Ex Parte Laurie

Board of Patent Appeals and Interferences

Sep 22, 2010

10898546 (B.P.A.I. Sep. 22, 2010)

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.
10/898,546 07/22/2004 Cathy C. Laurie 38-77(52900)H 2927
27161 7590 09/23/2010
MONSANTO COMPANY
800 N. LINDBERGH BLVD.
ATTENTION: GAIL P. WUELLNER, IP PARALEGAL, (E1NA)
ST. LOUIS, MO 63167
EXAMINER
ROBINSON, KEITH O NEAL
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
09/23/2010 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 CATHY C. LAURIE
____________

Appeal 2010-004839
Application 10/898,546
Technology Center 1600
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1

This appeal under 35 U.S.C. § 134 involves claim 1, the only pending
claim in this application. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-004839
Application 10/898,546

2
STATEMENT OF THE CASE
Claim 1 is directed to a method of identifying oil-associated QTLs2 in
maize and is reproduced in the “Claims Appendix” of Appellants’ Brief
(App. Br. 10).
The rejections presented by the Examiner follow:
1. Claim 1 stands rejected under 35 U.S.C. § 101 as lacking utility and
§ 112, first paragraph, for lack of enablement based on the finding of lack of
utility.
2. Claim 1 stands rejected under the enablement provision of 35 U.S.C.
§ 112, first paragraph.
2. Claim 1 stands rejected under 35 U.S.C § 103(a) as unpatentable over
Berke.3
We reverse.
Utility:
ISSUE
Does the evidence of record support the Examiner’s finding that
Appellant’s claimed invention lacks patentable utility?
FINDINGS OF FACT
FF 1. The Examiner finds that “the instant claim encompasses a process of
basic research drawn to identifying markers from a population of maize
plants by determining markers associated with oil-informative markers”
(Ans. 5).

2 “‘Quantitative Trail Locus (QTL)’ means a locus that controls to some
degree numerically representable traits that are usually continuously
distributed” (Spec. 4: 3-4).
3 Terry G. Berke et al., Quantitative Trait Loci for Flowering, Plant and Ear
Height, and Kernel Traits in Maize, 35 CROP SCI. 1542-1549 (1995).
Appeal 2010-004839
Application 10/898,546

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FF 2. The Examiner finds that Appellant’s “disclosure fails to provide a
teaching of a substantial use of [the markers listed in Table 3] . . . or the
claimed ‘at least 40 loci’” (Ans. 3).
FF 3. The Examiner finds that “simply identifying potential markers does
not have specific utility” (id.).
FF 4. The Examiner questions whether the markers listed in Table 3 of
Appellant’s Specification are “linked to high oil yielding traits, low oil
yielding traits, housekeeping genes or something else” (id.).
FF 5. Appellant’s Specification discloses that
The ability to breed or develop transgenic plants with improved
traits depends in part on identification of genes or QTLs
associated with a trait. The unique maize sequences disclosed
herein are useful as mapping tools to assist in plant breeding, in
gene and QTL discovery, as markers in marker trait association
and molecular breeding.

(Spec. 1: 28-31.)
ANALYSIS
Appellant contends that the claimed invention is drawn to a method
and that the “products of the method are ‘oil-associated QTSs’ which have a
well established utility” (App. Br. 6; see also FF 5). As Appellant explains,
“[c]orn breeders seek desirable oil phenotypes by combining alleles in their
plant populations to produce a desired level of oil” (id.). We agree.
CONCLUSION OF LAW
The evidence of record fails to support the Examiner’s finding that
Appellant’s claimed invention lacks patentable utility.
The rejection of claim 1 under 35 U.S.C. § 101 as lacking utility and
§ 112, first paragraph, for lack of enablement based on the finding of lack of
utility is reversed.
Appeal 2010-004839
Application 10/898,546

4
Enablement:
ISSUE
Does the evidence of record support the Examiner’s conclusion that
undue experimentation would be required to practice the claimed invention?

FINDINGS OF FACT
FF 6. The Examiner finds that Appellant’s
[S]pecification does not provide any guidance as to which of
the claimed ‘at least 40 loci’ are used in the claimed method of
identifying oil-associated QTLs in maize. Nor is it clear what
the markers represent. Are they associated with high oil yield,
low oil yield, housekeeping genes, or something else?

(Ans. 7.)
ANALYSIS
Appellant contents that Table 3 of her Specification “discloses 186
polymorphic markers at more than 40 loci on the ten maize chromosomes.
The percent oil and probability value (indicating significance) show that the
markers are ‘oil informative’” (App. Br. 9). We agree.
CONCLUSION OF LAW
The evidence of record fails to support the Examiner’s conclusion that
undue experimentation would be required to practice the claimed invention.
The rejection of claim 1 under the enablement provision of 35 U.S.C.
§ 112, first paragraph, is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
Appeal 2010-004839
Application 10/898,546

5
FINDINGS OF FACT
FF 7. The Examiner finds that Berke does not teach “a set of oil
informative allelic polymorphic markers from at least 40 loci from the set of
polymorphic markers listed in Table 3” as required by Appellant’s claim 1
(Ans. 8).
FF 8. The Examiner finds that Berke does “teach selecting markers
associated with oil QTLs . . . and one of ordinary skill in the art would have
understood how to select markers possibly associated with oil QTLs based
on the teachings of Berke” (Ans. 8-9).
ANALYSIS
Appellant contends that the claimed “method requires the use of a set
of oil informative markers from at least 40 loci” and “[s]ince Berke discloses
only 31 markers in 11 loci, Berke does not disclose [(see FF 7)] and cannot
suggest markers from at least 40 loci or their use in identifying oil-
associated QTLs” (App. Br. 3). We agree.
The Examiner acknowledges that the loci are not from the set listed in
Table 3, as required by the claim (FF 7). While the Examiner finds that “one
of ordinary skill in the art would have understood how to select markers
possibly associated with oil QTLs based on the teachings of Berke” (FF 8),
the Examiner failed to establish an evidentiary basis on this record to
support a conclusion that one of ordinary skill in the art would have selected
those markers required by Appellant’s claimed invention based on Berke’s
teaching.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
Appeal 2010-004839
Application 10/898,546

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The rejection of claim 1 under 35 U.S.C § 103(a) as unpatentable over
Berke is reversed.

REVERSED

lp

MONSANTO COMPANY
800 N. LINDBERGH BLVD.
ATTENTION: GAIL P. WUELLNER, IP PARALEGAL, (E1NA)
ST. LOUIS MO 63167