Ex Parte Colova

Patent Trial and Appeal Board

Apr 14, 2017

12461805 (P.T.A.B. Apr. 14, 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.
12/461,805 08/25/2009 Violeta Colova 2436.17.UTL 2097
21901 7590
Smith & Hopen (private clients)
Attn: General Patent Matters
180 Pine Avenue North
Oldsmar, EL 34677
EXAMINER
PARA, ANNETTE H
ART UNIT PAPER NUMBER
1661
NOTIFICATION DATE DELIVERY MODE
04/18/2017 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):
patents @ smithhopen .com
pair @ smithhopen.com
an ton.hopen @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIOLETA COLOVA
Appeal 2016-002431
Application 12/461,805
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to
synchronized strains of subepidermal cells of muscadina grape pericarp with
high flavonoid content. The Examiner rejected the claims as indefinite and
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“Exceptionally powerful anti-oxidants recently identified and isolated
in many fruits and vegetables promise to generate significant health benefits;
particularly in the area of disease prevention” (Spec. 12). “In particular,
muscadine grapes (Muscadinia rotundifolia) are known to contain elevated
1 Appellant identifies the Real Party in Interest as Violeta Colova (see App.
Br. 2).
Appeal 2016-002431
Application 12/461,805
levels of total phenolics compared to the European grapes” (id.). “[I]t has
been shown that the therapeutic effect of wine and grapes is dependant on
species, location, year (annual climate), processing etc. Therefore, reliance
on red wine or grapes as a source of these compounds does not lead to a
homogeneous or consistent supply of these compounds” (Spec. 14).
The Specification teaches “there is a need for natural (phyto)
compositions that are better defined, consistent and highly bioavailable”
(Spec. 1 6).
The Claims
Claims 4, 7, and 11 are on appeal.2 Claim 4 is representative and
reads as follows (underlining omitted):
4. Synchronized strains of subepidermal cells of muscadina
grape pericarp with high flavonoid content from sterilized
berries of harvested excised and sterilized berries comprising:
a) sterilized berries of harvested excised plants and
sterilized berries of said muscadina grape pericarp having
multiple insertions on each sterilized berry skin, said berries
being in a culture media containing vitamins, plant growth
regulators, a carbohydrate source and a solidifying agent, and
comprising high flavonoid content.
The issues
A. The Examiner rejected claims 4, 7, and 11 under 35 U.S.C. § 112,
second paragraph as indefinite (Ans. 2).
2 The current claim set reflects the claims submitted in the
Response filed July 16, 2014 because the Examiner denied entry to
the claims submitted After Final on Oct. 14, 2014 in the Advisory
Action mailed Nov. 7, 2014.
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Application 12/461,805
B. The Examiner rejected claims 4, 7, and 11 under 35 U.S.C. § 103(a)
as obvious over Cormier,3 Gray,4 and Pastrana-Bonilla5 (Ans. 3 4).
A. 35 U.S.C. § 112, second paragraph - indefiniteness
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the claims are indefinite?
Principles of Law
Miyazaki stated that “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008).
Analysis
We will address each indefmiteness issue separately.
First, the Examiner finds: “It is unclear if applicant is claiming
subepidermal cells or sterilized berries because cells cannot comprise berries
but berries can comprise subepidermal cells” (Ans. 2).
Appellant contends “claim 4 is not indefinite as the claim admits of
berries in the mixture” (App. Br. 5).
3 Cormier et al., Vitis vinifera L. (Grapevine): In Vitro Production of
Anthocyanins, 24 Medicinal and Aromatic Plants V Biotechnology in
Agriculture and Forestry 373-386 (1993) (“Cormier”).
4 Gray et al., In vitro micropropagation and plant establishment of
muscadine grape cultivars (Vitis rotundifolia), 27 Plant Cell, Tissue and
Organ Culture 7-14 (1991) (“Gray”).
5 Pastrana-Bonilla et al., Phenolic Content and Antioxidant Capacity of
Muscadine Grapes, 51 J. Agric. Food. Chem. 5497—5503 (2003)
(“Pastrana-Bonilla”).
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Application 12/461,805
We agree with the Examiner that a preamble drawn to “strains of
subepidermal cells” comprising “sterilized berries” as recited in claim 4
might be read in a variety of different ways. One approach, taken by
Appellant, is to read the claim as requiring the subepidermal cells but permit
the presence of berries due to the “comprising” language (see App. Br. 5).
