Jiangxin Wan et al.

Patent Trials and Appeals Board

Aug 18, 2020

13381202 - (D) (P.T.A.B. Aug. 18, 2020)

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.
13/381,202 12/28/2011 Jiangxin Wan PREP018N01US
322117-2170
1035
58249 7590 08/18/2020
COOLEY LLP
ATTN: IP Docketing Department
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
BURAN, ASHLEY KATE
ART UNIT PAPER NUMBER
1662
NOTIFICATION DATE DELIVERY MODE
08/18/2020 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
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zIPPatentDocketingMailboxUS@cooley.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIANGXIN WAN and YAFAN HUANG
____________

Appeal 2019-006599
Application 13/381,202
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 17–19 and 23 (Br. 5; see also Ans. 2 3).3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Performance
Plants, Inc.” (Appellant’s April 16, 2019 Appeal Brief (Br.) 3).
2 Examiner’s July 5, 2019 Answer.
3 Appellant’s claims 30–37 stand withdrawn from consideration (Br. 5; see
also Ans. 3).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to expression of a transcriptional
regulator and transgenic plants having increased activity of the
transcriptional regulator to produce a plant having a beneficial phenotype”
(Spec. 1).4 Appellant’s claim 17 is reproduced below:
17. A method of producing a heat stress tolerant plant,
comprising
a) transforming a plant, a plant tissue culture, or a plant
cell with a vector comprising a nucleic acid construct that
comprises a nucleic acid sequence encoding a bHLH subgroup
1b polypeptide to obtain a transformed plant, a transformed
plant tissue culture, or a transformed plant cell, wherein said
bHLH subgroup 1b polypeptide is bHLH39,
b) growing said transformed plant or regenerating a plant
from said transformed plant tissue culture or transformed plant
cell, and
c) selecting a plant having increased heat stress tolerance
relative to a wild type control from said transformed plant or
regenerated plant from b) under a heat stress condition.
(Br. 19.)

Claims 17–19 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yuan,5 Jiang,6 and Abad.7

4 Appellant’s December 28, 2011 Specification.
5 Yuan et al., FIT interacts with AtbHLH38 and AtbHLH39 in regulating
iron uptake gene expression for iron homeostasis in Arabidopsis, 18 Cell
Research 385–397 (2008).
6 Jiang et al., US 2007/0033671 A1, published Feb. 8, 2007.
7 Abad et al., US 2006/0041961 A1, published Feb. 23, 2006.
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ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
Examiner made the following findings:
FF 1. Yuan discloses the transformation of Arabidopsis plants with a
construct comprising “the AtbHLH39[8] (subgroup 1b protein) nucleic acid
sequence under the control of the constitutive 35S promoter” to produce the
transgenic plant, “ox39” (Ans. 4 (citing Yuan 390 and 394) (emphasis
omitted)).
FF 2. Yuan disclosed that “[t]ransgenic plants overexpressing AtbHLH39
showed significantly increased expression in the roots in comparison to wild
type plants” (Ans. 4 (emphasis omitted)).
FF 3. Yuan failed to disclose the selection of “a plant having increased
heat stress tolerance as compared to a wild type control under heat stress
conditions” and “a root specific promoter” (Ans. 4).
FF 4. Jiang discloses the transformation of plants with a construct
comprising the constitutive 35S promoter operably linked to a nucleic acid,
SEQ ID NO: 593, encoding the bHLH subgroup Ib polypeptide (AtbHLH38)
(Ans. 5).
FF 5. Jiang discloses growing plants transformed with SEQ ID NO: 593
under normal and cold stress conditions, wherein “[p]lants overexpressing
SEQ ID NO: 594 [AtbHLH38] produced larger seeds . . . and were more
tolerant to cold stress than wild type plants” (Ans. 5 (emphasis omitted)).

