Haiyu Ren et al.

Patent Trials and Appeals Board

Jun 19, 2020

2019006448 (P.T.A.B. Jun. 19, 2020)

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.
13/515,925 07/12/2012 Haiyu Ren 11649-US-PCT[2] 1096
25908 7590 06/19/2020
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
PO BOX 576
FRANKLINTON, NC 27525-0576
EXAMINER
HOLLAND, PAUL J
ART UNIT PAPER NUMBER
1656
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
DOCKETING@novozymes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HAIYU REN, DONGMIN LI,
YUN WANG, CHUANJI FANG, and HONG ZHI HUANG
__________

Appeal 2019-006448
Application 13/515,925
Technology Center 1600
__________

Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
ELIZABETH A. LAVIER, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–22 and 24–35. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states that the real party in interest is Novozymes
of Bagsvaerd, Denmark, and COFCO Corporation of Beijing, China.
Appeal Br. 3.
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STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 16–22 and 24–35 under 35 U.S.C. § 103(a) as being unpatentable
over McFarland,2 Vlasenko,3 and Festerson4 (Ans. 3–8).
Appellant’s claim 16, the sole independent claim on appeal, is
representative and reads as follows:
16. A process for producing a hydrolysate of a lignocellulosic
material, said process comprising:
a) subjecting the lignocellulosic material to a pretreatment
at a temperature between 165°C and 175°C, wherein the
pretreatment is carried out using an organic or inorganic acid
selected from the group consisting of sulphuric acid, acetic
acid, citric acid, tartaric acid, succinic acid, and mixtures
thereof and the pretreatment is carried out using from 0.5 to 2.0
wt. % acid, and
b) subjecting the pretreated lignocellulosic material to the
action of hydrolytic enzymes to produce said hydrolysate,
wherein the hydrolytic enzymes comprise cellulolytic enzymes
and a xylanase, and wherein said xylanase is present in an
amount of at least 10% of the total amount hydrolytic enzyme
protein.
Appeal Br. 9.
DISCUSSION
The Examiner’s Prima Facie Case
The Examiner found that McFarland describes a process of producing
a hydrolysate of a lignocellulosic material as recited in Appellant’s
representative claim 16, the process having nearly all of the steps and

2 WO 2008/151043 A1 (published Dec.11, 2008).
3 WO 2005/067531 A2 (published July 28, 2005).
4 WO 2005/059084 A1 (published June 30, 2005).
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features recited in claim 16, including the acid pretreatment of claim 16’s
step (a), as well as the enzyme treatment of step (b). Ans. 3–4. The
Examiner noted in particular McFarland’s disclosure that in the enzymatic
treatment step, it was useful to employ cellulolytic enzymes as recited in
claim 16, as well as hemicellulases. Id. at 4.
The Examiner cited Vlasenko as evidence that the xylanase enzyme
recited in representative claim 16 was known in the art to be a type of
hemicellulase, and that xylanases were known in the art to be useful in
processes, like McFarland’s, in which cellulolytic enzymes were used to
hydrolyze lignocellulosic material. Ans. 6.
The Examiner cited Festerson as evidence that adding at least 15%
xylanase to a barley mash was useful for improving the filterability and
extraction yield of the mash. Ans. 6.
Based on the references’ collective teachings, the Examiner concluded
that it would have been obvious to “combine the teachings of McFarland et
al., Vlasenko et al., and Festerson et al. according to the teachings of
Vlasenko et al. and Festerson et al. because McFarland et al. teach a process
for producing a fermentation product from the hydrolytic activities of
cellulases and hemicellulases.” Ans. 7.
The Examiner reasoned in particular that a skilled artisan would have
had motivation and a reasonable expectation of success in combining
McFarland’s cellulolytic enzyme with a xylanase as recited in representative
claim 16 “because Vlasenko et al. acknowledge that xylanases are a type of
hemicellulose, and Festerson et al. acknowledges that at least 15% xylanase
decreases slurry viscosity and improves the extraction yield of the mash.”
Ans. 7. The Examiner further reasoned that it would have been obvious to
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determine the suitable amounts of enzymes for use in McFarland’s process
through routine optimization. Ans. 7–8 (citing McFarland 61:13–18; also
citing MPEP § 2144.05.II.A and In re Aller, 220 F.2d 454, 456 (CCPA
1955) (“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.”).
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
that the preponderance of the evidence does not support the Examiner’s
conclusion that the process of Appellant’s representative claim 16 would
have been obvious. To the contrary, we agree with the Examiner’s findings
of fact regarding the cited references, as well as the Examiner’s ultimate
conclusion of obviousness based on the totality of the evidence, and adopt
the Examiner’s findings and conclusion of obviousness as our own. We
address Appellant’s arguments below.
Appellant contends that the Examiner erred because Festerson’s use
of at least 15% xylanase in a brewing process would not have motivated a
skilled artisan to use that proportion of xylanase, encompassed by
Appellant’s representative claim 16, in the processes of hydrolyzing
lignocellulose described in McFarland and Vlasenko:
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Festerson does not (nor McFarland, nor Vlasenko, nor the
instant specification) contain the term “fermentation mash.”
Festerson does teach (and define) a “mash” as being an
“aqueous starch slurry”, an element which is not taught by
McFarland (nor Vlasenko).
Therefore, the Office has not provided a sufficient reason
why the disclosures of McFarland and Festerson (and
Vlasenko) should be combined. The cited references are devoid
of any suggestion to combine the teachings and suggestions of
McFarland and Festerson (and Vlasenko) as advanced by the
Office, except from using Appellants’ disclosure as a template
through hindsight reconstruction of Appellants' claim.
Appeal Br. 6 (citing Final Act. 5).5
The Examiner responds that the basis for combining the references is
based only on the references’ teachings. See Ans. 8–9. In particular, the
Examiner reasoned:
One of ordinary skill in the art would recognize the similarities
between the pretreated biomass slurry taught by McFarland et
al. and the mash taught by Festerson et al. that can be used for
the same purpose of producing consumable alcoholic beverages
and would be motivated to use concentrations of xylanase
above 10% based on the teachings of Festerson et al. because
Festerson et al. acknowledges that at least 15% xylanase
decreases slurry viscosity and improves the extraction yield of
the mash. By decreasing the viscosity of the slurry, the
efficiency and cost of the system is improved because the slurry
is able to flow freely through the system allowing the sugars to
be more accessible to the fermenting microorganisms.
Id. at 9.
We find that the Examiner has the better position. First, as noted
above, in addition to citing Festerson as evidence that it would have been
obvious to include at least 10% xylanase, as recited in representative claim

