Ex Parte Barbero et al

Patent Trial and Appeal Board

Oct 25, 2017

13211910 (P.T.A.B. Oct. 25, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/211,910 08/17/2011 Roberto Barbero 14952.0411 case 14633 5182
27890 7590 10/27/2017
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO BARBERO, ELIZABETH WOOD, and
ANGELA BELCHER1
Appeal 2016-004158
Application 13/211,910
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 2, 5—7, 16, and 17. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a system for the biologically
catalyzed mineralization of carbon dioxide. E.g., Spec. 1:5; Claim 1.
Claim 1 is reproduced below from page 14 (Claims Appendix) of the Appeal
Brief (some formatting added):
1 According to the Appellants, the real party in interest is the Massachusetts
Institute of Technology. App. Br. 3.
Appeal 2016-004158
Application 13/211,910
1. A system for the mineralization of carbon dioxide, comprising:
a reactor containing an aqueous cell composition including a cell
having a carbonic anhydrase and a mineralization peptide
expressed on the cell surface;
a carbon dioxide source configured to supply carbon dioxide to
the reactor; and
an aqueous metal ion composition including divalent metal
cations,
wherein the aqueous cell composition and the aqueous metal ion
composition are optionally part of the same aqueous composition
in the reactor.
ANALYSIS
Claims 1, 2, 5—7, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Dziedzic (US 7,132,090 B2, issued Nov. 7, 2006) in
view of Applicants’ Admitted Prior Art (“AAPA”). The Appellants argue
the claims as a group. We select claim 1 as representative of the rejected
claims. The remaining claims on appeal will stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv) (2015).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejection. We adopt the Examiner’s rationale as our own, and we affirm the
rejection for reasons set forth in the Final Action, in the Advisory Action
dated December 5, 2014, and in the Examiner’s Answer. See generally
Final Act. 2—6; Advisory Act. 2; Ans. 3—10. We add the following for
emphasis.
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The Examiner finds:
Dziedzic discloses a system for the mineralization of carbon
dioxide comprising a carbon dioxide gas source, a carbonic
anhydrase reactor, and a downstream reactor containing an
aqueous metal ion composition including divalent metal cations.
In some embodiments, the carbonic anhydrase enzyme is
immobilized upon a membrane within the reactor, whereas in
other embodiments the enzyme is freely dissolved in an aqueous
medium.
Final Act. 3 (citations omitted). The Examiner finds that Dziedzic differs
from claim 1 in that (1) it does not “state that the carbonic anhydrase reactor
includes cells that express the carbonic anhydrase on a cell surface,” and (2)
it does not “expressly teach that a mineralization peptide is provided with
the aqueous metal ion composition.” Id. at 3^4.
Concerning (1) expression of the carbonic anhydrase on a cell surface,
the Examiner finds that the AAPA “teaches that it is well known to produce
an enzyme using genetically engineered cells (e.g. yeast cells), such that the
enzyme is expressed on the cell surface.” Id. at 3 (citing Spec. 6—7 and
referring to the Boder references2 that are described by the AAPA). The
Examiner concludes:
[It would have been obvious] to provide the Dziedzic carbonic
anhydrase reactor with cells configured to express carbonic
anhydrase directly into contact with the reaction medium, instead
of relying on the multi-step process of generating carbonic
anhydrase in a separate culture vessel, separating carbonic
anhydrase from the reaction mixture, and then subsequently
2 Eric T. Boder et al., Yeast Surface Display for Directed Evolution of
Protein Expression, Affinity, and Stability, 328 Methods in Enzymology 430
(2000); Eric T. Boder et al., Yeast surface display for screening
combinatorial polypeptide libraries, 15 Nature Biotech. 553 (1997).
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adding the isolated carbonic anhydrase to the carbonic anhydrase
reactor.
Id. at 4. Relying on Dziedzic’s statement that its process “can be varied in
many ways and the catalyst can be used differently depending on the
configuration of the process,” Dziedzic at 4:24—26, the Examiner also finds
that “Dziedzic expressly encourages . . . variation and experimentation” that
would have led a person of ordinary skill to “look[] to alternative
mechanisms for providing carbonic anhydrase,” such as expression on a cell
surface. Final Act. 4.
Concerning (2) the mineralization peptide, the Examiner finds that the
AAPA “indicates that mineralization peptides, such as nacrein, are known in
the art to facilitate the mineralization of calcium carbonate in the presence of
carbonate and divalent metal ions.” Id. (citing Spec. 8 and referring to the
Miyamoto reference3 that is described by the AAPA). The Examiner
concludes that a person of ordinary skill would have found it obvious “to
implement known methods for improving and facilitating carbon dioxide
mineralization when using the system of Dziedzic.” Final Act. 4.
The Appellants present several arguments in opposition to the
Examiner’s rejection, which we address in turn below.
1. The Appellants argue that application of the AAPA (specifically,
Boder) “in a system for CO2 mineralization would not have been obvious.”
