Ex Parte Beacom et al

Patent Trial and Appeal Board

Oct 24, 2018

15005577 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/005,577
23408 7590
Gary C Cohn PLLC
325 7th A venue, #203
San Diego, CA 92101
01/25/2016
10/26/2018
FIRST NAMED INVENTOR
Daniel R. Beacom
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
070333US03 6101
EXAMINER
AFREMOVA, VERA
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
garycohn@seattlepatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. BEACOM, JEFFREY J. KOLSTAD,
DAVID H. REEDER, and BRIAN J. RUSH 1
Appeal2018-002124
Application 15/005,577
Technology Center 1600
Before RICHARD J. SMITH, TA WEN CHANG, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
fermentation process. A hearing was held on September 11, 2018. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejections for indefiniteness and nonstatutory double
patenting, which were not contested on appeal, and we reverse the rejection
for obviousness.
1 According to Appellants, the real party in interest is Cargill, Incorporated.
( Appeal Br. 1.)
Appeal2018-002124
Application 15/005,577
STATEMENT OF THE CASE
Background
"Fermentation processes are used commercially at large scale to
produce organic molecules such as ethanol, citric acid and lactic acid. In
those processes, a carbohydrate is fed to a microorganism that is capable of
metabolizing it to the desired fermentation product." (Spec. 1, 11. 8-11.)
"Usually, starch is hydrolyzed to form a mixture containing mainly
glucose (i.e., dextrose). However ... most commercially available glucose
products tend to contain a small amount of fructose and various oligomeric
polysaccharides. Unfortunately, many microorganisms cannot metabolize
the oligomers, either, and so these carbohydrate values are wasted." (Id. at
11. 23-28.)
"So-called simultaneous saccharification and fermentation (SSF)
processes are known, in which an unhydrolyzed starch is fed into a
fermentation process together with enzymes that catalyse the breakdown of
the starch until monosaccharides. Monosaccharides are produced and are
simultaneously fermented to the desired product." (Id. at 11. 31-35.)
Claims on Appeal
Claims 4--11 are on appeal. (Claims Appendix, Appeal Br. CA-l-
CA-2.) Claim 4, the only independent claim on appeal, is illustrative and
reads as follows:
4. A process for fermenting a fermentation substrate in the
presence of a microorgamsm, comprising
(A) forming a starting fermentation broth containing a
starch hydrolysate containing 80-98 weight% (based on
carbohydrates) of glucose and 1-20 weight% (based on
carbohydrates) of glucose oligomers that are not fermentable by
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the microorganism, wherein the starting fermentation broth
contains at least 30 g/L of glucose;
(B) fermenting the starting fermentation broth in the
presence of the microorganism to conditions sufficient to
ferment the glucose and reduce the glucose concentration in the
fermentation broth to less than 30 g/L;
(C) then adding to the fermentation broth an effective
quantity of a least one enzyme that depolymerizes at least one
glucose oligomer in the fermentation broth to form glucose;
(D) and then subjecting the fermentation broth to
conditions sufficient to simultaneously depolymerize the glucose
oligomers and ferment the glucose to form the desired
fermentation product.
Examiner's Rejections
1. Claims 4--11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Tsai, 2 Cadmus, 3 and Oda. 4 (Final Act. 5 2-5.)
2. Claims 4--11 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite, due to insufficient
antecedent basis in claim 4 for the limitation "the desired fermentation
product." (Id. at 2.)
3. Claims 4--11 stand rejected on the ground of nonstatutory double
patenting as unpatentable over claims 1--4 of US 9,328,364. 6 (Id. at 7.)
2 Tsai et al., US 5,464,760, issued Nov. 7, 1995 ("Tsai").
3 M.C. Cadmus et al., Enzymatic Production of Glucose Syrup from Grains
and its use in Fermentations, Cereal Chem. 43(6), 658---69 (1966)
("Cadmus").
4 Oda, US 5,780,275, issued July 14, 1998.
5 Final Office Action dated Feb. 14, 2017 ("Final Act.").
6 Beacom et al., US 9,328,364 B2, issued May 3, 2016.
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Application 15/005,577
4. Claims 4--11 stand provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 4--13 of
copending Application No. 14/524,032.7 (Id. at 8.)
DISCUSSION
Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection under pre-AIA 35 U.S.C. § 103(a).
Analysis8
The Examiner finds that Tsai "teaches fermentation processes based
on a microbial fermentation and on a simultaneous fermentation and
saccharification (SSF) of glucose-containing starch hydrolysates." (Final
Act. 3.) In particular, the Examiner points to Example 8 of Tsai as teaching
a fermentation process as recited in steps (A) and (B) of claim 4, wherein the
starting glucose of 120 g/L is reduced to 0.6 g/L in the presence of a
microorganism. (Id., citing Tsai col. 10, 11. 13-16, 18.) The Examiner
further points to Example 7 of Tsai as teaching a fermentation process (such
as SSF) as recited in steps (C) and (D) of claim 4, wherein the beginning
glucose concentration is 24 g/L ("less than 30 g/L" per claim 4), and a
microorganism that ferments the glucose and an enzyme that depolymerizes
7 Application No. 14/524,032 issued on July 25, 2017, as US 9,714,438 B2,
and the rejection is thus no longer provisional.
