CIBA SPECIALTY CHEMICALS WATER TREATMENT LIMITED (ASSIGNEE) et al.

Patent Trials and Appeals Board

Aug 19, 2020

95002219 - (R) (P.T.A.B. Aug. 19, 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.
95/002,219 09/13/2012 8067215 10007-115RX1 3938
96039 7590 08/19/2020
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/19/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SNF HOLDING COMPANY
Requester and Respondent

v.

CIBA SPECIALITY CHEMICALS
WATER TREATMENTS LIMITED
Patent Owner and Appellant
____________

Appeal 2020-000001
Reexamination Control 95/002,219
Patent 8,067,215 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, RAE LYNN P. GUEST, and
WESLEY B. DERRICK, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is a decision on the Request for Rehearing under 37 C.F.R.
§ 41.79 (“2020 Req. Reh’g”) by Patent Owner of the § 41.77(f) Decision
entered January 22, 2020) (“2020 41.77(f) Dec.”). In addition to this
decision, there are two previous decisions in this inter partes reexamination
proceeding, the first entered August 1, 2016 (containing new grounds of
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rejection) (“2016 Dec.”), and the second, also under § 41.77(f) entered April
30, 2018 (also containing new grounds of rejection).
The Request for Rehearing is GRANTED-IN-PART.

STATEMENT OF THE CASE
The claims stand rejected as follows:
1. Claims 1–8, 10, 15, 17–25, 27, 30, 35, and 37–49 under pre-AIA
35 U.S.C. § 103(a) as obvious in view of JP ’714.
2. Claims 1–46 under pre-AIA 35 U.S.C. § 103(a) as obvious in view
of WO ’680, JP ’714, Munk, Kulicke, and Watanabe ’855.
3. Claims 18 and 47 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
4. Claims 1, 7, 18, and 46 under 35 U.S.C. § 314(a) as enlarging the
scope of the claims of the ’215 patent.1
Amended claim 1 is reproduced below (underlining and brackets is
relative to the original claim; indentations have been added for clarity):
1. A process for preparing a [polymer] homopolymer or
copolymer of an ethylenically unsaturated monomer, in which
the monomer includes a (meth)acrylamide monomer [is]
obtained from a nitrile substrate that can be converted into the

1 The Examiner listed claims 1 and 7 in the body of the rejection, but noted
in a footnote that claims 18 and 46 had the same phrasing recited in claim 1
that the Examiner found to enlarge the scope of the claim. 2019 Examiner
Determination under 37 C.F.R. § 41.77(d) mailed April 17, 2019 (“2019
41.77d Determination”) 9, n.19. Therefore, we consider all the claims to
have been rejected under § 314(a). In advertently, in the 2020 41.77(f) Dec.
at 3 and 20, the rejected claims were misstated.
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ethylenically unsaturated monomer in a biocatalysed reaction
using a biocatalyst, which substrate is (meth)acrylonitrile,
wherein the biocatalyst comprises a nitrile hydratase
enzyme and whole cells, fractured cells, or a combination
thereof, [or a fermentation process], and
wherein the monomer contains [cellular material and/or
components of] the biocatalyst and a fermentation broth[,] from
a fermentation process used to produce the biocatalyst, and
forming the polymer by polymerising the ethylenically
unsaturated monomer or a monomer mixture comprising the
ethylenically unsaturated monomer and [cellular material and/or
components of a] the fermentation broth in the presence of a
redox and/or thermal initiator and
the formed polymer exhibits an intrinsic viscosity of at
least 3 dl/g measured using a suspended level viscometer in 1 M
sodium chloride at 25°C.

