10371612 (B.P.A.I. Jan. 18, 2012)

Ex Parte Carlson et al

Board of Patent Appeals and InterferencesJan 18, 2012

10371612 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte WILLIAM C. CARLSON, JEFFREY E. HARTLE, JAMES A. GROB, KATHERINE M. SALATAS, and MOLLIE K. HEILESEN __________ Appeal 2011-006613 Application 10/371,612 Technology Center 1600 __________ Before TONI R. SCHEINER, DONALD E. ADAMS, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a manufactured seed and a germination method. The Examiner has rejected the claims on appeal as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-006613 Application 10/371,612 2 STATEMENT OF THE CASE Claims 19-29 and 31-37 are on appeal (App. Br. 3). 1 We will focus on claims 19 and 34, the only independent claims on appeal, which read as follows: 19. A manufactured seed, comprising: (a) a structure containing a plant embryo; and (b) a nutritive medium comprising an urea concentration between about 5 mM to about 30 mM, an L-arginine concentration between about 0.01 mM to about 8 mM, and a thiamine-HCl concentration between about 0.001 mM to about 0.01 mM, wherein the nutritive medium is in functional contact with at least a root end of the plant embryo. 34. A method for germinating a plant embryo, comprising placing at least a root end of a plant embryo in functional contact with a nutritive medium comprising about 5 mM to about 30 mM urea, about 0.01 mM to about 8 mM L-arginine, and about 0.001 mM to about 0.01 mM thiamine- HCl in a manufactured seed. Claims 19-29 and 31-37 stand rejected under 35 U.S.C. § 103(a) as obvious over Gupta et al. (US 5,036,007, Jul. 30, 1991) and Durzan (US 5,840,567, Nov. 24, 1998) (Ans. 3). The Examiner relies on Gupta for teaching “a process for reproduction of coniferous plants by somatic embryogenesis” (id.). The Examiner finds: The process involves developing tissue culture induced coniferous somatic embryos into cotyledonary embryos. The cotyledonary embryo simply referred to as an embryo has a meristem or root. . . . The cotyledonary embryo is placed in a medium containing sucrose, casamino acids (non-protein amino acids), Thiamine-HCl, glycine, L-asparagine, L-arginine and activated charcoal . . . for further development. After the embryo develops into a somatic embryo[], the somatic embryo 1 Claim 30 is also pending but has been indicated to be allowable (App. Br. 3). Appeal 2011-006613 Application 10/371,612 3 can be converted into an artificial seed for field or nursery planting or the somatic embryo can be placed in germination medium for conversion into a plantlet prior to planting into the soil. (Id. at 3-4.) The Examiner relies on Durzan for teaching “a process involving manipulating gymnosperm (plant embryo) reproduction by artificially controlling environmental conditions” (id. at 4). The Examiner finds that the “conditions comprise specific media containing ingredients such as urea and amino acids” (id.). The Examiner also finds that a “pine proembryo can be used and developed into an artificial seed” (id.). The Examiner concludes that it would have been obvious “to modify the invention of Gupta et al. to include the urea taught by Durzan . . . because Durzan suggests the use of urea in the process of embryo development” (id.). The Examiner also concludes that the “optimal amounts of ingredients would be determined through routine experimentation in order to develop the best media for embryo development” (id.). In addition, the Examiner concludes that it “is obvious that the medium surrounding the embryo would be present inside the artificial seed made from the embryo” (id. at 6). Appellants argue that Gupta “fails to teach or suggest a nutritive media for a manufactured seed” (App. Br. 14). In particular, Appellants argue: [T]he process of Gupta et al. . . . is directed to somatic embryogenesis. . . . Gupta et al. makes only a passing reference as to how the somatic embryos can be used once removed from the culture medium. In this regard, Gupta et al., without disclosing specific techniques or features, simple [sic] states Appeal 2011-006613 Application 10/371,612 4 that the somatic embryos can be either converted into an artificial seed or placed “immediately” on a germination medium for conversion into plantlet. (Id.) ISSUE Has the Examiner set forth a prima facie case that it would have been obvious to include a nutritive medium comprising urea, L-arginine, and thiamine-HCl in functional contact with a plant embryo in a manufactured seed? FINDINGS OF FACT 1. Gupta discloses Cotyledonary Embryo Development Medium BMD, which contains Thiamine-HCl and L-Arginine (Gupta, col. 17, Tables 4-5). 2. Gupta also discloses: [Picea abies] proembryos were settled and washed twice with liquid Embryo Development Medium BMD of Table 5 to which 10 mg/L of abscisic acid had been added. The washed cells were then drained on polyester pads. Approximately 2 mL of the washed cells were transferred to solid Embryo Development Medium BMD on 50 mm petri dishes. (Id. at col. 18, ll. 5-11.) 3. In addition, Gupta discloses: Following embryo development the somatic embryos may be retained for some period of time in cold storage. They may be converted into artificial seeds for field or nursery planting. Alternatively, they may be placed immediately on a germination medium such as Medium BMG (Table 10) for conversion into plantlets prior to planting in soil. (Id. at col. 32, l. 64, to col. 33, ll. 2.) Appeal 2011-006613 Application 10/371,612 5 ANALYSIS We note initially that we are not persuaded by Appellants‟ argument that Gupta specifically teaches that the Embryo Development Medium BMD “is „washed away‟” (App. Br. 9). On the contrary, Gupta states that the “proembryos were settled and washed twice with liquid Embryo Development Medium BMD” and then “transferred to solid Embryo Development Medium BMD” (FF 2 (emphasis added)). However, we agree with Appellants that the Examiner has not set forth a prima facie case that it would have been obvious to include Gupta‟s Embryo Development Medium BMD in functional contact with a plant embryo in a manufactured seed. As noted by the Examiner, Gupta discloses that “[f]ollowing embryo development the somatic embryos . . . may be converted into artificial seeds” (FF 3). However, the Examiner has not shown that Gupta teaches or suggests that one of ordinary skill in the art would typically include embryo development medium in manufactured seeds. Nor has the Examiner adequately explained how Durzan overcomes this deficiency. CONCLUSION The Examiner has not set forth a prima facie case that it would have been obvious to include a nutritive medium comprising urea, L-arginine, and thiamine-HCl in functional contact with a plant embryo in a manufactured seed. We therefore reverse the obviousness rejection. REVERSED cdc