Lawrence Livermore National Security, LLC

Patent Trials and Appeals Board

Aug 2, 2021

2020004465 (P.T.A.B. Aug. 2, 2021)

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.
15/411,337 01/20/2017 Sarah Baker LLNLP166/IL-12866B 4610
78980 7590 08/02/2021
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
FERNANDEZ, SUSAN EMILY
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SARAH BAKER,
JOSHUAH K. STOLAROFF, and CONGWANG YE
____________

Appeal 2020-004465
Application 15/411,337
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–11 and 26–36 (Final Act.2 2).3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Lawrence
Livermore National Security, LLC” (Appellant’s December 10, 2019,
Appeal Brief (Appeal Br.) 2).
2 Examiner’s July 26, 2019, Final Office Action.
3 Appellant’s claims 20 and 25 stand withdrawn from consideration (Final
Act. 2).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to bioreactors, and more particularly to
biocatalytic microcapsules providing improved surface area and mass
transport to facilitate conversion of target gases using biocatalyst(s) in the
biocatalytic microcapsules” (Spec.4 ¶ 2). Claims 1 and 2 are reproduced
below:
1. A microcapsule for selective catalysis of gases, the
microcapsule comprising:
a polymeric shell permeable to one or more target gases; and
at least one biocatalyst disposed in an interior of the polymeric
shell, the at least one biocatalyst being operable to convert at
least one of the one or more target gases to a product.
(Appeal Br. 31.)
2. A microcapsule for selective catalysis of gases, the
microcapsule comprising:
a polymeric shell permeable to one or more target gases;
at least one biocatalyst disposed in an interior of the polymeric
shell; and
a buffer disposed in the interior of the polymeric shell, wherein
the at least one biocatalyst is suspended in the buffer.
(Id.)
Grounds of rejection before this Panel for review:
I. Claim 32 stands rejected under 35 U.S.C. § 112(b).

II. Claims 1, 4–6, and 9–11 stand rejected under 35 U.S.C.
§§ 102(a)(1) and 102(a)(2) as anticipated by Aines.5

4 Appellant’s January 20, 2017, Specification.
5 Aines et al., US 2013/0109074 A1, published May 2, 2013.
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III. Claims 1, 4–7, 9, 10, and 30–32 stand rejected under 35 U.S.C.
§§ 102(a)(1) and 102(a)(2) as anticipated by Hubbell.6

IV. Claims 1, 2, 4–6, 9–11, and 32–35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Aines.

V. Claims 1–6, 9–11, and 32–35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Aines and
Saunders.7

VI. Claims 1–6, 9–11, and 32–36 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Aines, Saunders,
and Rambo.8

VII. Claims 1, 2, 4–11, 27, and 32–35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Aines, Vericella,9
Safety Data Sheet 1,10 and Safety Data Sheet 2.11

VIII. Claims 1, 2, 4–6, 9–11, 26, 28, and 32–35 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Aines and
Kim.12

6 Hubbell et al., 5,573,934, issued Nov. 12, 1996.
7 Saunders et al., US 2011/0174156 A1, published July 21, 2011.
8 Rambo et al., US 2013/0330801 A1, published Dec. 12, 2013.
9 Vericella et al., Encapsulated liquid sorbents for carbon dioxide capture, 6
Nature Communications 6124 (2015).
10 SEMICOSIL® 949 UV A, available at
http://media.hiscoinc.com/Volume2/d110001/medias/docus/227/Wacker%
20Chemical%20Corporation-54764 60065594-SDS VD.pdf (June 16, 2018),
last accessed January 22, 2019.
11 SEMICOSIL® 949 UV B, available at
http://media.hiscoinc.com/Volume2/d110001/medias/docus/223/Wacker%
20Chemical%20Corporation-54764 60065596-SDS VD.pdf (June 16, 2018),
last accessed January 22, 2019.
12 Kim et al., High-performance Polymer Membranes with Multifunctional
Amphiphilic Micelles for CO2 Capture, 8 ChemSusChem 3783–3792 (2015).
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IX. Claims 1, 4–7, 9, 10, and 29–33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hubbell and
Clark.13

DEFINITENESS–Rejection I:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claim 32 is indefinite?
ANALYSIS
Appellant’s claim 1 is reproduced above. Appellant’s claim 32
depends from and further limits Appellant’s claim 1 to require that “the
biocatalyst is dispersed throughout the interior of the polymeric shell”
(Appeal Br. 34 (emphasis added)).
Examiner finds that the phrase “the biocatalyst,” in Appellant’s claim
32, lacks antecedent basis to the phrase “at least one biocatalyst,” recited in
Appellant’s claim 1 (Ans.14 3). We agree. As Examiner explains, by
analogy, “if two different levers are recited earlier in the claims, the
recitation of ‘said lever’ in the same or subsequent claim would be unclear
where it is uncertain which of the two levels was intended” (id. at 21 (citing
MPEP § 2173.05(e)) (emphasis omitted)).
We acknowledge Appellant’s review of the law of definiteness (see
Appeal Br. 30). Appellant, however, appears to incorrectly interpret the
phrase “the biocatalyst,” as recited in its claim 32 as the at least one
biocatalyst and, therefore, contends “that ‘the biocatalyst’ of claim 32

