Ex Parte Morozov et al

Patent Trial and Appeal Board

Jun 18, 2013

11419593 (P.T.A.B. Jun. 18, 2013)

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.
11/419,593 05/22/2006 Victor Morozov GMU-05-015U 9609
28598 7590 06/18/2013
GEORGE MASON UNIVERSITY
OFFICE OF TECHNOLOGY TRANSFER, MSN 5G5
4400 UNIVERSITY DRIVE
FAIRFAX, VA 22030
EXAMINER
DAVIS, RUTH A
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
06/18/2013 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 VICTOR MOROZOV,
CHARLES L. BAILEY, and NIKOLAI N. VSEVOLODOV
__________

Appeal 2012-002781
Application 11/419,593
Technology Center 1651
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for cultivating droplets of Micorrhizal fungus and Arthrobacter
histidinolovorans, which have been rejected for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Statement of the Case
Background
The Specification teaches cell culture involving “suspending
cultivatable droplets in a porous medium, where each droplet includes a
mixture of a cultivation medium and a surface-active agent or compound . . .
[wherein] [e]ach droplet may provide an encapsulated microenvironment for
the addition of a plurality of cells to be cultured” (Spec. 2 ¶ 0011). The
Specification discloses that the method is drawn to cultivating droplets of
Micorrhizal fungus (Spec. ¶¶ 0059-0062) and Arthrobacter
histidinolovorans (Spec. ¶¶ 0063-0065).
The Claims
Claims 14-29 are on appeal. Claim 14 is representative and reads as
follows:
14. A method for cultivating droplets of Micorrhizal fungus
comprising:
a. introducing at least one surfactant to a cultivation
medium for creating a mixture;
b. adding a plurality of cells comprising Micorrhizal
fungus to the mixture;
c. creating cultivatable droplets from the mixture
having the cells; and
d. stabilizing the cultivatable droplets by introducing
the cultivatable droplets to a porous medium.

The Issue
The Examiner rejected claims 14-29 under 35 U.S.C. §
103(a) as obvious based on Weaver
1
and Shukla
2
(Ans. 5-8).

1
Weaver, J., US 4,401,755, issued Aug. 30, 1983.
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The Examiner finds “Weaver teaches methods for cultivating droplets
comprising incubating microbe cells in a microdroplet that has been blended
and jetted. The droplets are directed into a vapor medium (exogenous gas)
and then are directed onto a solid surface after the mediums are inoculated
with a cell or cells and combined with polymers (or surfactants)” (Ans. 5).
The Examiner finds “[t]he reference does not teach the method wherein the
solid surface is a porous medium such as a hydrophobic or fibrous powder or
silanized particles” (Id.). However, the Examiner finds “at the time of the
claimed invention, such media were well known and used in the art for
culturing droplets” (Ans. 6). In support, the Examiner introduces Shukla
and finds “Shukla teaches cell culture methods wherein the cells are cultured
in droplets . . . and are coated with a hydrophobic powder . . . or
hydrocarbon coated silica” (Id.). The Examiner further finds “Shukla
teaches the hydrophobic powder reduces the sticking of cells to containers
and improves cell growth” (Id.).
Furthermore, the Examiner finds that “[a]lthough the references do
not teach cultivating the claimed microorganisms, the teachings of the
combined references clearly suggest that the methods are well suited for
incubating cells, microcolonies, and microbes such as bacteria” (Ans. 6).
The Examiner finds “one of ordinary skill in the art would have been
motivated to practice the method with various active microbes, to include
the claimed fungi, with a reasonable expectation for successfully cultivating
droplets of the instant fungal microbes” (Ans. 6).

