PTAB

PGR2022-00020

Select Sires Inc v. ABS Global Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Bovine Germplasm
  • Brief Description: The ’187 patent is directed to the "germplasm" (defined as the intact genome) of a specific elite Holstein bull named "Admiral," identified by ID number HO840003150607238. The claims cover cells, tissues, gametes (sperm), and first-generation (F1) progeny containing this specific germplasm.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility - Claims 1-22 are ineligible under 35 U.S.C. § 101

  • Prior Art Relied Upon: N/A
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that all claims are directed to a product of nature: the genome of an animal created through the natural process of sexual reproduction. The claims recite either the animal itself, cells from the animal, or its F1 progeny, all of which encompass the naturally occurring genomic DNA. Petitioner contended that even with elements like "cryopreserved" (claim 5) or "gene edited" (claim 21), the focus of the invention remains the natural germplasm, which is not markedly different from its naturally occurring counterparts.
    • Motivation to Combine (for §103 grounds): N/A
    • Key Aspects: The core of the argument was that human intervention—selecting elite parents and using conventional breeding techniques like artificial insemination—is insufficient to transform the resulting animal or its genome into a patent-eligible invention under the Alice/Mayo framework. The patent claims the result of breeding, not an inventive method of breeding.

Ground 2: Obviousness over Parent Animals - Claims 1-4, 6-9, 11-15, and 17-18 are obvious over Torque and Acapella

  • Prior Art Relied Upon: Torque (a Holstein sire, ID HO840003135669665) and Acapella (a Holstein dam, ID HO840003128557405).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Torque and Acapella were publicly known elite animals with available genetic evaluation data prior to the patent's filing date. The claimed bull, Admiral, is the direct offspring of Torque and Acapella. Petitioner argued that the claimed subject matter—cells, tissues, and gametes comprising Admiral’s germplasm (claims 1-4, 12-15) and F1 progeny of Admiral (claims 6, 9, 11, 17-18)—is the inherent and predictable result of breeding these two parent animals.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA), such as an animal breeder, would combine (i.e., breed) two known elite animals to produce offspring with a desirable combination of genetic traits. This is the fundamental and well-established goal of selective breeding in the dairy industry.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in producing elite offspring, one of which could be Admiral, by breeding two animals with superior, publicly documented genetic merit.

Ground 3: Obviousness over Parent Animals and Conventional Methods - Claims 5, 7-10, 16, and 19-22 are obvious over Torque and Acapella in view of Moore and Bourdon

  • Prior Art Relied Upon: Torque, Acapella, Moore (a 2017 journal article summarizing reproductive technologies), and Bourdon (a 2017 book chapter on animal breeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground extended the reasoning from Ground 2. Petitioner argued that for the obvious animal resulting from the Torque-Acapella breeding, it would have been obvious to apply conventional and routine techniques described by Moore and Bourdon. These techniques include cryopreserving the animal's semen (claim 5), adding a cryoprotectant (claim 10), packaging it in a straw (claims 16, 19), using routine reproductive technologies like IVF and embryo transfer (claims 7-8), and applying known gene-editing techniques (claims 21-22).
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to use these standard, well-known industry techniques to effectively preserve, distribute, and utilize the genetic material from a valuable elite animal for use in broader breeding programs.
  • Additional Grounds: Petitioner asserted that all claims also fail for lack of written description and enablement under 35 U.S.C. § 112. The arguments centered on the patentee not demonstrating possession of the vast number of potential gamete and F1 progeny genomes at the time of filing, and the inability of a POSA to reproduce the claimed animal and its full scope of progeny without undue experimentation.

4. Key Claim Construction Positions

  • germplasm: Petitioner emphasized the patent's definition of "germplasm" as "an intact genome present in cells or nuclei and comprising chromosomes." This construction was central to all grounds, as it defined the core of the claimed invention as the naturally occurring genetic material of a specific animal, supporting the arguments for both patent ineligibility under §101 and obviousness under §103.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under § 325(d) would be inappropriate because the grounds relied on new theories and prior art not identified or considered during prosecution. The Examiner issued no rejections under § 101 or § 103, and the prior art references (Torque, Acapella, Moore, Bourdon) were not applied. Therefore, the petition presented issues that the Patent Office had not previously evaluated.

6. Relief Requested

  • Petitioner requests institution of post-grant review (PGR) and cancellation of claims 1-22 of the ’187 patent as unpatentable.