Ex parte Lehtonen

Board of Patent Appeals and Interferences

Sep 14, 2000

08287056 (B.P.A.I. Sep. 14, 2000)

Application for patent filed August 8, 1994. According to appellant, this application is a1
continuation of application 07/852,129 filed June 15, 1992, now abandoned.
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and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAAVO LEHTONEN
____________
Appeal No. 1996-3318
Application No. 08/287,0561
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 through
8, which are all of the claims pending in this application. Claim 1 is illustrative and reads
as follows.
1. A process of combatting micro-organisms contained in industrial
processes, comprising adding glucose oxidase and optionally glucose or a
source of glucose to industrial process waters or slurries.
Appeal No. 1996-3318
Application No. 08/287,056
Recitation of "Claims 1-1 and 7-8 are rejected under 35 U.S.C. § 112, first paragraph, ... " on page2
3 of the examiner's answer appears to be an obvious typographical error, with claims 1-2 and 7-8 intended.
Moreover, since the final rejection of claims 3-6 under 35 U.S.C. § 112, second paragraph, is not repeated
in the answer, it is presumed to have been withdrawn. Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
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The references relied on by the examiner are:
Baker 2,482,724 Sep. 20, 1949
Hitzman 4,414,334 Nov. 8, 1983
Orndorff 4,478,683 Oct. 23, 1984
Gr. Brit. Patent (Alfa-Laval)1 468 405 Mar. 23, 1977
ISSUES
Claims 1-2 and 7-8 stand rejected under 35 U.S.C. § 112, first paragraph, for lack
of enablement. Claims 1-8 stand rejected under 35 U.S.C. § 103 as being unpatentable2
over Orndorff and Alfa-Laval in view of Hitzman and Baker.
We REVERSE both rejections.
In reaching our decision in this appeal we have given careful consideration to the
appellant's specification and claims and to the respective positions articulated by the
appellant and the examiner. We make reference to the examiner's answer (Paper No. 21,
mailed January 18, 1996) for the examiner's reasoning in support of the rejections and to
the appellant's brief (Paper No. 20, filed November 24, 1995) for the appellant's
arguments thereagainst.
Appeal No. 1996-3318
Application No. 08/287,056
The examiner cited “M.P.E.P. §§ 706.03(n) and 706.03(z)” (answer, page 3). These sections are3
entitled “Correspondence of Claims and Disclosure” and “Undue Breadth,” respectively, and last appeared in
the Sixth Edition of the MPEP (Jan. 1995). See Rev. 1 of the Sixth Edition of the MPEP (Sept. 1995). We
observe that both of these sections remained unchanged since at least Rev. 6 of the Fifth Edition of the
MPEP (Oct. 1987). Neither section refers to 35 U.S.C. § 112, first paragraph, in whole or by requirement,
and thus we will not further refer in this decision to either of these MPEP sections.
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OPINION
The claimed invention is directed to a method comprising adding glucose oxidase,
and optionally glucose or a source of glucose, to industrial process waters or slurries to
combat, i.e., decrease the number of, microorganisms therein.
1. Rejection of claims 1-2 and 7-8 under 35 U.S.C. § 112, first paragraph (enablement)
According to the examiner, the claimed process requires addition of both glucose
oxidase and glucose to the industrial process waters or slurries to obtain an industrially
significant reduction of microorganisms therein, i.e., addition of glucose is not optional and
use of a source of glucose rather than glucose per se is not effective (answer, pages 3-4
and 7-10). 3
The enablement requirement of 35 U.S.C. § 112, first paragraph, requires that the
patent specification enable “those skilled in the art to make and use the full scope of the
claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk A/S,
108 F.3d at 165, 42 USPQ2d at 1004 (quoting In re Wright, 999 F.2d 1557, 1561, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993)). A specification of a patent application is
presumed to comply with the enablement requirement of 35 U.S.C. § 112, first paragraph.
Appeal No. 1996-3318
Application No. 08/287,056
We note that the examiner has not rejected the claimed invention on the basis that an4
"industrially significant" reduction of microorganisms in industrial process waters or slurries is required for
utility (see answer, paragraph bridging pages 9-10).
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An examiner may reject claims in a patent application on the basis of an alleged failure of
the applicant to comply with the enablement requirement if the examiner can establish by a
preponderance of the evidence that there is reason to doubt the objective truth of the
statements contained in the specification. In re Marzocchi, 439 F.2d 220, 223-34, 169
USPQ 367, 369-70 (CCPA 1970). In our opinion, the examiner has not sustained her
burden for making the enablement rejection for the following reasons.
First, the data in specification Tables II and VII show a decrease in microbe count
following addition of glucose oxidase alone to a starch slurry and a groundwood slurry,
respectively (in Table II, page 6, compare the microbe count for test nos. 1 and 5,
especially at 1 and 3 days; in Table VII, page 11, compare the bacteria count for test nos.
1 and 4, especially at 0 and 5 hours). Second, the claimed process does not require
obtaining and/or maintaining any particular level of microbe content within the industrial
process water or slurry for any particular time period. Third, it appears inconsistent for the4
examiner to maintain on the one hand that one of ordinary skill in the art would have
recognized (i) that a liquid to which glucose oxidase is being added
Appeal No. 1996-3318
Application No. 08/287,056
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may itself contain glucose substrate, (ii) that additional glucose substrate may be added to
