Ex Parte Mistry et al

Patent Trial and Appeal Board

Nov 19, 2012

11631993 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DINESH MISTRY and JATINDER SINGH KULLAR
__________

Appeal 2011-007169
Application 11/631,993
Technology Center 1600
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-007169
Application 11/631,993

2
STATEMENT OF CASE
1. A process of preparing an ethylenically unsaturated amide
or an ethylenically unsaturated carboxylic acid or salt thereof from the
corresponding ethylenically unsaturated nitrile in which the nitrile is
subjected to a hydration or hydrolysis reaction in an aqueous medium in the
presence of a biocatalyst, wherein the nitrile contains above 2 ppm acrolein
and the amide or carboxylic acid or salt thereof contains less than 2 ppm
acrolein.

23. A process for preparing a polymer of an ethylenically
unsaturated monomer or blend comprising the ethylenically unsaturated
monomer, which monomer has been formed from an ethylenically
unsaturated nitrile, comprising the steps,
(i) contacting the ethylenically unsaturated nitrile with a biocatalyst to
form the ethylenically unsaturated monomer,
(ii) optionally mixing the ethylenically unsaturated monomer with
other monomers to form a blend, and
(iii) subjecting the ethylenically unsaturated monomer or blend to
polymerisation conditions thereby forming the polymer,
wherein the ethylenically unsaturated nitrile contains above 2 ppm acrolein
and the ethylenically unsaturated monomer contains less than 2 ppm
acrolein.

Cited References

Pierce US 5,863,750 Jan.26, 1999

Nagasawa et al., Microbial production of commodity chemicals, 76 PURE &
APPL. CHEM. 1241-1256 (1995).

Kawakami, Production of methacrylamide crytals, JP 401125353, Abstract
(1989).

Hughes et al., Application of whole cell rhodococcal biocatalysts in acrylic
polymer manufacture, 74 ANTONIE VON LEEUWENHOEK 107-118 (1998).
Appeal 2011-007169
Application 11/631,993

3
Grounds of Rejection
Claims 1-19 and 23-28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagasawa in view of each of Pierce, Kawakami, and
Hughes.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
7. The following facts are highlighted.

1. The Specification, pages 16-17, Example 3, discloses the use of
Rhodococcus rhodochrous J1 as the biocatalyst used in the claimed
process providing a reduction of acrolein in the product below
detectable limits.
2. Nagasawa, page 1248, Table 4 and text, discloses the use of
Rhodococcus rhodochrous J1 and its nitrilase in a method of
producing acrylamide (i.e., ethylenically unsaturated amide) from
acrylonitrile. (Ans. 4.)
3. Pierce, Example 6 discloses a pure culture of the microorganism
Rhodococcus sp. Strain DAP 96253. The microorganism strain
was evaluated by testing the differently induced cells in small
batch reactions, at 25° C., for their ability to detoxify a test mixture
containing 164 ppm acrylonitrile, 160 ppm acetonitrile, 51 ppm
acrylamide, 54 ppm acrolein, 51 ppm fumaronitrile, and 102 ppm
succinonitrile in the presence of a reactive C-N moiety. The
multiply induced cells were contacted with the test mixture at 25°
C. and the disappearance of the 6 initial different nitrile and amide
Appeal 2011-007169
Application 11/631,993

4
compounds present in the test mixture was monitored by GLC-
FID. (Pierce, col. 32, ll. 57-76.)
4. Pierce discloses that Rhodococci are capable of removing acrolein,
as demonstrated by the Example 9 disclosed at column 36, lines
35-60 (the results of which are presented in Fig. 3), which is drawn
to the detoxification of a mixture that is not a waste stream.
Specifically, the example is drawn to the detoxification of a
mixture comprising acrolein wherein no reactive cyanide is
present, i.e., the example is drawn to the detoxification of acrolein
and not acrolein cyanohydrin. (Ans. 9.)

Discussion
ISSUE
The Examiner acknowledges that
Nagasawa et al. do not specifically teach that their acrylonitrile
contains more than 2 ppm acrolein (claims 1 and 17-19), nor do
they teach that the produced acrylamide contains less than 2
ppm acrolein (claim 1). However, removing acrolein from
nitrile is an inherent property of Rhodococci, as evidenced by
Pierce (column 32, lines 45-67, Table XI and XII).

(Final Rej. 5.)

The Examiner concludes that
While Nagasawa et al. teaches the production of
acrylamide from acrylonitrile they do not specifically analyze
the materials (starting nor resulting materials) for the presence
or absence of acrole[i]n, thus fails to teach that their
acrylonitrile contains more than 2 ppm acrolein (claims 1 and
17-19), or that the acrylamide produced contains less than 2
ppm acrolein (claim 1). However, Pierce in the prior art
Appeal 2011-007169
Application 11/631,993

5
teaches that Rhodococci are capable of completely removing
acrolein during the process of converting acrylonitrile to
acrylamide, wherein the starting acrylonitrile preparation
comprises high acrolein concentrations, such as 54 ppm
acrolein (see Pierce, column 10, lines 20-27; Example 9 on
column 36, lines 38-60; Fig. 3). Thus, one of skill in the art
would have reasonably expected that the use of Rhodococci of
Nagasawa et al. would also efficiently remove acrolein from
preparations during the process of acrylamide preparation when
any amount of acrolein was present in the starting material of
acrylonitrile, and would have found it an obvious part of the
described process of Nagasawa et al. with any starting
preparation (i.e. any acrolein amount in the starting acrylonitrile
starting material). While Nagasawa et al. did not describe the
removal of acrolein from a reaction mixture, clearly this would
have been a consequence in the described methods of using
Rhodococci as described and demonstrated by Pierce.

