Ex Parte Hardison et al

Patent Trial and Appeal Board

Jul 15, 2016

11197808 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111197,808 08/05/2005
21967 7590 07118/2016
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
John R. Hardison
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.
54936.003020 7816
EXAMINER
KUBELIK, ANNE R
ART UNIT PAPER NUMBER
1662
MAILDATE DELIVERY MODE
07/18/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. HARDISON and JAY B. BURR
Appeal2013-010623
Application 11/197 ,808
Technology Center 1600
Before DEMETRA J. MILLS, KIMBERLY MCGRAW, and
TA WEN CHANG, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal of the rejections of claims 62-139 under 35 U.S.C.
§ 134. The Examiner has rejected these claims for lack of written description
and lack of enablement. In addition, four obviousness-type double patenting
rejections are set forth in the Answer. Claims 81-82 are not rejected under
35 U.S.C. § 112, first paragraph; however, they are part of the obviousness-
type double patenting rejections. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
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Application 11/197 ,808
STATEMENT OF CASE
The present invention relates to methods of breeding Poa
arachnifera and Poa pratensis hybrid plants, the Poa
arachnifera and Poa pratensis hybrid plants per se, as well as
the plant parts, including the seeds. The present invention
further relates to Poa arachnifera and Poa pratensis hybrid
seeds. Methods of using the hybrid plants and the hybrid seeds
are also provided. The hybrid plants are particularly suitable for
use in lawns, golf courses, sod, other turfs and forage.
Spec. ,-r 2.
While there have been prior hybrids of Poa arachnifera and Poa
pratensis grasses, such as the Kentucky bluegrass variety "Reveille,"1 the
Specification states that "Reveille has not experienced commercial success
due to difficulties in seed production, in particular cotton webbiness on the
seeds." Spec. i-f 6. The pending claims generally relate to hybrid plants
derived from crossing Poa arachnifera and Poa pratensis that exhibit one of
increased panicle openness or reduced panicle compactness and, optionally,
reduced amount, density, and/or length of seed cotton webbing as compared
to Reveille. 2 App. Br. 33--44 (Claims App'x).
Claim
The following claim is representative.
62. A hybrid plant, or part thereof, derived from crossing
Poa arachnifera and Poa pratensis grasses as plant parents,
wherein the hybrid plant or its seed exhibits at least one of (i)
an increased panicle openness as compared to Reveille or (ii) a
1 Reg. no. CV-53. PI 603946.
2 A panicle is a loosely branched cluster of flowers. App. Br. n. 2; Spec.
Figs. 7 A-7C.
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reduced panicle compactness as compared to Reveille; and
optionally (iii) a reduced amount of cotton webbing on a seed
of the hybrid plant as compared to Reveille; (iv) a reduced
cotton webbing density on a seed of the hybrid plant as
compared to Reveille; and/or (v) a reduced length of cotton
webbing as a percentage of lemma length on a seed of the
hybrid plant as compared to Reveille, and further wherein said
hybrid plant is a Fl plant or a backcrossed hybrid plant derived
from crossing said Fl plant and a Poa arachnifera or Poa
pratensis plant.
App. Br. 33 (Claims App'x).
Cited References
Classification for Kingdom Plantae Down to Genus Poa L., USDA.gov,
http://www. plants. usda. gov /j ava/ClassificationServlet? source=profile&symb
ol=POA&display=63 (last visited November 15, 2010).
JAMES C. READ & SHARON J. ANDERSON, TURFGRASS BIOLOGY, GENETICS,
AND BREEDING 61---66 (l\1ichael D. Casler & Ronny R. Duncan eds., 2003).
Grounds of Rejection
1. Claims 62-80 and 83-139 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Ans. 4; Final Act. 2.
2. Claims 62-80 and 83-139 are rejected under 35 U.S.C. § 112, first
paragraph, because the Specification, while being enabling for
varieties HB-130, HB-342, HB-329 and HB-129, does not
reasonably provide enablement for the full scope of hybrid plants
derived from a cross between P. arachnifera and P. pratensis,
wherein the plants have at least one of increased panicle openness
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or reduced panicle compactness, progeny of the plants and
methods of making the hybrid plants. Ans. 12; Final Act. 17.
