Ex Parte Jamieson et al

Patent Trial and Appeal Board

Sep 27, 2016

12079274 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/079,274 03/26/2008
65025 7590 09/27/2016
Andrew Jamieson and Mark Vandeyar
c/o LEVINE BAGADE HAN, LLP
2400 GENG ROAD
SUITE 120
PALO ALTO, CA 94303
FIRST NAMED INVENTOR
Andrew C. Jamieson
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.
JMSNNZOOlOO 1239
EXAMINER
CONSTANTINE, CHARLES Z
ART UNIT PAPER NUMBER
1657
MAILDATE DELIVERY MODE
09/27/2016 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 ANDREW C. JAMIESON and MARK ANTHONY VANDEYAR1
Appeal2015-002630
Application 12/079,274
Technology Center 1600
Before ERIC B. GRIMES, DEMETRA J. MILLS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for producing acetaldehyde, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"Acetaldehyde is an important chemical intermediate in the
production of numerous organic compounds." (Spec. 1.) "[T]he production
of ... useful chemicals from plant materials through the process of
fermentation," rather than relying on access to fossil fuels, "is receiving
1 Appellants identify the Real Party in Interest as the inventors, Andrew C.
Jamieson and Mark Anthony Vandeyar. (Appeal Br. 1.)
Appeal2015-002630
Application 12/079,274
increasing attention" in "the search for alternative energy sources that will
ensure continued economic growth and energy independence, while
alleviating the negative environmental effects of traditional fossil fuels."
(Id.)
Claims 1---6, 15, 16, 20, and 21 are on appeal. Claims 1-3, 20, and 21
are representative and read as follows:
1. A method for producing acetaldehyde, comprising:
a) culturing a microorganism under conditions such that
metabolism of a carbon source results in excretion of pyruvate
into the culture medium; and
b) converting the excreted pyruvate to acetaldehyde.
2. The method of claim 1, wherein the yield of acetaldehyde is
5g/L of culture medium or greater.
3. The method of claim 1, further comprising purifying or
enriching the pyruvate.
20. A method for making a compound, the method comprising:
(a) producing acetaldehyde according to the method of
claim 1 ; and
(b) converting the acetaldehyde to the compound.
21. The method of claim 20, wherein the compound is ethanol.
(Appeal Br. 24-25.)
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Application 12/079,274
The following grounds of rejection by the Examiner are before us on
review:
Claims 1---6, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Maupin,2 Zall, 3 Ruby,4 and Li. 5
Claims 20 and 21under35 U.S.C. § 103(a) as unpatentable
over Maupin, Zall, Ruby, Li, and Murray. 6
DISCUSSION
Claim 1
The Examiner finds that "Maupin teaches the production of
acetaldehyde from pyruvate using recombinant pyruvate decarboxylase, or a
recombinant organism expressing pyruvate decarboxylase." (Final Action 3;
Ans. 3.) According to the Examiner, Maupin teaches an extracellular
method of producing acetaldehyde: namely, the process in which a
recombinant pyruvate decarboxylase enzyme is used, either as a lysate or
purified from the microorganism. (Final Action 7-8, 24; Ans. 9.)
The Examiner acknowledges that Maupin does not teach where the
pyruvate comes from that is used in the extracellular or intracellular method
of converting pyruvate to acetaldehyde, but notes that Maupin does not
2 Maupin-Furlow et al., US 2003/00873638 Al, published May 8, 2003.
3 Zall et al., US 4,900,670, issued Feb. 13, 1990.
4 Ruby et al., Pyruvate Production and Excretion by the Luminous Marine
Bacteria, 34(2) App. Environ. Microbiol. 164--169 (1977).
5 Li et al., Biotechnological production of pyruvic acid, 57(4) App. Environ.
Micro biol. 451--459 (2001 ).
6 Murray et al., Biological Upgrading of Dilute Ethanol Streams to
Acetaldehydefor Low-Temperature Recovery, 23 Biomass 229-39 (1990).
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require a particular source of pyruvate be used (Final Action 3--4, 12; Ans.
10.) The Examiner notes that Li evidences that "[p]yruvate is commonly
produced by fermentative methods" and that "Ruby teaches that marine
bacteria, such as Beneckea (now known as Vibrio, as noted by
applicant ... ), excrete pyruvate in the presence of glucose." (Final Action 4;
Ans. 4--5.) The Examiner further finds that "Ruby teaches that pyruvate
[produced by such microorganisms] accounts for up to 50% of substrate
carbon metabolism." (Id.) The Examiner concludes that "[o]ne would be
motivated to use these bacteria [in the process of Maupin]. .. as they
produce pyruvate at high yields from glucose and thus at a low cost of
glucose." (Final Action 5; Ans. 5.)
