Ex Parte Reid et al

Board of Patent Appeals and Interferences

Nov 29, 2010

11222712 (B.P.A.I. Nov. 29, 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.
11/222,712 09/08/2005 Peter Ewan Reid 75093/JPW/JW 6889
23432 7590 11/30/2010
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
ROBINSON, KEITH O NEAL
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
11/30/2010 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 PETER EWAN REID, GREGORY ARTHUR CONSTABLE, and
WARWICK NIGEL STILLER
____________

Appeal 2010-004943
Application 11/222,712
Technology Center 1600
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

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 2010-004943
Application 11/222,712

2
This is a decision on the appeal under 35 U.S.C. § 134 by the Patent
Applicant from the Patent Examiner’s rejections of claims 1-16, 20-22, 24,
and 25. The Board’s jurisdiction for this appeal is under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Cotton lint quality is measured by a number of measures
including fibre length, strength and micronaire. Accordingly,
the lint quality is considered higher when the fibre is longer,
stronger and finer when the fibre is fully matured in open boll.
The present invention provides a new G. hirsutum variety
producing lint having long fibre length, as well as good strength
and mid-range micronaire.
(Spec. 1: 24-28.)
Claims 1-16, 20-22, 24, and 25 are pending and stand rejected by the
Examiner as obvious under 35 U.S.C. § 103(a) in view of CSIRO Plant
Industry2, Robinson3, Delta Farm Press4, and Fehr5 (Ans. 3). Claim 1, which
is the only independent claim on appeal is directed to a cotton plant variety
Sicala 350B, also known as line 21 (Spec.6 16:10). Claim 1 reads as
follows:
1. A plant of the cotton (Gossypium hirsutum) variety Sicala
350B, or a cell, tissue or organ thereof, wherein seed of a

2 Department of Agriculture, Fisheries, & Forestry – Australia, CSIRO Plant
Industry, 13 Plant Varieties Journal 9 (2002).
3 Cotton Cultivar 4646B2R, U.S. Patent No. 7,053,281 (filed July 6, 2004)
(issued May 30, 2006).
4 Delta Farm Press, EPA clears Bollgard II for 2003 use, Jan. 10, 2003.
5 Walter R. Fehr et al., Principles of Cultivar Development - Theory and
Technique 362 (McGraw-Hill, Inc. 1987).
6 “Spec.” (Specification) is the written description of the application at issue
in this proceeding.
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representative plant has been deposited under ATCC No. PTA-
7301.

ISSUES
Did the Examiner provide a reason for combining the cited prior to
have made the claimed cotton plant?
If so, did Appellants provide sufficient evidence of “unexpected
results” to establish non-obviousness of the claimed cotton plant when
considered in view of the totality of the evidence?
Given the analyses pertinent to the issues 1 and 2, did the Examiner
err in determining that the claimed cotton plant, with its specific physical
attributes of cotton fiber length and strength, was obvious in view of the
plant breeding process suggested by the prior art?

LEGAL PRINCIPLES
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In making
an obviousness determination, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Supreme Court
instructs us “to look at any secondary considerations that would prove
instructive.” KSR, 550 U.S. at 415. “[W]hen an applicant demonstrates
substantially improved results, as Soni did here, and states that the results
were unexpected, this should suffice to establish unexpected results in the
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absence of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir.
1995).

FINDINGS OF FACT
1. Sicala 350B is cotton plant produced from a breeding process involving
the following steps: crossing DP50BGII (containing Cry1Ac and Cry2Ab
genes) and 96456i (containing Cry1Ac gene) to produce F1 progeny;
crossing the F1 progeny with Sicot 80 and selecting for expression of
Cry1Ac and Cry2Ab, genes coding for insecticidal proteins; and
backcrossing with Sicot 80 (Spec. 13:13-26 & 9:28-31).
2. The resulting progeny were cultivated in a field and assessed for various
characteristics, including cotton fiber length and strength (id. at 13:26-31).
3. Table 1 shows the data collected for 38 plants as compared to the parent
Sicot 80 (id. at 14:2-4)
4. Sicot 350B (line 21) had a fiber length (“len”) of 1.28 and a strength
(“str”) of 34.6 (id. at 15).
5. Sicot 80B had a fiber length of 1.20 and a strength of 32.8 (id.).
6. According to the Specification (id. at 14):
one particular plant, No. 21 in Table 1, provided lint that was
unusually and unexpectedly long and strong, significantly
longer and stronger than for Sicot 80B. Furthermore, this
combination of length and strength was not seen for the initial
parent DP50B either.
7.
The goal of backcrossing is to alter or substitute a single trait or
characteristic in a recurrent parental line. To accomplish this, a
single gene of the recurrent parental line is substituted or
supplemented with the desire [sic] gene from the nonrecurrent
line, while retaining essentially all of the rest of the desired
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genes, and therefore the desired physiological and
morphological constitution of the original line.
(Id. at 6:1-5)
8. The Examiner found that Sicot 80 did not possess the Cry1Ac and
Cry2Ab genes (Ans. 12).

ANALYSIS
Claim 1 is drawn to the cotton plant variety Sicala 350B. The plant
was produced by an initial cross between two parent plants, one of which
expressed both the insecticidal Cry1Ac and Cry2Ab genes and the other
which contained the Cry1Ac gene (FF1). The F1 progeny were crossed with
Sicot 80, a cotton plant lacking either Cry gene (FF1; FF8). Progeny were
selected for expression of Cry1Ac and Cry2Ab, and then backcrossed with
Sicot 80 (FF1). Because of the backcrossing steps which placed the Cry1Ac
and Cry2Ab genes in the genetic background of Sicot 80 (FF7), the
Examiner found that the claimed Sicala 350B is “in essence” Sicot 80 with
the two insecticidal Cry genes (Ans. 4). The Examiner determined that it
would have been obvious to have introduced the Cry genes into Sicot 80 for
the known agronomic advantages of these genes in conferring resistance to
insects and improving cotton yield (id. at 4-5). The Examiner found that the
breeding procedures involving crossing and backcrossing were “existing,”
“known,” and expected to work to produce the claimed plant with the Cry
genes in the genetic background of Sicot 80 (id. at 5-6).
Citing In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995) and In re Bell, 991
F.2d 781 (Fed. Cir. 1993), Appellants contend that the Examiner’s rationale
in relying on a breeding method as support for the obviousness of the
claimed plant “has been disapproved on numerous occasions by the Federal
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Circuit.” (App. Br. 16.) In Deuel and Bell, the claims were drawn to DNA
compounds. Appellants contend that, in Deuel and Bell, it was held that a
general method for cloning a DNA compound was not relevant to the
specific question of whether the specifically claimed DNA compound would
have been obvious. In these cases, the Federal Circuit concluded that the
PTO had improperly focused on the obviousness of a method to clone a
DNA, rather than on the DNA compound which was claimed and whether
the DNA’s structure would have been suggested by the prior art. Deuel, 51
F.3d at 1559.
In analogy, Appellants take the position that the plant is a structure
with physical attributes as was the DNA in Deuel and Bell. Under this legal
theory, to find Sicala 350B obvious, Appellants contend the prior art must
have suggested the plant’s physical attributes of cotton fiber length and
strength.
In making the rejection of the claimed Sicala 350B cotton variety, the
Examiner did not improperly focus on a breeding method. Since Deuel and
Bell, the Federal Circuit has recognized that:
This court cannot, in the face of KSR, cling to formalistic rules
for obviousness, customize its legal tests for specific scientific
fields in ways that deem entire classes of prior art teachings
irrelevant, or discount the significant abilities of artisans of
ordinary skill in an advanced area of art.
In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
The Kubin court affirmed a Board decision in which a claim to a DNA
was found obvious in view of well-known cloning methods that would have
routinely resulted in the claimed DNA, despite the absence of a teaching in
the prior art that would have led persons of ordinary skill in the art to the
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DNA’s specifically claimed structure (i.e., the nucleotide sequence). Kubin,
561 F.3d at 1361.
In our opinion, Kubin applies in these circumstances. The Examiner
determined, and Appellants did not rebut, that breeding procedures to
introduce Cry genes into a parental genetic background (Sicot 80) were in
existence, known in the art, and reasonably expected to result in a plant with
the claimed genetic constitution, i.e., a Sicot 80 background with the Cry1Ac
and Cry2Ab genes. The ordinary skilled worker would have routinely
selected progeny desirable cotton fiber length and strength. It was therefore
unnecessary for the Examiner to show that a plant with the physical
attributes of Sicala 350B would have been predicted or suggested by the
prior art. As in Kubin, obviousness did not require that the structure – or
physical attributes here – be suggested by the prior art.
Appellants also contend that the Examiner used hindsight,
“negativ[ing]” the manner in which the inventors made the invention (App.
Br. 16-17). They assert that the breeding procedure set forth by the
Examiner to have made the claimed cotton plant is not how Sicala 350B was
created (id. at 17).
Claim 1 is directed to a cotton plant, not a method of making it.
“What matters is the objective reach of the claim.” KSR, 550 U.S. at 419.
The claim is not limited to a specific breeding process. Rather, any method
of making the claimed cotton plant would satisfy the claim as long as it
resulted in a plant within the scope of the claim. Consequently, the
Examiner properly relied on the prior art breeding methods taught by, inter
alia, Robinson and Fehr to have made the claimed invention.
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As to the issue of hindsight, the Examiner provided sufficient reasons
as to why persons of ordinary skill in the art would have had reason to cross
CSIRO’s plant with Robinson’s: for the agronomic advantages of adding
the Cry genes possessed by Robinson’s plants to Sicot 80 (Ans. 5).
Appellants did not identify a flaw in the Examiner’s finding that Sicot 80
lacked the Cry1Ac and Cry2Ab genes and his subsequent determination that
Sicot 80 would have benefited from the Cry insecticidal properties.
As the preponderance of the evidence supports the Examiner’s prima
facie obviousness determination, we are compelled to look at the evidence of
secondary considerations. KSR, 550 U.S. at 415. Appellants contend that
the cotton fiber of the claim Sicala 350B variety was unexpectedly long and
strong as compared to the parental Sicot 80. The Examiner rejected this
evidence, arguing that Appellants did not provide “any experimental
evidence that would establish that the differences in results are unexpected
and unobvious and of both statistical and practical significance” (Ans. 7).
The Examiner contends:
Appellant states that cotton line 21 in Table 1 are clearly
different to the length and strength of the other cotton lines
obtained from the same cross (see page 3, lines 5-11of Remarks
filed December 17, 2007); however, this is not persuasive
because there are other lines in Table 1 that appear to not be
significantly different from cotton line 21 in length and
strength. For example, cotton line 79 has a length of 1.25 and a
strength of 33.4 which does not appear to be significantly
different from cotton line 21 which has a length of 1.28 and a
strength of 34.5. In addition, the length and strength of line 21
(i.e., Sicala 350B) does not appear to be significantly different
from the recurrent parent (i.e., Sicot 80) (see page 15, Table 1
of the specification where the length and strength of line 21 are
1.28 and 34.6, respectively compared to 1.20 and 32.8 for the
recurrent parent Sicot 80).
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9
(Id.)
The Examiner has confused variability among the sibling plants
described in Table 1 with statistical significance. Table 1 shows data for 38
different lines of cotton plants produced by the breeding procedures
described in the Specification. These plants differ from each other in
strength, length, and other characteristics reported in Table 1. For example,
line 21, Sicala 350B, has a fiber length of 1.28 and a strength of 34.6, while
line 79 has a length of 1.25 and strength of 33.4 (FF4; Table 1; Ans. 7). The
Examiner concluded these differences were not significant, but did not
provide evidence to support this conclusion. Possibly, the Examiner
believed that because the differences were apparently small (e.g., 1.28 v.
1.25), they could not be meaningful. However, the inventors expressly
stated in the Specification that fiber length and strength were used to assess
fiber quality (Spec. 1:24-28 & 13), and used these measurements to select
Sicala 350B. Thus, the reported differences in Table 1 between the sibling
cotton plants were relied upon by the inventors in choosing the claimed
cotton variety. Based on these differences, the inventors found cotton fiber
from Sicala 350B was “significantly longer and stronger” than the Sicot 80
fiber (FF4-6). The Examiner did not provide evidence or sound scientific
reason for doubting the inventor’s statements.
It is not pertinent that other sibling lines reported in Table 1 have
better length or strength characteristics than the 350B variety (Ans. 7).
These siblings have not been shown to be prior art. The relevant
consideration is whether the results obtained with Sicala 350B were
unexpectedly better than the closest prior art, which in this case is the cotton
plant Sicot 80. As the patent application provided credible factual evidence
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that the cotton fiber of Sicala 350B was unexpectedly better then Sicot 80B,
and stated that such results were unexpected, we conclude that, based on the
totality of the evidence, claim 1 would not have been obvious to a person of
ordinary skill in the art in view of the cited prior art. Soni, 54 F.3d at 751.

CONCLUSIONS OF LAW & SUMMARY
The Examiner did not err in determining that the claimed cotton plant,
with its specific physical attributes of cotton fiber length and strength, was
prima facie obvious in view of a prior plant breeding process. However,
Appellants provided sufficient evidence of “unexpected results” to establish
non-obviousness of the claimed cotton plant when considered in view of the
totality of the evidence. The obviousness rejection of claims 1-16, 20-22,
24, and 25 is reversed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED

Appeal 2010-004943
Application 11/222,712

11

KMF

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