the liquid and (iii) that auxiliary enzymes may be added to the liquid to release glucose
from a precursor substance therein, i.e., a "source of glucose" (see e.g., Alfa-Laval, pages
2-3; Baker, col. 4, line 75 - col. 5, line 18), and on the other hand to argue that those skilled
in the art would have found the data presented in the specification unpredictable. In other
words, it appears that those skilled in the art would have reasonably expected a glucose
oxidase catalyzed biocide to be more effective and/or longer lasting in a system which
added glucose substrate to a liquid, than in a system which relied solely on any
endogenous glucose in the liquid to provide the needed glucose substrate. Therefore, the
rejection under 35 U.S.C. § 112, first paragraph, is reversed.
2. Rejection of claims 1-8 under 35 U.S.C. § 103 over Orndorff, Alfa-Laval, Hitzman
and Baker
To establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the reference or combine reference teachings and a
reasonable expectation of success. The prior art must teach or suggest all the claim
limitations. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Appeal No. 1996-3318
Application No. 08/287,056
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Orndorff describes a dehydrogenase enzyme catalyzed biocide system for use in
industrial process waters wherein added peroxidase enzyme in the presence of hydrogen
peroxide oxidizes phenolic compounds present in or added to a process stream to
generate antibacterial activity (col. 1, line 46 - col. 2, line 22).
Alfa-Laval discloses treating a liquid, e.g., milk, subject to microbial deterioration on
storage by enzymatically generating sufficient hydrogen peroxide in situ to reduce or inhibit
the action of microorganisms in the liquid (page 1, lines 69-77 and page 1,
line 90 - page 2, line 3).
According to the examiner,
It would have been obvious to one of ordinary skill in the art at the time
the invention was made to substitute the glucose oxidase/glucose system [of
Alfa-Laval] for the enzyme system of Orndorff with the expectation that the
hydrogen peroxide known to be produced as a result of the interaction of the
two components would have a microbiocidal effect in industrial process
streams ... . [Answer, page 13.]
However, the examiner has failed to explain where the suggestion or motivation to
substitute the biocide system/compound of Alfa-Laval for the biocide system/compound of
Orndorff is found. While both Orndorff and Alfa-Laval disclose enzymatically catalyzed
biocide systems, these systems differ in the biocide generated, the catalyzed
Appeal No. 1996-3318
Application No. 08/287,056
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reactants and the nature of the liquids treated. The biocide generated by Orndorff is an
oxidized phenolic compound, e.g.,
H O + quinone 6 2 H O + hydroquinone,2 2 2hydrogen peroxidase
whereas the biocide generated by Alfa-Laval is hydrogen peroxide, i.e.,
glucose + O 6 gluconic acid + H O2 2 2 .glucose oxidase
The phenolic compound which is oxidized to provide the biocide of Orndorff is
endogenous to the liquid being treated, i.e., to industrial process waters. The examiner
has not established that milk contains such phenolic compounds and admits that "the
liquids of industrial process streams are not distinctly disclosed" by Alfa-Laval (answer,
page 5).
The examiner does not point out, and we do not find, where Hitzman and/or Baker
supply the missing suggestion or motivation. Hitzman removes ambient oxygen in liquids
susceptible to corrosion and oxidative degradation, e.g., oil field fluids, circulating water
systems, alcoholic beverages and foodstuffs, with an alcohol/alcohol oxidase system.
Baker removes oxygen from canned milk and other industrial products using various
oxidase/substrate systems (cols. 1-2). Rather, both Hitzman and Baker suggest that the
presence of hydrogen peroxide may be undesirable in some liquids
Appeal No. 1996-3318
Application No. 08/287,056
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and disclose adding catalase to remove the hydrogen peroxide as it is produced (In
Hitzman see col. 3, lines 14-18, 57-60; col. 4, lines 16-20; and EXAMPLE II, cols.
14-15. In Baker see col. 3, lines 3-30). Indeed, Example 3 in Baker describes adding
lactase, glucose oxidase and catalase to milk, wherein the lactase converts the lactose in
the milk to glucose, the glucose oxidase oxidizes the glucose and the catalase removes
the hydrogen peroxide by-product as it is produced (paragraph bridging cols. 4-5).
The only place we find the suggestion to combat microorganisms in industrial
processes by adding glucose oxidase and optionally glucose or a source of glucose to
industrial process waters or slurries is in the appellant’s specification. Thus, we find that
the examiner has relied on impermissible hindsight in making her determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)
(“It is impermissible to engage in hindsight reconstruction of the claimed invention, using
the applicant’s structure as a template and selecting elements from references to fill the
gaps.”). Therefore, we conclude that the examiner has not established a prima facie case
of obviousness as to claims 1-8 over Orndorff, Alfa-Laval, Hitzman and Baker.
Appeal No. 1996-3318
Application No. 08/287,056
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CONCLUSION
To summarize, the decisions of the examiner to reject claims 1-2 and 7-8 under 35
U.S.C. § 112, first paragraph, for lack of enablement and to reject claims 1-8 under 35
U.S.C. § 103 as being unpatentable over Orndorff and Alfa-Laval in view of Hitzman and
Baker are reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
Appeal No. 1996-3318
Application No. 08/287,056
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CHRISTOPHER L. STONE
GENENCOR INTERNATIONAL, INC.
180 KIMBALL WAY
SO. SAN FRANCISCO, CA 94080
CAS/jlb