REJECTION UNDER 35 U.S.C. § 314(a)
Under pre-AIA 35 U.S.C. § 314(a), “[i]n any inter partes
reexamination proceeding under this chapter, the patent owner shall be
permitted to propose any amendment to the patent and a new claim or
claims, except that no proposed amended or new claim enlarging the scope
of the claims of the patent shall be permitted.” In response to the amendment
to the claims filed May 18, 2018 by Patent Owner, the Examiner rejected
claims 1, 7, 18, and 46 as enlarging the scope of the claims of the patent in
contravention of § 314(a). 2019 41.77d Determination 9. The Examiner’s
rejection was affirmed in the 2020 41.77(f) Decision. Patent Owner requests
reconsideration of this decision.
The rejection of claim 1 under § 314(a) was based on the following
amendment to the claim:
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A process for preparing a [polymer] homopolymer or copolymer
of an ethylenically unsaturated monomer, in which the monomer
includes a (meth)acrylamide monomer [is] obtained from a
nitrile substrate that can be converted into the ethylenically
unsaturated monomer in a biocatalysed reaction using a
biocatalyst, which substrate is (meth)acrylonitrile
For comparison, the original claim language is as follows:
A process for preparing a polymer of an ethylenically
unsaturated monomer, in which the monomer is obtained from a
biocatalysed reaction or a fermentation process
The original claim language required that the ethylenically
unsaturated monomer is “obtained” from a biocatalysed reaction or a
fermentation process. The amended claim now requires that the ethylenically
unsaturated monomer “includes” a monomer that “can be converted” into
the monomer in a biocatalysed reaction. The “(meth)acrylamide monomer”
in amended claim 1 is a species of the “ethylenically unsaturated monomer”
in claim 1 as originally claimed. See original claim 8 (“A process according
to claim 1 in which the ethylenically unsaturated monomer is
(meth)acrylamide monomer.”).
Patent Owner points out that the “can be converted” language is
present in original claim 2, which depends from claim 1, and therefore
cannot be a broadening amendment. 2020 Req. Reh’g 12–13. We agree with
Patent Owner as to the scope of original claim 2, but, as explained below,
the scope of the amended claim is still enlarged in comparison to the original
claim.
The claim amendment added the term “includes” to indicate that the
ethylenically unsaturated monomer used in the reaction “includes”
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(meth)acrylamide monomers obtained from the biocatalysed reaction. The
term “includes” is open-ended and therefore the ethylenically unsaturated
monomer of the claim can contain ethylenically unsaturated monomers from
sources other than the (meth)acrylamide monomers obtained from the
biocatalytic reaction. The original claim language was more restrictive
because it expressly stated that the source of the ethylenically unsaturated
monomer was from “a biocatalysed reaction or a fermentation process.” The
scope of the amended claim has therefore been enlarged because it is not
limited to the use of ethylenically unsaturated monomers from a
biocatalysed reaction or a fermentation process, but includes the use of
ethylenically unsaturated monomers obtained from other sources.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 314(a) is affirmed.
With respect to claims 18 and 46, as discussed by the Requester, the
Examiner indicated that these claims contained the same language as claim 1
(see fn. 1 above) and therefore Patent Owner was on notice that these claims
had the same defect under § 314(a). Requester’s Comments on Req. Reh’g
7–8. Thus, while there was no explicit statement by the Examiner that claims
18 and 46 were rejected under § 314(a), it would have been evident that their
omission from the Examiner’s statement was an inadvertent error. The
claims were also included in the statement of the rejection in the 2020
41.77(f) Decision at page 3. These claims therefore remain rejected, as well.
The rejection of claim 7 as enlarging the scope of the original claim
was based on the following amendment:
A process according to claim 1 in which the [components of] the
fermentation broth comprises ingredients used for culturing a
microorganism, the ingredients including (i) [are selected from
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the group consisting of] sugars, polysaccharides, or mixtures
thereof; (ii) proteins, peptides, amino acids, nitrogen sources,
and mixtures thereof; (iii) inorganic salts (including metal
salts)[,]; and (iv) optionally vitamins, growth regulators, enzyme
inducers, [and] complex fermentation medium components, and
mixtures thereof.
The original claim language is as follows:
7. A process according to claim 1 in which the components of
the fermentation broth are selected from the group consisting of
sugars, polysaccharides, proteins, peptides, amino acids,
nitrogen sources, inorganic salts (including metal salts),
vitamins, growth regulators, enzyme inducers and complex
fermentation medium components.
The Examiner found that the claim scope was enlarged because the
closed Markush-type transitional phrasing of “selected from the group
consisting of” in the original claim is replaced with “the inclusive, open-
ended phrasing” of “comprises . . . including” in the amended claim. 2019
41.77(d) Determination 9.
We agree with Patent Owner that we erred in affirming the rejection
of claim 7. As explained by Patent Owner, for a claim to be broadened under
pre-AIA 35 U.S.C. § 314(a), the claim must cover an embodiment not
encompassed by the original claims of the patent. For a dependent claim, a
proper analysis for broadening is not whether the dependent claim in
question is broader than the original version of that dependent claim, but
whether the dependent claim in question is broader that any of the original
claims. The Examiner did not make the finding that claim 7, as amended, is
broader than original claim 1. Original claim 1 did not restrict the
ingredients or components present in the fermentation broth. Therefore
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naming specific ingredients in claim 7 does not enlarge the scope of claim 1.
The rejection of claim 7 under § 314(a) is reversed.

