Ex Parte Lantero

Patent Trial and Appeal Board

May 31, 2016

12432101 (P.T.A.B. May. 31, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/432,101 04/29/2009 Oreste J. Lantero 6444
7590 05/31/2016
SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
1600 TCF TOWER
121 SOUTH EIGHTH STREET
MINNEAPOLIS, MN 55402
EXAMINER
PYLA, PAUL D
ART UNIT PAPER NUMBER
1653
MAIL DATE DELIVERY MODE
05/31/2016 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 ORESTE J. LANTERO1
__________

Appeal 2014-004997
Application 12/432,101
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for producing a low viscosity grain slurry, which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The invention relates to the use of an alpha-amylase and a
hemicellulase enzyme blend to pretreat grain in connection with ethanol
production. Spec. ¶ 11. In the process of the invention, grains, such as

1 Appellant identifies the Real Party in Interest as ICM, Inc. Appeal Br. 3.
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wheat, barley, rye and triticale, are ground and made into a slurry. Spec.
¶¶ 18, 20–21. A mixture of alpha-amylase and hemicellulase blend enzymes
are then added to the slurry to reduce the viscosity of the slurry. Spec. ¶¶
18, 23–24. The slurry then goes through two heating cycles. Spec. ¶¶ 25–
26. The slurry is then treated with a saccharifying enzyme. Spec. ¶ 28.

Claims 1–30 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A method of preparing a low viscosity slurry
comprising:
grinding a small grain to produce a flour;
mixing the flour with water to form a slurry;
pretreating the slurry by adding an alpha-amylase
enzyme and a hemicellulase blend enzyme
into the slurry;
heating the slurry to a first temperature to pretreat
the slurry by reducing a viscosity of the
slurry and initiating breakdown of starch in
the slurry;
heating the slurry to a second temperature that is
higher than the first temperature to liquefy
the slurry and convert the slurry into a mash;
and
mixing a saccharifying enzyme into the mash.

The claims stand rejected as follows:
Claims 1–30 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gutierrez et al., WO 2004/087889 A1
(published Oct. 14, 2004)(“Gutierrez”) and Henderson et al. US
2007/0190627 A1 (published Aug. 16, 2007)(“Henderson”).
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DISCUSSION
Issue
In rejecting claims 1–30 the Examiner finds that “Gutierrez generally
teaches an improved method for producing fermentation products (e.g.,
ethanol) where the method comprises a milling step, slurry formation,
preliquefaction, gelatinization of starch, liquefaction, then saccharification
and fermentation to produce a product such as ethanol.” NonFinal Action2
4. The Examiner also finds that “during the preliquefaction step, enzymes
xylanase or β-glucanase are added at a first heating temperature (45–70°C)
in order to beneficially break down non-starch polysaccharides (NSP) and to
reduce the viscosity of the slurry, thus allowing the production process to
run more smoothly (page 4, lines 1–5).” NonFinal Action 4. The Examiner
goes on to find that “[d]uring the liquefaction step, Gutierrez teaches that α-
amylase is added to break down (hydrolyze) the starches into maltodextrins
(page 4, lines 22-24). Additionally, β-glucanase and xylanase (and other
endoglucanases) may also be added to the mixture during this step.” Id.
The Examiner then finds that “[t]he method of Gutierrez differs from the
method of the instant claims in that Gutierrez only adds hemicellulases
during the preliquefaction step, α-amylases are not added until the
liquefaction step.” CITE? The Examiner finds that Henderson teaches the
use of cellulases and hemicellulases in a grain slurry liquefaction process.
NonFinal Action 6. The Examiner goes on to find that:

2 All references to a NonFinal Action in this decision are to the NonFinal
Action dated Apr. 23, 2013.
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A person of ordinary skill in the art would
have been motivated to combine the enzymes of
Henderson with the method of Gutierrez since
Henderson teaches that the hemicellulase and
cellulase enzymes are useful for the preparation of
a slurry since they can release starch and non-
starch components from grains (Henderson,
paragraphs 60–61 ), and that liquefaction processes
are well-known in the art where they are usually
performed by enzymatic hydrolysis by treating the
meal with an effective amount of an a-amylase
(paragraph 14).

