Ex Parte Sticklen et al

Board of Patent Appeals and Interferences

Apr 8, 2010

11353390 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MASOMEH B. STICKLEN, BRUCE E. DALE,
and SHAHINA B. MAQBOOL
__________

Appeal 2009-010492
Application 11/353,390
Technology Center 1600
__________

Decided: April 8, 2010
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a plant
composition comprising ground plant material and a fungus. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention addresses difficulties associated with extracting energy
from plant biomass. (Spec. 2:16-18) According to the Specification,
lignocellulose in the stalks and leaves of biomass “represents a tremendous
source of untapped energy that goes unused because of the difficulty and
cost of converting it to fermentable sugars.” (Id. at 2:30-34.)
Claims 32-46, 83-99, 104 and 105, which are all the pending claims,
are on appeal. Claim 32 is representative and reads as follows:
32. A transgenic herbaceous plant composition which degrades cellulose
and lignin comprising as a mixture:

(a) a ground plant material with at least one DNA encoding a
cellulase which is operably linked to a nucleotide sequence
encoding a signal peptide wherein the signal peptide directs the
cellulase to an organelle of the transgenic plant wherein the
ground transgenic plant degrades the cellulose; and
(b) a fungus which produces a ligninase which degrades lignin in
the ground plant material, wherein the mixture comprises
fermentable sugars produced by the cellulase from the cellulose.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Austin-Phillips1 and Crawford2 in view of Applicants’
admission of the state of the prior art. Appellants state that claims 32-46,
83-99, 104 and 105 “are grouped and argued as a single unit with Claim 32.”
(App. Br. 14.) Claims 33-46, 83-99, 104 and 105 are not argued separately
and therefore stand or fall with claim 32. See 37 C.F.R. § 41.37(c)(1)(vii).

1 US 6,818,803 B1, issued to Sandra Austin-Phillips et al., Nov. 16, 2004.
2 US 5,200,338, issued to Donald L. Crawford et al., Apr. 6, 1993.
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OBVIOUSNESS
The Issue
The Examiner’s position is that Austin-Phillips taught engineering
plants to reduce the cellulose content into fermentables by expressing a
cellulase. (Ans. 3.) Austin-Phillips taught “degradation of cellulose after
grinding.” (Id. at 4.) The Examiner further found that Austin-Phillips taught
that “the composition of lignocellulose is complex and that in order to get to
the cellulose it is necessary to disrupt the lignocellulose and remove the
lignin,” but that Austin-Phillips did not teach a fungus expressing a
ligninase. (Id.) Crawford taught “the necessity of removing lignin from
lignocellulose in order to degrade cellulose.” (Id.) Crawford taught that the
fungus Phanerochaete chrysosporium expressed extracellular fungal
ligninases (id.), and the Examiner concluded it would have been obvious as
the time of the invention to add a ligninase activity to Austin-Phillips’
material by combining it with fungi that secrete ligninases (id. at 5).
Appellants contend that “the applied references fail to disclose, teach,
or suggest several of the limitations recited in Claim 32.” (App. Br. 15.)
According to Appellants, (i) “the prior art does not show the desirability of
the claimed composition,” (ii) “Crawford et al. suggests a need, but not the
claimed composition,” (iii) “Austin-Phillips et al. never even mentions a
fungus,” (iv) “[t]here is no teaching of all limitations of the claims,” (v)
“[t]here is no articulated reasoning underpinning the legal conclusion of
obviousness,” and (vi) “[t]here is no reason why one of ordinary skill in the
art would combine the references in the manner suggested in the Final
Rejection.” (Id.)
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In particular, Appellants argue that the prior art gave “no suggestion
that the sugars from the hydrolysis by the cellulase enables the fermentation
of the fungus.” (Id.) The Examiner was unpersuaded and responded
“Applicant is arguing limitations that are not in the claims.” (Ans. 5.)
Appellants press the argument on the ground that their “plant composition
and corresponding method exhibit a synergism that is not recognized
anywhere in the cited references.” (Reply Br. 5.) Appellants also argue that
Crawford taught that fungus was not an ideal source of ligninase and taught
away from the invention. (Id. at 6.)
The issues on appeal are:
did the Final Rejection account for all the limitations in claim 32 by
providing evidence that the limitations were known or suggested in the prior
art;
did the prior art show a desirability for or suggest the claimed
composition;
did the prior art teach away from the claimed composition;
did Appellants establish an unexpected result; and
did the Final Rejection articulate reasoning sufficient to explain why
the claimed composition would have been obvious?

Findings of Fact
Austin-Phillips
1. “Lignocellulosic plant matter, such as agricultural and forestry waste,
as well as energy crops produced specifically for biomass, offer
tremendous potential for the renewable production of fuel and as
chemical feedstocks.” (Austin-Phillips, col. 1, ll. 27-30.)
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2. “Unfortunately, the production of ethanol and other feedstock
chemicals from lignocellulosic material is far more complex than an
analogous production utilizing a starch-based starting material.” (Id.
at col. 1, ll. 45-49.)
3. “The intricate structure and relative inaccessibility of [lignocellulosic
biomass] requires pre-treatment for the disruption of the
lignocellulosic material . . . .” (Id. at col. 1, ll. 55-60.)
4. “Several enzymes which degrade lignocellulosic material, commonly
referred to as ‘cellulases,’ are known.” (Id. at col. 1, ll. 62-63.)
5. Austin-Phillips described “genetically recombinant plants which
contain one or more exogenous gene sequences which encode one or
more cellulose-degrading gene products.” (Id. at col. 3, ll. 16-19.)
6. “The plant matter containing the expressed protein can be used
directly as a feedstock for biomass conversion . . . .” (Id. at col. 3, ll.
50-53.)
7. Austin Phillips disclosed working examples using the
cellobiohydrolase CBH I of Trichoderma reesei (EC 3.2.1.91, SEQ ID
NO:9). (Id. at col. 9, ll. 27-29; col. 19, ll. 10-60 (Example 6).)
8. Austin-Phillips taught targeting expression of the exogenous enzyme
to a particular sub-cellular compartment, and taught targeting to the
apoplast, the chloroplast, or the mitochondrion. (Id. at col. 11, ll. 22-
44.)
9. Austin-Phillips taught grinding the transformed plant material and
measuring the cellulose degrading activity in the ground material. (Id.
at col. 13, ll. 29-67.)

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Crawford
10. Crawford taught that “[l]ignin is normally regarded as the component
of lignocellulose which must be removed to allow efficient use of
cellulosic material for saccharification [i.e., turning cellulose into
sugars], paper production or upgraded fodder.” (Crawford, col. 1, ll.
42-46.)
11. According to Crawford, “[b]iological delignification has the potential
to provide an alternative to largely chemical processes which are
energy-intensive, polluting and do not exploit utilization of lignin and
its degradation products.” (Id. at col. 1, ll. 46-50.)
12. Crawford disclosed that the best studied microorganism activity
against lignin “is the degradation of lignin in lignocellulose by white
rot fungi Phanerochaete chrysosporium,” and “[s]ome of the
extracellular fungal enzymes involved in these reactions have been
characterized.” (Id. at col. 1, ll. 55-63.)

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). A proper question to ask is whether a person of
ordinary skill in the art, facing the needs created by developments in the
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field of endeavor, would have seen a benefit to combining the prior art
teachings. KSR, 550 U.S. at 424; see also In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004) (the desirability of the combination may arise from nature
of the problem, teachings of references, or the ordinary knowledge of those
skilled in the art).
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).

Analysis
Although Appellants argue that the Final Rejection did not account for
all the limitations in claim 32, the only deficiency Appellants identify is a
limitation that does not appear in the claims (that the sugars from the
hydrolysis by the cellulase enables the fermentation of the fungus).
Contrary to Appellants’ argument, we find that the Final Rejection pointed
to evidence of every claim limitation in the prior art. With regard to the
sugars produced by the cellulase, claim 32 requires only that “the mixture
comprises fermentable sugars produced by the cellulase from the cellulose,”
and Austin-Phillips proved that its ground plant material met that
requirement. (FF9.)
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Both prior art references showed the desirability degrading lignin so
that cellulase could act more effectively. (FF3 and 10.) The identification
of that need indicated a problem to be solved, and Crawford taught
biological deligninification as a solution. (FF11.) Crawford evidenced that
a solution to that problem had been known in the art – using white rot fungi.
(FF12.) We agree with Appellants that Crawford also disclosed a new
invention to address the same problem, and that it overcame some of the
known disadvantages of using fungi. However, “[a] known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.”
Gurley, 27 F.3d at 553. We agree with the Examiner that using white rot
fungi to degrade lignin continued to be an available biological method of
deligninification, just as Crawford taught, notwithstanding the added
availability of Crawford’s new method. Thus, we do not agree with
Appellants that the prior art taught away from the claimed composition.
Although Appellants argue in the Reply Brief that the claimed
composition has a synergistic effect, Appellants have provided no evidence
that that is so or that the effect would have been unexpected. As it lacks
supporting evidence, we give little weight to this new argument. See Baxter
Travenol, 952 F.2d at 392.
Appellants’ Brief includes separate comments on claims 33-35, 83-99,
84-86, 104 and 105. The comments comprise (i) general denials of
obviousness (33-35 and 83-99); (ii) allegations of limitations not found in
the claims (84-86); and (iii) allegations that neither reference alone teaches
all the elements of the claims (104 and 105). None of the comments
establish an error in the Examiner’s fact finding or legal conclusion of
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obviousness. We conclude that the Final Rejection articulated reasoning
sufficient to explain why the claimed composition would have been obvious.

CONCLUSIONS
The Final Rejection accounted for all the limitations in claim 32 by
providing evidence that the limitations were known or suggested in the prior
art.
Both Austin-Phillips and Crawford evidenced the desirability of
degrading lignin to enhance biomass conversion by cellulase to
fermentables.
Crawford’s teaching of two ways to degrade lignin (an old, known
method using a well-studied fungus, and a new invention) did not teach
away from combining the known fungus with Austin-Phillips’ ground plant
material.
Appellants did not provide evidence showing an unexpected result.
The Final Rejection articulated reasoning sufficient to explain why the
claimed composition would have been obvious.

SUMMARY
We affirm the rejection of claims 32-46, 83-99, 104 and 105 under
35 U.S.C. § 103(a) as unpatentable over Austin-Phillips and Crawford in
view of Applicants’ admission of the state of the prior art.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED

alw

IAN C. McLEOD, P.C.
2190 COMMONS PARKWAY
OKEMOS, MI 48864