3. Claims 62-136 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claim 1 of U.S. Patent No. PP 18,467. Ans. 17; Final Act. 23.
4. Claims 81-91, 103-104, 106, 109-115, 117, 120-129, 131, and
134--139 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim 1 of U.S.
Patent No. PP 18,439. Ans. 17; Final Act. 23.
5. Claims 81-91, 103-104, 109-115, 120-129, and 134--139 are
rejected on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claim 1 of U.S. Patent No. PP
21,045. Ans. 18; Final Act. 24.
6. Claims 62---63, 65, 68-93, 95, 98-104, 106, 109-115, 117, 120-
129, 131 and 134--139 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claim 1 of U.S. Patent No. PP 21,192. Ans. 19; Final Act. 25.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3--45. The following facts are highlighted.
1. "Through genetic recombination, the progeny of the Poa
arachnifera are heterozygous and heterogeneous. There are also
basic morphological differences between panicles of male and
female Poa arachnifera plants (other than the obvious absence of
male or female reproductive parts)." (Spec. i-f 3.)
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2. Appellants argued in prosecution regarding Suplick-Ploense,3 a
prior art reference cited in an earlier anticipation rejection, that
"there are countless hybrids that can be created by crossing P.
arachnifera Torr and P. pratensis L. The vast majority of these
would not have the claimed characteristics. Only through selective
breeding were Applicants able to obtain hybrids exhibiting the
claimed traits." See Ans. 21; p. 10, paragraph 3, and p. 11,
paragraph 3 of Appellant's Supplemental Response filed Mar. 20,
2009.
PRINCIPLES OF LAW
The function of the written description requirement is "to ensure that
the applicant had possession, as of the filing date of the application relied on,
of the specific subject matter later claimed by him." In re Blaser, 556 F.2d
534, 537 (CCPii .. 1977). "It is not necessary that the application describe the
claim limitations exactly, In re Lukach, [442 F.2d 967 (CCPA 1971)], but
only so clearly that persons of ordinary skill in the art will recognize from
the disclosure that appellants invented processes including those
limitations." In re Wertheim, 541F.2d257, 262 (CCPA 1976).
A number of factors are relevant to evaluating the adequacy of
disclosure for generic claims, including "the existing knowledge in the
particular field, the extent and content of the prior art, the maturity of the
science or technology, [and] the predictability of the aspect at issue."
3 M.R. Suplick-Ploense et al., Relative NaCl Tolerance of Kentucky
Blugrass, Texas Bluegrass, and Their Hybrids, 42 CROP SCIENCE 2025
(2002).
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AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d
1285, 1299 (Fed. Cir. 2014) (internal quotation marks and citations omitted).
When a patent claims a genus using functional language to
define a desired result, the specification must demonstrate that the
applicant has made a generic invention that achieves the claimed
result and do so by showing that the applicant has invented species
sufficient to support a claim to the functionally-defined genus. . ..
[A] sufficient description of a genus ... requires the disclosure of
either a representative number of species falling within the scope of
the genus or structural features common to the members of the genus
so that one of skill in the art can visualize or recognize the members
of the genus.
Id. (internal quotation marks and citations omitted); see also In re Wallach,
378 F.3d 1330, 1335 (Fed. Cir. 2004) ("[F]unctional description can be
sufficient only if there is also a structure-function relationship known to
those of ordinary skill in the art."); Enzo Biochem, Inc. v. Gen-Probe Inc.,
323 F.3d 956, 964 (Fed. Cir. 2002) (recognizing PTO Guidelines explaining
that "the written description requirement can be met by ... 'disclosure of
sufficiently detailed, relevant identifying characteristics ... i.e., complete or
partial structure, other physical and/ or chemical properties, functional
characteristics when coupled with a known or disclosed correlation between
function and structure, or some combination of such characteristics")
(emphasis added and citation omitted).