App. Br. 6. Although the Appellants concede that the AAPA teaches that
certain cells “can be engineered so as to express a desired polypeptide on the
cell wall,” they argue that the AAPA does not explicitly teach that carbonic
3 H. Miyamoto et al., A carbonic anhydrase from the nacreous layer in
oyster pearls, 93 Proc. Nat’1 Acad. Sci. USA 9567 (1996).
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anhydrase, specifically, “can be expressed with a desired activity and
stability to function in the claimed system.” Id.
That argument is not persuasive. “Obviousness does not require
absolute predictability of success. ... all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903—04 (Fed. Cir.
1988). As the Examiner finds, the AAPA expressly teaches that peptides
and proteins can be expressed on the surface of cells. Spec. 6:27—7:4. The
AAPA even teaches that “[pjroteins with sizes similar to carbonic anhydrase
II can be expressed on the surface of’ certain cells, such as certain yeasts.
Id. at 7:1—4. Dziedzic teaches the use of the carbonic anhydrase enzyme as a
catalyst, and it explicitly teaches that its process “can be varied in many
ways and the catalyst can be used different depending on the configuration
of the process.” See Dziedzic at 3:39-40, 4:24—26. In view of those
teachings, we agree with the Examiner that a person of ordinary skill in the
art would have had a reasonable expectation of success in expressing
carbonic anhydrase on a cell surface in the system of Dziedzic. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416—21 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”; “[I]n many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.”).
2. The Appellants argue that the AAPA (specifically, Miyamoto)
“does not teach that mineralization peptides facilitate the mineralization of
calcium carbonate.” App. Br. 7. Specifically, the Appellants list the four
reaction steps of mineral carbonation and argue that the AAPA is not
relevant to catalyzation by mineralization peptide (i.e., the fourth step). Id.
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That argument is not persuasive. The Appellants’ Specification states
that “[a] number of mineralization peptides that promote the formation of
carbonate minerals are known, including . . . nacrein[.]” Spec. 7:13—14
(emphasis added). The Specification cites the AAPA (Miyamoto) and
describes it as teaching, “[i]n the protein nacrein, which assists in the
mineralization of calcium carbonate in oysters, the repeated domain of Gly-
Xaa-Asn (Xaa = Asp, Asn, or Glu) was identified, which has been proposed
to bind calcium and participate in calcium carbonate formation.” Id. at
8:21—24 (emphasis added).
Contrary to the Appellants’ assertions, we agree with the Examiner
that a person of ordinary skill in the art would have understood the plain
language of the AAPA (Miyamoto) to be teaching or suggesting that
mineralization peptides, including nacrein, “assist[] in the mineralization of
calcium carbonate.” Id. Moreover, in the Answer, the Examiner explains
that Miyamoto “does, indeed, teach the ‘step 4’ catalyzation by
mineralization peptide.” See Ans. 5—6 (discussing binding of nacrein to
calcium and participation in calcium carbonate formation). The Appellants
do not file a Reply Brief to dispute the Examiner’s findings on that point.
Additionally, we note the Examiner’s undisputed finding that the system of
Dziedzic already includes an aqueous metal ion composition. See Final
Act. 3. Miyamoto’s teaching that mineralization peptides such as nacrein
“assist[] in the mineralization of calcium carbonate in oysters” reasonably
would have motivated a person of ordinary skill in the art to include nacrein
in Dziedzic’s system with a reasonable expectation that nacrein likewise
would assist in the mineralization of calcium carbonate in that system, and
the Appellants do not persuasively argue to the contrary. Nor do the
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Appellants dispute the Examiner’s finding that it was well known to express
mineralization peptides on cell surfaces. See Ans. 6 (“The admitted prior
art, as a whole and including Miyamoto, teaches that the expression of
mineralization peptides on cell surfaces is commonly practiced in the art.”).
To the extent that the Appellants also argue that the AAPA does not
suggest that a mineralization peptide would function when expressed on a
cell surface in an environment including carbonic anhydrase, see App. Br. 7,
that argument is also unpersuasive. As noted above, the Appellants concede
that the AAPA teaches that certain cells “can be engineered so as to express
a desired polypeptide on the cell wall.” Id. at 6. The Appellants provide no
evidence or persuasive argument that a person of ordinary skill in the art
would not have expected mineralization peptides to fall within the scope of
that teaching. Nor do they provide any evidence or persuasive argument that
mineralization peptides would not assist in the mineralization of calcium
carbonate if carbonic anhydrase were also present. See id. at 7.
On this record, we are not persuaded by the Appellants’ arguments
concerning the mineralization peptide. See O ’Farrell, 853 F.2d at 903-04
(absolute predictability of success not required).
3. The Appellants argue that the Examiner fails to establish a prima
facie case of obviousness because the result of combining Dziedzic and the
AAPA would not have been predictable. App. Br. 9-10. The Appellants
argue that “[t]he use of a biological system for carbon dioxide sequestration
was not known in the art at the time of filing of this application.” Id. at 10
(emphasis in original).
As the Examiner explains, the reactor taught by Dziedzic “comprises
a plurality of different biocompatible surfaces suitable for supporting cell
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growth and activity.” Ans. 6—7 (citing Dziedzic at 3:42—50, which lists,
inter alia, biopolymers and collagen as suitable matrixes). The Examiner
further explains that “the Dziedzic reactor already is a ‘biological system, ’
as Dziedzic requires the use of carbonic anhydrase enzymes to convert
carbon dioxide to bicarbonate.” Ans. 7. According to the Examiner,
Dziedzic therefore requires “careful control over at least temperature and pH
to ensure optimum enzyme activity.” Id. The Appellants do not file a Reply
Brief to dispute the Examiner’s findings on those points.
Even if we were to agree with the Appellants that Dziedzic’s system is
not a biological system, the Examiner does not rely on Dziedzic alone, and
the Appellants do not persuasively distinguish the system of Dziedzic as
modified by the AAPA from the system of claim 1. See In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.”). As set forth above, the Appellants have not
shown reversible error in the Examiner’s determination that a person of
ordinary skill in the art would have had reason to include a mineralization
peptide such as nacrein in the system of Dziedzic, and to express both the
carbonic anhydrase and the mineralization peptide on a cell surface. We are
not apprised of error in the Examiner’s determination that such a system
teaches or suggests all of the features of claim 1.
On this record, we are not persuaded by the Appellants’ arguments.
An absolute predictability of success is not required to establish the
obviousness of claimed subject matter. See O’Farrell, 853 F.2d 903-04.
For reasons set forth above, we agree with the Examiner that a person of
ordinary skill in the art would have been motivated to express enzymes and
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peptides on a cell surface, and would have had a reasonable expectation of
success in so doing, as suggested by the AAPA.
We do not discern the Examiner’s rationale to be based on
impermissible hindsight. See App. Br. 10. Rather, we understand it to be
based on the teachings of the prior art, as they would have been understood
by a person of ordinary skill in the art at the time of the invention. Cf. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.”).
4. The Appellants argue that “substantially improved results” support
a conclusion of nonobviousness. App. Br. 11. Specifically, they argue that
“a skilled person in the art would not have expected such a significant
increase of mineralization rate in a laboratory or an industrial setting when a
mineralization peptide was expressed on a cell surface” because
“mineralization processes naturally occurring in oysters and seashells are
extremely slow processfes].” Id.
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The
burden of showing that objective evidence supports a conclusion of
nonobviousness rests with the Appellants. E.g., In re Huang, 100 F.3d 135,
139 (Fed. Cir. 1996). We are not persuaded that the Appellants have carried
that burden.
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As an initial matter, the comparison that the Appellants purport to
make is to “processes naturally occurring in oysters and seashells.” App.
Br. 11. The Appellants do not allege that such naturally occurring processes
are the closest prior art, or that they are closer prior art than Dziedzic.
Additionally, the Appellants fail to show that any results are, in fact,
unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is
not enough to show that results are obtained which differ from those
obtained in the prior art: that difference must be shown to be an unexpected
difference.”). The fact that the results may be an improvement is not a
sufficient showing. See id. Using the word “unexpected” with no
persuasive argument or evidence that a person of ordinary skill in the art
actually would have considered the results to be unexpected is not
persuasive. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is
well settled that unexpected results must be established by factual evidence.
‘Mere argument or conclusory statements in the specification does not
suffice.’” (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”); cf. also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“naked assertions” without substantive
argument typically are not persuasive). On this record, the Appellants have
not shown that unexpected results support a conclusion of nonobviousness.
5. The Appellants argue that the Examiner “failed to show that the
combination of prior arts teaches the invention as a whole.” App. Br. 11—12
(emphasis in original). The Appellants do not persuasively argue that any
particular element of the claim is missing from the prior art; instead, they
argue that the Examiner did not provide an adequate basis for combining the
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prior art. See id. (“[T]here must be a clear articulation of why a person
would have combined these elements to arrive at the claimed system as a
whole.”).
We are not persuaded by that argument. The Examiner expressly
finds that a person of ordinary skill in the art would have been motivated to
combine the prior art, and to express proteins and peptides on cell walls as
suggested by the AAPA, “instead of relying on the multi-step process of
generating carbonic anhydrase in a separate culture vessel, separating
carbonic anhydrase from the reaction mixture, and then subsequently adding
the isolated carbonic anhydrase to the carbonic anhydrase reactor.” Final
Act. 4; Ans. 9. The Examiner finds that a person of ordinary skill in the art
would have been motivated to include a mineralization peptide in the system
of Dziedzic because the AAPA shows that is a “known method[] for
improving and facilitating carbon dioxide mineralization.” Final Act. 4;
Ans. 8—10 (“One of ordinary skill would have readily understood that
because Dziedzic already requires this very same reaction [binding of
carbonate ion to metal cations], the use of a mineralization peptide would
improve the Dziedzic system by facilitating carbonate precipitation.”). On
this record, we are not persuaded by the Appellants’ arguments concerning
“the invention as a whole” and/or motivation to combine. See App. Br. 11—
12.
* * *
We have carefully considered the Appellants’ arguments, but we are
not persuaded of reversible error in the Examiner’s analysis. We affirm the
Examiner’s rejection of claim 1, with which claims 2, 5—7, 16, and 17 fall.
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CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1, 2, 5—7, 16, and
17.
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
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