Ex Parte Mistry et al

Patent Trial and Appeal Board

Apr 19, 2017

11631993 (P.T.A.B. Apr. 19, 2017)

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.
11/631,993 01/09/2007 Dinesh Mistry 32471/22363 1554
4743 7590 04/21/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
POPA, ILEANA
ART UNIT PAPER NUMBER
1633
NOTIFICATION DATE DELIVERY MODE
04/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINESH MISTRY and JATINDER SINGH KULLAR1
Appeal 2016-003547
Application 11/631,993
Technology Center 1600
Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness-type double patenting and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the obviousness rejection and reverse the obviousness-type
double patenting rejections.
1 Appellants identify the real party in interest as BASF SE of Ludwigshafen,
Germany. Reply Br. 2.
Appeal 2016-003547
Application 11/631,993
STATEMENT OF CASE
According to the Specification,
it is now possible to produce ... monomers [acrylamide and
acrylic acid monomers] directly from low purity acrylonitrile
containing high levels of acrolein (greater than 2 ppm, such as at least
5 ppm, and even at least 10 ppm). The monomers produced by this
process are of high-quality, and containing less than 2 ppm acrolein,
and usually undetectable levels or no acrolein. Hence, polymers free
from the deleterious effects of acrolein can be 10 conveniently
prepared from a monomer or monomer blend containing (meth)
acrylamide and (meth) acrylic acid (or salts) that have been obtained
directly from acrylonitrile that contains high levels of acrolein.
Spec. 11.
A prior Decision by the Patent Trial and Appeal Board (PTAB) was
rendered in this case on November 21, 2012, which affirmed the rejection of
claims 1—19 and 23—28 under 35 U.S.C. § 103(a) as being unpatentable over
Nagasawa in view of each of Pierce, Kawakami, and Hughes. The PTAB
concluded in the prior Decision that the cited references supported the
Examiner’s conclusion of obviousness for the subject matter recited in claims
1—19 and 23—28, for similar, but not exactly the same claims.2
2 Claim 1 of the prior Decision read:
1. A process of preparing an ethylenically unsaturated
amide or an ethylenically unsaturated carboxylic acid or salt
thereof from the corresponding ethylenically unsaturated nitrile
in which the nitrile is subjected to a hydration or hydrolysis
reaction in an aqueous medium in the presence of a biocatalyst,
wherein the nitrile contains above 2 ppm acrolein and the amide
or carboxylic acid or salt thereof contains less than 2 ppm
acrolein.
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Application 11/631,993
In response to the prior Decision, the Appellants filed a Request for
Continued Examination application cancelling claims 2—5, 9-12, 16, 19, and
25 and incorporating the limitations of the cancelled claims 2, 5, 19, and 25
in the independent claim 1. Ans. 2.
Claims
Claims 1, 6—8, 13—15, 17, 18, 23, 24, 26, 27, and 29 are on appeal.
Claim 1 is representative:
1. A process of preparing an ethylenically unsaturated
amide from the corresponding ethylenically unsaturated nitrile
for use of preparing a high molecular weight water-soluble or
water-swellable polymer, in which the nitrile is subjected to a
hydration reaction in an aqueous medium in the presence of a
biocatalyst, which biocatalyst is a microorganism of the
Rhodococcus genus that is capable of producing a nitrile
hydratase, wherein the nitrile contains above 2 ppm acrolein
and up to 500 ppm and the amide contains less than 2 ppm
acrolein; and wherein a step of separately removing acrolein
from the ethylenically unsaturated nitrile is avoided.
Cited References
U.S. Patent No. 5,863,750 (Jan. 26, 1999) (“Pierce”).
U.S. Patent No. 7,816,106 B2 (Oct. 19, 2010) (“’106 patent”).
Application No. 12/879,558 (now U.S. Pat No. 9,434,969 (Sept. 6,
2016)) (“’969 patent”).
JP 401125353 A (May 17, 1989) (“Kawakami”).
T. Nagasawa & H. Yamada, Microbial Production of Commodity
Chemicals, Pure & Appl. Chem. Vol. 67, No. 7, 1241-1256 (1995)
(“Nagasawa”).
Jonathan Hughes et al., Application of whole cell rhodococcal
biocatalysts in acrylic polymer manufacture, Antonie van
Leeuwenhoek, Vol. 74, 107—118 (1998) (“Hughes”).
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Application 11/631,993
Hideaki Yamada & Michihiko Kobayashi, Nitrile Hydratase and its
Application to Industrial Production of Acrylamide, Biosci. Biotech.
