Etienne Jourdier et al.

Patent Trials and Appeals Board

Jan 17, 2020

14654063 - (D) (P.T.A.B. Jan. 17, 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.
14/654,063 06/19/2015 Etienne JOURDIER PET-3029 8954
23599 7590 01/17/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
BARRON, SEAN C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
01/17/2020 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@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ETIENNE JOURDIER, CAROLINE AYMARD,
and FADHEL BEN CHAABANE
____________

Appeal 2018-002917
Application 14/654,063
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to a method for producing oligosaccharides from lignocellulosic
biomass. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies IFP Energies Nouvelles, Agro
Industries Recherche et Development, and Institut National de la Recherche
Agronomique as the real parties in interest.
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STATEMENT OF THE CASE
According to the Specification,
[t]he inventors have observed that it is possible to promote the
formation of oligosaccharides starting from a hydrolysate
containing glucose and cellulases by incubation when the water
content of the liquid fraction of the hydrolysate is less than or
equal to 65% by weight with respect to the total weight of the
liquid fraction of the hydrolysate.
Spec. 4:18–21. The Specification explains that the effluent produced by this
process may then be “used as an inducing solution in a unit for the
production of cellulases.” Id. at 6:21–22.
Claims 1–9 and 18–21 are on appeal and can be found in the Claims
Appendix of the Appeal Brief. Claim 1 is representative of the claims on
appeal. It reads as follows:
1. A process for the production of oligosaccharides from
lignocellulosic biomass, comprising at least the following steps:
(a) pre-treating the biomass in a pre-treatment reactor in
order to provide an effluent containing a pre-treated substrate;
(b) carrying out an enzymatic hydrolysis of the pre-
treated substrate contained in the effluent obtained from step a)
in a reactor, in the presence of cellulases, in a manner such that
a hydrolysate containing glucose, cellulases and water is
produced;
(c) removing at least a portion of the hydrolysate
obtained from step b) comprising a liquid fraction;
(d) reducing the water content of said at least a portion of
the hydrolysate removed in step c) in a manner such that the
liquid fraction of the resulting hydrolysate has a water content
of less than 65% by weight of water with respect to the total
weight of the liquid fraction of the at least a portion of the
hydrolysate removed in step c);
(e) incubating the resulting hydrolysate with reduced
water content obtained from step d) at a temperature in the
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range 40°C to 70°C for a time necessary to produce an effluent
enriched in oligosaccharides.
Appeal. Br. 16.
Appellant seeks review of the following rejections:
I. Claims 1–3, 5, and 18–21 under 35 U.S.C. § 103 as
obvious over Dunson;2
II. Claim 4 under 35 U.S.C. § 103 as obvious over Dunson
and Knutsen;3
III. Claims 6–8 under 35 U.S.C. § 103 as obvious over Dunson
and Lloyd;4 and
IV. Claim 9 under 35 U.S.C. § 103 as obvious over Dunson
and Vaheri.5
Appeal Br. 3–4. All of these rejections are premised on the same reference,
Dunson, for the limitations of claim 1. Examiner relies on Knutsen, Lloyd,
and Vaheri solely for limitations added by dependent claims 4, 6–8, and 9.
See Ans. 9–13. Appellant contends the arguments concerning the first
rejection “apply equally to support reversal” of the other rejections and does
not present any additional arguments concerning rejections II–IV. See

