TOYOTA JIDOSHA KABUSHIKI KAISHA

Patent Trials and Appeals Board

Nov 23, 2020

2020001969 (P.T.A.B. Nov. 23, 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.
14/917,045 03/07/2016 Hiroyuki ENOKI Q225572 6350
23373 7590 11/23/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
STANKOVIC, BRATISLAV
ART UNIT PAPER NUMBER
1663
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROYUKI ENOKI, SATORU NISHIMURA,
MOMOE SUITO, TSUKASA NUNOME, and YUJI NOGUCHI,
____________

Appeal 2020-001969
Application 14/917,045
Technology Center 1600
____________

BEFORE DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, 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 4–7 and 10. 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 “TOYOTA
JIDOSHA KABUSHIKI KAISHA” (Appellant’s August 13, 2019 Appeal
Brief (Appeal Br.) 2).
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Application 14/917,045

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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a marker associated with
anthracnose resistance that enables selection of a plant line of the genus
Fragaria exhibiting resistance against strawberry anthracnose and use
thereof” (Spec.2 1). Appellant’s claim 4 is reproduced below:
4. A method for producing a Fragaria x ananassa plant line
with improved anthracnose resistance, said method comprising:
producing progeny plants by crossing, wherein at least
one parent of said progeny plants is a Fragaria x ananassa
plant, and wherein said crossing is a sibling cross, a backcross,
or a cross to produce a hybrid line;
extracting genomic DNA from at least one of said
progeny plants; and
analyzing said genomic DNA to detect the presence of a
marker associated with anthracnose resistance in the extracted
genomic DNA, and selecting a progeny line with the marker in
its genome, thereby producing a Fragaria x ananassa plant line
with improved anthracnose resistance,
wherein said marker comprises at least 30 continuous
nucleotides of the nucleotide sequence of SEQ ID NO: 8.
(Appeal Br. 17.)

Claims 4–7 and 10 stand rejected under the written description
provision of 35 U.S.C. § 112(a).

2 Appellant’s March 7, 2016 Specification.
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Application 14/917,045

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ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Appellant’s Specification fails to provide written
descriptive support for the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses:
It is particularly preferable that the presence or absence
of the marker associated with anthracnose resistance in the
plant of the genus Fragaria be determined in strawberry
cultivars (F. x ananassa). In addition, it is preferable that the
presence or absence of the marker associated with anthracnose
resistance in the plant of the genus Fragaria be determined in
improved lines resulting from various varieties and lines of the
strawberry cultivars described above. In such a case,
strawberry anthracnose resistance can be evaluated in produced
new varieties. Accordingly, it is preferable that a new variety
be derived from a line having strawberry anthracnose resistance
as either the mother plant or father plant. More specifically, for
example, the presence or absence of the marker associated with
anthracnose resistance in a plant of the genus Fragaria in a new
variety produced from the Strawberry Parental Line Nou - 2 as
a parent may be determined, so as to evaluate its resistance to
strawberry anthracnose.
The marker associated with anthracnose resistance in
plants of the genus Fragaria according to the present invention
has been newly identified by QTL (Quantitative Trait Loci)
analysis using a genetic linkage map containing 1,502 markers
acquired from the strawberry cultivar Sachinoka and 2,162
markers acquired from the Strawberry Parental Line Nou - 2
and data concerning strawberry anthracnose resistance. Many
genes are considered to be associated with strawberry
anthracnose resistance, which is a quantitative trait exhibiting a
continuous distribution. Specifically, strawberry anthracnose
resistance is evaluated based on rates of affection [sic,
infection] with strawberry anthracnose, which exhibits a
continuous distribution. QTL analysis is carried out with the
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Application 14/917,045

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use of the gene analysis software of QTL Cartographer (Wang
S., C. J. Basten and Z.-B. Zeng, 2010, Windows QTL
Cartographer 2.5. Department of Statistics, North Carolina
State University, Raleigh, NC) in accordance with the
composite interval mapping (CIM) method.
(Spec. 8; see generally Ans. 4.)
FF 2. Table 1 of Appellant’s Specification is reproduced below:

