naturally occurring CRISPR-Cas vector system” and a repair template
for introducing alterations in a plant cell with Li’s teachings regarding
“regenerating the transformed cell into a whole plant” because it “would
have been a simple substitution of equivalent elements (plant cell
transformation and subsequent regeneration for whole plant transformation)
to obtain predictable results (a multicellular genetically modified plant).” Id.
We agree with, and adopt, Examiner’s findings and reasoning as well
as Examiner’s conclusion of obviousness. See Final Act. 8–10; Ans. 31–45;
FF8–FF16. We are not persuaded by Appellant’s arguments, as explained
below.
Appellant argues that “Zhang did not describe any method of editing a
nucleotide sequence in the genome of a plant cell with a Cas endonuclease
and a polynucleotide modification template” because, according to
Appellant, Zhang:
does not provide any method for the testing of CRISPR-Cas
compositions in plants, or for the modification of a plant cell
genome with a Cas endonuclease and guide RNA complex.
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Zhang does not disclose plant cells comprising a genome
modification. Zhang does not provide any evidence
demonstrating use of CRISPR-Cas compositions in plant cells
or that it would work in plant cells. Zhang does not provide any
data of any type of plant or plant cell comprising a Cas
endonuclease mediated double strand break, nor does Zhang
provide any disclosure of plants comprising modifications made
by a Cas endonuclease. Each example of Zhang is specific to
the usage of a Cas endonuclease in one specific type of human
kidney cell (HEK293) or one specific type of mouse
neuroblastoma cell (N2A). Zhang did not demonstrate any plant
vectors, plant cells, or plant cell lines, plant genomic targets, or
any indication that the alleged demonstration in animal cells
would work in plant cells, as evidenced by the lack of any
relevant data. Further Zhang does not mention any plant cell
that comprises an edited nucleotide sequence created from a
polynucleotide modification template and an RNA-guided Cas
endonuclease.
Appeal Br. 16–17.
We are not persuaded. Zhang teaches the introduction of a
CRISPR/Cas system, comprising a guide RNA and Cas endonuclease, into a
plant cell along with a nucleotide template to introduce alterations via
homologous repair at the site of the break induced by the CRISPR complex
(i.e., the combination of the guide RNA and Cas enzyme). FF8–FF11. In
addition, Zhang provides an example describing various methods for
introducing a CRISPR/Cas system into an alga and teaches that plants, such
as algae, may be transformed to express Cas9 “constitutively” so that
subsequent alterations may be made simply by introducing an appropriate
guide RNA and homologous recombination template. FF13–FF14.
Moreover, Zhang teaches that these techniques represent a new tool to
produce transgenic crops with improved traits and incorporates by reference
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various disclosures relating to techniques for producing transgenic plants.
FF11. As such, Zhang provides an express motivation to combine its
teachings with those in Li in order to obtain whole plants with the desired
phenotype from cells transformed using Zhang’s methods.
Appellant’s argument that Li cannot be combined with Zhang because
“Li refers to an entirely different class of proteins (TALENs) than the Cas9
endonucleases” is also unpersuasive. Appeal Br. 17. As Examiner explains,
the rejection is premised on Li’s teaching of techniques for regenerating a
whole plant expressing the desired phenotype from transformed plant cells.
See Ans. 37; FF16. We agree with Examiner that a skilled artisan would
reasonably expect that the same techniques could be successfully used to
obtain a whole plant from cells transformed using a different technique, i.e.,
Zhang’s method involving a Cas endonuclease, guide RNA and nucleotide
repair template. We also agree with Examiner that Appellant has
“provide[d] no explanation or evidence as to why the methods Li used to
regenerate a whole plant from a plant cell that was edited by a TALEN could
not be employed to regenerate a whole plant from a plant cell that was edited
by a Cas endonuclease,” as taught in Zhang.10 Id.

