Ex Parte Bertholdt et al

Patent Trial and Appeal Board

Sep 20, 2016

13127066 (P.T.A.B. Sep. 20, 2016)

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.
13/127,066 06/21/2011 Gunter Bertholdt 31-386 9001
126540 7590 09/20/2016
Edward Stemberger
Manelli Selter PLLC
10560 Main Street, Suite PH6
Fairfax, VA 22030
EXAMINER
CLARKE, TRENT R
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
09/20/2016 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
__________

Ex parte GUNTER BERTHOLDT, DIRK WEUSTER-BOTZ,
MICHAEL HOFINGER, and KATHARINA SEIFFE1
__________

Appeal 2015-001296
Application 13/127,066
Technology Center 1600
__________

Before FRANCISCO C. PRATS, RICHARD J. SMITH,
and TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of producing a body comprising cellulose, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as Bioregeneration GMBH.
(Br. 1.)
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STATEMENT OF THE CASE
According to the Specification, “[i]t is known from the state of the art
to cultivate cellulose-forming bacteria in a batch culture at the boundary
layer between an aqueous nutrient medium and air. In that, a cellulose layer
floating on the nutrient medium is formed.” (Spec. 1–2.) Further describing
the state of the art, the Specification states that when such a method is used
the reaction conditions in the batch culture are changing, because
nutrients in the nutrient medium are used up and metabolites of
the cellulose-forming bacteria accumulate in the nutrient
medium . . . [and such] altered reaction conditions may affect the
quality of the formed cellulose, such that cellulose layers with an
altered, inhomogeneous structure and density may be formed.

(Id. at 2.) Appellants disclose that “the invention is based on the object of
creating a method [in] which cellulose bodies can be produced, which have a
substantially more homogeneous structure and density.” (Id. at 2.)
Moreover, according to Appellants,
to solve the object, the invention teaches a method . . . in which
cellulose-forming organisms are arranged on one side of a
membrane, where an oxygen-containing atmosphere prevails . . .
[and] [t]he organisms are supplied with a nutrient solution, which
is substantially provided on the other side of the membrane. . . .
[T]he membrane is substantially impermeable for the organisms
and the cellulose, for the nutrient solution, however, it is
permeable.

(Id. at 2-3.)
Claims 1–11 are on appeal. Claim 1 is illustrative:
1. A method for producing a body containing cellulose
(7) with the help of cellulose-producing bacteria, which are
supplied with a nutrient solution, the method comprising:
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providing a membrane (4) which is permeable for said
nutrient solution and substantially impermeable for said bacteria,
providing said nutrient solution on a first side of said
membrane (4), so that it can penetrate and pass through said
membrane (4) to a second side thereof,
providing a gas atmosphere on the second side of said
membrane (4), and
providing said cellulose-producing bacteria on the second
side of said membrane (4), so that said bacteria are supplied with
said nutrient solution passing through said membrane (4).

(Br. 6 (Claims App’x).)

The claims stand rejected as follows:
I. Claims 1–9 under 35 U.S.C. § 103(a) over Yamanaka2 and
Hochberg,3 in further view of Lautrup.4 (Ans. 3.)
II. Claims 1, 10, and 11 under 35 U.S.C. § 103(a) over Yamanaka and
Hochberg, in further view of Hu.5

2 Yamanaka et al., EP 0 396 344 A2, published Nov. 7, 1990 (“Yamanaka”).
3 Mark S. Hochberg and Judah Folkman, Mechanism of Size Limitation of
Bacterial Colonies, 126:6 THE JOURNAL OF INFECTIOUS DISEASES, 629–35
(1972) (“Hochberg”).
4 BENNY LAUTRUP, PHYSICS OF CONTINUOUS MATTER: EXOTIC AND
EVERYDAY PHENOMENA IN THE MACROSCOPIC WORLD 69–94 (Taylor &
Francis) (2005) (“Lautrup”).
5 Hu et al., EP 0 380 610 B1, published Mar. 29, 1995 (“Hu”).
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REJECTION I
Issue
Has the Examiner established by a preponderance of the evidence that
claims 1–9 would have been obvious over Yamanaka, Hochberg, and
Lautrup?
Findings of Fact (FF)
FF 1. The Examiner’s findings of fact and statement of the rejection
of claims 1–9 under 35 U.S.C. § 103(a) over Yamanaka, Hochberg, and
Lautrup may be found at pages 3–10 of the Final Action dated February 26,
2014 and at pages 3–14 of the Examiner’s Answer. We adopt those findings
and provide the following for emphasis.
FF 2. Yamanaka teaches “hollow microbial cellulose comprising
cellulose produced by a microorganism . . . [where the cellulose] adheres
mainly to one or both of the inner and outer surface of a hollow carrier.”
(Yamanaka Abstract.) Yamanaka teaches “the kind of cellulose-producing
microorganism used is not particularly critical” but identifies examples of
suitable microorganisms including “Acetobacter aceti . . . [and] Bacterium
xyloides” among others. (Id. at col. 4, ll. 33–40.)
FF 3. Hochberg teaches that a “bacterial colony that has stopped
growing on an agar surface will prevent a neighboring colony from reaching
full size, [and] will resume growth either when transferred to a new plate on
a Millipore filter or when the medium beneath it is dialyzed against saline.”
(Hochberg 629.) Hochberg teaches “bacterial colonies stop growing
because metabolic inhibitors accumulate both within the colony and in the
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medium but not because of insufficient nutrients or fall in pH.” (Id.
(emphasis removed).)
FF 4. Hochberg teaches experiments involving bacteria (e.g. E. coli)
“grown on Millipore filters with a pore size of 0.22 µm.” (Id. at 630.) The
bacterial colony “was inoculated on top of a Millipore filter placed on the
surface of the agar plate.” (Id. at 631; see also id. at Fig. 5.) Hochberg
teaches “[s]tandard horse-blood agar (2.3% nutrient agar and 5% whole
blood) was the medium used for all experiments.” (Id. at 630.) Hochberg
teaches
the filter was placed in contact with a blood-agar plate. Colonial
growth was observed until a stationary phase had been
maintained for three days. At that time, 432 hr after initial
inoculation, the filter with the colony still in position was
removed to a fresh plate (figure 6). The colony immediately
restarted its growth.

