Ex Parte Eubanks

Board of Patent Appeals and Interferences

Mar 9, 2012

10614255 (B.P.A.I. Mar. 9, 2012)

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.
10/614,255 07/03/2003 Mary Wilkes Eubanks 6006
7590 03/12/2012
Mary Wilkes Eubanks
3214 Harris Park Avenue
Austin, TX 78705
EXAMINER
ROBINSON, KEITH O NEAL
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
03/12/2012 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 MARY WILKES EUBANKS
__________

Appeal 2011-008371
Application 10/614,255
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a maize plant. The Patent Examiner rejected the claims
for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention relates to plant breeding. (Spec. 1.) “More
particularly, it relates to a method for identifying allelic fragments of DNA
that correspond to genomic introgression segments of Tripsacum origin,
and/or recombinant segments of Tripsacum-teosinte chimeric genetic origin,
which are stably inherited in wide cross hybrids between Tripsacum and
teosinte (i.e. wild Zea sp.) and the progeny from crosses between maize and
Tripsacum-teosinte recombinants.” (Id.) According to the Specification,
“[t]he unexpected fertility of Tripsacum-teosinte hybrids, and their cross-
fertility with maize, are of great value because they provide opportunity for
directly crossing the chimeric recombinants with maize.” (Id. at 7.)
“Tripsacum-teosinte hybrids provide a genetic bridge for importing new
Tripsacum genes not found in maize or the wild Zeas, as well as novel
genetic material formed in the genomic reorganization between the two
species that gives rise to viable, fertile plants that can be crossed with maize
using traditional plant breeding techniques.” (Id.)
Claims 44-70 are on appeal. Claim 44 is representative and reads1 as
follows:
44. A maize plant comprising one or more restriction fragments selected
from the group consisting of: [list of fragments];
wherein said maize plant is produced by:

1 The claims on appeal may be found in the Appeal Brief filed April 15,
2010, Appendix at pages 31-49, in response to a requirement for correction
of the Claims Appendix in the Brief filed Jan. 21, 2009. See “Order
Returning Undocketed Appeal To Examiner,” dated Oct. 27, 2009.
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(a) cross pollinating a maize female plant with either a (Tripsacum X
teosinte) male plant or a (teosinte X Tripsacum) male plant to produce a
trigeneric hybrid maize plant;

(b) backcrossing said trigeneric hybrid plant produced in step (a) at
least once to a maize plant.

The Examiner rejected the claims as follows:
 claims 44-70 under 35 U.S.C. § 103(a) as unpatentable over Eubanks
19942 and Eubanks 1997;3 and
 claims 44-70 under 35 U.S.C. § 103(a) as unpatentable over Eubanks
19924 and Eubanks 1997.

OBVIOUSNESS
The Issues
Appellant contends that the Examiner disregarded the rule against
hindsight and gave no weight to the fact that the Applicant is the author of
the references cited in the obviousness rejections. (App. Br. 17. 5)
According to Appellant, the references are directed only to trigeneric plants
or hybrids known as Tripsacorn or Sun Dance, and “the Examiner has yet to
address how the claimed plants and their restriction fragments could have
reasonably been predicted.” (Id. at 18.) Appellant disputes the Examiner’s
reading of the 1994 ‘547 patent. (Id. at 18-19.) According to Appellant,
there were many examples of teaching away, and the artisan could not have

2 Mary W. Eubanks, US 5,330,547, issued July 19, 1994.
3 M. W. Eubanks, Molecular analysis of crosses between Tripsacum
dactyloides and Zea diploperennis (Poaceae), 94 THEOR. APPL. GENET. 707-
712 (1997).
4 Mary W. Eubanks, US Plant 7,977, issued Sept. 15, 1992.
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predicted the restriction fragments found in the claimed plants. (Id. at 21-
22.) Appellant presents similar arguments against the rejection based on the
1992 ‘977 patent. (Id. at 23-26.)

