Ex Parte Kyle

Board of Patent Appeals and Interferences

Dec 19, 2011

11449829 (B.P.A.I. Dec. 19, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/449,829 06/09/2006 David J. Kyle 026086.024-11DIV US 6346
24239 7590 12/19/2011
MOORE & VAN ALLEN PLLC
P.O. BOX 13706
Research Triangle Park, NC 27709
EXAMINER
LUCAS, ZACHARIAH
ART UNIT PAPER NUMBER
1648
MAIL DATE DELIVERY MODE
12/19/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID J. KYLE
___________

Appeal 2011-001102
Application 11/449,829
Technology Center 1600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and LORA M. GREEN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 98-101, directed to a method of treating live shrimp to produce a
bactericidal or bacteriostatic effect in the shrimp. The claims have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Application 11/449,829

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STATEMENT OF THE CASE
Claims 98-101 are pending and on appeal. Claim 98 is representative
of the subject matter on appeal:
98. A method of treating shrimp, wherein the method comprises feeding
to the shrimp a fermented and homogenized fungal biomass containing at
least one bioactive acidic bactericidal or bacteriostatic peptide expressed by
the fungi during fermentation and cultured fungal cells, wherein the
bioactive peptide is non-native to the fungi, and wherein the fermented and
homogenized fungal biomass is fed to the shrimp in an amount sufficient to
produce a bactericidal or bacteriostatic effect in the shrimp.
The Examiner relies on the following evidence:
Shinozaki et al. US 3,983,008 Sep. 28, 1976
Hamill et al. US Re. 32,333 Jan. 20, 1987
Prieels et al. US 5,047,250 Sep. 10, 1991
Duke et al. US 5,830,463 Nov. 3, 1998
Knutzon et al. US 5,968,809 Oct. 19, 1999

Shee et al. JP 403030691 A Feb. 1991
(English language Abstract)
Kikkoman Shoyu Co. JP 73032672 B Oct. 1973
(English language Abstract)
Daniel Tusé, Single-Cell Protein : Current Status and Future Prospects, 19
CRITICAL REVIEWS IN FOOD SCIENCE AND NUTRITION 273-325 (1984).
Donald A. Mackenzie et al., Isolation and Use of a Homologous Histone H4
Promoter and a Ribosomal DNA Region in a Transformation Vector for the
Oil-Producing Fungus Mortierella alpina , 66 APPLIED AND
ENVIRONMENTAL MICROBIOLOGY 4655-4661 (2000).
Claims 98-100 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Duke, Hamill, Prieels, Shinozaki, JP 403030691 and
JP 73032672; and
claims 98, 100, and 101 stand rejected as unpatentable over the same
references, and further in view of Tusé and Knutzon.
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Application 11/449,829

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OBVIOUSNESS
Findings of Fact
The Examiner’s findings of fact regarding the teachings of Duke,
Hamill, Prieels, Shinozaki, JP 403030691 and JP 73032672 are set forth on
pages 5-8 of the Examiner’s Answer.
Discussion
There are two separate rejections of the claims, but the dispositive
issue for both of them is whether the Examiner has established that it would
have been obvious for one of ordinary skill in the art to feed shrimp a
fermented and homogenized fungal biomass containing cultured fungal cells
and a bioactive non-native acidic bactericidal or bacteriostatic peptide
expressed by the fungal cells during fermentation, in an amount sufficient to
produce a bactericidal or bacteriostatic effect in the shrimp, given the prior
art cited.
The Examiner finds that Duke discloses delivering a variety of
compounds, including antibiotics, to animals, including arthropods, by oral
administration of a recombinant yeast vehicle. The Examiner acknowledges
that Duke doesn’t “teach or suggest embodiments wherein the antibiotic is
an acidic bactericidal or bacteriostatic peptide, or embodiments wherein a
homogenized or fermented yeast biomass is administered” (Ans. 5-6). The
Examiner cites Hamill as evidence that acidic proteins, expressed in, and
isolated from yeast, “were a known category of antibiotics” (id. at 6). The
Examiner cites Prieels as evidence that “homogenized and dried yeast
compositions for use in [shellfish] feeds” were also known (id.).
Appellant emphasizes that “[t]he present invention relates to a
[fermented] homogenized fungal biomass that is used as a feed for shrimp,”
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that also “expresses a bioactive acidic bactericidal or bacteriostatic peptide
during the fermentation process” (App. Br. 11). To that end, “[t]he fungi are
cultured and after the fermentation process is complete, the newly expressed
proteins and the biomass containing the fungi are processed for feed” (id.).
Appellant argues “since the expressed proteins are not isolated from the
biomass, one would not want to introduce anything into the biomass that
may contaminate it” and “the homogenizing process has to be conducted in a
manner that the newly expressed proteins are not damaged” (id.), so that
they are capable of producing a bactericidal or bacteriostatic effect, as
required by the claims.
Appellant contends essentially that the teachings of the references are
not compatible with each other; that one of ordinary skill in the art would
have had no motivation to combine them as suggested by the Examiner; and
that even if the teachings were combined, it would not result in the claimed
invention (App. Br. 11). Appellant notes that Duke describes “yeast that is
transformed and . . . expresses a [heterogeneous] protein” in an animal to
which the biomass of yeast is administered (id. at 12). Appellant contends
that Hamill’s yeast biomass, on the other hand, “is not used, nor would one
want to feed it to an animal because of the use of solvents” (id.), while
Prieels’ yeast are “not transformed yeast and have no ability to express
heterogeneous compounds once administered” and, moreover, Prieels’
“homogenization process is so drastic that any proteins could not survive
such a denaturation process” (id.).
The Examiner concedes that Prieels’ “homogenization of yeast cells
. . . would not be acceptable for use in methods where a protein product of
the cell is desired to remain active” (Ans. 6), but finds that “other means for
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the homogenization of yeast cells for use in feed, which methods do not
destroy proteins present in cells” were known, for example, those disclosed
by Shinozaki, JP 403030691, and JP 73032672 (id. at 7).1 The Examiner
concludes that “it would have been clear to those in the art that other means
for processing the cells should be used where active proteins are desired”
(id.).
Nevertheless, as Appellant points out, Duke’s yeast delivery vehicle is
not homogenized; Prieels teaches homogenized yeast cells for use as a food
source, but doesn’t discuss the activity of any of the proteins in the
homogenate, much less heterogeneous proteins; while Shinozaki, JP
403030691, and JP 73032672 focus exclusively on extracting and purifying
their respective compounds of interest (App. Br. 12). Moreover, Appellant
contends that Shinozaki, JP 403030691, and JP 73032672 use various
solvents and surfactants in their extraction processes that could make the
remaining yeast biomass unsuitable for use as a food source.
Having considered the respective positions of Appellant and the
Examiner, we agree with Appellant that the Examiner has not shown that the
cited references support a prima facie case of obviousness. At best, the

1 We note that the Examiner describes the Shinozaki, JP 403030691, and JP
73032672 references collectively as teaching “homogenization of yeast cells
for use in feed, which methods do not destroy proteins present in the cells”
(Ans. 8). However, the Examiner has not identified any portions of the
references which discuss the use of the homogenized yeast biomass in feed.
On the contrary, Appellant’s assertion that these references pertain to
“fermentation and homogenization processes that are performed for the
purpose[ ] of obtaining a purified protein product isolated from the cell
biomass” (App. Br. 16) “with no consideration as to whether the biomass
would be suitable for ingestion by animals” appears to accurate.
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Examiner has established that various, discrete elements of the claimed
invention were known in the art, but an invention “composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). What is lacking in the rejection is
“a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does” in
the first place. Id. The Examiner has, therefore, not provided an adequate
basis to support a conclusion of obviousness under 35 U.S.C. § 103(a).
SUMMARY
The rejection of claims 98-100 as unpatentable over Duke, Hamill,
Prieels, Shinozaki, JP 403030691, and JP 73032672 is reversed; and
the rejection of claims 98, 100, and 101 as unpatentable over the same
references, and further in view of Tusé and Knutzon is reversed.

REVERSED

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