Ex Parte Ju et al

Patent Trial and Appeal Board

Sep 20, 2016

11912306 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111912,306 06/30/2008 Lu-Kwang Ju
26360 7590 09/20/2016
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
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.
UOA.540.US 6868
EXAMINER
TSAY,MARSHAM
ART UNIT PAPER NUMBER
1656
MAILDATE DELIVERY MODE
09/20/2016 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 LU-KWANG JU and QIN ZHANG1
Appeal2015-002379
Application 11/912,306
Technology Center 1600
Before DEMETRA J. MILLS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
1 Appellants state the real party-in-interest is The University of Akron. App.
Br. 1.
Appeal2015-002379
Application 11/912,306
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3, 6-8, 20, and 21.2 Specifically,
claims 1, 6, and 7 stand rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of William D. Lambert et al., The Effect
of pH on the Foam Fractionation of fJ-glucosidase and Cellulase, 87
BIORESOURCE TECH. 247-53 (2003) ("Lambert"), Steve S. Helle et al., Effect
of Surfactants on Cellulose Hydrolysis, 42 BIOTECH. AND BIOENG., 611-17
(1993) ("Helle"), and Maria Hrmova et al., Induction of Cellulose- and
Xylan-degrading Enzyme Systems in Aspergillus terreus by Homo- and
Heterodisaccharides Composed of Glucose andXylose, 137 J. GEN.
MICROBIOL., 541--47 (1991) ("Hrmova").
Claims 2, 3, and 8 stand rejected as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Lambert,
Helle, and Lu-Kwang Ju et al., Wastepaper Hydrolysate as Soluble Inducing
Substrate for Cellulase Production in Continuous Culture of Trichoderma
reesei, 15 BIOTECHNOL. PROG., 91-97 (1999) ("Ju").
Claims 1 and 20 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Lambert, Helle, Hrmova,
and Minoru Kumakura, Adsorption of Cellulase by Various Substances, 5 J.
MATERIALS SCI. LETTERS, 78-80 (1986) ("Kumakura").
2 Claims 4, 5, and 9-19 are canceled. See Final Act. 2.
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Appeal2015-002379
Application 11/912,306
Claims 1and21 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Lambert, Helle, Hrmova,
Kumakura, and E. Doelker, Cellulose Derivatives, 107 ADV. POLYMER SCI.,
200-65 (1993) ("Doelker").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to methods for purifying and/ or
concentrating compounds from or in solutions and/or mixtures. Abstract.
REPRESENTATIVE CLAIM
Appellants argue claims 1, 6, and 7 together. App. Br. 2.3 Appellants
do not argue the remaining claims on appeal separately, and those claims,
therefore, stand or fall \vith claims 1, 6, and 7. Claim l is representative and
recites:
1. A process for separating, concentrating, and/ or
purifying a target compound using a foam, comprising the steps
of:
identifying a target compound to be separated,
concentrated, and/ or purified;
selectively binding an affinity-foaming agent to the target
compound to be separated, concentrated, and/ or purified to
enhance the target compound's affinity for a foam;
3 Appellants' Brief lacks page numbers and so we number them herein
sequentially, beginning with the first page as Page 1.
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Appeal2015-002379
Application 11/912,306
where the atlinity-foaming agent increases the target
compound's tendency to segregate onto bubble surfaces;
where the affinity-foaming agent is selected from the
group consisting of cellulose hydrolysate, carboxymethyl-
cellulose, xylan hydrolysate, organic polymers, sophorolipids,
and rhamnolipids;
introducing gas bubbles into a solution containing the
enhanced target compound, thereby creating a foam that is at
least partially stabilized by the enhanced target compound; and
separating, concentrating, and/ or purifying the enhanced
target compound from the foam.
App. Br. Claim App'x 1.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are prima facie obvious over the cited prior art
references. We address the arguments raised by Appellants below.
Issue
Appellants argue the Examiner erred because the combined cited prior
art fails to teach or suggest the steps of identifying a target compound to be
separated, concentrated, and/or purified, selectively binding an affinity-
foaming agent to the target compound, and introducing gas bubbles into a
solution containing an enhanced target compound. App. Br. 3--4.
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Application 11/912,306
Analysis
Appellants argue the combined teachings of Lambert and Helle would
have led a person of ordinary skill in the art to have added a surfactant such
as sophorolipid from Helle to the high process performance foam
concentration process taught by Lambert. Id. at 4. Appellants contend the
combined teachings of Lambert would only teach a foam-fractionable
composition containing a surfactant/sophorolipid. Id. At best, argue
Appellants, this would result in a foam fractionation process having high
process performance which, Appellants contend, still does not achieve the
claimed invention, and in particular the step of selectively binding an
affinity-foaming agent to a target compound. Id. Furthermore, Appellants
argue the remaining references do not cure the alleged deficiencies of
Lambert and Helle. Id.
Appellants also dispute the Examiner's finding that Helle discloses
that biosurfactants (e.g., sophorolipid) can prevent inactivation of cellulase.
App. Br. 4. According to Appellants, the combination of Lambert and Helle
would result in each element not performing the same function as it does
separately. Id. Appellants assert that if Helle's teaching of "the ability of
surfactants to prevent cellulase inactivation" were to be combined with the
Lambert's foam fractionation process, the function of Helle's element would
have changed. Id. Rather, Appellants argue, in the claimed invention, the
affinity-foaming agent is both binding to the target compound and enhancing
the target compound's affinity for a foam, rather than simply "prevent[ing]
cellulase inactivation." At best, Appellants argue, the combination of foam
fractionation and "the ability of surfactants to prevent cellulase inactivation"
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Application 11/912,306
would lead to a foam-fractionable composition having somewhat more
active cellulose. Id.
Appellants emphasize that Lambert's teachings rely on the "natural"
difference of components in a mixture. App. Br. 4. Appellants argue that
Lambert neither teaches nor suggests targeting a particular target compound.
Appellants contend that, if a person of ordinary skill in the art were to rely
only on a "natural" property, as taught by Lambert, the component could
have poor foaming. Id. Therefore, Appellants assert, the component could
not be separated from the many other components that are in a complex
fermentation broth. Id. at 4--5. Appellants contend that, with the addition of
an affinity-foaming agent selectively bound to the target compound, the
separation of the enhanced target compound is made possible through the
use of foaming. Id. at 5.
The Examiner responds that, whereas Helle may not explicitly
recognize the affinity-foaming property of sophorolipid, the reason or
motivation to modify the reference may often suggest what the inventor has
done, but for a different purpose or to solve a different problem. Ans. 13.
The Examiner asserts that it is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered by
Appellants. Id. at 13-14 (citing, e.g., In re Kahn, 441 F.3d 977, 987 (Fed.
Cir. 2006); MPEP § 2144). The Examiner finds that, in the instant appeal,
the fact that Appellants use sophorolipid as an affinity-foaming agent does
not alter the fact that its use as taught in the prior art would have rendered it
primafacie obvious to use in Appellants' invention, i.e., to prevent the
inactivation of cellulase. Id. at 14.
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The Examiner therefore finds the binding of sophorolipid to cellulase
and the affinity-foaming property of sophorolipid to enhance cellulase' s
affinity for a foam would be naturally present even if not expressly taught by
the prior art. Ans. 14. The Examiner points out that recognition of latent
properties in the prior art does not render nonobvious an otherwise known
invention. Id. (citing In re Wiseman, 596 F.2d 1019, 1023 (C.C.P.A. 1979).
The Examiner further observes that "[t]he fact that [A]ppellant[s] ha[ve]
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious."' Id. (citing Ex parte Obiaya, 227
USPQ 58, 60 (B.PA.I. 1985); MPEP § 2145).
The Examiner concludes that a person of ordinary skill would be
motivated to bind a target compound (i.e., cellulase) with a sophorolipid to
enhance the concentration process of the target compound by foam
fractionation as taught by the prior art, and that binding of sophorolipid to
cellulase as well as the affinity-foaming property of sophorolipid to enhance
cellulase' s affinity for a foam/bubble, are properties that would be naturally
present in the separation process. Ans. 14--15.
Finally, the Examiner finds it is unclear upon what Appellants base
their assertion that Lambert relies upon "natural" components in a mixture.
The Examiner finds, rather, that the motivation to add a sophorolipid to the
cellulase foam fractionation process of Lambert has been explained. See,
supra.
We are not persuaded by Appellants' arguments. We agree with the
Examiner that Lambert teaches the concentration of cellulose by foam
fractionation. Lambert 252. Helle teaches that surfactants, such as
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Application 11/912,306
sophorolipid, can prevent cellulase inactivation by lowering surface tension
or the free energy between a solution and the gas phase in equilibrium with
it, i.e., in a foam. Helle 611. We also agree with the Examiner that a person
of ordinary skill in the art would be motivated to combine the teachings of
Lambert and Helle to reduce the inactivation of cellulose when
concentrating it in a foam fractionation process. Although Appellants' claim
1 employs sophorolipid as an affinity-foaming agent in a foam concentration
process, that does not alter the conclusion that it would have been prima face
obvious to combine the teachings of Lambert and Helle, i.e., to reduce
inactivation of cellulase in a foam fraction concentration process. Although
the teachings of the references do not explicitly recognize the affinity-
foaming properties of sophorolipid in the foam fractionation of cellulase, the
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention. In re Wiseman, 596 F.2d 1019, 1023
(C.C.P.A. 1979).
We consequently affirm the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 1-3, 6-8, 20, and 21 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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