Satoshi Kondo et al.

Patent Trials and Appeals Board

Aug 10, 2020

12922432 - (D) (P.T.A.B. Aug. 10, 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.
12/922,432 12/03/2010 Satoshi Kondo Q120663 1285
23373 7590 08/10/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
BOGGS, RUSSELL T
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
08/10/2020 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
following e-mail address(es):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI KONDO, CHIKARA OHTO,
NORIHIRO MITSUKAWA, NOBUHIKO MURAMOTO,
KENICHI OGAWA, HIROKI SUGIMOTO, TOMOKO TANAKA, and
MADOKA YONEKURA
Appeal 2020-000036
Application 12/922,4321
Technology Center 1600

Before ERIC B. GRIMES, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

HARDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims related to
methods for increasing the production of plant biomass and/or seeds. The
Examiner rejected the claims as obvious under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 TOYOTA JIDOSHA
KABUSHIKI KAISHA. Appeal Br. 2.
Appeal 2020-000036
Application 12/922,432

2
CLAIMED SUBJECT MATTER
Claims 16, 29, and 40–56 are on appeal. Final Act. 3. The claims are
directed to methods for increasing the production of plant biomass and/or seeds.
Claims 16, 29, and 56 are independent. Claim 16, reproduced below, is
illustrative of the claimed subject matter:
16. A method for increasing the production of plant biomass and/or
seeds, wherein said method comprises:
(1) modifying a plant to overexpress a protein phosphatase
2C protein, said protein phosphatase 2C protein being selected
from the group consisting of (a) and (b):
(a) a protein comprising the amino acid sequence of
SEQ ID NO: 5; and
(b) a protein comprising the amino acid sequence of
SEQ ID NO: 5 but in which 1–5 amino acids have been
deleted, substituted, and/or added in the sequence of SEQ ID
NO: 5, and which has protein phosphatase 2C activity,
wherein the step of modifying the plant to overexpress the
protein phosphatase 2C protein comprises a step selected from the
group consisting of (i) and (ii):
(i) introducing, into said plant, a polynucleotide
encoding said protein phosphatase 2C protein; and
(ii) genetically modifying, in said plant, a promoter of
an endogenous gene encoding said protein phosphatase 2C
protein, and
(2) selecting the modified plant based on its increased
production of biomass and/or seeds as compared to an unmodified
plant.
Appeal Br. 25 (Claims Appendix).
Appeal 2020-000036
Application 12/922,432

3
REFERENCES
The Examiner relied upon the following references:
Name Reference Date
Gorlach US 2002/0040490 A1 Apr. 4, 2002
Tietjen WO 2002/10210 A2 Feb. 7, 2002
Abad WO 2006/076423 A2 July 20, 2006
Sinclair et al., Crop transformation and the challenge
to increase yield potential, 9 Trends Plant Sci. 70–75 (2004) (“Sinclair”)
Bower & Birch, Transgenic sugarcane plants via microprojectile
bombardment, 2 Plant J. 409–416 (1992) (“Bower”)
Radke et al., Transformation and regeneration of Brassica rapa using
Agrobacterium tumefaciens, 11 Plant Cell Rep. 499–505 (1992)
(“Radke”)
TAIR website entry for AT3G05640 (accessed Jan. 29, 2018) (“TAIR”)
REJECTIONS
Claims 16, 29, 40–42, 44–46, 48–50, and 52–54 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Tietjen, Abad, and
Sinclair.2 Final Act. 3.
Claims 47 and 55 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Tietjen, Abad, Sinclair, and Bower. Id. at 12.
Claims 43 and 51 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Tietjen, Abad, Sinclair, and Radke. Id. at 13.
Claim 56 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over TAIR, Abad, and Gorlach. Id. at 15.

2 Although the heading for this rejection does not mention claims 49 and 50
(see Final Act. 3), the Examiner’s analysis includes these claims in the rejection
(see id. at 8).
Appeal 2020-000036
Application 12/922,432

4
OPINION
Appellant argues the claims and rejections as a group. See generally
Appeal Br.; see also Ans. 5. We select independent claim 16 as representative;
the remaining claims stand or fall with claim 16. 37 C.F.R. § 41.37(c)(1)(iv)
(2018).
Examiner’s Findings
As to claim 16, the Examiner found that Tietjen teaches the claimed SEQ
ID NO: 5 as SEQ ID NO: 1423, identifies this sequence as a protein
phosphatase 2C (“PP2C”), and teaches expressing its disclosed polypeptides,
many of which are PP2Cs, in plants, for the purpose of identifying herbicidally-
active compounds. Final Act. 4–5 (citing Tietjen 113, 115, 116, 122, 237–241,
242:8–9); id. at 14–15 (sequence alignment). The Examiner found that creating
a transgenic plant expressing SEQ ID NO: 1423 embodies the first step of claim
16. Id. at 5.
The Examiner found that Tietjen does not teach selecting such a
transgenic plant for increased biomass and/or seeds. Id. The Examiner found
that Abad teaches overexpressing various polypeptides, including PP2C
species, in plants to improve phenotype, including with respect to increasing
yield. Id. (citing Abad Abstract, 7, 35, claim 2). The Examiner further found
that “one of the PP2Cs taught by Abad, SEQ ID NO:251, causes increased
growth and development at early stages (id., pp. 35 & 32) – falling within the
scope of the claimed increase in biomass,” and that “by observing such an
increase, Abad teaches selecting for such an increase.” Ans. 7, 9.
The Examiner cited Sinclair as evidencing that use of transgenes to
increase plant yield was routine and obvious. Final Act. 5; Ans. 9.
Appeal 2020-000036
Application 12/922,432

5
The Examiner concluded that it would have been prima facie obvious to
one of ordinary skill in the art at the time of Appellant’s invention to follow the
teachings of Tietjen to create a transgenic plant overexpressing SEQ ID NO: 5,
and that “[g]iven the importance of using transgenes in the art to improve yield,
as taught by Sinclair et al. (p. 70), it would also be obvious to select a
transgenic plant for improved yield of biomass and/or seeds as required by the
claims.” Final Act. 6. The Examiner found that in view of the teachings of
Abad, “a plant transgenically expressing a PP2C may display increased yield.”
Id. The Examiner also found that “[a]ccording to the teachings of Applicant’s
specification, the property [of increased biomass and/or seed increase] flows
from creating a transgenic plant expressing instant SEQ ID NO:5,” id. at 7, and
that “[c]laiming an unknown property of a composition that was otherwise
obvious to make does not confer patentability under 35 USC § 103.” Id. at 6.
Analysis
We determine that the Examiner has presented a prima facie case of
obviousness with respect to claim 16. Tietjen teaches modifying a plant to
overexpress SEQ ID NO: 1423 (i.e., claimed SEQ ID NO: 5), as recited in step
1 of claim 16. Specifically, Tietjen discloses a method of screening
polypeptides to identify plant-specific polypeptides that can be used to search
for new herbicides. Tietjen 5. Tietjen reports having used the disclosed method
to identify a number of plant-specific polypeptides that are suitable as herbicide
targets, including SEQ ID NO: 1423. Id. at 11 (Table 1), 115 (identifying SEQ
ID NO: 1423), 234 (disclosing that each of the disclosed polypeptides is
“particularly suitable as [a] target[] for finding new herbicidal active
compounds”). Tietjen further teaches use of the polypeptides (or the nucleic
acid sequences encoding them) in methods of finding new herbicides, which
Appeal 2020-000036
Application 12/922,432

6
encompasses transforming a suitable host cell (such as a plant cell) with the
nucleic acids, or overexpressing the polypeptides in a plant. Id. at 236–237
(disclosing vectors that can be used in suitable host cells, and enumerating
plants among other suitable host cells), 242 (teaching that the disclosed
polypeptides can be expressed in plants). In view of these teachings, we
determine that Tietjen provides sufficient motivation to make a plant that
overexpresses its SEQ ID NO: 1423, which the Examiner finds is identical to
Appellant’s SEQ ID NO: 5.
Appellant does not dispute the Examiner’s finding (which we adopt) that
the property of increased biomass and/or seeds is inherent in a transgenic plant
expressing SEQ ID NO: 5. Final Act. 6–7. “It is a general rule that merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (affirming rejection of claims directed to maintaining vegetables under
certain conditions to prevent fungal growth as obvious where prior art disclosed
maintaining vegetables under the same or similar conditions to prevent
deterioration); see also Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1376–77 (Fed. Cir. 2001) (“[T]he claimed process here . . . consists
of the same steps as described by [the cited art]. Newly discovered results of
known processes directed to the same purpose are not patentable because such
results are inherent.”). Thus, we are not persuaded by Appellant’s argument
that “nothing in the cited references would have led persons of ordinary skill in
the art to even suspect that the overexpression of SEQ ID NO: 1423 in a plant
would increase plant yield.” Appeal Br. 10. Tietjen sufficiently motivates
creation of a transgenic plant overexpressing the claimed sequence, and
selecting that plant for use in searching for new herbicides. Tietjen at, e.g.,
Appeal 2020-000036
Application 12/922,432