13 Clark et al., US 2002/0168733 A1, published Nov. 14, 2002.
14 Examiner’s March 30, 2020, Answer.
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sufficiently depends from claim 1 and refers to the ‘at least one biocatalyst
disposed in an interior of the polymeric shell’” (Reply Br. 20). For the
foregoing reasons, we are not persuaded by Appellant’s contention.
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
Appellant’s claim 32 is indefinite.
Rejection I: The rejection of claim 32 under 35 U.S.C. § 112(b) is
affirmed.

ANTICIPATION–Rejections II–III:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Aines or Hubbell teach Appellant’s claimed
invention?
FACTUAL FINDINGS (FF)
FF 1. Aines discloses “[a] system for carbon dioxide capture from flue gas
and other industrial gas sources [that] utilizes microcapsules with very thin
polymer shells. The contents of the microcapsules can be liquids or
mixtures of liquids and solids” (Aines, Abstract; id. ¶ 5 (Aines “relates to
carbon capture and more particularly to polymer-encapsulated carbon
capture capsules that tolerate precipitation of solids for increased capacity”);
see generally Ans. 3–5).
FF 2. Aines exemplifies “the use of K2CO3 as . . . [a CO2] capture
medium,” wherein CO2 is captured in the microcapsules “according to the
following reaction: K2CO3+H2O+CO2=>>2KHCO3” (Aines ¶ 25; see also
Ans. 20).
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FF 3. Aines discloses microcapsules that “include a polymer coating and
stripping solvents encapsulated within the microcapsules,” wherein “[t]he
stripping solvents encapsulated within the microcapsules can be . . . ionic
buffer solutions” (Aines ¶ 31; Ans. 9, 19–20).
FF 4. Aines discloses “that CO2 physically diffuses through the polymer
shell and then reacts in the inner fluid to form carbonates or complexes.
This approach implies that a catalyst, if used, should be dissolved in the
inner fluid,” wherein the catalyst enhances the reaction (Aines ¶ 120; see
also id. ¶ 126 (Aines discloses that catalyst “enhance[s] the reaction rate of
carbon dioxide to dissolved carbonate”); id. ¶ 123 (Aines discloses that “the
catalyst should be helpful for a slower solvent like sodium bicarbonate”);
Ans. 4, 9, 18–20).
FF 5. Aines discloses that “the catalyst is dissolved in the inner fluid” and
as an alternative to dissolving the catalyst in the inner fluid, the catalyst can
be embedded “in the polymer shell or on the outer surface of the shell”
(Aines ¶ 124).
FF 6. Aines’ Figure 7 is reproduced below:

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Aines discloses that “[t]he system 700 illustrated in FIG. 7 shows a cross
section of a microcapsule 702,” wherein 704 is a layer of catalyst or enzyme
added to enhance the reaction rate of carbon dioxide to dissolved carbonate.
This [catalyst or enzyme] may be either dissolved in the polymer, the
solvent, or as a separate layer” (Aines ¶ 20 (Aines discloses that “FIG. 7
illustrates use of catalysts and polymer additives to improve capsule
performance”)).
FF 7. Hubbell discloses “[w]ater soluble macromers are modified by
addition of free radical polymerizable groups, such as those containing a
carbon-carbon double or triple bond, which can be polymerized under mild
conditions to encapsulate tissues, cells, or biologically active materials”
(Hubbell, Abstract; see id. at 3:43–48 (Hubbell discloses “a method for
polymerization of macromers . . . to encapsulate or coat either directly or
indirectly living tissue with polymeric coatings which conform to the
surfaces of cells, tissues or carriers thereof under rapid and mild
polymerization conditions”); see Ans. 5–6).
FF 8. Hubbell discloses that “[t]he water-soluble macromer may be
derived from water-soluble polymers including, but not limited to . . .
poly(ethylene glycol) (PEG)” (Hubbell 6:44–46; see Ans. 7).
FF 9. Hubbell discloses that “[a] wide variety of biologically active
material[s] can be encapsulated or incorporated, including proteins, [and]
peptides,” wherein “[e]xamples of proteins which can be encapsulated
include . . . enzymes . . . [and] enzyme systems” (Hubbell 8:31–48; see Ans.
5–6).
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FF 10. Hubbell discloses that “a desired protein permeability profile can be
designed to permit the diffusion of [, inter alia,] nutrients, oxygen, carbon
dioxide, [and] waste products” (Hubbell 11:66–12:1; see Ans. 6).