2 US 7,781,191 B2, issued Aug. 24, 2010 (“Dunson”).
3 Jeffrey S. Knutsen et al., Cellulase Retention and Sugar Removal by
Membrane Ultrafiltration During Lignocellulosic Biomass Hydrolysis, Appl.
Biochem. and Biotech., Vol. 113–116, 585–599 (2004) (“Knutsen”).
4 Todd A. Lloyd et al., Combined Sugar Yields for Dilute Sulfuric Acid
Pretreatment of Corn Stover Followed by Enzymatic Hydrolysis of the
Remaining Solids, Bioresource Tech., Vol. 96, 1967–1977 (2005) (“Lloyd”).
5 Marja Vaheri et al., Transglycosylation Products of Cellulase System of
Trichoderma Reesei, Biotechnol. Lett., Vol. 1, 41–46 (1979) (“Vaheri”).
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Appeal Br. 13–15. Accordingly, we consider the rejections together in our
analysis.
The issue is: Does the preponderance of evidence of record support
Examiner’s conclusion that the cited prior art renders obvious the claimed
process?
Analysis
Examiner finds that Dunson:
teaches a method for the production of oligosaccharides,
comprising . . . 1) pre-treatment of lignocellulosic biomass with
ammonia and steam thus forming a pre-treated substrate
(Example 1), 2) carrying out an enzymatic hydrolysis of said
pretreated substrate at 50°C thus yielding glucose, cellulases,
and water and a composition enriched in oligosaccharides
(Example 2; the saccharification taught in this section implies
glucose production, see Col. 13, line 63 through Col. 14, line
5), reading on steps (a) and (b) of claim 1, and reading in part
on step (d) and (e) of claim 1.
Ans. 4–5. Examiner further determines Dunson “envisions obtaining the
soluble/liquid fraction and concentrating said fraction prior to
saccharification by evaporation . . . reading on step (c) of claim 1 and
reading in part on step (d) of claim 1.” Id. at 5.
Regarding steps (d) and (e) of claim 1, Examiner acknowledges
Dunson “does not teach reducing the water content . . . [to] less than 65% by
weight of water in said liquid fraction” and “does not teach a second step of
enzymatic hydrolysis at the temperatures of 40-70°.” Id. at 5–6. However,
according to Examiner, step (e) is an obvious “repetition of steps previously
recited within a claim,” i.e., the enzymatic hydrolysis step (b), which is “not
inventive because it merely requires employing the well-known maxim, ‘if
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at first you don’t succeed, try, try again.’” Id. at 7 (quoting Perfect Web
Techs., Inc. v. InfoUSA Inc., 587 F.3d 1324, 1327 (Fed. Cir. 2009)).
Moreover, in Examiner’s view, the “less than 65% by weight of water”
requirement of step (d) is the result of an obvious optimization of a result-
effective variable (i.e., pH) because reducing “water concentration would
indirectly affect the pH.” Id.
Appellant contends that Examiner has not established a prima facie
case of obviousness because Dunson fails to teach both steps (d) and (e) of
claim 1. Appeal Br. 5. According to Appellant,
Dunson has absolutely no teaching at all regarding the claimed
step (e) of incubating the resulting reduced hydrolysate with
reduced water content. Dunson certainly has no teaching or
suggestion of such an incubating step conducted at a
temperature in the range 40°C to 70°C for a time necessary to
produce an effluent enriched in oligosaccharides.
Id. at 6 (quotations omitted). Regarding Examiner’s determination that step
(e) of claim 1 is merely the obvious repetition of Dunson’s saccharification
step, Appellant explains that:
[t]he saccharification step in Dunson is a hydrolysis step to
breakdown the biomass to smaller parts . . . . The incubation
step (e) of claim 1, in contrast, prepares oligosaccharides by
coupling together mono-saccharides (e.g., glucose) obtained in
the previous hydrolysis step. The building up of
oligosaccharides from mono-saccharides in the incubation step
(e) of claim 1 is nothing like the saccharification step in Dunson
for breaking down the biomass to smaller parts. Thus,
repeating the saccharification step of Dunson does not result in
or suggest the incubation step (e) of claim 1.
Reply Br. 3. With respect to Examiner’s determination that the “less than
65% by weight of water” requirement of step (d) is an obvious optimization
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of a result-effective variable, Appellant urges that the “objective of Dunson
is distinct, thus, optimizing the level of water reduction to achieve the
objectives of Dunson fails to support an optimization which results in the
level of water reduction recited in the claims.” Appeal Br. 8.
On this record, we are persuaded by Appellant’s arguments and
determine the preponderance of evidence does not support Examiner’s
rejections.
As an initial matter, Dunson does not teach step (e) of claim 1 and the
record does not support Examiner’s finding that step (e) is nevertheless
obvious because it is the same as repeating Dunson’s saccharification step.
First, Examiner identifies no evidence to support the finding that it would be
obvious to repeat Dunson’s saccharification step. The Federal Circuit’s
determination that it would be “common sense” to repeat a step in Perfect
Web was premised on the particular facts and evidence at issue in that case.
See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)
(distinguishing Perfect Web’s holding that “common sense” supplied “a
limitation that was admittedly missing from the prior art” because the
limitation there “was unusually simple and the technology particularly
straightforward”). Examiner has not shown that the same “common sense”
rationale would apply here to render obvious a claim step that is wholly
absent in Dunson. Second, even if the record supported a finding that it
would be obvious to repeat Dunson’s saccharification step, the incubation
step (e) of claim 1 is a different step that is performed according to different
recited parameters (e.g., incubation of a “hydrolysate with reduced water
content,” and “for a time necessary to produce an effluent enriched in
oligosaccharides”) than the saccharification process taught in Dunson.
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Moreover, the saccharification process that Examiner relies on in Dunson
Example 2 describes the production of “glucose” and “xylose,” i.e.,
monosaccharides. Dunson, col. 16, ll. 1–25 (Table 2). The Examiner did
not provide adequate evidence that repeating this process would “produce an
effluent enriched in oligosaccharides” as recited in Appellant’s claim 1.
Accordingly, Examiner’s findings concerning step (e) are not supported by
the preponderance of the evidence of record.
Examiner’s finding concerning the “less than 65% by weight of
water” requirement of step (d) is likewise unsupported. Dunson teaches that
the “pH was controlled at 5.0 during saccharification” because “of the
sensitivity of the enzymes [used in that process] to high pH environments.”
Dunson 16:2–5. Based on this teaching, Examiner finds that pH is a result-
effective variable and because “water concentration would indirectly affect
the pH, the water concentration is then reasonably read as a result-effective
variable with respect to the pH.” Ans. 7. The problem with Examiner’s
reasoning is that optimizing pH to preserve enzyme activity is a different
result than enhancing oligosaccharide formation. Indeed, optimization of pH
need not reduce water content at all. For example, Dunson teaches that the
pH was controlled by the addition of acetic acid and use of a citrate buffer,
not by removing water. Dunson 15:67–16:5. Accordingly, Examiner has
not shown that reducing water content, much less below the “65%”
threshold recited in step (d) of claim 1, would be an obvious result of
optimizing pH to maintain enzyme activity.
For these reasons, we agree with Appellant that Examiner has not met
the burden “of presenting a prima facie case of unpatentability” for claim 1.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We, therefore,
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reverse as to claim 1. Because the rejections of dependent claims 2–9 and
18–21 are premised on the same underlying findings regarding claim 1, we
reverse the rejections of those claims for the same reasons.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 18–
21
103 Dunson 1–3, 5, 18–
21
4 103 Dunson, Knutsen 4
6–8 103 Dunson, Lloyd 6–8
9 103 Dunson, Vaheri 9
Overall
Outcome
1–9, 18–21

REVERSED