Ex parte Kishimoto et al.

Board of Patent Appeals and Interferences

Mar 28, 2000

08101093 (B.P.A.I. Mar. 28, 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(2) is not binding precedent of the Board.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. 59
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KATSUMITSU KISHIMOTO, KAZUHIKO KINTAKA and
HIROYUKI YOSHINAGA
_____________
Appeal No. 1996-2215
Application No. 08/101,093
______________
ON BRIEF
_______________
Before WINTERS, WILLIAM F. SMITH and SPIEGEL, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the examiner’s decision rejecting
claims 25 through 36.
Claims 25, 34 and 35 are representative of the subject
matter on appeal and read as follows:
25. An industrial production method for producing L-
sorbose by microbial oxidation of D-sorbitol using a
microorganism of the genus Gluconobacter, comprising:
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a) providing a culture medium having definite components
for culturing the microorganism of the genus Gluconobacter
which includes at least one amino acid selected from the group
consisting of glutamic acid, glutamine, alanine, serine,
threonine, asparagine and aspartic acid;
b) adding D-sorbitol to the culture medium in an amount
such that the concentration of D-sorbitol is maintained at or
under 5% by weight of the culture medium during and after the
growth phase of the microorganism;
c) pumping oxygen gas into the culture medium and
monitoring the amount of dissolved oxygen in the culture
medium such that the concentration of the dissolved oxygen in
the culture medium is maintained in a prescribed range, the
culture medium releasing an exhaust gas comprising oxygen and
carbon dioxide;
d) nonadsorbently controlling the partial pressure of
carbon dioxide in the culture tank by venting via a valve a
portion of the exhaust gas from the culture tank, the partial
pressure of carbon dioxide in the culture tank being
maintained in the range from 5 to 10% by such venting; and
e) releasing to the atmosphere some of the exhaust gas
which has been vented from the culture tank and recirculating
the remaining exhaust gas which has been vented but not
released back to the culture medium by mixing such exhaust
gas, which includes carbon dioxide produced by the culture
medium, with the oxygen gas prior to the oxygen gas being
pumped into the culture medium, whereby L-sorbose is
efficiently produced by the microbial oxidation of D-sorbitol.
34. A method for recycling exhaust gas produced by a
microbiological industrial process in a culture tank,
comprising:
a) carrying out the microbiological process in a culture
medium in the culture tank, the exhaust gas produced by the
microbiological process comprising carbon dioxide; then
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b) venting some of the exhaust gas from the culture tank
to maintain the partial pressure of the carbon dioxide in the
culture tank within a prescribed range; and then
c) releasing to the atmosphere some of the exhaust gas
which has been vented and recycling the remainder of exhaust
gas, which has been vented but not released and which includes
carbon dioxide, back into the culture medium in the culture
tank without adsorbing carbon dioxide from such exhaust,[sic]
gas whereby the microbiological process is cost effective.
35. A recycling process which comprises:
recycling an exhaust gas, which includes carbon dioxide
and which is produced by a microbiological process carried out
in a culture medium, back into the culture medium without
adsorbing carbon dioxide from the exhaust gas and enriching
with oxygen the exhaust gas which is recycled back into the
culture medium.
I. REFERENCES
The references relied on by the examiner are:
Arcuri et al. (Arcuri) 4,413,058 Nov. 01,
1983
European Patent Application (Shimizu) 0092771, published
Nov. 2, 1983.
Mori et al. (Mori), “High Density Production of Sorbose
from Sorbitol by Fed-Batch Culture with DO-Stat,” Journal
Chemical Engineering Japan, Vol. 14, No. 1, pp. 65-70 (1981).
Appeal No. 1996-2215
Application No. 08/101,093
This rejection was entered as a new ground of rejection in the Answer,1
pages 5 and 6.
4
II. REJECTIONS
Claims 25 through 36 stand rejected under 35 U.S.C. § 103
as unpatentable over Mori in view of Shimizu.
Claims 25 through 36 also stand rejected under 35 U.S.C.
§ 103 as unpatentable over Mori in view of Shimizu and
Arcuri. 1
We reverse both rejections.
III. BACKGROUND
1. L-sorbose, a naturally occurring ketohexose, is an
important raw material in the synthesis of vitamin C.
Specification, page 1, lines 8-11.
2. L-sorbose can be produced by microbial fermentation
of D-sorbitol, where D-sorbitol is oxidized by microorganisms,
for example, bacteria of the genus Gluconobacter.
Specification, page 1, lines 11-13.
3. To save resources in conventional microbial
fermentation processes, a culture exhaust gas containing a
high concentration of oxygen is recovered by compressor, and
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reused in the culture liquid. In these processes, carbon
dioxide gas generated by respiration of the microorganisms is
accumulated in the exhaust gas. When the concentration of
carbon dioxide is over 10%, the growth rate of the
microorganisms and the rate of oxidation are strongly
inhibited. Specification, page 2, line 18, through page 3,
line 1.
4. To prevent the accumulation of carbon dioxide in
conventional processes, the carbon dioxide gas is removed by a
carbon dioxide gas removing means which employs an adsorbent,
such as sodium hydroxide. Specification, page 3, lines 1-3.
5. However, there are problems using such a carbon
dioxide adsorbing system, such as increased production cost
due to acquisition of an adsorption column, an adsorbent, and
the like, and the necessary maintenance thereof.
Specification, page 3, lines 3-7.

IV. EXAMINER’S REJECTIONS
A. The subject matter recited in claims 25 through 33
and 36 is directed to processes for producing L-sorbose by
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microbial oxidation of D-sorbitol using a microorganism of the
genus Gluconobacter. The process requires the steps of (1)
pumping oxygen gas into the culture medium in a prescribed
concentration, the culture medium releasing an exhaust gas
comprising oxygen and carbon dioxide; (2) nonadsorbently
controlling the partial pressure of carbon dioxide released
from the culture medium by venting a portion of the exhaust
gas to maintain the partial pressure of carbon dioxide in the
range from 5 to 10%; (3) releasing to the atmosphere some of
the vented gas; and (4) recirculating the remaining exhaust
gas, which has been vented but not released, back to the
culture medium by mixing such gas with oxygen before oxygen is
pumped into the culture medium.
The term “nonadsorbently controlling,” according to the
disclosure in the specification, means that no adsorbent, as
described in section III 4 above, is used to control the
carbon dioxide partial pressure. See the specification,
paragraph bridging pages 13 and 14; and page 20, lines 7-11.
B. The subject matter recited in claim 34 is directed to
a process for recycling exhaust gas, which includes carbon
dioxide, produced by a microbiological industrial process in a
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culture tank. The process requires the steps of (1) venting
some of the exhaust gas from the culture tank to maintain the
partial pressure of the carbon dioxide within a prescribed
range, (2) releasing to the atmosphere some of the vented
exhaust gas, and (3) recycling the remaining exhaust gas,
which has been vented but not released and which includes
carbon dioxide, back to the culture medium without adsorbing
carbon dioxide from such remaining exhaust gas.
C. The subject matter recited in claim 35 is directed to
a process for recycling exhaust gas, which includes carbon
dioxide and which is produced by a microbiological process
carried out in a culture medium, back into the culture medium
without adsorbing carbon dioxide from the exhaust gas, and
enriching with oxygen the exhaust gas which is recycled back
into the culture medium.
D. The rejection under 35 U.S.C. § 103 over Mori in view
of Shimizu.
1. Mori describes a process for producing L-sorbose from
sorbitol by cultivating Gluconobacter suboxydans in a “fed-
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batch” culture in which sorbitol is fed intermittently, with a
DO-stat under the condition that none of the components in the
basal medium limit the growth of the microorganism and the
production of sorbose. Mori, page 65, column 2, lines 18-23;
and page 66, column 1, line 4, through column 2, line 10. A
DO-stat is a device to keep constant the concentration of
dissolved oxygen in the broth. With the use of the DO-stat,
pure oxygen or oxygen gas mixed with air is supplied to the
fermentor without toxicity due to excessive concentrations of
dissolved oxygen. Mori, page 65, column 1, lines 12-17.
2. Mori does not describe the recited steps of
(1) nonadsorbently controlling the partial pressure of the
carbon dioxide gas produced from the fermenting bacteria, or
(2) recycling the exhaust gas produced by the culture medium
by mixing the exhaust gas with oxygen before pumping the
oxygen gas into the culture medium.
3. Shimizu describes a process for culturing
microorganisms using oxygen-enriched gas, where the exhaust
gas of the culture medium is recycled. The process comprises
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the steps of controlling the partial pressure of carbon
dioxide released from fermenting bacteria by (1) venting some
of the exhaust gas, (2) releasing some of the vented exhaust
gas to the atmosphere, (3) passing the remaining vented
exhaust gas through a carbon dioxide adsorption remover to
remove carbon dioxide by adsorption, and (4) returning the
exhaust gas of step (3) back to the culture medium. Shimizu,
page 3, lines 18-24; page 7, lines 11-26; page 10, lines 1-3;
page 10, line 23, through page 11, line 3; and Fig. 4.
4. Shimizu does not describe the recited steps of
(1) nonadsorbently controlling the partial pressure of carbon
dioxide, or (2) mixing the exhaust gas with oxygen before
introducing the exhaust gas back to the culture medium.
5. In setting forth the rejection under 35 U.S.C. § 103,
the examiner states that “the Shimizu reference is cited to
show an analogous culturing technique wherein the exhaust gas
is returned to the system after removing excess carbon
dioxide. Even though the reference envisions adsorption of
the carbon dioxide rather than its partial release out of the
system . . . the effect of decreasing the amount of carbon
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dioxide in the exhaust gas is the same.” Answer, page 4,
lines 5-12. The examiner concludes that “the claimed
invention would have been prima facie obvious to one of
ordinary skill in the art at the time the invention was made
especially in the absence of clear, convincing evidence to the
contrary.” Answer, page 4, lines 15-18.
