Ex Parte Tuinstra et al

Patent Trials and Appeals Board

Jul 5, 2019

11951629 - (D) (P.T.A.B. Jul. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/951,629 12/06/2007
26691 7590 07/05/2019
POTTER ANDERSON & CORROON LLP
ATTN: JANETE. REED, PH.D.
P.O. BOX 951
WILMINGTON, DE 19899-0951
FIRST NAMED INVENTOR
Mitchell R. Tuinstra
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KSURF-13454/USl/ORD 8722
EXAMINER
KOV ALENKO, MYKOLA V
ART UNIT PAPER NUMBER
1662
MAIL DATE DELIVERY MODE
07/05/2019 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 MITCHELL R. TUINSTRA and KASSIM AL-KHATIB
Appeal2018-001278
Application 11/951,629
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREYN. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
method of controlling weeds in the vicinity of a cultivated sorghum hybrid.
The Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
1 Appellants identify the Real Party in Interest as E. I. du Pont de Nemours
and Company (see App. Br. 3).
2 We have considered the Specification of Dec. 6, 2007 ("Spec."); Final
Office Action of Mar. 29, 2017 ("Final Act."); Appeal Brief of June 21,
2017 ("App. Br."); Examiner's Answer of Oct. 4, 2017 ("Ans."); and Reply
Brief of Nov. 20, 2017 ("Reply Br.").
Appeal2018-001278
Application 11/951,629
Statement of the Case
Background
"Sorghum is the second most important cereal-feed grain grown in the
United States. Production is economically critical to farms operating in
marginal rainfall areas because of sorghum's ability to tolerate drought and
heat" (Spec. 1: 15-17). "[T]he use of herbicides for controlling weeds in
crops has become almost a universal practice. However, application of such
herbicides can also result in death or reduced growth of the desired crop
plant" (Spec. 1 :26-28). One "class of broad-spectrum herbicides are those
that inhibit the activity of the acetolactate synthase (ALS) enzyme in a
plant" (Spec. 2:2-3). "Acetolactate synthase herbicides control a wide
spectrum of grass and broadleaf weeds at very low application rates" (Spec.
2:9-10). However, "[s]orghum is susceptible to many ALS inhibiting
herbicides ... making the use of these herbicides to control grassy weeds
almost impossible" (Spec. 2:2-7).
"[T]he present invention provides for sorghum plants, plant tissues
and plant seeds that contain altered acetolactate synthase (ALS) genes and
proteins that are resistant to inhibition by herbicides that normally inhibit the
activity of the ALS protein" (Spec. 2:22-25).
The Claims
Claims 11, 12, 19, 35, and 40-43 are on appeal. Independent claim 11
is representative and reads as follows:
11. A method of controlling weeds in the vicinity of a
cultivated sorghum hybrid comprising:
a) growing said cultivated sorghum hybrid from a seed
containing a nucleotide sequence having at least 95%
homology to SEQ ID NO: 1, provided that said nucleic
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Appeal2018-001278
Application 11/951,629
acid sequence encodes a modified sorghum
acetolactate synthase protein comprising a valine to
isoleucine amino acid substitution at position 531 and
a tryptophan to leucine amino acid substitution at
position 545, wherein the expression of said nucleotide
sequence confers to said cultivated sorghum hybrid
increased resistance to inhibition by one or more
acetolactate synthase herbicides compared to a
cultivated sorghum hybrid not expressing said
nucleotide sequence;
b) applying one or more acetolactate synthase herbicides
to a field comprising the cultivated sorghum hybrid of
step (a), and
c) controlling weeds in the vicinity of said cultivated
sorghum hybrid such that weed growth is adversely
affected by the application of said one or more
herbicides and growth of said cultivated sorghum
hybrid is not adversely affected.
Discussion
The Examiner rejected claims 11, 12, 19, 35, and 40-43 under 35
U.S.C. § I03(a) as obvious over Bemasconi, 3 Kmiec, 4 Kakefuda, 5
Anderson, 6 Chong,7 Peterson, 8 and Dweikat9 (Final Act. 6-13).
3 Bernasconi et al., US 5,633,437, issued May 27, 1997.
4 Kmiec et al., US 2003/0236208 Al, published Dec. 25, 2003.
5 Kakefuda et al., US 5,853,973, issued Dec. 29, 1998.
6 Anderson et al., US 6,211,438 Bl, issued Apr. 3, 2001.
7 Chong et al., Amino Acid Residues Conferring Herbicide Tolerance in
Tobacco Acetolactate Synthase, 279 BIOCHEM. BIOPHYS. RES. COMM. 462-
67 (2000).
8 Peterson et al., Registration of Tx2783 Greenbug Resistant Sorghum
Germplasm Line, 24 CROP SCIENCE 390 (1984).
9 Dweikat, A diploid, interspecific, fertile hybrid from cultivated sorghum,
Sorghum bicolor, and the common Johnsongrass weed Sorghum halepense,
16 MOLECULAR BREEDING 93-101 (2005).
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Appeal2018-001278
Application 11/951,629
Appellants contend "while Bernasconi describes five cocklebur ALS
amino acid residues, including the homologous Trps4sLeu amino acid
substitution ... nowhere does Bernasconi provide even a hint that would
prompt the skilled artisan to home in on the Vals31 position" (App. Br. 19).
Appellants further contend "none of the other references disclose, teach,
suggest, or even hint at the sorghum ALS Vals31Ile amino acid substitution
let alone a sorghum ALS containing both the Vals31Ile and Trps4sLeu amino
acid substitutions" (App. Br. 20).
Appellants further note that "[ w ]hile Appellants do recognize that the
present claims are directed to a method of using the sorghum ALS
Vals31Ile/Trps4sLeu variant, the claims nonetheless require a plant expressing
