Ex Parte Hjelland et al

Patent Trial and Appeal Board

Feb 6, 2017

13299615 (P.T.A.B. Feb. 6, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/299,615 11/18/2011 Finn Hjelland 60809-USA 6021
48219 7590 02/08/2017
PATFNT DFPT
EXAMINER
FMC CORPORATION MILLER, DALE R
2929 WALNUT STREET
PHILADELPHIA, PA 19104 ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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
following e-mail address(es):
patents@fmc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FINN HJELLAND,
ARNE HENNING ANDERSEN, and HUI S. YANG
Appeal 2016-002209
Application 13/299,615
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving a process for
obtaining at least one of fucoidan and laminarin from live, harvested
seaweed. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“Fucoidans and laminarins are natural polysaccharides present in the
extracellular matrix of brown seaweeds” (Spec. 12). “Fucoidans and
laminarins have been extensively studied for their biological activities,
1 Appellants identify the Real Party in Interest as the FMC Corporation (see
App. Br. 2).
Appeal 2016-002209
Application 13/299,615
including anticoagulant, antithrombotic, antivirus, antitumor,
anticomplementary, immunomodulatory, anti-inflammatory, blood lipid
reducing, [and] antioxidant activity” (Spec. 1 5).
The Specification teaches “simpler processes for isolating fucoidan
and laminarin from seaweed that produce commercial quantities of fucoidan
and laminarin in pure form . . . i.e., fucoidan and laminarin that are not
degraded and depolymerized” (Spec. 19).
The Claims
Claims 1—3, 6—8, 13—15, 17—23, and 26—33 are on appeal. Claim 1 is
representative and reads as follows:
1. A process for obtaining at least one of fucoidan and
laminarin from live, harvested seaweed, wherein said process
comprises the steps of:
(i) harvesting seaweed comprising fucoidan and laminarin to
obtain said live, harvested seaweed, wherein said live,
harvested seaweed exudes to form an exudate solution;
(ii) collecting said exudate solution after two days of
exudation, wherein said fucoidan and laminarin are
dissolved in said exudate solution; and
(iii) separating said at least one of fucoidan or laminarin from
said exudate solution.
The Issues
A. The Examiner rejected claims 1, 13, 18—22, and 26—29 under 35
U.S.C. § 103(a) as obvious over Yoshino2 and Sieburth3 (Ans. 2 4).
2 Yoshino et al., JP 2005-330454, publ. Dec. 2, 2005 (“Yoshino”). We rely
upon the English language machine translation.
3 Sieburth et al., Studies on Algal Substances in the Sea. II. The Formation
of Gelbstoff (Humic Material) by Exudates of Phaeophyta, 3 J. Exp. Mar.
Biol. Ecol. 275-89 (1969) (“Sieburth”).
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B. The Examiner rejected claims 2 and 3 under 35 U.S.C. § 103(a) as
obvious over Yoshino, Sieburth, and Preeprame4 (Ans. 4—5).
C. The Examiner rejected claims 6—8 under 35 U.S.C. § 103(a) as
obvious over Yoshino, Sieburth, and Michailovna5 (Ans. 5—7).
D. The Examiner rejected claims 14, 15, and 17 under 35 U.S.C. § 103(a)
as obvious over Yoshino, Sieburth, and Antonovich6 (Ans. 7—9).
E. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as obvious
over Yoshino, Sieburth, and McAnalley7 (Ans. 9-10).
F. The Examiner rejected claims 1, 6, 18—23, 26, 29, and 31—33 under 35
U.S.C. § 103(a) as obvious over Copp8 and Sieburth (Ans. 10-14).
A.—E. 35 U.S.C. § 103(a) over Yoshino and Sieburth, along with
Preeprame, Michaelovna, Antonovich, and McAnalley
Because Appellants do not separately argue the rejections of the
dependent claims, and the same issues are dispositive for all five of these
rejections, we will consider the rejections together.
