Ex Parte Jorgensen et al

Board of Patent Appeals and Interferences

Dec 28, 2011

11129953 (B.P.A.I. Dec. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JORGEN TOPP JORGENSEN, CARSTEN JACOBSEN,
KIM UHRE HANSEN, ANDERS JORGENSEN, DAN OFTELUND,
POUL BACH, and GUSTAV BORUP SONDERGAARD
__________

Appeal 2011-011309
Application 11/129,953
Technology Center 1600
__________

Before LORA M. GREEN, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
process of preparing one or more enzyme containing particles. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 32-47 are on appeal. Claim 32 is representative and reads as
follows:
32. A process of preparing one or more enzyme containing particles
comprising spray drying an enzyme containing liquid using a Rayleigh
Atomizer spray drying device, to obtain one or more solid particles
comprising an enzyme.

The Examiner rejected claims 32-47 under 35 U.S.C. § 103(a) as
unpatentable over Becker,1 Walzel,2 Drozd,3 and Chan.4
Appellants have not raised additional arguments regarding claims 33-
47. (See App. Br. 14.) Therefore, claims 33-47 stand or fall with claim 32.
37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
The Examiner’s position is that Becker taught a process of preparing
one or more enzyme containing particles comprising spray drying a
fermentation broth containing the enzyme(s), i.e., an enzyme containing
liquid, using a fluidized bed spray coater and dryer, i.e., a spray drying
device. (Ans. 3.) The Examiner found that Becker taught that the enzyme
containing liquid was atomized and then sprayed into the expansion chamber

1 US Patent No. 5,814,501 issued to Nathaniel T. Becker et al., Sep. 29,
1998.
2 US Patent No. 6,098,895 issued to Peter Walzel et al., Aug. 8, 2000.
3 US Patent No. 4,729,958 issued to Jan W. Drozd et al., Mar. 8, 1988.
4 Hak-Kim Chan et al., Spray Dried Powders and Powder Blends of
Recombinant Human Deoxyribonuclease (rhDNase) for Aerosol Delivery,
14 PHARMACEUTICAL RESEARCH 431-437 (1997).
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of the device whereupon the atomized droplets contacted the surface of core
particles suspended in the chamber. (Id. at 4.) Becker taught that the water
and other volatiles comprised in the enzyme containing liquid were then
evaporated leaving a film of the enzyme solids adhering to the surface of
core particles. (Id.)
The Examiner found that Becker did not use a Rayleigh Atomizer
spray drying device as recited in claim 32. (Id.) However, the Examiner
found that Walzel disclosed a Rayleigh Atomizer spraying device and taught
that it was useful for manufacturing spray dried powder from a suspension.
(Id. at 4-5.) Walzel also taught that its device was capable of producing
droplets with a narrow size distribution which is desired in many technical
processes because spray drying plants must be dimensioned according to the
biggest droplets of the spray, as these droplets require the longest residence
time in the drier. (Id. at 5.)
Therefore, according to the Examiner, a person of ordinary skill in the
art at the time the invention was made would have been motivated to use
Walzel’s Rayleigh Atomizer spray drying device in Becker’s process of
preparing enzyme containing particles to provide droplets with a narrow size
distribution, to allow for smaller plant dimensions, and to reduce the cost of
large scale production. (Id. at 5-6.) The Examiner also found that the
artisan would have had a reasonable expectation of success in atomizing and
spray drying the enzyme containing liquid because Walzel taught that its
device is useful for spray drying and preparing spray dried solids from a
suspension. (Id.) Therefore, the Examiner concluded that the method of
independent claim 32 would have been obvious because using a known
atomizer spray drying device to atomize and spray dry a known enzyme
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containing liquid for a known purpose of obtaining solid particles
comprising the enzyme would have been within the purview of a person of
ordinary skill in the art at the time of the invention. (Id. at 6.)
The Examiner combined Becker and Walzel with the remaining
references to address limitations of the dependent claims. (See Ans. 6-7.)
Appellants contend that none of the cited references disclose the
process of claim 32 (App. Br. 11) either alone or in combination (Reply Br.
1). According to Appellants, Becker produced an “enzyme particle by spray
coating the fermentation broth onto hydratable core particles in a fluidized-
bed spray-coater” and did not teach or suggest preparing enzyme particles
“without using a core.” (App. Br. 11.) Appellants also assert that Becker
did not teach using a Rayleigh Atomizer spray-drying device, and that
Walzel, Chan and Drozd do not cure this deficiency. (Id. at 11-12.)
According to Appellants, the Examiner has not provided “any evidence of
excellent particle formation using the Rayleigh atomizer.” (Id. at 12.)
Further, Appellants assert that “the Examiner cannot selectively pick
components from unrelated art without motivation as to the particular
selection.” (Id. at 13.) Appellants also assert that there would be no
reasonable expectation of success for the proposed combination because, for
example, Drozd “relates to [a] liquid system and not a solid particle in
accordance with the present disclosure.” (Id.) According to Appellants, the
only suggestion to combine the cited references is provided by Applicants’
disclosure through hindsight reconstruction. (Id.)
The issue is whether the prior art would have led a skilled artisan at
the time of the invention to combine the relevant teachings of the references
to arrive at the claimed invention.
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 3-7.)
2. We additionally find that Becker disclosed that its invention is carried
out in a fluidized bed spray-coater which typically comprised a fluidized bed
dryer. (Becker col. 3, ll. 30-32; see Ans. 3-4.)
Principles of Law
A conclusion that the claimed subject matter is prima facie obvious
must be supported by evidence, as shown by some objective teaching in the
prior art or by knowledge generally available to one of ordinary skill in the
art that would have led that individual to combine the relevant teachings of
the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

KSR Int’l Co. v. Teleflex Inc., 550 U.S 398, 421 (2007).
Analysis
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. In particular,
we are not persuaded by Appellants’ contention that none of the cited
references would have led a person of ordinary skill in the art at the time the
invention was made to combine the relevant teachings of references to arrive
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at the process recited in independent claim 32. See Fine, 837 F.2d at 1074.
While Appellants assert alleged deficiencies of each of the four cited
references and their combination in general (App. Br. 11-13) the Examiner
relied only on the combination of Becker and Walzel as suggesting the
process of claim 32. (See Ans. 3-7.) The remaining references in the
combination were relied upon as teaching limitations of the dependent
claims, which Appellants have not argued separately. (See App. Br. 14.)
Regarding Becker, Appellants assert that “the Examiner mistakenly
asserts that Becker relates to spray drying.” (App. Br. 13.) According to
Appellants, “Becker is limited to spray-coating ….” (Id.) We disagree. As
the Examiner correctly found, Becker disclosed using a fluidized bed spray
coater and dryer. (Ans. 3-4.) Specifically, Becker taught that its invention is
carried out in a fluidized bed spray-coater which typically comprises a
fluidized bed dryer. (FF-2.) Further, as the Examiner correctly found,
Becker taught that its process comprised atomizing and spraying the enzyme
containing liquid into the expansion chamber of the device where the
atomized droplets contact the surface of core particles suspended in the
chamber, leaving a film of the enzyme solids adhering to the surface of the
core particles after the water and other volatiles are evaporated. (Ans. 4.)
Thus, the enzyme containing liquid is sprayed in the device and
subsequently dried in the device. Appellants have not established otherwise
with persuasive evidence.
Appellants also assert that “Becker does not teach or even suggest that
a suitable enzyme-containing particle could be prepared without using a core
….” (App. Br. 11.) However, claim 32 does not recite or otherwise require
preparing solid particles comprising an enzyme “without using a core.”
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Regarding the combination of Becker and Walzel, Appellants
acknowledge that “Walzel relate[d] to atomizing a liquid and the Rayleigh
Atomizer generally,” but assert that the Walzel failed to suggest using the
device in a process of preparing one or more enzyme containing particles
including spray drying an enzyme containing liquid to obtain one or more
solid particles including an enzyme. (Id. at 12.)
We are not persuaded by this argument because Walzel taught that its
Rayleigh Atomizer spray drying device was useful for manufacturing spray
dried powder from a suspension. (Ans. 4-5.) Further, Walzel disclosed an
advantage of using its device, i.e., its capability of producing droplets with a
narrow size distribution which was desired in many technical processes
because spray drying plants must be dimensioned according to the biggest
droplets of the spray. (Id. at 5.) These disclosures support the Examiner’s
reasoning that a skilled artisan would have been motivated to use Walzel’s
Rayleigh Atomizer spray drying device in Becker’s process of preparing
enzyme containing particles with a reasonable expectation of success. (Id. at
5-6.) This combination amounts to a skilled artisan applying an identified,
predictable, known option within the artisan’s technical grasp to improve a
known manufacturing/production concern, see KSR, 550 U.S at 421, and not
the result of an improper hindsight reconstruction.
Accordingly, we affirm the rejection of claim 32. We also affirm the
rejection of claims 33-47 as these claims were not argued separately.

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CONCLUSION OF LAW
The prior art would have led a skilled artisan at the time of the
invention to combine the relevant teachings of the references to arrive at the
claimed invention.

SUMMARY
We affirm the rejection of claims 32-47 under 35 U.S.C. § 103(a) as
unpatentable over Becker, Walzel, Drozd, and Chan.

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

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