NonFinal Action 7. Next, the Examiner finds that:
Although Applicants steps are read in order,
the prior art teaches all of the steps and enzymes
needed to break down both starch and NSPs in one
form or another where it would have been obvious
to a person of ordinary skill in the art based on the
prior art references to optimize the steps by adding
enzymes to attack both starch and NSP and
provide a low viscous slurry that also provides
more single sugar substrates for eventual
fermentation. In other words, inclusion of all
enzymes capable of breaking down all
polysaccharides (both starch and NSPs) in the
slurry at all stages of liquefaction would have been
obvious in order to optimize hydrolysis of the
polysaccharides. One would have had a
reasonable expectation that inclusion of amylase
during the preliquefaction step of Gutierrez (in
addition to the β-glucanase and xylanases) would
have further reduced the viscosity of the slurry and
aided in breakdown of the starches, thereby
improving the overall method, as reduction in
viscosity and breakdown of starches is the desired
result.
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NonFinal Action 8–9.
Appellant contends that the combination of Gutierrez and Henderson
does not render obvious the claimed methods. Appeal Br. 8, Reply Br. 5–6.
Appellant contends that Gutierrez only teaches the use of beta-glucanse or
xylanase during the pretreatment step. Appeal Br. 9. Appellant contends
that Gutierrez only adds alpha-amylase during the liquefaction step, which is
a different step than the pretreatment step. Id. Appellant argues that
Gutierrez teaches that the steps in the method disclosed are to be performed
in order. Reply Br. 5-6.
Next Appellant contends that, while Henderson discloses the use of
cellulases to release starch and non-starch components from distiller’s grain,
Henderson does not teach the use of a hemicellulase blend enzyme. Appeal
Br. 10, Reply Br. 8–10. Appellant goes on to argue that Henderson only
teaches the use of alpha-amylase in the liquefaction step which is different
than its use in the pretreatment step. Appeal Br. 10, Reply Br. 6–7.
Appellant contends that the pretreatment step in Henderson is an acid
treatment which is different than an enzymatic pretreatment called for in the
instant claims. Appeal Br. 11.
Appellant argues further that Gutierrez teaches away from the present
invention “as the steps in Gutierrez are to be performed in the order of (b) a
preliquefaction step by adding a beta-glucanase or a xylanase, (c) a
gelatinization step, (d) a liquefaction step by adding alpha-amylase, a beta-
glucanase, and a xylanase to the mash.” Reply Br. 6. Finally, Appellant
contends that the Examiner has failed to show a reason why one skilled in
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the art would have combined the teachings of Gutierrez with Henderson to
create the claimed method. Appeal Br. 12.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that the claims are obvious
in view of Gutierrez combined with Henderson as defined by 35 U.S.C.
§ 103(a).
Findings of Fact
FF1. Gutierrez teaches a method for producing a fermentation
product, such as ethanol, comprising the steps of
(a) providing a mash comprising a starch containing
material and water; (b) preliquefying the mash of step
(a) in the presence of a beta-glucanase; (c)
gelatinizing the mash of step (b); (d) liquefying the
mash of step (c) in the presence of a alpha-amylase
and a beta-glucanase and a xylanase; and (e)
saccharifying and fermenting the mash of step (d) to
produce the fermentation product.”
Gutierrez 1:30–34.
FF2. Gutierrez teaches adding either xylanase or beta-glucanase to
the slurry during the preliquefaction step. Gutierrez 4:2–6.
FF3. Gutierrez teaches that the use of beta-glucanase and xylanase
degrades glucan and xylan thereby reducing the
viscosity of the mash. The reduced viscosity
results in increased flow rates of the liquefied
mash, thereby increasing the capacity of the
production plants, especially by improving heat
transfer and facilitating passage of the liquefied
mash through the mash coolers. Thus the process
of the invention facilitates the use of higher dry
matter percentage in the fermentation while still
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securing an efficient cooling and a correct and
uniform temperature of the mash delivered to the
fermentation tanks.
Gutierrez 2:2–9.
FF4. Alpha-amylase is added to the slurry during the liquefaction step
to break down starch into maltodextrins. Gutierrez 4:22–24, 5:1–22.
FF5. Additional beta-glucanase and xylanase can be added to the
slurry during the liquefaction step. Gutierrez 5:1–2.
FF6. Gutierrez teaches that prior hydrolysis of non-starch
polysaccharides increases overall capacity and yields better heat transfer and
phase transfer. Gutierrez 2:10–12.
FF7. Commercial beta-glucanases useful in the practice of
Gutierrez’s method include “CELLUCLAST®, CELLUZYME®,
CEREFLO® and ULTRAFLO® (available from Novozymes A/S), GC 880,
LAMINEX™ and SPEZYME® CP (available from Genencor Int.) and
ROHAMENT® 7069 W (available from Röhm, Germany).” Gutierrez
7:11–14.
FF8. Henderson discloses a method for making ethanol from
distillers’ grain. Henderson ¶¶ 1, 8.
FF9. Henderson discloses the use of hemicellulase and/or cellulases
to release starch and non-starch components from distiller’ grain.
Henderson ¶ 60.
FF10. “Preferred hemicellulase for use in [Henderson’s] invention
include xylanases, arabinofuranosidases, acetyl xylan esterase,
glucuronidases, endo-galactanase, mannases, endo or exo arabinases, exo-
galactanses, and mixtures thereof.” Id.
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FF11. Cellulases useful in the practice of Henderson’s invention
include combinations of cellulases. Henderson ¶ 61.
FF12. Among the cellulases useful in Henderson’s invention are
“CELLULCLAST™ (available from Novozymes A/S), NOVOZYMTM 188
(available from Novozymes A/S). Other commercially available
preparations comprising cellulase which may be used include
CELLUZYME™, CEREFLO™ and ULTRAFLO™ (Novozymes A/S),
LAMINEX™ and SPEZYME™ CP (Genencor Int.) and ROHAMENT™
7069 W (from Rohm GmbH).” Id.
FF13. Henderson teaches the use of “starch degrading enzymes,”
which include alpha-amylases to break down starches. Henderson ¶ 37.
FF14. The present specification teaches that a hemicellulase blend
enzyme comprises “a mixture of Non-Starch Polysaccharide (NSP)
hydrolyzing enzymes comprised of hemicellulase, xylanase, cellulase and
beta-glucanse.” Spec. ¶ 2.
Principles of Law
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).
“We have noted that evidence of a suggestion, teaching, or motivation
to combine may flow from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or, in some cases, from the
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nature of the problem to be solved.” In re Dembiczak, 175 F.3d 994, 999,
(Fed. Cir. 1999).
“Attorneys’ argument is no substitute for evidence.” Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
“[I]n general, a reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553, (Fed. Cir. 1994).

Analysis
Claim 1 is representative of the rejected claims. We agree with the
Examiner that claim 1 is obvious over the combination of Gutierrez and
Henderson. Gutierrez teaches the use of xylanase (a hemicellulase) or beta-
glucanase (a cellulase) to break down non-starch polysaccharides and reduce
the viscosity of a slurry prepared from ground grains. FF1–3. In a later
step, alpha amylase is added to the slurry to break down the starched into
maltodextrins. FF4. Additional xylanase and beta-glucanase can be added
with the alpha-amylase. FF5. Henderson teaches that mixtures of
hemicellulases and cellulases can be used to break down non-starch
polysaccharides. FF9–11. The references teach all the steps and enzymes
needed to break down both starch and non-starch polysaccharides. We agree
with the Examiner that it would have been obvious to one of ordinary skill in
the art at the time the invention was made to optimize the process by adding
the starch and non-starch polysaccharide hydrolyzing enzymes in one step
“in order to have further reduced the viscosity of the slurry and aided in
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breakdown of the starches” (Ans. 15).and provide for more simple sugar
substrates for saccharification (see Ans. 16).
Appellant argues that Gutierrez fails to teach the use of an alpha-
amylase and a hemicellulase blend enzyme during the pretreatment phase.
Appeal Br. 8. While this is true, the argument is unpersuasive. Gutierrez
does teach the use of an alpha-amylase with a blend of a hemicellulase
(xylanase) and a cellulase (beta-glucanase) in the liquefaction phase. FF4–5.
Henderson teaches the use of hemicellulase and cellulases together and that
the hemicellulase component can be a mixture of hemicellulases such as
xylanase and the cellulase component can be a mixture of cellulases. FF9–
11. We agree with the Examiner that the ordinary artisan would have found
it obvious “to optimize the steps by adding enzymes to attack both starch
and NSPs and provide a low viscous slurry that also provides more single
sugar substrates for eventual fermentation.” Ans. 15. That is, the ordinary
artisan would have understood that the preliquefaction and liquefaction
stages could be combined by using both the starch and non-starch
hydrolyzing enzymes together as taught by Gutierrez.
Appellant next argues that the single enzyme used by Gutierrez in the
preliquefaction step is not the same as using a hemicellulase blend enzyme.
Appeal Br. 9. Here again the Appellant’s argument is unpersuasive. As
noted above, Gutierrez does teach the use of both a hemicellulase and a
cellulase together. FF5. Henderson teaches the benefits of using mixture of
hemicellulases and cellulases as the hemicellulase and cellulase components.
FF9–11. Thus the references would lead one skilled in the art to use a blend
of hemicellulases and cellulases to hydrolyze non-starch polysaccharides.
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Appellant goes on to argue that “[a]dding alpha-amylase in
pretreatment in claim 1 is very different than adding alpha-amylase in
liquefaction in Gutierrez. These two process are not the same and perform
different functions.” Appeal Br. 9. However, Appellant fails to explain how
the action of alpha-amylase is different in the two processes. In the instant
Specification, as well as in both Gutierrez and Henderson, alpha-amylases is
used to hydrolyze starch. FF4, 13. Other than attorney argument, Appellant
has not offered any evidence that the alpha-amylase in the present invention
performs any other function other degrading starch. Attorney argument is
not evidence that can rebut a finding of obviousness. Johnson, 585 F.2d at
1581.
Appellant offers a similar argument with respect to the teachings of
Henderson. “Adding alpha-amylase in pretreatment in claim 1 is very
different than adding alpha-amylase in liquefaction in Henderson. These
two processes perform different functions and are not the same.” Appeal Br.
10. Here again, Appellant offers no evidence to support the argument that
addition of alpha-amylases in one phase is different than adding it in
another. More importantly, Appellant does not rebut the Examiner’s
reasoning that the ordinary artisan would have found addition at either step