8 Although claims 4--11 are subject to a rejection as indefinite (Rejection No.
2), we do not find that the rejection impedes our ability to address the art
rejection. See Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991)
( exercising discretion to reach obviousness rejection despite indefiniteness).
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Application 15/005,577
the oligosaccharide isomaltose9 are mixed with the glucose. (Final Act. 3--4,
citing Tsai col. 1, 11. 39--46, col. 9, 11. 40--41, and Table 3 (col. 9, 11. 48---60).)
Based on those findings, the Examiner concludes that
[ t ]hus, as a whole the cited [art] teaches the fermentation process
comprising a microbial fermentation of glucose-containing
starch hydrolysate (steps A and B) and a simultaneous
fermentation and saccharification (SSF) of glucose-containing
starch hydrolysates (steps C and D), wherein the SSF steps, that
are conducted in the presence of both microorganism and
enzyme, are initiated when glucose concentration is below 30 g/L
as it is encompassed by the instant claims. Therefore, the
claimed invention as a whole was clearly prima facie obvious,
especially in the absence of evidence to the contrary.
(Final Act. 4.)
The Examiner also points to Oda as teaching that the optimal
concentration of the glucose at the beginning of SSF should be less than 30
g/L. (Final Act. 4--5, citing Oda col. 6, 11. 21-35.) Based on that finding, the
Examiner concludes that it would have been obvious to practice SSF
comprising less than 30 g/L of fermentable monosaccharide with a
reasonable expectation of success because the prior art teaches the benefits
of SSF and "that the high monosaccharide concentration in the fermentable
materials inhibit microbial growth and enzymatic activity." (Final Act. 5.)
Appellants 'Arguments
Appellants argue that Tsai does not disclose Appellants' step (B)
followed by Appellants' steps (C) and (D). (Appeal Br. 5.) Appellants also
argue that, contrary to the Examiner's position, there is no suggestion in Tsai
9 The Examiner relies on the teaching of Cadmus that starch hydrolysate
comprises about 10% or less of isomaltose, thereby meeting the claim
limitation of 1-20 weight percent glucose oligomers. (Final Act. 3, citing
Cadmus Abstract.)
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to combine Example 8 of Tsai (that Appellants refer to a "normal"
fermentation process) with Tsai's Example 7, an SSF process. (Id.)
Appellants argue that "the 'normal' and SSF processes are alternatives to
each other, as is clear from the separate treatment of the two processes
throughout [Tsai]." (Id.)
Appellants further argue that the Examiner's proposed combination of
Example 8 and Example 7 of Tsai "would make no technical sense" because
"[t]he Example 8 process has already consumed the sugars more completely
than Tsai[] achieved with the SSF process." (Id. at 6.) In support of this
argument, Appellants point to the data showing that the final concentrations
of glucose and TRS 10 in Example 8 are 0.6 g/L (glucose) and 6.9 g/L (TRS),
whereas the final concentrations in Example 7 are 5.3 g/L (glucose) and 9.6
g/L (TRS). (Id.) According to Appellants, "based on [Tsai's] own data, the
only logical conclusion is that no purpose would be served by performing a
subsequent SSF step on the Example 8 product." (Id.)
Examiner's Response
The Examiner disputes Appellants' contention that Tsai does not
suggest combining Example 8 with Example 7. (Ans. 8-10.) In particular,
the Examiner responds that Tsai is relied upon "as a whole for all it
contains" and the embodiments of Example 8 and Example 7 (normal
fermentation and SSF) are regarded as "variants" by Tsai, and are combined
in a whole process stream as illustrated in Figure IA of Tsai. (Id. at 9.)
The disclosure of Tsai relied upon by the Examiner states as follows
(referring the flowchart of Figure IA shown below): "As a variance of the
10 TRS stands for total reducing sugars and includes both glucose and
remaining non-fermentable sugars. (Ans. 10.)
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Application 15/005,577
process, if a separate saccharification step is desired ( note dotted lines on
flowchart) the liquefied starch 114 is sent to a saccharification unit 117 to
produce a glucose syrup before it is fed into the fermenter 116." (Tsai
col. 6, 11. 36-39, referred to at Ans. 9.) Figure IA of Tsai is set forth below:
M!CROlML !NOCUWM
116 ANO ~JUTRIENTS 120
SODIUM Hl'DP.OXtDE 122
POTATO ~~ASTE 11}'.I
-------- -------,
HOMOGENATE 103
STARCH SEPARATION mm 100
ST ARC'kl SLURRY 110
UQ\JEF ACTION UNIT 112
UOUIFlEO STARCH 114
Fe:RMENTATiON BROTH rn4
' CEU. SEPARATOR 126
SACCHARlFICATION
~.... UNIT 117
CEl.L MASS i30 CEll · FREE !lflO TH 12S
PR!MNW RECOVERY UNIT 1S4
CRUDE LACTIC ACID 13S
VACUUM EV.Af'ORA TOR 13S
CONCENTHATED LACTIC ACID 140
P1.IRIF!CATICIN PROCESS 142
(NEXT SHEET)
F!GURE 1A
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Figure IA above is a fermentation process flow chart from Tsai.
Regarding Appellants' argument that combining Example 8 and
Example 7 "would make no technical sense" because the final glucose and
TRS in Example 8 is already lower than in SSF Example 7, the Examiner
responds that this "is not found particularly true." (Ans. 10.) By the
Examiner's calculations, Example 7 has a smaller amount of remaining non-
fermentable sugars than in Example 8, which is "clear evidence that SSF
(addition of enzymes to a microbial fermentation) is more efficient with
regards to conversion of non-fermentable sugars of a starting substrate to a
fermentable glucose." (Id.)
We find that Appellants have the better position. A prima facie case
for obviousness "requires a suggestion of all limitations in a claim," CFMT,
Inc. v. Yieldup Int 'l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003), and "a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does,"
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, the Examiner's obviousness rejection is based on a combination
of Tsai's Example 8 and Example 7. However, the Examiner has not
persuasively shown a suggestion or reason to combine those different
examples to arrive at claim 4. We agree with Appellants that Examples 7
and 8 of Tsai are described as alternative processes, and are not persuaded
by the Examiner's reliance on Tsai's Figure IA and "variance of the
process" disclosure.
Appellants specifically argue that "the examiner misreads this
passage" from Tsai regarding the "variance of the process." (Reply Br. 2-
3.) According to Appellants, the "process described in the quoted sentence
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has only a single fermentation step (which is an SSF step)." (Id.)
Regardless of whether the process of Figure IA is characterized as an SSF
process, it is clear that the addition of microorganisms ( and thus
fermentation) begins after or simultaneously with the enzymatic process of
conversion to a fermentable (i.e., simple) sugar, such as glucose. (See
Fermenter Step 116 in Figure IA.) In contrast, Appellants' claimed process
begins fermentation prior to the addition of enzymes to convert oligomers to
fermentable sugars. Furthermore, Appellants' claimed process begins with
"at least 30 g/L of glucose" and adds the depolymerization enzyme after the
glucose is reduced to "less than 3 0 g/L."
The respective comparison of Examples 7 and 8 by Appellants, and
the calculation of TRS by the Examiner, further support Appellants'
contention that the examples are alternatives. The Specification describes
the advantages and disadvantages of the "normal" fermentation process and
the SSF process. (See Spec. 1, 1. 23-2, 1. 5.) Thus, the fact that Example 7
has a smaller amount of non-fermentable sugars than Example 8, and
Example 8 has a smaller amount of glucose than Example 7, at the end of
the respective processes, simply reflects the trade-offs between the two
alternative processes.
Accordingly, for the reasons of record and as set forth above, we
reverse the rejection of claim 4 and dependent claims 5-11 for obviousness.
Rejection Nos. 2, 3, and 4
Appellants do not contest the rejection for indefiniteness ( claims 4--
11, Rejection No. 2) or the rejections for nonstatutory double patenting
(Rejection Nos. 3 and 4). Accordingly, those rejections are summarily
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affirmed. See 37 C.F.R. § 4I.37(c)(l)(iv); Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008).
Conclusions
A preponderance of evidence of record fails to support the Examiner's
rejection of claims 4--11 for obviousness under pre-AIA 35 U.S.C. § 103(a).
A preponderance of evidence of record supports the Examiner's
rejection of claims 4--11 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, as indefinite.
A preponderance of evidence of record supports the Examiner's
rejection of claims 4--11 on the ground of nonstatutory double patenting as
unpatentable over claims 1--4 of U.S. Patent No. 9,328,364 B2.
A preponderance of evidence of record supports the Examiner's
rejection of claims 4--11 on the ground of nonstatutory double patenting as
unpatentable over claims 4--13 of U.S. Patent No. 9,714,438 B2.
SUMMARY
We reverse the rejection of claims 4--11 under pre-AIA 35 U.S.C.
§ 103(a).
We affirm the rejection of claims 4--11 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite
We affirm the rejections of claims 4--11 on the ground of nonstatutory
double patenting as unpatentable over claims 1--4 of U.S. Patent No.
9,328,364 B2 and claims 4--13 of U.S. Patent No. 9,714,438 B2.
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).
AFFIRMED
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