OBIHIRO UNIVERSITY OF AGRICULTURE AND VETERINARY MEDICINE et al.

Patent Trials and Appeals Board

Sep 24, 2020

2020001668 (P.T.A.B. Sep. 24, 2020)

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.
15/036,980 05/16/2016 Takuji OHWADA 4700.P0413US 7936
23474 7590 09/24/2020
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
VAN BUREN, LAUREN K
ART UNIT PAPER NUMBER
1632
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUJI OHWADA and KAZUYUKI ENDO
Appeal 2020-001668
Application 15/036,980
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and TAWEN CHANG,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as Obihiro
University of Agriculture and Veterinary Medicine and Nihon Plast Co., Ltd.
Appeal Br. 1.
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STATEMENT OF THE CASE
Polyurethane, sometimes referred to as urethane, is “a polymer having
a urethane bond.” Spec. ¶ 2. Because leaked polyurethane may cause
serious environmental pollution, polyurethane is generally caused to be
adsorbed in soil and then recovered and further treated. Id. According to
the Specification, the inventors had previously discovered that a novel
actinomycete microorganism, belonging to the genus Streptomyces,
“exhibits an adsorption capacity and a decomposing function to urethane.”
Id. ¶ 3–4. The Specification states, however, that “in order to industrially
use the microorganism, the urethane decomposition rate is required to be
further improved.” Id. Further according to the Specification, the inventors
discovered that pretreating urethane with oleic acid, an unsaturated fatty
acid, is effective in allowing urethane to be easily decomposed by the
actinomycete microorganism. Id. ¶ 6.
CLAIMED SUBJECT MATTER
The claims are directed to a urethane decomposing method. Claim 1
is illustrative:
1. A urethane decomposing method comprising the steps of:
treating a urethane-containing material by immersing the urethane-
containing material in a treatment liquid containing an unsaturated
fatty acid; and allowing a microorganism, belonging to a
Streptomyces genus and exhibiting a urethane decomposing function,
to act on the urethane-containing material treated with the
unsaturated fatty acid.
Appeal Br. Claims App. 1.

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REJECTIONS2
A. Claims 1, 2, 4–14, 16, 17, 19, and 20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Owada3 and Saya.4 Ans. 4.
B. Claims 1 and 3 are rejected under 35 U.S.C. § 103 as being
unpatentable over Owada, Saya, and Yagi.5 Ans. 7.
C. Claims 1, 2, and 4–18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Owada and Tiwari.6 Ans. 7.
D. Claims 1 and 3 are rejected under 35 U.S.C. § 103 as being
unpatentable over Owada, Tiwari, and Yagi. Ans. 8.
OPINION
A. Obviousness rejections over Owada and Saya (claims 1, 2, 4–14,
16, 17, 19, and 20) and Owada, Saya, and Yagi (claims 1, 3)
1. Issue
The Examiner finds that Owada teaches “a method for absorbing and
purifying substances contaminated with urethane/polyurethane using a
Streptomyces strain” encompassed by the claims. Final Act. 8–9; Ans. 5.
The Examiner finds that these microorganisms “can be placed in a

2 We understand that the Examiner has withdrawn the rejection of claims 19
and 20 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Ans. 9–10.
3 Owada et al., JP2010-220610, published Oct. 7, 2010. References to
Owada in this opinion are to the machine-generated English language
translation of Owada attached to Appellant’s Response to Office Action
dated Mar. 2, 2017.
4 Saya et al., US 2005/0020701 A1, published Jan. 27, 2005.
5 Yagi et al., US 6,313,194 B1, issued Nov. 6, 2001.
6 Tiwari et al., US 2011/0014664 A1, Jan. 20, 2011.
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supportive culture medium” when they “come into contact with . . . urethane
waste materials” and further finds that, in one embodiment, Owada teaches
that the medium may contain fatty acids and/or alcohols. Final Act. 8–9;
Ans. 5.
The Examiner finds that Owada “does not go into more specific detail
concerning the specific fatty acids and alcohols that are included.” Final
Act. 9; see also Ans. 5. However, the Examiner finds that Saya “teaches a
method of breaking down urethane/polyurethane containing material” using
decomposing agents including ethanol and oleic acid, which is an
unsaturated fatty acid. Final Act. 9–10, Ans. 5–6.
Citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980), which held
that “it is prima facie obvious to combine two compositions each of which is
taught by the prior art to be useful for the same purpose, in order to form a
third composition to be used for the very same purpose,” the Examiner
concludes that:
[i]t would have been obvious to have combined the
action of the Streptomyces that can specifically
breakdown the urethane/polyethylene [sic] material with
other components that can degrade such as oleic acid
and/or ethanol. The Owada reference mentions that
Streptomyces can be cultured in a medium with fatty acid
and an alcohol and it would have been obvious to have
used oleic acid and ethanol specifically because they can
also help degrade such components.
Final Act. 10; Ans. 6.
Appellant contends among other things that “the process disclosed in
Saya . . . is completely different from that of the present invention.” Appeal
Br. 4. Appellant contends that, in any event, the subject matter of the
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invention exhibits unexpected synergistic results that overcome any showing
of prima facie obviousness. Appeal Br. 5.
The issue with respect to these rejections is whether a preponderance
of evidence of record supports the Examiner’s conclusion that the claims are
prima facie obvious over the combination of Owada and Saya.
2. Analysis
We find Appellant to have the better position. As we understand it,
the Examiner’s position is that, because Owada “mentions that Streptomyces
can be cultured in a medium with fatty acid and an alcohol,” it would have
been obvious for a skilled artisan to use oleic acid as the fatty acid and
ethanol as the alcohol7 in the medium, respectively, because Saya teaches
that “they can also help degrade [urethane].” Final Act. 10; Ans. 6.
We acknowledge that Saya teaches using oleic acid as a decomposing
agent for urethane. Saya ¶ 43. However, the Examiner has not persuasively
explained why a skilled artisan, based on the disclosures of Saya, would
have reasonably expected oleic acid to act as a decomposition agent when
present in the medium under conditions suitable for supporting the
maintenance and/or growth of Streptomyces microorganisms. For example,
Saya describes its decomposition reaction as progressing by kneading and
heating. Saya ¶ 29; see also id. ¶ 31 (suggesting that “decomposition
reaction can be terminated instantly” when “the intermediate product is . . .
released from the kneading and rapidly cooled down to room temperature”).
The Examiner asserts that:

7 Some dependent claims add a requirement for an alcohol such as ethanol in
the claimed method.
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the instant set of claims are not addressing what
temperature the fatty acid/microorganism are exposed to
nor do the instant set of claims exclude kneading and/or
heating. Thus, appellants’ arguments are not
commensurate in scope with the instant set of claims.
The instant set of claims just mention that the
unsaturated fatty acid needs to be present. The claims do
not specifically establish a precise role for the fatty acid
solution. Therefore, the fatty acids could be added to
facilitate a host of purposes such as degradation, nutrient
support for the microorganism, etc. The instant set of
claims do not specifically state that the fatty acids must
be used as a pretreatment before the addition of the
Streptomyces.
Ans. 11.
We are not persuaded. It is true that the claims neither include nor
exclude limitations regarding reaction conditions, such as temperature or
kneading, and also do not specifically state the role of the unsaturated fatty
acid in the urethane decomposition method. Nevertheless, the stated reason
for combining Saya with Owada, and for using oleic acid in the medium for
the Streptomyces microorganism described in Owada, is that oleic acid is
also a known urethane decomposition agent. Without an explanation why a
skilled artisan would have expected oleic acid to act as a decomposition
agent in the medium, there is insufficient support for the Examiner’s stated
reason to combine the cited prior art.8

8 In the Final Action, the Examiner also asserts that “the Saya reference
states that oleic acid has decomposition properties and does not specifically
state that decomposition can only occur with the addition of heat and/or
kneading.” Final Act. 4. We are not persuaded, however, that the Examiner
has sufficiently articulated a reason why a skilled artisan would understand,
based on the disclosures in Saya, that oleic acid would have decomposition
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“[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.” 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)). Accordingly, we
reverse the Examiner’s rejection of independent claims 1 and 12, which
contain similar limitations, as obvious over Owada and Saya. We likewise
reverse the rejection of claims 2, 4–11, 13, 14, 16, 17, 19, and 20, which
depend directly or indirectly from claims 1 or 12, over Owada and Saya. In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious.”)
The Examiner rejects claims 1 and 3 as obvious over Owada, Saya,
and Yagi. The Examiner cites Yagi only for the proposition that “an alcohol
pretreatment would have been obvious.” Final Act. 12; Ans. 7. Thus, Yagi
does not cure the deficiencies noted above with respect to the combination
of Owada and Saya. We therefore reverse the rejection of claims 1 and 3
over Owada, Saya, and Yagi as well.
B. Obviousness rejection over Owada and Tiwari (claims 1, 2, 4–18)
and Owada, Tiwari, and Yagi (claims 1 and 3)
1. Issue
As with the rejection over Owada and Saya, the Examiner finds that
Owada teaches “a method for absorbing and purifying substances

properties for urethane outside of the context of the methods described in
Saya.
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contaminated with urethane/polyurethane using a Streptomyces strain”
encompassed by the claims. Final Act. 8–9, 11; Ans. 5, 8. The Examiner
also finds Owada teaches that these microorganisms “can be placed in a
supportive medium that contains an alcohol and an unsaturated fatty acid.”
Final Act. 11; Ans. 8.
The Examiner further finds that Tiwari teaches that “the ability of
Streptomyces to grow and produce useful products could be enhanced
through ‘a combinatorial feeding’” of (1) linoleic acid, which is an
unsaturated fatty acid, or its esters or salts thereof, and (2) an omega-9 fatty
acid, which is also an unsaturated fatty acid and includes, e.g., oleic acid.
Final Act. 12; Ans. 8. The Examiner concludes that “[t]he use of such
components would help maintain the organism and support its growth so it
would have been obvious to have added such fatty acids to support the
growth of the Streptomyces.” Final Act. 12; Ans. 8.
Appellant notes that Tiwari is “directed to a process for the production
of lipase inhibitors by a fermentation process.” Appeal Br. 13. Appellant
contends that “[t]here is no teaching or suggestion [in Tiwari] that omega-9
fatty acids used in combination with other components can provide
supportive growth for Streptomyces strains.” Id. at 15. Appellant further
contends that, even if a skilled artisan would understand from Tiwari that
omega-9 fatty acids can improve the growth of some Streptomyces
microorganisms, there is no evidence that this finding would apply to the
particular urethane-decomposing Streptomyces microorganisms of the
claims or that use of omega-9 fatty acid as taught in Tiwari would enhance
the decomposition of urethane. Id. at 15–16. Finally, Appellant contends as
above that the subject matter of the invention exhibits unexpected
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synergistic results that overcome any showing of prima facie obviousness.
Id. at 14.
The issue with respect to these rejections is whether a preponderance
of evidence of record supports the Examiner’s conclusion that the claims are
prima facie obvious over the combination of Owada and Tiwari.
2. Analysis
Tiwari teaches a process for producing lipase inhibitors via
fermentation. Tiwari Abstract. We acknowledge that Tiwari teaches using a
Streptomyces microorganism in its fermentation process. Id. ¶ 63. We also
acknowledge that Tiwari teaches that its process uses a “combinatorial
feeding” of (1) “linoleic acid or its esters or salts thereof” and (2) “an
omega-9 fatty acid, preferably oleic acid and/or its derivatives,” which
results in an improved yield coefficient and productivity and further
provides ease of operation. Id. at Abstract. However, we find Appellant to
have the better position.
As an initial matter, under the analogous arts test, the Examiner must
show that “a reference is either in the field of the applicant’s endeavor or is
reasonably pertinent to the problem with which the inventor was concerned
in order to rely on that reference as a basis for rejection.” In re Kahn, 441
F.3d 977, 986–87 (Fed. Cir. 2006). While the claimed invention and Owada
are both drawn to the field of urethane processing, Tiwari is drawn to the
field of lipase inhibitor production. Moreover, while Streptomyces
microorganisms are used in Tiwari as well as in Owada and the claimed
invention, we are not persuaded that Tiwari is reasonably pertinent to the
problem with which either the inventors or Owada is concerned, i.e., the
processing of urethane.
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Furthermore, assuming for argument’s sake that Tiwari is analogous
art, the Examiner has not provided persuasive evidence that, based on the
teachings of Tiwari, a skilled artisan would have had reason to use omega-9
fatty acids to culture the Streptomyces microorganisms recited in the claimed
urethane decomposing methods. As Appellant points out, Tiwari appears to
teach adding linoleic acid and omega-9 fatty acids as precursors for the
production of the lipase inhibitor lipstatin. Appeal Br. 15; Tiwari ¶ 4
(“lineoleic acid forms the backbone of the final molecule”), ¶ 6 (describing
fatty acids such as linoleic acid as “precursors or starting material” for
lipstatin production), ¶ 64 (describing the inventive process as first growing
the lipstatin producing microorganisms in a basal/seed medium and then
adding certain components that serve as biochemical precursors). Such use
of omega-9 fatty acids would not appear to be relevant to the use of
Streptomyces microorganisms to process urethane.
In response to Appellant’s arguments, the Examiner asserts Tiwari
teaches using omega-9 fatty acids as a nutrient for Streptomyces
microorganisms, because Tiwari’s title refers to fatty acids being
“consumed” and because Tiwari teaches Streptomyces fermentation as
including a combinatorial feeding of linoleic acid and omega-9 fatty acid.
Ans. 12. We are not persuaded. The statements cited by the Examiner do
not distinguish between omega-9 fatty acids being “consumed” as a nutrient
or as a precursor for lipstatin production, and the Examiner does not address
other statements in Tiwari suggesting that omega-9 fatty acids are used as
biochemical precursors, rather than nutrients, in the fermentation process for
producing lipstatin.
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Accordingly, we reverse the Examiner’s rejection of independent
claims 1 and 12, which contain similar limitations, as obvious over Owada
and Tiwari. We likewise reverse the rejection of claims 2, 4–11, and 13–18,
which depend directly or indirect from claims 1 or 12, over Owada and
Tiwari. In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent
claims are nonobvious under section 103 if the independent claims from
which they depend are nonobvious.”)
The Examiner rejects claims 1 and 3 as obvious over Owada, Tiwari,
and Yagi. The Examiner cites Yagi only for the proposition that “an alcohol
pretreatment would have been obvious.” Final Act. 12; Ans. 9. Thus, Yagi
does not cure the deficiencies noted above with respect to the combination
of Owada and Tiwari. We therefore reverse the rejection of claims 1 and 3
over Owada, Tiwari, and Yagi as well.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 4–14,
16, 17, 19, 20
103 Owada, Saya

1, 2, 4–14,
16, 17, 19, 20
1, 3 103 Owada, Saya,
Yagi

1, 3
1, 2, 4–18 103 Owada,
Tiwari
1, 2, 4–18
1, 3 103 Owada,
Tiwari, Yagi
1, 3
Overall
Outcome

1–20

REVERSED