obvious in order to achieve the goal of improved degradation of starches.
See, e.g., Ans. 17.
Appellant next argues that the pretreatment of Henderson is an acid
pretreatment and thus does not teach pretreatment using an alpha-amylase
and a hemicellulase blend enzyme. Appeal Br. 11. Henderson is not relied
upon by the Examiner for the teaching of using enzymes in the pretreatment
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phase. Henderson teaches the use of a blend of hemicellulases and
cellulases similar to that in claim 1 to hydrolyze non-starch polysaccharides.
FF9–11.
Appellant goes on to argue that the Examiner has failed to identify a
reason why one skilled in the art would combine the elements of the
references in the same manner as the claimed invention. Appeal Br. 12. The
Examiner, however, has explained the rationale for combining the
references. The Examiner found that
From both Gutierrez and Henderson, alpha-
amylase was clearly recognized in the art as being
effective to hydrolyze starch polysaccharides.
From Gutierrez, hemicellulases such as -
glucanase and xylanase were known to be effective
to hydrolyze NSPs. The prior art teaches all of the
steps and enzymes needed to break down both
starch and NSPs in one form or another where it
would have been obvious to a person of ordinary
skill in the art based on the prior art references to
optimize the steps by adding enzymes to attack
both starch and NSPs and provide a low viscous
slurry that also provides more single sugar
substrates for eventual fermentation. In other
words, inclusion of all enzymes capable of
breaking down all polysaccharides (both starch and
NSPs) in the slurry would have been obvious in
order to optimize hydrolysis of the
polysaccharides.
Ans. 17.
This reasoning is supported by Gutierrez where it teaches the desirability of
breaking down both starch and non-starch polysaccharides to increase
process efficiency. FF3 and 6.
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Appellant argues that Henderson is directed to processing the by-
products of ethanol production such as distiller’s grains and is not directed to
the initial processing of grains. Appeal Br. 14. Thus Henderson does not
teach pretreating a grain slurry with enzymes. Id. As discussed above, this
argument is unpersuasive. Henderson is cited for its teaching of the use of
blends of hemicellulases and cellulases to digest non-starch polysaccharides.
FF9–11. Hemicellulases and cellulases are used for the same purpose in
Gutierrez. FF3. In fact, Gutierrez and Henderson list some of the same
commercially available enzymes as useful cellulases. FF8 and 12. The
references show that the actions of these enzymes is the same whether the
starting material is grains as taught in Gutierrez or stillage or distiller’s grain
as taught by Henderson. The enzymes act to break down non-starch
polysaccharides. FF3 and 9. Thus, the teachings of Henderson are
applicable to the grains used in the instant invention.
Appellant argues that Gutierrez teaches away from the claimed
invention in that Gutierrez teaches that the steps of the disclosed method are
to be performed in order. Appellant misapprehends what it means to teach
away. To teach away, the reference must “suggest that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553, (Fed. Cir. 1994). Appellant has pointed to nothing in Gutierrez to teach
or suggest that using amylases and a hemicellulase blend enzyme in the
pretreatment phase would be unlikely to work or otherwise criticizes or
discredits the Examiner’s combination. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one
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alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”).
With respect to the remaining claims, we note that while Appellant
has listed them separately in the brief, Appellant has offered no separate
grounds for patentability. Appeal Br. 15–17.
Conclusion of Law
We find that the Examiner has established by a preponderance of the
evidence that claim 1 is obvious in view of Gutierrez combined with
Henderson as defined by 35 U.S.C. § 103(a).
Claims 2–30 have not been argued separately and, therefore, fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
SUMMARY
We affirm the rejection of claims 1–30.
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