(Ans. 5.)
Appellants argue, among other things, that

Nagasawa does not disclose or suggest the medium comprising
the ethylenically unsaturated nitrile contains above 2 ppm
acrolein, as presently recited. It is further respectfully
submitted that Nagasawa does not disclose or suggest the
medium comprising the amide or carboxylic acid or salt thereof
contains less than 2 ppm, as presently recited.

(App. Br. 8.)

Appellants argue that Pierce does not make up for the deficiencies of
Nagasawa and that from Pierce, “while one would expect the enzymes to act
on nitriles such as, acrolein cyanohydrin (see Page 1247, last paragraph, of
Nagasawa, which discusses that cyanohydrins are converted to hydroxy
Appeal 2011-007169
Application 11/631,993

6
acids using a nitrilase), it is quite unexpected that these enzymes would act
on aldehydes like acrolein.” (Id. at 10.)
Appellants argue that “even if it is assumed arguendo that the
Examiner's inherency position is appropriate, as discussed hereinabove,
Example 6 of Pierce does not disclose or suggest 54 ppm of acrolein.” (Id.
at 14.)
The issue is: Does the cited prior art support the Examiner’s
conclusion that the claimed invention is obvious?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Moreover:
Where . . . the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
Appeal 2011-007169
Application 11/631,993

7
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…. Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively,

the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added.)

“That which may be inherent is not necessarily known.” In re
Rijckaert, 9 F.3d at 1534 (quoting In re Spormann, 363 F.2d 444, 448
(CCPA 1966)).
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.
If, however, the disclosure is sufficient to show that the natural
result flowing from the operation as taught would result in the
performance of the questioned function, it seems to be well
settled that the disclosure should be regarded as sufficient.

In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment.
We find that the principles of inherency set forth in In re Best are
controlling here. Nagasawa, page 1248, Table 4 and text, discloses the use
of Rhodococcus rhodochrous J1 and its nitrilase in a method of producing
Appeal 2011-007169
Application 11/631,993

8
acrylamide (i.e., ethylenically unsaturated amide) from acrylonitrile. (Ans.
4.) (FF2.) This is the same biocatalyst disclosed and used in the claimed
process in the Specification. (FF1.) Thus, it would have been inherent that
the use of Rhodococcus rhodochrous J1 to hydrolyze nitrile in Nagasawa
would have resulted in a product amide or carboxylic acid or salt thereof
contains less than 2 ppm acrolein. In view of Pierce, this result would have
expected, as the Examiner explained.
Specifically, as to hydrolyzing nitrile containing above 2ppm acrolein,
the Examiner finds that
one of skill in the art would have reasonably expected that the
use of Rhodococci of Nagasawa et al. would also efficiently
remove acrolein from preparations during the process of
acrylamide preparation when any amount of acrolein was
present in the starting material of acrylonitrile, and would have
found it an obvious part of the described process of Nagasawa
et al. with any starting preparation (i.e. any acrolein amount in
the starting acrylonitrile starting material). While Nagasawa et
al. did not describe the removal of acrolein from a reaction
mixture, clearly this would have been a consequence in the
described methods of using Rhodococci as described and
demonstrated by Pierce.

(Ans. 5, emphasis added.) Thus, the Examiner finds that Pierce provides the
expectation that acrolein would be removed or reduced to less than 2 ppm if
present in the reactant, in any amount, for example 54 ppm (Pierce, Example
6).
Appellants argue that “it is quite unexpected that these enzymes
would act on aldehydes like acrolein.” (App. Br. 10.) However, the
disclosures in the prior art are sufficient to show that the natural result
flowing from the operation as taught would result in the performance
Appeal 2011-007169
Application 11/631,993

9
of the questioned function, it is well settled that the disclosure should
be regarded as sufficient to support inherency. Furthermore, “[t]hat
which may be inherent is not necessarily known,” and Nagasawa need
not disclose that nitrilase enzymes would act on aldehydes like
acrolein to show inherency, when such would be the natural result
from the use of the same biocatalyst, such as Rhodococcus
rhodochrous J1. In re Rijckaert, 9 F.3d at 1534 (quoting In re
Spormann, 363 F.2d 444, 448 (CCPA 1966)); see also In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants argue that Example 6 of Pierce does not disclose or
suggest 54 ppm of acrolein. (Id. at 14.) The Examiner responds, that it is
Example 9, and Fig. 3. of Pierce that evidences detoxification of acrolein
even if present at 54 ppm, for example Pierce, Example 6. Appellants fail to
address the teachings of Examples 6 and 9 of Pierce. While we are aware
that Appellants argue that the acrolein disclosed in Pierce is acrolein
cyanohydrin and not acrolein per se (App. Br. 9), this is not evidence that
Example 9 of Pierce does not disclose detoxification of acrolein, or evidence
that the use of Rhodococcus rhodochrous J1 in Nagasawa would not result
in the process and result claimed.
The obviousness rejection is affirmed.

CONCLUSION OF LAW
The cited references support the Examiner’s conclusion that the
subject matter claimed is obvious.

Appeal 2011-007169
Application 11/631,993

10
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

cdc