The Examiner further finds that "Zall teaches the production of
acetaldehyde via fermentation" and isolating the so produced acetaldehyde
"from a solution containing the product." (Final Action 3; Ans. 3.) The
Examiner also notes that Zall teaches that in a fermentation process to
produce acetaldehyde, growth inhibition results from acetaldehyde build-up
if it is not removed. (Final Action 3--4; Ans. 4.) The Examiner concludes
that it would have been obvious to purify the acetaldehyde product of
Maupin using common methods in order "to obtain a concentrated or purer
product for sale or use in further chemical reactions." (Final Action 4;
Ans. 4.)
We agree with the Examiner's factual findings set forth above and
conclusion that the claimed process in which pyruvate that is excreted into
the culture medium in a fermentation process and subsequently converted to
acetaldehyde is rendered obvious from Maupin, Zall, Li, and Ruby.
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"Appellants do not dispute that the prior art taught cell-free methods for
production of acetaldehyde." (Reply Br. 5.) Appellants do not argue, nor do
we discern any reason from the art, that there would be no expectation of
success using Maupin's pyruvate decarboxylase on the excreted pyruvate of
the microorganism disclosed in Ruby in a cell-free method of enzymatically
converting cellularly excreted pyruvate to acetaldehyde.
Appellants instead argue that the Examiner has not provided a reason
"why a skilled artisan would have combined elements in the same way the
inventors did" because the Examiner has presented "no evidence ... as to
why one of skill in the art would have chosen the particular pyruvate source
that was chosen by the inventors." (Appeal Br. 11-13; Reply Br. 2.) We do
not find this argument persuasive. The law does not require the Examiner to
identify an explicit teaching in the reference to support the proposed
motivation to modify or combine references. As the Examiner noted (Final
Action 10), "when the 'improvement' is technology-independent and the
combination of references results in a product or process that is more
desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient," an "implicit motivation to
combine exists." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006); cf KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (quoting Dystar, 464 F.3d at 1367,
noting that determining whether a motivation to combine exist "not only
permits, but requires, consideration of common knowledge and common
sense.")
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Li teaches that production of pyruvate by fermentation, from a cost of
raw materials comparison, is "the most competitive method." (Li 457.)
Furthermore, Ruby teaches that bacterial strains of the genus Beneckea
excrete substantial quantities of pyruvate into the medium. (Ruby 164.)
Consequently, we agree with the Examiner (Final Action 10 (citing Dystar);
Ans. 10, 13) that the motivation to use the microorganisms described in
Ruby for production of excreted pyruvate to be converted to acetaldehyde
using Maupin' s enzyme (or cellular lysate containing the enzyme) is implicit
because of economics, i.e., "yield, cost and convenience." The more
pyruvate produced and excreted by the organism, the more pyruvate that
would be available for enzymatic conversion to acetaldehyde extracellularly.
Moreover, Appellants' argument that Maupin teaches a method for
production of acetaldehyde using pyruvate as starting material but not "a
carbon source that is metabolized to pyruvate" (Reply Br. 2) is unavailing.
"The test for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art." In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991). The Examiner's rejection did not rely on
Maupin alone. (See Ans. 3-5, 9-10.) As discussed, we agree with the
Examiner that Maupin teaches extracellular conversion of pyruvate to
acetaldehyde. And we agree with the Examiner that Ruby and Li provide
economic motivation to use pyruvate from a fermentation process wherein
the pyruvate is excreted, the "specific, particular source of
pyruvate ... required in the claimed methods" (Reply Br. 3). The
Examiner's rejection properly considered the claim as a whole regarding the
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production of pyruvate through fermentation and the extracellular step of
converting the so produced pyruvate to acetaldehyde.
We also disagree with Appellants that the Examiner has improperly
discounted Appellants' expert declaration (Appeal Br. 15-16; Reply Br. 4--
5). In particular, as the Examiner found (Final Action 31; Ans. 11-14),
Appellants' expert, Dr. Batt, did not consider the fact that Maupin teaches
extracellular production of acetaldehyde. As noted above, Maupin teaches
the use of either enzymatic lysate that includes pyruvate decarboxylase or
purified pyruvate decarboxylase obtained from the recombinant
microorganism expressing the pyruvate decarboxylase to carry out
conversion of pyruvate to acetaldehyde. (Maupin i-fi-f 128, 130.) In his
declaration, though, Dr. Batt states:
[T]he prior art required, in all instances, that the fermenting
microorganism in toto carry out all of the reactions required to
produce the end product. ... In none of these cases did the
authors of the cited references appreciate the fact that
acetaldehyde could also be produced if the fermenting
microorganism was not required to synthesize the acetaldehyde,
but was only required to synthesize and secrete a precursor to
acetaldehyde.