Findings of Fact
1. The Eubanks 1994 patent is entitled “Methods and Materials for
Conferring Tripsacum Genes in Maize.”
2. The Eubanks 1994 patent states:
Two wild grasses, Zea diploperennis [a teosinte] and Tripsacum
dactyloides have been crossed to produce a novel hybrid referred to as
Tripsacorn, proposed botanical name Zea indiana. A bridging
mechanism to transfer Tripsacum genes into maize is provided by
Tripsacorn which is cross-fertile with maize. It promises to improve
corn by imparting numerous beneficial characteristics including pest
resistance and drought tolerance.

(Eubanks 1994, col. 3, l. 64- col. 4, l. 3.)
3. The Eubanks 1994 patent further states:
Successful introgression of Tripsacum genetic material into maize
heretofore has required years of complicated, high risk breeding
programs that involve many backcross generations to stabilize
desirable Tripsacum genes in maize.

(Id. at col. 2, ll. 30-34.)
4. The Eubanks 1994 patent described the maize produced by
backcrossing Tripsacorn with maize as resistant to insects and disease,
and “[w]hen subjected to dry conditions, (maize X Tripsacorn) plants
do not exhibit signs of wilting and drought stress to the same extent as
maize controls.” (Id. at col. 11, ll. 50-68.)

5 Citations are to the Appeal Brief filed Jan. 21, 2009.
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5. The Eubanks 1997 article reports molecular analysis of crosses
between Tripsacum and a teosinte. (Eubanks 1997, Title.)
6. The Eubanks 1997 article states:
Mapping experiments combining quantitative trait loci (QTLs) and
molecular marker loci (MMLs) have identified over 50 restriction
fragment length polymorphisms (RFLPs) that distinguish advanced
maize from its putative ancestor, annual teosinte (Doebley et al.
1990; Doebley and Stec 1991).

(Eubanks 1997 at 708, col. 2.)
7. The Eubanks 1992 patent described a “Corn Plant Named Tripsacorn”
(Title of Patent) as a “new and distinct corn plant that is the product of
a cross between Tripsacum dactyloides and Zea diploperennis, a
diploid perennial teosinte” (Abstract).
8. According to the Eubanks 1992 patent, the new plant “is fertile, has
been proven to be cross compatible with Zea mays L. and offers an
avenue to expand the gene pool for commercial corn varieties.” (Id.)
9. The Eubanks 1992 patent reported field test results of backcrossing
the new Tripsacorn plant to a commercial corn line as follows:
drought tolerance and enhanced pest resistance were observed in the
F1 generation. Germination of seed from these crosses was 100%.
The plants were fully fertile and there was no loss in productivity.
Tripsacorn evidently provides a natural bridge for introducing
Tripsacum germ plasm into corn, thereby establishing a link between
these wild grasses and modern corn that may be beneficial in corn
improvement programs. . . . plants grown from Tripsacorn X corn
were sturdy, more tolerant of the drought conditions during the
summer of 1988, were resistant to the plant pests that plagued the corn
that season, were stocky with strong stalks and more extensive root
systems, were fertile and produced ears weights equal to the corn
controls.

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(Id. at col. 2, ll. 9-31.)

Principles of Law
A conclusion of obviousness is appropriate where the prior art
“contained detailed enabling methodology for practicing the claimed
invention, a suggestion to modify the prior art to practice the claimed
invention, and evidence suggesting that it would be successful.” In re
O’Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988). “Obviousness does not
require absolute predictability of success. . . . [A]ll that is required is a
reasonable expectation of success.” O’Farrell, 853 F.2d at 903-04. The
presence of a reasonable expectation of success is measured from the
perspective of a person of ordinary skill in the art at the time the invention
was made. Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1326
(Fed. Cir. 2000). The disclosure in a patent is presumed enabled. Amgen
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003).
Evidence of a motive or suggestion to modify prior art may consist of
an explanation of a principle or problem-solving strategy to be applied.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1366 (Fed. Cir. 2006).
“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991).

Analysis
Contrary to Appellant’s contentions concerning the facts disclosed in
the two patents, the evidence supports the Examiner’s findings. Briefly,
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each Eubanks patent, issued in 1992 and 1994 respectively, described a
maize plant produced by the two sequential steps claimed. Each patent
described step (a) (see FF 2 and 7) and backcrossing step (b) (see FF 4 and
9), done in sequence to produce a maize plant. Both patents taught the gene
introgression advantages to be gained in improving corn by performing steps
(a) and (b) in sequence, and both patents disclosed that their processes had
been successful in improving corn traits (see FF 4 and 8). Neither patent
reported what restriction fragments were in the product plants, but the
evidence is that it would have been a routine characterization, suggested by
Eubanks 1997 (FF 5 and 6).
The fact that an artisan could not have predicted the restriction
fragments eventually identified in the plants described or suggested in either
Eubanks patent does not make the plants described in those patents
nonobvious. See Baxter Travenol Labs., 952 F.2d at 392. See also, In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (affirming the obviousness of a
novel polynucleotide whose sequence had not been earlier disclosed: “[t]he
record in this case shows that Valiante did not explicitly supply an amino
acid sequence for NAIL or a polynucleotide sequence for the NAIL gene. In
that sense, Kubin and Goodwin's disclosure represents some minor advance
in the art”). As in Kubin, the present description of the restriction fragments
in the prior art plants may represent an advance in the art, but it does not
make the plants described or suggested by the prior art patentable.
Appellant contends that it was error for the Examiner to disregard an
argument that “at the time the application was filed, the claimed hybrid
maize plants were not contemplated . . . because it was believed that the
Tripsacum genes would be lost in backcrosses rather than stably inherited in
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successive generations.” (App. Br. 17-18.) This argument is unpersuasive
because the two patents relied on described the successful improvement of
corn by the process recited in claim 44. The successful solution of the
problem would have motivated those in the art to produce maize plants by
the same processes. See DyStar, 464 F.3d at 1366. The fact that some
experimentation would have been required is also not persuasive of
nonobviousness because it is the nature of the art. Each Eubanks patent
described breeding problems associated with earlier methods of
introgressing genes into corn and each solved the problem the same way:
cross Tripsacum and teosinte plants to make a hybrid (aka Tripsacorn) and
back cross the hybrid with maize. Those disclosures must be presumed
enabling. Amgen, 314 F.3d at 1355.
The Reply Brief provides a discussion of additional facts and further
argument that the results of backcrosses, such as restriction fragments,
cannot be predicted. These arguments are unpersuasive because the claim
defines a maize plant produced by the same process described in the earlier
patents to produce a maize plant. A person of ordinary of ordinary skill in
the art at the time the present Application was filed would have been aware
of the successes reported in the earlier patents. Thus, Appellant’s emphasis
on doubtful success is unpersuasive. Appellant is, “in effect, arguing that a
structure suggested by the prior art, and, hence, potentially in the possession
of the public, is patentable to [Appellant] because it also possesses an
Inherent, but hitherto unknown, function which they claim to have
discovered. This is not the law. A patent on such a structure would remove
from the public that which is in the public domain by virtue of its inclusion
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in, or obviousness from, the prior art.” In re Wiseman, 596 F.2d 1019, 1023
(CCPA 1979).
Where . . . the claimed and prior art products . . . are produced
by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on
“inherency” under 35 U.S.C. 102 on “prima facie obviousness”
under 35 U.S.C. 103, jointly or alternatively, the burden of
proof is the same.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the present case the
Examiner has provided evidence that the claimed process steps of making
the claimed maize plant were disclosed in the prior art, suggesting that the
claimed product and the prior art products are the same or substantially the
same.
Therefore, the rejections present sound cases for prima facie
obviousness. The findings and reasoning are supported by evidence, and the
Examiner’s positions in the Response to Argument are likewise supported
by evidence. In sum, the evidence is that the cited prior art “contained
detailed enabling methodology for practicing the claimed invention, a
suggestion to modify the prior art to practice the claimed invention, and
evidence suggesting that it would be successful.” O’Farrell, 853 F.2d at
902.
Claims 45-70 have not been argued separately and therefore stand or
fall with claim 44. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 44-70 under 35 U.S.C. § 103(a) as
unpatentable over Eubanks ‘547 and Eubanks TAG.
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We affirm the rejection of claims 44-70 under 35 U.S.C. § 103(a) as
unpatentable over Eubanks P7977 and Eubanks TAG.
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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