Ex Parte Tomes et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10367417 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DWIGHT T. TOMES, DEPING XU,
HAIYIN WANG, XIAOMU NIU, and IGOR C. OLIVEIRA
__________

Appeal 2010-000648
Application 10/367,417
Technology Center 1600
__________

Before ERIC GRIMES, CAROL A. SPIEGEL, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for making a maize line. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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 2010-000648
Application 10/367,417

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STATEMENT OF THE CASE
Claims 30-32 and 35 are on appeal (App. Br. 1). Claims 23-29 and
36-39 are also pending but have been withdrawn from consideration by the
Examiner (6/20/08 Final Rej. 1). We will focus on claim 30, the only
independent claim on appeal, which reads as follows:
30. A method for making a fast cycle time maize line with a high rate
of transformation efficiency for screening transgenes comprising:
a) crossing a plant from a Gaspe Flint line with a second maize plant
from a GS3(HiII) or A188 line having a high rate of transformation
efficiency;
b) producing inbred progeny from said cross; and
c) selecting inbred progeny that are of miniature plant size capable of
being grown in a four inch pot, have a cycle time of less than 2 ½ months in
combination with a high rate of transformation efficiency, thereby producing
progeny for screening transgenes.
Claims 30-32 and 35 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Koester2 and Zhao3 (Ans. 3).
The Examiner relies on Koester for teaching “a method for developing
maize plants comprising crossing a Gaspe Flint line with another maize
plant,” specifically with B73, “producing inbred progeny from the
aforementioned cross,” and “selecting inbred progeny having early maturity,
namely NC264 and B73G” (id. at 3-4). The Examiner finds that “[o]ne of
ordinary skill in the art would have understood that fast cycle time is
analogous to early maturity” (id. at 4).

