Ex parte Pollock

Board of Patent Appeals and Interferences

Sep 30, 1997

07825632 (B.P.A.I. Sep. 30, 1997)

Application for patent filed January 24, 1992. Accord-1
ing to applicants, the application is a division of Applica-
tion 07/517,551, filed April 24, 1990, which is a continuation
of Application 07/180,945, filed April 12, 1988, now aban-
doned, which is a continuation-in-part of Application
07/038,302, filed April 14, 1987, now abandoned.
1
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not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS J. POLLOCK
and LINDA THORNE

_____________
Appeal No. 95-0448
Application 07/825,6321
______________
HEARD: April 11, 1997
_______________
Before SCHAFER, Vice Chief Administrative Patent Judge, and
GRON and WEIMAR, Administrative Patent Judges.
WEIMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0448
Application 07/825,632
2
This is an appeal from the examiner's decision finally
rejecting claims 28 and 5, which are all of the claims still
pending in the application.
Claims 28 and 5 read as follows:
28. A method for producing xanthan gum comprising cul-
turing a Xanthomonas campestris strain having a modification
of exogenous genetic information capable of complementing an
XgsG mutation, wherein said exogenous genetic information
comprises exogenous DNA having a restriction map of a segment
selected from the group consisting of c1H5, c1, c9H7, c82, c9,
a fragment of c9H7 comprising c9e, a fragment of c82 compris-
ing c9e, a fragment of c9 comprising c9e, and c9e, and is
obtained from a Xanthomonas campestris strain.
5. The method of Claim 28, wherein said strain is capa-
ble of producing at least 1 gram of xanthan per liter of
culture medium per hour.
The single reference relied upon by the examiner is:
Rogovin et al. (Rogovin), “Production of Polysaccharide with
Xanthomonas campestris,” Journal of Biochemical and
Microbiological Technology and Engineering, Vol. III, No. 1,
pages 51-63 (1961).
Claims 28 and 5 stand rejected under 35 U.S.C. § 103 over
Rogovin. We reverse this rejection.
Background
Xanthan gum is an exopolysaccharide produced by bacteria,
particularly by strains of Xanthomonas campestris. Commer-
cially available strains of Xanthomonas campestris had been
Appeal No. 95-0448
Application 07/825,632
3
used to produce xanthan gum prior to the effective filing date
of this application. Xanthan gum is water-soluble and has a
high
viscosity. Thus it is useful as a thickener in various food
and cosmetic products. The claimed fermentation method is
characterized by appellants as providing a higher yield of
xanthan gum than had been known in the art prior to this
invention. The method comprises culturing a strain of
Xanthomonas campestris, wherein the strain has been altered
via the addition of a specific exogenous DNA fragment. Prior
to being altered by an added exogenous DNA fragment, the
unmodified starting strain of the claims is a mutant incapable
of xanthan production, referred to as an Xgs mutant. The-
source of the added DNA is a genome of Xanthomonas campestris.
The claim identifies the added DNA by genomic restriction map
segments which are carried on plasmids. Each of the
Appeal No. 95-0448
Application 07/825,632
4
restriction map segments claimed as the added DNA is capable
of restoring xanthan production to a mutant strain which has
lost its ability to produce xanthan, i.e. an Xgs mutation. -
See page 9, line 1, through page 11, line 10, and Tables 1 and
2 together with their accompanying explanations from the
examples of the specification.
Discussion
Claims 28 and 5 stand rejected under 35 U.S.C. § 103 over
Rogovin. Rogovin discloses a fermentation method in which a
strain of Xanthomonas campestris is cultured under conditions
which are effective for the production of xanthan gum. The
strain used in Rogovin was obtained from a depository. The
rejection, as recited on page 4 of the Examiner’s Answer
states:
It would have been obvious to one of ordinary
skill in the art to have made xanthan gum by the
methods of Rogovin et al. employing a xanthan
gum-producing strain of Xanthomonas campestris.
Novelty in the starting material and/or the
final product does not necessarily lend
patentability to a known process of making.
The motivation to have used the methods of
Rogovin et al. would have been that such
Appeal No. 95-0448
Application 07/825,632
