Ex parte Harman et al.

Board of Patent Appeals and Interferences

Jul 31, 2000

07919784 (B.P.A.I. Jul. 31, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY E. HARMAN,
ROXANNE M. BROADWAY,
ARNE TRONSMO,
MATTEO LORITO,
CHRISTOPHER K. HAYES, and
ANTONIO Di PIETRO
__________
Appeal No. 1996-0657
Application 07/919,784
__________
ON BRIEF
__________
Before WINTERS, SPIEGEL, and MILLS, Administrative Patent Judges,
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner’s decision rejecting claims 5, 6, 8,
12, and 13. Claims 1 through 4, 7, 9, 14, and 15, which are the only other claims
remaining in the application, stand allowed.
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Application 07/919,784
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Representative Claims
Claims 5 and 8, which are illustrative of the subject matter on appeal, read
as follows:
5. A biologically pure chitin-containing-fungus-inhibiting composition
containing (a) endochitinase which is coded for by a gene in the genome of a
fungus and (b) protein which causes release of chromogenic p-nitrophenol from p-
nitrophenyl-ß-D-N,N'-diacetylchitobiose but not from p-nitrophenyl-N-acetyl-ß -D-
glucosaminide and which is coded for by a gene in the genome of a fungus, in a
weight ratio of (a):(b) ranging from 3:1 to 1:1.2.
8. A method of inhibiting the germination or replication of a chitin-containing
fungus of a genus selected from the group consisting of Botrytis, Fusarium,
Saccharomyces, Trichoderma, Uncinula, and Ustilago, which comprises contacting
such fungus with an antifungal effective amount of the composition of claim 5.
The References
There appears to be some confusion on this record respecting what
references the examiner relies on in rejecting appellants’ claims. In the Examiner’s
Answer mailed September 27, 1995 (Paper No. 30), Section (7) the examiner lists
the following “prior art of record relied upon in the rejection of claims under appeal:”
A. Ôtakara (Ôtakara (I)), “Studies on the Chitinolytic Enzymes of Black-koji Mold,”
Agric. Biol. Chem., Vol. 27, No. 6, pp. 454-460 (1963)
A. Ohtakara et al. , “Isolation of Chitinase and Chitobiase Produced by Pycnoporus
cinnabarinus and Their Properties,” Chemical Abstracts, Vol. 95:348, Abstract No.
75979W, August 1981
M. Yabuki, “Chitinase and a Method for Its Production,” Derwent Biotechnol.
Abstracts, Vol. 4, No. 15, Abstract No. 85-07729 (July 1985)
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A. Ohtakara (Ohtakara (II)), “Chitinase and ß-N-Acetylhexosaminidase From
Pycnoporus cinnabarinus,” Meth. Enzymol., Vol. 161, pp. 462-470 (1988)
A. Arroyo-Begovich, ”Chitinase from Neurospora crassa,” Meth. Enzymol, Vol. 161,
pp. 471-474 (1988)
Takara Biomedicals Brochure of Chitinase T-1 (Takara), April 1989
G.W. Gooday, “Physiology of Microbial Degradation of Chitin and Chitosan,”
Biodegradation , Vol. 1, No. 2--3, pp. 177-190 (1990)
P.J. Kuhn et al. (Kuhn), (eds.), Biochemistry of Cell Walls and Membranes in Fungi,
Chapter 6, pp. 81-95 (Springer-Verlag, Berlin, 1990)
M. Pedraza-Reyes et al. (Pedraza-Reyes (I)), “Chitinase Activity in Germinating
Cells of Mucor rouxii,” Antonie Van Leeuwenhoek, Vol. 59, No. 3, pp. 183-189
(1991)
M. Pedraza-Reyes et al. (Pedraza-Reyes(II)), Detection of Nine Chitinase Species
in Germinating Cells of Mucor rouxii,” Cur. Microbiol., Vol. 22, No. 1,
pp. 43-46 (January 1991)
The above-listed references are included in the statement of rejection of claims 5,
6, 8, 12, and 13 under 35 U.S.C. § 103 (Examiner’s Answer, Paper No. 30, Section
(9)).
However, the examiner cites other references not included in the statement
of rejection. In the Examiner’s Answer, Paper No. 30, Section (8), the examiner
lists the following “[r]eferences which have been newly cited in this Examiner’s
Answer:”
P. Singleton et al. (Singleton), Dictionary of Microbiology and Molecular Biology,
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(John Wiley & Sons, Chichester, 1987)
C.J. Ridout et al. (Ridout), “Fractionation of Extracellular Enzymes from a
Mycoparasitic Strain of Trichoderma harzianum, Enzyme Microb. Technol.,
Vol. 10, pp. 180-187 (March 1988)
M. Chérif et al. (Chérif), ”Cytochemical Aspects of Chitin Breakdown During the
Parasitic Action of a Trichoderma sp. on Fusarium oxysporum f. sp. radicis-
lycopersici,” Phytopathology, Vol. 80, No. 12, pp. 1406-1414 (1990)
C.J. Ulhoa et al. (Ulhoa), “Purification and Some Properties of the Extracellular
Chitinase Produced by Trichoderma harzianum,” Enzyme Microb. Technol., Vol.
