Wilhelmus Theodorus Antonius Maria. De Laat et al.

Patent Trials and Appeals Board

Jul 18, 2019

13057598 - (D) (P.T.A.B. Jul. 18, 2019)

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.
13/057,598 02/04/2011 Wilhelmus Theodorus Antonius Maria De Laat 2919208-092001 3948
84331 7590 07/18/2019
McBee Moore Woodward & Vanik IP, LLC
7900 Westpark Drive, Suite A100
McLean, VA 22102
EXAMINER
PATURY, SRIKANTH
ART UNIT PAPER NUMBER
1657
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
cgmoore@mmwvlaw.com
docketing@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILHELMUS THEODORUS ANTONIUS MARIA DE LAAT,
MANOJ KUMAR, and MARGOT ELISABETH FRANCOISE
SCHOONEVELD-BERGMANS
____________

Appeal 2019-002820
Application 13/057,598
Technology Center 1600
____________

Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants submit this appeal under
35 U.S.C. § 134(a) involving claims to a method of treating corn stover.1
Examiner rejected claims 1, 2, 5, 6, 9–16, 18, 20, 21, and 26–29 as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify DSM IP ASSETS B.V. as the real party in interest.
App. Br. 2. Herein we refer to the Final Office Action mailed June 20, 2018
(“Final Act.”); Appeal Brief filed Sept. 14, 2018 (“App. Br.”); Examiner’s
Answer mailed Feb. 4, 2019 (“Ans.”); and Reply Brief filed Feb. 26, 2019
(“Reply Br.”).
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STATEMENT OF THE CASE
Appellants’ invention relates to the use of enzymes derived from a
bacteria, Talaromyces emersonii, to convert the lignin bound cellulose in
corn stover to sugar. The Specification states that “enzyme preparation
derived from Talaromyces emersonii can extremely effectively hydrolyze
lignocellulolytic material, for example corn stover . . . into monomeric
sugars which can then be converted into a useful product, such as ethanol.”
Spec 2, ll. 32–34. According to the Specification, “said enzyme preparation
can be used to carry out highly effective hydrolysis of a lingocellulosic
substrate” and “can effectively hydrolyze biomass when high dry matter
contents are used.” Id. at 3, ll. 2–3, ll. 24–25. The Specification explains
that this is beneficial because “lower amounts of enzymes will be required”
to achieve “higher amounts of the final product, for example, fuel ethanol, to
be achieved.” Id. at 3, ll. 6–7, ll. 27–28.
Claims 1, 2, 5, 6, 9–16, 18, 20, 21, and 26–29 are on appeal and can
be found in the Claims Appendix of the Appeal Brief. App. Br. 31–34.
Claim 1 is the only independent claim and representative of the claims on
appeal. It reads as follows:
1. A method for the treatment of corn stover which method
comprises contacting pretreated corn stover with a composition
comprising three or more enzyme activities, said enzyme
activities being cellulase and/or hemicellulase activities,
wherein:
a. the composition comprises an endoglucanase,
cellbiohydrolase and β-glucosidase which are derived
from Talaromyces emersonii and the composition is
provided in an amount from 0.15 to 1.5 mg enzyme
protein per gram corn stover dry matter (mg EP/g CS
dm)
b. the pH during the treatment is about 4.5 or lower,
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c. the pretreated corn stover is produced by a method
comprising exposing corn stover to an acid prior to
contacting the corn stover with the composition,
d. the treatment is carried out at a dry matter content of
15% to 25%; and
e. said method results in at least 80% conversion of
cellulose to a sugar or sugars.
App. Br. 31 (Claims Appendix).
Appellants seek review of the following obviousness rejections:
I. Claims 1, 2, 5, 6, 9, 10, 12–16, 18, 20, 21, and 27–29 under 35 U.S.C.
§ 103 as unpatentable over Tuohy,2 Felby,3 and Norholm4
II. Claims 1, 2, 5, 6, 9–16, 18, 20, 21, and 26–29 under 35 U.S.C. § 103
as unpatentable over Tuohy, Felby, Norholm, Foreman,5 Saloheimo,6
and Foong.7
Both of Examiner’s rejections are premised on the same combination of
references (i.e., Tuohy, Felby, and Norholm) for claim 1. Examiner relies
on Foreman, Saloheimo and Foong solely for limitations added by

2 Maria Tuohy et al., WO 2007/091231 A9, published Aug. 16, 2007
(“Tuohy”).
3 Claus Felby et al., US 2008/0138862 A1, published June 12, 2008
(“Felby”).
4 Nanna Norholm et al., WO 2007/036795 A1, published April 5, 2007
(“Norholm”).
5 Pamela Foreman et al., US 2007/0128690 A1, published June 7, 2007
(“Foreman”).
6 Markku Saloheimo et al., Swollenin, a Trichoderma reesei Protein With
Sequence Similarity to the Plant Expansins, Exhibits Disruption Activity on
Cellulosic Materials, Eng. J. Biochem., Vol. 269, 4202–4211 (2002)
(“Saloheimo”).
7 F. Foong et al., Unravelling the Mysteries of the “Cellulosome” – a Store
of Information for Direct Bioconversion of Cellulose to Ethanol,
Australasian Biotechnology, Vol. 7, 310–314 (1997) (“Foong”).
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dependent claims 11 and 26. Final Act. 6–7. And Appellants do not
contend that the rejections should be treated any differently as they relate to
claim 1. See App. Br. 18–29. Accordingly, we consider the rejections
together in our analysis.
The issue is: Does the preponderance of evidence of record support
Examiner’s conclusion that the cited prior art renders obvious the method of
claim 1?
Analysis
Examiner determines that Tuohy teaches the use of “enzyme
compositions derived from Talaromyces emersonii” to hydrolyze “various
hemicellulosic materials” such as “cereals, whole crops and grains.” Final
Act. 3–4. While acknowledging that “Tuohy does not teach the treatment to
be carried out at a dry matter content of 15% or more and does not teach the
biomass to comprise corn stover,” Examiner finds that Felby and Norholm
teach these limitations. Id. at 4. Examiner determines that one of skill
would be motivated to use Tuohy’s enzyme compositions on corn stover at a
high dry matter content “because Felby/Norholm teaches performing the
enzymatic hydrolysis at a dry matter content of 20% or more reduces the
downstream processing costs.” Id. at 5. Examiner further concludes that it
would be a matter of “routine optimization” to arrive at the enzyme
concentration recited in claim 1. Id.
Appellants contend that Tuohy teaches the use of its enzyme
compositions on materials with much lower dry matter content, e.g., “4%
dry matter spruce,” and therefore provides “no reasonable expectation of
success” that such compositions “could achieve conversion of at least 80%
to sugars” from corn stover. App. Br. 17–18. In addition, Appellants argue
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that Examiner “disregarded testimony submitted in two declarations by Dr.
Herman Pel.” App. Br. 24. In particular, Appellants point to references
cited in Dr. Pel’s declarations demonstrating that “efficiency of cellulose to
glucose conversion of biomass decreases dramatically as the dry matter
content increases” an effect “called the ‘solids effect.’” Id. (citing
Declaration of Dr. Pel dated July 7, 2015 (“First Pel Decl.”) at ¶¶ 6–8). In
light of the “solids effect,” Appellants argue that it was unexpected that the
claimed enzyme composition could achieve greater than 80% conversion of
cellulose to sugar using the relatively low enzyme concentrations recited in
claim 1. Appellants rely on the data in the Declaration of Dr. Pel dated Feb.
20, 2017 (“Second Pel Decl.”), as well as data in the Specification, to
demonstrate that the claimed method achieves such results.
Upon considering the evidence cited by the Examiner, and the
evidence of unexpected results presented by Appellants, we determine that
the preponderance of the evidence on this record does not support the
Examiner’s conclusion of obviousness. As discussed below, Appellants’
evidence of unexpected results is sufficient to outweigh the evidence of
obviousness.
We begin by noting that Examiner has met the “initial burden . . . of
presenting a prima facie case of” obviousness. See In re Oetiker, 977 F.2d
1443, 1446 (Fed. Cir. 1992). Tuohy teaches that the Talaromyces emersonii
enzyme compositions it tested at 4% dry matter content on spruce chips
“out-performed the commercial enzymes/enzyme blends . . . in terms of
overall extent hydrolysis, product yield and enzyme stability.” Tuohy 34, ll.
28–30. Felby teaches that it is “desirable to subject polysaccharide-
containing biomasses” such as corn stover “with high dry matter contents,
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preferably above 20%, to enzymatic hydrolysis.” Felby ¶¶ 24, 36. Felby
further demonstrates conversion rates as high as 70% on wheat straw with a
15% dry matter content and 50% at a 30% dry matter content using
commercial enzymes. Id. ¶¶ 81, 86. Thus, based solely on the teachings
those references, we agree with Examiner’s finding that “it is reasonable to
expect if the enzymes of Tuohy were used in the methods of Felby (treating
acid pretreated corn stover at dry matter of 15–25% with cellulose enzymes)
a higher hydrolysis rate (>70% maximum disclosed in Felby) would be
achieved.” Ans. 11.
Appellants, however, have provided additional evidence that rebuts
Examiner’s prima facie showing on this record. The Kristensen8 and
Hodge9 references cited in the First Pel Declaration demonstrate that one of
skill in the art would expect that increasing dry matter content would
substantially decrease the conversion rate. For example, using filter paper as
a model substrate, Kristensen reports “a decrease from 56.5% conversion at
5% initial solids content to 22.8% conversion at 25% initial solids content.”
Kristensen at 4. In the same vein, Hodge teaches that “rates and extents of
enzymatic cellulose hydrolysis of dilute acid pretreated corn stover (PCS)
decline with increasing” dry matter content. Hodge Abst. Data in Hodge
shows that the conversion rate decreased from about 80% to about 65% or
60%, depending on the enzyme loading, as the percentage of insoluble PCS

