Ex Parte Tissot et al

Patent Trial and Appeal Board

Apr 20, 2017

10538130 (P.T.A.B. Apr. 20, 2017)

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.
10/538,130 06/29/2006 Ghislaine Tissot 037759.00016 1355
4372 7590 04/24
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
EXAMINER
KUBELIK, ANNE R
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GHISLAINE TISSOT, NATHALIE DUFOURMANTEL,
FREDERIC GARCON, JEAN-MARC FERULLO,
and BERNARD PELISSIER
Appeal 2015-006391
Application 10/538,130
Technology Center 1600
Before TAWEN CHANG, TIMOTHY G. MAJORS,
and RACHEL H. TOWNSEND, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered January 26, 2017
(“Decision”). Appellants argue the Board misapprehended Appellants’ use
of post-filing publications, as well as Appellants’ arguments regarding
unclaimed insertion sites. (Req. Reh’g 2-A.) Appellants also argue the
Board overlooked and misapprehended the inventors’ work concerning the
claimed invention. (Id. at 5.) Appellants have not persuasively shown that
the Board overlooked or misapprehended the matters alleged.
The Request for Rehearing is, accordingly, DENIED.
Appeal 2015-006391
Application 10/538,130
Appellants contend “the Board misapprehended (1) Appellant’s
ability to rely on post-filing evidence; and (2) the relevance of this evidence
in supporting Appellant’s arguments.” {Id. at 4.) More specifically,
according to the Appellants, “the Board’s conclusion that the post-filing
publications cannot ‘demonstrate what the person of ordinary skill in the art
would have known or reasonably expected at the time of the invention’ is
legally erroneous.” {Id. at 2.)1 Appellants also assert, the “post-filing
evidence establishes . . . that Maliga’s ‘preferred’ insertion site is unsuitable
in soybeans, plastid genomes are not ‘highly’ conserved among all plants,
and prior to the application, plastid transformation in major crops, such as
soybean, did not produce fertile plants.” {Id.)
Appellants’ contentions are unpersuasive. Contrary to Appellants’
assertion, the Board did not conclude post-filing publications “cannot”
evidence an earlier state of the art. We noted that Appellants’ brief on
appeal did not persuasively indicate how the post-filing references reflected
“the perspective and expectation of the skilled artisan at the time of the
invention,” e.g., demonstrating failed efforts or evidence of inadequate
knowledge at the time of filing as related to the teachings of Maliga and von
Allmen, but instead focused on the inventors’ own work in overcoming
problems encountered. (Decision 8—10 (citing Appeal Br. 7—10).) We
explained that Appellants’ evidence did not describe problems or challenges
1 In support, Appellants cite Plant Genetic Sys. NV v. DeKalb Genetics
Corp., 315 F.3d 1335, 1344 (Fed. Cir. 2003) and In re Hogan, 559 F.2d 595,
605 (CCPA 1977). (Req. Reh’g 2.) Although both these cases are related to
the use of post-filing evidence for an enablement analysis under § 112, first
paragraph, we recognize that post-filing publications may sometimes be
relied upon in other contexts. See Hogan, 559 F.2d 605, n. 17.
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Appeal 2015-006391
Application 10/538,130
known to the ordinarily skilled person concerning the claimed tmV-rpsl2/7
insertion site — a site exemplified and described in Maliga as “particularly
useful” — before Appellants’ invention. {Id. and 6—7, 10.) In contrast,
Appellants’ brief focused on the inventors’ discovery as evidenced in post­
filing publications that certain unclaimed insertion sites did not work well in
soybean (Br. 7—9). As explicated in our Decision, Appellants failed to
demonstrate that such information was known to skilled persons prior to the
invention or even, if known, how that would have a bearing on the explicit
teaching of Maliga concerning a different insertion, which is the one
claimed. (Decision 9-10.) Appellants provided argument but insufficient
persuasive evidence showing that the post-filing publications reflected the
state of the art at the time of invention and that a skilled person would have
had no reasonable expectation of success despite Maliga’s teaching that the
claimed insertion site could be broadly extended to other crop species.
(Decision 4, 6—7.)
In the Request for Rehearing, Appellants argue the Dufourmantel
publication “contradicts Maliga’s teaching that plastid genomes are highly
conserved.” (Req. Reh’g 3 (citing Dufourmantel at 480.) But Appellants
did not show in the Appeal Brief, or now, that the alleged lack of
conservation (e.g., about the unclaimed rbcL-accD site in soybean) was
known to other skilled persons before Dufourmantel published. In the
Appeal Brief, Appellants describe this as a problem “the inventors found.”
(Appeal Br. 8.) The authors of Dufourmantel and the inventors of the
present application overlap (Req. Reh’g 3 n.2), and Appellants provided
insufficient persuasive evidence of broader knowledge of the alleged lack of
conservation before Dufourmantel published.
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Appeal 2015-006391
Application 10/538,130
Appellants also argue, regarding Dufourmantel and its mention of a
study by Zhang2, that “before the application was filed . . . transformation of
soybean was ‘attempted,’ ‘but no whole and fertile plants were
regenerated.’” (Req. Reh’g 3 (citing Dufourmantel at 480).) This is newly
raised argument and evidence. So the Board did not misapprehend it. 37
C.F.R. § 41.52(a)(1). Indeed, the only specific citation to Dufourmantel in
Appellants’ brief was to page 482 — again regarding the inventors’ apparent
discovery that certain insertion sites did not work well in soybean. (Br. 7.)
Appellants did not cite Zhang at all. Appellants have not explained why this
argument falls within an exception in 37 C.F.R. § 41.52(a)(2) through (a)(4).
Appellants also point to Daniell, published in 2005, and contend it
credits Dufourmantel, i.e., the inventors, with the first successful
transformation in soybean. (Req. Reh’g 3.) Daniell discloses “[t]he first
successful. . . generation of fertile chloroplast transgenic plants of soybean
was reported by Dufourmantel et aV (Daniell 242, 2nd col.)3 This too is
new argument, as are Appellants’ contentions regarding alleged pre-filing
“failures” and “limitations” in Daniell. (See Req. Reh’g 3; see also Br. 7
(“[t]he site most often reported in the literature was not the tmV-rpsl2/7 site,
but the tml-tmA and the rbc-accD sites”) citing Daniell Tables 1 and 2.) In
any event, “[t]hat the inventors were ultimately successful is irrelevant to
whether one of ordinary skill in the art, at the time the invention was made,
would have reasonably expected success.” Life Techs., Inc. v. Clontech
Labs., Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000).
2 (See Dufourmantel 480 (citing “Zhang et al. (2001a)”).)
3 Inventor Nathalie Dufourmantel is a co-author of the Daniell publication.
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Appeal 2015-006391
Application 10/538,130
Appellants further contend the Board misapprehended the arguments
concerning other vectors and insertion sites. (Req. Reh’g 4.) Appellants
contend they did not seek to use the cited publications to show a teaching
away, but instead to show that the skilled person would not have had a
reasonable expectation of success. We are not persuaded the Board
misapprehended Appellants’ argument. Quite the opposite, we specifically
recognized “Appellants [] argue[d] there was no reasonable expectation of
success in combining Maliga and von Allmen . . . because other vectors and
insertion sites were known” and then we proceeded to discuss Appellants’
evidence purporting to show that some unclaimed vectors did not work well
in soybean. (Decision 8—9 (emphases added).) We simply disagreed that
Appellants argument and evidence negated the reasonable expectation of
success about the claimed insertion site that was provided in the prior art.
Finally, Appellants argue the Board overlooked and misapprehended
the inventors’ work. (Req. Reh’g 5.) We disagree. We explained (Decision
8) that “[t]he path that leads an inventor to the invention is expressly made
irrelevant to patentability by statute.” Life Tech., 224 F. 3d at 1325.
Nevertheless, we also adopted the Examiner determination that, inter alia,
Appellant has not explained why discovering the sequence was
incorrect was critical to successful soybean transformation. One
of ordinary skill in the art does not synthesize] each base of a
vector chemically, de novo. One of ordinary skill in the art uses
portions of other vectors and/or PCRs them up from genomic
DNA. In the instant situation, one of ordinary skill in the art
would make primers based on von Allmen’s sequence to make
one flanking region comprises the 16SrRNA and comprising
rpsl2/7[] another. Because the flanking regions were amplified
from genomic plastid DNA, which comprises SEQ ID NO: 1 and
2 in the [T]mV-rps 12/7 region, they would inherently
correspond to sequences comprising SEQ ID NO: 1 and 2. ...
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Appeal 2015-006391
Application 10/538,130
Appellant has not explained why sequencing the region was []
more than routine experimentation.
(Ans. 7—8; Final Act. 5—6; see also Decision 3, 7—8.) Appellants submitted
no reply brief, and otherwise failed to persuasively dispute the Examiner on
these points. (Br. 10.) Here again, we considered Appellants’ arguments,
but on the present record we were persuaded that the preponderance of the
evidence supported the Examiner’s conclusion of obviousness.
In sum, Appellants have not sustained their burden of showing that we
misapprehended or overlooked relevant points of fact or law in arriving at
our Decision. Thus, although we have considered the Request for Rehearing
and reconsidered the Decision, we deny Appellants’ request for relief from
that Decision.
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).
REHEARING DENIED
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