Regardless whether a compound is claimed per se or a method
is claimed that entails the use of the compound, the inventor cannot
lay claim to that subject matter unless he can provide a description of
the compound sufficient to distinguish infringing compounds from
non-infringing compounds, or infringing methods from non-infringing
methods.
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University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 926 (Fed.
Cir. 2004).
In light of the history of biological deposits for patent
purposes, the goals of the patent law, and the practical
difficulties of describing unique biological materials in a
written description, we hold that reference in the specification
to a deposit in a public depository, which makes its contents
accessible to the public when it is not otherwise available in
written form, constitutes an adequate description of the
deposited material sufficient to comply with the written
description requirement of§ 112, i-f 1.
Enzo Biochem, Inc., 323 F.3d at 965.
"The enablement requirement ensures that the public knowledge is
enriched by the patent specification to a degree at least commensurate with
the scope of the claims. The scope of the claims must be less than or equal
to the scope of the enablement. The scope of enablement, in tum, is that
which is disclosed in the specification plus the scope of what would be
known to one of ordinary skill without undue experimentation." National
Recovery Technols. Inc. v. Magnetic Separation Sys., Inc., 166 F .3d 1190,
1195-1196 (Fed Cir. 1999). Wands factors (i.e., quantity of experimentation
necessary, amount of direction, presence or absence of working examples,
nature of invention, state of prior art, relative skill of those in the art,
predictability or unpredictability of the art, and breadth of the claims) are
factual inquiries underlying the enablement conclusion. Enzo Biochem, Inc.
v. Calgene Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999).
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DISCUSSION
History and Background
The 1930 Plant Patent Act conferred patent protection to asexually
reproduced plants. By passing the Plant Variety Protection Act in 1970,
Congress specifically authorized limited patent-like protection for certain
sexually reproduced plants.
Several years after Chakrabarty, 447 U.S. 303 (1980),
the PTO Board of Patent Appeals and Interferences held that
plants were within the understood meaning of "manufacture" or
"composition of matter" and therefore were within the subject
matter of §101. In re Hibberd, 227 USPQ 443, 444, 1985 WL
71986 (1985). It has been the unbroken practice of the PTO
since that time to confer utility patents for plants. To obtain
utility patent protection, a plant breeder must show that the
plant he has developed is new, useful, and non-obvious. 35
U.S.C. § 101-103 (1994 ed. and Supp. V). In addition, the
plant must meet the specifications of § 112, which require a
written description of the plant and a deposit of seed that is
publicly accessible. See 37 CPR§§ 1.801-1.809 (2001).
J.E.M Ag Supply Inc. v. Pioneer Hi-Bred Int 'l Inc., 534 U.S. 124, 131
(2001).
As acknowledged in In re LeGrice,
[I]t must be borne in mind that there are inherent
differences between plants and manufactured articles. Should a
plant variety become extinct one cannot deliberately produce a
duplicate even though its ancestry and the techniques of cross-
pollination be known. Manufactured articles, processes, and
chemical compositions when disclosed are, however,
susceptible to man-made duplication.
The description of a plant in a plant patent or in a printed
publication at best can only recite, as historical facts, that at one
time a certain plant existed, was discovered in a certain manner,
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and was asexually reproduced. This information may be
interesting history, but cannot enable others to reproduce the
plant.
In re LeGrice, 301 F.2d 929, 935 (C.C.P.A. 1962).
The production of seeds by cross-pollination does not
assure the plant breeder that he has produced a true new plant
variety having the characteristics desired. At this step, the
principles of heredity and plant genetics introduce such
variables that no two seeds from the parent cross can be
expected to produce identical plants.
The functions of the chromosomes and genes in
transmitting inheritable properties from parents to offspring in
plant breeding are brought into play only when the nuclei from
different parent plants fuse together to form, in the seed, the
nucleus of the new plant. Differences in composition of the
fusing nuclei produce an organism which differs from either
parent. These differences may be due, for example, to the
presence of a duplicated chromatin granule (gene) in one, which
may be represented singly or not at all in the other.
