Ex Parte Clement et alDownload PDFPatent Trial and Appeal BoardJun 2, 201713153120 (P.T.A.B. Jun. 2, 2017) Copy Citation 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. 13/153,120 06/03/2011 Brian G. Clement SGI1280-1 8333 95432 7590 Synthetic Genomics, Inc. c/o DLA Piper LLP (US) 4365 Executive Drive Suite 1100 San Diego, CA 92121-2133 06/06/2017 EXAMINER AHUJA, ANURADHA ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 06/06/2017 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): gtdocket @ dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN G. CLEMENT, JAMES G. FERRY, and STUART UNDERWOOD Appeal 2016-000163 Application 13/153,120 Technology Center 3600 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brian G. Clement et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—3, 7, 8, 12—20, 23, and 24.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Synthetic Genomics, Inc. Appeal Br. 4. 2 Claims 4—6, 9-11, 21, and 22 are cancelled. See Amendment (Sept. 24, 2014); see also Advisory Act. 1 (the Examiner indicating that the after final amendment will be entered for the purposes of appeal). Appeal 2016-000163 Application 13/153,120 THE CLAIMED SUBJECT MATTER Claims 1, 7, and 16 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of stimulating production of a metabolic product with enhanced hydrogen content from a hydrocarbon material, comprising contacting said hydrocarbon material with a composition comprising vanadium. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Scott US 2004/0033557 A1 Feb. 19,2004 Punnett WO 2008/002448 A2 Jan. 3,2008 Paul Scherer, Vanadium and molybdenum requirement for the fixation of molecular nitrogen by two Methanosarcina strains, 151 Archives of Microbiology 44-48 (1989) (hereinafter “Scherer”). REJECTIONS3 I. Claims 1, 2, 7, 15, 16, 20, and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by Punnett. Final Act. 3^4. II. Claims 3 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Punnett. Id. at 4. III. Claims 12—14 and 17—19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Punnett and Scott. Id. at 4—6. IV. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Punnett and Scherer. Id. at 7. 3 The Examiner withdrew the rejection of claim 20 under 35 U.S.C. § 112, second paragraph, as indefinite. Advisory Act. 2. 2 Appeal 2016-000163 Application 13/153,120 OPINION Rejection I Claims 1, 2, 7, 15, 16, and 20 The Examiner finds that Punnett discloses all of the limitations of independent claim 1, including contacting a hydrocarbon material with a composition comprising vanadium. Final Act. 3 (citing Punnett || 4, 7, 8, 13). The Examiner clarifies that “Punnett discloses contacting a hydrocarbon material with a composition comprising 11 micronutrients, wherein the micronutrients comprise vanadium.” Ans. 4 (citing Punnett 113). According to the Examiner, “the micronutrients of Punnett are disclosed as supporting growth conditions of methanogens (microorganisms) to optimize methane production.” Id. at 5 (citing Punnett || 7, 13). Appellants argue that “Punnett does not provide an enabling disclosure that meets the legal standards of anticipation or obviousness,” and “requires undue experimentation in order to figure out whether which of the listed nutrients would have the desired effect, if any.” Appeal Br. 9. Although Appellants are correct in that a cited reference must provide an enabling disclosure of the feature relied upon in order to anticipate a pending claim under examination, we are not persuaded by the argument that Punnett lacks an enabling disclosure. See Appeal Br. 7 (citing Elan Pharms., Inc. v. Mayo Found. For Med. Educ. & Research, 346 F.3d 1051, 1057 (Fed. Cir. 2003)); see also MPEP § 2121.01. Ordinarily, the disclosures of a reference are presumed to be enabling. In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (when the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable, and the appellant must rebut this 3 Appeal 2016-000163 Application 13/153,120 presumption by a preponderance of evidence). However, an appellant may present evidence-—such as via submission of an affidavit or declaration—-to rebut this presumption of enablement by a preponderance of the evidence. See MPEP § 716.07 (citing Sasse, 629 F.2d 675). Here, Appellants have not presented any evidence to rebut the presumption of enablement with respect to Punnett’s disclosure. Moreover, we consider the factors enumerated in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) to determine whether the disclosure in Punnett is enabling of the invention of claim l.4 We find Punnett’s disclosure of providing vanadium to organic material in connection with a method for enhancing methane production from organic material (Punnett 4, 13) to be sufficient direction or guidance given the breadth of claim 1, which simply recites the step of contacting hydrocarbon material with a composition comprising vanadium, as part of a method of stimulating production of a metabolic product from the hydrocarbon material. Appellants argue that “Punnett is, at best, a generalized invitation to experiment with various metal cations and/or micronutrients,” and “provides no data at all and no evidence that any particular metal cation and/or micronutrients will have any effect on the production of methane in the waste material generating methane.” Appeal Br. 8—9. Appellants also argue 4 Some factors to be considered in determining whether