WRITTEN DESCRIPTION
Claims 18 and 47 were rejected by the Examiner as not complying
with the written description requirement of 35 U.S.C. § 112, first paragraph,
because there is no upper limit recited in the claim limitation “wherein the
fermentation broth is present in the monomer mixture in an amount of at
least 5% by weight.” 2019 41.77(d) Determination 8. The Examiner found
that the only support for the recited range in the ’215 patent is for a range up
to 20% by weight. Id. We affirmed the rejection. 2020 41.77(f) Decision 6.
Patent Owner argues, apparently for the first time, that there is an
additional example in which a monomer of about 75% by weight of the
fermentation broth was used. 2020 Req. Reh’g 17. “Arguments not raised in
the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.” 37 C.F.R. § 41.79(b)(1).
Appellant has not shown that paragraphs (b)(2) and (b)(3) are applicable.
The introduction of the new evidence, therefore, is impermissible.
Nonetheless, even if we were to consider this new evidence, it is still
insufficient to provide written descriptive support for the complete range
because the recited range has no upper limit and Appellant did not establish
that the ’215 patent provides support for values above about 75% by weight
of monomer. Because the Examiner had a basis to reject the claims as
lacking written description, Patent Owner has the rebuttal burden of showing
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that a person of ordinary skill in the art would have recognized that the
inventors invented the limitation of a monomer “in an amount of at least 5%
by weight,” a range in excess of the expressly described upper limits. In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). The burden has not been met.

OBVIOUSNESS BASED ON WO’680, JP ’714, MUNK, KULICKE, AND
WATANABE ’855
A new grounds of rejection was not made with respect to this rejection
and thus prosecution was not reopened.
Patent Owner makes the same arguments in the Request for Rehearing
that we have already considered and determined not to be persuasive.
The Decision entered Aug. 1, 2016, explains the basis of the rejection.
2016 Dec. 27–28. The additional evidence provided by Appellant and
considered in the 2020 41.77(f) Decision at pages 9–14 further supports the
obviousness of using fermentation broth in the claimed process of preparing
a homopolymer or copolymer. Although the cited evidence is not part of the
formal statement of the rejection, obviousness is based on “the scope and
content of the prior art” (Graham v. John Deere Co., 383 U.S. 1, 17 (1966)),
and the publications introduced by Appellant are, by their admission, part of
the pertinent scope and content of the prior art.

