Ex Parte Otto

Board of Patent Appeals and Interferences

Oct 28, 2011

10514161 (B.P.A.I. Oct. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROEL OTTO
__________

Appeal 2010-008422
Application 10/514,161
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2010-008422
Application 10/514,161

2
STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows:
1. A method for the production of lactic acid or a salt thereof wherein
starch is subjected to a process of simultaneous saccharification and
fermentation, the method comprising:
saccharifying starch in a medium comprising at least a glucoamylase
and simultaneously fermenting the starch using a microorganism; and
optionally isolating lactic acid from the medium;
wherein:
the microorganism is at least one microorganism selected from
the group consisting of moderately thermophilic Bacillus and moderately
thermophilic Geobacillus, the microorganism being adapted to the pH range
of 5-5.80.

The following grounds of rejection are before us for review:
I. Claims 1-7 and 9-11 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Schneider,
1

Combet-Blanc ’537,
2
and Combet-Blanc (1995).
3

II. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Schneider, Combet-Blanc
’537, and Combet-Blanc (1995) as further combined with Tsai.
4

We reverse.

1
Schneider, EP 0 354 828, published Feb. 14, 1990 (English translation).
2
Combet-Blanc et al., US 6,022,537, issued Feb. 8, 2000.
3
Combet-Blanc et al., Effect of pH on Bacillus thermoamylovorans Growth
and Glucose Fermentation, 61 APPLIED AND ENVIRONMENTAL
MICROBIOLOGY 656-659 (1995).
4
S.P. Tsai and S. H. Moon, An Integrated Bioconversion Process for
Production of L-Lactic Acid from Starchy Potato Feedstocks, 70-72 APP.
BIOCHEM. BIOTECH. 417-425 (1998).
Appeal 2010-008422
Application 10/514,161

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ISSUE
Does a preponderance of the evidence of record support the
Examiner’s conclusion that the combination of Schneider, Combet-Blanc
’537, and Combet-Blanc (1995), and/or as further combined with Tsai,
renders obvious the method of independent claim 1, wherein the
microorganism used in the method has been adapted to the pH range of 5-
5.80?
FINDINGS OF FACT
FF1. According to the Specification, the “present invention pertains to a
method for the production of lactic acid or a salt thereof wherein the starch
is subjected to a process of simultaneous saccharification and fermentation”
(Spec. 1).
FF2. The Specification teaches:
It is an advantage to adapt the thermophilic lactic acid-
producing microorganism to the pH range as used in the
process. The pH strongly influences the activity. The enzymes
become progressively more active at low pH values. However,
the common pH ranges in which moderately thermophilic lactic
acid-producing microorganism perform optimal is between 6.0
and 7. Therefore, it is preferred to use moderately thermophilic
lactic acid-producing microorganism, which has been adapted
to have its maximum performance at low pH (between 5 and 6,
preferably between 5.35 - 5.80, most preferably between 5.35 -
5.80). The technique of adapting the microorganism is known
in the art. Adaptation or acclimation of moderately
thermophilic lactic acid-producing bacteria to improve the
performance at pH 5.35 - 5.8 was accomplished by carrying out
40 - 50 serial transfers in fermentation medium at pH 5.6.

(Id. at 9.)
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FF3. The Examiner’s statement of the obviousness rejections may be found
at pages 4-10 of the Answer. We highlight the following findings of the
Examiner.
FF4. In both obviousness rejections, the Examiner relies on Combet-Blanc
(1995) for the limitation that the microorganism used in the method has been
adapted to the pH range of 5-5.80.
FF5. The Examiner finds that Combet-Blanc (1995) teaches that “lactate
production per mole of glucose was highest at pH 5.60 (abstract and p. 657,
table 2, row 1, columns 1-2)” (Ans.
5
5).
FF6. Combet-Blanc (1995) teaches that Bacillus thermoamylovorans, is a
moderately thermophilic bacterium isolated from palm wine (Combet-Blanc
(1995), Abstract).
FF7. Combet-Blanc (1995) teaches that the bacterium grew from pH 5.4 to
8.5, with an optimum growth at 7.0 (id.).
FF8. Combet-Blanc (1995) teaches that under acidic and alkaline
conditions, the rate of consumption of glucose was reduced, but that the
concentration of lactate increased significantly compared to those of other
products (id. at p. 658, first column).
FF9. Combet-Blanc (1995) teaches that lactate represented 62.6% of the
fermentation product at a pH of 5.6 (id.).
FF10. The Examiner concludes that “one of ordinary skill in the art would
have been motivated to use a strain adapted to the claimed pH because
Combet-Blanc (1995) teaches that lactic acid production is highest at this
pH” (Ans. 6; see also id. at 9).

5
All references to the Answer are to the Answer dated February 24, 2009.
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FF11. The Examiner also finds that “Combet-Blanc (1995) teaches the use
of a strain of the organism adapted to the claimed pH range to produce lactic
acid” (id. at 14).
FF12. Specifically, according to the Examiner, the teaching of Combet-
Blanc (1995) of culturing the microorganism at a pH of 5.6 meets the
limitation of being adapted to the pH range of 5-5.80 (First Supp. Ans.
6
2).

PRINCIPLES OF LAW
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” Id. 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.” Id. “Often, it will
be necessary . . . to look to interrelated teachings of multiple [references] . . .
and the background knowledge possessed by a person having ordinary skill
in the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed[.]” Id. “[T]his analysis
should be made explicit,” and it “can be important to identify 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.” Id. “We
must still be careful not to allow hindsight reconstruction of references to

6
All references to the First Supplemental Examiner’s Answer are to the
Supplemental Examiner’s Answer dated July 10, 2009.
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reach the claimed invention without any explanation as to how or why the
references would be combined to produce the claimed invention.”
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir.
2008).

ANALYSIS
Appellant argues that none of the references relied upon by the
Examiner, either alone or in combination, teach or suggest the use of a
microorganism that has been adapted to the pH range of 5-5.8, or provide a
rationale to use such a microorganism (App. Br. 14). According to
Appellant, “a microorganism that has been adapted to pH 5-5.80 has been
(1) subjected to an adaptation process (treatment), such as multiple serial
transfers in a fermentation medium at a selected pH, (2) to adapt the
microorganism to have a maximum lactic acid production within a pH
range” (Reply Br. dated April 10, 2009, p. 3).
The Examiner’s position appears to be that because of Combet-
Blanc’s (1995) teaching of culture of the microorganism at a pH of 5.6, the
reference inherently teaches a microorganism that has been adapted to a pH
of 5.6. The Specification, however, teaches that adaptation requires
affirmative steps, such as by carrying out 40 - 50 serial transfers in
fermentation medium at pH 5.6. Thus, while the Specification does not limit
the method of adapting the microorganism to the serial transfers, it supports
Appellant’s assertion that the ordinary artisan would not interpret “adapting”
a microorganism as simply culturing the microorganism.
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Application 10/514,161

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The Examiner’s interpretation, however, equates “adapted” to
“cultured,” essentially reading the limitation of “adapted” out of the claim,
which we decline to do. See Bicon, Inc. v. Straumann Co., 441 F.3d 945,
951 (Fed. Cir. 2006) (noting that claim language should not [be] treated as
meaningless.”). Thus, as the Examiner has not provided any evidence or
scientific reasoning as to why the ordinary artisan would have adapted the
Bacillus thermoamylovorans microorganism of Combet-Blanc (1995) to a
pH range of 5-5.8, such as by carrying out 40 - 50 serial transfers in
fermentation medium at pH 5.6, or by other methods known in the art to
perform such adaptation, we are compelled to reverse the rejection.

CONCLUSION OF LAW
We conclude that a preponderance of the evidence of record does not
support the Examiner’s conclusion that the combination of Schneider,
Combet-Blanc ’537, and Combet-Blanc (1995), and/or as further combined
with Tsai, renders obvious the method of independent claim 1, wherein the
microorganism used in the method has been adapted to the pH range of 5-
5.80.

REVERSED

cdc