5
culturing of Xanthomonas campestris is
essentially the only way to produce xanthan
gum, and said bacterium is the original source
of xanthan gum.
Much of the discussion in the Brief and in the rebuttal
section of the Examiner’s Answer focuses on the “logic” of the
decision in In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.
Cir. 1985) and its applicability to our determination of the
obviousness of the claimed subject matter. The Brief and the
Reply Brief also suggest that In re Kuehl, 475 F.2d 658, 177
USPQ 250 (CCPA 1973) and In re Mancy, 499 F.2d 1289, 182 USPQ
303 (CCPA 1974), respectively, are applicable to the questions
of obviousness at issue.
A conclusion of obviousness under 35 U.S.C. § 103 is
fact-determinative. Prior decisions in other cases with
substantially distinct sets of facts do not control
determinations of patentability under 35 U.S.C. § 103 in
Appeal No. 95-0448
Application 07/825,632
6
subsequent applications. As stated in In re Brouwer, 77 F.3d
422, 425-26, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996):
The Examiner erred by resting his prima
facie case of obviousness on the purportedly
controlling nature of our decision in Durden
rather than on particularized findings,
required by Graham, 383 U.S. at 17, regarding
a set of one or more references that would
make the claimed process obvious, an error
the Board failed to correct. As we clearly
indicated in In re Dillon, a recent in banc
decision, “[w]hen any applicant properly
presents and argues suitable method claims,
they should be examined in light of all ...
relevant factors, free from any presumed
controlling effect of Durden” or any other
precedent. 919 F.2d 688, 695, 16 USPQ2d 1897,
1903 (Fed. Cir. 1990) (in banc) cert. denied,
500 U.S. 904 (1991). See also In re Ochiai,
72 F.3d 1565, 1570, 37 USPQ2d 1127, 1132
(Fed. Cir. 1995) (“[T]here are not 'Durden
obviousness rejections’ or 'Albertson
obviousness rejections,’ but rather only
section 103 obviousness rejections.”).
Having compared Brouwer’s claims to the prior
art of record, we reverse the rejection of
claims 8 through 27 as an incorrect conclusion
reached by an incorrect methodology.
Thus, we review the examiner’s findings of fact and follow
Graham v. John Deere, Co., 383 U.S. 1, 148 USPQ 459 (1966) to
avoid reaching an incorrect conclusion by an incorrect
methodology.
Appeal No. 95-0448
Application 07/825,632
7
First we ascertain the scope and content of the prior
art. In this record, the prior art is the teachings of the
Rogovin reference and the art discussed in the specification
of this application at pages 1 through 4, which is consistent
with Rogovin. Rogovin teaches that strains of Xanthomonas
campestris were known, as well as methods of culturing these
strains to produce xanthan gum, prior to the filing date of
this application.
In determining obviousness, all limitations in a claim
must be given careful consideration to ascertain the
differences between the claimed invention and the prior art.
In this case, the only difference is a difference in the
Xanthomonas campestris bacterial strain that is used in the
culturing method. This distinction, however, cannot be
ignored when discerning the invention as a whole for purposes
of an analysis under 35 U.S.C. § 103.
Rogovin does not describe a bacterium which meets the
limitations of claims 28 and 5, herein. Rogovin teaches a
method of culturing a strain of Xanthomonas campestris that
was obtained from the ARS Culture Collection at the U.S.D.A.’s
Appeal No. 95-0448
Application 07/825,632
8
Northern Regional Research Laboratory in Peoria, Illinois.
See the
Summary and the footnote on the first page of Rogovin. The
strain is designated as Xanthomonas campestris NRRL B-1459.
The reference is silent as to the genetic history of this
particular strain. We learn from Rogovin that the strain
obtained from the depository is an Xgs strain, which+
successfully produces xanthan gum. There is no basis upon
which to find that this strain was an Xgs mutant which has-
been complemented by a genomic restriction segment selected
from the group of genomic segments set forth in claim 28.
The examiner appears to accept the novelty of the
bacterium used in the claimed fermentation method. The
rejection states at page 4 of the Examiner’s Answer:
Novelty in the starting material and/or the
final product does not necessarily lend
patentability to a known process of making.
In response to appellants’ arguments on expectation of
success and unpredictability with respect to xanthan gum
Appeal No. 95-0448
Application 07/825,632
9
production from mutant bacteria, the examiner refers to
applicants’
construction of the xanthan-producing mutants in accordance
with the claims. For example, the following appears in the
Examiner’s Answer, page 8, lines 10-22:
In the present case, the property in question
is the presence in the Xanthomonas campestris
strain of inserted copies of the DNA which
directs xanthan gum synthesis, combined with
the fact that the wild type parent strain could
produce xanthan gum. Appellants further argue
that it could not have been known that the
genetic modification did not eliminate the
ability of the strain to produce xanthan gum.
However . . . one of ordinary skill would not
have had the expectation that said modification
would have eliminated xanthan gum production.
To the contrary, one of ordinary skill would have
expected higher production due to the rationale
in the art with which the recited strain was
designed.
Hindsight shall not form the basis of a conclusion of
obviousness under 35 U.S.C. § 103. “Both the suggestion and
the expectation of success must be founded in the prior art,
not in applicant’s disclosure.” In re Dow Chemical Co., 837
F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). To the
extent that the examiner’s comments relate to the obviousness
of the strains required in claims 28 and 5, no supporting
Appeal No. 95-0448
Application 07/825,632
10
evidence is provided beyond the instant disclosure. The prior
art of record does not show knowledge of the critical feature
of the invention; i.e., an addition of the DNA segments which
are responsible for
re-establishing xanthan gum production in an Xgs mutant. As-
the Federal circuit stated in Sensonics, Inc. v. Aerosonic
Corp.,
81 F.3d 1566, 1570, 38 USPQ2d 1551, 1554 (Fed. Cir. 1996):
To draw on hindsight knowledge of the
patented invention, when the prior art
does not contain or suggest that knowledge,
is to use the invention as a template for
its own reconstruction - an illogical and
inappropriate process by which to determine
patentability . . . The invention must be
viewed not after the blueprint has been
drawn by the inventor, but as it would
have been perceived in the state of the
art that existed at the time the invention
was made. [citations omitted]
Although the level of skill in this art is high, we find
that the person of ordinary skill in this art would not have
been led by Rogovin’s teachings to resolve the differences
between the prior art and the claimed invention. Without a
Appeal No. 95-0448
Application 07/825,632
11
suggestion in the prior art leading to the recombinantly
complemented Xgs mutants required in the claimed method, a-
prima facie case of obviousness has not been established.
We are aware that parent application, S.N. 07/517,551, of
which the instant application is a divisional, has issued as
U.S. Patent 5,279,961. Claim 1 thereof is drawn to a specific
bacterial culture referred to as Xanthomonas campestris strain
X59-1232. This strain falls within the genus of strains
required by claim 28 here on appeal. See U.S. Patent
5,279,961 at columns 19 and 20 (the Results section of Example
5) together with the relevant information from Example 1 of
the patent. Xanthomonas campestris strain X59-1232 is an Xgs-
mutant which has been modified by a c1 restriction fragment
from Xanthomonas campestris. We presume from the subject
matter claimed in this
patent that a species within the scope of claim 28 herein is
both novel and nonobvious. We have no basis on this record to
conclude that the use of the species claimed in U.S. Patent
5,279,961 to produce xanthan gum would otherwise have been
Appeal No. 95-0448
Application 07/825,632
12
obvious to a person having ordinary skill in the prior art at
the time appellants’ invention was made.
Conclusion
We reverse the rejection of claims 28 and 5 under 35
U.S.C. § 103 .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
)
RICHARD E. SCHAFER, Vice Chief )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 95-0448
Application 07/825,632
13
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
McAulay, Fisher, Nissen
Goldberg & Kiel
261 Madison Ave.
New York, NY 10016