Ex Parte Haas et al

Patent Trial and Appeal Board

Jul 18, 2016

13263761 (P.T.A.B. Jul. 18, 2016)

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
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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.
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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.
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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
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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
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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
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