Ex Parte Arnold et al

Patent Trial and Appeal Board

Sep 15, 2017

14473114 (P.T.A.B. Sep. 15, 2017)

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.
14/473,114 08/29/2014 RANDAL ARNOLD 6495-US-NP 1266
27310 7590 09/19/2017
PIONEER HI-BRED INTERNATIONAL, INC.
7250 N.W. 62ND AVENUE
P.O. BOX 552
JOHNSTON, IA 50131-0552
EXAMINER
HANEY, AMANDA MARIE
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
sue.smith@pioneer.com
PTO-Legal.PRC@dupont.com
IPS upport @ pioneer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDAL ARNOLD, MATTHEW PAUL COPE,
JUSTIN SCHARES, and YUE YUN
Appeal 2017-003 6761
Application 14/473,114
Technology Center 1600
Before RICHARD M. LEBOVITZ, TIMOTHY G. MAJORS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves a claim to methods of analyzing the DNA of
plant embryos. The Examiner rejected the claim under 35 U.S.C. § 103 as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). The § 103 rejections
are affirmed.
We affirm.
1 The corrected Appeal Brief (“Br.”) (Aug. 26, 2016) page 2 identifies
Pioneer Hi-Bred International (Des Moines, IA), as the real-party-in-interest.
The pages of the corrected Appeal Brief were unnumbered; we added
consecutive numbering beginning with “1” on the first page.
Appeal 2017-003676
Application 14/473,114
STATEMENT OF THE CASE
Claim 1 is the only claim on appeal. All other claims are now
canceled. Br. 3. The claims stand rejected by the Examiner as follows:2
1. Claim 1 under 35 U.S.C. § 103 as obvious in view of US Pat. Appl.
Pub. 2015/0191771 Al, pub. July 9, 2015 (“Bullock”), WO 2013/182646
Al, pub. Dec. 12, 2013 (“Van Dun”), Shibin Gao et al., Development of a
seed DNA-based genotyping system for marker-assisted selection in maize,
Mol. Breeding 22:477-94 (2008) (“Gao”), Dneasy® Plant Handbook
(2012) (“DNeasy”), N. Papazova et al., DNA extractability from the maize
embryo and endosperm — relevance to GMO assessment in seed samples, 33
Seed Sci. & Technol. 533—42 (2005) (“Papazova”), and US Pat. Appl. Pub.
2005/0202573 Al, pub. Sept. 15, 2005 (“Koyata”).
2. Claim 1 under 35 U.S.C. § 103 as obvious in view of Bullock, Van
Dun, Gao, Dneasy, S. Alasaad et al., HotSHOTPlus ThermalSHOCK, a new
and efficient technique for preparation of PCR-quality mite genomic DNA,
103 Parasitol. Res. 1455—57 (2008) (“Alasaad), Koyata, and US Pat. Appl.
Pub. 2008/0131924 Al, pub. June. 5, 2008 (“Cope”).
Claim 1 is reproduced below:
1. A method of analyzing one or more plant embryos
comprising:
(a) collecting shed cellular material from one or more
embryos by agitating the one or more embryos in a non­
destructive medium consisting essentially of water;
(b) obtaining DNA from the shed cellular material
wherein said DNA is obtained by:
(i) exposing the shed cellular material to cold and then
heat followed by agitation;
2 See Br. 3^1.
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Application 14/473,114
(ii) heating of the shed cellular material followed by
agitation; or
(iii) extracting DNA by adding magnetic particles to the
shed cellular material;
(c) performing a molecular analysis of the DNA obtained
in step (b); and
(d) germinating at least one of said one or more embryos.
REJECTION
The principle issue in this rejection is the obviousness of the claimed
steps of “(a) collecting shed cellular material from one or more embryos by
agitating the one or more embryos in a non-destructive medium consisting
essentially of water” and subsequently of (b) obtaining DNA from the
cellular material. Rejections 1 and 2 apply the same prior art publications to
meet these steps. Appellants addressed Rejections 1 and 2 together. Br. 4.
Consequently, we do so as well.
The Examiner found that Bullock teaches collecting cellular material
from plant embryos by agitating the embryos in a non-destructive media,
such as NaOH. Final Act. 3. While Bullock does not teach “a non­
destructive medium consisting essentially of water” as recited in claim 1, the
Examiner found that Van Dun describes a non-destructive method of
dislodging DNA present at the surface of a seed coat by contacting the seed
with an aqueous solution, such as water or a buffer. Id. at 5. The Examiner
determined it would have been obvious to one of ordinary skill in the art at
the time the invention to have modified Bullock’s method by collecting the
cellular material from embryos in “a non-destructive medium consisting
essentially of water as suggested by Van Dun” because “Bullock teaches any
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Application 14/473,114
other chemical which disrupts cells but does not harm the viability of the
embryo could be used [to collect shed cellular material].” Id. at 5—6.
The Examiner further found that the steps of obtaining the DNA with
application of heat and cold as in steps (b)(i) and (ii) of claim 1 is described
by Dneasy. Id. at 7. The Examiner determined that skilled worker would
have had reason to use Dneasy to obtain DNA because, “as evidenced by
Papazova[,] the Dneasy Plant Mini Kit can be used to extract total DNA
from the embryo and endosperm of maize (see abstract).” Id. at 8.
The Examiner also found that obtaining DNA from plant seeds as in
step (b) of claim 1 is described in Alasaad. Id. at 9.
Claim Interpretation
Appellants contend that the Examiner misconstrued the scope of claim 1.
The Examiner acknowledges that the prior art cited uses a
combination of chemical and physical means to extract the
DNA from the shed cells, but states, however, that the “claims
do not specifically exclude the use of chemical means to extract
the DNA from the shed cells”, pointing specifically to the
“comprising” language. The Examiner misconstrues the claim
by reading it too broadly.
Br. 5.
Claim 1 has a first step (a) of “collecting shed cellular material from
one or more embryos by agitating the one or more embryos in a non­
destructive medium consisting essentially of water.'1'’ (Emphasis added.) It is
apparent from the plain language of the claim, and consistent with the
