Ex Parte Kawamura et al

Patent Trial and Appeal Board

Feb 20, 2018

14399992 (P.T.A.B. Feb. 20, 2018)

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.
14/399,992 11/10/2014 Kenji Kawamura TOR-14-2419 8652
35811 7590 02/22/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
pto.phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI KAWAMURA, MASATERUITO, and
KATSUSHIGE YAMADA
Appeal 2017-005628
Application 14/399,9921
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7—10 and 13—15. We have jurisdiction. 35 U.S.C.
§ 6(b).
We REVERSE.
1 The Appellant is the applicant Toray Industries, Inc. The Appeal Brief
indicates the applicant is also the real party in interest. Appeal Br. 1.
Appeal 2017-005628
Application 14/399,992
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a method of separating
lactic acid from an aqueous lactic acid solution containing glycerol as an
impurity. Spec. 1 6. The Specification explains that one known method is
using an ion-exchange resin where lactic acid is adsorbed to and then eluded
to the resin, but this method is not ideal because adsorbing a large amount of
lactic acid requires a large amount of resin. Id. Thus, the invention seeks to
instead use an ion-exchange resin that adsorbs the glycerol. Id. at 112.
Claim 7, reproduced below, is the only independent claim on appeal
and is illustrative of the claimed subject matter:
7. A method of producing lactic acid comprising removing
glycerol from an aqueous lactic acid solution containing glycerol
as an impurity using an ion-exchange resin by adsorbing the
glycerol to the ion-exchange resin.
Appeal Br. 7 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Powell et al. (“Powell”)
Liu et al. (“Liu”)
Munson et al. (“Munson”)
Kimura et al. (“Kimura”)
US 3,202,705
US 2005/0112737 Al
US 2009/0199460 Al
JP 2011-103879
Aug. 24, 1965
May 26, 2005
Aug. 13, 2009
June 2, 2011
2 In this opinion, we refer to the Final Office Action dated May 11, 2016
(“Final Act.”), the Appeal Brief filed November 2, 2016 (“Appeal Br.”), the
Examiner’s Answer dated December 20, 2016 (“Ans.”), and the Reply Brief
filed February 17, 2017 (“Reply Br.”).
2
Appeal 2017-005628
Application 14/399,992
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 7—9 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Powell in view of Kimura and Munson. Final Act. 2.
Rejection 2. Claims 10, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Powell in view of Kimura and Munson and further in
view of Liu. Id. at 5.
ANALYSIS
With respect to independent claim 7, the Examiner finds that Powell
discloses producing lactic acid by fermentation and then using a cation
exchange resin “to remove or inactivate objectionable color forming
materials.” Final Act. 2 (citing Powell). Powell refers to “conventional
fermentation processes” (Powell 1:43—45), but the Examiner finds that
Powell fails to specifically teach a fermenting process utilizing glycerol.
Final Act. 3. The Examiner finds, however, that Kimura teaches a lactic
acid production method using glycerol. Id? The Examiner also finds that
Kimura teaches that glycerol remains in the culture solution after production
of the lactic acid. Id. at 4. The Examiner finds that a person having ordinary
skill in the art “would have had a reasonable expectation of success in
utilizing a process for producing lactic acid from glycerol” in order to
3 We note that the Examiner has not established that the Kimura process
(2011) was a “conventional fermentation process” at the time of Powell
(August 24, 1965). As such, even if Powell were to be broadly read as
teaching use of a cation exchange resin to remove any kind of impurities
resulting from conventional processes known in 1965, the Examiner has not
established that a person of skill would have necessarily understood that
such resin could also remove any impurities resulting from more modem
processes (such as glycerol as an impurity from the Kimura process).
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Appeal 2017-005628
Application 14/399,992
provide the lactic acid-containing process liquor of Powell’s process and
concludes that it would have been obvious to pass lactic acid produced from
such a process through a cation exchange resin as taught by Powell. Id.
With respect to claim 7’s “adsorbing the glycerol” recitation, the
Examiner finds that Munson teaches an ion exchange resin that adsorbs
glycerol. Id. at 4.
Appellant argues that a person of skill in the art would not have had a
reasonable expectation of success in applying Munson to the combination of
Powell and Kimura in order to remove glycerol from an aqueous lactic acid
solution having ionic components. Appeal Br. 4; see also In re Vaeck, 947
F.2d 488, 493 (Fed. Cir. 1991) (holding that reasonable expectation of
success is a necessary part of proper obviousness analysis). Appellant cites
Munson as well as the user’s guide and data sheet for the AMBERFITE™
BD10DRY™ (hereinafter referred to as “AMBERFITE”) to provide
evidence that the AMBERLITE resin (utilized in, for example, Examples 2
and 4 of Munson (see Munson || 54, 60)) adsorbs water more than methanol
and adsorbs methanol more than glycerol. Appeal Br. 5. Indeed, this resin
exhibits considerable swelling in water. See, e.g., AMBERLITE USERS
GUIDE, 1 (attached to Evidence Appendix of the Appeal Brief) (“Avoid
contacting the media with pure methanol or water as this will cause it to
swell up to 3 times in volume and the glass column can shatter if insufficient
void space is left at the top of the column.”). Thus, while Munson teaches
that AMBERLITE may be useful for adsorbing glycerol from hydrophobic
biodiesel, it does not teach that it can also be useful in adsorbing glycerol
away from an ionic, hydrophilic substance such as lactic acid. Appeal Br. 4;
see also, e.g., Munson (Abstract, | 54).
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Appeal 2017-005628
Application 14/399,992
Because of this difference between, on one hand, the Munson
reference and, on the other hand, both claim 7 and the proposed
Powell/Kimura combination, the Examiner clarifies in the Answer that
Munson is not relied upon for a particular cation exchange resin and is not
relied upon “to modify the process suggested by Powell and Kimura in any
way.” Ans. 5. Rather, the Examiner uses Munson merely to establish that a
cationic ion exchange resin is capable of adsorbing glycerol. Id.
Because of the Examiner’s appropriately limited reliance on Munson,
the Examiner has not adequately explained what particular resin the person
of skill in the art would have chosen to remove glycerol from
Powell/Kimura’s aqueous lactic acid. See Ans. 3 (identifying Powell as
teaching “a strongly acidic cation exchange resin”). The Examiner also fails
to adequately explain why a person of skill in the art would have had a
reasonable expectation of success in adsorbing glycerol when making use of
such resin. Reply Br. 2. Instead, for the reasons explained above, a
preponderance of the evidence before us indicates that a person of skill in
the art would not have reasonably expected a resin such as that identified in
Munson (also a strong acid cation exchange resin, see AMBERL1TE product
data sheet (attached to Evidence Appendix of the Appeal Brief)) to
successfully adsorb glycerol from aqueous lactic acid. Indeed, the evidence
of record indicates that a person of ordinary skill in the art would have
expected such a resin to adsorb the ionic lactic acid.
We therefore do not sustain the Examiner’s rejection of claim 7. We
also do not sustain the Examiner’s rejection of claims 8—10 and 13—15
because each of those claims directly or indirectly depends from claim 7 and
because the Examiner’s use of the Liu reference in rejecting claims 10, 14,
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Appeal 2017-005628
Application 14/399,992
and 15 does not cure the issue discussed above. Final Act. 5—6 (citing Liu as
teaching distillation of aqueous lactic acid after use of ion exchange).
DECISION
For the above reasons, we reverse the Examiner’s rejections of
claims 7—10 and 13—15.
REVERSED
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