Costas, Carlos R. et al.

Patent Trials and Appeals Board

Oct 16, 2019

14218836 - (D) (P.T.A.B. Oct. 16, 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.
14/218,836 03/18/2014 Carlos R. Costas R2041-707220(09E195) 8459
84250 7590 10/16/2019
LANDO & ANASTASI, LLP
R2013
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
EXAMINER
BARRON, SEAN C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
10/16/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CARLOS R. COSTAS and CHRISTOPHER R. ECK
__________

Appeal 2018-008083
Application 14/218,836
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, TAWEN CHANG, and
DAVID D. COTTA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
system for algal cell lysis to recover a lipid. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Raytheon
Company (see App. Br. 3).
2 We have considered and refer to the Specification of Mar. 18, 2014
(“Spec.”); Final Action of Sept. 15, 2017 (“Final Act.”); Appeal Brief of
Mar. 29, 2018 (“App. Br.”); Examiner’s Answer of June 7, 2018 (“Ans.”);
and Reply Brief of Aug. 7, 2018 (“Reply Br.”).
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Statement of the Case
Background
“Algae are simple, single-celled plants that can inherently produce
lipids and other materials that can be processed to create biofuels, plastics
and other materials traditionally derived from petrochemicals” (Spec. 1:19–
21). “One problem with the use of algae as a renewable energy and
materials source has been the extraction of lipids or other useful materials
from the algae. Algae have a durable cell wall that must be disrupted in
order to effectively obtain the useful materials” (id. 1:25–27).
The Claims
Claims 1, 3–6, and 8–11 are on appeal. Claim 1 is representative and
reads as follows:
1. A system for algal cell lysis to recover a lipid
comprising:
a bioreactor containing an algae culture including at
least one algal cell comprising the lipid;
a plurality of metal nanoparticles;
an electromagnetic radiation generator operable to
generate radio frequency or microwave radiation that excites
the plurality of metal nanoparticles, resulting in lysis of the
algal cell, wherein the lysis of the algal cell releases the
lipid;
a lipid recovery system coupled to the bioreactor and
configured to collect the lipid from the algal cell after lysis;
and
a nanoparticle recovery subsystem coupled to the
bioreactor and configured to return at least a portion of the
plurality of metal nanoparticles to the bioreactor after lysis.

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The Issue
The Examiner rejected claims 1, 3–6, and 8–11 under 35 U.S.C.
§ 103(a) as obvious over Wilkerson,3 Cravotto,4 Curtain,5 and Tanaka6 (Ans.
4–9).
The Examiner finds “Wilkerson teaches a system for lysing algal cells
and capable of obtaining lipids/oils, comprising: 1) algal cells and 2) a
photosensitizers which may be metal nanoparticles), and a 3) lipid recovery
system” (Ans. 5). The Examiner finds Wilkerson teaches the “metal
nanoparticles as species of energy-activatable sensitizers, capable of
absorbing light, sonic, ultrasonic, thermal, and/or chemical energy” (Ans. 5).
The Examiner finds “Wilkerson teaches that activation of the energy-
activatable photosensitizer added to algal culture medium disrupts, ruptures,
degrades, and or breaks the algal cell wall and/or cellular membrane” (Ans.
6).
The Examiner acknowledges that “Wilkerson does not teach
microwaves as species of electromagnetic radiation”; “any microwave
radiation generator”; or “any nanoparticle recovery system coupled to the
bioreactor and configured to return at least a portion of the plurality of metal
nanoparticles to the bioreactor after lysis” (Ans. 6).

