Ex Parte KIM et al

Patent Trials and Appeals Board

Jul 8, 2019

14258908 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/258,908 04/22/2014 WooTaekKIM
28997 7590 07/10/2019
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
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.
6680L-000040-US 6643
EXAMINER
STANKOVIC, BRATISLAV
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
stldocket@hdp.com
bkamer@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOO T AEK KIM, EUN YU KIM,
MOON YONG RYU, and YOON A CHOI 1
Appeal2018-0035642
Application 14/258,908
Technology Center 1600
Before JOHN G. NEW, JAMES A. WORTH, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
method for improving plant tolerance to drought stress which have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Industry-Academic Cooperation Foundation, Yonsei
University as the real party in interest. Appeal Br. 2.
2 We have considered and herein refer to the Specification filed July 19,
2014 ("Spec."); the Final Office Action mailed Feb. 10, 2017 ("Final Act.");
the Appeal Brief filed Aug. 4, 2016 ("Appeal Br."); the Examiner's Answer
mailed Dec. 19, 2017 ("Ans."); and the Reply Brief filed Feb. 2, 2018
("Reply Br.").
Appeal2018-003564
Application 14/258,908
STATEMENT OF THE CASE
Abiotic stresses such as high salt, can limit growth and development
of crop plants. Spec. 1. The Specification describes a method for
transforming plants to improve salt tolerance. Id. at 3.
Claims 1-3 are on appeal. 3 Claims 1 is the sole independent claim
and reads as follows:
1. A method for improving Arabidopsis thaliana plant
tolerance to a drought stress, the method comprising:
introducing a transformation vector comprising a
nucleotide sequence encoding the amino acid sequence of
SEQ ID N0:2 into a cell of the A. thaliana plant; and
obtaining a transgenic A. thaliana plant exhibiting
improved tolerance to a drought stress from the cell of the
A. thaliana plant.
The claims stand rejected as follows:
Claims 1-3 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Ko, 4 Kosarev, 5 and NCBI. 6
3 Claims 4--13 are pending in the application but have been withdrawn from
consideration. Final Act. 1.
4 Ko et al., Upregulation of an Arabidopsis RING-H2 gene, XERICO,
confers drought tolerance through increased adscisic acid biosynthesis, The
Plant Journal, Vol. 47, 343-355 (2006) ("Ko").
5 Kosarev et al., Evaluation and classification of RING-finger domains
encoded by the Arabidopsis genome, Genome Biology, Vol. 3, No. 4, 1-12
(2002) ("Kosarev").
6 Lin et al., Arabidopsis thaliana ubiquitin-protein ligase RNF 115/126
(RHClA) mRNA, complete eds, Journal ofNature, Vol. 402, 761-768, NCBI
Reference No. NM_201923.3 (2011) ("NCBI").
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Application 14/258,908
Claims 1-3 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Abad, 7 NCBI and Ko.
DISCUSSION
Ko combined with Kosarev and NCBI
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Ko combined with Kosarev and
NCBI.
The Examiner finds that Ko "teaches that the upregulation of an
identified Arabidopsis RING-H2 gene confers drought tolerance in
transgenic Arabidopsis thaliana plants when compared with wild-type
plants. Final Act. 3. The Examiner finds that Ko "teaches that many RING-
H2 proteins function as part of the E3 ubiquitin ligases ... and suggests
further testing of the identified Arabidopsis RING-H2 gene to determine
whether it can serve as an ubiquitin ligase." Id. at 4. The Examiner finds
that while Ko does not teach the expression of the gene and protein of SEQ
ID Nos: 1-2 of the present application, the claimed methods and
compositions would have been obvious. Id.
The Examiner finds that Kosarev relates to an evaluation and
classification of RING-finger domains encoded by the Arabidopsis genome.
Id. The Examiner finds that Kosarev teaches a protein identical to the
claimed protein that has ubiquitin ligase activity. Id. The Examiner finds
7 Abad et al., US 2006/0041961 Al; published Feb. 23, 2006 ("Abad").
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that NCBI teaches that the sequence for A. thaliana ubiquitin-protein ligase
has been available since 2011. Id.
The Examiner concludes
Given KO teaches that the upregulation of Arabidopsis
RING-H2 gene confers drought tolerance in transgenic
Arabidopsis thaliana plants, and teaches that RING-H2 proteins
function as E3 ubiquitin ligases; and given KOSAREV
evaluates and classifies the Arabidopsis proteins with RING-
finger domains that exhibit ubiquitin ligase activity, and teaches
the protein of At2g40830 (100% identical to instant SEQ ID
N0:2); it would have beenprimafacie obvious and within the
scope of an ordinary skill in the art at the time of filing to use
the compositions and methods taught by KO and KOSAREV,
and to transform Arabidopsis plants using the polynucleotide
encoding the ubiquitin-protein ligase RNFI 15/126, i.e., RING-
H2 finger CIA protein (At2g40830); thus arriving at the
Applicants' invention with a reasonable expectation of success,
and without any surprising results. Obviously, one of ordinary
skill in the art would have been motivated to do so for the
purpose of obtaining Arabidopsis thaliana plants with improved
drought stress tolerance.
Id. at 5.
Appellants contend that the reference do not teach or suggest the steps
of introducing a transformation vector comprising a nucleotide sequence
encoding the amino acid sequence SEQ ID N0:2 into a cell of an A. thaliana
plant and obtaining the transformed plant. Appeal Br. 6. Appellants
contend that the Examiner improperly ignores the requirement that the
transformed plant have improved drought stress. Id. at 7.
Appellants contend that the Examiner misconstrues the references in
that there is no RING-H2 gene ofRING-H2 protein. Id. at 7. Appellants
contend that RING refers to a domain found in certain proteins and not to
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Application 14/258,908
the protein themselves. Id. Appellants contend that since there is not a
RING-H2 gene, the rejection is improper. Id.
Appellants also contend that Ko does not provide a correlation
between the RING-H2 domain present in the XERICO gene and drought
tolerance. Id. at 8.
With respect to Kosarev, Appellants contend that Kosarev suggests
only that the recited sequence might have ubiquitin ligase activity and is
silent as to whether the recited sequence has any activity in A. thaliana. Id.
Appellants contend that nothing in the record supports the Examiner's
contention that the RING-H2 motif confers drought tolerance. Appellants
cite to Park, 8 and Y ang9 as evidence that not all ES ubiquitin ligases
improve drought stress. Id. at 9.
Principles of Law
"In rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
8 Park, et al. RING Type E3 Ligase CaAIRJ in Pepper Acts in the
Regulation of ABA Signaling and Drought Stress Response, 56 Plant Cell
Physiol., 1808 (2015) ("Park").
9 Yang, et al., Arabidopsis C3HC4-RING finger E3 ubiquitin ligase
AtAIRP4 positively regulates stress-response abscisic acid signaling, 58 J
Integrat.Plant Biol. 67 (2016) ("Yang").
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A proper § 103 analysis requires "a searching comparison of the
claimed invention-including all its limitations-with the teaching of the
prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
Analysis
We have considered the arguments advanced by the Examiner and
Appellants and conclude that the Examiner has not established a prima facie
case of obviousness. The Examiner has not established that one skilled in
the art would understand that inserting a nucleotide encoding for the protein
of SEQ ID N0:2 would result in a transgenic plant exhibiting improved
tolerance to drought stress.
Ko teaches the transformation of A. thaliana using a vector containing
the XERICO gene. Ko, 344 and 352. The resulting plants exhibit improved
tolerance to drought stress. Id. 347--48. Ko teaches that the question of
whether XERICO can serve as an ubiquitin ligase remains unanswered. Id.
at 351.
We agree with the Examiner that Kop teaches the steps of the claimed
method with the exception of the use of a gene which encodes for the protein
of SEQ ID N0:2. Final Act. 2. We also agree that SEQ ID N0:2 was
known at the time of the invention and the protein was known to be a
ubiquitin ligase. Final Act. 4; NCBI 1. We do not agree with the Examiner
that it would have been obvious to substitute the gene for SEQ ID N0:2 for
XERICO to produce an A. thaliana plant with improved drought tolerance.
The Examiner has not pointed to any evidence in the record nor have
we discerned any teaching in the evidence relied upon by the Examiner that
would lead one skilled in the art to substitute the SEQ ID N0:2 gene for the
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XERICO gene. 10 As shown by Kosarev, the protein SEQ ID N0:2,
At2g40830, has been classified in cluster 2.2 in that it shares structural
similarities to the other proteins in the cluster. Kosarev, 6 and 8 (Table 3).
XERICO encodes for protein At2g04230. Ko, 344. That protein is listed as
unique in Kosarev, indicating that in is structurally different from the protein
identified in the claims. Kosarev, 10. Nothing in Kosarev teaches that the
claimed sequence has any relationship to drought stress.
NCBI is similarly silent as to drought stress. As Appellants points
out, NCBI merely teaches that SEQ ID NO: 1 encodes for a known ubiquitin
ligase. Appeal Br. 6. Nothing in NCBI discloses that the gene is related to
drought tolerance. Nothing in the cited reference would lead on skilled in
the art to substitute the gene encoding for SEQ ID N0:2 for XERICO in the
method of Ko.
The Examiner addresses this issue by noting that drought tolerance is
merely an intended result of the method and does not limit the claims. Ans.
10. We do not agree.
While the preamble of claim 1 recited drought tolerance as an
outcome of the recited method, the obtaining a drought tolerant plant is also
a step if the method. Thus drought tolerance is not merely an intended
outcome but is an affirmative limitation of the method. "When limitations in
the body of the claim rely upon and derive antecedent basis from the
preamble, then the preamble may act as a necessary component of the
10 Yang teaches that certain E3 ubiquitin ligases do have an effect on
drought tolerance. Yang 67. Yang, however, was published in 2015, after
April 22, 2014, the effective filing date of the present application.
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claimed invention." Eaton Corp. v. Rockwell International Corp., 323 F.3d
1332, 1339 (Fed. Cir. 2003).
The Examiner also contends that one skilled in the art would have
been motivated to make the substitution as SEQ ID N0:2 encodes for a
ubiquitin ligase and it would have been obvious to substitute one ubiquitin
ligase for another. Ans. 11-12. We are not persuaded. Nothing in the
present record teaches that XERICO encodes for an ubiquitin ligase. The
Examiner has failed to identify an appropriate reason why one skilled in the
art would make the proposed substitution.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that the subject matter of the claims would have
been obvious over Ko combined with Kosarev and NCBI.
Abad combined with NCBI and Ko.
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Abad combined with NCBI and
Ko.
The Examiner finds that Abad teaches "a method of producing
transgenic plants, which comprises transformation with a gene construct or
expression cassette comprising a nucleotide sequence of SEQ ID N0:37
from Arabidopsis thaliana; this sequence is 100% identical to instant SEQ
ID NO: 1." Final Act. 6. The Examiner finds that "[ t ]he nucleotide sequence
of SEQ ID N0:37, taught by ABAD, encodes the polypeptide of SEQ ID
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N0:276; this polypeptide is 100% identical to instantly claimed SEQ ID
N0:2." Id. The Examiner finds that Abad teaches the use of transformation
vectors to produce transgenic plants including A. thaliana. Id. at 7. The
Examiner finds that Abad teaches using drought tolerance screens to identify
drought tolerant plants. Id.
The Examiner finds "[t]he nucleic acid of SEQ ID N0:37, and the
encoded protein of SEQ ID N0:276, taught by ABAD, would have the
property of improving Arabidopsis thaliana tolerance to drought stress,
because they contained all the structural elements recited in the instant
claims." Id.
The Examiner cites to the teachings of Ko and NCBI discussed above.
The Examiner concludes
Given ABAD teaches transgenic Arabidopsis plants that
have increased yield under various abiotic stress conditions
(including drought), teaches plant transformation with a gene
construct or expression cassette that comprises SEQ ID N0:37
(100% identical to instant SEQ ID NO:l, and encodes the
protein of SEQ ID N0:2); and given the nucleotide sequence of
SEQ ID N0:37 was publicly available in the GenBank at the
time of filing, as a sequence of the polynucleotide encoding a
ubiquitin-protein ligase, i.e., RING-H2 finger CIA protein; it
would have been prima facie obvious and within the scope of
an ordinary skill in the art at the time of filing to use the
compositions and methods taught by ABAD, and to BLAST®
search ABAD's SEQ ID N0:37 in the GenBank, thus
discovering 100% match with the sequence NM_201923.3, and
identifying it as a RING-H2 finger CIA protein.
Given KO teaches that the upregulation of Arabidopsis
RING-H2 gene confers drought tolerance in transgenic
Arabidopsis thaliana plants, and teaches that RING-H2 proteins
function as E3 ubiquitin ligases; it would have been obvious to
one of ordinary skill in the art to upregulate the expression of
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ABAD's SEQ ID N0:37 in Arabidopsis plants for the purpose
of obtaining plants with improved drought stress tolerance; thus
arriving at the Applicants' invention with a reasonable
expectation of success, and without any surprising results.
Id. at 7-8.
Appellants contend that while Abad discloses incorporating various
nucleotide sequences into A. thaliana plants including the sequence which
encodes for protein SEQ ID N0:2, Abad does not teach or suggest that the
insertion of the nucleotide results in a drought tolerant plant. Appeal Br. 11-
12. Appellants contend that, for the reasons discussed above, neither Ko nor
NCBI teach or suggest that the peptide SEQ ID N0:2 induces drought
resistance. Id. Appellants contend that Ko teaches that a completely
different peptide induces drought resistance. Id.
Appellants contend that the Examiner's obviousness analysis is in
error. Id. at 13-15. Appellants contend that the Examiner improperly
equates the presence of a RING motif with the ability to confer drought
tolerance. Id. at 14.
Analysis
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established the
subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over Abad combined with
NCBI and Ko. Appellants have not produced evidence showing, or
persuasively argued, that the Examiner's determinations on obviousness are
incorrect. Only those arguments made by Appellants in the Briefs have been
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considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have identified claim 1
as representative; therefore, all claims fall with claim 1. We address
Appellants' arguments below.
Appellants contend that none of the references teach or suggest that
the peptide SEQ ID N0:2 confers drought tolerance. Appeal Br. 13.
Appellants contend that Ko is directed to a different peptide that the one
recited in claim 1. Id. Appellants contend that Abad only teaches that SEQ
ID N0;2 confers tolerance to heat stress which is not the same as drought
tolerance. Id. at 15. Appellants also contend that while Abad does identify
certain peptides which confer drought tolerance, the peptide SEQ ID N0:2 is
not one of them. Id.
We have considered Appellants' arguments and are not persuaded that
the rejection is improper. Claim 21 of Abad reads in part
transgenic plants grown from said seed exhibit increased yield
as compared to similar plants without the recombinant DNA
when said plants are grown in a yield-limiting environment of
water deficit stress and said protein has the function of the
protein with an amino acid sequence selected from the group
consisting of SEQ ID NO: 241,243,258,268 through 294,298,
307,312,345 through 357,358,359,367 through 369,372
through 374, 376, 390, 395, 398 through 424, 435, 439, 463
through 478, and homologs thereof.
Abad, 29. A comparison of SEQ ID N0:2 with the sequences recited in
Abad reveals that SEQ ID N0:27 6 of Abad is the same and SEQ ID N0:2 in
claim 1. Final Act. 6. SEQ ID N0:276 is within the range of sequences
identified in claim 21 oof Abad as exhibiting increased yield when grown in
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an environment of water deficit stress. Abad, 29. Thus Abad teaches that
SEQ ID N0:276 induces drought tolerance. Ans. 15-16.
Appellants contend that neither Ko nor NCBI teach that SEQ ID N0:2
induces drought tolerance. Appeal Br. 13. Appellants contend that Ko is
directed to a gene that encodes for a different peptide. Appeal Br. 12.
Appellants argue that none of the cited reference show that the presence of a
RING motif in a sequence indicates that the resulting peptide will induce
drought tolerance.
We agree with Appellants regarding the teachings of Ko and NCBI, as
discussed above. Abad teaches that the peptide sequence recited in claim 1
induces drought tolerance. Thus the combined references, read in their
entirety teach the claimed method. "In determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) ( quotations omitted).
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious in view of Abad combined with NCBI and Ko.
Claims 2 and 3 have not been argued separately and therefore fall with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We reverse the rejection under 35 U.S.C. § 103(a) based on the
combination of Ko, Kosarev and NCBI.
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Application 14/258,908
We affirm the rejection under 35 U.S.C. § 103(a) based on the
combination of Abad, NCBI and Ko
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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