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Appellant discloses that “[t]he 29.0-cM region comprises the 10 types of
markers shown in Table 1 in the order show in Table 1” (Spec. 9; see
generally Ans. 4).
FF 3. Appellant discloses that a region of “approximately 29.0 cM
(centimorgan)” that includes a peak that “implies the presence of causal
gene(s) that improve anthracnose resistance in plants of the genus Fragaria
at such peak or in the vicinity thereof” (id. at 8–9; see generally Ans. 4).
FF 4. Appellant discloses that
the marker associated with anthracnose resistance in plants of
the genus Fragaria according to the present invention is
continuous nucleic acid region sandwiched between the
nucleotide sequence as shown in SEQ ID NO: 1 and the
nucleotide sequence as shown in SEQ ID NO: 10 in the
chromosome of the plant of the genus Fragaria. The peak in
the 29.0-cM region located in a region sandwiched between the
marker consisting of the nucleotide sequence as shown in SEQ
ID NO: 4 (IA200064) and the marker consisting of the
nucleotide sequence as shown in SEQ ID NO: 8 (IA202631).
(Spec. 10–11; see id. at 11 (Because the peak is located in the region
sandwiched between SEQ ID NO: 4 and SEQ ID NO: 8, “the marker
associated with anthracnose resistance in plants of the genus Fragaria is
preferably selected from a region sandwiched between the nucleotide
sequence as shown in SEQ ID NO: 4 and the nucleotide sequence as shown
in SEQ ID NO: 8.”).)
FF 5. Appellant discloses the “use of a nucleic acid region including a
marker consisting of the nucleotide sequence as shown in SEQ ID NO: 8
(IA20263 l), which is located in a position nearest to the peak as the marker
associated with anthracnose resistance in plants of the genus Fragaria is
preferable” (Spec. 12).
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FF 6. Examiner interprets Appellant’s claimed invention to recite a
“marker associated with improved anthracnose resistance comprises any 30
continuous nucleotides of the 112-nucleotide[]-long” sequence set forth in
Appellant’s SEQ ID NO: 8 (Ans. 3).
ANALYSIS
Examiner finds that Appellant’s Specification fails to provide written
descriptive support for Appellant’s claimed invention (see Ans. 3–4).
Examiner asserts “that significant recombination frequency would be
expected to occur in th[e] large 29.0 cM-long regions described by
Appellant[]” (Ans. 4). Examiner fails, however, to establish an evidentiary
basis on this record to support this assertion. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[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.”).
Appellant discloses “that the presence or absence of the marker
associated with anthracnose resistance in the plant of the genus Fragaria be
determined in strawberry cultivars (F. x ananassa)” and exemplifies that
“the presence or absence of the marker associated with anthracnose
resistance in a plant of the genus Fragaria in a new variety produced from
the Strawberry Parental Line Nou - 2 as a parent may be determined, so as to
evaluate its resistance to strawberry anthracnose” (see FF 1). Thus, we are
not persuaded by Examiner’s intimation that Appellant’s Specification fails
to provide written descriptive support for Appellant’s claimed invention
because Appellant’s “claims do not require that the new (claimed) variety is
produced from the strawberry parental line Nou-2 as a parent” (Ans. 5).
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We are not persuaded by Examiner’s contention that Appellant’s
Specification fails to provide written descriptive support for Appellant’s
claimed invention because
Appellants do not claim the necessary causative gene(s)
or allele(s) associated with the particular markers associated
with improved anthracnose resistance such that, Appellants do
not disclose a conserved structure responsible with respect to
the genes, markers, and alleles as to accomplish the instantly
claimed function of producing a Fragaria x ananassa plant
comprising in its genome an introgressed improved anthracnose
resistance locus. The claims are not limited to genes or alleles
indicative of the claimed phenotype of producing a Fragaria x
ananassa plant with improved anthracnose resistance. The
Specification makes it clear that a group of genes is causative of
the claimed phenotype of improved anthracnose resistance,
however no such genes have been identified, nor do the claims
require any such genes.
(Ans. 5.) We are also not persuaded by Examiner’s assertion that Appellant
does “not describe the necessary structural features of these claimed markers
as to ensure the intended function of producing Fragaria x ananassa plants
with improved anthracnose resistance” (id. at 6). As Appellant explains “it
is not critical which 30 continuous nucleotides within SEQ ID NO: 8 are
used; the salient point is that 30 continuous nucleotides is sufficiently long
to realistically exclude the possibility of inadvertently detecting a different
locus” and “with the aid of a basic and rudimentary computer algorithm,
persons of skill in the art could readily output each and every nucleotide
sequence of SEQ ID NO: 8 that has at least 30 consecutive nucleotides,”
thus, “persons of skill in the art could instantly envision the structure (the
sequence) of each and every fragment of SEQ ID NO: 8 that is 30

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nucleotides or greater” (Appeal Br. 11–12). We further agree with
Appellant’s explanation that
[p]ersons of skill in the art reading the present
specification would readily recognize that the sequence of SEQ
ID NO: 8 is tightly linked to (i.e., inherited in linkage with) the
causative gene(s) for anthracnose resistance – and thus can be
used as a surrogate for the presence of the causative gene(s)
(and therefore as an expedient to select for plants having
improved anthracnose resistance). Hence, it is wholly
unnecessary for persons of skill in the art - either to practice, or
to envision the identity of, the claimed subject matter – to know
what the causative gene(s) are. Rather, it is entirely sufficient
that the claimed markers are tightly linked with them, so that
the presence of the claimed markers in progeny plant(s) can be
used as a surrogate for the presence of the causative gene(s).
Indeed, . . . Examiner’s demand in this regard – for
Appellant to have identified the particular causative gene(s)
within the 29.0 cM QTL that produces the improved
anthracnose resistance – is fundamentally at odds with the
entire reason why QTL markers are advantageous for selective
breeding (because they allow selection for a particular trait
without having to ultimately characterize the specific gene(s) in
the locus that are responsible for the trait).
Additionally, to the extent that the Examiner appears to
require some sort of structure-function correlation between the
marker sequence and anthracnose resistance . . . Appellant notes
that the relevant structural feature is, as described above, that
the marker has at least 30 continuous nucleotides of SEQ ID
NO: 8 – which as a practical matter ensures that the detection
will be specific for the target locus.
(Appeal Br. 14–15.)
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner’s finding that Appellant’s Specification fails to provide written
descriptive support for the claimed invention. The rejection of claims 4–7
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and 10 under the written description provision of 35 U.S.C. § 112, first
paragraph is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4–7, 10 112(a) Written Description 4–7, 10

REVERSED