3 Wilkerson et al., US 2010/0035321 A1, published Feb. 11, 2010.
4 Cravotto et al., Improved extraction of vegetable oils under high-intensity
ultrasound and/ or microwaves, 15 Ultrasonics Sonochemistry 898–902
(2008).
5 Curtain et al., US 4,554,390, issued Nov. 19, 1985.
6 Tanaka et al., Algae Permeability to Me2SO from - 3 to 23°C, 42
Cryobiology 286–300 (2001).
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The Examiner finds Cravotto teaches “a method of extracting
hydrophobic compounds from plants and microalgae with ultrasound-
assisted and microwave-assisted extraction” (Ans. 6).
The Examiner finds Curtain teaches “methods of harvesting cell
components from algae” and that “magnetite is a suitable hydrophobic
adsorbent for recovering algal cell products and can be readily recovered by
magnetic means” (Ans. 6). The Examiner finds Curtain teaches “a
magnetite particle recovery system comprising a permanent magnet and
methods of reactivating said magnetite particles after algal cell lysis such
that said magnetite particles are capable of reuse and adsorbing” (Ans. 6–7).
The Examiner finds it obvious “to add and couple the manual
magnetite particle recovery subsystem of Curtain to the bioreactor of
Wilkerson” because “recovering the photosensitizers/nanoparticles would be
predictably advantageous to then reuse said photosensitizers/nanoparticles in
subsequent methods of lysing algal cells” (Ans. 7). The Examiner finds it
obvious “to add the microwave generator device of [Cravatto] to
Wilkerson’s system for lysing algae” because Cravatto “teaches that
application of an electric field (comprising microwaves) can enhance lysis of
algal cells” (Ans. 8).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Wilkerson,
Cravotto, Curtain, and Tanaka render the claims obvious?
Findings of Fact
1. Wilkerson teaches “a system for releasing a cellular component
of a photosynthetic organism. The system includes a bioreactor” (Wilkerson
¶ 11).
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2. Figure 2 of Wilkerson, showing a bioreactor and algae/oil
recovery system used for biofuel production, is reproduced below:

“FIG. 2 is a functional block diagram showing a system to harvest cell
component[s] of photosynthetic organisms” (Wilkerson ¶ 19).
3. Wilkerson teaches the cellular components may include “lipids
. . . from an algal biomass” (Wilkerson ¶ 14).
4. Wilkerson teaches the “composition includes a plurality of
energy-activatable sensitizers and a permeabilizer. In some embodiments,
the energy-activatable sensitizers are activatable by absorption of light,
sonic, ultrasonic, thermal, and/or chemical energy” (Wilkerson ¶ 14).
5. Wilkerson teaches “[e]xemplary photosensitizers include . . .
nanoparticles including inorganic oxide-, metallic-, and polymer-based
nanocomposites as photosensitizer carriers, and the like, or combinations
thereof. In some embodimeents, photosensitizers that absorb[] light [are] in
a range of 500 nm [to] 1100 nm” (Wilkerson ¶ 28).
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6. Wilkerson teaches “the energy-activatable photosensitizer,
when activated, is capable of disrupting and/or lysing cells in a culture or a
concentrate” (Wilkerson ¶ 85) and “photosensitizers may be used to liberate
lipids utilized as cellular carbon reserve materials, or liberate lipids utilized
as structural components of membranes” (Wilkerson ¶ 86).
7. Cravotto teaches “microwave-assisted extraction (MAE)
techniques have been employed . . . to extract oils from . . . cultivated marine
microalga rich in docosahexaenoic acid (DHA)” (Cravotto 898, abstract).
8. Cravotto teaches “microwave-assisted extraction (MAE) [is]
now recognized as [an] efficient extraction technique[] that dramatically
cut[s] down working times, increasing yields and often the quality of the
extract” (Cravotto 899, col. 1).
9. Cravotto teaches “[r]esults were even more striking in the case
of seaweed extraction, as the cell wall of the microalga is very tough.
Extraction times were reduced up to 10-fold and yields increased by 50-
500% in comparison with conventional methods” (Cravotto 902, col. 1).
10. Curtain teaches a “method for recovery of the cell contents of
the algae while still attached to the separated adsorbent, which method
comprises contacting the algae with a suitable solvent so as to disrupt the
cell membrane of the algae and release the cell contents for recovery”
(Curtain 2:67–3:3).
11. Curtain teaches “[m]agnetite in particular has been found to be
a good adsorbent for the algae and has the advantage that it can be readily
separated and recovered from the saline solution by magnetic means”
(Curtain 3:35–38).
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12. Curtain teaches, in Example 2, that:
Magnetite (10 g, passing a 20 mesh (BSS) screen) was
silanized . . . The silanized magnetite was stirred with 50 ml of
a suspension of 2 X 105 cells/ml of Dunaliella salina in a
saturated sodium chloride solution for 10 minutes. The
silanized magnetite was then removed from the solution by
using a permanent magnet. The cells adsorbed on the magnetite
were lysed by contacting the magnetite with methylene
dichloride, after which the methylene dichloride was separated
and analysed . . .
The silanized magnetite was reactivated by washing five
times with 10 ml portions of water. The experiment was then
repeated using the reactivated magnetite and 70% of the -
carotene present in the Dunaliella cell suspension used was
recovered.
(Curtain 5:42–61).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–9; FF 1–12) and agree that the
claims are rendered obvious by Wilkerson, Cravotto, Curtain, and Tanaka.
We address Appellant’s arguments below.
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Appellant contends:
None of the “photosensitizers” listed by Wilkerson in paragraph
[0028] are metallic nanoparticles as recited in claim 1. The
language of paragraph [0028] of Wilkerson, i.e., “nanoparticles
including inorganic oxide-, metallic-, and polymer-based
nanocomposites as photosensitizer carriers,” makes it clear
that metallic-based nanocomposite nanoparticles (as well as
oxide-based and polymer-based nanocomposite nanoparticles),
are considered photosensitizer carriers by Wilkerson, and are
not photosensitizers themselves that actively and directly
contribute to the lysis processes disclosed in Wilkerson.
(App. Br. 5).
We are not persuaded because the nanoparticles recited in Wilkerson
are part of the list of photosensitizers and expressly include metallic
nanocomposites (FF 5). To the extent that Wilkerson alone doesn’t suggest
that the metallic nanocomposites are used to absorb microwave energy for
cell lysis, Cravotto teaches that “microwave-assisted extraction (MAE)
techniques have been employed . . . to extract oils from . . . cultivated marine
microalga rich in docosahexaenoic acid” (FF 7). Cravotto explains that
“[r]esults were even more striking in the case of seaweed extraction, as the
cell wall of the microalga is very tough. Extraction times were reduced up to
10-fold and yields increased by 50-500% in comparison with conventional
methods” (FF 9).
As the Examiner explains, the ordinary artisan would have been well
aware that metals can absorb microwave radiation and that “exposing
Wilkerson’s metal nanoparticles as a species of energy-activatable
sensitizer” would have been expected to result in heating and cell lysis (see
Final Act. 7). The artisan would have had reason to use microwaves in
combination with Wilkerson’s metallic nanoparticles in order to maximize
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lysis for the reasons given by Cravotto and the Examiner: that microwaves
alone increase yields 50 to 500% from algae and that Wilkerson teaches that
when photosensitizers absorb electromagnetic radiation “the energy-
activatable photosensitizer . . . is capable of disrupting and/or lysing cells in
a culture or a concentrate” (FF 6).
Appellant contends:
There is no teaching in Wilkerson that the photosensitizer
carriers are [as] capable of absorbing electromagnetic radiation
as the photosensitizer substances are, for purposes of lysing
cells. Nor is there any teaching in Wilkerson that the
photosensitizer carriers are capable of lysing cells using light
energy, or of performing lysis under any other kind of energy,
including radio frequency and microwave radiation as recited in
claim 1.
(App. Br. 6).
We find this argument unpersuasive for the reasons already given
above. In addition, Appellant’s arguments focus on Wilkerson individually
rather than the combination of the prior art as a whole, i.e., Wilkerson in
combination with Cravotto, Curtain, and the knowledge of the ordinary
artisan. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references . . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We also note that Appellant provides no persuasive evidence or
reasoning rebutting the Examiner’s finding that metallic nanoparticles would
have been expected to absorb microwave radiation, or that the ordinary
artisan would not have been aware that metal in a microwave results in
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heating of that metal by absorption of the microwave radiation. Instead,
Appellant simply argue Wilkerson alone. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”)
We note that Appellant and the Examiner discuss Prasad7 (App. Br.
6–7; Ans. 10–11) but Prasad is no longer included in the statement of
rejection, nor is Prasad relied upon by the Examiner. We therefore do not
reach these arguments.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Wilkerson, Cravotto, Curtain, and Tanaka render the claims
obvious.
CONCLUSION
In summary:
Claim(s) Rejected  Basis  Affirmed  Reversed 
1, 3–6, 8–11  § 103(a)
Wilkerson,
Cravotto,
Curtain, and
Tanaka
1, 3–6, 8–11   

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

7 Prasad, US 6,514,481 B1, issued Feb. 4, 2003.