Ex Parte Soong et al

Patent Trial and Appeal Board

Nov 5, 2018

13059311 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/059,311 02/16/2011
25908 7590 11/07/2018
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
POBOX576
FRANKLINTON, NC 27525-0576
FIRST NAMED INVENTOR
Chee-Leong Soong
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.
11421-US-PCT 9030
EXAMINER
PYLA, EVELYN Y
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
11/07/2018 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):
DOCKETING@novozymes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEE-LEONG SOONG, RANDY DEINHAMMER,
and JOHN MATTHEWS
Appeal2017-010304
Application 13/059,311 1
Technology Center 1600
Before MICHAEL J. FITZPATRICK, ULRIKE W. JENKS,
and ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 21, 22, 24, 26-31, and 40. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we
AFFIRM.
BACKGROUND
The Specification relates to improved methods for producing
fermentation products, such as ethanol, from starch-containing material.
Spec. 2:6-8.
1 Appellants identify the real party in interest as Novozymes A/S. Br. 1.
Appeal2017-010304
Application 13/059,311
Claim 21 is illustrative:
21. A process for producing a fermentation product from starch
containing material having a dry solid content in the range from
10-55% w/w, comprising:
(a) liquefying the starch-containing material at a temperature of
60°C to 95°C in the presence of an alpha-amylase and invertase,
wherein the invertase is added in an amount of 0.001 to 1.00
mg/g OS;
(b) saccharifying the liquefied material obtained in step (a) using
a carbohydrate source-generating enzyme; and
( c) fermenting using a fermenting organism at a temperature of
25°C to 40°C.
Br. 12 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 21, 22, 24, 26-31, and 40 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Udagawa2 and Fomoff. 3 Ans. 2.
2. Claims 21, 22, 24, 26-31, and 40 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Fukuyama4 and Fomoff. Ans. 8.
DISCUSSION
A. Re} ection 1
The Examiner finds that Udagawa teaches each of the limitations of
claim 21 except for adding an invertase enzyme during liquefaction. See
Final Action 3-5 (collectively citing Udagawa ,r,r 267-277, 297,300, 301,
2 Udagawa et al., US 2006/0172403 Al, published Aug. 3, 2006.
3 Fomoff, US 4,273,621, issued June 16, 1981.
4 Fukuyama et al., US 2006/0148054 Al, published July 6, 2006.
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Application 13/059,311
427, Example 9). For this missing limitation, the Examiner turns to Fomoff,
which teaches using invertase in the production of ethanol. See id. at 5
(citing Fomoff 9:32--47). The Examiner notes Fomoff is silent as to the
concentration of invertase, but finds that it would have been a matter of
routine optimization of a result-effective variable for the ordinarily skilled
artisan to arrive at the claimed range, with a reasonable expectation of
success. See id. at 6-7. The Examiner finds it would have been obvious to
modify the method ofUdagawa by contacting the starch slurry with
invertase, as taught by Fomoff, during Udagawa's liquefaction step, to yield
a fermented ethanol product. See id. at 5---6.
Appellants argue that neither reference teaches adding an invertase
before or during the liquefaction step as claimed. See Br. 6-7. Appellants
reason that because Fomoff uses a diluted blackstrap molasses as a starting
mash, "the invertase in Fomoff is clearly not added prior to or during
liquefaction where the invertase would be subjected to high temperatures
where Maillard reactions take[] place. Since Fomoff does not have to deal
with the problems associated with higher temperature reactions, one of
ordinary skill in the art would not look to it to solve problems associated
with higher temperatures or problems of Udagawa." Br. 7. This argument is
not persuasive because, as the Examiner explains:
F om off is not relied upon for teaching liquefaction at
temperatures ranging from 60-95°C. Fomoff is relied upon to
support employing the use of invertase for the purpose of
yielding additional fermentable sugars, i.e. glucose, in the
method of Udagawa since it is the intention of Udagawa to
produce ethanol from fermentable sugars, e.g. glucose.
Ans. 17. As to adding invertase before or during liquefaction in particular,
F om off indicates that the enzymes are added to the starting mash. See
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Application 13/059,311
Fornoff 9:41--45. Fornoffthus implies that the enzymes are added before
fermentation, which, if applied in Udagawa's method (see Udagawa ,r,r 268-
271) would mean before or during the liquefying step, or before or during
the saccharifying step. But as the Examiner points out with respect to the
routine optimization and reasonable expectation of success involved in the
selecting the concentration of invertase (see Final Action 6-7), we find the
same would have been true as to selecting the appropriate time to add
invertase. Our conclusion is supported by the Examiner's additional reliance
on Arruda5 as evincing the activity of invertase at 60°C (i.e., within the
temperature range for the liquefying step of claim 21 ). See Final Action 19
(citing Arruda Fig. 4). For similar reasons, we are not persuaded by
Appellants' assertions (see Br. 7) that the Examiner's rationale is conclusory
or the product of hindsight, or that the use of invertase before or during a
high-temperature step would be unpredictable.
Appellants also maintain that Figure 1 of the Specification shows
"excellent" results "not predicted by the prior art." Br. 6. But these
characterizations are attorney argument, and are not drawn from the
Specification itself or from supporting evidence. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence."). Furthermore, we agree with the Examiner that
these remarks are not persuasive for the additional reason that "no data
ha[ ve] been provided to show that the fermentation speed is increased since
Figure 1 shows all 4 concentrations of invertase, and no invertase, producing
5 Arruda et al., Characterization of Invertase Entrapped into Calcium
Alginate Beads, 81 APPLIED BIOCHEM. & BIOTECH. 23 (1999).
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Application 13/059,311
approximately the same amount of ethanol in the 50 hour fermentation," nor
have any data "been presented to show that the addition of invertase resulted
in the production of 125 g/L of ethanol in less time, as compared to
fermentation without invertase." Ans. 16. From Figure 2 of the
Specification, it appears that the addition of invertase resulted in somewhat
higher ethanol yields at 24 hours of fermentation, but Appellants have not
established that this result is unexpected, rather than a predictable, additive
effect of combining prior art enzymes in an obvious fashion.
For these reasons and those already of record, we affirm the
Examiner's rejection of claim 21 as unpatentable over Udagawa and
Fomoff. Appellants do not separately argue claims 22, 24, 26-31, or 40.
See generally Br. 4--8. These claims fall with claim 21. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
B. Rejection 2
The Examiner relies on Fukuyama in Rejection 2 for largely the same
teachings as the Examiner relies on Udagawa in Rejection 1. Compare Final
Action 13-16 with id. at 3-7. And as with Rejection 1, in Rejection 2 the
Examiner likewise relies on F omoff for the use of invertase. See id. at 15.
Similarly, Appellants' arguments do not directly challenge the Examiner's
reliance on Fukuyama, but instead focus on Fomoff, the combination of
Fukuyama and Fomoff, and the Examiner's citation to Arruda. See Br. 9-
10. Appellants' arguments are equally unpersuasive for Rejection 2. For
similar reasons to those discussed above with respect to Rejection 1, and
those already of record (see, e.g., Ans. 20-22), we affirm the Examiner's
rejection of claim 21 as unpatentable over Fukuyama and Fomoff.
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Appellants do not separately argue claims 22, 24, 26-31, or 40. See
generally Br. 9--10. These claims fall with claim 21.
CONCLUSION
The rejections of claims 21, 22, 24, 26-31, and 40 are 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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