a nucleotide sequence having at least 95% homology to SEQ ID NO: 1 and
encoding these two mutations" (App. Br. 21 ). Appellants contend "the
skilled artisan would not find it obvious to modify either the wild type or
mutant cocklebur sequences of Bernasconi to arrive at the present claims"
(App. Br. 21).
The Examiner responds "[t]here is no evidence in the record that
Val531Ile contributes to ALS inhibitor resistance either on its own or in
combination with Trp545Leu. The teachings of the prior art suggest that
Val531Ile, in fact, does not contribute to herbicide resistance of the enzyme"
(Ans. 13). The Examiner finds that Bernasconi teaches "a wild-type,
herbicide sensitive ALS from cocklebur contains an isoleucine at position
corresponding to position 531 of the sorghum ALS" (Ans. 13). The
Examiner finds "position Val531 is located outside of the five conserved
ALS domains, in which herbicide resistance mutations are located" (Ans.
14). The Examiner finds "a valine to isoleucine substitution would be
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Appeal2018-001278
Application 11/951,629
considered a conserved substitution" (Ans. 14). The Examiner concludes
that "a sorghum plant comprising an ALS with the Trp545Leu substitution
alone would be functionally equivalent to a sorghum plant comprising an
ALS with both, Trp545Leu and Val531Ile substitutions, relative to a wild-
type enzyme" (Ans. 14--15).
Claim 11 requires, as part of the method of controlling weeds around
sorghum plants, a sorghum hybrid plant with three requirements: (1) 95%
homology to SEQ ID NO: 1; (2) a Vals31Ile mutation; and (3) a Trps4sLeu
mutation. While we agree with the Examiner that Sala10,11 and Bernasconi
reasonably suggest the Trps4sLeu mutation results in herbicide resistance, we
agree with Appellants that the rejection does not provide sufficient reason to
either select a Vals31Ile mutation or a sequence 95% homologous to SEQ ID
NO: 1.
We agree with Appellants (see Reply Br. 12) that the citation to In re
Seid, 161 F.2d 229 (CCPA 1947) is inapposite because Seid dealt with
ornamental arrangements, not a structural element of a nucleic acid that is
asserted by the Specification as being found "in herbicide resistance
genotypes" (Spec. 26:26-29). Instead, "we must give effect to all claim
limitations." In re Angstadt, 537 F.2d 498, 501 (CCPA 1976). We therefore
read the recitation requiring a Vals31Ile mutation as a positive limitation of
claim 1.
While the Examiner provides some generic evidence suggesting that
the Vals31Ile mutation may not impact herbicidal resistance, we note that
10 Sala et al., WO 2007/005581 A2, published Jan. 11, 2007.
11 As we are reversing, we need not determine whether Sala was properly
cited by the Examiner as rebuttal evidence.
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Appeal2018-001278
Application 11/951,629
conserved point mutations may certainly impact protein activity. 12 This
generic evidence is not sufficient to rebut the presumption of operability of
the Vals31Ile.
We therefore conclude that the evidence of record does not provide a
teaching or reason in the prior art to incorporate a Vals31Ile mutation into the
acetolactate synthase gene in sorghum.
We also note that while the Examiner cites Kakefuda for an
acetolactate synthase sequence 95% homologous to SEQ ID NO: 1, no
reason is given to select this sequence for insertion into Sorghum plants.
The Examiner states regarding Kakefuda that:
Kakefuda et al teach making ALS herbicide resistant sorghum
at Table 1, column 19. Kakefuda et al teach using herbicide
resistant plants in a method of controlling weeds by applying an
ALS herbicide (Kakefuda et al, paragraph spanning columns
20-21). Kakefuda et al teach, at SEQ ID NO: 4, an amino acid
sequence from maize that has 95.2% identity to the instant SEQ
ID NO: 6 .... One would recognize that the sequence of
Kakefuda et al has a tryptophan in the position corresponding to
position 574 in Arabidopsis numbering (545 in the instant SEQ
ID NO: 6), and thus represents a wild-type version of the
instant SEQ ID NO: 6 with respect to the Trp574Leu mutation.
(Ans. 8-10).
12 We do not rely upon, but simply cite to show this point, Wu et al., A
Conservative Isoleucine to Leucine Mutation Causes Major Rearrangements
and Cold Sensitivity in KlenTaql DNA Polymerase, 54 Biochemistry 881-9
(2015). Wu asks "[h]ow can a conservative mutation located over 20 A
away from the active site affect activity selectively at lower temperature?"
(Wu 886) but then explains "the mutation can affect the structure and
function of the enzyme despite the large distance between the mutation and
the enzyme active site" (Wu 887-8).
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Application 11/951,629
Simply because the maize acetolactate synthase sequence has 95%
identity to SEQ ID NO: 1 does not provide any reason to select this
sequence. The "examiner bears the initial burden ... of presenting a prima
facie case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Here, we find the Examiner has not satisfied that burden because the
rejection fails to provide a persuasive reason why a person of ordinary skill
in the art would have selected a seed containing a nucleotide sequence
having 95% identity to SEQ ID N0:1.
SUMMARY
We reverse the rejection of claims 11, 12, 19, 35, and 40-43 under 35
U.S.C. § 103(a) as obvious over Bernasconi, Kmiec, Kakefuda, Anderson,
Chong, Peterson, and Dweikat.
REVERSED
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