Ex Parte Deinhammer et al

Patent Trial and Appeal Board

Nov 28, 2018

13863030 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/863,030 04/15/2013
25908 7590 11/30/2018
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
POBOX576
FRANKLINTON, NC 27525-0576
FIRST NAMED INVENTOR
Randy Deinhammer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10648-US-CNT[2] 1010
EXAMINER
RAGHU, GANAPATHIRAM
ART UNIT PAPER NUMBER
1652
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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 RANDY DEINHAMMER and CARSTEN ANDERSEN1
Appeal 2017-011060
Application 13/863,030
Technology Center 1600
Before ERIC B. GRIMES, MICHAEL J. FITZPATRICK, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of removing a biofilm, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Specification states that "[b ]y using an alpha-amylase in an
effective amount ... improved biofilm prevention and/or removal is
obtained, especially in those instances where some of the microbes present
1 Appellants identify the Real Parties in Interest as Novozymes North
America, Inc. and Novozymes A/S. Br. 1.
Appeal2017-011060
Application 13/863,030
in the biofihn produce alpha-1,4 linked glucose polysaccharides such as
amylose, amylopectin, mixtures of these two polysaccharides (i.e., starch),
and glycogen." Spec. 3 :34 to 4:2.
Claims 1-22 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method for removing, reducing or disrupting a
microbially produced biofilm comprising alpha-1,4 glucosidic
linkages and present on a surface, comprising contacting the
surface with a biofilm control solution comprising an effective
amount of alpha-amylase having at least 95% sequence identity
to SEQ ID NO: 2, wherein the alpha-amylase enzyme is present
in an amount of 0.01 - 100 mg of enzyme protein per L biofilm
control solution, and wherein the effective amount is sufficient
to degrade the microbially produced biofilm when applied at a
temperature of 40°C to 60°C.
DISCUSSION
The Examiner has rejected claims 1-22 under 35 U.S.C. § I03(a) as
obvious based on Hollis, 2 Johansen, 3 and Andersen. 4 Ans. 2. The Examiner
finds that Hollis discloses compositions that include "mixtures of enzymes
including surfactants" for removing biofilm. Id. at 3. The Examiner finds
that Hollis provides a "suggestion to use combination of enzymes including
alpha-amylases." Id. The Examiner finds that Johansen discloses
"enzymatic compositions capable of killing or inhibiting microbial cells or
microorganisms in laundry, on hard surfaces, in water systems," etc. Id. at
2 Hollis et al., US 5,411,666, issued May 2, 1995.
3 Johansen et al., US 6,592,867 B2, issued July 15, 2003.
4 Andersen et al., US 2003/0129718 Al, published July 10, 2003.
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Application 13/863,030
4. The Examiner finds that Johansen teaches that its enzymatic compositions
can include alpha-amylase. Id.
The Examiner finds that Hollis and Johansen do not disclose the
enzyme of SEQ ID NO: 2, or variants thereof, but Andersen does.
Specifically, the Examiner finds that the amino acid sequence of Andersen's
SEQ ID NO: 12 is identical to SEQ ID NO: 2 of the claims. Id. at 5. The
Examiner finds that Andersen discloses that its SEQ ID NO: 12 polypeptide
has alpha-amylase activity (id. at 5) and suggests that it is useful for
industrial applications such as "washing, dishwashing and hard surface
cleaning detergent compositions." Id. at 6.
The Examiner concludes that the above teachings would have made
obvious "a method for preventing, removing, reducing or disrupting biofilm
present on a surface comprising contacting said surface with isolated alpha-
amylase variants having at least 95% sequence identity to SEQ ID NO: 2
and said method further comprising one or more enzymes." Id. at 6-7. The
Examiner reasons that "[ m ]otivation to do so derives from the industrial
importance of compositions comprising alpha-amylases and additional
enzymes in the control of or prevention of biofilm formation on surfaces and
in the teachings of Hollis et al., Johansen et al., and Andersen et al." Id. at 7.
We agree with the Examiner that Hollis and Andersen would have
made the method of claim 1 prima facie obvious to a person of ordinary skill
in the art. 5 Hollis discloses "a composition of matter and a method for
