Ex Parte Covarrubias et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11853859 (B.P.A.I. Jun. 28, 2012)

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.
11/853,859 09/12/2007 Rosa M. Covarrubias 3597-175-01 3830
33432 7590 06/28/2012
KILYK & BOWERSOX, P.L.L.C.
400 HOLIDAY COURT
SUITE 102
WARRENTON, VA 20186
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
06/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROSA M. COVARRUBIAS and BUDI LIPUTRA
________________

Appeal 2011-006625
Application 11/853,859
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006625
Application 11/853,859

2
The Examiner finally rejected claims 1-4, 6-9, 11-19, and 26 of
Application 11/853,859 as obvious under 35 U.S.C. § 103(a).1 Appellants
seek reversal of the rejection pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Background
The ’859 application is directed to methods for controlling the
lipophilic extractives that are present in Acacia fibers used to make paper or
wood fiber containing products. Spec. ¶ [0002]. Lipophilic material present
in wood fiber used in paper making can build up on the surfaces of the
machines used to make paper. Id. at ¶ [0003]. This build up can lead to a
variety of problems either in running the paper making process or in the
quality of the product produced. Id.
The wood from Acacia trees is commonly available in tropical areas,
but has been generally regarded as undesirable for use in paper products
because it contains a large amount of lipophilic material. Id. at ¶ [0004].
Appellants have described a method for treating the pulp derived from
Acacia trees that allegedly enables the use of Acacia pulp in the
papermaking process. The method comprises treating the fiber web with a
composition comprising at least one enzyme in a sufficient amount and for a
sufficient time that the lipophilic material’s behavior can be controlled. Id. at
¶ [0009]. In particular, enzymes such as esterases and lipases break down the

1 The Final Office Action also contained a rejection of claims 4 and 6 as
indefinite under 35 U.S.C. § 112, ¶ 2. Final Office Action 3 (March 9,
2010). This rejection was subsequently withdrawn by the Examiner.
Advisory Action 2 (August 20, 2010).
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Application 11/853,859

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lipophilic material so that it can either be removed or dispersed. Id. at
¶ [0016].
Claim 1 of the ’859 application is representative and is reproduced
below:
1. A method to control lipophilic components present in
virgin Acacia fibers containing lipophilic components
comprising contacting said virgin Acacia fibers present in the
form of a fiber web with a composition comprising at least one
esterase or lipase or both, for a sufficient time and in a
sufficient amount to control the lipophilic components present
in the virgin Acacia fibers, and creping said fiber web to form a
creped fiber web, wherein said contacting is prior to, during, or
after said creping.
App. Br. 22.
Issue
Whether the Examiner properly rejected claims 1-4, 6-9, 11-19, and
26 of the ’859 application as obvious over U.S. Patent Application
Publication 2003/0124710 A1 (“Borch,” July 3, 2003) in view of U.S. Patent
No. 6,677,427 B1 (“Cheng,” issued Jan. 13, 2004).
Prior Art
Borch. The Examiner cited this reference for its description of the use
of enzymes in the papermaking process. Ans. 3-4. Borch describes the use of
lipase enzymes in the treatment of pulp derived from a variety of sources,
including Acacia. Borch, ¶ [0017]. The enzyme is added to the pulp before it
is formed into a fiber web. Id. at ¶ [0028] (describing the addition of the
enzyme to “any holding tank”). The lipase breaks down the lipophilic
material present in the pulp, reducing its effect on the rest of the
papermaking process. Id. at ¶ [0013].
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Application 11/853,859

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Cheng. The Examiner cited this reference for its description of the
addition of enzymes at a point in the paper making process when a fiber web
has been formed. Ans. 4. Cheng describes the use of enzymes in the
synthesis of polyamide polymers. Cheng, Abstract. The enzymes used in this
process include lipases and esterases. Id. at col. 3, ll. 30-31. In the process
described in Cheng, a polyamine and a diester are mixed in the presence of
the enzyme, which catalyzes the formation of a polyamide. Id. at col. 2, ll.
14-19. After reaction work up and isolation, the polyamide can then be
added to a cellulose slurry as part of a papermaking process, where it serves
as a strengthening agent. Col. 6, ll. 50-53. In the alternative, the polyamide
can be reacted with an epihalohydrin to create a resin that can be used in
papermaking. Id. at col. 15, ll. 53-57. The resin is then applied to the fiber
web, where it serves as a creping. Id. at col. 17, ll. 11-43.
Although Cheng states that the enzyme is preferably immobilized so
that it can be separated from the polyamide and reused, free enzyme may
also be used. Id. at col. 11, ll. 14-20. If the free enzyme is used, the resulting
polyamide may comprise up to 2% by weight of the polyamide. Id. at col.
12, ll. 51-56. This enzymatic contamination is then carried over into the
polyamide-epihalohydrin resin. Id. at col. 8, ll. 3-5.
Discussion
The Examiner rejected claims 1-4, 6-9, 11-19, and 26 of the ’859
application as obvious over Borch in view of Cheng. The Examiner cited
Cheng for its description of the application of a composition comprising an
enzyme to a fiber web during a papermaking process. Ans. 4.
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Application 11/853,859

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Appellants argue that a person of ordinary skill in the art would not
have been motivated to combine the processes described in Borch and
Cheng. App. Br. 16-17.
We agree with this argument for several reasons. First, Cheng does
not describe the treatment of the fiber web with an enzymatic composition
for the purpose of having the enzyme catalyze a reaction between
components of the fiber web. Rather, the enzyme is present as a contaminant
of the product produced in the reaction it did catalyze—the formation of the
polyamide. Thus Cheng does not describe the application of the enzyme-
containing composition to the fiber web for the same reason as it is applied
in the ’859 application or Borch.
Second, as Appellants point out, App. Br. 16, the skilled artisan would
not have had a reasonable expectation of success. Because the enzyme is
present in the polyamide or in the polyamide-epihalohydrin resin as a
contaminant, Cheng did not confirm that the enzyme applied to the fiber web
had any activity at all, let alone that it was capable of treating any lipophilic
material present in the fiber web. Because Cheng does not show that the
enzymatic activity could survive the isolation of the polyamide or the
subsequent reaction with the epihalohydrin, the skilled artisan would not
have a reasonable expectation that the combination of references would
work for its intended purpose.
Finally, we do not find the motivation identified by the Examiner to
be persuasive. The Examiner argues that the skilled artisan would have been
motivated to combine the teachings of Borch and Cheng “for the benefit of
adding the [enzyme-containing] composition to a fiber at any stage before,
during, or after creping.” Ans. 4. As discussed above, Cheng and Borch use
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Application 11/853,859

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enzymes for very different purposes. Indeed, the presence of any enzyme in
the material applied to the fiber web in Cheng is incidental, as Cheng
teaches that the preferred practice is to immobilize the enzymatic catalyst so
that it can be recovered and reused. Cheng, col. 11, ll. 14-20.
Conclusion
For the reasons set forth above, the Examiner’s rejection of claims 1-
4, 6-9, 11-19, and 26 of the ’859 application as obvious over Borch in view
of Cheng cannot be sustained.
REVERSED

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