Ex Parte Frohberg et al

Patent Trial and Appeal Board

Apr 17, 2018

12089270 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/089,270 04/04/2008 Claus Frohberg
4372 7590 04/19/2018
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
037214.00125 1101
EXAMINER
WORLEY, CATHY KINGDON
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUS FROHBERG and BERND ESSIGMANN
Appeal2016-005741
Application 12/089,270 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
genetically modified plant cell. The Examiner rejected the claims on appeal
on the ground of non-statutory obviousness-type double patenting.
We affirm.
1 According to Appellants, the real party in interest is Bayer Intellectual
Property GmbH. App. Br. 1.
Appeal 2016-005741
Application 12/089,270
STATEMENT OF THE CASE
The Specification discloses: "The present invention relates to plant
cells and plants which synthesize an increased amount of hyaluronan."
Spec. 1. "[P]lant cells or genetically modified plants according to the
invention have hyaluronan synthase activity and additionally an increased
glutamine:fructose 6-phosphate amidotransferase (GF AT) activity compared
to wild-type plant cells or wild-type plants." Id.
Claims 1, 5-7, 11, 15, 16, and 21-23 are on appeal. 2 Claim 1 is
illustrative and reads as follows:
1. A genetically modified plant cell comprising a nucleic
acid molecule coding for a hyaluronan synthase stably
integrated into its genome and a foreign nucleic acid molecule
coding for a protein having the enzymatic activity of a
glutamine: fructose 6-phosphate amidotransferase ( GF AT),
wherein said plant cell has an increased activity of a protein
having the activity of a GF AT compared to corresponding non
genetically modified wild-type plant cells, and wherein said cell
synthesizes an increased amount of hyaluronan compared to a
plant cell having the activity of a hyaluronan synthase and no
increased activity of a GFAT.
App. Br. 9 (Claims App'x).
The claims stand rejected as follows.
Claims 1, 5-7, 11, 15, 16, and 21-23 were rejected on the ground of
2 After the Final Office Action, Appellants filed an amendment cancelling
claims 20 and 24--28. See Response Under 37 C.F.R. § 1.116 (filed August
20, 2015), 6. The Examiner entered Appellants' amendment in a September
1, 2015 Advisory Action. Accordingly, we do not consider claims 20 and
24--28 to be part of this appeal.
2
Appeal 2016-005741
Application 12/089,270
nonstatutory obviousness-type double patenting over claims 1-26 U.S.
Patent No. 8,558,060 B2 ("the '060 patent") in view ofDeAngelis. 3
Claims 1, 5-7, 11, 15, 16, and 21-23 were rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1-122 of U.S.
Patent No. 8,106,256 B2 ("the '256 patent") in view ofDeAngelis. 4
Claims 1, 5-7, 11, 15, 16, and 21-23 were rejected under 35 U.S.C. §
103 (a) as obvious over the combination of Shibatani, 5 Shibatani II, 6 Deng, 7
DeAngelis, and Nichols. 8 The Examiner withdrew this rejection in a July
15, 2015 Advisory Action. Accordingly, we do not consider this rejection to
be part of this appeal.
3 DeAngelis et al., U.S. Patent Publication No. 2003/0092118 Al, published
May 15, 2003 ("DeAngelis").
4 The Final Action states that, pursuant to Appellants' request, this rejection
will "be held in abeyance until this application is in condition for
allowance." Final Act. 19. However, Appellants had an obligation to
address this rejection before the Final Rejection. See 37 C.F.R. § 1.11 l(b).
Moreover, there is no indication that the Examiner withdrew this rejection.
To the contrary, the Final Action states: "Claims 1-3, 5-7, 11, 15, 16, and 20
remain rejected and newly added claims 21-26 are rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-122 of US Patent No. 8,106,256." Final Action 18. Accordingly,
we consider this rejection to be part of this appeal. See 37 C.F.R. § 41.3 l(c)
("An appeal, when taken, is presumed to be taken from the rejection of all
claims under rejection unless cancelled by an amendment filed by
the applicant and entered by the Office").
5 Shibatani et al., WO 2005/012529, published Feb. 10, 2005 ("Shibatani").
6 Shibatani et al., US Patent Publication No. 2006/0168690 Al, published
July 27, 2006 ("Shibatani II").
7 Deng et al., WO 2004/003175 A2, published January 8, 2004 ("Deng").
8 Nichols et al., US Patent Publication No. 2003/0177534 Al, published
Sept. 18, 2003 ("Nichols").
3
Appeal 2016-005741
Application 12/089,270
DOUBLE PATENTING OVER THE '060PATENT
In rejecting the claims on the ground of obviousness-type double
patenting, the Examiner found that "DeAngelis et al[.] specifically suggest a
nucleic acid encoding any enzyme involved in the biosynthetic pathway, and
the [']060 patent specifically names glutamine: fructose 6-phosphate
amidotransferase [ GF AT]." Ans. 3. As support for the assertion that the
'060 patent discloses GF AT, the Examiner cites the specification of the '060
patent. Id. Appellants argue that because the rejection was made on the
ground of double patenting, the Examiner's reliance on the specification of
the '060 patent was improper. Reply Br. 2.
We agree with Appellants that the Examiner's reliance on the
disclosure of the specification of the '060 patent was improper. As the
Federal Circuit has explained, "the disclosure of a patent cited in support of
a double patenting rejection cannot be used as though it were prior art"
General Foods Corp. v. Studiengesellschajt Kahle mhH, 972 F.2d 1272,
1281 (Fed. Cir. 1992); see also Abhvie v. lvfathilda & Terence Kennedy
Institute ofRheumatology Trust, 764 F.3d 1366, 1380 (Fed. Cir. 2014)
("a reference patent's specification cannot be used as prior art in an
obviousness-type double patenting analysis."). Because the Examiner does
not identify, and we do not find, any disclosure of GFAT in the claims of the
'060 patent or in DeAngelis, we reverse the rejection of claims 1, 5-7, 11,
15, 16, and 21-23.
DOUBLE PATENTING OVER THE '256PATENT
The Examiner rejected claims 1, 5-7, 11, 15, 16, and 21-23 for
obviousness-type double patenting based on claims 1-122 of the '256 patent
in view of DeAngelis. As discussed supra, n5, we consider this rejection to
4
Appeal 2016-005741
Application 12/089,270
stand for purposes of this appeal. Appellants do not challenge the propriety
of this rejection in the Appeal Brief, but request that it "be held in
abeyance." App. Br. 2 n.2. Because Appellants have not presented any
basis for concluding that this obviousness-type double patenting rejection is
improper, we summarily affirm it. See MPEP § 1205.02 ("If a ground of
rejection stated by the examiner is not addressed in the appellant's brief,"
that ground of rejection will be summarily sustained by the Board.).
SUMMARY
In summary, we reverse the Examiner's rejection of claims 1, 5-7, 11,
15, 16, and 21-23 on the ground ofnonstatutory obviousness-type double
patenting over claims 1-26 U.S. Patent No. 8,558,060 B2 ("the '060 patent")
in view of DeAngelis.
We affirm the Examiner's rejection of claims 1, 5-7, 11, 15, 16, and
21-23 on the ground ofnonstatutory obviousness-type double patenting over
claims 1-122 of U.S. Patent No. 8, 106,256 B2 ("the '256 patent") in view of
DeAngelis.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
5