10 On the penultimate page of its Reply Brief, Appellant argues, citing its
own Specification, “the probability of cellular toxicity” as a factor rendering
“the production of a viable plant from an endonuclease-edited plant cell
uncertain.” Reply Br. 12–13. Because Appellant failed to present this
argument in its Appeal Brief, the argument is untimely and Examiner did not
have an opportunity to respond to it in the Answer. 37 C.F.R. § 41.41(b)(1)
& (2). Even so, we are not persuaded that the toxicity Appellant mentions
would have been significant enough to overcome Examiner’s prima facie
showing. In particular, Appellant has not offered sufficient evidence-backed
argument to show that an ordinary artisan would have been discouraged
from combining the art as proposed, or that such artisan would have lacked a
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Therefore, the record provides more than adequate support for
Examiner’s prima facie showing of obviousness. Appellant’s argument that
Zhang does not provide “evidence demonstrating” or “data” to prove that
CRISPR/Cas systems would work in plant cells and that whole plants could
subsequently be obtained from those cells (see Appeal Br. 16) is not
persuasive because “[t]he reasonable expectation of success requirement for
obviousness does not necessitate an absolute certainty for success.” Par, 773
F.3d at 1198.
Appellant argues that there is “no disclosure [in] any of Zhang’s
priority documents [that] mentions template-directed repair of a plant cell
genome that has been edited with an RNA-guided Cas endonuclease.”
Appeal Br. 18–19. We disagree. The ’931 Provisional discloses the same
Example 15 in Zhang. FF13–FF14. That example provides methods and
nucleotide sequences for incorporating a CRISPR/Cas systems into algae
cells, i.e., a type of plant cell. FF13. Moreover, Zhang Example 15
describes embodiments in which a Cas9 endonuclease is constitutively
expressed in the algal cell so that targeted editing can occur by the
introduction of a guide RNA and polynucleotide repair template for
homologous recombination, just as recited in claim 29 step (a). FF14.
Appellant asserts that by relying on Zhang’s teachings regarding the
“single-celled haploid flagellate alga” in Example 15, Examiner
“unreasonably expands the interpretation of the term ‘plant’ as used in the

reasonable expectation of success in arriving at the claimed method. This is
particularly so given that “absolute certainty” of success is not required for
obviousness. Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1198
(Fed. Cir. 2014).
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instant specification” because the Specification refers to monocot and dicot
plants. Reply Br. 9–10. That argument is unpersuasive for several reasons.
First, Appellant’s claims do not recite, and are not limited to, methods for
editing the genome of “monocot” and “dicot” plants. Indeed, the
Specification confirms that the claims are not so limited, stating that “[a]ny
plant can be used, including monocot and dicot plants.” Spec. 98 (emphasis
added); see also Spec. 85 (indicating that the term “plant” includes “various
forms of cells and culture” including “single cells”). Accordingly, given its
broadest reasonable interpretation, the term “plant cell” in claim 29
encompasses the alga of Zhang Example 15.
Second, even if Appellant’s claims did exclude the particular plant
cells in Zhang’s example, Appellant has failed to persuasively explain why
anything more than routine and obvious experimentation would have been
required to use the methods described in Example 15 to edit other types of
plant cells, particularly given Zhang’s other disclosures and incorporation of
references describing techniques for generating transgenic plants (see FF11).
Appellant’s unsupported assertions that Zhang’s teachings of “general plant
molecular biology methods and a prophetic example of microalgae” provide
“no guidance” (Reply Br. 10) do not overcome the legal presumption that
such teachings are enabling. See Antor, 689 F.3d at 1287.
We are likewise unpersuaded by Appellant’s argument that it is
unreasonable to “extrapolat[e] Zhang’s limited work in mammalian cells” to
plant cells. Appeal Br. 20. While it is true that the bulk of Zhang’s
examples describe the use of CRISPR/Cas systems in animal cells, Zhang
explains that its teachings regarding “animal cells may also apply, mutatis
mutandis, to plant cells unless otherwise apparent.” Zhang 35:65–67; ’931
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Provisional ¶ 148. Regardless, Appellant urges that a skilled artisan could
not apply these teachings to plant cells given “the many differences between
animal cells and plant cells.” Appeal Br. 20. We are not persuaded. The
differences Appellant identifies are not supported by, for example, expert
testimony, or other persuasive evidence. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (explaining that arguments and conclusions
unsupported by factual evidence carry no evidentiary weight). Thus, while it
is no doubt true that plant cells are different from animal cells, it is
incumbent on Appellant to provide evidence-backed argument to explain
how those differences relate to and allegedly overcome Examiner’s prima
facie showing, which relies, inter alia, on the presumptively enabled
disclosures of the cited prior art. Appellant has not done that here.
For these reasons, we determine that Examiner’s rejection is
supported by the preponderance of the evidence and therefore affirm the
rejection of claim 29 as obvious over Zhang and Li. We affirm the rejection
of claims 31 and 38 for the same reasons.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29, 31, 32,
38
102 Yang 29, 31, 32,
38

29, 31, 38 103 Zhang, Li 29, 31, 38
Overall
Outcome
29, 31, 32,
38

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED