10979542 (P.T.A.B. May. 10, 2013)

Ex Parte Tanaka et al

Patent Trial and Appeal BoardMay 10, 2013

10979542 (P.T.A.B. May. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/979,542 11/02/2004 Hiroshi Tanaka YAMZ 200010US02 2891 27885 7590 05/10/2013 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER PAGE, BRENT T ART UNIT PAPER NUMBER 1638 MAIL DATE DELIVERY MODE 05/10/2013 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 HIROSHI TANAKA, TOSHIAKI KAYANO, MASASHI UGAKI, FUMIO SHIOBARA, NAOTO SHIBUYA, HARUKO ONODERA, KAZUKO ONO, AKEMI TAGIRI, and YAEKO NISHIZAWA __________ Appeal 2011-013627 Application 10/979,542 Technology Center 1600 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 3, 8, 9, 14, 15, 18-28, 31-34, and 37-40, directed to a method for obtaining Agrobacterium-mediated transformed rice plants. The claims have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-013627 Application 10/979,542 2 STATEMENT OF THE CASE According to the Specification, a transformed rice plant can be produced more efficiently and quickly by infecting an intact seed, rather than a callus, with Agrobacterium carrying a desired recombinant gene (Spec. 4, 5). Claims 3, 8, 9, 14, 15, 18-28, 31-34, and 37-40 are pending and on appeal. Claims 1, 2, 4-7, 10-13, 16, 17, 21-30, 35, and 36 have been canceled (App. Br. 1). Claim 20 is representative of the subject matter on appeal: 20. A method for obtaining at least one transformed rice plant having roots and leaves in 50 days or less comprising: pre-culturing intact rice seeds on a medium containing an auxin for 4 to 5 days to obtain precultured rice seeds; wherein the pre-culturing step is completed before the seeds dedifferentiate, wherein the pre-cultured seeds are seeds or germinated seeds; infecting the precultured intact rice seeds with Agrobacterium containing a recombinant DNA of interest and incubating the seeds for 2 to 5 days in the dark to obtain infected rice seeds; selecting for seeds containing the DNA of interest by placing, for 14 days, the infected rice seeds on a medium containing a substance which selects for seeds containing the DNA of interest; and regenerating the selected seeds to obtain at least one transformed rice plant having roots and leaves. The Examiner relies on the following evidence: Seiichi Toki, Rapid and Efficient Agrobacterium-Mediated Transformation in Rice, 15 PLANT MOLECULAR BIOLOGY REPORTER 16-21 (1997). P.J. Dale et al., Agroinfection of Wheat: Inoculation of In Vitro Grown Seedlings and Embryos, 63 PLANT SCIENCE 237-245 (1989). Claims 3, 8, 9, 14, 15, 18-28, 31-34, and 37-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Toki and Dale. Appeal 2011-013627 Application 10/979,542 3 ISSUE The issue raised by this appeal is whether the Examiner has established that it would have been obvious for one skilled in the art to pre- culture intact rice seeds in a medium containing an auxin for 4 to 5 days, and to infect the pre-cultured seeds with Agrobacterium before the seeds dedifferentiate, given the teachings of Toki and Dale. FINDINGS OF FACT 1. According to the Specification, “[a] seed being ‘intact’ means that the seed has not been subjected to any artificial manipulations, such as removal of the ovule or scarring of the blastodisk” (Spec. 11: 22 - 12: 3). However, an intact seed can be de-husked (id. at 11: 22-23). 2. The Specification teaches that “the seed to be infected with an Agrobacterium may be a seed on the fourth day to the fifth day after sowing” and “[a]t the time of infection, the seed may already have germinated” (Spec. 6: 2-5). That is, the “intact seed” may be a seedling at the time of infection. 3. Toki discloses a method of producing Agrobacterium-mediated transformed rice plants comprising, in relevant part, culturing de-husked rice seeds in a callus-induction medium containing an auxin (L2,4-D) for two weeks, and infecting the resultant “proliferated calli” with Agrobacterium carrying a marker gene (Toki 17, 18). According to Toki, this method “shorten[s] the period of tissue culture - i.e., the dedifferentiation stage” (id. at 16) required before infection with Agrobacterium. Toki further suggests that “pre-culture of calli in fresh medium for four days prior to infection” is desirable if the calli are slow growing (id. at 18). 4. Rice is a monocotyledon (Spec. 1: 18-19). Appeal 2011-013627 Application 10/979,542 4 5. Dale teaches that many monocotyledonous species, such as Chlorophytum, Narcissus, Gladiolus, and Zea mays (i.e., corn) have been successfully transformed by Agrobacterium (Dale 237, col. 1). 6. Dale discloses a method of producing Agrobacterium-mediated transformed wheat (another monocotyledon) comprising, in relevant part, germinating moistened wheat seeds and infecting 1-4 day old wheat seedlings with Agrobacterium carrying a wheat dwarf virus (WDF) dimer as a marker gene (id. at 238, Materials and Methods). DISCUSSION Toki discloses a method of producing transformed rice plants “that shorten[s] the period of tissue culture - i.e., the dedifferentiation stage” (Toki 16) required before infection with Agrobacterium. Thus, Toki’s method, while shortened, involves callus induction prior to infection with Agrobacterium (FF3), unlike the claimed method in which seeds are cultured for 4-5 days to a point short of dedifferentiation (i.e., short of callus induction) (FF2; claim 20). Dale, on the other hand, discusses Agrobacterium-mediated transformation of monocotyledons generally (FF5), and produces transformed wheat plants without callus induction, by infecting germinated wheat seeds (i.e., 1, 2, 3, and 4-day old seedlings) with Agrobacterium (FF6). Given these disclosures, we agree with the Examiner that it would have been obvious for one skilled in the art to infect rice seedlings (rather than callus tissue) with Agrobacterium given Dale’s teachings. However, we agree with Appellants that neither reference discloses pre-culturing a seed for 4 to 5 days in a medium containing auxin (App. Br. 8), wherein the Appeal 2011-013627 Application 10/979,542 5 pre-culturing step is completed before dedifferentiation occurs. That is, Dale simply germinates moist seeds on filter paper, and infects the resultant 1, 2, 3, and 4-day old seedlings (FF6), while Toki’s 4 day “pre-culture step” occurs after callus induction/dedifferentiation (FF3). Nor has the Examiner explained why one would have pre-cultured the seeds/seedlings in a medium containing auxin for 4 to 5 days without allowing callus to form, rather than simply germinating moist seeds and infecting the resultant seedlings as Dale does. CONCLUSION The Examiner has not established that Toki and Dale teach or suggest pre-culturing intact rice seeds in a medium containing an auxin for 4 to 5 days, and infecting the pre-cultured seeds or seedlings with Agrobacterium before the seeds or seedlings dedifferentiate. Accordingly, we are constrained to reverse the rejection of claims 3, 8, 9, 14, 15, 18-28, 31-34, and 37-40 as unpatentable over Toki and Dale. REVERSED dm