Ex Parte Saunders et al

Patent Trial and Appeal Board

Mar 8, 2018

13637208 (P.T.A.B. Mar. 8, 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.
13/637,208 09/27/2012 Jeremy Saunders 11683-US-PCT 1950
25908 7590 03/12/2018
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
PO BOX 576
FRANKLINTON, NC 27525-0576
EXAMINER
BERKE-SCHLESSEL, DAVID W
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
DOCKETIN G @ novozymes .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY SAUNDERS, JOSEPH M. JUMP, HANS SEJR OLSEN,
AMANDA GUICHARD, NATHANIEL E. KREEL,
MICHAEL AKERMAN, and ANNE GLUD HJULMAND1
Appeal 2017-002824
Application 13/637,208
Technology Center 1600
Before JOHN E. SCHNEIDER, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a process of recovering oil from fermentation products.
Claims 5, 31—33, and 35—45 are on appeal as rejected under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification states, “[processes for producing fermentation
products, such as ethanol, from a starch or lignocellulose containing material
are well known in the art.” Spec. 1:10—11. “Much of the work in oil
1 Appellants identify the Real Parties in Interest as “Novozymes North
America, Inc. and Novozymes A/S.” Appeal Br. 1.
Appeal 2017-002824
Application 13/637,208
recovery from fermentation processes has focused on improving the
extractability of the oil from the whole stillage.” Id. at 2:1—2.
Claims 5 and 45 are independent claims. Claim 1 is representative
and is reproduced below:
5. A process of recovering oil, comprising
(a) converting a starch-containing material into dextrins by
liquefying with a Bacillus stearothermophilus alpha-amylase;
(b) saccharifying the dextrins using a carbohydrate source
generating enzyme to form a sugar;
(c) fermenting the sugar in a fermentation medium into a
fermentation product using a fermenting organism, wherein the
fermentation medium comprises xylanase, endoglucanase, and
GH61 polypeptide;
(d) distilling the fermentation product to form a whole
stillage;
(e) separating the whole stillage into thin stillage and wet
cake; and
(f) recovering the oil from the thin stillage.
Appeal Br. 9 (Claims App’x).
The following rejection is on appeal:
Claim 5, 31—33, and 35—45 stand rejected under 35 U.S.C. § 103(a)
over Winsness,2 Li,3 and Olsen.4 Final Action 5.
FINDINGS OF FACT
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the claims and prior art, and conclusions set out in the Final
2 US 7,608,729 B2 (issued Oct. 27, 2009) (“Winsness”).
3 WO 2009/120931 A2 (pub. Oct. 1, 2009) (“Li”).
4 WO 2004/080923 A2 (pub. Sept. 23, 2004) (“Olsen”).
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Office Action and Examiner’s Answer. See Final Action 2—9; Answer 2—10.
We set forth the following findings to highlight certain evidence of record.
FF1. Winsness discloses “[a] method ... for recovering oil
from stillage including oil resulting from a process used for producing
ethanol” where the stillage is a waste product produced during
fermentation, which teaches and suggests the claimed “(d) distilling
the fermentation product to form a whole stillage.” Winsness
Abstract, 1:38-44, 2:58—60, 4:41—43; see also Final Action 4—9 and
Answer 2—3, 5—10 (discussing Winsness).
FF2. Winsness discloses “[t]he whole stillage leftover after
deriving the ethanol is mechanically separated into distillers wet
grains (approx. 35% solids) and thin stillage (approx. 8% solids) using
a centrifugal decanter,” which teaches and suggests the claimed “(e)
separating the whole stillage into thin stillage and wet cake.”
Winsness 5:19-22; see also Final Action 4—9 and Answer 2—3, 5—10
(discussing Winsness).
FF3. Winsness discloses “the thin stillage is passed through a
centrifuge 14 and, in particular, a disk stack centrifuge ... to recover
valuable com oil” and also “using a three phase decanter 16 that splits
the raw material into three phases: a solids (heavy) phase, a water
(intermediate) phase, and an oil (light) phase (typically in the form of
an emulsion)” where “[t]he oil phase and the intermediate phase
together are essentially the thin stillage, which may be evaporated and
passed through a centrifuge 14 to recover 20 valuable oil,” which
teaches and suggests the claimed “(f) recovering the oil from the thin
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stillage,” using both and either com and com byproducts as the
starting material. Winsness 6:14—20, 7:4—21; see also Final Action 4—
9 and Answer 2—3, 5—10 (discussing Winsness).
FF4. Olsen discloses a fermentation process where “[a]
conventional enzymatic liquefaction process may be carried out. . .
[where] alpha-amylase [is] added to initiate liquefaction,” and that
“Bacillus stearothermophilus alpha-amylase (BSG alpha-amylase)
variant” is preferred, which produces dextrins, which teaches and
suggests the claimed “(a) converting a starch-containing material into
dextrins by liquefying with a Bacillus stearothermophilus alpha-
amylase.” Olsen 1:17—23, 4:24—31; see also Final Action 4—9 and
Answer 2—3, 5—10 (discussing Olsen).
FF5. Olsen discloses “[d]uring saccharification, the dextrins
from the liquefaction are further hydrolyzed to produce low molecular
sugars DP 1-3 that can be metabolized by yeast,” which teaches and
suggests the claimed “(b) saccharifying the dextrins using a
carbohydrate source generating enzyme to form a sugar.” Olsen
1:23—24; see also Final Action 5—9 and Answer 2—7, 10 (discussing
Olsen).
FF6. Olsen discloses “[fermentation may be performed using
a yeast, e.g., from Saccharomyces spp., which [is] added to the mash,”
where “an additional enzyme activity is present; said enzyme activity
selected from the list consisting of cellulose, xylanase and phytase,”
e.g., “ULTRAFLO® (from Novozymes A/S),” which teaches and
suggests the claimed “(c) fermenting the sugar in a fermentation
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medium into a fermentation product using a fermenting organism,
wherein the fermentation medium comprises xylanase, endoglucanase
[a cellulase], and GH61 polypeptide,” except for the inclusion of
GH61 polypeptide. Olsen 1:30-31, 3:5—9; see also Final Action 5—9
and Answer 2—7, 10 (discussing Olsen).
FF7. Further to the preceding findings of fact, Olsen discloses
that “[t]he granular starch to be processed [in its fermentation]
processes . . . may in particular be obtained from . . . stems, cobs,. . .
or whole grain . . . [and] corns.” Olsen 8:34—9:1; see also Final
Action 5—9 and Answer 2—7, 10 (discussing Olsen).
FF8. Li discloses a “process of producing fermentation
products from lignocellulose-containing material. . . [including]
hydrolyzing the slurry with one or more cellulolytic enzymes,” and
that “fermentation products from starch and sugars” were well known
and “ongoing, but the production costs is relatively high,” so
“attention has turned towards the cheaper liganocellulose feedstocks
(i.e., biomass) such as agricultural residues, grasses etc.” Li Abstract,
1:5—14, 1:21—27; see also Final Action 3—9 and Answer 2—10
(discussing Li).
FF9. Li discloses fermentation source materials including “any
of the typical grains, such as, but not limited to, com, wheat, and
rice,” as well as “[l]ignocellulose-containing material [such as] . . .
stems, leaves, hulls, husks, and cobs . . . [and] com fiber . . . [and]
com cobs,” to be fermented to leave a byproduct “referred to as
‘whole stillage,” which “is dewatered and separated into a solid and a
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liquid phase”: a wet cake and thin stillage. Li 2:3—17, 6:3—10; see
also Final Action 3—9 and Answer 2—10 (discussing Li).
FF10. As enzymes for use in its fermentation process, Li
discloses, as preferred, “xylanase” and “endoglucanases,” “[i]n order
to be efficient,” and “[i]n a preferred embodiment the cellulolytic
preparation compris[es] a polypeptide having cellulolytic enhancing
activity (GH61A),” which teaches and suggests the claimed “(c)
fermenting the sugar in a fermentation medium into a fermentation
product using a fermenting organism, wherein the fermentation
medium comprises xylanase, endoglucanase, and GH61 polypeptide.”