8 Examiner finds that Yuan’s AtbHLH39 nucleic acid sequence corresponds
to Appellant’s SEQ ID NO: 1 (Ans. 4).
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FF 6. Jiang discloses the transformation of plants with a construct
comprising the constitutive 35S promoter operably linked to a nucleic acid,
SEQ ID NO: 661, encoding a bHLH polypeptide (SEQ ID NO: 662) from
Arabidopsis thaliana (Ans. 5).
FF 7. Jiang discloses growing plants transformed with SEQ ID NO: 661
under normal and heat stress conditions, wherein “[p]lants overexpressing
SEQ ID NO: 662 were larger and more tolerant to heat stress than wild type
plants” (Ans. 5 (emphasis omitted); see also id. at 7 (Jiang discloses that
“SEQ ID NO: 662 corresponds to clade G3086” and “that transgenic plants
overexpressing . . . G3086 showed increased . . . heat stress tolerance.”)).
FF 8. Jiang discloses “a polynucleotide sequence (SEQ ID NO: 1541) that
shares 100% identity with the AtbHLH39 sequence set forth in [Appellant’s]
SEQ ID NO: 1” and, therefore, Examiner reasons that Jiang’s SEQ ID NO:
1542 (encoded by SEQ ID NO: 1541) “must necessarily be a bHLH39
polypeptide” (Ans. 5 (emphasis omitted)).
FF 9. Jiang discloses “that SEQ ID NO: 594 (clade G2933) is paralogous
to SEQ ID NO: 1541 (clade G2932)” (Ans. 7).
FF 10. Abad discloses “transforming plants with a construct comprising a
nucleotide sequence encoding AtbHLH39,” wherein plants overexpressing
AtbHLH39 showed “improved ‘[e]arly growth and development’ [and] are
‘useful to produce transgenic plants that have advantages in or more
processes including, but not limited to germination, seedling vigor, root
growth and root morphology’” (Ans. 7–8 (emphasis omitted); see id. at 8
(Abad discloses “that plants ‘starting from more robust seedlings are less
susceptible to the fungal and bacterial pathogens . . . [and] are more resistant
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to drought stress due to extensive and deeper root architecture.’”)
(alterations original, emphasis omitted)).
FF 11. Abad discloses that “[c]onditions which may result in water deficit
stress include heat, drought, high salinity and PEG induced osmotic stress”
(Ans. 8 (citing Abad ¶ 17)).
FF 12. Abad discloses that “[b]y manipulating the activity of . . . regulatory
genes, i.e., multiple stress tolerance genes, the plant can be enabled to react
to different kinds of stresses,” such as improved “heat stress tolerance and
cold stress tolerance” (Ans. 8 (citing Abad ¶ 76); see id. at 9; see also Abad
¶¶ 77–78)).
FF 13. Abad discloses constitutive, inducible, and root specific plant
promoters (Ans. 9 (citing Abad ¶ 43)).
ANALYSIS
Based on the combination of Yuan, Jiang, and Abad, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious
to select plants that have been transformed with AtbHLH39, as
taught by Yuan et al and Abad et al and further suggested by
Jiang et al, for increased heat stress tolerance under heat stress
conditions because it was known in the art that (i) bHLH
proteins confer abiotic stress tolerance when overexpressed,
including to heat stress (Jiang and Abad), (ii) overexpression of
AtbHLH39 confers early plant growth and development
characteristics including plant vigor and seedling weight
(Abad), and (iii) it was suggested that improvements to the
early plant growth and development will lead to increased
abiotic stress tolerance (Abad).
(Ans. 9; see also FF 1–13.) We are not persuaded.
On this record, Examiner’s findings establish that plants
“overexpressing AtbHLH39[, i.e. Appellant’s SEQ ID NO: 1,] showed
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significantly increased expression in the roots in comparison to wild type
plants,” plants overexpressing AtbHLH39 showed “improved ‘[e]arly
growth and development’ [and] are ‘useful to produce transgenic plants that
have advantages in or more processes including, but not limited to
germination, seedling vigor, root growth and root morphology’” (FF 2, 10).
Examiner’s findings, however, do not establish that plants
transformed with and expressing SEQ ID NO: 1541, which shares 100%
identity with AtbHLH39 will exhibit an “increased tolerance to heat”
relative to a wild type control (see Ans. 7; see also FF 8). On this record,
Examiner failed to establish an evidentiary basis to support a conclusion that
AtbHLH39 would confer an increase in heat stress tolerance to a plant
relative to a wild type control (see FF 1–13). That other sequences may
impact heat stress tolerance does not suggest that the claimed sequence will
necessarily increase heat tolerance.
Thus, Examiner failed to establish an evidentiary basis on this record
to support a conclusion that a person of ordinary skill in this art would have
found it prima facie obvious to select plants expressing AtbHLH39 for heat
stress tolerance, or otherwise grow such plants under a heat stress condition,
as required by Appellant’s claimed invention (see Br. 10 (Appellant
contends that Examiner acknowledged “that Yuan is deficient in teaching
selecting a plant having increased heat stress tolerance relative to a wild type
control”); id. at 11 (Appellant contends that “Jiang makes no mention of
transforming a plant with SEQ ID NO: 1541, let alone to confer heat stress
tolerance, and selecting a plant transformed with SEQ ID NO: 1541 for heat
stress tolerance”); id. at 11 (Appellant contends that “Abad would not have
taught or suggested that bHLH39 would confer abiotic stress tolerance,
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much less heat stress tolerance, due to the improved early plant growth and
development traits”)). “[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).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 17–19 and 23
under 35 U.S.C. § 103(a) as unpatentable over the combination of Yuan,
Jiang, and Abad is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–19, 23 103 Yuan, Jiang, Abad 17–19, 23

REVERSED