(Id. at 632.) According to Hochberg, “the stationary phase, is determined
primarily by the catabolites that diffuse from the colony into its medium.
Depletion of nutrients does not explain the onset of the stationary phase.”
(Id. at 634.)
FF 5. The Examiner found that the 0.22µm Millipore membrane used
in Hochberg is impermeable to the passage of bacteria. (Ans. 5.) The
Examiner further found “[t]he only source of nutrients [in Hochberg] was
the nutrients passing [from the medium] through the membrane [to the
bacteria on top of the membrane]. The nutrients would necessarily be in a
liquid phase in order to pass through the membrane.” (Ans. 10.)
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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Claim 1
The Examiner finds that Yamanaka teaches methods of producing
cellulose with cellulose-producing bacteria cultured on one or multiple
surfaces of various substrates, such as cellophane, Teflon, and woven and
non-woven fabrics. (Ans. 3.) The Examiner finds that Hochberg teaches
growth of bacteria in a gas atmosphere on one side of a bacteria-
impermeable Millipore membrane. (Id. at 5.) The Examiner finds that
Hochberg teaches the other side of the Millipore membrane contacts a
nutrient medium (i.e., the surface of blood-agar plate). (Id.) The Examiner
finds that a nutrient solution penetrates and passes from the medium,
through the membrane, thus providing nutrient for growth of the bacteria on
the other side of the membrane. (Id. at 5–6.)
According to the Examiner, Hochberg further teaches that sustained
growth of the bacterial colony can be achieved by moving the Millipore
filter to a new plate, “which allow fresh nutrient medium . . . [and] to
prevent the build up of catabolites from the bacteria which prevent [further]
growth.” (Id. at 5.) The Examiner additionally finds that Hochberg teaches
replenishment of the nutrient medium (e.g., agar) by removing dialyzable
material (growth inhibitors) through a dialysis method involving the
circulation of normal saline beneath the agar plate. (Id.; see also Hochberg
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633.) The Examiner finds that both the filter transfer and dialysis methods
described in Hochberg allowed the bacterial colony to continue growing past
the stationary phase. (Ans. 5.)
The Examiner concludes “a person of ordinary skill in the art . . .
would have found it obvious to culture the bacteria taught by Yamanaka
with the method taught by Hochberg.” (Ans. 6.) The Examiner reasons that
such a modification would have been obvious to obtain the benefits of the
methods taught in Hochberg — growth of bacteria on bacteria impermeable
membranes that can be moved to new plates to allow sustained growth.
(Ans. 4–5; see also id. at 6 (“Hochberg teaches that bacteria can grow on
bacteria-impermeable membranes supplied by nutrient media passing
through the membrane and Hochberg teaches that replacement of the
nutrient media via a dialysis membrane beneficially allows the bacteria to
continue growing.”)
Appellants argue that “combining the Hochberg teachings with
Yamanaka would improperly destroy the invention of Yamanaka” because
Yamanaka teaches that the bacteria and nutrient solution be located on the
same side of a membrane, rather than different sides as in claim 1. (Br. 4.)
Appellants further argue that the circulating saline or agar plate disclosed in
Hochberg “is not a disclosure of a nutrient solution” as in claim 1. (Id.)
Appellants contend Hochberg “does not disclose that a nutrient solution
passes through a membrane or that a solution or ‘liquid phase’ is employed”
and that the Examiner is improperly relying on inherency to support such
findings. (Id.)
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Appellants’ arguments are unpersuasive. The Examiner does not
dispute Appellants’ characterization of Yamanaka, but points out that the
rejection does not require any modification to the methods disclosed in that
reference. (Ans. 9.) Instead, the Examiner is proposing to culture the
cellulose-producing bacteria of Yamanaka according to the method taught in
Hochberg, which includes the orientation of nutrient, membrane, bacteria,
and gas that is recited in claim 1. (FF 1, 3–4.) Because Yamanaka’s method
is not being modified, it cannot be “destroyed” by the Examiner’s proposed
combination and rejection of claim 1. (FF 2–4.)
The Examiner acknowledges that he is not relying on the circulating
saline in Hochberg to satisfy the “nutrient solution” limitation of the claim.
(Ans. 13.) Nor is the Examiner relying on the dialysis membrane of