Li 5:5-7, 10:5-7, 10:28-30, 11:24-34, 13:24—29, 16:25-27; see also
Final Action 3—9 and Answer 2—10 (discussing Li).
DISCUSSION
Only those arguments made by Appellants in the Appeal Brief and
properly presented in the Reply Brief have been considered in this Decision.
Arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”).
In analyzing patentability and determining obviousness “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the question is whether
a patent claiming the combination of elements of prior art is obvious,” the
answer depends on “whether the improvement is more than the predictable
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use of prior art elements according to their established functions.” Id. at
417.
The Examiner determined, and Appellants do not contest, that the
combination of Winsness, Olsen, and Li teaches and suggests each element
of claim 1. See FF1—FF10; see also Appeal Br. 5—7. Appellants argue that
Winsness fails to teach inclusion of GH61 in its fermentation medium and
oil extraction process and, further, that Olsen does not remedy this
shortcoming. Appeal Br. 5—6. Although Appellants do not contest that Li
teaches including GH61 in a fermentation medium, Appellants argue that
“Li does not cure the deficiencies of Winsness or Olsen and relates to a very
different chemical reaction.” Id. at 6. Appellants also argue that the skilled
artisan would not have combined Li’s teachings with those of Winsness and
Olsen to solve oil-extraction problems because there is no suggestion to
make the combination based on the references themselves. Id. at 6—7; see
also Reply Br. 2. We do not find Appellants’ arguments persuasive.
To the extent Appellants argue the references individually, which in
spite of their contentions to the contrary Appellants do, we do not find such
arguments persuasive because the rejection is over a combination of prior
art. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. [The references] must be read, not in isolation,
but for what [they] fairly teach[] in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Further, “[i]n determining whether the subject matter of a patent claim
is obvious, neither the particular motivation nor the avowed purpose of the
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patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” KSR, 550 U.S.
at 419. Thus, whether Li’s teachings solve issues specific to oil extraction is
not determinative as to whether Li would be combined with Winsness and
Olsen for Li’s teaching of improvements to the process of fermentation,
which is a step of the appealed claims that precedes oil extraction.
The Examiner’s explanation as to the combined prior arts’ disclosure
and the motivation to make the prior art combination sets out a persuasive
basis for obviousness with clarity:
Winsness provides for a process that follows grain fermentation;
that being said, it is reasonable to suggest that if Winsness
broadly teaches fermentation, then the ordinary artisan would be
able to use any art accepted fermentation methods, and would be
able to utilize Winsness’ oil extraction (following said
fermentation steps), and provide expected results. Li teaches
methods of fermenting lignocellulosic biomass, by using
conventional enzymatic hydrolysis (saccharification) and yeast-
based fermentations; additionally, Li shows that the further
addition of a GH61 polypeptide will result in enhanced
cellulolytic hydrolysis/saccharification. See page 1, lines 20-27;
page 10, lines 27-30. The fact that Li shows an enhancement,
with the addition of a GH61 polypeptide, would motivate the
ordinary artisan to apply this polypeptide to other methods of
fermentation that utilize cellulolytic enzymes. Since Winsness
teaches fermentation occurring prior to oil extraction, and Li
teach[es] that GH61 polypeptides will enhance cellulolytic
activity prior to a fermentation, and thusly improve sugar/alcohol
yields (see Li, page 1, lines 15-18; page 2, lines 25-29), there is
more than enough motivation to include this polypeptide in a
saccharification process that occurs prior to a fermentation
process. Based upon MPEP 2143, and the fact that both
Winsness and Li are concerned with fermentation processes,
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would suggest that the Examiner has provided a prima facie case
of obviousness.
Answer 7—8. We further note that, while there are some differences between
the specific objectives and preferred source materials disclosed in Li
compared to Winsness and Olsen, these are not obstacles to the references’
combination and each cited reference discloses overlapping types of source
materials for fermentation, including com, com byproducts, stems, com
cobs, hulls, com husks, etc., which supports that the processing steps utilized
in the references predictably would have been combined. FF3, FF7, FF9.
For the reasons set forth above we affirm the obviousness rejection.
All claims were argued together, thus, all claims fall with claim 5.
SUMMARY
The rejection of the claims as obvious is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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