The Examiner finds Yoshino:
teaches a method of obtaining fucoidan and laminarin from the
brown algae species Saccharina sculpera (Gagome) (110, as-
translated) The method includes: 1) cultivating live Gagome in
a growth tank (112, as-translated); 2) cutting Gagome fronds to
4 Preeprame et al., A Novel Antivir ally Active Fucan Sulfate Derived from an
Edible Brown Alga, Sargassum homeri, 49 Chem. Pharm. Bull. 484-485
(2001) (“Preeprame”).
5 Michailovna et al., US 7,611,716 B2, issued Nov. 3, 2009 (“Michailovna”).
6 Antonovich et al., RU 2 302 429 Cl, publ. July 10, 2007 (“Antonovich”).
7 McAnalley, B., US 4,851,224, issued July 25, 1989 (“McAnalley”).
8 Copp et al., US 8,167,959 B2, issued May 1, 2012 (“Copp”).
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a length of 25 cm, without further milling or grinding, (117, as-
translated) with root intact; 3) immersing damaged Gagome
frond into a pure sea water bath, to collect the exudate secreted
as a result of the cutting (111, as-translated); 4) allowing
exudation to occur with shaking for up to 16 hours to generate
an exudate solution (115, as translated); 5) returning the live
Gagome to the growth tank to recultivate for multiple exudation
cycles and 6) separating fucoidan and laminarin as a powder
from the exudate solution using ultrafiltration.
(Ans. 2). The Examiner acknowledges that Yoshino does not teach
“collecting the exudate solution after two days of exudation” (Ans. 3).
The Examiner finds that Sieburth teaches “an increase in the amount
of exudate materials (carbohydrates, phenolics, salts, etc.) collected [from
the three day period] when comparing two day versus three day exudation
periods elapsing prior to collection” (Ans. 3).
The Examiner finds it obvious “to combine the prior art methods
because Sieburth et al. teaches that the yield of the carbohydrate content of
the exudate increase^] with increased exudation time” (Ans. 4).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner’s conclusion that Yoshino and Sieburth render
claim 1 obvious?
Findings of Fact
1. The Specification teaches “‘live, harvested’ seaweed means a
marine, benthic macroalgae (‘Kelp’) that is still alive after harvest as
indicated by its ability to exude. In clear distinction to live, harvested
seaweed, dried seaweed is dead and no longer capable of exudation” (Spec.
114).
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2. Yoshino teaches “[a]n efficient mucus extraction method stably
acquired from the brown algae which have employed efficiently the good
mucus containing the viscous polysaccharide used for cosmetics, a beverage,
the raw material of a food additive, etc., such as a laminaran, a fucoidan, and
alginic acid, inexpensive” (Yoshino 15).
3. Yoshino teaches “GAGOME ... is seaweed of the
Laminariaceae” (Yoshino 12).
4. Yoshino teaches “GAGOME [seaweed] is taken out [] of a
tank, the portion (or damaged portion) which was cut by the way and the tip
cut from the tip of the leaf in the about 1-10-mm container containing pure
sea water or sterilization sea water is dipped, and mucus is made eluted.”
(Yoshino 111).
5. Yoshino teaches an embodiment when
saplings of GAGOME reach a fixed size, it will take out [] of a
tank temporarily, cutting or a crack will be attached for a tip
part, and the preparations which make mucus eluted from a cut
end will be made ... In order to make mucus eluted, it is
immersed in pure sea water or sterilization sea water.
(Yoshino 112).
6. Yoshino teaches the “raw GAGOME thallus was cut from the
scapus in the place of 19 cm, and it put into the artificial sea water of
300mL, and shook for 16 hours. The obtained mucus eluate was analyzed.”
(Yoshino 115).
7. Sieburth teaches “[f]reshly collected whole [kelp] plants were
placed in plastic buckets, covered with fresh or aged sea water (S = 30—32
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°/oo; pH 7.2—8.4) and, unless stated otherwise, allowed to exude for 3 days at
20 °C.” (Sieburth 276).