ANALYSIS
Appellant’s claim 1, reproduced above, requires, inter alia, “at least
one biocatalyst disposed in an interior of the polymeric shell, the at least one
biocatalyst being operable to convert at least one of the one or more target
gases to a product.”

Rejection II:
Aines discloses “[a] system for carbon dioxide capture from flue gas
and other industrial gas sources [that] utilize microcapsules with very thin
[CO2 permeable] polymer shells” (FF 1, 4). Aines exemplifies “the use of
K2CO3 as . . . [a CO2] capture medium,” wherein CO2 is captured in
microcapsules “according to the following reaction:
K2CO3+H2O+CO2=>>2KHCO3” (FF 2). Aines’s microcapsules encapsulate
stripping solutions, i.e. ionic buffer solutions, comprising a catalyst/enzyme
that enhances the reaction rate of carbon dioxide to dissolved carbonate and,
therefore, is operable to convert the carbon dioxide to a product as required
by the claim (see FF 3–FF 6).
For the foregoing reasons, we find no error in Examiner’s finding that
Aines anticipates Appellant’s claim 1, which is drawn to a microcapsule
comprising: (a) a polymeric shell permeable to a gas and (b) a biocatalyst
disposed in an interior of the polymeric shell, that is operable to convert the
gas to a product (see Ans. 3–5; see also Ans. 20 (Examiner finds that “the
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skilled artisan would have recognized that [Aines’] enzyme itself . . .
provide[s] the conversion of carbon dioxide to dissolved carbonate”); FF 1–
6). Thus, the evidentiary burden was properly shifted to Appellant. See
Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1362 (Fed. Cir.
1999) (Whether a feature is inherent is a question of fact.); see also In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, [and
because of the PTO’s inability to manufacture products or to
obtain and compare prior art products,] it possesses the authority
to require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (citing In re Swinehart,
439 F.2d 210, 212–13 (CCPA 1971)).
Appellant failed to establish a factual basis on this record to support a
finding that Aines’ enzyme does not inherently perform in the same manner
as the biocatalyst set forth in Appellant’s claim 1. Thus, we are not
persuaded by Appellant’s contention that Aines discloses that an “‘enzyme’
is merely added to [Aines’ microcapsules] to enhance the rate of reaction
that takes place in the solvent,” not “to convert CO2 to anything else”
(Appeal Br. 15; see also Reply Br. 8 (Appellant contends that Aines
“describ[es] the conversion of CO2 with K2CO3 solvent” and Examiner “has
not established, with evidence on the record, that the enzyme disclosed in
Aines[, to enhance the conversion of CO2 to product,] is necessarily operable
to convert CO2 to anything else”)). Appellent did not establish that enhacing
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the reaction to convert a gas to a product is any different, or not inherent, to
the claimed “operable to convert.”
For the foregoing reasons, we are not persuaded by Appellant’s
contentions that despite Aines’ disclosure of the use of a catalyst/enzyme,
Aines also discloses a process that does not require an enzyme or catalyst
(Reply Br. 8–9). For the same reasons, we are not persuaded by Appellant’s
contentions regarding its interpretation of Aines’ use of the terms “catalyst”
and “enzyme” (Reply Br. 9). See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).

Rejection III:
Examiner finds that Hubbell anticipates Appellant’s claims 1, 4–7, 9,
10, and 30–32 (see Ans. 5–8; see also FF 7–10). We are not persuaded.
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35
U.S.C. § 102 – must not only disclose all elements of the claim
within the four corners of the document, but must also disclose
those elements “arranged as in the claim.” Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
Stated differently, to support a rejection premised upon a theory of
anticipation, it is not enough to find that a prior art device is merely capable
of being adapted or modified to operate in a manner that would anticipate
the claims. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (discussing Fantasy Sports Props., Inc. v.
Sportsline.com, Inc., 287 F.3d 1108, 1117-18 (Fed. Cir. 2002)).
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On this record, Hubbell discloses, inter alia, the encapsulation of
enzymes and enzyme systems, wherein “a desired protein permeability
profile can be designed to permit the diffusion of [, inter alia,] nutrients,
oxygen, carbon dioxide, [and] waste products” (FF 10; see Ans. 6).
Examiner, however, stopped short of establishing an evidentiary basis to
support a finding that Hubbell’s disclosure of the diffusion of nutrients,
oxygen, carbon dioxide and waste products, necessarily results in the
conversion of at least one target gas to a product, as is required by
Appellant’s claimed invention (see generally Appeal Br. 16–18; Reply Br.
10). Therefore, this rejection is reversed.
CONCLUSION
The preponderance of evidence on this record supports Examiner’s
finding that Aines teaches Appellant’s claimed invention.
Rejection II: The rejection of claim 1 under 35 U.S.C. §§ 102(a)(1)
and 102(a)(2) as anticipated by Aines is affirmed. Claims 4–6 and 9–11 are
not separately argued and fall with claim 1.

The preponderance of evidence on this record fails to support
Examiner’s finding that Hubbell teaches Appellant’s claimed invention.
Rejection III: The rejection of claims 1, 4–7, 9, 10, and 30–32 under
35 U.S.C. §§ 102(a)(1) and 102(a)(2) as anticipated by Hubbell is reversed.

OBVIOUSNESS–Rejections IV–IX:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
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FACTUAL FINDINGS (FF)
FF 11. Examiner relies on Aines as discussed above (see Ans. 8–9).
FF 12. Examiner finds that “Aines differs from claim[] 2 . . . in that Aines
does not expressly [disclose] that their microcapsule . . . comprises a buffer
disposed in the interior of the polymeric shell . . . , wherein the enzyme . . .
is suspended in the buffer” or an “ionic buffer solution . . . [that] comprises a
reducing agent” (Ans. 8–10).
FF 13. Saunders relates to reactors and processes capable of separating
carbon dioxide (CO2) from a mixed gas using separate modules for
absorption and desorption of the carbon dioxide,” wherein “[t]he extraction
of CO2 may be facilitated using a carbonic anhydrase” (Saunders ¶ 1; see
also id. ¶ 3 (Saunders discloses that “carbonic anhydrase can catalyze the
conversion of CO2 to bicarbonate at a very high rate”); Ans. 10).
FF 14. Saunders discloses that because “carbonic anhydrase reacts
specifically with dissolved CO2, it favors the movement of gaseous CO2 into
the fluid in the absorption module by accelerating the reaction of the
dissolved CO2 and water to form carbonic acid” (Saunders ¶ 42; see Ans.
11).
FF 15. Saunders discloses that carbonic anhydrase “in a reactor or process
may be stabilized . . . by adding . . . reducing agent to limit oxidation of the
carbonic anhydrase” (Saunders ¶ 82; see Ans. 11).
FF 16. Examiner finds that the combination of Aines and Saunders fails to
“expressly disclose that the enzyme carbon anhydrase . . . comprises one or
more biocatalytic components selected from the group consisting of: one or
more enzyme cofactors; one or more cell membrane fragments; one or more
cytosolic cell components; and reconstituted whole cells” (Ans. 12).
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FF 17. Rambo discloses:
[T]he immobilization of biocatalysts using thiol-ene chemistry.
The biocatalyst can be immobilized to a range of substrates
including a solid support, a microparticle, a nanoparticle, or a
combination thereof. The immobilized biocatalyst can be an
enzyme that reacts with carbon dioxide, such as carbonic
anhydrase. Furthermore, the immobilized biocatalyst can be
utilized for carbon capture or carbon separation technology.
(Rambo ¶ 2.)
FF 18. Rambo discloses:
The immobilized biocatalyst also includes a structural
mimic that has carbonic anhydrase activity or a biocatalyst that
catalyzes hydration of carbon dioxide. Typically, the biocatalyst
can be an enzyme . . ., an enzyme mimic, or an organic or
inorganic compound that either has carbonic anhydrase activity
or can catalyze hydration of carbon dioxide.
The biocatalyst that has carbonic anhydrase activity can be
a carbonic anhydrase.
Further, the biocatalyst that catalyzes hydration of carbon
dioxide can be a carbonic anhydrase.
(Rambo ¶¶ 49–51; see also id. ¶ 57 (Rambo discloses the “family of
structurally and genetically diverse [carbonic anhydrase] enzymes”); Ans.
12.)
FF 19. Examiner finds:
Aines differs from claim 7 in that Aines does not expressly
disclose that the polymer surface layer (reading on 'polymeric
shell') comprises one or more crosslinked polymers formed by
UV crosslinking one or more polymer precursors selected from:
PDMS, PEG, PEGDA, HDDA, PVA, PLA, polyimide, poly(2-
methyl-2-oxazoline), PEEK, cellulose acetate, polypropylene,
and silicone acrylate. Aines differs from claims 8 and 27 in that
Aines does not expressly disclose that the polymer surface layer
is hydrophobic.
(Ans. 13.)
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FF 20. Examiner finds:
Vericella discloses polymer microcapsules composed of liquid
carbonate cores and highly permeable silicone shells which are
used for the capture of carbon dioxide from flue gas . . . . The
carbon dioxide diffuses through the thin capsule shells, then
dissolves and reacts in the liquid sorbent core to form the desired
product(s) . . . . Vericella identified a silicone shell that is both
photocurable and chemically compatible with the sorbent system
which is composed of either aqueous potassium carbonate or
sodium carbonate solution (core fluid) . . . . The silicone shell is
Semicosil 949UV, which is a hydrophobic photopolymerizable
silicone . . . . To make the polymerized microcapsules, droplets
formed by co-flowing three fluids (including Semicosil 949UV)
were cured under ultraviolet light . . . . Thus[,] the silicone shell
of Semicosil 949UV comprises one or more crosslinked
polymers formed by UV crosslinking one or more polymer
precursors.
(Ans. 13–14 (citing Vericella 1: first paragraph; 2: left column, second
paragraph; 6: left and right columns, bridging paragraph; 6: right column,
first full paragraph).)
FF 21. Examiner finds that Safety Data Sheet 1 and Safety Data Sheet 2
disclose that, “Semicosil 949UV is a polydimethylsiloxane with functional
groups and auxiliaries for addition cross-linking (Ans. 14 (citing Safety Data
Sheet 1 (Section 3); Safety Data Sheet 2 (Section 3))).
FF 22. Examiner finds that “Aines differs from claims 26 and 28 in that
Aines does not expressly disclose that the polymer surface layer is
amphiphilic” (Ans. 15).
FF 23. Examiner finds:
Kim discusses the capture of carbon dioxide from flue gases
through a gas separation membrane . . . . In particular, Kim
discloses a high performance polymer membrane with
simultaneously large improvements in carbon dioxide
permeability and CO2/N2 selectivity . . . . Kim obtained these
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improvements with an amphiphilic poly(dimethylsiloxane)-g-
poly(oxyethylene methacrylate) (PDMS-g-POEM) comb
copolymer which was introduced into a matrix of Pebax (a
poly(amide-b-ether) block copolymer . . .) in the form of a
micelle to function as a carbon dioxide transporter facilitator that
boosts the carbon dioxide permeability . . . . Kim found that both
carbon dioxide and nitrogen permeabilities continuously
increased with PDMS-g-POEM content.
(Ans. 15–16 (citing Kim, Abstract; Kim 3783: left column, first paragraph;
right column, first paragraph; and last paragraph).)
FF 24. Examiner relies on Hubbell as discussed above (see Ans. 17).
FF 25. Examiner finds that “Hubbell differs from claim 29 in that Hubbell
does not expressly disclose that the cells encapsulated in their microcapsules
are reconstituted whole cells” (Ans. 17).
FF 26. Examiner finds that “Clark discloses microbial production of
epoxides and other oxygenated products. . . . Clark discloses using a layer
comprising an immobilized biocatalyst disposed on a layer of glass
beads. . . . The biocatalyst is a reconstituted whole-cell preparation of
lyophilized methanotrophic bacteria” (Ans. 17 (citing Clark, Abstract; Clark
¶ 53)).
ANALYSIS
Rejection IV:
Claim 1:
For the reasons set forth above, we find that Aines anticipates
Appellant’s claim 1. “[A]nticipation is the epitome of obviousness.”
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Therefore, we find no error in Examiner’s conclusion that Aines makes
obvious Appellant’s claim 1 (see Ans. 8–10).
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For the foregoing reasons, we are not persuaded by Appellant’s
contention that Aines fails to make obvious the subject matter set forth in
Appellant’s claim 1. For the same reasons, we are not persuaded by
Appellant’s contentions that “[t]he rejection provides no additional
reasoning as to why claim[] 1 . . . [is] additionally rejected under” 35 U.S.C.
§ 103; Aines discloses a process that does not require an enzyme or catalyst;
that Examiner failed to articulate a basis for the rejection; and a person of
ordinary skill in this art would not have had a reasonable expectation of
success in producing Appellant’s claimed microcapsule, which is anticipated
by Aines (Appeal Br. 18–20; Reply Br. 10–13).
The PTO does not have the facilities to compare Appellant’s claimed
product against Aines’ prior art product. See In re Best, 562 F.2d at 1254–
55. Thus, when, as is the case on this record, Examiner establishes that the
prior art product comprises the same components as Appellant’s claimed
product and has reason to believe that a functional limitation asserted to be
critical may, in fact, be an inherent characteristic of the prior art, the Office
“possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on.” See id.
Conspicuous by its absence on this record is a declaration of an expert
in this field, or other persuasive evidence, explaining precisely why the
enzyme in Aines’ microcapsule performs differently than the biocatalyst in
Appellant’s microcapsule. Therefore, we are not persuaded by Appellant’s
contention that “Examiner still has not shown or explained how Aines’
enzyme actually reacts with the CO2 as proffered in the rejection or which
enzyme reacts with the CO2 to form the carbonates” (Reply Br. 13).
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Unsupported attorney argument on this record is not persuasive. See
Pearson, 494 F.2d at 1405.

Claim 2:
Claim 2 requires the at least one biocatalyst to be suspended in the
buff in an interior of the polymeric shell. Aines discloses “[a] system for
carbon dioxide capture from flue gas and other industrial gas sources [that]
utilize microcapsules with very thin [CO2 permeable] polymer shells” (FF 1,
4). Aines exemplifies “the use of K2CO3 as . . . [a CO2] capture medium,”
wherein CO2 is captured in microcapsules “according to the following
reaction: K2CO3+H2O+CO2=>>2KHCO3” (FF 2). Aines’s microcapsules
encapsulate stripping solutions, i.e. ionic buffer solutions, comprising a
catalyst/enzyme in the inner fluid that enhances the reaction rate of carbon
dioxide to dissolved carbonate (see FF 3–FF 6). Thus, we find no error in
Examiner’s conclusion that, before the effective filing date of the claimed
invention, a microcapsule comprising: (a) a polymeric shell permeable to
one or more target gases; (b) at least one biocatalyst disposed in an interior
of the polymeric shell; and (c) a buffer disposed in the interior of the
polymeric shell, wherein the at least one biocatalyst is suspended in the
buffer, as required by Appellant’s claim 2, would have been prima facie
obvious to those of ordinary skill in this art (see Ans. 8–10).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner “still has not established how the cited portion of
the prior art teaches or suggests Aines’ enzyme located anywhere but in a
layer, much less ‘a buffer disposed in the interior of the polymeric shell,
wherein the at least one biocatalyst is suspended in the buffer” (Reply Br. 2–
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3; see also Appeal Br. 5–7, 11–13; cf. FF 3–FF 6). Thus, we are not
persuaded by Appellant’s contention that “[t]he rejection misstates what is
disclosed in Aines,” because “Aines does not teach or suggest the enzyme
being located anywhere but in a layer” (Reply Br. 3; see also id. at 4–5;
Appeal Br. 7–10; cf. FF 6 (Aines’ catalyst or enzyme “may be either
dissolved in the polymer, the solvent[, i.e. ionic buffer], or as a separate
layer” (emphasis added)); see generally FF 3–FF 6). For the same reasons,
we are not persuaded by Appellant’s contention that “the rejection of claim 2
lacks any allegation as to why a skilled artisan might reasonably expect
success in combining the teachings of the art of record as proposed by the
Examiner,” or Appellant’s contentions regarding its interpretation of Aines’
use of the terms “catalyst” and “enzyme” (Reply Br. 4–5; see also Appeal
Br. 10).
For the reasons discussed above, we are not persuaded by Appellant’s
contention that “Examiner still has not shown or explained how Aines’
enzyme actually reacts with the CO2 as proffered in the rejection or which
enzyme reacts with the CO2 to form the carbonates” (Reply Br. 4; see also
id. at 6–7; Appeal Br. 13–14).

Rejection V:
Aines discloses “[a] system for carbon dioxide capture from flue gas
and other industrial gas sources [that] utilize microcapsules with very thin
[CO2 permeable] polymer shells” (FF 1, 4). Aines exemplifies “the use of
K2CO3 as . . . [a CO2] capture medium,” wherein CO2 is captured in
microcapsules “according to the following reaction:
K2CO3+H2O+CO2=>>2KHCO3” (FF 2). Aines’s microcapsules encapsulate
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stripping solutions, i.e. ionic buffer solutions, comprising a catalyst/enzyme
that enhances the reaction rate of carbon dioxide to dissolved carbonate (see
FF 3–FF 6).
Similarly, Saunders, which relates to reactors and processes capable
of separating CO2 from a mixed gas, discloses the use of an enzyme,
carbonic anhydrase, to “catalyze the conversion of CO2 to bicarbonate” (FF
13; see also FF 14 (Saunders discloses that because “carbonic anhydrase
reacts specifically with dissolved CO2, it favors the movement of gaseous
CO2 into the fluid in the absorption module by accelerating the reaction of
the dissolved CO2 and water to form carbonic acid.”)). In addition, Saunders
discloses that carbonic anhydrase “in a reactor or process may be
stabilized . . . by adding . . . reducing agent to limit oxidation of the carbonic
anhydrase” (FF 15).
Thus, we find no error in Examiner’s conclusion that, before the
effective filing date of the claimed invention, the combination of Aines and
Saunders makes obvious Appellant’s claimed invention (see Ans. 10–12).

Claim 1:
For the reasons discussed above, we are not persuaded by Appellant’s
contention that Aines fails to disclose a microcapsule encapsulating an ionic
buffer containing an enzyme that converts CO2 to a product (Appeal Br. 21;
see generally Reply Br. 14). To the contrary, as discussed above, Aines
anticipates Appellant’s claim 1, and anticipation is the epitome of
obviousness. Connell, 722 F.2d at 1548.
Nonetheless, even if Appellant’s contention was correct, Saunders
discloses that carbonic anhydrase catalyzes the conversion of CO2 to
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bicarbonate and, therefore, we find that it would have been prima facie
obvious before the effective filing date of the claimed invention to modify
Aines’ microcapsule to comprise a buffer solution containing Saunders’
carbonic anhydrase (see FF 1–6, 13–15). Therefore, we are not persuaded
by Appellant’s contention that Saunders does not rectify Appellant’s
asserted deficiencies Aines (Appeal Br. 21; see generally Reply Br. 14).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s rejection “does not reflect adequate ‘rational
underpinning’ in the requisite form of an explicit analysis providing reasons
why the record requires the conclusion that Appellant’s claims are indeed
obvious” (Appeal Br. 22).

Claim 2:
For the reasons discussed above, we are not persuaded by Appellant’s
contentions that “the rejection misstates what is disclosed in Aines;” Aines
fails to disclose an enzyme dissolved in an ionic buffer; Examiner’s rejection
“does not reflect adequate ‘rational underpinning’ in the requisite form of an
explicit analysis providing reasons why the record requires the conclusion
that Appellant’s claims are indeed obvious;” or Examiner’s rejection is
based on “improper hindsight” (see Appeal Br. 23–27; see generally Reply
Br. 15–17). Unsupported attorney argument on this record is not persuasive.
See Pearson, 494 F.2d at 1405.

Rejection VI:
Examiner concludes that, before the effective filing date of the
claimed invention, the combination of Aines, Saunders, and Rambo, makes
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obvious Appellant’s claimed invention (see Ans. 12; see also FF 1–6, 11–
18).

Claims 1–2:
For the reasons, set forth above, we find no error in Examiner’s
conclusion that the combination of Aines and Saunders makes obvious the
subject matter of Appellant’s claims 1 and 2. See In re Kronig, 539 F.2d
1300, 1302 (CCPA 1976) (The Board may rely upon less than all the
references cited by the Examiner.).

Claim 36:
Appellant contends that its
[c]laim 36 depends from claim 2, and therefore the rejection
suffers from the same deficiencies as set forth above with respect
to claim 2. Because Rambo has merely been added to allegedly
show the limitation of the dependent claim, claim 36, is believed
to be allowable over the combination proposed by the Examiner.
(Appeal Br. 27; see generally Reply Br. 17–18.) Having found no
deficiency in the combination of Aines and Saunders as applied to
Appellant’s claim 2, we are not persuaded.

Rejection VII:
Examiner concludes that, before the effective filing date of the
claimed invention, the combination of Aines, Vericella, Safety Data Sheet 1,
and Safety Data Sheet 2, makes obvious Appellant’s claimed invention (see
Ans. 13–15; see also FF 1–6, 19–21).

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Claims 1–2:
For the reasons, set forth above, we find no error in Examiner’s
conclusion that Aines makes obvious the subject matter of Appellant’s
claims 1 and 2 (see Ans. 13–15).
Claim 7:
Appellant contends that its
[c]laim 7 . . . depend[s] from claim 1, and therefore the rejection
suffers from the same deficiencies as set forth above with respect
to claim 1. Because Vericella[, Safety Data Sheet 1] and [Safety
Data Sheet 2] have merely been added to allegedly show the
limitation of the dependent claim[], claim[] 7 [is] believed to be
allowable over the combination proposed by the Examiner.
(Appeal Br. 28; see generally Reply Br. 18.) Having found no deficiency in
Aines as applied to Appellant’s claim 1, we are not persuaded.

Claim 27:
Appellant contends that its
[c]laim 27 depends from claim 2, and therefore the rejection
suffers from the same deficiencies as set forth above with respect
to claim 1. Because Vericella[, Safety Data Sheet 1] and [Safety
Data Sheet 2] have merely been added to allegedly show the
limitation of the dependent claim, claim 27 is believed to be
allowable over the combination proposed by the Examiner.
(Appeal Br. 28; see generally Reply Br. 18.) Having found no deficiency in
Aines as applied to Appellant’s claim 2, we are not persuaded.

Rejection VIII:
Examiner concludes that, before the effective filing date of the
claimed invention, the combination of Aines and Kim makes obvious
Appellant’s claimed invention (see Ans. 15–16; see also FF 1–6, 22, 23).
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Claims 1–2:
For the reasons, set forth above, we find no error in Examiner’s
conclusion that Aines makes obvious the subject matter of Appellant’s
claims 1 and 2 (see Ans. 15–16).

Claim 26:
Appellant contends that its
[c]laim 26 depends from claim 1, and therefore the rejection
suffers from the same deficiencies as set forth above with respect
to claim 1. Because Kim has merely been added to allegedly
show the limitation of the dependent claim, claim 26 is believed
to be allowable over the combination proposed by the Examiner.
(Appeal Br. 28–29; see generally Reply Br. 19.) Having found no
deficiency in Aines as applied to Appellant’s claim 1, we are not persuaded.

Claim 28:
Appellant contends that its
[c]laim 28 depends from claim 2, and therefore the rejection
suffers from the same deficiencies as set forth above with respect
to claim 2. Because Kim has merely been added to allegedly
show the limitation of the dependent claim, claim 28 is believed
to be allowable over the combination proposed by the Examiner.
(Appeal Br. 29; see generally Reply Br. 19.) Having found no deficiency in
Aines as applied to Appellant’s claim 2, we are not persuaded.

Rejection IX:
Examiner finds that Hubbell anticipates Appellant’s claim 1 and
claims 4–7, 9, 10, and 30–32, which depend directly or indirectly from
Appellant’s claim 1 (Ans. 17). Examiner finds, however, that Hubbell fails
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to “disclose that the cells encapsulated in their microcapsules are
reconstituted whole cells,” and relies on Clark to make up for this deficiency
(Ans. 17). In addition, Examiner finds that “Hubbell differs
from . . . [Appellant’s claim 33, which depends from Appellant’s claim 1,] in
that Hubbell does not expressly disclose that their polymeric shell is always
permeable to products of catalyzing and/or converting one or more gases,”
but finds that Hubbell’s disclosure of “controlling the permeability of the
polymer coating” and the design of a desired protein permeability profile
makes up for this deficiency in Hubbell’s explicit disclosure (see Ans. 17–
18). Thus, Examiner concludes that the combination of Hubbell and Clark
makes obvious Appellant’s claimed invention, before the effective filing
date of the claimed invention (see Ans. 12; see also FF 7–10, 24–26). We
are not persuaded.
As discussed in the foregoing anticipation rejection over Hubbell,
although Hubbell discloses, inter alia, the encapsulation of enzymes and
enzyme systems, wherein “a desired protein permeability profile can be
designed to permit the diffusion of[, inter alia,] nutrients, oxygen, carbon
dioxide, [and] waste products,” Examiner failed to establish an evidentiary
basis on this record to support a conclusion that Hubbell’s disclosure of the
diffusion of nutrients, oxygen, carbon dioxide and waste products,
necessarily results in the conversion of at least one target gas to a product, as
is required by Appellant’s claimed invention (see FF 10; see generally
Appeal Br. 29; Reply Br. 19–20). In addition, Examiner failed to establish
that Clark makes up for the foregoing deficiency in Hubbell. Therefore, this
rejection is reversed.

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CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
Rejection IV: The rejection of claims 1 and 2 under 35 U.S.C.
§ 103(a) as unpatentable over Aines is affirmed. Claims 4–6, 9–11, and 32–
34 are not separately argued and fall with claim 1. Claim 35 is not
separately argued and falls with claim 2.
Rejection V: The rejection of claims 1, 2, 3, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Aines and Saunders is
affirmed. Claims 4–6, 9–11, and 32–34 are not separately argued and fall
with claim 1. Claims 3 and 35 are not separately argued and fall with claim
2.
Rejection VI: The rejection of claims 1, 2, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Aines, Saunders, and
Rambo is affirmed. Claims 4–6, 9–11, and 32–34 are not separately argued
and fall with claim 1. Claims 3 and 35 are not separately argued and fall
with claim 2.
Rejection VII: The rejection of claims 1, 2, 7, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Aines, Vericella, Safety
Data Sheet 1, and Safety Data Sheet 2 is affirmed. Claims 4–6, 9–11, and
32–34 are not separately argued and fall with claim 1. Claim 8 is not
separately argued and falls with claim 7. Claim 35 is not separately argued
and falls with claim 2.
Rejection VIII: The rejection of claims 1, 2, 26, and 28 under 35
U.S.C. § 103(a) as unpatentable over the combination of Aines and Kim is
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affirmed. Claims 4–6, 9–11, and 32–34 are not separately argued and fall
with claim 1. Claim 35 is not separately argued and falls with claim 2.

The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
Rejection IX: The rejection of claims 1, 4–7, 9, 10, and 29–33 under
35 U.S.C. § 103(a) as unpatentable over the combination of Hubbell and
Clark is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
32 112(b) Indefiniteness 32
1, 4–6, 9–11 102(a)(1),
102(a)(2)
Aines 1, 4–6,
9–11

1, 4–7, 9, 10,
30–32
102(a)(1),
102(a)(2)
Hubbell 1, 4–7, 9,
10, 30–32
1, 2, 4–6,
9–11, 32–35
103 Aines 1, 2, 4–6,
9–11,
32–35

1–6, 9–11,
32–35
103 Aines, Saunders 1–6, 9–11,
32–35

1–6, 9–11,
32–36
103 Aines, Saunders,
Rambo
1–6, 9–11,
32–36

1, 2, 4–11,
27, 32–35
103 Aines, Vericella,
Safety Data Sheet
1, Safety Data
Sheet 2
1, 2, 4–11,
27, 32–35

1, 2, 4–6,
9–11, 26, 28,
32–35
103 Aines, Kim 1, 2, 4–6,
9–11, 26,
28, 32–35

1, 4–7, 9, 10,
29–33
103 Hubbell, Clark 1, 4–7, 9,
10, 29–33
Overall
Outcome
1–11,
26–28,
32–36
29–31

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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).

AFFIRMED-IN-PART