8 Jan B. Kristensen et al., Yield-Determining Factors in High-Solids
Enzymatic Hydrolysis of Lignocellulose, Biotechnology for Biofuel 2:11
(2009) (“Kristensen”).
9 David B. Hodge et al., Soluble and Insoluble Solids Contributions to High-
Solids Enzymatic Hydrolysis of Lignocellulose, Bioresource Tech. vol. 99,
8940–8948 (2008) (“Hodge”).
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solids increased from 5 to 15%. See Hodge 8943 (Fig. 4). This was true
notwithstanding the use of a much higher concentration of enzymes than that
recited in claim 1. See id. (showing data for enzymes loaded at “26 mg/g”
and “40 mg/g”). This evidence supports Appellants’ argument that
achieving greater than 80% conversion on corn stover with a 15-25% dry
material content and a “0.15 to 1.5 mg enzyme protein per gram” loading, as
claimed, would not have been expected by one of ordinary skill in the art.
The data in the Second Pel Declaration evidences that the method in
claim 1 achieves this unexpected result. The experiment described in that
declaration shows an 83% conversion rate on acid pretreated corn stover at
17.1% dry matter and 0.76 mg of Talaromyces emersonii enzyme cocktail
per gram of corn stover dry matter. Second Pel Decl. at 5–6. Examiner
rejected this evidence determining it was not “commensurate” with the 15–
25% dry matter range recited in claim 1. See Final Act. 11–12; Ans. 13–14.
We disagree. An applicant is not “required to test every embodiment within
the scope of his or her claims” to demonstrate unexpected results. In re Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011). The Second Pel Declaration
demonstrates unexpected results for an embodiment near the midpoints of
the claimed dry matter and enzyme concentration ranges. Moreover, there is
data in Specification Example 1 that provides “an adequate basis to support
the conclusion that other embodiments within the claim,” i.e., treating of
corn stover with a dry matter concentration up to 25%, “will behave in the
same manner.” See Kao, 639 F.3d at 1068. That data shows that the
claimed enzymes exhibited higher “specific activity” than commercial
benchmarks on pretreated corn stover at an even higher (“32.8%”) dry
matter concentration. See Spec. 26–29 (Ex. 1).
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For these reasons, we determine that Appellants have overcome the
prima facie case of obviousness with evidence of unexpected results that is
reasonably commensurate with the scope of claim 1. Accordingly, we
reverse Examiner’s rejections as to claim 1. Having reversed as to
independent claim 1, we likewise reverse the rejections of the dependent
claims. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.”).

SUMMARY
We reverse the rejection of claims 1, 2, 5, 6, 9, 10, 12–16, 18, 20, 21,
and 27–29 under 35 U.S.C. § 103 over Tuohy, Felby, and Norholm.
We reverse the rejection of claims 1, 2, 5, 6, 9–16, 18, 20, 21, and 26–
29 under 35 U.S.C. § 103 as unpatentable over Tuohy, Felby, Norholm,
Foreman, Saloheimo, and Foong.

REVERSED