Ex Parte Haas et alDownload PDFPatent Trial and Appeal BoardJul 18, 201613263761 (P.T.A.B. Jul. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/263,761 10/10/2011 Thomas Haas 22850 7590 07/20/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 387584US99PCT 3553 EXAMINER NASHED, NASHAAT T ART UNIT PAPER NUMBER 1656 NOTIFICATION DATE DELIVERY MODE 07/20/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS HAAS, FLORIAN KLASOVSKY, HENDRIK KRAUTER, STEFFEN SCHAFFER, RENE SCHOEBEL, THOMAS TACKE, KLAUS-DIETER VORLOP, THOMAS WILLKE, and MIRJA WESSEL 1 Appeal2014-000185 Application 13/263,761 Technology Center 1600 Before ERIC B. GRIMES, ULRIKE W. JENKS, and TIMOTHY G. MAJORS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of making an aldehyde, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify the Real Party in Interest as Evonik Degussa GmbH. (Appeal Br. 2.) Appeal2014-000185 Application 13/263,761 STATEMENT OF THE CASE "3-Hydroxypropionaldehyde (3HPA) can be converted to acrylic acid, an important monomer for the industrial production of polymers and plastics." (Spec. 1 :22-24.) Glycerol can be converted to 3HPA in a fermentation process using cells that produce glycerol dehydratase. (Id. at 2:22-27.) The Specification describes a process in which the aldehyde product and the enzyme (hydro-lyase) are separated (id. at 11 :29-30), after which the enzyme is reused with fresh vicinal diol (e.g., glycerol) to produce more aldehyde (id. at 13:8-11). "In order to achieve the set object, a compound which forms a bond with the aldehyde must be present during the method according to the invention." (Id. at 14: 18-20.) Such compounds include semicarbazide and sodium sulfite. (Id. at 14:30 to 15:4.) Claims 1-10 and 12-16 are on appeal. Claim 1 is the only independent claim and reads as follows: Claim 1 : A method for producing an aldehyde, comprising A) contacting a vicinal diol with a hydro-lyase, B) separating an aldehyde formed in A) from the hydro-lyase, C) repeating A) and B) at least once with fresh vicinal diol and the hydro-lyase obtained from B), and D) optionally isolating the aldehyde, wherein the method is carried out in the presence of a compound which forms a bond with the aldehyde. 2 Appeal2014-000185 Application 13/263,761 DISCUSSION The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a) as obvious based on either Gibson,2 Ruetti, 3 and Slininger4 (Ans. 4) or based on Sarcabal, 5 Gibson, Ruetti, and Slininger (Ans. 6). The same issue is dispositive for both rejections. The Examiner finds that Gibson discloses that 1,3-propanediol has use in making polymers, and can be produced from 3HPA. (Ans. 4.) The Examiner also finds that Gibson "discloses several mutants of B 12- dependent glycerol dehydratase from Klebsiella pneumoniae with reduced rate of the enzyme's suicide inactivation in the presence of glycerol and 1,3- propanediol." (Id.) The Examiner finds that Ruetti discloses conversion of glycerol to 3HPA by Lactobacillus reuteri and "the entrapment of 3-HPA using sodium hydrogen sulfite bound on a carrier, and thus, removing the toxic product from the reaction medium." (Id.) The Examiner finds that Slininger similarly teaches conversion of glycerol to 3HP A by Klebsiella pneumoniae, and trapping of the 3HP A product by semicarbazide hydrochloride, and isolation of 3HPA. (Id. at 5.) The Examiner finds that both Ruetti and Slininger teach the process of claim 1, except for the repeating step. (Id. at 4, 5.) 2 Gibson et al., WO 2004/056963 A2, published July 8, 2004. 3 Ruetti et al., Biotechnological production of 3-hydroxypropionaldehyde combined with an in situ product removal process to purify this compound, 131 S J oumal of Biotechnology S 192-193 (2007). 4 Slininger et al., US 4,962,027, issued Oct. 9, 1990. 5 Sarcabal et al., US 7,267,972 B2, issued Sept. 11, 2007. 3 Appeal2014-000185 Application 13/263,761 The Examiner concludes that it would have been obvious to use cells expressing Gibson's mutant glycerol dehydratase in the method of either Ruetti or Slininger. (Id. at 5.) The Examiner reasons that (Id.) [ e ]ither the cell or the enzyme can be immobilized on solid support by well-known methods in the art to carry out the method. In such a method a solution comprising the glycerol substrate, the biocatalyst, and the product 3-HPA is circulated between two columns, one of which is packed with immobilized enzyme or host cell and the other with sodium bisulfite. Regarding the repeating step of the claimed method, the Examiner reasons that "[ s ]ince step (B) of claim 1 requires separating the biocatalyst, i.e., cell or enzyme from the product aldehyde or aldehyde derivative, it is prima facie obvious to reuse the biocatalyst for a second round of production of the desired product." (Id. at 7.) Appellants argue, among other things, that the Examiner's proposed "two-column arrangement fails to meet the requirements of instant Claim 1, which recites that 'the method is carried out in the presence of a compound which forms a bond with the aldehyde."' (Appeal Br. 8.) Appellants reason that "[i]f the method of Ruetti is performed by keeping the sulfite compound separated from the enzyme or host cell (e.g., in separate columns as suggested by the Examiner), then the method cannot reasonably be said to be performed in the presence of the compound." (Id.) We agree with Appellants' claim interpretation. Claim 1 recites a "method for producing an aldehyde," then recites the four steps (one of which is optional) of the claimed method, and concludes with the proviso that "the method is carried out in the presence of a compound which forms a 4 Appeal2014-000185 Application 13/263,761 bond with the aldehyde." Thus, the plain meaning of the claim language is that "the method"-meaning the method defined by the three or four steps recited in A through D-is carried out in the presence of the aldehyde- binding compound. The Examiner reasons that claim 1 encompasses the two-column arrangement because the claim "is not limited to a single reaction mixture localized within any particular boundaries. Claim 1 requires only the presence of the compound that forms a covalent bond with the aldehyde throughout the method whether in the same reaction vessel or not." (Ans. 9.) In our view, the Examiner's claim interpretation is unreasonably broad. As discussed above, claim 1 requires the presence of an aldehyde- binding compound at each of the recited steps. "[C]ontacting a vicinal diol with a hydro-lyase" (claim 1, step A), is only done "in the presence of a compound which forms a bond with the aldehyde" (claim 1, last clause) if the aldehyde-binding compound is present in the same reaction vessel as the diol and the hydro-lyase. Thus, the broadest reasonable interpretation of the claim language does not encompass a scenario in which the hydro-lyase and the aldehyde-binding compound are immobilized in separate columns. We also agree with Appellants that the Examiner has not provided a persuasive reason for concluding that the repeating step of the claimed method would have been obvious. In the Answer, the Examiner reasons that, because the product aldehyde is separated from the enzyme catalyst, "it is prima facie obvious to reuse the biocatalyst for a second round of production of the desired product." (Ans. 7.) What is lacking, however, is any explanation of why a skilled worker would have considered it obvious to 5 Appeal2014-000185 Application 13/263,761 re-use the cells or enzyme from a previous reaction rather than starting a new reaction mixture with fresh cells or enzyme. "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner cites Sarcabal only for its disclosure of a glycerol dehydratase from Clostridium butyricum, and does not cite any disclosure in the reference that would make up for the deficiencies discussed above with respect to Gibson, Ruetti, and Slininger. SUMMARY We reverse both of the rejections on appeal. REVERSED 6 Copy with citationCopy as parenthetical citation