7
Abstract, 115, 236–37, 242. Even though Tietjen does not teach or suggest that
such a plant would display increased biomass or seeds, step 2 of claim 16
merely amounts to recognizing properties inherent in the plant suggested by
Tietjen.
Appellant argues that Tietjen does not teach or suggest a plant expressing
SEQ ID NO: 1423 with any specificity because it discloses a “vast laundry list
of thousands of mere theoretical targets” for herbicides, and mentions merely in
“a passing generic statement” that these polypeptide targets can be expressed in
plants. Appeal Br. 10. We are not persuaded by this argument. First, the mere
fact that Tietjen teaches a multitude of polypeptide sequences that can be used
for the same purpose (searching for new herbicides) does not per se defeat
selecting any one of those targets. See, e.g., Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference
“discloses a multitude of effective combinations does not render any particular
formulation less obvious.”). Second, we are not persuaded that Tietjen
mentions expression in plants merely in “a passing generic statement.” Appeal
Br. 10. Tietjen makes clear that selection of an appropriate host—which
expressly includes plants—was well-known to persons of skill in the art. See,
e.g., Tietjen 237 (“Suitable host cells are prokaryotic cells, . . ., but also
eukaryotic cells, such as . . . plants.”); 240 (“The expression of a cloned gene
according to the invention or fragments thereof can be effected in a series of
suitable host cells which are known to the skilled worker.”); 242 (“[T]he
polypeptides according to the invention can also be expressed in plants.”).
Given the apparent routine nature of expressing polypeptides in hosts such as
plant cells, we are not persuaded that further detail needed to have been
provided in Tietjen in order to motivate a skilled artisan to create a transgenic
Appeal 2020-000036
Application 12/922,432

8
plant expressing SEQ ID NO: 1423.3 See, e.g., Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not
teach, and preferably omits, what is well known in the art.”); see also In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must
be evaluated, . . . and a reference is not limited to the disclosure of specific
working examples.”).
Appellant further argues that the Examiner used an obvious-to-try
rationale, and that “an obviousness theory based upon aimlessly testing
Tietjen’s thousands of sequences (via transgenic overexpression in plants), with
the hope of identifying one with a property of increased yield, is not sufficient
to establish a prima facie case of obviousness under § 103(a).” Reply Br. 5; see
also id. at 7 (arguing that the Examiner’s “rationale is clearly akin to obvious-
to-try”); Appeal Br. 13. Appellant’s argument mischaracterizes the rejection.
The rejection was not premised on testing Tietjen’s sequences (via transgenic
overexpression in plants) with the aim of identifying one having a property of
increased yield. Instead, the Examiner indicated that Tietjen teaches making a
transgenic plant expressing SEQ ID NO: 5, with the objective of “identifying
herbicidally active compounds.”4 Ans. 7, 18. One of ordinary skill in the art

3 Indeed, Abad demonstrates that creating transgenic plants that overexpress
PP2C proteins was routine. See, e.g., Abad 59, 60 (disclosing test results for
transgenic plants comprising PP2C proteins denominated SEQ ID NOs: 251
and 232, respectively). In fact, the Examiner found (and Appellant did not
dispute) that “the TAIR website teaches that a plant overexpressing SEQ ID
NO:5 was in existence at the time of Appellant’s invention.” Ans. 9; see also
id. at 7; Final Act. 15–16.
4 The Examiner was not required to show that a skilled artisan would have
made such a plant for the purpose of obtaining a plant with improved yield or a
particular phenotype. See, e.g., In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992) (“As long as some motivation or suggestion to combine the references is
Appeal 2020-000036
Application 12/922,432

9
would have found it obvious to select the transgenic plant expressing the
claimed peptide. While Tietjen teaches selecting the plant for use in testing
herbicidally active compounds, the selected plant would necessarily also have
an increased production of biomass and/or seeds—an inherent property, as
discussed above. Thus, we agree with the Examiner’s finding that “[g]iven
such a plant, then it would have been obvious for one of ordinary skill in the art
to select such a plant for increased production of biomass and/or seeds.” Id. at
19.
“An invention is ‘obvious to try’ ‘where the prior art [gives] either no
indication of which parameters [are] critical or no direction as to which of many
possible choices is likely to be successful.’” Merck & Co., Inc., 874 F.2d at 807
(quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)) (alterations in
original). This is not an obvious to try situation. Tietjen’s disclosures do not
suggest that success is “dependent upon random variation of numerous
parameters;” rather, Tietjen teaches that any and all of the disclosed
polypeptides are suitable for use in finding new herbicides. See, e.g., Merck &
Co., Inc., 874 F.2d at 807; see also Tietjen at, e.g., 234 (stating that the
disclosed polypeptides are “particularly suitable as targets for finding new
herbicidal active compounds”).
For the reasons discussed above, we determine that the Examiner has
established a prima facie case of obviousness.

provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor.”).
Appeal 2020-000036
Application 12/922,432

10
Unexpected Results
Appellant argues that the claimed method demonstrates unexpected
results, because a person of ordinary skill in the art “could not have predicted or
expected that the presently claimed plants would exhibit the beneficial property
of increased biomass/seeds.” Appeal Br. 16; see also id. at 17 (citing
Specification and Ohto Dec.5), 20 (“[N]one of Tietjen et al., Sinclair et al., or
Abad et al., even remotely suggest that the modifications recited in the present
claims would have the advantage of increasing biomass and/or seeds.”), 21 (the
TAIR reference “neither discloses nor even remotely suggests the advantageous
properties discovered by Appellant”).
“[U]nexpected results can, in appropriate circumstances, be sufficient
standing alone to preclude a finding of obviousness.” PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1200 (Fed. Cir. 2014).
As discussed above, the beneficial property of increased biomass/seeds
relied upon by Appellant as an unexpected result has not been established to be
unexpected, only unappreciated at the time. That is this property is inherent in
a transgenic plant that overexpresses SEQ ID NO: 5. “Mere recognition of
latent properties” in subject matter taught or suggested by the prior art is not
persuasive evidence of nonobviousness. See, e.g., In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991) (“Since the prior art bags plasticized with
DEHP were inherently suppressing hemolysis, albeit unknown at the time of the
Becker document, this hemolysis-suppressing function is not a basis for
rebutting a prima facie finding of obviousness.”).

5 Declaration of Chikara Ohto, Ph.D., dated July 6, 2018 (“Ohto Dec.”).
Appeal 2020-000036
Application 12/922,432

11
Appellant argues that “nowhere in Tietjen et al. is a plant expressing
SEQ ID NO: 1423 embodied, or even remotely suggested with any specificity –
and therefore, the presently claimed invention clearly does not ‘exist’ in the
cited art.” Appeal Br. 22. As discussed above, we find sufficient specific
teaching in Tietjen suggesting a plant expressing SEQ ID NO: 1423.6 This
situation is different from that in Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293
(Fed. Cir. 2015) and Millennium Pharmaceuticals, Inc. v. Sandoz Inc., 862 F.3d
1356 (Fed. Cir. 2017), both cited by Appellant. Appeal Br. 18–19; Reply Br. 8.
Here, for the reasons discussed above, we find that a transgenic plant
expressing SEQ ID NO: 1423 was sufficiently taught or suggested by Tietjen
(and actually existed, as evidenced by TAIR), whereas in Allergan, “the prior
art did not disclose, either explicitly or implicitly, the claimed formulation,” and
in Millennium, the claimed compound, a D-mannitol ester of bortezomib, was
“previously unknown,” and the court found “no teaching or suggestion in the
references to produce [it].” Allergan, 796 F.3d at 1307; Millennium, 862 F.3d
at 1364.
CONCLUSION
We affirm the rejection of claims 16, 29, 40–42, 44–46, 48–50, and 52–
54 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tietjen, Abad,
and Sinclair.
We affirm the rejection of claims 47 and 55 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Tietjen, Abad, Sinclair, and Bower.

6 Moreover, Appellant’s argument overlooks that a plant overexpressing SEQ
ID NO: 5 actually existed at the time of Appellant’s invention. See supra n.3.
Appeal 2020-000036
Application 12/922,432

12
We affirm the rejection of claims 43 and 51 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Tietjen, Abad, Sinclair, and Radke.
We affirm the rejection of claim 56 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over TAIR, Abad, and Gorlach.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 29, 40–
42, 44–46,
48–50, 52–
54

103(a) Tietjen, Abad, Sinclair 16, 29, 40–
42, 44–46,
48–50, 52–
54

47, 55 103(a) Tietjen, Abad, Sinclair,
Bower
47, 55
43, 51 103(a) Tietjen, Abad, Sinclair,
Radke
43, 51
56 103(a) TAIR, Abad, Gorlach 56
Overall
Outcome
16, 29, 40–
56

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED