Ex Parte Ju

Patent Trial and Appeal Board

Jun 23, 2016

12811542 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/811,542 07/02/2010 Lu-Kwang Ju
26360 7590 06/23/2016
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
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.
UOA.726.US 8655
EXAMINER
VANBUREN,LAURENK
ART UNIT PAPER NUMBER
1651
MAILDATE DELIVERY MODE
06/23/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LU-KW ANG JU1
Appeal2014-003645
Application 12/811,542
Technology Center 1600
Before ULRIKE W. JENKS, JACQUELINE T. HARLOW, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a multi-
step method for producing an algae product. We have jurisdiction under 3 5
U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is The University of
Akron. (Appeal Br. 1.)
Appeal2014-003645
Application 12/811,542
STATEMENT OF THE CASE
Claims on Appeal
Claims 2--4, 6-8, 10-13, 15, and 21-24 are on appeal. (Claims
Appendix, Appeal Br. 12-15.) Independent claim 11 is illustrative and reads
as follows:
11. A multi-step method for producing an algae product from waste
water treatment comprising:
a waste consumption step comprising,
combining, in a first vessel, organic waste products and
phagotrophic-algae-consumable microorganisms capable of
consuming said organic waste products,
allowing said phagotrophic-algae-consumable microorganisms
to consume said organic waste products to thereby grow said
phagotrophic-algae-consumable microorganisms, and
transferring said phagotrophic-algae-consumable
microorganisms to a second vessel; and
a phagotrophic-algae-consumable microorganism consumption step
carried out after said \'l/aste consumption step, said phagotrophic=algae=
consumable microorganism consumption step comprising:
adding phagotrophic algae to said second vessel,
allowing said phagotrophic algae to consume said
phagotrophic-algae-consumable microorganisms and thereby grow
said phagotrophic algae; and
collecting a desired algae product from said phagotrophic algae.
(Id. at 13.)
Examiner's Rejections
1. Claim 11 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. (Final Act. 2.)2
2. Claims 2--4, 11-13, 15, and 21-24 stand rejected under 35 U.S.C.
2 Office Action dated Aug. 30, 2012.
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§ 103(a) as unpatentable over Greene,3 Metz,4 and Urabe. 5 (Ans. 5.)
3. Claims 6, 7, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Greene, Metz, Urabe, and Raymond. 6 (Id. at 9.)
4. Claims 6, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Greene, Metz, Urabe, and Hulls.7 (Id. at 10.)
With respect to the obviousness rejections, Appellant argues claims 2-
4, 6-8, 10-13, 15, and 21-24 as a group. Accordingly, we address Rejection
Nos. 2--4 together and limit our discussion of those rejections to claim 11.
FINDINGS OF FACT
We adopt as our own the Examiner's findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. Greene teaches "a process and system for producing useable products
from ... waste materials." The process includes the production of products
"by bioconversion of the substrate" using organisms such as "bacteria, yeast,
fungi, [and] algae." Products that can be formed from the organisms include
"phospholipids." (Greene i-fi-17, 13.)
FF 2. Urabe teaches that "[i]ngestion of bacteria is known in several algal
taxa, including Chrysophyceae." (Urabe at 77.)
3 Greene, US 2005/0141966 Al, published June 30, 2005 ("Greene").
4 Metz et al., US 2002/0194641 Al, published Dec. 19, 2002 ("Metz").
5 Urabe et al., Effects of phosphorus supply on phagotrophy by the
mixotrophic agla Uroglena americana (Chrysophyceae), 18 AQUATIC
MICROBIAL ECOLOGY 77-83 ( 1999) ("Urabe").
6 Raymond, US 4,253,271, issued Mar. 3, 1981 ("Raymond").
7 Hulls, US 3,955,318, issued May 11, 1976 ("Hulls").
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Application 12/811,542
FF 3. Urabe teaches that the Chrysophycean species U. americana cannot
grow without bacteria, that "phospholipids are the nutritional factor essential
to [] growth," and that "phospholipids supporting growth of this alga are
ubiquitous in natural bacteria." (Id.)
FF 4. Metz teaches microorganisms that have the ability to "consume
bacteria" and "to produce bioactive compounds (e.g., lipids)." (Metz i-f 26.)
FF 5. Metz teaches algae as a microorganism "capable of consuming whole
bacterial cells (bacterivory) by ... phagotrophic ... capability" and that
such algae include "the class Chrysophyceae." (Id. at i-fi-1156, 158.)
DISCUSSION
Issue No. 1
Whether a preponderance of evidence of record supports the
Examiner's finding that claim 11 fails to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph.
Analysis
Rejection No. 1
The Examiner found that claim 11 "conveys that the microorganisms
and the nutrient medium are transferred to a second vessel" but that "[t]he
transfer of the microorganisms and the algae into the second vessel is not
adequately described in the specification." (Final Act. 3.) Furthermore, the
Examiner states that Figure 2 of the Specification "shows the system where
it looks like there is only one vessel with several compartments instead of
two distinct vessels." (Id.)
Appellant responds by stating that this rejection "seems to focus on
the use of the term 'vessel' in the claims, as opposed to the term 'region'
used in the specification." (Appeal Br. 4.) Appellant refers to an
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Application 12/811,542
embodiment of the claimed method illustrated in Figure 2 of the
Specification, reproduced below:
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Clarifier
Based on Figure 2, Appellant argues that "it is readily appreciated that
the bold vertical lines in the figure represent walls, and these walls readily
define separate vessels at the first, second and third growth regions 64, 7 4
and 84, respectively." (Appeal Br. 4.) Furthermore, Appellant argues that
"the bold vertical lines readily define separate vessels ... at the first, second,
and third stages (60, 70, and 80)." (Reply Br. 4.) Based on the foregoing,
Appellant argues that "one skilled in the art would have understood, at the
time of the invention, that the Applicant had possession of the claimed
invention, particularly the aspect of transferring the microorganisms and the
algae into the second vessel." (Id.)
We are persuaded by Appellant's argument. We find that a person of
ordinary skill in the art, after considering the Specification, would
understand that the practice of the claimed invention necessarily requires
some division or distinction between the waste consumption step (when the
microorganisms grow) and the microorganism consumption step (when the
microorganisms are consumed). Moreover, giving the term "vessel" its
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broadest reasonable interpretation in light of the Specification, we find that
"the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (citing cases). Accordingly, we reverse the
Examiner's rejection under 35 U.S.C. § 112, first paragraph.
Conclusion
A preponderance of evidence of record fails to support the Examiner's
finding that claim 11 fails to satisfy the written description requirement
under 35 U.S.C. § 112, first paragraph.
Issue No. 2
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness as to claim 11.
Analysis
Rejection Nos. 2--4
The Examiner concluded that claim 11 would have been obvious to a
person of ordinary skill in the art because Metz teaches that phagotrophic
algae have the ability to consume bacteria and produce lipids (FF 4, 5),
Urabe teaches that algae ingest bacteria, particularly for the phospholipids in
bacteria (FF 2, 3), and that Greene teaches that lipid producing bacteria can
be cultured in waste water (FF 1). (Ans. 6-7.) Stated another way, "it
would have been obvious to take the bacteria used and grown in Green[ e]
and feed them to the algae of Metz or Urabe" to produce products, such as
lipids. (Id. at 11.) Moreover, "[ o ]ne of ordinary skill in the art would have
been motivated to use any available lipid producing bacteria to feed the
algae of Metz to produce lipids and Greene provides said bacteria." (Id.)
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We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellant has not overcome that prima
facie case.
Appellant argues that the Examiner relies on Greene for "the claimed
'waste consumption step,'" but "provides no prior art or indeed any support
to address the" transferring step or the claimed limitations within the
microorganism consumption step. (Appeal Br. 6-7; Reply Br. 5-6.)
Appellant argues further that "the steps are limited in a specific order" with
"the waste consumption step being carried out before the microorganism
consumption step." (Appeal Br. 8.) Appellant also argues that "the
Examiner states that the references do not teach the claimed method, even
when combined." (Id.)
We are not persuaded. As an initial matter, the Examiner relies on
Metz and Urabe to teach the phagotrophic algae that consume bacteria, and
thereby grow, and produce products (e.g., lipids). (FF 2-5; Final Act. 5-7;
Ans. 5-7, 11-12.) Moreover, we are unpersuaded by either Appellant's
argument that the transferring step (and subsequent limitations) are not
taught by the prior art or Appellant's argument regarding the specific order
of the steps. The court in Perfect Web Techs., Inc. v Info USA, Inc., 587
F.3d 1324 (Fed. Cir. 2009), affirmed the obviousness of method claims
even though one off our steps in the independent claim did not appear in
the prior art. Id. at 1327-30. In its decision, the court acknowledged
that obviousness "may include recourse to logic, judgment, and common
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sense available to the person of ordinary skill that do not necessarily
require explication in any reference or expert opinion." Id. at 1329.
We find a similar rationale applicable to the instant case. Here, the
Examiner makes it clear that it would have been obvious to transfer the
microorganisms (e.g., bacteria) to a second vessel (after growing the
bacteria), and adding the phagotrophic algae to the second vessel to consume
the bacteria. (Final Act. 6-7.) Furthermore, it is these obvious steps and
limitations that the Examiner is referring to with the statement "[ w ]hen
combined, these three references do not specifically teach [transferring,
etc.]." (Id. at 6, emphasis added.) Moreover, we agree with the
Examiner that the transferring step, the limitations recited in the
microorganism consumption step, and the order of steps would have
been obvious based on the "logic, judgment, and common sense" of a
person of ordinary skill in the art. See Perfect Web, 587 F.3d at 1329.
Appellant also argues that "the cited prior art provides no motivation"
and that "the Examiner has not provided specific motivation for combining
the references." (Appeal Br. 7, 9.) Appellant is reminded, however, that
evaluating suggestion or motivation in an obviousness analysis "not only
permits, but requires, consideration of common knowledge and common
sense." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006); see also KSR, 550 U.S. at 421
("A person of ordinary skill is also a person of ordinary creativity, not an
automaton."). Moreover, the Examiner states that "[o]ne of ordinary skill in
the art would have been motivated to use any available lipid producing
bacteria to feed the algae of Metz to produce lipids and Greene provides said
bacteria." (Ans. 11.) Accordingly, in view of the Examiner's statement, and
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because it would have been common sense to combine the teachings of the
references to achieve the claimed invention, we are unpersuaded by
Appellant's argument regarding lack of motivation to combine the
references.
We also note Appellant's reference to "hindsight" and criticism of the
Examiner's Advisory Action statement. (Appeal Br. 7-9.) However,
Appellant has not pointed to any persuasive evidence of error that
overcomes the preponderance of evidence supporting the Examiner's
obviousness conclusion.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion of obviousness as to claim 11. Claims 2--4, 6-8, 10, 12, 13, 15,
and 21-24 were not argued separately and fall with claim 11.
SUMMARY
We reverse the rejection of claim 11 under 35 U.S.C. § 112, first
paragraph.
We affirm the rejections under 35 U.S.C. § 103(a) of all claims on
appeal.
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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