removing a biomass or biofilm from a solid substrate." Hollis 3:51-53.
5 Johansen's disclosure is basically cumulative to that of Hollis, so we will
not further discuss Johansen.
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Application 13/863,030
"Particularly, [Hollis'] invention relates to a combination of at least two
biologically produced enzymes and at least one surfactant (wetting agent),
particularly anionic surfactant, in an amount effective to destroy the
polysaccharide material binding the biofilm." Id. at 3:63---66. Specifically, a
"water system is contacted, preferably flushed, with (1) at least one acidic
protease or alkaline protease, (2) at least one glucoamylase or alpha-
amylase, and (3) at least one surfactant." Id. at 5 :27-30 ( emphasis added).
Andersen discloses "variants (mutants) of parent Termamyl-like
alpha-amylases, which variant has alpha-amylase activity." Andersen ,r 2.
The alpha-amylases disclosed by Andersen include "AA560: SEQ ID
NO: 12; disclosed in WO 00/60060 and available from Novozymes NS." Id.
,r 398. The Examiner finds, and Appellants do not dispute, that Andersen's
SEQ ID NO: 12 is identical to the SEQ ID NO: 2 recited in claim 1. See
Ans. 5, Br. 7-9. Andersen also discloses variants of AA560 (SEQ ID
NO: 12) having increased solubility. Andersen ,r,r 476-492.
We agree with the Examiner that, based on the above disclosures, a
person of ordinary skill in the art would have considered it obvious to use
one of Andersen's alpha-amylase variants, or the wild-type alpha-amylase
from which they were derived, in Hollis' method of removing a biofilm from
a surface. The references provide adequate reason to do so: Hollis expressly
suggests using an alpha-amylase as a component of its biofilm-removing
composition, and Andersen discloses that its variants ( and, by extension, the
wild-type enzyme) have alpha-amylase activity. Thus, a skilled artisan
would have reasonably expected that Andersen's alpha-amylases would be
effective in Hollis' method.
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Appeal2017-011060
Application 13/863,030
Br. 8.
Appellants argue that
there is no detailed rationale given by the Examiner other than
the assumption that one of skill in the art would have applied
the alpha-amylases of Andersen in the Hollis and Johansen
process at the claimed temperatures. Nowhere does the prior art
describe the biofilm control solution applied in accordance with
the claims.
This argument is unpersuasive. As discussed above, Hollis expressly
suggests using an alpha-amylase as a component of its composition for
removing biofilm, and Andersen discloses alpha-amylases that are
encompassed by claim 1. A skilled artisan would recognize that all alpha-
amylases catalyze the same reaction, and therefore it would have been
obvious to use any alpha-amylase in Hollis' method.
Appellants also point out that Hollis states that a cellulase enzyme had
previously been disclosed as effective at clearing slime from surfaces of
cooling towers, but a cellulase was ineffective in Hollis' method. Br. 8
(citing Hollis 3:35--42, 5: 11-13). Appellants argue that "a skilled person in
the art would have no reasonable expectation of success that any alpha-
amylases could be effectively used as a biofilm controlling enzyme in the
claimed solution having excellent activity." Id.
This argument is also unpersuasive. First, "excellent activity," or
indeed any specific level of activity, is not required by claim 1. Second, the
effectiveness of a cellulase enzyme in Hollis' method is irrelevant to the
rejection on appeal- Hollis expressly suggests using an alpha-amylase in its
method, and therefore provides a basis for a reasonable expectation of
success in practicing its method with an alpha-amylase. Appellants have
pointed to no evidence showing that Andersen's alpha-amylases have some
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property that would have led a skilled artisan to doubt that they would be
useful in Hollis' method.
We affirm the rejection of claim 1 under 35 U.S.C. § I03(a) based on
Hollis, Johansen, and Andersen. Claims 2-22 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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).
AFFIRMED
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