Biochem. Vol. 60, No. 9, 1391-1400 (1996) (“Yamada”).
Grounds of Rejection
1. Claims 1, 6—8, 13—15, 17, and 18 are provisionally rejected on
the ground of nonstatutory double patenting as being unpatentable over
claims 1, 5, 8, and 10-13 of copending Application No. 12/879,558, in view
of Yamada.
2. Claims 1, 6—8, 13—15, 17, and 18 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1—5 of the
’106 patent, in view of Yamada.
3. Claims 1, 6—8, 13—15, 17, 18, 23, 24, 26, 27, and 29 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nagasawa in
view of each of Pierce, Kawakami, and Hughes.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Office
Action at pages 2—19.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Where ... the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citation omitted).
Rejection 1- Obviousness-type Double Patenting
Claims 1, 6—8, 13—15, 17, and 18 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over claims
1,5,8, and 10-13 of copending Application No. 12/879,558 (now U.S. Pat.
No. 9,343,969 B2, issued Sept. 6, 2016 (“’969 patent”)), in view of Yamada.
Claim 1 of the ’969 patent reads as follows:
1. A method of producing an amide from the corresponding
nitrile comprising the following steps,
i) providing a microorganism of the genus Rhodococcus
capable of producing a nitrile hydratase biocatalyst,
ii) culturing the microorganism in a growth medium,
iii) storing the microorganism,
iv) contacting the nitrile with the microorganism in an
aqueous medium and thereby converting the nitrile to the
amide,
wherein the microorganism is retained in the growth
medium and the microorganism is not recovered from the
original fermentation medium and stored without further
downstream processing steps at a temperature above the
freezing point to 25° C. as non-actively growing free cells in
the growth medium that comprises water and urea or a urea
derivative.
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Application 11/631,993
The Examiner finds,
The instant claims do not recite urea [in the growth medium],
Yamada et al. teach that adding urea increases the levels of
nitrile hydrolase and that the reaction could take place at a
temperature below 10°C for 3 days (Table II and paragraph
bridging p. 1394 and 1395). It would have been obvious to one
of skill in the art, at the time the invention was made, to modify
the instant claims by adding urea to the growth medium and
conduct the reaction for 3 days at 10°C to achieve the
predictable result of obtaining enhanced levels of ethylenically
unsaturated amides. Thus, the instant claims and the
application claims are obvious variants.
Ans. 4.
Appellants contend that “removing acrolein from starting acrylonitrile
preparations comprising any amount of acrolein is not inherent to
Rhodococci for at least the reasons discussed hereinbelow in the discussion
of the “Obviousness Rejection.” App. Br. 9.
ANALYSIS
Obviousness-type double patenting entails a two-step analysis. First,
the allegedly conflicting claims are construed and, second, the difference(s)
between the claims are considered to determine whether the claims are
patentably distinct. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955,
968 (Fed. Cir. 2001). “A later patent claim is not patentably distinct from an
earlier patent claim if the later claim is obvious over, or anticipated by, the
earlier claim.” Id. “[OJviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) {citing In reRoyka, 490 F.2d 981, 985 (CCPA 1974)).
We do not find that the Examiner has provided sufficient evidence to
support a case of obviousness-type double patenting. In particular, the
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Examiner’s obviousness-type double patenting rejection relies only on the
claims of the ‘969 patent and Yamada (and does not include Pierce). What
is missing from the Examiner’s analysis is a disclosure or suggestion in the
prior art of the claim element “wherein the nitrile contains above 2 ppm
acrolein and up to 500 ppm and the amide contains less than 2 ppm
acrolein.” The Examiner fails to indicate in the analysis why this limitation
would have been obvious in view of the claims of ‘969 patent and Yamada
or alternatively that this limitation would have been necessarily present in
the prior art starting materials. See MEHL/Biophile Int 7. Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”)
Obviousness-type double patenting rejection 1 is reversed.
Rejection 2- Obviousness-type Double Patenting
Claims 1, 6—8, 13—15, 17, and 18 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1—5 of the
’106 patent, in view of Yamada.
Claim 1 of the ‘106 patent reads as follows:
1. A method of producing an amide from the corresponding
nitrile comprising the following steps,
i) providing a microorganism capable of producing a nitrile
hydratase biocatalyst,
ii) culturing the microorganism in a growth medium ,
iii) storing the microorganism in a storage medium that
comprises water and the growth medium in step ii),
iv) contacting the nitrile with the microorganism in the
storage medium of step iii) without recovery of the
microorganism using centrifugation or filltration and
thereby converting the nitrile to the amide,
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Application 11/631,993
wherein the microorganism is stored in step iii) as a non
actively growing culture in the storage medium and the term
non-actively growing culture means that the metabolism in
the microorganism cells is substantially Zero and the micro
organism is Rhodococcus rhodochrous NCIMB 41164.
The Examiner finds,
[B]oth claim sets are drawn to the same method of preparing an
ethylenically unsaturated amide. The instant claims do not
recite urea. Yamada et al. teach that adding urea increases the
levels of nitrile hydrolase and that the reaction could take place
at a temperature below 10°C for 3 days (Table II and paragraph
bridging p. 1394 and 1395). It would have been obvious to one
of skill in the art, at the time the invention was made, to modify
the instant claims by adding urea to the growth medium and
conduct the reaction for 3 days at 10°C to achieve the
predictable result of obtaining enhanced levels of ethylenically
unsaturated amides. Thus, the instant claims and the patent
claims are obvious variants.
Ans. 4—5.
We do not find that the Examiner has provided sufficient evidence to
support a case of obviousness-type double patenting. In particular, the
Examiner’s obviousness-type double patenting rejection relies only on the
claims of the ‘106 patent and Yamada (and does not include Pierce). What
is missing from the Examiner’s analysis is a disclosure in the prior art of the
claim element “wherein the nitrile contains above 2 ppm acrolein and up to
500 ppm and the amide contains less than 2 ppm acrolein.” In other words,
the claims require that the starting nitrile contain above 2 ppm acrolein and
up to 500 ppm and the amide reactant contains less than 2 ppm acrolein. For
example, “The nitrile used in the process of the invention will contain above
2 ppm acrolein (calculated by weight based on total weight of nitrite) and
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Application 11/631,993
often significantly higher than this, for instance 20 ppm and as much as 50
or 100 ppm or higher.” Spec. 10. The Examiner fails to indicate in the
analysis why this limitation would have been obvious or inherently present
in view of the ‘106 patent and Yamada. Mehl, 192 F.3d at 1365.
Obviousness-type double patenting rejection 2 is reversed.
Rejection 3 - Obviousness
Claims 1, 6—8, 13—15, 17, 18, 23, 24, 26, 27, and 29 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nagasawa in view of
each of Pierce, Kawakami, and Hughes. Neither Appellants’ Brief nor
Reply Brief argue any individual claims separately, thus, we select claim 1
as the representative claim.
FINDINGS OF FACT
The following findings of fact are highlighted.
1. Pierce discloses methods for the detoxification of a mixture of nitrile
and amide compounds. Abstract.
2. Pierce discloses that its method may use a biocatalyst of a
microorganism of the Rhodococcus genus. Col. 16-19.
3. According to Pierce, “In a preferred application of the invention, the
detoxification method is used to detoxify a mixture of nitrile
compounds or a mixture of nitrile and amide compounds in an
aqueous waste stream from a nitrile production plant.” Col 28.
4. According to Pierce, an
example of industrial nitrile production waste which can be detoxified
by the methods of the present invention, comprises: acrylonitrile at
50-300ppm; acrylamide at 0-400ppm\ acetonitrile at 200-5500 ppm;
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Application 11/631,993
acrolein at 0-300 ppm; propionitrile at 0-100 ppm; succinonitrile at
100-1500 ppm; fumaronitrile at 0-40 ppm and at least one reactive C-
N moiety.
Col. 28, emphasis added.
5. Example 9 discloses contacting Rhodococci with an aqueous solution
containing: 164.3 ppm acrylonitrile, 159.9 ppm acetonitrile, 51.4 ppm
acrylamide, 53.5 ppm acrolein, 51 ppm fumaronitrile, and 101.9
succinonitrile. Fig. 3 in Pierce shows that the induced Rhodococci
were capable of completely converting acrylonitrile to acrylamide as
demonstrated by the disappearance of acrylonitrile with concurrent
increase in acrylamide concentration from the starting 51.4 ppm to
about 225 ppm at 120 min. Fig. 3 also demonstrates that acrolein is
completely removed during this conversion process.
Pierce, col. 36; Ans. 14.
6. According to the Specification, page 10, “The nitrile used in the
process of the invention will contain above 2 ppm acrolein 20
(calculated by weight based on total weight of nitrite) and often
significantly higher than this, for instance 20 ppm and as much as 50
or 100 ppm or higher.”
ANAFYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer., and
adopt it as our own. We find that the Examiner has provided evidence to
support a prima facie case of obviousness. We provide the following
additional comment to the Examiner’s argument set forth in the Final
Rejection and Answer.