(Batt Declaration i-f 15.) Based on his position that the prior art did not teach
extracellular production of acetaldehyde, Dr. Batt concludes that
although the art may have separately disclosed microorganisms
that excreted pyruvate, and conversion of pyruvate to
acetaldehyde; there was no suggestion in the art to combine
these two processes in the way the inventors of the '274
application have combined them.
(Batt Declaration i-f 16.) Because Dr. Batt's conclusion does not include
consideration of Maupin' s teaching of extracellular enzymatic conversion of
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pyruvate to acetaldehyde, his conclusion that there was no suggestion in the
prior art of the claimed invention is not persuasive. As discussed above, the
suggestion to combine Ruby and Maupin to achieve the claimed process of
fermenting a microorganism that excretes pyruvate and subsequently treat
the excreted pyruvate to obtain acetaldehyde derives from economics. (Final
Action 31-32.)
Appellants' argument that "objective indicia of non-obviousness have
not been given their proper weight" (Appeal Br. 17-19; Reply Br. 5-7) is
similarly unpersuasive. Appellants contend that the length of the intervening
time between the publication dates of the prior art and the claimed invention
shows a long-felt need and failure of others. (Appeal Br. 17-18.)
Appellants note that during the 31 years since Ruby disclosed pyruvate-
excreting bacteria and up to Appellants' filing date "no one was prompted to
use those bacteria for the fermentative synthesis of acetaldehyde" even
though "Maupin disclosed recombinant pyruvate decarboxylase five years
before Appellants' filing date" and "the problem of acetaldehyde toxicity to
microorganisms was well-known [during this time]." (Id.)
Citing Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed.
Cir. 2013) as controlling precedent, Appellants contend "[i]f the claimed
methods were in fact obvious over the combination of cited disclosures, one
would not expect it to have taken decades for such a combination to have
been made." (Appeal Br. 17, 19.) We agree with the Examiner (Final
Action 21-22; Ans. 14--15) that Leo Pharmaceuticals does not control the
outcome here. In Leo Pharmaceuticals, the fact that decades separated the
prior art was not in and of itself sufficient to establish non-obviousness;
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indeed, the timing was simply icing on the cake. Leo Pharmaceuticals, 726
F.3d at 1356-57 (finding, before even reaching the secondary
considerations, that there was no motivation to combine or expectation of
success; the problem was not known, the possible approaches to solving the
problem were not known or finite, and the solution was not predictable.)
The court noted that "the objective indicia-taken in sum" was
probative of nonobviousness-that evidence included significant unexpected
results showing the prior art formulations resulted in degradation of a
component that the prior art did not even recognize had a stability problem,
as well as commercial success. Id. at 1358-59, 1350-51, 1353-54. In
contrast to the facts of Leo Pharmaceuticals, here, Appellants have not
established any unexpected results or solution to an unrecognized problem.
And, as discussed above, the Examiner provided a prima facie reason to
combine Ruby with Maupin---economics. Moreover, the problem of
aldehyde growth inhibition of cells was known and discussed in Zall (Zall
3:50-58, 11: 19-22), as the Examiner noted (Final Action 3--4; Ans. 4).
While Zall' s solution was to strip acetaldehyde from the system, Maupin
provides an alternative that would solve the same problem, extracellular
convers10n.
We disagree with Appellants that Zall' s stripping solution teaches
away from the claimed invention (Appeal Br. 20; Reply Br. 7). "A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009)
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(quoting In re Gurley, 37 F.3d 551, 553 (Fed. Cir. 1994)). "A reference
does not teach away ... if it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004)). Zall does not discourage, discredit,
or criticize extracellular conversion of pyruvate to acetaldehyde.
Moreover, we disagree with Appellants' contention that Zhu7 provides
evidence of "the failure of others" (Appeal Br. 18; Reply Br. 7). Zhu reports
on some research in the prior art using other bacteria sources besides E. coli
for acetaldehyde production and addresses issues of commercial viability
and the lack of a commercially viable process from renewable carbon as of
2011. (Zhu 6441.) To show a failure of others, the evidence must establish
that others skilled in the art tried and failed to find a solution for the problem
solved by the applicant. Stratojlex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1540 (Fed. Cir. 1983). Additionally, one must show that the others who
failed had knowledge of the critical prior art. In re Caveney, 386 F.2d 917,
923 (CCP A 1967). Claim 1 is not limited to a commercially viable process
or an "economically feasible" one (see Reply Br. 7). Thus, the fact that
other processes reported on in Zhu did not reach commercially viable
production does not establish a failure of others with respect to the claimed
subject matter. Furthermore, there is no evidence that those developing the
7 Zhu et al., Coproduction of Acetaldehyde and Hydrogen during Glucose
Fermentation by Escherichia coli, 77(18) Appl. Environ. Microbiol. 6441-
50 (2011).
