Ex Parte Cerny et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10332494 (B.P.A.I. Sep. 7, 2010)

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.
10/332,494 01/08/2003 R. Eric Cerny MONS:144US 4763
73905 7590 09/07/2010
SONNENSCHEIN NATH & ROSENTHAL LLP
P.O. BOX 061080
SOUTH WACKER DRIVE STATION, WILLIS TOWER
CHICAGO, IL 60606
EXAMINER
KRUSE, DAVID H
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
09/07/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERIC R. CERNY, SOPHIA Y (YUN CHIA) CHEN,
JEANNE G. LAYTON, and BERNARD SAMMONS
__________

Appeal 2010-003847
Application 10/332,494
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of selecting a DNA construct that confers herbicide tolerance in crop plants.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003847
Application 10/332,494

2
The Examiner has rejected the claims as anticipated. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1 and 3-5 are on appeal. Claim 1 is the only independent
claim and reads as follows:
1. A method of selecting a DNA construct effective for conferring
herbicide tolerance in a crop plant from a plurality of DNA constructs, said
method comprising:
i) transforming a plant cell of a model plant with a DNA construct
comprising a first DNA molecule that functions as a promoter of RNA
transcription in a plant cell, operably linked to a second DNA molecule
encoding a herbicide tolerance protein, operably linked to a third
DNA molecule providing transcription termination in a plant cell;
ii) growing the transformed plant cell of model plant into a
transformed whole model plant;
iii) treating the transformed whole model plant prior to flower
formation with an effective dose of a herbicide for which the herbicide
tolerance gene is effective;
iv) scoring the transformed whole model plant for vegetative damage
and reproductive fertility;
v) performing steps i-iv with at least one other DNA construct
containing the same second DNA molecule encoding a herbicide tolerance
protein but different in at least one of the first or third DNA molecules; and
vi) selecting at least one of said DNA constructs that provides a high
level of herbicide tolerance to vegetative damage and a high level of
herbicide tolerance to reproductive damage to the transformed whole model
plant.

The claims stand rejected under 35 U.S.C. § 102(b) as follows:
• Claims 1, 4, and 5 as anticipated by Klee;2
• Claims 1 and 3-5 as anticipated by Barry.3

2 Klee et al., US 5,589,583, Dec. 31, 1996
3 Barry et al., US 5,633,435, May 27, 1997
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I.
Issue
The Examiner has rejected claims 1, 4, and 5 as anticipated by Klee.
The Examiner finds that Klee’s method meets the claim limitations because
Klee discloses “growing selfed progeny of the transformed plants and
treating the transformed plants with glyphosate and scoring said plants for
vegetative damage and reproductive fertility” (Answer 3), so Klee “treated
and scored progeny plants equivalent to the R0 generation plants” (id. at 4).
Appellants contend that Klee does not disclose treating and screening
of an R0 plant (i.e., a plant generated directly from a plant cell) as required
by the claims (Appeal Br. 3).
The issues with respect to this rejection are: Does claim 1 require
screening of R0 plants and, if so, does Klee disclose screening of an R0
plant?
Findings of Fact
1. Klee discloses that an A. thaliana promoter region was “tested for
its ability to confer improved glyphosate tolerance through enhanced
expression of tolerant EPSP synthase” (Klee, col. 27, ll. 38-40).
2. Klee discloses that “[t]he transgenic, differentiated plants obtained
containing the variant EPSP synthase gene … were analyzed for resistance
to glyphosate. The transgenic plants … were planted and the seed from the
R° plants harvested, threshed and dried before planting for a glyphosate
spray test.” (Id. at col. 28, ll. 33-43.)
Appeal 2010-003847
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Analysis
Claim 1 is directed to a method of selecting a DNA construct effective
for conferring herbicide tolerance in a crop plant by transforming a plant cell
with a DNA construct, growing the transformed plant cell into a plant, then
treating that plant with a herbicide and scoring for vegetative damage and
reproductive fertility.
Appellants argue that “Klee does not teach or suggest ‘treating the
transformed plant” (i.e., a plant of the R0 generation; emphasis added) with
glyphosate and scoring the plant as claimed. On the contrary, Klee only
describes treating and scoring a plant of a subsequent generation.”
(Appeal Br. 4).
We agree with Appellants that the Examiner has not adequately
explained how Klee discloses a method that includes transforming a plant
cell, growing the plant cell into a plant, and then treating the plant with
herbicide – i.e. treating the R0 generation of the transformed plant with an
herbicide – as required by the plain language of the claim. The Examiner’s
reasoning that Klee’s method treats plants equivalent to the R0 generation
(Answer 4) is unpersuasive, because the claim requires herbicide treatment
of the same plant that is generated from the transformed cell. The
Examiner’s reliance on the Specification’s definition of the terms
“transgenic” or “transformed” to also include progeny of the R0 generation
(Answer 7, citing Spec. 9: 25-26) is not sufficient to support his
interpretation of the claims because the claim refers to “the transformed …
plant,” which in the context of the claim as a whole refers to the specific
plant grown from the transformed plant cell made in step (i).
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Conclusion of Law
Claims 1, 4, and 5 require screening of R0 plants, which Klee does not
disclose.
II.
Issue
The Examiner has rejected claims 1 and 3-5 under 35 U.S.C. § 102(b)
as anticipated by Barry. The Examiner finds that Barry discloses
a method of selecting a DNA construct effective for conferring
herbicide tolerance in a crop plant from a plurality of DNA
constructs comprising transforming B. napus with a DNA
construct comprising either an enhanced CaMV 35S promoter
or a FMV35S promoter operably linked to … the
Agrobacterium CP4 EPSP synthase that is tolerant to the
herbicide glyphosate and a NOS 3’ terminator.
(Answer 4.) The Examiner also finds that Barry discloses “growing the
transformed plant and treating the transformed plant with glyphosate and
scoring said plant for vegetative damage and reproductive fertility” (id.) and
“selecting the FMV35S (in the pMON17116 plasmid) promoter that
provides a high level of herbicide tolerance to vegetative damage and a high
level of herbicide tolerance to reproductive damage to the transformed
whole plant” (id. at 5).
Appellants contend that Barry does not disclose screening of R0
plants, containing DNA constructs differing with respect to the transcription
promoter or the transcription terminator, for vegetative damage and
reproductive fertility, as required by the claims (Appeal Br. 10-13).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s finding that Barry discloses the method of
claim 1?
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Additional Findings of Fact
3. Barry discloses “[g]enes encoding Class II EPSPS enzymes …
useful in producing transformed bacteria and plants which are tolerant to
glyphosate herbicide” (Barry, abstract).
4. Barry discloses a comparison of the amount of CP4 EPSPS protein
expressed in plants transformed with the vectors pMON17110,
pMON17116, and pMON17119 (id. at col. 35, ll. 10-22 (Table VI)).
5. Barry discloses an evaluation of glyphosate treatment on
vegetative and fertility characteristics in plants transformed with
pMON17110 and pMON17119 (id. at col. 35, ll. 30-48 (Table VII)).
6. The Examiner accepts Appellants’ position that pMON17110 and
pMON17119 differ only in their antibiotic resistance genes (Answer 10).
7. Barry discloses that “[c]anola plants were transformed with the
pMON17110, pMON17116, and pMON17131 vectors and a number of plant
lines of the transformed canola were obtained which exhibit glyphosate
tolerance” (id. at col. 35, ll. 50-53).
8. Barry discloses that “seed harvested from R0 plants is R1 seed
which gives rise to R1 plants. To evaluate the glyphosate tolerance of an R0
plant, its progeny are evaluated” (id. at col. 36, ll. 51-53).
9. Tables IXA and IXB of Barry disclose the analysis of glyphosate
tolerance in canola R1 transformants (id. at col. 38, ll. 31-66).
Principles of Law
An anticipatory reference under 35 U.S.C. § 102 “must clearly and
unequivocally disclose the claimed compound or direct those skilled in the
art to the compound without any need for picking, choosing, and combining
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various disclosures not directly related to each other by the teachings of the
cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972)
Analysis
Claim 1 requires transforming plant cells, growing whole plants from
the cells, treating the plants with a herbicide, and scoring for vegetative
damage and reproductive fertility. Part (v) of claim 1 requires that these
steps be carried out with at least two DNA constructs, which include the
same herbicide tolerance gene but differ in either their promoters or
terminators.
Appellants argue that although Barry discloses herbicide testing of R0
plants having different constructs in Table VII, the different constructs
disclosed (pMON17110 and pMON17119) “comprise the same herbicide
tolerance gene expression cassette (first molecule: enhanced CaMV35S
promoter; second molecule: CTP2-CP4 EPSPS; third molecule: NOS
terminator)” (Appeal Br. 10). Appellants argue that the pMON17110 and
pMON17119 include different antibiotic resistance genes but do not include
different promoters or terminators, as required by claim 1 (id. at 10-11).
The Examiner finds that Barry discloses selecting transformed plants
for tolerance to the herbicide glyphosate in Table VII, Example 2A, and
Tables IXA and IXB. In response to Appellants’ argument, the Examiner
found that, while “Barry only disclosed results of plants transformed with
the pMON17110 or pMON17119 at Table VII but disclosed that the
pMON17116 had also been introduced into transformed tobacco plants at
Table VI” (Answer 10-11).
We agree with Appellants that the Examiner has not adequately
explained how Barry discloses herbicide testing of R0 plants having different
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constructs encoding the herbicide tolerance gene as specified in claim 1.
None of the passages of Barry that the Examiner points to discloses the
claimed method. Tables VI and VIII show that various constructs were
assessed by evaluation of CP4 EPSPS expression, not based on vegetative
damage and reproductive fertility. Table VII discloses the testing required
by the claims but the Examiner has conceded (FF 6) that the constructs
tested in that experiment differed only in their selectable markers, not in the
promoter or terminator of the herbicide tolerance gene. Barry’s Example 2A
and Tables IXA and IXB disclose testing of R1 transformants, not R0 plants
as required by the claims.
The Examiner has not pointed to anywhere in Barry that discloses
screening plants transformed with vectors containing the same herbicide
tolerance gene but different promoters or terminators for glyphosate
tolerance in the R0 generation. The Examiner's finding that Barry discloses
the limitations of claim 1 relies on the type of picking, choosing, and
combining various disclosures that is foreclosed by Arkley. Thus, the
Examiner has not adequately explained how Barry discloses an embodiment
meeting all the limitations of claim 1.
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
Barry discloses the method of claim 1.
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Application 10/332,494

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SUMMARY
We reverse the rejection of claims 1, 4, and 5 under 35 U.S.C.
§ 102(b) based on Klee and the rejection of claims 1 and 3-5 under 35
U.S.C. § 102(b) based on Barry.

REVERSED

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SONNENSCHEIN NATH & ROSENTHAL LLP
P.O. BOX 061080
SOUTH WACKER DRIVE STATION, WILLIS TOWER
CHICAGO IL 60606