6. To establish a prima facie case of obviousness, all
claim limitations must be taught or suggested by the prior
art. See In re Royka, 490 F.2d 981, 984, 180 USPQ 580, 583
(CCPA 1974). That is not the case here. As can be seen from
a review of sections IV-D2 and IV-D4 above, the examiner has
not established that the combined disclosures of Mori and
Shimizu would have led a person having ordinary skill in the
art to the instantly claimed process.
A rejection of claimed subject matter under 35 U.S.C. §
103 in view of the combined disclosures of prior art
references requires consideration of (1) whether the prior art
would have suggested carrying out the claimed process to a
person having ordinary skill in the art, and (2) whether the
prior art would have revealed that, in so carrying out, a
person having ordinary skill would have had a reasonable
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expectation of success. Both the suggestion and reasonable
expectation of success must be founded in the prior art, not
in applicant’s disclosure. See In re Vaeck 947 F.2d 488, 495,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991). On this record, the
examiner does not point to any reason, suggestion, or
motivation stemming from the prior art which would have led a
person having ordinary skill to (1) nonadsorbently control the
partial pressure of carbon dioxide, and/or (2) mix the exhaust
gas with oxygen before re-introducing the exhaust gas into the
culture medium. Instead, the examiner impermissibly relies on
hindsight in reaching the ultimate conclusion of obviousness.
“To imbue one of ordinary skill in the art with knowledge of
the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to
fall victim to the insidious effect of a hindsight syndrome
wherein that which only the inventor taught is used against
its teacher.” In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596,
1600 (Fed. Cir. 1988), citing W.L. Gore & Assoc. V. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983).
7. Having determined that the examiner has not
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established a prima facie case of obviousness, we find it
unnecessary to discuss the Kintaka Declaration, executed
August 18, 1994, which is relied on by appellants as rebutting
any such prima facie case.
Accordingly, we reverse the rejection of claims 25
through 36 under 35 U.S.C. § 103 as unpatentable over Mori in
view of Shimizu.
E. The rejection under 35 U.S.C. § 103 over Mori in view
of Shimizu and Arcuri.
1. For the reasons previously set forth, the combined
disclosures of Mori and Shimizu fail to suggest appellants’
claimed process.
2. Arcuri describes releasing carbon dioxide gas to the
atmosphere by venting the gas from a fermentation process for
producing ethanol (column 2, lines 1-5). Arcuri discloses
that carbon dioxide generated during ethanol fermentation is
conducted away from the reaction zone near the point of origin
of the gas (column 6, lines 15-19).
3. Arcuri does not describe the recited steps of
(1) nonadsorbently controlling the partial pressure of carbon
dioxide gas in the fermentation process, or (2) recycling the
Appeal No. 1996-2215
Application No. 08/101,093
Claim 16 was introduced in the amendment filed in Paper No. 29, filed2
Nov. 24, 1992. Appellants proposed to cancel claim 16 and add claim 17 in the
amendment filed under 37 CFR 1.116(a) in Paper No. 31 filed on Jun. 3, 1993.
The examiner in the Advisory action, Paper No. 32, mailed Jul. 6, 1993,
indicated that the proposed amendment would be entered upon the filing of an
appeal. Appellants filed a continuation under 37 CFR § 1.62 on Aug. 3, 1993.
Appellants did not request entry of the proposed amendment in Paper No. 31,
but instead filed a preliminary amendment in Paper No. 36. In that amendment,
appellants canceled claims 4-5, 7-12 and “17," and added claims 18-25. Since
(continued...)
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vented carbon dioxide gas by mixing the vented carbon dioxide
gas with oxygen before introducing said vented gas to the
culture medium.
4. Therefore, Arcuri does not cure the deficiencies of
Mori and Shimizu. Accordingly, we reverse the rejection of
claims 25 through 36 under 35 U.S.C. § 103 as unpatentable
over Mori in view of Shimizu and Arcuri.
V. CLAIM 16
Claim 16 is pending in the application. This claim,
however, does not stand rejected and is not before us on
appeal.
Based on the prosecution history of the application, it
appears that appellants intend to cancel claim 16. On return
of this application to the examining corps, appellants and the
examiner should clarify the status of claim 16. 2
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Application No. 08/101,093
(...continued)2
claim 17 was not entered, it was not proper to cancel it. In subsequent
responses, appellants did not refer to claim 16. See Paper No. 39 filed Mar.
4, 1994, Paper No. 48 filed Nov. 21, 1994, and Brief, Paper No. 52, filed Feb.
21, 1995.
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VI. CONCLUSION
In conclusion, we reverse the rejections of claims 25
through 36 under 35 U.S.C. § 103 as unpatentable over Mori in
view of Shimizu, and over Mori in view of Shimizu and Arcuri.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
vsh
Appeal No. 1996-2215
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