5 Final Action entered August 27, 2018.
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16, among the hydrolytic enzymes used in McFarland’s process, the
Examiner also reasoned that the amount of xylanase recited in claim 16
would have been arrived at through routine optimization. See Final Act. 6
(citing Aller, 220 F. 2d at 456); Ans. 7–8 (same).
Appellant does not address the Examiner’s optimization rationale.
Nor does Appellant explain specifically why the Examiner erred in
concluding that claim 16’s process would have been obvious based on such
reasoning.
It is undisputed that McFarland describes a process of hydrolyzing
lignocellulosic material that includes an acid pretreatment step and a step of
hydrolyzing the acid-treated material with enzymes having cellulolytic
activity. See McFarland 7 (preferred hydrolyzed material contains
lignocellulose); id. at 59 (preferred chemical pretreatment is acid); id. at 17
(cellulolytic enzyme composition preferably includes hemicellulases as
additional enzymes).
It is also undisputed that Vlasenko teaches that, when using enzymes
to hydrolyze lignocellulose in processes like McFarland’s, xylanases as
recited in Appellant’s claim 16 (which are hemicellulases) are among the
enzymes useful in combination with cellulolytic enzymes. Vlasenko 20.
Thus, based on the teachings of McFarland and Vlasenko, a skilled
artisan would have had good reason to use cellulolytic enzymes in
combination with xylanases, as recited in Appellant’s claim 16, when
hydrolyzing lignocellulose. And, as the Examiner found, determining
optimal amounts of those enzymes depended on a number of variables in the
hydrolysis process:
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The optimum amounts of the enzymes and polypeptides
having cellulolytic enhancing activity depend on several factors
including, but not limited to, the mixture of component
cellulolytic proteins, the cellulosic substrate, the concentration
of cellulosic substrate, the pretreatment(s) of the cellulosic
substrate, temperature, time, pH, and inclusion of fermenting
organism (e.g., yeast for Simultaneous Saccharification and
Fermentation).
McFarland 61.
Thus, as evidenced by McFarland, the concentration of enzymes to be
used in its process is a result-effective parameter. We therefore discern no
error in the Examiner’s determination that the amount of xylanase recited in
Appellant’s claim 16 (i.e., at least 10% of the total enzyme composition)
would have been obvious to a skilled artisan, particularly given Appellant’s
failure to advance persuasive argument or evidence suggesting that the
claimed amount of xylanase yields an unexpected result. See E.I. DuPont de
Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018)
(“[A] recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”); id. at 1009 (“[T]he
discovery of an optimum value of a variable in a known process is normally
obvious.”); see also Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1322 (Fed. Cir. 2004) (“Where ‘the difference between the claimed
invention and the prior art is some range or other variable within the
claims . . . , the [applicant] must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results.’”)
(quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
We are also unpersuaded that the processes of McFarland and
Festerson are unconnected, as Appellant avers. As noted above, McFarland
discloses that the saccharide-containing slurry resulting from its
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lignocellulose hydrolysis may ultimately be part of a fermentation process,
like the brewing process in Festerson. See McFarland 61 (describing yeast
fermentation of hydrolyzed lignocellulosic product); id. at 5 (objective of
cellulolytic enzyme hydrolysis is viscosity reduction). As the Examiner
found, Festerson teaches that xylanase reduces the viscosity and improves
the filterability of a saccharide-containing slurry ultimately used in
fermentation. See Festerson 4–5. Appellant does not persuade us, therefore,
that the Examiner erred in determining that the amounts of xylanase
described in Festerson would have been viewed as useful in the processes of
McFarland.
In sum, for the reasons discussed, Appellant does not persuade us that
the preponderance of the evidence fails to support the Examiner’s
conclusion of obviousness as to Appellant’s representative claim 16. We
therefore affirm the Examiner’s rejection of claim 16 over McFarland,
Vlasenko, and Festerson. Because they were not argued separately, claims
17–22 and 24–35 fall with claim 16. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
16–22, 24–35 103(a) McFarland,
Vlasenko,
Festerson
16–22,
24–35

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED