Ex Parte Adams et al

Patent Trial and Appeal Board

Feb 1, 2019

13328222 (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/328,222 12/16/2011 Whitney R. Adams JR.
73905 7590 02/05/2019
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
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.
MONS:379US 1093
EXAMINER
HWU,JUNE
ART UNIT PAPER NUMBER
1661
NOTIFICATION DATE DELIVERY MODE
02/05/2019 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):
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WHITNEY R. ADAMS, BRIAN J. MARTINELL,
JYOTI R. ROUT, and EDWARD J. WILLIAMS
Appeal 2017-011383
Application 13/328,222 1
Technology Center 1600
Before ULRIKE W. JENKS, RACHEL H. TOWNSEND, and
DAVID COTTA, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for improving competency of plant embryo cells for bacterial-mediated
transformation, which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
"Plant tissues such as embryos can be obtained in large quantities by
mechanical means .... " (Spec. 2.) "When stored for later use, [embryo]
1 Appellants identify the real party in interest as Monsanto Co., the parent
company of Monsanto Tech. LLC. (Appeal Br. 1.)
Appeal 2017-011383
Application 13/328,222
competency for transformation may be reduced." (Id.) "The present
invention provides methods for improving competency of plant cells for
bacterial-mediated transformation . . . . " (Id.)
Claims 24, 25, 27, and 29--33 are on appeal. Claim 24 is
representative and reads as follows:
24. A method for improving competency of plant embryo
cells for bacterial-mediated transformation comprising:
(a) contacting a mature plant embryo explant with an
effective amount of a polyethylene glycol (PEG) containing
composition having from about 10% to about 50% by volume
of polyethylene glycol; and
(b) transforming at least one cell of the mature plant
embryo ex plant with a heterologous DNA sequence via
bacterial-mediated transformation,
wherein the transforming step (b) is performed after the
contacting the step (a); wherein the PEG containing
composition is removed prior to the transforming step (b );
wherein the mature plant embryo explant is excised from a dry
seed; and wherein the improved competency is measured as an
increase in transformation frequency.
(Appeal Br. 9.)
The following ground of rejection by the Examiner is before us on
review:
Claims 24, 25, 27, and 29-33 2 under 35 U.S.C. § 103 as unpatentable
over Calabotta3 and Hongbo. 4
2 The Examiner mistakenly includes claim 26 in the Final Rejection.
However, as Appellants note, claim 26 was cancelled prior to the issuance of
that rejection. (Appeal Br. 1.)
3 Calabotta et al., US 8,362,317 B2, issued Jan. 29, 2013.
4 Hongbo et al., Impacts of PEG-6000 pretreatment for barley (Hordeum
vulgare L.) seeds on the effect of their mature embryo in vitro culture and
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Application 13/328,222
DISCUSSION
The Examiner finds that Calabotta teaches pre-culturing plant embryo
explant prior to bacterial-mediated transformation. (Final Action 3.) The
Examiner finds that the pre-culturing includes hydration ( also known as
imbibition), for example, in soy inoculum (INO) or bean germination
medium (BGM), and then the hydration liquid is removed and the explants
are rinsed with sterile distilled water. (Id.)
The Examiner notes that Calabotta further teaches that the explant
may be dried or not prior to bacterial-mediated transformation, which
transformation takes place when the explant is placed in PLANTCON. (Id.
at 3--4.) The Examiner finds that Calabotta teaches that the plant seed from
which the explant is obtained may be soybean, com, or cotton seed, and that
the explant may be of "'various ages' which would include mature plant
embryo explant." (Id. at 3.) The Examiner finds that Calabotta teaches that
pre-culturing the explant "improve[ s] [the] transformation competency,
transformation uniformity ([Calabotta] col. 31, lines 65---66), and possibly
transformation frequency ([id. at] col. 32, lines 1-3)." (Id. at 4.) The
Examiner recognizes that the pretreatment does not involve contacting the
explant with PEG.
The Examiner finds that Hongbo teaches pretreating mature barley
embryos with PEG 6000 and then soaking the embryo in deionized water for
21 hours. (Id.) The Examiner notes that Hongbo teaches this process
resulted in high percentage of callus induction and regenerated plantlets.
primary investigation on its physiological mechanism, 41 Colloids and
Surfaces B: Biointerfaces, 73-77 (2005).
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Application 13/328,222
(Id.) The Examiner also finds that Hongbo teaches the PEG pretreatment
can improve tissue culture results by regulating mineral element and
hormone content and can improve embryo quality by regulating imbibing
course. (Id. at 5.)
The Examiner concludes that it would have been obvious "to modify
the method of Calabotta et al to substitute the hydration medium with PEG
as taught by Hongbo et al because Hongbo et al taught that PEG 6000
pretreatment enhanced mature embryos (p. 75)." (Id.) According to the
Examiner, the substitution would have been obvious particularly in light of
the fact that Calabotta teaches that numerous hydration methods may be
used prior to transformation. (Id.)
We disagree with the Examiner's conclusion that Hongbo 's teaching
i.e., pretreating seeds with PEG followed by imbibition of those seeds,
would have rendered it obvious to substitute PEG for the INO or BGM
imbibition medium in which the explant of Calabotta is pretreated prior to
transformation of the explant. 5 As Appellants note (Appeal Br. 2-3; Reply
Br. 4 ), Hongbo describes effects of PEG on certain growth parameters of
seeds after treatment with PEG and imbibition medium. (Hongbo 74 § "2.
Materials and Methods" and§ "3. Results".) In particular Hongbo notes that
"10% PEG-6000 pretreatment could effectively retard the leakage of solutes
and macromolecules from the seeds." (Id.§ 3.1.) Hongbo explains that
[ t ]hese phenomena suggested that proper PEG-6000
pretreatment could slow down the soluble leakage, which was
5 We note that the Examiner does not assert that adding PEG prior to
imbibition with a growth medium of the dried explant of Calabotta would
have been obvious.
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Application 13/328,222
beneficial to subsequent morphogenesis including seed
germination and in vitro culture response of the mature seeds.
(Id.) Hongbo determined that PEG-6000 pretreatment with imbibition of
seed resulted in better effect of root emergence, bud emergence, better callus
induction, and regenerated plantlet, whether the pretreated seed was cultured
or mature embryo from pretreated seed was cultured. (Id. at 75 § 3.4.)
However, the Examiner does not identify, and we do not find, anything in
Hongbo to suggest using PEG as an imbibition medium by itself, much less
what benefits could be expected to an explant so treated.
Moreover, the Examiner has not explained why the teaching in
Hongbo that PEG-6000 pretreatment followed by treating seeds with
imbibition medium results in better root and bud emergence, callus
induction, and regenerated plantlet when an embryo explant from that seed
is cultured would have caused the ordinary artisan to expect that
pretreatment of an embryo explant itself with PEG as the imbibition liquid
in Calabotta would have an expectation of any benefit to that embryo
explant or for subsequent transformation of that explant. Nor has the
Examiner explained why the teaching in Hongbo that PEG-6000
pretreatment followed by treating seeds with imbibition medium lowers
solute leakage from the seed would have caused the ordinary artisan to
expect that pretreatment of an embryo explant itself with only PEG as the
imbibition liquid in Calabotta would have an expectation of any benefit to
that embryo explant or for subsequent transformation of that explant.
As the Examiner notes, Calabotta describes a method in which explant
from soy seed is hydrated in a carbohydrate based media prior to
transformation. (Final Action 3; Calabotta 15-16 (Example 4 ). ) Example
12 of Calabotta demonstrates a process involving pre-culturing the explants
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Application 13/328,222
in carbohydrate based medium, including INO, BGM (both of which also
contain a number of mineral salts), or soy organogenic (which includes a
number of mineral salts and B vitamins). (Calabotta 30: 1-36 (Example 12).)
The process stimulates "the metabolic activity" of the dry excised explants
prior to bacterial transformation to "increas[ e] their transformation
competency." (Id.) Thus, we find that Calabotta teaches that a carbohydrate
based medium with salts is important for the pre-treatment of the explant in
order to achieve the increased transformation competency of the explant.
Hongbo' s teaching that PEG-6000 pretreatment of a seed could
effectively retard the leakage of solutes and macromolecules from the seed
when undergoing imbibition (Hongbo 7 4 (3 .1: "Fig. 1 showed that 10%
PEG-6000 pretreatment could effectively retard the leakage of solutes and
macromolecules from the seeds by comparing the control ones"; 3.2: "There
was different transfer of mineral elements with various amounts between
embryos and endosperms of the seeds.")), or that seed explant from seed that
was pretreated with PEG and carbohydrate based imbibition liquid had
improved root and bud emergence and better callus induction and
regenerated plantlet as compared to explant from seed that was not so
pretreated with PEG before imbibition (Hongbo 74 (3.4: "From Table 2, the
result showed that: [] PEG-6000 pretreatment could obviously raise in vitro
culture effect whether seeds or mature embryos were used as explants";
Hongbo 7 6 ("this investigation combines PEG-6000 pretreatment,
corresponding index in physiology with in vitro culture effect and embryos
and endosperms in the pretreated seeds were detected individually
(emphasis added)), does not support the Examiner's simple substitution
conclusion (Ans. 6) of PEG for the carbohydrate medium in the Calabotta
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Application 13/328,222
explant demonstration discussed above. We do not find any evidence of
record relied on by the Examiner in Hongbo or Calabotta that would suggest
a reasonable expectation of success of stimulating metabolic activity of
embryo explant so as to increase transformation competency by pretreatment
with PEG of the explant without the presence of a carbohydrate and mineral
salt medium.
We disagree with the Examiner (Ans. 7) that Hongbo provides a
suggestion that "pretreatment with PEG has some importance in
biotechnology breeding or transformation." (Emphasis added.) Hongbo at
page 7 6, which the Examiner relies on, while mentioning that PEG is used in
protoplast fusion, does not suggest that PEG would have a benefit by itself
in stimulating metabolic activity of embryo explant or that it would
somehow otherwise improve competency of embryo explant by itself.
Hongbo merely summarizes that its research shows that PEG pretreatment of
seeds promotes in vitro culture of an explant when provided in conjunction
with imbibition medium because it controls leakage of minerals from the
seed and thus provides a benefit to an explant when such a seed is
subsequently cultured. We conclude that the Examiner is mixing apples and
oranges in the conclusion that Hongbo 's improved embryo quality from
pretreatment of seed with PEG prior to imbibition of the seed is relatable to
Calabotta's improved metabolic activity in embryo explant due to pre-
culturing dry embryo explant with a carbohydrate and mineral salt based
medium.
For the reasons discussed above, we determine that the Examiner has
not set forth a factual basis sufficient to support the specified rejection for
obviousness. Accordingly, we reverse the Examiner's rejection of claims
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Application 13/328,222
24, 25, 27, and 29-33 under 35 U.S.C. § 103 as unpatentable over Calabotta
and Hongbo.
SUMMARY
We reverse the rejection of claims 24, 25, 27, and 29-33 under
35 U.S.C. § 103 as unpatentable over Calabotta and Hongbo.
REVERSED
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