2
Shukla et al., US 6,114,153, issued Sept. 5, 2000.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Weaver and Shukla render claims
14-29 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Weaver teaches that “microbiologically active materials having
a small size such as yeast, bacteria, mold, enzymes or the like are suspended
in an aqueous medium capable of gelatin [sic, gelation] upon subsequent
treatment of the suspending medium” (Weaver, col. 3, ll. 7-11).
2. Weaver teaches the incorporation of surfactants where
“[s]uitable suspending mediums include . . . those formed from vinyl
pyrolidone [sic] . . . vinyl alcohol, vinyl pyrridine, vinyl pyrridine-styrene
co-polymer or the like” (Weaver, col. 3, lines 12-22).
3. Weaver teaches “the gel droplets also can contain a
conventional bacteria growth supporting composition which permits the
bacteria to metabolize and, sometimes, to replicate within the droplets”
(Weaver. col. 4, lines 15-17).
4. Weaver teaches that “the gel micro-droplets (GMDs) can be
directed onto a solid surface” (Weaver, col. 2, lines 40-41).
5. Weaver teaches that the “invention is useful for studying a wide
variety of materials having microbiological activity, interaction or
suppression including parasites, virus, yeast, cells, bacteria mold, enzymes,
interactions between variant cells, cell-virus interactions, hybridomas or the
like” (Weaver, col. 4, ll. 33-37).
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6. Shukla teaches “when water or an aqueous solution contacts a
hydrophobic powdered material, it forms droplets coated with the powder”
(Shukla, col. 1, lines 34-36).
7. Shukla teaches by coating “an aqueous solution containing . . .
cells with a hydrophobic powdered material, the tendency to stick is reduced
. . . [and] in some cases, cell growth may be improved because of the three
dimensional nature of the aqueous phase” (Shukla, col. 4, lines 10-14).
8. The Specification teaches “surfactants may be added to [the]
inoculated mixture to keep suspended cultivatable droplets stable when
introduced to a hydrophobic particle. Nonlimiting examples of such
surfactants include . . . synthetic polymers (e.g., polyvinyl alcohol, poly-
(vinyl-pyrrolidone), etc.)” (Spec. 15 ¶ 0046).
9. The Specification teaches “introducing the cultivatable droplets
to a porous medium . . . [t]he porous medium may include hydrophobic
particles . . . [i]n an embodiment, the porous medium is a hydrophobic
powder” (Spec. 8 ¶¶ 0030-0031).
Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Analysis
Weaver teaches methods of cultivating microorganisms (FF 5) by
combining a surfactant such as vinyl pyrrolidone (FF 2, 8) with a cultivation
medium (FF 3) to form droplets (FF 3) which may be introduced to a solid
support (FF 4). While Weaver does not teach a porous medium, Shukla
teaches that adding droplets to a hydrophobic powder results in improved
microbial growth and reduced stickiness (FF 7) where a hydrophobic
powder is disclosed as a porous medium (FF 9).
However, Appellants contend that “Weaver and Shukla are
insufficient to establish a prima facie case of obviousness under 103 for
Micorrhizal fungus and/or Arthrobacter histidinolovorans” (App. Br. 13).
Appellants contend “there is no articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness that one would
have been motivated to „…try any bacteria and/or fungus in the methods or
[sic] Weaver and Shukla‟” (App. Br. 13). Appellants further argue “the fact
that Micorrhizal fungus and/or Arthrobacter histidinolovorans may be
encompassed by a generic genus may not by itself render Micorrhizal
fungus and/or Arthrobacter histidinolovorans obvious as asserted by the
Office Action” (Id.).
While we agree with the Examiner that the generic process steps of
claim 1 are suggested by the combination of Weaver and Shukla, the
Examiner has provided no evidence, reason, or other basis which teaches or
suggests the use of either Micorrhizal fungus or Arthrobacter
histidinolovorans as required by claims 14 and 20. “An examiner bears the
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initial burden of presenting a prima facie case of obviousness.” In re Huai-
Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011).
We are not persuaded by the Examiner‟s finding that the ordinary
artisan “have been motivated to practice the method with various active
microbes, to include the claimed fungi, with a reasonable expectation for
successfully cultivating droplets of the instant fungal microbes” (Ans. 6).
Without providing any evidence that these were known organisms, that there
was a reason to cultivate these organisms, or that these were known
equivalents to the organisms disclosed in Weaver or Shukla, the Examiner
has failed to satisfy the burden of presenting a prima facie case of
obviousness that would have rendered the specifically named Micorrhizal
fungus or Arthrobacter histidinolovorans obvious.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Weaver and Shukla render claims 14-29 obvious.
SUMMARY
In summary, we reverse the rejection of claims 14-29 under 35 U.S.C.
§ 103(a) as obvious over Weaver and Shukla.

REVERSED

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