Zhangfang Kang

Patent Trials and Appeals Board

Nov 13, 2020

13808163 - (D) (P.T.A.B. Nov. 13, 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.
13/808,163 01/03/2013 Zhangfang Kang 11727-US-PCT 1088
25908 7590 11/13/2020
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
PO BOX 576
FRANKLINTON, NC 27525-0576
EXAMINER
HOLLAND, PAUL J
ART UNIT PAPER NUMBER
1656
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
DOCKETING@novozymes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ZHANGFANG KANG
__________

Appeal 2020-001805
Application1 13/808,163
Technology Center 1600
__________

Before DONALD E. ADAMS, DEBORAH KATZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of producing a fermentation product from lignocellulse-containing
material, which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s specification states that “[a] vast number of processes of
producing fermentation products, such as ethanol, by fermentation of sugars

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 Novozymes
A/S and Novozymes North America, Inc. (Appeal Br. 1.)
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provided by degradation of starch-containing and/or lignocellulose-
containing material are known in the art.” (Spec. 1.) Appellant’s invention
is directed to a process for increasing the yield of the fermentation product,
which thereby reduces the production costs. (Id.)
Claims 2–7, 11–14, and 21–24 are on appeal. Claim 2 is
representative and reads as follows:
2. A process of producing a fermentation product from
lignocellulose-containing material, comprising the steps of:
(a) pre-treating lignocellulose-containing material;
(b) hydrolyzing the pre-treated lignocellulose-containing
material; and
(c) fermenting the hydrolysate or a portion thereof in a
fermentation medium with a fermenting organism and one or
more Family 61 glycoside hydrolase (GH61) polypeptides
added into the fermenting step, to produce a fermentation
product, wherein the hydrolyzing and the fermenting are carried
out as separate hydrolysis and fermentation, the one or more
GH61 polypeptides are added after the hydrolysis step is
completed, and wherein the yield of fermentation product is
increased as compared to a process where one or more GH61
polypeptides are not added into fermentation.
(Appeal Br. 9.)

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The prior art relied upon by the Examiner is:
Name Reference Date
Delozier WO 2009/042622 A2 Apr. 2, 2009
Brown WO 2005/074647 A2 Aug. 18, 2005
S. Brethauer and C.E. Wyman, Review: Continuous hydrolysis and
fermentation for cellulosic ethanol production, 101 Bioresource Tech.,
4862–74, (2010).