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processes reported on in Zhu, which failed to reach commercially viable
production, knew of Maupin' s teaching to convert pyruvate to acetaldehyde
extracellularly.
Absent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness. Iron Grip Barbell Company, Inc. v. USA Sports, Inc., 392
F.3d 1317, 1324--25 (Fed. Cir. 2004).
For the foregoing reasons, Appellants do no persuade us that the
Examiner erred in rejecting claim 1 for obviousness over Maupin, Zall,
Ruby, and Li.
Claims 4--6, 15, and 16 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 2
The Examiner finds that "the method taught by [] ~v1aupin, Zall and
Ruby teach all of the steps of the claimed invention and as such must
inherently teach a method that produces yields above 5 g/L." (Final Action
5; Ans. 5.)
We disagree with the Examiner's finding of inherency. Claim 2
requires the production of a particular product yield as a result of converting
pyruvate excreted from a biological microorganism into the cellular
medium. The Examiner has not cited any evidence establishing how much
pyruvate would be produced by the microorganisms described in Ruby that
are capable of converting 50% of the carbon substrate to pyruvate, nor the
efficiency of the Maupin recombinant enzyme that converts pyruvate to
acetaldehyde. Consequently, we agree with Appellants (Appeal Br. 20-21;
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Reply Br. 7) that on this record, the Examiner has not provided sufficient
evidence to support a prima facie case of obviousness regarding the yield
limitation of claim 2. Thus, we reverse the Examiner's § 103 rejection of
claim 2.
Claim 3
The Examiner finds that while Ruby does not teach purification of the
pyruvate excreted into the cellular medium, one of ordinary skill in the art
would be motivated to purify it prior to use in the Maupin and Zall methods
for several alternative reasons including to remove produced acid from the
microbial step or to achieve a higher concentration of substrate for the
ensuing acetaldehyde conversion step. (Ans. 18.) Appellants do not address
the foregoing. (Reply Br. 8.) We agree with the Examiner's conclusion of
obviousness. Ruby does indeed teach that the culture medium into which
pyn1vate is excreted also contains acetate (Ruby 165), and that if pyn1vate is
left in the culture medium, the microorganism could catabolize the excreted
pyruvate (Ruby 166). In the absence of argument to the contrary, we agree
with the Examiner's position that it would have been obvious for one of
ordinary skill in the art to purify the pyruvate excreted into the culture
medium of the Beneckea microorganism during fermentation prior to the
step of converting that pyruvate to acetaldehyde using the Maupin
recombinant enzyme. The reason one would have been motivated to do that
would be to remove produced acid, such as acetate, that could interfere with
the conversion step or to ensure a high concentration of pyruvate substrate
for the ensuing enzymatic acetaldehyde conversion step.
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Claims 20 and 21
The Examiner recognizes that neither Maupin, Zall, nor Ruby teach
"the use of acetaldehyde for the production of ethanol." (Final Action 6;
Ans. 6.) The Examiner finds that "Murray teaches bioproduction of
acetaldehyde" and also teaches "that acetaldehyde can be readily reduced to
ethanol for energy applications using nickel or copper catalysts." (Final
Action 6; Ans. 19.) The Examiner concludes that in light of this teaching
that "[ o ]ne of ordinary skill in the art would find it obvious to convert
acetaldehyde to ethanol ... to create a product that could be sold as biofuel."
(Final Action 6; Ans. 6.)
We agree with the Examiner's factual findings and conclusion that it
would have been obvious to convert the aldehyde to ethanol in light of
Murray.
Appellants' argument that Murray is focused on conversion of ethanol
to acetaldehyde (Reply Br. 8; Appeal Br. 22) is unpersuasive. "It is well
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
Murray clearly teaches that it was known how to convert aldehyde to ethanol
and that it could "readily" be done "[f]or energy applications." (Murray
230). Thus, we agree with the Examiner that one of ordinary skill in the art
would find it obvious to convert acetaldehyde to ethanol to create a product
that could be sold as biofuel.
SUMMARY
We affirm the rejection of claims 1, 3-6, 15, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Maupin, Zall, Ruby, and Li.
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We reverse the rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Maupin, Zall, Ruby, and Li.
We affirm the rejection of claims 20 and 21under35 U.S.C. § 103(a)
as unpatentable over Maupin, Zall, Ruby, Li, and Murray.
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-IN-PART
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