Ex Parte Taylor et al

Board of Patent Appeals and Interferences

Apr 29, 2010

09386605 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTOPHER G. TAYLOR and YONG HUANG
__________

Appeal 2009-0105471
Application 09/386,605
Technology Center 1600
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Decided:2 April 30, 2010
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Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method for
producing plants with transgenic root tissue. The Examiner rejected the
claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Monsanto Company is the real party in interest (App. Br. 2).
2 Oral argument was presented in this case on April 14, 2010.

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STATEMENT OF THE CASE
Claims 1 and 8-11 stand rejected and are on appeal (App. Br. 2).
Claim 1 is representative and reads as follows:
1. A method for producing a stably transformed chimeric
dicotyledonous plant having transgenic root tissue, the method
comprising the steps of:
obtaining a stem or hypocotyl explant from a selected
dicotyledonous plant species, wherein the hypocotyl explant has a cut
end below the cotyledon;
transforming the stem or hypocotyl explant with Agrobacterium
rhizogenes containing an exogenous nucleic acid sequence capable of
being transferred to the explant, wherein the cut end of the hypocotyl
explant is contacted with the Agrobacterium rhizogenes;
culturing the transformed explant in a root initiating media to
produce transformed roots; and
transferring the transformed roots to soil or a hydroponic
environment to produce a chimeric dicotyledonous plant having
transformed roots and wild type shoots, stems and leaves, wherein the
dicotyledonous plant is soybean.

The sole rejection for our review is the Examiner’s rejection of claims
1 and 8-11 as obvious in view of Trulson,3 Savka,4 and Simpson5 (Ans. 3-7).
DISCUSSION
The Examiner cites Trulson as disclosing a process that uses
Agrobacterium rhizogenes to generate cucumber plants with transgenic root
tissue, and wild type shoots, stems, and leaves, but concedes that Trulson

3 EP 0 262 972 A2, published April 6, 1988.
4 M.A. Savka et al., Induction of Hairy Roots on Cultivated Soybean
Genotypes and Their Use to Propagate the Soybean Cyst Nematode, 80
PHYTOPATHOLOGY 503-508 (1990).
5 Robert B. Simpson et al., A disarmed binary vector from Agrobacterium
tumefaciens functions in Agrobacterium rhizogenes, 6 PLANT MOLECULAR
BIOLOGY 403-415 (1986).
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“does not teach soybean” as recited in claim 1 (Ans. 6). The Examiner cites
Simpson as disclosing the use of A. rhizogenes to transform soybeans, and
Savka as disclosing A. rhizogenes strain K599 as the most effective strain of
the organism for inducing hairy roots in soybean (id.).
Given these teachings, the Examiner concludes that an ordinary
artisan would have considered it prima facie obvious to apply Trulson’s
methods to soybeans (id. at 6-7). The Examiner reasons in particular that it
would have been desirable to select plants with transformed roots, but wild
type shoots, stems, and leaves, so as to confer pest resistance to the root
tissue, and also “due to the resistance of countries to import genetically
modified food . . . so that the[] soybeans could still be used for export” (id.
at 5).
Appellants contend, among other things, that Trulson’s process does
not include the claimed steps of inducing root growth on a hypocotyl explant
transformed with A. rhizogenes, and then, once transformed roots are
produced, transferring the roots to soil or a hydroponic medium to produce a
chimeric plant with transformed roots, but wild type shoots, stems, and
leaves (App. Br. 6).
The Examiner disagrees, and urges that Trulson “use[s] an explant
capable of maintaining a non-transgenic stem, leaves and other parts of the
plant, as evidenced by the results under selection of plantlets with
kanamycin” (Ans. 10). Thus, the Examiner argues, the “only difference is in
the selecting of such chimeric plants rather than throwing them away and
such a selection is suggested by Savka et al as discussed in the office action,
wherein the targeting of root pests such as nematode are desired and are
known to attack the roots of soybeans” (id.).
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We conclude that Appellants have the better position.
While it is true that claims are to be given their broadest reasonable
interpretation, the Examiner must “determine[] the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed.Cir.2005) (emphasis added) (quoting In re
American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Claim 1 requires the soybean roots transformed by A. rhizogenes to be
transferred to soil or a hydroponic environment to produce a chimeric plant
with transformed roots but wild type shoots, stems, and leaves. As
Appellants argue, and the Specification explains, this is accomplished by
transferring not only the transformed roots, but the attached hypocotyl
explant, to the soil or hydroponic setting. See Spec. 7-8:
Once roots begin to grow, the entire plant may be planted
in soil or grown hydroponically. . . . All transgenic root growth
is supported by the resources produced in the wild type shoots,
stems, and leaves. This method relies on the cotyledons or
excised shoots to provide the necessary resources for hairy root
production, thus eliminating the need for sugars or other carbon
sources that would allow for easy contamination of the media.

This process is reflected in the claim language reciting steps of
“culturing the transformed explant . . . to produce transformed roots” and
then “transferring the transformed roots . . . to produce a chimeric . . . plant.”
Thus, when given its broadest reasonable interpretation in light of the
Specification, claim 1 does not encompass processes in which the
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transformed roots are separated from the hypocotyl explant that was
inoculated with A. rhizogenes.
Trulson, however, explicitly discloses that the transformed roots
generated from inoculated hypocotyl explants were “excised” from the
explants, and cultured in a medium allowing the emergence of “embryoids”
on the root surface (Trulson 6). In addition, before being transferred to the
medium ultimately allowing regeneration of whole plants, Trulson’s
embryoids were also “detached” from the transformed roots (id.).
Thus, not only were Trulson’s plants ultimately generated from
excised roots, which is excluded from claim 1, they were also generated
from embryoids that were separated from the roots.
Neither of the secondary references remedies this deficiency. Savka
did not generate intact plants but instead focused on preparing soybean hairy
root cultures via A. rhizogenes transformation, the root cultures being useful
in turn for culturing nematodes (see Savka 503 (abstract)). While Simpson
also described gene vector methods using A. rhizogenes (Simpson 403
(abstract)), the Examiner does not point to, and we do not see, any disclosure
describing methods useful for regenerating whole plants from the
transformed root tissue.
Accordingly, for the reasons discussed, we are not persuaded that the
cited references would have prompted an ordinary artisan to perform the
process required by claim 1, when that claim is given its broadest reasonable
interpretation consistent with the Specification.
We are also not persuaded that Trulson inherently produces the stably
transformed chimeric plants required by claim 1, as the Examiner seems to
argue. We acknowledge that, while Trulson only tested leaf tissue for the
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kanamycin resistance marker of NPT activity (Trulson 6), Trulson also
discloses that kanamycin selection at the root-generating stage produced
roots that regenerated into plantlets lacking NPT activity in the leaves and
therefore wild-type plantlets were not necessarily selected against (id. at 7).
However, Trulson simply did not test the root tissue of the NPT
negative plants to determine whether the roots contained the transgenes, nor
did Trulson explicitly characterize any plants as being chimeric. Given
these facts, and the differences between Trulson’s process and the claimed
process discussed above, we are not persuaded that the evidence of record
supports a finding that Trulson actually produced the stably transformed
chimeric plants required by claim 1.
As we do not agree that the cited references would have prompted an
ordinary artisan to perform a process having the steps recited in claim 1, to
yield the chimeric plant required by claim 1, we reverse the Examiner’s
obviousness rejection of that claim, and its dependents.

REVERSED

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