14, pp. 236-240 (March 1992)
These references are not included in the statement of rejection under 35 U.S.C. §
103. According to the examiner, “these references were cited only to provide
support for the examiner’s contention of what was known and accepted in the art
and not within a new grounds of rejection or new point of argument” (Examiner’s
Answer, Paper No. 30, Section (8)). The examiner argues that Singleton discloses
the “art-accepted” structure and functions of the fungal cell wall (Examiner’s Answer,
page 10). The examiner mentions Chérif, Ridout, and Uhola in arguing that
appellants’ rebuttal evidence in the specification and in the Harman declaration filed
January 26, 1994, is not commensurate in scope with the appealed claims
(Examiner’s Answer, page 14, line 22).
Another reference “pops up” in the Examiner’s Answer, Paper No. 30, page
7, line 10. This is Suslow et al. (Suslow), U.S. Patent No. 4,940,840 issued July 10,
1990. According to the examiner, Suslow discloses that “several bacterial and
Appeal No. 1996-0657
Application 07/919,784
5
plant endochitinases have been clearly shown to have anti-fungal activity and utility
as fungal biocontrol agents.” Suslow is not included in the listing of “prior art of
record relied upon in the rejection of claims under appeal” in Section (7) of the
Examiner’s Answer; nor in the listing of “references which have been newly cited in
this Examiner’s Answer” in Section (8) of the Examiner’s Answer; nor is Suslow
included in the statement of rejection set forth in Section (9) of the Examiner’s
Answer.
At this juncture, we think it appropriate to remind the examiner that
references relied on to support a rejection under 35 U.S.C. § 103 should be
included in the statement of rejection. As stated in In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). “Where a reference is relied on to
support a rejection, whether or not in a ‘minor capacity,’ there would appear to be
no excuse for not positively including the reference in the statement of the rejection.
Where, as here, the examiner lists ten references “relied upon in the rejection of
claims under appeal” and includes those references, and only those references, in
the statement of rejection under 35 U.S.C. § 103, we have limited our review of the
prima facie case of obviousness to those references. We shall not discuss the
other references, referred to in the Examiner’s Answer, further.
The Issue
The issue presented for review is whether the examiner erred in rejecting
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claims 5, 6, 8, 12, and 13 under 35 U.S.C. § 103 as unpatentable over any of
Takara, Ohtakara et al., Ôtakara (I) or Yabuki, taken in view of Gooday and Kuhn,
and any one of Pedraza-Reyes (I), Pedraza-Reyes (II), Ohtakara (II) or Arroyo-
Begovich.
Deliberations
Our deliberations in this matter have included evaluation and review of the
following materials:
(I) The instant specification, including Figures 1 through 8, and all of the
claims on appeal;
(II) The main Brief (Paper No. 29), Reply Brief (Paper No. 32), and “Reply to
Supplemental Examiner’s Answer” (Paper No. 34);
(III) The Examiner’s Answer (Paper No. 30), the First Supplemental
Examiner’s Answer (Paper No. 33), and the Second Supplemental Examiner’s
Answer (Paper No. 39);
(IV) The Harman declaration filed under the provisions of 37 CFR § 1.132,
executed December 23, 1993; and
(V) The prior art references cited in Section (7) of the Examiner’s Answer
(Paper No. 30), and applied in the statement of rejection in Section (9) of the
Examiner's Answer.
On consideration of the record, including the above-listed materials, we
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reverse the rejection of claims 5, 6, 8, 12, and 13 under 35 U.S.C. § 103.
Discussion
Independent claim 5 recites a “biologically pure” anti-fungal composition
containing (a) endochitinase coded for by a gene in the genome of a fungus; and
(b) a specified exochitinase, hereinafter referred to as chitobiosidase, also coded
for by a gene in the genome of a fungus and defined in terms of the assay
described in appellants’ specification (page 7, lines 5 through 22). As explained in
the specification, endochitinase cleaves glycosidic linkages randomly along the
polysaccharride chain of chitin; chitobiosidase cleaves dimeric units from one end
of chitin. Claim 5 recites the weight ratio of (a):(b) ranging from 3:1 to 1:1.2.
Dependent claims 6, 12, and 13 also recite compositions. These claims
further limit the weight ratio or source material of components (a) and (b).
Claim 8 recites a method of inhibiting the germination or replication of a chitin-
containing fungus of a genus selected from the group consisting of Botrytis,
Fusarium, Saccharomyces, Trichoderma, Uncinula, and Ustilago, by contacting
such fungus with an antifungal effective amount of the composition of claim 5.