8. Figure 5 of Sieburth is reproduced below:
-- —!-------------T“—~~T“--------- 1-------------T—~—"7 -------- 1-------T
2 day ex udot* — fresh
Carbohydrates
Proteinaceous cmpds.
Phenolic crnpds.
Reducing cmpds.
Sett s
________ ______ ...... ___
3 day exudate ~ fresh
A
3 day exudate »» 1? days storage
jt__ &__ ,1A. ___ }
300 400 500 600 700
ml effluent
“Fig. 5. The fractionation patterns of sea-water exudates of Ascophyllum
nodosum on Sephadex G-15 separation” (Sieburth 281).
Principles of Law
DyStar teaches
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
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Application 13/299,615
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-A\ FF 1—8) and agree that the
claims are rendered obvious by Yoshino and Sieburth. We address
Appellants’ arguments below.
Appellants contend that “[i]n contrast to the present claimed invention
in which the seaweed is first harvested, Yoshino et al is directed to a process
wherein seaweed is cultivated (i.e., maintained in a living state);
periodically, the tip of the seaweed is cut and the viscous sap-like material
which flows from the cut collected” (App. Br. 7).
We do not find this argument persuasive because, as the Examiner
points out, “[harvesting does not necessarily take place in a plants’ natural
environment. Plants are routinely grown and subsequently harvested for
commercial sale in artificial environments” (Ans. 15). Moreover, the word
“harvesting” has multiple meanings including “to catch, take, or remove for
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use.”9 The Specification does not specifically define “harvesting” in a way
that excludes cutting the seaweed at its location of cultivation, and returning
the seaweed to the cultivation environment where the exudate is removed
(see FF 1). Instead, the Specification simply defines “harvested” as
requiring the seaweed to be alive and able to exude (FF 1). See In re Morris,
111 F.3d 1048, 1055—56 (Fed. Cir. 1997) (“Absent an express definition in
their specification, the fact that appellants can point to definitions or usages
that conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.”) Accordingly, we find the ordinary artisan would understand
Yoshino’s process to include “harvesting.”
We recognize, but find unpersuasive, Appellants contention that “this
cultivation process is very different from the present claimed process
wherein the seaweed source is harvested, with the result that the dying
seaweed produces an exudate comprising large amounts of fucoidin and/or
laminarin, which product(s) are subsequently separated from such exudate”
(Reply Br. 3). Claim 1 does not require the seaweed to be “dying”. In this
context, the difference between “harvesting” and “cultivating” is simply
whether there is an additional step of returning the harvested seaweed back
for further cultivation, and the open “comprising” format of claim 1 does not
exclude such an additional step. See Georgia-Pacific Corp. v. U.S. Gypsum
Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term
“comprising” is “inclusive or open-ended and does not exclude additional,
unrecited elements or method steps.”)
9 http://www.dictionary.com/browse/harvest, accessed Jan. 25, 2017.
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Appellants contend that
While Sieburth et al does indicate that seaweed exudate
comprises “carbohydrates”, nothing in such publication
suggests or discloses that such materials may include fucoidan
or laminarin. Consequently, one of ordinary skill in the art
would have no motivation to attempt to isolate such materials
from such exudate. Indeed, given the express teaching by Copp
et al that fucoidan is recovered from dried seaweed rather than
from seaweed exudate (see discussion below), one of ordinary
skill in the art would assume that such exudate did not comprise
significant amounts of fucoidan.
(App. Br. 7).
We find this argument unpersuasive because Yoshino specifically
teaches extraction of mucus (i.e. exudate) in order to obtain laminaran or
fucoidan (FF 2). The Examiner need not rely upon Sieburth for a reason to
select exudate as a laminarin or fucoidan source because Yoshino teaches
that element. The Examiner instead relies upon Sieburth to evidence that
there is greater exudate of carbohydrates such as laminarin or fucoidan at
three days after cutting rather than two days (FF 8), providing a reason to
collect exudate after two days have elapsed because collecting at the later
timeframe would have been expected to result in a greater amount of
laminarin or fucoidan product.
Appellants separately contend the “shortcomings of Yoshino et al and
Sieburth et al are not overcome by the cited secondary publications” (App.
Br. 7), contending that nothing in these references “suggests that the algal
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material should be left to produce exudate for two days, much less that such
exudate would comprise fucoidan and/or laminarin” (App. Br. 8).
We find this argument unpersuasive because the Examiner relies upon
Sieburth to provide a reason to leave exudate for more than two days, since
Sieburth demonstrates that more carbohydrate material encompassing
fucoidan and laminarin is present at three days relative to two days (FF 8).
To the extent that specific teachings in these references are at issue, “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Yoshino and Sieburth render claim 1 obvious.
F. 35 U.S.C. § 103(a) as obvious over Copp and Sieburth
The Examiner finds Copp
teaches a method of obtaining fucoidan by harvesting
Macrosystis pyrifera kelp. . . . harvesting of kelp (macro algae
brown, red or green) with the dual/joint collection of the algae
and its sieve sap for commercial use in a plurality of separate
products . . . both the sieve sap and wet brown algae solid
matter are jointly harvested ....
(Ans. 10—11 (underlining omitted)). The Examiner acknowledges that Copp
“does not teach that the kelp is allowed to exude sap for two days post
harvesting” (Ans. 12) but finds Sieburth teaches “an increase in the amount
of exudate materials (carbohydrates, phenolics, salts, etc.) collected when
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comparing two day versus three day exudation periods elapsing prior to
collection” (Ans. 13).
The Examiner finds it obvious “to allow exudation to occur for as
long as necessary (i.e. for 3 weeks . . .) to achieve optimal yield of sap
because Copp et al. explicitly suggests just such optimization” (Ans. 14).
The issue with respect to these rejections is: Does the evidence of
record support the Examiner’s conclusion that Copp and Sieburth render
claim 1 obvious?
Findings of Fact
9. Copp teaches “harvesting of kelp 10 (macro algae brown, red or
green) with the dual/joint collection of the algae and its sieve sap for
commercial use in a plurality of separate products” (Copp 8:40-43).
10. Copp teaches “kelp, and in particular, macro brown algae,
Macrocystis pyrifera, and other brown algae, such as Laminaria japonica
(and two other Laminaria algae) are not only a great source of Fucoidan, but
also capable of being processed to a purity of between 85—90%, or even
medical grade purity” (Copp 7:22—27).
11. Copp teaches “dried kelp and/or kelp-slime by-products will be
treated and used as a source of Fucoidan for personal healthcare” (Copp
5:15-16).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 10-14; FF 7—11) and agree that the
claims are rendered obvious by Copp and Sieburth. We address Appellants’
arguments below.
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Appellants contend “[wjhile Copp et al discloses collecting seaweed
exudate from harvested seaweed, the clear teaching of this publication is that
fucoidan remains in the seaweed itself rather than the exudate” (App. Br. 8).
Appellant contends that “the clear disclosure of Copp teaches away from the
present claimed invention” (Reply Br. 9).
We find this argument unpersuasive because, contrary to Appellants’
contention, Copp specifically teaches “kelp-slime by-products will be treated
and used as a source of Fucoidan for personal healthcare” (FF 11). Thus,
Copp expressly suggests the use of the exudate as a source for fucoidan.
Even if Copp prefers the use of the seaweed itself, disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). Moreover, a teaching away requires a reference to actually
criticize, discredit, or otherwise discourage the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Copp suggests the use of
exudate as a fucoidan source (FF 11) and Appellants do not identify a
teaching in Copp that criticizes, discredits, or discourages the use of exudate
as a fucoidan source.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Copp
and Sieburth render claim 1 obvious.
SUMMARY
In summary, we affirm the obviousness rejections.
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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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