OBVIOUSNESS BASED JP ’714
In affirming the obviousness rejection based on JP ’714, Appellant
contends the Decision erred in failing to properly balance the probative
weight of Patent Owner’s evidence against the evidence relied upon by the
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Board. Req. Reh’g 23. Appellant, however, fails to identify any flaw in the
fact-finding and reasoning set forth in the Decision, other than to say that the
statement in JP ’714 about the presence of fermentation broth is ambiguous.
Id. at 24. However, Patent Owner does not address their own evidence
introduced into this record, which is part of the scope and content of the
prior art, that fermentation broth can be present during monomer
polymerization.2 Patent Owner therefore does not establish that we erred in
affirming the rejection.
CLAIMS 18 AND 47–49
Claim 18 recites “wherein the fermentation broth is present in the
monomer mixture in an amount of at least 5% by weight.” Dependent claims
47–49 recite that “the fermentation broth present in the monomer or the
monomer mixture” is in an amount of at least 5% by weight and 5% to 20%
by weight.” Patent Owner argues that the Board erred by not considering the
patentability of claims 18 and 47–49 separately. Req. Reh’g 24–25. This
argument is not correct. The claims were considered separately.
The 2020 41.77(f) Decision cited WO ’716, a publication introduced
into evidence by Patent Owner. The 2020 Decision described the disclosure
in WO ’716:
WO ’716 thus teaches that a “nitrile hydratase producing
microbial catalyst in which the content of monosaccharide is 5%
by mass or less” (WO ’716, p. 6) is used to produce the monomer

2 “Therefore, WO ’716 teaches that a fermentation broth (“microbial culture
liquid”) can be present during polymerization to produce a high molecular
weight [polymer] as long as long the content of monosaccharide in it is
below a specific amount, and sets forth different limits, including 500 ppm
or 5% by mass.” 2020 41.77(f) Dec. 13.
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and the resulting monomer having 500 ppm saccharide or less is
used to make “high molecular weight” polymer (WO ’716, p.
10). The monosaccharide may be from the culture liquid used to
make the microbial catalyst (WO ’716, p. 7: “nitrile hydratase
producing microbial catalyst is used for which the content of
monosaccharide derived from the microbial culture liquid is 5%
by mass or less, and preferably 3% by mass or less”). The
“microbial liquid culture” is fermentation broth. Therefore, WO
'716 teaches that a fermentation broth (“microbial culture
liquid”) can be present during polymerization to produce a high
molecular weight [polymer] as long as long the content of
monosaccharide in it is below a specific amount, and sets forth
different limits, including 500 ppm or 5% by mass.
2020 41.77(f) Dec. 13.
The 2020 Decision then addressed claims 18 and 47–49, stating that
Patent Owner “did not distinguish these amounts of monosaccharide [in WO
’716], and the accompanying fermentation broth in which the
monosaccharide resides, from the amounts of fermentation broth recited in
the claims.” Id. at 14. Patent Owner, in the Request for Rehearing, did not
respond to this determination.

CONCLUSION
We considered Appellant’s Request for Rehearing of the 2020
41.77(f) Decision. We grant it only to the extent we reverse the rejection of
claim 7 under 35 U.S.C. § 314(a), but decline to modify our 2020 Decision
with respect to any of the other rejections, including the other affirmed
rejections of claim 7.

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In summary:

REHEARING GRANTED-IN-PART

em
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–8, 10, 15,
17–25, 27,
30, 35, 37–
49
103 JP ’714 1–8, 10, 15,
17–25, 27,
30, 35, 37–
49

1–46 103 WO ’680, JP ’714,
Munk, Kulicke,
and Watanabe ’855
1–46
18, 47 112, first
paragraph
Written description 18, 47
1, 7, 18, 46 314(a) Enlarging scope of
claim
1, 18, 46 7
Overall
Outcome
1–49
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Patent Owner:

MEUNIER CARLIN & CURFMAN LLC
999 Peachtree Street NE, Suite 1300
Atlanta, GA 30309

Third Party Requester:

BLANK ROME LLP
1825 Eye Street NW
Washington, DC 20006-5403