a disclosure would require undue experimentation include “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Id. 4 Appeal 2016-000163 Application 13/153,120 that “Punnett only mentions vanadium and other micronutrients to be used as part of establishing baseline conditions (para. 13),” and “[t]he beneficial effect speculated by Punnett that may (or may not) happen would be due to optimization of the other parameters (alkalinity, pH, cation ratios, temperature (para. 14)), not due to the vanadium.” Reply Br. 2 (emphasis omitted). According to Appellants, there is “no reason to select vanadium from the list of micronutrients required by microorganisms, or to believe that vanadium added to hydrocarbon material will stimulate methane production.” Appeal Br. 9. Appellants’ argument is unconvincing. Punnett is directed to “a method for enhancing methane production from organic material,” and discloses a step of “establishing baseline conditions of the organic material.” Punnett 14. In particular, Punnett discloses that, “[a]s part of the establishment of the baseline set of growth conditions, adequate micronutrients are preferably included in or provided to the organic material.” Id. 113. Punnett specifically discloses that vanadium is a micronutrient provided to the organic material. Id. Punnett does not disclose selecting from among the eleven micronutrients enumerated in paragraph 13, as Appellants’ argument suggests, but, rather, characterizes all of them as “required.” Id. Given that Punnett discloses a method of stimulating methane production, and specifically discloses a step of providing vanadium to organic material, Appellants have not persuasively explained why such a disclosure does not anticipate the method of claim 1. In our view, claim 1 at most claims a method of stimulating production of a metabolic product that includes a step of contacting hydrocarbon material with vanadium, not necessarily that the step of contacting hydrocarbon material with vanadium 5 Appeal 2016-000163 Application 13/153,120 be any crucial step that stimulates production of a metabolic product. Moreover, although Punnett discloses that the method for enhancing methane production includes additional steps (e.g., such as optimizing pH, cation ratio, and temperature {id. Ull, 14)), Appellants’ claim does not exclude any such additional steps.5 We find that the Examiner’s findings that Punnett discloses (i) a method of stimulating production of a metabolic product from a hydrocarbon material and (ii) contacting the hydrocarbon material with a composition comprising vanadium (Final Act. 3 (citing Punnett H 4, 7, 8, 13)) are supported by a preponderance of the evidence and are sufficient to support the anticipation rejection. For the foregoing reasons, we are not persuaded that the Examiner erred in finding that Punnett discloses all of the limitations of independent claim 1. We sustain the rejection of independent claim l under 35 U.S.C. § 102(b) as anticipated by Punnett. We also sustain the rejection of claims 2, 7, 15, 16, and 20, for which Appellants rely on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. See Appeal Br. 7—9, Claim 24 Appellants present separate arguments regarding the patentability of dependent claim 24, which recites that “the hydrocarbon material is a 5 Independent claim 1 uses the transition term “comprising” in connection with the method, which is inclusive or open-ended and does not exclude additional steps. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1977) (citing In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“‘Comprising’ is a term of art used in claim language which means that named elements are essential, but other elements may be added and still form a construct within the scope of the claim”). 6 Appeal 2016-000163 Application 13/153,120 coalbed.” Id. at 14 (Claims App.). Appellants argue that Punnett is “directed principally to wastewater,” and “[t]he person of ordinary skill would understand the disclosure even with respect to treating wastewater as a mere invitation to experiment.” Id. at 9 (citing Punnett | 8). Appellants also assert that “Punnett does nothing more tha[n] recite another ‘laundry list’ of waste material of varying and diverse compositions in paragraph 8 with no evidence to support any alleged use, and no guidance as to which of the various micronutrients might be useful with the various waste materials.” Id. These arguments relate to the perceived deficiencies in Punnett that we found unpersuasive in connection with independent claim 1. See id. at 8—9 (asserting that Punnett merely provides an invitation to experiment without an enabling disclosure and provides no evidence or guidance with respect to vanadium stimulating methane production). Moreover, insofar as Appellants appear to assert that Punnett fails to disclose a coalbed, such an argument is not persuasive because Punnett specifically discloses that “[t]he method can be applied to . . . coal beds.” Punnett | 8. For the foregoing reasons, we are not persuaded that the Examiner’s rejection of dependent claim 24 was in error, and we sustain the rejection of claim 24 under 35 U.S.C. § 102(b) as anticipated by Punnett. Rejection II Claims 3 and 8 recite that the “hydrocarbon material comprises coal, oil, kerogen, peat, heavy oil, shale, tar sands, oil sands, bitumen[,] or tar.” Appeal Br. 13 (Claims App.). The Examiner finds that Punnett teaches “wherein said hydrocarbon material comprises coal.” Final Act. 4 (citing Punnett | 8). This undisputed finding is sufficient to render the subject matter of claims 3 and 8 obvious over Punnett. The Examiner also finds 7 Appeal 2016-000163 Application 13/153,120 that, “[w]ith regard to the remaining hydrocarbon materials recited in Claim 3, the Office considers these hydrocarbon materials to be obvious variants,” and determines that it would have been obvious “to employ such alternative hydrocarbon materials in the methods of Punnett based on the desired treatment to be applied.” Id. Appellants argue that there is no reason to modify Punnett to employ alternative hydrocarbon materials because “Punnett provides no data or evidence at all to believe that contacting vanadium with the coal formations recited in claim 3 will result in stimulation of methane production.” Appeal Br. 10. As an initial matter, Appellants do not contest the Examiner’s finding that the additional materials recited in claims 3 and 8 are obvious hydrocarbon variants of coal. Additionally, Appellants’ argument regarding Punnett’s failure to explicitly associate contacting coal with vanadium with stimulating methane production is not persuasive because the Examiner’s articulated reasoning to employ alternative hydrocarbon materials does not rely on such an association. Moreover, Appellants do not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants’ disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). As such, we disagree with Appellants’ assertion that the Examiner relied on impermissible hindsight (see Appeal Br. 11; Reply Br. 1—2) in reaching the determination of obviousness of the claimed subject matter. Accordingly, we sustain the rejection of dependent claim 3 under 35 U.S.C. § 103(a) as unpatentable over Punnett. We also sustain the 8 Appeal 2016-000163 Application 13/153,120 rejection of dependent claim 8, for which Appellants do not provide separate arguments. See Appeal Br. 10-11. Rejection III Because Appellants rely on the same arguments and reasoning we found unpersuasive in connection with the independent claims, we also sustain the rejection of claims 12—14 and 17—19 under 35 U.S.C. § 103(a) as unpatentable over Punnett and Scott. See Appeal Br. 11 (relying on the alleged deficiencies of Punnett and asserting that Scott fails to remedy such deficiencies). Rejection IV Dependent claim 23 recites that “said vanadium is vanadium (III) chloride (VCf), vanadium (II) chloride (VCf), or vanadium (I) chloride (VC1).” Id. at 14 (Claims App.). The Examiner finds that “Scherer teaches vanadium requirements for methanogens therein, wherein vanadium, in the form of vanadium (III) chloride (VCf), is employed as a trace element in methanogenesis tests with methanogens.” Final Act. 7 (citing Scherer 44). The Examiner determines that “it would have been obvious to one of ordinary skill in the art to have modified Punnett with the aforementioned teachings of Scherer to provide vanadium in the form of [VCf] in order to provide a trace element nutrient for methanogenesis.” Id. Appellants argue that “[njeither Punnett nor Scherer disclose[s] whether or not Methanosarcina barkeri might be present in a coal bed,” or “that nitrogen fixation might be the limiting factor in methane formation in hydrocarbon materials.” Appeal Br. 12. This argument is not persuasive of error because it is not responsive to the rejection as presented by the Examiner. Punnett already discloses a method of increasing methane 9 Appeal 2016-000163 Application 13/153,120 production from microorganisms that includes a step of providing vanadium to an organic material, such as a coalbed. Punnett || 7—8. The Examiner relies on Scherer only for teaching using vanadium in the form of VCI3 in connection with methanogenesis. Specifically, the Examiner explains that “Scherer teaches vanadium requirements for methanogens (such as Methanosarcina barkeri) therein, wherein vanadium, in the form of [VCI3], is employed as a trace element in methanogenesis (i.e. formation of methane by methanogens) tests with methanogens.” Ans. 8 (citing Scherer 44). In other words, like Punnett, Scherer is aimed at stimulating methane production, and Scherer teaches using a particular form of vanadium (i.e., VCI3). Scherer 44-45. Appellants also argue that “the person of ordinary skill in the art would find no motive to contact coal with vanadium based on these references.” Appeal Br. 12. This argument fails to address the Examiner’s rejection, which is based on a finding that Punnett already teaches contacting coal with vanadium, and modifies Punnett only to provide vanadium in the form of VCI3. The Examiner has articulated adequate reasoning having rational underpinnings for one of ordinary skill in the art to provide vanadium in the form of VCI3, which Appellants do not persuasively refute. See Final Act. 7 (reasoning that VCI3 would “provide a trace element nutrient for methanogenesis”). For the foregoing reasons, we are not persuaded that the Examiner erred in concluding that the combination of Punnett and Scherer renders obvious the subject matter of claim 23, and we sustain the rejection of this claim under 35 U.S.C. § 103(a) as unpatentable over Punnett and Scherer. 10 Appeal 2016-000163 Application 13/153,120 DECISION The Examiner’s decision to reject claims 1—3, 7, 8, 12—20, 23, and 24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation