Ex Parte Pyle et al

Patent Trial and Appeal Board

Dec 14, 2016

12208264 (P.T.A.B. Dec. 14, 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.
12/208,264 09/10/2008 Jason Pyle 0704US-UTL2 2275
87317 7590
Arnold & Porter LLP
601 Massachusetts Ave., NW
Washington, DC 20001-3743
12/16/2016 EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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):
ip_docketing @ aporter. com
legal@ sapphireenergy.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON PYLE and ALEX ARAVANIS
Appeal 2015-002639
Application 12/208,2641
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 49, 50, 52-55, 57-63, and 73-78 in the
above-identified application.3 We have jurisdiction pursuant to 35 U.S.C.
§ 6(b). An oral hearing was held on December 2, 2016.
We REVERSE.
1 According to Appellants, the real party in interest is Sapphire Energy, Inc.
Appeal Br. 2, June 30, 2014.
2 Non-Final Office Action, Dec. 3, 2013 [hereinafter Office Action],
3 Claims 1—48 and 64-72 are withdrawn from consideration. Appeal Br. 2.
Appeal 2015-002639
Application 12/208,264
BACKGROUND
Appellants’ invention relates to methods for creating products using
photosynthetic organisms. Spec.4]} 18. According to Appellants, these
products may be characterized by their carbon isotope distribution, as
measured by their 513C value in units of per mil (represented by the symbol
“%o”). See Spec. 31-39. The Specification states that most such values
are negative, see id. 39, and, referring to aquatic photo synthetic organisms
grown in accordance with the prior art, that the “[cjarbon isotope
combinations measured in aquatic photosynthetic organisms can range
between -11 %o and -39 %o.” Id. 40.
Independent claim 49 is representative of the claims on appeal:
49. A method of generating a fuel product from an aquatic
nonvascular C3 photosynthetic organism comprising:
a. growing an aquatic non-vascular C3 photosynthetic
organism in an excess of fossil fuel inorganic carbons
such that carbon fixation during growth within said
aquatic non-vascular C3 photosynthetic organism is not
limited by the availability of inorganic carbons, wherein
said aquatic non-vascular C3 photosynthetic organism
generates a first fuel product;
b. incorporating carbons from said fossil fuel inorganic
carbons into said first fuel product, wherein said first fuel
product has a 513C distribution of less than -40%o.
Appeal Br. 36 (emphasis added).
The Examiner maintains the following grounds of rejection:
1. Claims 49, 50, 52, 57-59, 62, 63, and 73-77 are rejected under
35 U.S.C. § 101 as not being directed to patent eligible subject matter. See
Office Action 2-5.
4 Specification, Sept. 10, 2008 [hereinafter Spec.].
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Application 12/208,264
2. Claims 49, 50, 52-55, 57-63, and 73-78 are rejected under
35 U.S.C. § 112, paragraph 1, as failing to comply with the enablement
requirement. See Office Action 5-7.
3. Claims 49, 50, 52-55, 57-63, and 73-78 are rejected under
35 U.S.C. § 112, paragraph 2, as being indefinite for mailing to particularly
point out and distinctly claim the subject matter regarded as the invention.
See Office Action 7-9.
4. Claims 49, 50, 52-54, 57-59, 62, 63, and 73-77 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Sears5 in view of
Farquhar.6 See Office Action 9-11.
5. Claim 55 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sears in view of Farquhar, and further in view of
Keasling.7 See Office Action 11-12.
6. Claim 60 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sears in view of Farquhar, and further in view of
Trimbur.8 See Office Action 12.
5 James T. Sears, U.S. Patent Application Pub. No. US 2007/0048848 A1
(published Mar. 1, 2007) [hereinafter Sears].
6 G.D. Farquhar et al., Carbon Isotope Discrimination and Photosynthesis,
40 Ann. Rev. Plant Physiology & Plant Molecular Biology 503 (1989)
[hereinafter Farquhar],
7 Jay D. Keasling et al., U.S. Patent Application Pub. No.
US 2008/0171378 Al (published July 17, 2008).
8 Donald E. Trimbur et al., U.S. Patent Application Pub. No.
US 2009/0061493 Al (published Mar. 5, 2009).
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7. Claim 61 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sears in view of Farquhar, and further in view of Wilkins.9
See Office Action 13.
8. Claim 78 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sears in view of Farquhar, and further in view of Melis.10
See Office Action 13-14.
DISCUSSION
Patent eligibility
The Examiner finds that claim 49 and certain other claims that depend
therefrom are not patentable subject matter because they are “directed to
either a law of nature, or a natural principle, or both,” Office Action 3, or
that they are directed to “the natural phenomenon of photosynthesis,”
Answer 5. According to the Examiner, the invention adds nothing to the
natural process of carbon fixation in C3 photosynthetic organisms, other than
the “well-understood routine conventional activities” of “growing” and
“incorporating.” See Office Action 4. The Examiner finds that aquatic non-
vascular C3 organisms necessarily “are growing in nature in an excess of
CO2” because there is an unlimited supply of CO2 in the atmosphere,
including CO2 derived from fossil fuels. See Answer 7. According to the
Examiner, this occurs without any interference from a human actor, and the
process “is not limited by the availability of inorganic carbons.” Id.
9 Joe S. Wilkins, Jr., U.S. Reissued Patent No. US RE47,629 E (reissued Apr.
9, 2002).
10 Anastasios Melis, U.S. Patent Application Pub. No. US 2008/0038805 A1
