Ex Parte McAuliffe et al

Patent Trial and Appeal Board

Aug 16, 2016

12528968 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/528,968 02/04/2010
5100 7590 08/18/2016
DANISCO US INC
ATTENTION: LEGAL DEPARTMENT
925 PAGE MILL ROAD
PALO ALTO, CA 94304
FIRST NAMED INVENTOR
Joseph C. McAuliffe
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.
30960US 8329
EXAMINER
ROBINSON, HOPE A
ART UNIT PAPER NUMBER
1652
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH C. MCAULIFFE, JORN DALGAARD MIKKELSEN,
A YROOKARAN J. POULOSE, and JORN BORCH SOE. 1
Appeal2014-008286
Application 12/528,968
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for producing fragrant esters which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The invention relates to the use of acyl transferases in combination
with an alcohol substrate to produce fragrant esters from triglycerides. Spec.
1-2. In some embodiments, the acyltransferase is used to form a fragrant
1 Appellants identify the real party in interest Danisco US Inc. Br. 2.
Appeal2014-008286
Application 12/528,968
ester and a peracid, which acts as a bleaching agent. Spec. 2. The invention
is disclosed as useful in cleaning laundry. Spec. 1.
Claims 10-12, 15-17, 19, 20, 22, and 23 2 are on appeal. Claims 10
and 17 are illustrative and read as follows:
10. A method of producing a fragrant ester, comprising
combining:
a) an SGNH acyltransferase,
b) an alcohol substrate for said SGNH acyltransferase,
and
c) an object soiled with an acyl donor;
wherein said SGNH acyltransferase catalyzes transfer of an
acyl group from said acyl donor from said soiled object onto
said alcohol substrate to produce said fragrant ester.
1 7. A method for the simultaneous generation of a
bleaching agent and a fragrance comprising, combining:
a) an SGNH acyltransferase,
b) an alcohol substrate for said SGNH acyltransferase,
c) an object soiled with an acyl donor, and
d) a source of hydrogen peroxide;
wherein said SGNH acyltransferase catalyzes transfer of an
acyl group from said acyl donor from said soiled object onto
said alcohol substrate to produce a fragrant ester, and further
catalyzes the perhydrolysis of said ester to produce a peracid.
Claims 10-12, 15-17, 19, 20, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Bojsen et al., US 2005/0059130 Al
(published Mar. 17, 2005) ("Bojsen") in view of Amin et al., WO
2005/056782 A2 (published June 23, 2005) ("Amin '782") or alternatively,
2 Claims 13 and 14 are also pending in the present application. Final Act. 2.
They have not been rejected but have been objected to as depending from
rejected claims. Final Act. 9.
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Appeal2014-008286
Application 12/528,968
in view of Amin et al., US 2008/0145353 Al (published June 19, 2008)
("Amin '353"). 3
DISCUSSION
Issue
The Examiner finds that Bojsen teaches that it was known to add
lipases to laundry detergents to remove greasy soils. Final Act. 4. The
Examiner also finds that Bojsen teaches that certain lipases can be effective
in reducing malodor on textiles after washing. Final Act. 5. The Examiner
further finds that Bojsen teaches a bleaching system that can comprise a
peroxide source which forms a peracid. Id. The Examiner finds that Bojsen
differs from the claims in that Boj sen does not describe using an SGNH
acyltransferase having perhydrolysis activity as required by the claims.
Final Act. 6. The Examiner finds, however, that Amin teaches the use of an
acyltransferase to form a fragrant ester and a peracid. Id. The Examiner
finds that Amin teaches a detergent compos1t10n that comprises
acyltransferase, ethanol, propanediol, 2-butyl-octanol, and percarbonate. Id.
The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to
arrive at the claimed invention as a whole ... based on the
combined teaching of the references. Bojsen et al. teach a
detergent containing a bleaching system which may comprise a
hydrogen peroxide source and a superfamily of lipolytic
enzyme to hydrolyze ester bonds. In light of the teachings in
Amin et al., it would have been obvious to one skilled in art at
the time invention was made to use the perhydrolase in the
3 The Examiner used Amin '782 for date purposes. The US equivalent,
Amin '353, was referred to during prosecution. Final Act. 4. For
consistency, we will also refer to the US equivalent in this opinion.
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Appeal2014-008286
Application 12/528,968
detergent composition of Bojsen et al., for converting the ester
formed from the acyl group into the more desirable peracid with
a reasonable expectation of success.
Final Act. 7.
Appellants contend that the references either separately or in
combination do not teach or suggest the claimed invention. Br. 4.
Appellants contend that Boj sen teaches the use of lipases which act to
hydrolyze trigylcerides forming fatty acids which are then removed by the