The Examiner finds,
Nagasawa et al. teach a method of producing acrylamide
(i.e., preparing an ethylenically unsaturated amide) from
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Application 11/631,993
acrylonitrile (i.e., the corresponding ethylenically unsaturated
nitrile) in an aqueous medium in the presence of a
microorganism belonging to the Rhodococcus genus capable of
producing nitrile hydratase, wherein the acrylonitrile is
subjected to hydration by the produced nitrile hydratase; one of
the microorganisms successfully used is Rhodococcus
rhodochrous J1 (claims 1, 6, 8, and 13) (p. 1244, p. 1246, and
p. 124 7). Nagasawa et al. teach that Rhodococcus rhodochrous
J1 also produces nitrilase and thus is used to produce acrylic
and methacrylic acid (p. 1248).
Ans. 6 (emphasis omitted). Nagasawa does not specifically teach the
presence or absence of acrolein in the starting or resulting materials, and
thus does not teach that their acrylonitrile contains above 2 ppm and up to
500 ppm acrolein. Ans. 6, Final Act. 6. The Examiner relies on Pierce for
this teaching. Id. Kawakami and Hughes teach additional Rhodococcus
strains, and their use as biocatalysts. Abstracts. Pierce
teaches that Rhodococci are capable of completely removing
acrolein during the process of converting acrylonitrile to
acrylamide, wherein the starting acrylonitrile preparation
comprises high acrolein concentrations, such as 53.5 ppm
acrolein (see Pierce, column 10, lines 20-27; Example 9 on
column 36, lines 35-60; Fig. 3).
Ans. 6. In addition, Pierce teaches that applications of its method may be for
treatment of waste streams from a nitrile production plant. FF3. An
example of example of industrial nitrile production waste which can be
detoxified by the methods of Pierce include a waste stream that comprises:
acrylonitrile at 50-300 ppm; acrylamide at 0-400 ppm\ acetonitrile at 200-
5500 ppm; acrolein at 0-300ppm\ propionitrile at 0-100 ppm; succinonitrile
at 100-1500 ppm; fumaronitrile at 0-40 ppm and at least one reactive C-N
moiety. FF4. Adding the minimum amount of nitrile and other components
in the initial, production waste stream disclosed in Pierce, equals 350 ppm
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nitrile constituents, and 0 ppm-300 ppm acrolein constituents and 0-400 ppm
amide constituents, which overlaps with the presently claimed amounts of
nitrile, amide and acrolein. “A prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003). Thus, it would have been obvious to one of ordinary skill in the art in
view of the disclosure of Pierce to begin with a nitrile production starting
material (waste stream) that includes above 2 ppm acrolein and up to 500
ppm nitrile, an amide constituent and less than 2 ppm acrolein, for use in a
method, as claimed.
Furthermore, both Pierce and Nagasawa establish that it was well
known at the time of the invention that Rhodococci are capable of removing
acrolein during the process of converting acrylonitrile to acrylamide,
wherein the starting acrylonitrile preparation comprises high acrolein
concentrations, such as 54 ppm acrolein3 (see Pierce, column 10, lines 20-
27; Example 9 on column 36, lines 38-60; Fig. 3). Ans. 6. One of ordinary
skill in the art would have understood from reading Nagasawa that if larger
amounts of acrolein (54 ppm) could be completely removed from acrolein
starting material using Rhodococci, that Rhodococci could also remove
acroclein from starting material having less than 2ppm of acrolein or as
much as 50 ppm acrolein.
3 According to the Specification, page 10, “The nitrile used in the
process of the invention will contain above 2 ppm acrolein 20 (calculated by
weight based on total weight of nitrite) and often significantly higher than
this, for instance 20 ppm and as much as 50 ... ppm.”
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We, therefore, agree with the Examiner that
one of skill in the art would have reasonably expected that the
use of Rhodococci of Nagasawa et al. would also efficiently
remove acrolein from preparations during the process of
acrylamide preparation when any amount of acrolein was
present in the starting material of acrylonitrile, and would have
found it an obvious part of the described process of Nagasawa
et al. with any starting preparation (i.e. any acrolein amount in
the starting acrylonitrile starting material). While Nagasawa et
al. did not describe the removal of acrolein from a reaction
mixture, clearly this would have been a consequence in the
described methods of using Rhodococci as described and
demonstrated by Pierce (i.e., wherein a separate step of
removing acrolein is avoided). Thus, one of skill in the art
would have found obvious to use the method of Nagasawa et al.
with any amount of acrolein in the starting acrylonitrile starting
material.
Ans. 6—7, emphasis added.
Furthermore, the Examiner has made a reasoned case that the method
of Nagasawa could be used with any amount of acrolein, nitrile or amide in
the starting material, as evidenced by Pierce. Under the principles of In re
Best and In re Peterson, cited above, the burden of proof shifts to the
Appellants to show that any starting material containing well known nitrile
production waste streams as disclosed in Pierce could not be used in the
method of Nagasawa and that well known nitrile production waste streams
do not meet the claim 1 limitations, “wherein the nitrile contains above 2
ppm acrolein and up to 500 ppm and the amide contains less than 2 ppm
acrolein; and wherein a step of separately removing acrolein from the
ethylenically unsaturated nitrile is avoided.” Claim 1. Appellants have
provided no evidence on this record that the method of Nagasawa cannot be
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used on any nitrile, amide and acrolein starting material, and does not meet
the claim limitations.
Finally, Pierce discloses that the species of Rhodococcus, the
temperature, pH, rate of detoxification, nature of the starting materials and
other reaction conditions are result effective variables in the method for the
detoxification of nitrile and amide compounds. Pierce, Figs. 1-5, col. 14,
cols 16-20, col. 28, cols. 32-36. “[DJiscovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of
the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Geisler, 116
F.3d 1465, 1469 (Fed. Cir. 1997). Appellants provide no evidence that the
selection of the species of Rhodococcus or the amount of compositions in
the starting material are not result effective variables in the methods of
Nagasawa and/or Pierce. The selection or optimization of these variables is
within the skill of one of ordinary skill in the art.
Appellants contend that, “as shown in Pierce Figure 3, the
Rhodococcus biocatalyst of Pierce Example 9 actually consumes the desired
acrylamide product of Nagasawa, at least over the timeframe where acrolein
is reduced to levels below 2 ppm.” Reply Br. 7. Figure 3 of Pierce is
reproduced below.
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Application 11/631,993
. . . . «. . . . StmtQNETR)l£
... 5-...«o:«£
... ■... ACROLEIN
—RjMN»xe!T»£
ACR¥LAMffi£
Pierce, Fig. 3 is a graph showing the ability of Rhodococcus sp. strain
DAP 96253 induced as taught herein to detoxify a mixture of nitrile and
amide compounds.
Appellants further contend that
As seen in [Pierce] Figure 3, acrylamide concentration
increases for the first 90 minutes, during which time acrolein
concentration decreases from about 50 ppm initial concentration to
about 25 ppm (i.e., still above the recited 2 ppm threshold in the
claims). After 90 minutes, however, acrylamide is consumed (i.e., as
evidenced by the negative slope of the concentration vs. time curve)
during the timeframe when acrolein is eventually reduced to non-
detectable levels. Accordingly, if the Rhodococcus biocatalyst of
Pierce were used for short reaction times in Nagasawa’s method, the
resulting acrolein concentration would not be low enough to meet the
recited claim limitation of less than 2 ppm.
Reply Br. 7. We are not persuaded. Nagasawa teaches the use of
Rhodococcus sp. J1
biocatalyst for the commercial production of acrylamide from
acrylonitrile. Screening with various aromatic nitrites had shown
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Application 11/631,993
that R. rhodochrous J1 was easy to culture, that the stability of resting
cells was high und that high yields of aromatic and heterocyclic
amides could be produced during nitrile conversions. Rhodococcus
rhodochrous J1 was found to tolerate acrylonitrile and to produce high
concentrations of acrylamide with barely detectable levels of acrylic
acid and hence was a suitable catalyst for the industrial production of
acrylamide (Nagasawa & Yamada 1989).
Nagasawa, p. 113, col. 1. Furthermore, Pierce discloses that the selection of
the species of Rhodococcus biocatalyst used is a result effective variable,
which can be optimized. Pierce, cols. 32—34. Moreover, “[t]he fact that the
motivating benefit comes at the expense of another benefit. . . should not
nullity its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.” Medichem S.A. v. Rolabo S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006). Thus, the fact that Pierce Fig. 3 might suggest
allowing the reaction to proceed for a longer amount of time to fully remove
acrolein, as desired, may sacrifice some acrylamide product recovery, does
not nullify the relevance and usefulness of Pierce as a prior art reference.
The obviousness rejection is affirmed for the reasons of record.
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection,
which is affirmed for the reasons of record. The obviousness-type double
patenting rejections are reversed. All pending, rejected claims fall.
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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)(iv).
AFFIRMED
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