The examiner argues that a first set of references (Takara, Ohtakara et al.,
Ôtakara (I), and Yabuki) disclose endochitinase from a fungal source; that a second
set of references (Pedraza-Reyes (I), Pedraza-Reyes (II), Ohtakara (II), and Arroyo-
Begovich) disclose chitobiosidase from a fungal source; and that it would have
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been prima facie obvious to combine the known endochitinase and chitobiosidase
in a weight ratio ranging from 3:1 to 1:1.2 in light of the combined disclosures of
references relied upon, including Gooday and Kuhn. We disagree.
We have no doubt that the prior art could be modified in the manner
proposed by the examiner to arrive at appellants’ composition and method. This
can be seen from a review of the instant specification and claims. Merely because
the prior art could be so modified, however, would not have made the modification
obvious unless the prior art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). That is not
the case here.
This is not a case of using components in combination for anti-fungal activity,
each component having been used individually in the prior art for anti-fungal activity.
Cf. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
(Prima facie obvious to combine two compositions each of which is taught by the
prior art to useful for the same purpose, in order to form a third composition to be
used for the very same purpose). The examiner has not established that the first set
of references teach that endochitinase from a fungal source has anti-fungal activity.
Nor has the examiner established that the second set of references teach that
chitobiosidase from a fungal source has anti-fungal activity.
According to the examiner, “Gooday teaches that the degradation of chitin in
the cell walls of fungi is an important method of the biocontrol of fungi” (Examiner’s
Appeal No. 1996-0657
Application 07/919,784
Lynch, “In vitro identification of Trichoderma harzianum as a potential antagonist of plant1
pathogens,” Curr Microbiol, Vol. 16, pages 49-53 (1987)
Sivan et al. (Sivan), “Degradation of fungal cell walls by lytic enzymes of Trichoderma2
harzianum,” J. Gen Microbial, Vol. 135, pages 675-682 (1989)
9
Answer, Paper No. 30, page 5, third full paragraph). However, that considerably
overstates the relevant disclosure in Gooday, stating that
As most fungal and invertebrate pests and pathogens have chitin as
an essential structural component (Gooday 1990d), chitinase activity
could have an important place in the repertoire of mechanisms for
biological control Thus the strongly chitinolytic fungus Trichoderma
harzianum has good potential for the control of a range of soil-borne
plant pathogens (Lynch 1987; Sivan & Chet 1989). [Gooday, page
185, under the heading “Uses of chitinolytic organisms in biocontrol”].
The Gooday reference does not contain the teaching attributed to it by the
examiner. Gooday discloses that “chitinase activity could have an important place
in the repertoire of mechanisms for biological control;” and that “the strongly
chitinolytic fungus Trichoderma harzianum has good potential for the control of a
range of soil-borne plant pathogens (emphasis added).” The examiner, however,
characterizes Gooday as teaching what it does not, namely, ”that the degradation of
chitin in the cell walls of fungi is an important method of the biocontrol of fungi.”
Further, this record does not reflect that the examiner considered the source
material referenced in the above-quoted passage in Gooday namely, Lynch 19871
or Sivan & Chet 1989. That source material is not part of the prior art relied on in rejecting2
the claims on appeal, and is not included in the statement of rejection under 35 U.S.C. § 103.
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We disagree that Gooday supports a conclusion that it would have been prima facie
obvious to combine the known endochitinase and chitobiosidase in a weight ratio ranging from
3:1 to 1:1.2 to form a “biologically pure” anti-fungal composition. Nor does any disclosure in
Kuhn which we can find, or which the examiner relies on, including Fig. 1A-E, cure the
deficiencies of Gooday.
The Examiner’s Answer, in large part, constitutes an ex post facto effort to explain why
appellants’ combination of endochitinase and chitobiosidase gives rise to superior anti-fungal
activity. In our judgment, however, the applied prior art does not constitute an adequate
evidentiary foundation to support a conclusion of obviousness of appellants’ claimed
composition and method at the time the invention was made.
For these reasons, we conclude that the examiner has not established a prima facie case
of obviousness of claims 5, 6, 8, 12, and 13 and, accordingly, the rejection of those claims
under 35 U.S.C. § 103 is reversed. We find it unnecessary to discuss the rebuttal evidence in
appellants’ specification, and in the Harman declaration under 37 CFR § 1.132, executed
December 23, 1993, relied on to rebut any such prima facie case.
The examiner’s decision is reversed.
REVERSED
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Application 07/919,784
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)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Carol A. Spiegel )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Demetra J. Mills )
Administrative Patent Judge )
SDW/cam
Michael L. Goldman
Nixon, Hargrave, Devans & Doyle, LLP
Clinton Square, P.O. Box 1051
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