disclosure in the Specification (15:29-31 (“[t]he washed embryo may then
be immersed in fresh water or other aqueous solution and agitated to remove
a small number of embryo cells from the embryo into the fresh water or
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Application 14/473,114
other aqueous solution.”)) that the agitation dislodges the cellular material
from the embryo into the water.
The non-destructive medium is “consisting essentially of’ water. The
term “consisting essentially of’ is “a transition phrase commonly used to
signal a partially open claim in a patent. Typically, ‘consisting essentially
of’ precedes a list of ingredients in a composition claim or a series of steps
in a process claim. By using the term ‘consisting essentially of,’ the drafter
signals that the invention necessarily includes the listed ingredients and is
open to unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus, v. Guardian Indus. Corp., 156
F.3d 1351, 1354 (Fed. Cir. 1998). Thus, we interpret “anon-destructive
medium consisting essentially of water” to exclude any chemical that would
free cellular material from the embryo because the presence of the chemical
would “materially affect the basic and novel properties” of the water by
transforming the water from a passive collection medium into a medium
that, itself, is responsible for dislodging the cellular material from the
embryo.
The subsequent step (b) of the claim of “obtaining DNA from the shed
cellular material wherein said DNA is obtained by” is open-ended and does
not exclude the further addition of chemicals or other ingredients to
accomplish the DNA extraction. Thus, we agree with the Examiner that
once the shed cellular material has been collected into the non-destructive
medium, chemicals may be added to the medium to accomplish DNA
extraction.
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Water
Appellants contend that the cited publications:
fail[] to teach or suggest either the particular step of collecting
shed cells in water alone, or the combination of that step and
physical DNA extraction, and the record lacks any evidence at
all that these steps would result in a sufficient quantity of DNA
to conduct the step of “performing a molecular analysis of the
DNA.”
Br. 5.
Appellants have not provided sufficient evidence that the Examiner
erred.
Bullock is directed to a “non-destructive, viability retaining
method of sampling a plant embryo.” Bullock 117. While Bullock’s
Example 3 utilizes the chemical NaOH to obtain DNA from an embryo,
Bullock’s disclosure is not so limited, e.g.:
In one embodiment of the method according to the
invention, the sample is removed by cell disruption using a
liquid solution to bathe the embryo for a sustained period of
time. In one embodiment, the liquid solution is NaOH[.]
In one embodiment of the method according to the
invention, the sample is removed by cell disruption using gentle
sonication and optionally, cell wall degrading enzymes.
Bullock, 1129, 30.
Thus, in addition to the specific non-destructive, viability retaining
method of sampling a plant embryo using NaOH for cell disruption, Bullock
more broadly describes using a “liquid solution,” as well as disclosing that
cell disruption can be achieved by a physical step of “gentle sonication.”
Thus, Bullock does not require a chemical for disrupting the plant embryo to
collect cellular material from it.
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The disclosure in Bullock reproduced in paragraphs 29 and 30 above
would have given one of ordinary skill in the art reasonable scientific basis
to believe that sufficient DNA for genetic analysis could be obtained by
other physical means for dislodging cellular material without being
destructive to the embryo and without using a chemical.
Van Dun also teaches that physical means can be used to collect DNA
from plant seed to analyze that DNA and “without damaging the seed or
impairing its ability to germinate.” Van Dun 2:19—21. In particular Van
Dun teaches:
The contacting between seed and fluid is done by immersing
the seed in the fluid, or by floating the seed on the fluid.
Optionally, the seed within the fluid can be gently agitated to
facilitate the dislodging of the DNA into the fluid. . . . The seed
may also be rinsed with the fluid. The fluid with which the seed
is contacted or rinsed is an aqueous solution, such as water or a
buffer.
Id. at 12:1—8.
Because it was known that DNA can be dislodged from a seed coat by
agitation, there was sound scientific basis from the prior art at the time of the
invention to conclude that DNA could be dislodged from an embryo in
which the seed coat has been removed by dissection (Bullock 199),
exposing the even more delicate cells to the physical means of freeing
cellular material. Thus, we find from the foregoing disclosures of Bullock
and Van Dunn that it would have been obvious to one of ordinary skill in the
art to use an agitation step instead of gentle sonication in the Bullock method
as a physical means for obtaining sufficient DNA for genetic analysis from a
plant embryo with a reasonable expectation of success.
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Appellants contend that the Examiner did not provide evidence that “a
sufficient quantity of DNA for performing molecular analysis for a given
embryo” could be obtained “in water alone.” Br. 5. We do not agree. As
discussed above, each of the Bullock and Van Dun publications cited by the
Examiner contain evidence that physical steps dislodge cellular material,
including DNA, which is subsequently used for genetic analysis. Appellants
simply make the contention that the evidence was not adequate, but did not
address the specific disclosures in these publications.
Summary
For the foregoing reasons, the obviousness rejections 1 and 2 of claim
1 are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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