Id. at 938.
Hybrid seeds are produced by crossing two inbred com plants
and are especially valuable because they produce strong and
vibrant hybrid plants with selected highly desirable
characteristics .... Hybrid plants, however, generally do not
reproduce true-to-type, i.e., seeds produced by a hybrid plant do
not reliably yield plants with the same hybrid characteristics.
Thus, a farmer who wishes to continue growing hybrid plants
generally needs to buy more hybrid seed.
J.E.M Ag Supply Inc., 534 U.S. at 128.
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Claim Scope
Before addressing the written description and enablement issues, we
must determine the scope of claim 62. "The descriptive text needed to meet
these requirements varies with the nature and scope of the invention at issue,
and with the scientific and technologic knowledge already in existence."
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005) (emphasis added).
Pending claim 62 is directed to a hybrid plant, or part thereof, derived from
crossing Poa arachnifera and Poa pratensis grasses as plant parents. The
resulting hybrid plant from the cross, at a minimum, must exhibit at least
one of (i) an increased panicle openness as compared to Reveille or (ii) a
reduced panicle compactness as compared to Reveille. Appeal Br. 33
(Claims App 'x); Spec. i-f 6 (description of Reveille). Claim 62 places no
requirements on the nature of the specific plant parents, and therefore claim
62 encompasses hybrid plants resulting from the cross bet\'l/een any Paa
arachnifera and any Poa pratensis grasses that exhibits at least one of (i) an
increased panicle openness as compared to Reveille or (ii) a reduced panicle
compactness as compared to Reveille. In short, claim 62 recites a genus
defined by a desired result. AbbVie, 759 F.3d at 1299.
Through genetic recombination, the progeny of the Poa arachnifera
are heterozygous and heterogeneous, (leading to unpredictable phenotypic
expression of plant traits). There are also basic morphological differences
between panicles of male and female Poa arachnifera plants (other than the
obvious absence of male or female reproductive parts). FPL
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Written Description
Appellants argue the claims in the following groups; 1) Claims 62-7 6
and 80; 2) Claims 77-79; 3) Claims 83-91; 4) Claims 92-113, 128-137, and
139; 5) Claims 114-119 and 126-127. Each of the independent claims of
each grouping present similar written description issues, therefore we select
claim 62 as representative of all groupings and the remaining claims stand or
fall with claim 62. See 37 C.F.R. § 41.37(c)(l)(iv)(2014).
Examiner's Arguments
The Examiner finds, and we agree, that the only deposited species that
fall within the claimed genus of hybrids having increased panicle openness
or decreased panicle compactness (i.e., HB-130, HB-342, HB-329 and HB-
129) have P. pratensis "Geronimo" as a parent or grandparent. Ans. 5. The
Examiner finds that:
Because the [claimed] genus is highly variant, [deposited] HB
129 and HB 130 plants are insufficient to describe the claimed genus
of P. arachnifera x P. pratensis Fl hybrids and [deposited] HB329 and
HB342 [plants] are insufficient to describe the claimed genus of
backcross plants.
The claimed plants encompass transgenic P. arachnifera
x P. pratensis plants, where the transgene(s) confer the claimed
traits. Such genes are not described.
The specification describes no structure (genotype) as being
required for reduced amount, density and length of cotton webbing on
the seed, increased amount of panicle openness, and/ or reduced
panicle compactness. There is not even any indication in the
specification if these traits are controlled by single or multiple genes
and if the genes are recessive or dominant.
Further, while the specification discusses the desirability of the
heat and drought tolerance traits that P. arachnifera can confer (see,
e.g., i-15), none of these or other P. arachnifera traits are claimed; only
P. pratensis traits are claimed.
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Id. 6. The Examiner further finds that
The specification also does not describe the structural features
that distinguish P. arachnifera x P. pratensis Fl hybrid plants
from other plants that have a P. arachnifera x P. pratensis
hybrid in their genetic backgrounds. The specification also
fails to describe the structural features that distinguish a F 1
hybrid from a F2 hybrid.
Id. at 7.
Appellants' Arguments
Appellants contend that
The instant application describes and claims novel hybrid
plants, derived from crossing P. arachnifera and P. pratensis,
having improved characteristics over Reveille, as well as
methods for selecting such hybrid plants. (See id. at [011],
[012], [025], [046].) The claimed hybrid plants are easy to
identify because they exhibit either an increased panicle
openness or a reduced panicle compactness, as compared to
Reveille, and optionally other characteristics (e.g., a reduced
amount of cotton webbing on a seed of the hybrid plant as
compared to Reveille). The claims also relate to progeny of the
hybrids, methods of producing the hybrid plants, and methods
for screening hybrid plants for the improved characteristics.
App. Br. 12.
Appellants further argue that
P. arachnifera and P. pratensis grasses are well known and
characterized in the art. The specification teaches that, by
hybridizing P. arachnifera plants selected for certain
characteristics with P. pratensis plants selected for certain
characteristics, hybrid plants having the claimed characteristics
may be obtained. (Specification at [067-079].)
The specification teaches that P. arachnifera plants
useful in making the claimed hybrid plants are selected based
on "improved turf characteristics, including, but not limited to,
increased tiller density, leaf color, and/or plant height, in
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comparison to typical cultivars and wild types of Poa
arachnifera" (id. at [055] and [068]}-characteristics that one of
skill in the art can readily measure and determine. For
example, the National Turfgrass Evaluation Program (NTEP),
submitted as Exhibit A to Appellants' Response dated
September 7, 2010, provides a detailed description of how to
measure "Turfgrass Quality."4 Moreover, the USPTO routinely
issues patents in which turf quality, tiller density, leaf color, and
plant height are disclosed and claimed. 5 The USPTO' s issuance
of such patents shows that it recognizes that skilled artisans
understand these characteristics and how to determine whether
a particular characteristic is, for example, increased compared
to a wild type cultivar. The specification also identifies specific
P. arachnifera parent plants useful for the claimed
hybridization methods, including Tx 10-10, Tx 7-23, and Tx-6-
17. (See id. at [054].) Accordingly, in view of the specification
and knowledge in the art, one of ordinary skill in the art would
conclude that P arachnifera parent plants are adequately
described.
Id. at 12, 13 (footnotes omitted).
Analysis
We are not persuaded by Appellants' arguments. Appellants argue
that "[t]he specification teaches that, by hybridizing P. arachnifera plants
selected for certain characteristics with P. pratensis plants selected for
certain characteristics, hybrid plants having the claimed characteristics may
be obtained. (Specification at [067-079].)" App. Br. 12. However, claim 62
does not limit Poa arachnifera and Poa pratensis parents to those having
selected traits. Thus, the question with respect to this rejection is whether
there is description sufficient to support, to a skilled artisan, all Poa
arachnifera I Poa pratensis hybrids having the claimed resulting
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characteristic. We agree with the Examiner that Appellants have not
described or shown possession of the invention with respect to the full scope
of hybrids claimed.
In particular, we find that the pending claims encompass a genus
defined by a desired result (i.e., comparative panicle openness or
compactness vis-a-vis Reveille) without providing "either a representative
number of species falling within the scope of the genus or structural features
common to the members of the genus [such] that one of skill in the art can
visualize or recognize the members of the genus." AbbVie, 759 F.3d at 1299
(internal quotation marks and citations omitted). In particular, as the
Examiner points out,
A comparison to Reveille does not describe the relevant
identifying characteristics of the parent plant species that confer
the claimed traits.
A comparison to Reveille does not describe the relevant
identifying characteristics of P. arachnifera and P. pratensis
plants that necessarily, when crossed, produce progeny that
have the claimed characteristics.
A comparison to Reveille does not describe the relevant
identifying characteristics that distinguish progeny of HB-130,
HB-342, HB-329 and HB-129 from other plants that have both
P. arachnifera and P. pratensis in their genetic background and
have the claimed traits.
A comparison to Reveille does not describe the relevant
identifying characteristics that distinguish plants with the
claimed traits and that are progeny of P. arachnifera x P.
pratensis hybrid plants with the claimed traits from plants with
the claimed traits and that are progeny of P. arachnifera x P.
pratensis hybrid plants that do not have the claimed trait.
A comparison to Reveille does not describe the full scope
of parents to be used in the claimed methods.
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A comparison to Reveille does not describe a
representative number of species over the full scope of the
claims.
Ans. 20-21.
Nor do we find Appellants to have shown that the claimed hybrid
characteristic is sufficiently demonstrated in the Specification or by deposit
to characterize a generic invention. See Capon, 418 F.3d at 1359. While
Appellants argue that the Specification suggests crossing parents having
particular characteristics, the Specification has not shown that this is a
feature common to hybrids having the claimed comparative panicle
openness I compactness. Likewise, Appellants have deposited only four
hybrid plants, all derived from a single P. pratensis variety (Geronimo),
However, Appellants have argued that the vast majority of hybrids created
by crossing specific P. arachnifera Torr and P. pratensis L varieties would
not have the claimed characteristics (see, for example, pg 10, paragraph 3,
and pg 11, paragraph 3 of Appellant's response filed 20 March 2009). Ans.
6, 28. Moreover, "[t]he production of seeds by cross-pollination does not
assure the plant breeder that he has produced a true new plant variety having
the characteristics desired. At this step, the principles of heredity and plant
genetics introduce such variables that no two seeds from the parent cross can
be expected to produce identical plants." In re LeGrice, 301 F.2d at 938.
In the present case, we also find that Appellants have not described
sufficient hybrid species within the scope of claim 62.
Appellants urge that in Ex Parte C, the Board affirmed that
identification of known parent lines to make a new hybrid progeny, coupled
with a functional description of the progeny, provides adequate written
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description; in particular, Appellants argue that the Board found that flower
color, plant type, maturity group, and bacterial and nematode resistance
provided an adequate description for a soybean variety. App. Br. 15-16.
This argument is not persuasive. In Ex Parte C, the Appellant
claimed a specific soybean variety, which was described by at least five
characteristics in the specification and further proposed to be described by
deposit of the seed for the claimed variety in a public depository. In re C, 27
USPQ2d 1492, 1493-1495 (1992). The instant application, in contrast,
claims any Poa arachnifera and Poa pratensis FI or backcrossed hybrid
described by a single characteristic, either increased panicle openness as
compared to Reveille or reduced panicle compactness as compared to
Reveille. Such a large genus is not and cannot be described by deposit of a
limited, few seeds and the generalized description of the parent plants
provided in the Specification. Ans. 25.
ii~ppellants urges that Riverside Park, a non=Geronimo parent, is fully
capable of producing progeny with the claimed characteristics, as taught in
the Specification (App. Br. 22). However, Riverside Park is not mentioned
or described in the Specification, and thus the Specification does not teach
that it is capable of producing progeny with the claimed characteristics.
Ans. 34.
In sum, Appellants have not provided a disclosure that has sufficiently
detailed, relevant identifying characteristics, i.e., complete or partial
structure, other physical and/or chemical properties, functional
characteristics when coupled with a known or disclosed correlation between
function and structure, or some combination of such characteristics.
Appellants have not described or provided specific structure or
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characteristics that identify the parental strains used to make the claimed
hybrid within the full scope of the claims. Appellants have not provided
sufficient disclosure to distinguish infringing hybrids from non-infringing
hybrids, or infringing methods from non-infringing methods, or to show
possession of the invention within the full scope of claim 62. Thus, we
affirm the written description rejection of the Examiner for the reasons of
record.
Enablement
Appellants do not argue the claims separately. Therefore, we select
claim 62 as representative and the remaining claims stand or fall with claim
62. See 37 C.F.R. § 41.37(c)(l)(iv)(2014).
Examiner's Arguments
The Examiner contends that the fhll scope of the pending claim 62 is
not enabled. Ans. 12. More particularly, the Examiner finds that
the specification, while being enabling for varieties HB-130, HB-342,
HB-329 and HB-129, does not reasonably provide enablement for the
full scope of hybrid plants derived from a cross between P.
arachnifera and P. pratensis, wherein the plants have at least one of
increased panicle openness or reduced panicle compactness, progeny
of the plants and methods of making the hybrid plants. The
specification does not enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and/or use
the invention commensurate in scope with these claims.
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Id. The Examiner further reviews the enablement factors set forth in In re
Wands, 4 and finds that
in essence the breadth of the claims cover any breeder who
would make any cross between Poa arachnifera and Poa
pratensis and any backcross regardless of how many
generations removed. This is because the claimed plants are
not limited by genotype, parentage, filial generation, backcross
generation, transformation generation, etc.
The nature of the invention involves plant breeding,
which is recognized in the art to be highly unpredictable and
except for certain narrow areas where the genetics has been
worked out, is usually not reproducible. If homozygous variety
A were crossed with homozygous variety B, and the progeny
allowed to self for five generations, the phenotype and genotype
of the F5 progeny would be totally unpredictable and
irreproducible due to recombination of chromosomes. If
heterozygous variety C were crossed with heterozygous variety
D, the phenotype and genotype of the resulting progeny are
unpredictable.
Id. at 12-13.
The state of the pnor art is that crosses between P.
arachnifera and P. pratensis have been made previously, as
evidenced by Revellie [sic], the comparative variety. However
the art remains unpredictable, especially since these traits they
are claiming have not been mapped out genetically. Nothing is
known about the genes required to exhibit these traits. If they
are quantitative traits, then numerous genes would be required
to interact with each other to reproduce the phenotype, which
contributes tremendously to unpredictability. The level of
ordinary skill in the plant breeding art is high; most breeders
have PhDs with multiple years of postdocs and breeding
4 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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Id. 13.
experience. The level of ordinary skill in the art is high because
of the unpredictability that is associated with this field.
Appellants' Arguments
Appellants argue that
the instant specification contains ample disclosure to allow
persons skilled in the art to practice the full scope of the
claimed invention, including:
• Examples of specific parental plant lines useful in making the
claimed hybrids (e.g., P. arachnifera varieties Tx 10-10, Tx 7-
23 and Tx-6-17, and P. pratensis varieties Geronimo, Ascot,
Abbey and Midnight);
• Physical traits of parental plants useful in making the claimed
hybrid plants (e.g., P. arachnifera parent with good turf grass
characteristics and P. pratensis parent with good seed
production characteristics);
• Methods of making the claimed hybrid plantss [sic] (e.g.,
crossing P. arachnifera and P. pratensis plants having specific
physical traits);
• Methods of distinguishing Fl progeny hybrids having the
claimed characteristics from the prior art hybrid Reveille (e.g.,
increased panicle openness, decreased panicle compactness,
reduced cotton webbing density, shorter lemma cotton length,
superior germination and seed emergence scores, etc.); and
• Several hybrid plants having the claimed characteristics (e.g.,
HB-129, HB-130, HB-329, and HB-342).
Moreover, as discussed above, there is no dispute that, at
the time the application was filed, the parental lines (i.e., the
starting materials for producing the claimed hybrids) were well
known in the art, as were P. arachnifera x P. pratensis hybrids
and methods of selecting plants for desired characteristics. (See
Office Action mailed Nov. 19, 2010, at 7.)
As such, while making and testing hybrid plants for the
claimed characteristics may involve extensive experimentation,
as in Kubin such experimentation would have been routine
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given the specification's detailed disclosure and the knowledge
in the art. Accordingly, the full scope of the claims are enabled.
App. Br. 29.
Appellants further argue that,
the specification discloses examples of non-Geronimo, P.
pratensis parents including Ascot, Abbey, and Midnight. The
specification also describes specific characteristics of P.
pratensis parents (e.g., increased seed production) useful in
making the claimed hybrids. Finally, the Examiner contends
that the claimed method "requires P. arachnifera and P.
pratensis plants that necessarily produce progeny" with the
claimed characteristics, but that "[t ]he specification fails to
teach such parent plants." (Id. at 19-20.) This is simply not true.
As discussed above, the specification does teach parent plants
that, when crossed, produce hybrid plants having the claimed
characteristics. Examples of such parent plants include P.
arachnifera varieties Tx 10-10, Tx 7-23, and Tx-6-17, and P.
pratensis varieties Geronimo, Ascot, Abbey and Midnight.
(Specification at [054].) The specification also teaches \vhat
characteristics of parent plants to select for (e.g., good turf grass
quality and/or seed production) in order to yield hybrid plants
having the claimed characteristics. The specification also
teaches how to select hybrid plants having those characteristics.
And the specification discloses deposits of four such hybrid
plants. There is little else Appellants could have provided to
enable persons of ordinary skill to make and use the full scope
of the invention.
Id. at 31.
Appellants argue that ( 1) the Specification shows how to compare
panicle openness between the claimed hybrids and Reveille; and (2) in view
of this disclosure, it would be routine to compare the panicle openness of
other hybrid plants to Reveille. See, e.g., id. at 8, 9, 18. Accordingly,
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Appellants maintain that the Specification adequately describes the full
scope of the claimed products and methods. Reply Br. 10.
Analysis
We agree with the Examiner that the Appellants have not enabled the
full scope of the hybrids of claim 62. Appellants have not limited their
broad claims to the parent plants P. arachnifera varieties Tx 10-10, Tx 7-23,
and Tx-6-17, and P. pratensis varieties Geronimo, Ascot, Abbey and
Midnight. Instead, one of ordinary skill in the art would be invited to
perform undue experimentation and panicle comparison with a large number
of P. arachnifera and P. pratensis varieties to determine if they produce a
hybrid plant and if the hybrid exhibits at least one of (i) an increased panicle
openness as compared to Reveille or (ii) a reduced panicle compactness as
compared to Reveille. Nor do we find that Appellants have fully explained
hov,r the National Turfgrass Evaluation Program (NTEP), indicating a
detailed description of how to measure "Turf grass Quality, provides an
explanation which reduces the amount of experimentation that needs to be
done to determine whether P. arachnifera and P. pratensis parent varieties
possess the characteristics necessary to produce the full scope of hybrids
having the characteristic claimed. Based on Appellants' disclosure we
conclude that it would require undue experimentation to make and use the
invention of claim 62, and that Appellants have not enabled the full scope of
hybrids of claim 62.
Thus, we affirm the enablement rejection of the Examiner for the
reasons of record.
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Obviousness-type Double Patenting Rejections
Claims 62-136 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of
U.S. Patent No. PP 18,467.
Claims 81-91, 103-104, 106, 109-115, 117, 120-129, 131, and 134--
139 are rejected on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claim 1 of U.S. Patent No. PP 18,439.
Claims 81-91, 103-104, 109-115, 120-129, and 134--139 are rejected
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claim 1 of U.S. Patent No. PP 21,045.
Claims 62---63, 65, 68-93, 95, 98-104, 106, 109-115, 117, 120-129,
131 and 134--139 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim 1 of U.S. Patent No.
pp 21,192.
Analysis
The Examiner indicates in the Final Action, pp. 23-26 and Answer, p.
4, that the obviousness-type double patenting rejections are maintained, and
that every ground of rejection set forth in the Office action from which the
appeal is taken (as modified by any advisory actions) is being maintained.
See also, 37 C.F.R. 41.39(a)(l).
Appellants do not argue any of the obviousness-type double patenting
rejections on the merits; therefore, each of the obviousness-type double
patenting rejections is summarily affirmed.
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CONCLUSION
The Examiner's lack of written description and lack of enablement
rejections are affirmed for the reasons of record and herein.
The four pending obviousness-type double patenting rejections are
summarily affirmed.
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).
AFFIRMED
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