UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

Size: px

Start display at page:

Download "UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES"

Arabella Phillips
7 years ago
Views:

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte XAVIER DELANNAY, DENNIS J. DUNPHY, FERNANDO GAITAIN-GAITAIN, and THOMAS P. JURY Appeal Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. 134(a) involving claims to a method of producing a pharmaceutically active protein in corn plants. The Patent Examiner rejected the claims on the ground of obviousness. We have jurisdiction under 35 U.S.C. 6(b). We reverse.

PRATS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECI

3 STATEMENT OF THE CASE Claims 1-9 and 21-24, which are all the pending claims, are on appeal. Claim 22, the broadest claim, reads as follows: 22. A method of producing a pharmaceutically active protein in corn plants comprising: a) obtaining a fertile R 0 corn plant comprising a nucleic acid molecule encoding said pharmaceutically active protein; b) cross-pollinating a first set of hybrid corn plants with pollen produced by said R 0 corn plant; and c) harvesting grain on said hybrid corn plant and harvesting seed from the first set of heterotic corn plants. Pixley; 2 and Pixley. The Issues The Examiner rejected the claims as follows: claims 1-9 and under 35 U.S.C. 103(a) over Zhong 1 and claims 1-9 and under 35 U.S.C. 103(a) over Hood 3 and OBVIOUSNESS The Examiner s position is that Zhong taught producing a pharmaceutically active protein in maize by obtaining a fertile transformed R0 corn plant, crossing to a Pioneer inbred with pollen from the R 0 corn plant, harvesting grain from said plants, and isolating protein from said 1 Gan-Yuan Zhong et al., Commercial production of aprotinin in transgenic maize seeds, 5 MOLECULAR BREEDING (1999). 2 Kevin V. Pixley et al., Stability of Grain Yield, Endosperm Modification, and Protein Quality of Hybrid and Open-Pollinated Quality Protein Maize (QPM) Cultivars, 42 CROP SCI (2002). 3 Elizabeth E. Hood et al., Commercial production of avidin from transgenic maize: characterization of transformant, production, processing, extraction and purification, 3 MOLECULAR BREEDING (1997). 2

protein; b) cross-pollinating a first set of hybrid corn plants with pollen produced by said R 0 corn plant; and c) harvesting grain on said hybrid corn plant and harvesting seed from the first set

4 grain. (Ans. 3-4.) The Examiner found that Zhong did not teach the use of a first set of hybrid corn plants to isolate a pharmaceutically active protein. (Id. at 4.) Because Pixley taught there is no difference in corn plants produced by a single cross (as taught by Zhong et al) and a three-way cross, one of ordinary skill in the art would have understood that corn plants, not limited to a first set of hybrid corn plants, could be used in the method. (Id.) The Examiner s findings and conclusion regarding Hood and Pixley were similar. (Id. at 5-7.) Appellants contend that None of the cited prior art uses pollen from a T 0 /R 0 plant transformed with a pharmaceutically active protein to produce protein on a hybrid corn plant. The use of pollen to fertilize a hybrid com plant is not part of a breeding effort. This is not inbreeding, crossbreeding or crossing. In fact, it is antithetical to a breeding program. The grain of the hybrid corn plant is grown for use, not as breeding stock, but for producing protein where the isolation process results in the destruction of such grain. (App. Br. 5, footnote omitted.) Specifically, Appellants contend that (1) Zhong explicitly disclosed that the T 0 plant was crossed as a female to the untransformed Pioneer inbred, not with pollen as claimed (id. at 7); and (2) Hood did not teach the use of pollen produced by the R 0 plant (id. at 15). As Pixley was not relied upon to supply those deficiencies, Appellants contend the rejections should be reversed. The issue is whether the evidence supports finding that Zhong or Hood described using pollen as claimed; and if not, did Pixley s disclosure suggest using pollen as claimed? 3

corn plants, not limited to a first set of hybrid corn plants, could be used in the method. (Id.) The Examiner s findings and conclusion regarding Hood and Pixley were similar. (Id. at 5-7.

5 Principles of Law When determining whether a claim is obvious, an Examiner must make a searching comparison of the claimed invention including all its limitations with the teachings of the prior art. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Analysis After reviewing the Zhong and Hood disclosures, we agree with Appellants that the evidence does not support finding that either reference described step b), cross-pollinating a first set of hybrid corn plants with pollen produced by said R 0 corn plant. The Pixley reference did not supply that deficiency. Because the rejections did not account for that feature of the invention, we reverse them. SUMMARY We reverse the rejection of claims 1-9 and under 35 U.S.C. 103(a) over Zhong and Pixley. We reverse the rejection of claims 1-9 and under 35 U.S.C. 103(a) over Hood and Pixley. REVERSED lp 4

Analysis After reviewing the Zhong and Hood disclosures, we agree with Appellants that the evidence does not support finding that either reference described step b), cross-pollinating a first set of

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/958,191 10/04/2004 Ruth E. Bauhahn 151P11719USU1 1458

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/958,191 10/04/2004 Ruth E. Bauhahn 151P11719USU1 1458 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