Another approach reads the berries as the source from which the
synchronized strains of subepidermal cells are generated. The Examiner’s
third approach contends: “It is unclear how a species can comprise a genus.
Berries comprise ‘include’ ‘contain’ or ‘are characterized by’ cells but not
the opposite” (Ans. 5).
We agree with the Examiner that claim 4 is indefinite with regard to
what constitutes the essential component of the claim, a strain of
subepidermal cells or a culture of berries or some combination of these
components, and this indefiniteness can best be addressed by claim
amendments proposed by Appellant. As Zletz notes “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Second, the Examiner finds: “It is unclear if the berries or the
medium have high flavonoid content” (Ans. 2).
Appellant contends “the amount of flavonoid need not be quantified to
render this “comprising’ and therefore open claim definite” (App. Br. 5).
We agree with the Examiner that the final phrase in claim 4
“comprising high flavonoid content” may be linked to either “sterilized
berries” or to “culture media”. That is, claim 4 does not clearly identify
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Application 12/461,805
whether the high flavonoid content is found in the berries, in the culture
media, or in both. Zletz, 893 F.2d at 321.
Third, the Examiner finds: “‘High’ is a relative term with no
comparative basis” (Ans. 2).
We do not agree with this rejection because the Specification teaches
“muscadine grapes (Muscadinia rotundifolia) are known to contain elevated
levels of total phenolics compared to the European grapes” (Spec. 12),
thereby assigning a meaning to “high” which is elevated levels relative to
the amounts found in European grapes.
Fourth, the Examiner finds: “It is unclear what is/are inserted on each
sterilized berry skin” (Ans. 2).
Appellant contends “In this connection, the specification in paragraph
[0010] lines 7 and 8 [is] clear when it states ‘. . . multiple insertions with
sterile scalpel blade were made on the surface of each berry’” (App. Br. 6).
We find the Examiner has the better position. While the Specification
teaches one type of insertions with a blade, the claim does not limit the
insertions to scalpel blade cuts, but reasonably encompasses other meanings
of the term insertion such as the addition of components to the berries, with
no clear delineation of what can be so added to the berries.
Fifth, the Examiner finds: “Claim 11 should be a Markush grouping.
Two different plants are recited” (Ans. 2).
This is not at issue because Appellant “does not object to placing
claim 11 in Markush format and indeed so amended it; however, the
amendment was not entered in the reply to the Final Rejection” (App. Br. 5).
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
claims are indefinite.
B. 35 U.S.C. 103(a) over Cormier, Gray, andPastrana-Bonilla
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the prior art renders claim 4
obvious?
Findings of Fact
1. Cormier teaches:
Cultures of Vitis vinifera L. cv. Gamay Freaux were provided to
us. . . . The cell culture had been established in 1978 from pulp
fragments of young fruits on a culture medium comprised of B5
macroelements (Gamborg et al. 1968), Murashige and Skoog
(1962) microelements, and Morel (1970) vitamins and
supplemented with (per liter) 250 mg casein hydrolysate, 20 g
sucrose, 0.1 mg a-naphthaleneacetic acid, and 0.2 mg kinetin,
and solidified with 8 g agar. The cell cultures were kept at 25
°C under a 12 h/day photoperiod. The growth cycle of callus
lasted 4 weeks, and at the end of each cycle intensely
pigmented callus portions were selected and subcultured until a
uniformly pigmented material was obtained.
(Cormier 383).
2. Cormier teaches: “Our results demonstrate that special culture
protocol can be developed to favor the formation of more biochemically
evolved anthocyanins in plant cell culture. This is of particular interest in
the development of anthocyanin-based food colorants” (Cormier 379).
3. Gray teaches:
To define and optimize a method for obtaining explants,
apical meristems were obtained from shoots of ‘Dixie’ and
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Application 12/461,805
‘Fry’ at five distinct developmental stages. Developmental
stages were subjectively categorized based on length of shoots
(0.5, 1,2, 10 and 60 cm) that developed from previously
dormant vines after spring budbreak. Explants were harvested
when the most rapidly growing shoots for each cultivar reached
the desired lengths.
(Gray 8, col. 2).
4. Pastrana-Bonilla teaches “[mjuscadine grapes (Vitis
rorundifolia Michx.) are indigenous to the southeastern United States . . .
Antioxidant compounds include vitamins, phenols, carotenoids, and
flavonoids” (Pastrana-Bonilla 5497, col. 1).
5. Pastrana-Bonilla teaches “[fjruits and leaves from 10
muscadine grape cultivars, namely, five bronze (Carlos, Early Fry, Fry,
Summit, and Late Fry) and five purple (Paulk, Cowart, Supreme, Ison, and
Noble), grown in southern Georgia were provided . . . and used for this
study” (Pastrana-Bonilla 5498, col. 1).
6. Pastrana-Bonilla teaches “the nutraceutical industry may use
the muscadine seeds and skins as potential sources of phenolics” (Pastrana-
Bonilla 5500, col. 2 to 5501, col. 1).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art (Ans. 3^4; FF 1—5) and agree that the claimed composition
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Application 12/461,805
would have been obvious over the teachings of Cormier, Gray, and Pastrana-
Bonilla. We address Appellant’s arguments below.
Appellant contends “nowhere in Gray et al. is there any disclosure or
hint of producing applicant’s plant metabolites in vitro by active growing
and functioning cell lines” (App. Br. 12). Appellant also contends that
“Pastrana-Bonilla et al. has no relevance to the novel (isolation of
synchronized strains of subepidermal cells of muscadine grapes pericarp) as
disclosed by applicant” (App. Br. 13). Appellant further contends that
“there is no reason whatsoever to combine Cormier with Gray and Pastrana-
Bonilla” (Reply Br. 8).
The Examiner finds it obvious
to modify the method of Cormier et al. by using Muscadine
grape as taught by Gray et al. and use the skin, pulp and seed
of the cultivar Noble as taught by Pastrana-Bonilla et al. One
of ordinary skill in the art would have been motivated to do so
knowing that Noble cultivar contain a high level of flavonoids
as taught by Pastrana-Bonilla
(Ans. 9).
We find the Examiner has the better position. Cormier teaches
culturing berry fragments to form strains of subepidermal cells (FF 1) which
berry fragments were identified by the Examiner as part of the pericarp (see
Ans. 7), and Cormier grows the berries in culture media containing vitamins,
plant growth regulators, carbohydrate source, and a solidifying agent (FF 1).
Cormier differs from the claim solely in the species of berry used for
generation of the strains. The Examiner reasonably relied upon Pastrana-
Bonilla to teach that muscadine grapes, including the species Noble, were
known equivalent grapes to those used by Cormier and desirable because
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Application 12/461,805
“the nutraceutical industry may use the muscadine seeds and skins as
potential sources of phenolics” (FF 6). Thus, the Examiner provides a
specific reason to select muscadine grapes for use in the method of Cormier,
as a phenolic source.
Appellant contends that Cormier is directed to “calusogenesis
originated from the mesocarp of the berry” while Appellant “obtains the
calusogenesis originated from the subepidermal layers of the skin (pericarp)
of the berry” concluding that “applicant is using a different part of a
different berry for different ends” (App. Br. 10—11).
The Examiner responds “the Pericarp consists in Endocarp, Mesocarp,
and Exocarp so the mesocarp taught by Cormier et al. is a part of the
Pericarp” (Ans. 7).
Appellant does not rebut or otherwise address this finding by the
Examiner in the Reply Brief, and we find the Examiner’s position
persuasive.
Appellant contends “the Office’s motivation to combine the cited art
has been improperly gleaned from Applicant’s own specification and that
the combination of Cormier, Gray, and Pastrana-Bonilla is an exercise of
impermissible hindsight” (Reply Br. 11).
We are not persuaded. While we are fully aware that hindsight bias
may plague determinations of obviousness, Graham v. John Deere Co., 383
U.S. 1,36 (1966), we are also mindful that the Supreme Court has clearly
stated that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. In the instant case, Cormier teaches culture
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Application 12/461,805
of grape fragments (FF 1) to obtain compounds such as anthocyanins (FF 2)
and Pastrana-Bonilla teaches that muscadine grapes are a known type of
grape that produces phenolic compounds useful in the nutraceutical industry
(FF 4—6). We agree with the Examiner that selection of such a known
species for use in a known method is a predictable use of known options,
and Appellant provides no evidence of any secondary consideration
rendering such a combination unobvious.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
prior art renders claim 4 obvious.
SUMMARY
In summary, we affirm the rejection of claims 4, 7, and 11 under 35
U.S.C. § 112, second paragraph as indefinite.
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) as
obvious over Cormier, Gray, and Pastrana-Bonilla. Claims 7 and 11 fall
with claim 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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