Ex Parte Clement et al

Patent Trial and Appeal Board

Jun 2, 2017

13153120 (P.T.A.B. Jun. 2, 2017)

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.
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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
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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.
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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
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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”).
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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
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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
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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
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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.
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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
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