2 Ruth P. Koester et al., Identification of Quantitative Trait Loci Controlling
Days to Flowering and Plant Height in Two Near Isogenic Lines of Maize,
33 CROP SCI. 1209-1216 (1993).
3 Zhao et al., US 5,981,840, issued Nov. 9, 1999.
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The Examiner relies on Zhao for teaching “that Hi-II maize lines are
derived from both A188 and B73” and “maize plants with the A188
genotype are useful for the development of corn transformation methods
since it is known to be highly responsive in producing a friable type of
embryogenic callus that lends itself to tissue culture” (id.). The Examiner
concludes that it would have been obvious “to cross a Gaspe Flint line with a
second maize line from GS3(HiII) or A188 . . . based on the combined
teachings of Koester . . . and Zhao” (id. at 4-5).
Appellants argue that “there is no apparent reason for one skilled in
the art to cross a Gaspe Flint plant with a Hi-II plant in the absence of
Appellant[s’] disclosure” (App. Br. 5). Instead, Appellants argue that a
“person of ordinary skill, upon reading the cited references would not be
motivated to combine these references as these references teach away from
one another” (id. at 6).
Appellants also argue:
there is no expectation a priori that . . . a maize plant from a
Gaspe Flint line crossed with a maize plant from a GS3 (HiII)
or A188 line would yield progeny of miniature size with a cycle
time of less than 2 ½ months in combination with a high rate of
transformation efficiency.
(Reply Br. 5.)
ISSUE
Has the Examiner set forth a prima facie case that it would have been
obvious to cross a plant from a Gaspé Flint line with a plant from a HiII or
A188 line to produce a plant of miniature size, having a low cycle time, and
having a high rate of transformation efficiency with a reasonable expectation
of success?
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FINDINGS OF FACT
1. Koester discloses that the “number of days from planting to
flowering is a trait of interest to maize . . . breeders for its importance in
selecting appropriate hybrid parents, and for its role in the utilization of
unadapted germplasm” (Koester 1209: Abstract).
2. Koester also discloses identifying “quantitative trait loci
(QTLs) controlling days to flowering and two correlated traits, plant height
and total leaf number, in two near isogenic lines (NILs)” (id.).
3. In particular, Koester discloses:
This study used marker analyses of NILs to identify and
characterize chromosomal regions controlling [days from
planting to pollen shed] and the correlated traits, plant height
and total leaf number. The two NILs investigated, NC264 and
B73G, are shorter, earlier versions of the inbred lines SC76 and
B73. The non-recurrent donor parent was Gaspé Flint (GF), a
very early, short maize variety.
(Id. at 1210 & 1209.)
4. In addition, Koester discloses: “NC264 was created by
crossing SC76 to GF, followed by one backcross to GF, four generations of
backcrossing to SC76 alternating with self pollination, and three final
generations of self pollination. . . . A similar scheme was employed for
B73G involving the equivalent of six backcrosses to B73.” (Id. at 1210.)
5. Koester also discloses that “Gaspé Flint is not an inbred line”
(id. at 1211).
6. Zhao discloses that “A188 is a useful genotype for the
development of corn transformation methods, since it is known to be highly
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responsive in producing a friable type of embryogenic callus that lends itself
to tissue culture” (Zhao, col. 5, ll. 30-33).
7. Zhao also discloses that “[s]ignificantly higher transformation
frequencies for genotypes such as the product of A188 crossed to other
inbreds would result in a higher throughput for production of transformed
plants” (id. at col. 2, ll. 8-11).
8. However, Zhao discloses:
A188 is no longer generally considered to be a useful inbred
parent of commercial hybrid corn. A188 is not used directly in
any commercial hybrid and is a poor starting material for
backcrossing into inbreds used as parents of commercial
hybrids. . . . Therefore, the ability to transform only A188-
containing lines is of limited value to the commercial hybrid
corn market.
(Id. at col. 5, ll. 39-50.)
9. Zhao also discloses that a “significant need still exists for
methods to transform non-A188 inbred lines, including inbred lines that are
commercially important for the hybrid corn market” (id. at col. 5, ll. 57-59).
10. In addition, Zhao discloses that the present invention “provides
an improved method for generating a significant increase in Agrobacterium-
mediated transformation frequency for A188-containing lines and for
successfully transforming non-A188 inbreds across a wide range of
genotypes” (id. at col. 7, ll. 28-34).
11. Zhao also discloses that a known method was used to transform
a genotype termed Hi-II, which “is derived from both A188 and a non-A188
inbred, B73,” and that the results, which were “in the same general range of
transformation frequencies as . . . for A188 inbred crosses,” “provided a
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baseline for transformation frequencies that could be used as a comparison
with the transformation protocols of this invention” (id. at col. 7, ll. 44-58).
PRINCIPLES OF LAW
A claim “composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
relevant question is “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.” Id. In
addition, “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” Id. at 420.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted). “[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).
ANALYSIS
Koester relates to identifying “quantitative trait loci (QTLs)
controlling days to flowering and two correlated traits, plant height and total
leaf number, in two near isogenic lines (NILs)” (Finding of Fact (FF) 2). In
conducting this study, Koester crossed a Gaspé Flint plant, a very early,
short maize variety, with a B73 plant (FF 3-4). As described in Zhao, HiII is
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derived from B73 and A188 (FF 11). However, we do not agree that this
connection would have made it obvious to cross a Gaspé Flint plant with a
HiII or A188 plant.
Zhao discloses that “A188 is a useful genotype for the development of
corn transformation methods, since it is known to be highly responsive in
producing a friable type of embryogenic callus that lends itself to tissue
culture” (FF 6). Zhao also discloses that the transformation frequencies of
Hi-II were “in the same general range of transformation frequencies as . . .
for A188 inbred crosses” (FF 11). In addition, Zhao discloses that
“[s]ignificantly higher transformation frequencies for genotypes such as the
product of A188 crossed to other inbreds would result in a higher throughput
for production of transformed plants” (FF 7). However, “Gaspé Flint is not
an inbred line” (FF 5). Thus, the Examiner has not shown that the teachings
of Zhao suggest crossing an A188 or HiII plant with a Gaspé Flint plant.
Although the reason for combining references need not come from the
references themselves, we conclude that the Examiner has not adequately
explained why one of ordinary skill in the art would have crossed a Gaspé
Flint plant with an A188 or HiII plant, or why one of ordinary skill in the art
would have reasonably expected this cross to result in a plant that is
miniature in size, has a low cycle time, and has a high rate of transformation
efficiency.
CONCLUSION
The Examiner has not set forth a prima facie case that it would have
been obvious to cross a plant from a Gaspé Flint line with a plant from a
HiII or A188 line to produce a plant of miniature size, having a low cycle
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time, and having a high rate of transformation efficiency with a reasonable
expectation of success. We therefore reverse the obviousness rejection.

REVERSED

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