The following grounds of rejection by the Examiner are before us on
review:
Claims 2–7, 11, 14, and 24 under 35 U.S.C. § 103(a) as unpatentable
over Delozier.
Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Delozier and Brown.
Claims 21–23 under 35 U.S.C. § 103(a) as unpatentable over Delozier
and Brethauer.
Claims 2–7, 11, 14, and 21–24 on the ground of non-statutory
obviousness-type double patenting over claims 1, 2, and 7–11 of US Patent
8,883,456.
DISCUSSION
I
There is a single issue dispositive of the Examiner’s outstanding
obviousness rejections under 35 U.S.C. § 103. Indeed, Appellant argues all
claims together in addressing the Examiner’s obviousness rejection. Thus,
we address the rejections together and focus on representative claim 2.
The Examiner finds that Delozier teaches fermentation of
lignocellulosic material that includes a pretreatment step, and a hydrolysis
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step that is separate from the fermentation step. (Final Action 3.) The
Examiner further finds that Delozier teaches the hydrolysis of the
lignocellulose can be enzymatic and that the cellulolytic enzyme preparation
includes “one or more polypeptides of the family GH61 origin [see p. 8,
lines 14-23].” (Id.) In addition, the Examiner finds that “Delozier [] also
teach wherein the polypeptides having cellulolytic enhancing activity
(GH61) are present during hydrolysis and/or fermentation [see p. 22,
bottom; claim 19].” (Id.; see also id. at 7 (addressing independent claim
21)) In light of the foregoing disclosures, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to add the GH61
polypeptide following the hydrolysis step. (Id. at 4–5.)
In short, the Examiner determines that the use of “and/or” in claim 19
means that “the scope of Delozier []’s invention encompasses a scenario
wherein the GH61 polypeptide is present in the fermentation step and not in
the hydrolysis step.” (Id. at 5; see also Ans. 10–11.)
We agree with the Examiner’s conclusion of obviousness.
Delozier teaches that before “wood-containing material can be fermented
into the desired fermentation product . . . , it has to be converted into
fermentable sugars.” (Delozier 3:17–19.) A hydrolysis step in the
fermentation process of lignocellulosic material is, thus, used to break down
cellulose that can then be used as a substrate during fermentation. (Id.; see,
also id. at 4, 8.) The hydrolysis of the cellulose can be accomplished
enzymatically, such as with a cellulase. (Id. at 8, 18–19.) Delozier further
teaches GH61A polypeptides are known to have cellulolytic enhancing
activity and thus hydrolysis is carried out using a cellulolytic enzyme
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preparation comprising one or more polypeptides of family GH61A origin.
(Id.; see also id. at 22.) Delozier explains that
[t]he polypeptides having cellulolytic enhancing activity
enhance the hydrolysis of a lignocellulose derived material
catalyzed by proteins having cellulolytic activity by reducing
the amount of cellulolytic enzyme required to reach the same
degree of hydrolysis[.]
(Id.) Thus, with a lesser amount of enzyme, the same extent of hydrolysis
can be achieved. In other words, Delozier teaches that the polypeptide of
GH61A origin is important to obtaining more effective/efficient hydrolysis
by the cellulolytic enzyme.
Delozier teaches that hydrolysis and fermentation can be carried out
separately or simultaneously. (Id. at 4.) Two types of simultaneous
processes are described, hybrid hydrolysis and fermentation (“HHF”) and
simultaneous hydrolysis and fermentation (“SHF”). (Id. at 4, 9.) With
respect to SHF, Delozier teaches that “[i]n general this means that the
combined hydrolysis and fermentation is carried out at conditions (e.g.,
temperature and/or pH) suitable for the fermenting organism in question.”
(Id. at 9.) For HHF, Delozier explains that a separate hydrolysis step is
started and the process “ends with a simultaneous hydrolysis and
fermentation step.” (Id. at 8.) Delozier further states that “[t]he separate
partial hydrolysis step is an enzymatic cellulose saccharification step.” (Id.)
Despite that Delozier teaches that the polypeptide of GH61A origin
makes the hydrolysis by the cellulolytic enzyme more effective/efficient,
Delozier also states that “the hydrolysis and/or fermentation is carried out in
the presence of a cellulolytic enzyme in combination with a polypeptide
having enhancing activity,” (id. at 22 (emphasis added)) and in claim 19
states “[t]he process of any of claims 1-17, further wherein one or more
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polypeptides having cellulolytic enhancing activity is(are) present during
hydrolysis and/or fermentation or HHF or SHF” (id. at 30; see also id. at 29
(Delozier’s claim 11, from which claim 19 may depend, requires that the
hydrolysis and fermentation steps are carried out separately or as HHF or
SHF)).) In other words, Delozier specifically teaches adding a cellulolytic
enhancing activity, such as GH61A, at a fermentation step that is not HHF or
SHF and, not during hydrolysis.
We do not agree that because Delozier teaches advantages of using a
polypeptide having cellulolytic enhancing activity during hydrolysis, it
necessarily teaches away from Delozier’s explicit disclosure of using such a
peptide during fermentation, rather than hydrolysis (Appeal Br. 6–7). That
Delozier may not have disclosed or recognized a benefit of adding such a
polypeptide at fermentation is of no import. Inherency may supply a
missing claim limitation in an obviousness analysis. See, e.g., Santarus, Inc.
v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012). That Appellant
recognized a new benefit to the fermentation process is not patentable as the
benefit is simply the natural result of the prior art method. See, e.g., Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir.
2001) (“Newly discovered results of known processes directed to the same
purpose are not patentable because such results are inherent.”); Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005).
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted); see also Beckman Instruments, Inc. v. LKB Produkter AB, 892
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F.2d 1547, 1551 (Fed. Cir. 1989) (“Even if a reference discloses an
inoperative device, it is prior art for all that it teaches.”). Appellant’s claim
is directed at doing what Delozier teaches one of ordinary skill in the art to
do.
Consequently, we affirm the Examiner’s rejection of the claims as
being obvious over Delozier alone, Delozier and Brown, as well as Delozier
and Brethauer.
II
Despite the outstanding rejection of claims 2–7, 11, 14, and 21–24 on
the ground of non-statutory obviousness-type double patenting over claims
1, 2, and 7–11 of US Patent 8,883,456 in the Final Action from which this
Appeal was taken, (Final Action 10–11), Appellant did not contest the
rejection until the filing of the Reply Brief. (Reply Br. 5.) “[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative);
see also 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”). Appellant has not demonstrated any
specific Examiner findings presented for the first time in the Answer
necessitating this new argument in rebuttal in the Reply Brief.
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.” MPEP § 1205.02,
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Consequently, we summarily affirm the outstanding rejection of claims 2–7,
11, 14, and 21–24 on the ground of non-statutory obviousness-type double
patenting over claims 1, 2, and 7–11 of US Patent 8,883,456.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–7, 11,
14, 24
103 Delozier 2–7, 11,
14, 24

12, 13 103 Delozier, Brown 12, 13
21–23 103 Delozier,
Brethauer
21–23
2–7, 11,
14, 21–24
Nonstatutory
Double Patenting
2–7, 11,
14, 21–24

Overall
Outcome
2–7, 11,
14, 21–24

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).

AFFIRMED