detergent composition. Id. Appellants argue that the present claims require
a different mechanism - the formation of an ester by transferring an acyl
group from an acyl donor by means of an acyltransferase. Id. Appellants
contend that Bojsen does not teach odor control by the formation of fragrant
esters. Id. With respect to Amin, Appellants contend that Amin does not
describe or suggest a method in which an SGNH
acyltransferase catalyzes transfer of an acyl group from said
acyl donor from said soiled object onto said alcohol substrate to
produce a fragrant ester (as required by both claims 10 and 1 7)
or further catalyzes the perhydrolysis of said ester to produce a
peracid (as required by claim 17).
Br. 5---6.
The issue presented is whether the Examiner has established by a
preponderance of the evidence that the pending claims would have been
obvious in view of Bojsen combined with Amin as defined by 35 U.S.C.
§ 103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
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Appeal2014-008286
Application 12/528,968
FPL Bojsen teaches the use of lipases to remove greasy soils. Bojsen
ii 6.
FF2. The lipases used in Bojsen can reduce the presence ofbutyric
acid malodors after washing. Bojsen iii! 413--424.
FF3. Amin teaches the use of a perhydrolase in a detergent
composition. Amin '353 if 666.
FF4. The detergent composition of Amin also contains alcohols and a
peroxide source. Amin '353 if 666.
FF5. The perhydrolase of Amin is an SGNH acyltransferase. Amin
'353 iii! 175 and 261.
FF6. The perhydrolase of Amin accepts a range of substrates for acyl
transfer including alcohols. Amin'353 if 301.
FF7. Amin teaches that the perhydrolase enzymes "are active on
various acyl donor substrates." Amin '353 if 235.
FF8. Amin teaches that peracids are formed by the enzymatically
catalyzed reaction of ester substrates and hydrogen peroxide. Amin '353 iii!
229 and 237.
Principles of Law
Under 35 U.S.C. § 103, a reference must be considered not only for
what it expressly teaches, but also for what it fairly suggests. In re
Lamberti, 545 F.2d 747 (CCPA 1976); In re Simon, 461F.2d1387 (CCPA
1972)
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Application 12/528,968
Analysis
Claims 10 and 17 are representative of the rejected claims and relate
to the formation of fragrant esters using a SGNH acyltransferase. Claim 1 7
includes the limitation that the esters are further converted into a peracid.
We agree with the Examiner that the subject matter of claims 10 and 17
would have been obvious to one of ordinary skill in the art at the time the
invention was made. Bojsen teaches the use of enzymes to prevent the
development of malodors when washing clothes stained with triglycerides.
FFl and 2. Amin teaches a detergent composition comprising a
perhydrolase, an alcohol, and a source of peroxide. FF3 and 4. The
perhydrolase of Amin is a SGNH acyltransferase. FF5. One of ordinary
skill in the art would understand from the teachings of Amin that the enzyme
first forms an ester by transferring an acyl group from a triglyceride to an
alcohol. FF6. The enzyme then acts to catalyze the reaction of the ester
with a peroxide to form a peracid. FF8. It would have been obvious to one
skilled in the art to use the detergent composition of Amin in the method of
Bojsen for washing objects soiled with triglycerides to produce a fragrant
ester and/ or a peracid.
Appellants argue that Bojsen does not teach the formation of an ester
but is limited to the hydrolysis of a triglyceride using a traditional lipase.
Br. 5. Although this may be true, the use of an acyltransferase to form an
ester by transferring an acyl group from the triglyceride to an alcohol is
taught by Amin. FF6. We note in particular that Amin's detergent includes
the alcohols which form esters by the action of the SGNH acyltransferase.
FF4. The references together, therefore, teach all the elements of Claims 10
and 17.
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Application 12/528,968
Appellants next argue that Amin only teaches the formation of a
peracid from an ester and does not teach the formation of the ester itself.
We disagree. As the Examiner found, and as noted above, Amin teaches the
use of an acyltransferase which can catalyze the transfer of an acyl group to
an alcohol to form an ester. Ans. 12. The formation of the ester is a
necessary intermediate for the formation of a peracid by the same catalyst
taught by Amin.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 10 and 17 would have been obvious in view of
Bojsen combined with Amin as defined by 35 U.S.C. § 103(a).
Claims 11, 12, 15, 16, 19, 20, 22, and 23 have not been argued
separately and therefore fall with claims 10 and 17. 37 C.F.R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection claims 10-12, 15-17, 19, 20, 22, and 23.
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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