Hochberg as the claimed membrane. (Id.) The Examiner instead finds that
the 0.22 µm Millipore filter is the claimed membrane that is impermeable to
the bacteria, but permeable to a nutrient solution. (Id.) And the Examiner
finds that the “agar plate . . . is the source of the nutrient solution on a first
side of said membrane which penetrates and passes through said membrane
to provide the bacteria with nutrients.” (Id.)
Appellants argue the Examiner is wrong, but fail to provide
persuasive argument or evidence in support. As correctly noted by the
Examiner, the bacteria in Hochberg must necessarily be receiving nutrient
from some source. (Ans. 9–10.) And the reasonable interpretation of
Hochberg is that the nutrient is being supplied by movement through the
membrane — Appellants have offered no other plausible interpretation of
Hochberg or explanation for how the bacterial colony on top of the Millipore
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membrane could undergo extensive growth for up to 432 hours without a
nutrient source. (Id.; FF 4–5.)
Insofar as Appellants argue that Hochberg does not expressly disclose
that nutrient passes through the Millipore membrane in the form of a
solution or liquid phase, we are not persuaded. On the record before us, we
agree with the Examiner that the skilled artisan would reasonably conclude
that nutrient is moving in liquid form across the membrane to nourish the
growing bacterial colony. (Ans. 11.) Indeed, Hochberg’s teaching of the
use of a glass barrier in one experiment to “prevent[] any nutrient in the
periphery of the agar plate from diffusing in toward the old growth zone”
(Hochberg 631) and disclosure of “catabolites that diffuse from the colony
into its medium” is consistent with the Examiner’s interpretation that liquid
is moving in the medium and across the membrane.
The Examiner has provided sufficient findings and reasoning to
support the determination that the nutrients in Hochberg are necessarily
crossing the membrane in solution form. Under such circumstances, the
burden is now appropriately upon the Appellants to show — by, for
example, factual evidence or scientific reasoning — that the Examiner’s
determination is incorrect. In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
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inability to manufacture products or to obtain and compare prior art
products.”) (citations and footnote omitted).
Claim 9
Appellants argue that “since Hochberg does not disclose that bacteria
are supplied with a nutrient solution passing through the membrane, one of
ordinary skill in the art would not look to the capillary effect of Lautrup.”
(Br. 4.) This argument is unpersuasive for the reasons discussed above. The
Examiner cites Lautrop “as evidence that the passage of nutrient solution
through said membrane in Hochberg’s teaching is because capillary passage
of the nutrient solution is controlled by means of the hydrostatic pressure of
the nutrient solution at said membrane.” (Ans. 6.) Appellants have provided
insufficient persuasive argument or evidence to the contrary.
Conclusion of Law
We conclude that claims 1 and 9 would have been obvious over
Yamanaka, Hochberg, and Lautrup.
Claims 2–8 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
REJECTION II
Issue
Has the Examiner established by a preponderance of the evidence that
claims 1, 10, and 11 would have been obvious over Yamanaka, Hochberg,
and Hu?
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Findings of Fact
FF 6. The Examiner’s findings of fact and statement of the rejection
of claims 1, 10, and 11 under 35 U.S.C. § 103(a) over Yamanaka, Hochberg,
and Hu may be found at pages 10–11 of the Final Action dated February 26,
2014 and at pages 7–8 of the Examiner’s Answer. We adopt those findings,
along with Findings of Fact 1–5 above.
Analysis
Appellants argue that claims 10 and 11 “are dependent claims [that]
are considered allowable for the reasons advanced” with respect to claim 1
and that “Hu does not supply the deficiencies of Yamanaka and Hochberg.”
(Br. 5.) This argument is unpersuasive for the reasons discussed above
concerning Rejection I.
Conclusion of Law
We conclude that the Examiner established by a preponderance of the
evidence that claims 1, 10, and 11 would have been obvious over Yamanaka,
Hochberg, and Hu.
SUMMARY
We affirm the rejection of claims 1–9 under 35 U.S.C. § 103(a) over
Yamanaka, Hochberg, and Lautrup.
We affirm the rejection of claims 1, 10, and 11 under 35 U.S.C.
§ 103(a) over Yamanaka, Hochberg, and Hu.
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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).

AFFIRMED