(published Feb. 14, 2008).
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Therefore, the Examiner concludes that Appellants’ invention fails to define
eligible subject matter under the standard set forth in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012). See Office Action
3—4.
The Examiner’s rejection depends, materially, on interpreting the
claim 49 phrases “an excess” and “not limited by the availability of
inorganic carbons” as referring to the total amount of CO2 in the
environment of the photosynthetic organism, which the organism may
eventually convert to a fuel product. We give claims their broadest
reasonable interpretation, but this interpretation must be consistent with the
specification, see In re Man Machine Interface Techs. LLC, 822 F.3d 1282,
1287 (Fed. Cir. 2016), and with the interpretation that a person of ordinary
skill in the art would reach, see In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). We determine that the Examiner’s interpretation of “an excess”
and “not limited by the availability of inorganic carbons” are inconsistent
with the Specification. Throughout the Specification, “an excess” of CO2
refers to the concentration of CO2 sufficient to saturate the active site of the
rate limiting photosynthetic enzyme RuBisCO, which fixes carbon, and
“limited by the availability” of CO2 refers to any limitation on the rate of
carbon fixation due to any deficiency in the concentration of CO2, such as a
limitation due to slow diffusion or other factors. See, e.g., Spec. 42, 61-
62, 65. The Specification is not consistent with an interpretation that merely
refers to the total amount of CO2 that may be ultimately available to the
organism, and we are persuaded that a person of ordinary skill in the art
would not so interpret the claims.
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Because the Examiner uses materially incorrect interpretations of the
phrases “an excess” and “not limited by the availability of inorganic
carbons” in claim 49 in finding that non-vascular C3 photosynthetic
organisms carry out the steps of claim 49 in nature, we cannot sustain the
Examiner’s rejection of claim 49 under 35 U.S.C. § 101. See Tempo
Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (the Board
may not rely on factual findings resting on an incorrect claim construction).
For the same reasons, the Examiner reversibly erred in rejecting claims 50,
52, 57-59, 62, 63, and 73-77, which depend directly or indirectly from
claim 49.
Enablement
After analyzing the factors set forth in In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988), the Examiner finds that Appellants’ invention is not
enabled because the claims are very broad, the predictability in the art is low,
the working examples are not described in sufficient detail, and the amount
of experimentation required to practice the invention is undue. See Office
Action 5-7; see also Answer 9-14. In response, Appellants point to
examples and teachings in the Specification relating to the mechanism for
carbon fixation, the mechanism by which an aquatic non-vascular C3
photosynthetic organism may produce a product having the low 513C value
specified in the claims, and genetic modifications by which an organism can
be made to express particular fuel products. See Appeal Br. 13-17; see also
Reply Br. 9-10. The Examiner appears to concede a high level of skill and
knowledge in the art relating, in general, to carbon fixation by aquatic non-
vascular C3 photosynthetic organisms. See Answer 10-14. However, the
Examiner determines that the claims are not enabled because all the claim
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Application 12/208,264
steps are performed in nature, and Appellants have not enabled “something
beyond what nature would do left based on its own devices.” Id. at 11. For
example, the Examiner holds that
the Appellant must have either genetically modified RuBisC[0]
such that aquatic non-vascular C3 photo synthetic organisms con­
taining this putatively modified RuBisC[0] generate products
with 513C values of greater than -40%o, or found another enzyme
other than RuBisC[0] that causes aquatic non-vascular C3 pho­
tosynthetic organisms to generate products with 513C values of
greater than -40%o, or modified specific growth conditions such
that aquatic non-vascular C3 photosynthetic organisms generate
products with 513C values of greater than -40%o, or have per­
formed something else entirely.
Id. at 12.
A patent applicant need only enable the inventions as claimed.
Because none of the pending claims require the genetic modification of
RuBisCO, or the use of an enzyme other than RuBisCO, we determine that
the Examiner has not provided a cogent rationale establishing that the full
scope of the inventions, as claimed, are not enabled by the Specification in
light of the knowledge that was available to a person of ordinary skill in the
art at the time of filing. Therefore, the Examiner reversibly erred in
rejecting claims 49, 50, 52-55, 57-63, and 73-78 on the ground of lack of
enablement.
Indefiniteness
The Examiner determines that the phrase “an excess of fossil fuel
inorganic carbons such that carbon fixation during growth within said
aquatic non-vascular C3 photosynthetic organism is not limited by the
availability of inorganic carbons” in claim 49 is indefinite because “[i]t is
unclear what levels of and by how much the fossil fuel inorganic carbons are
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Application 12/208,264
considered to be ‘an excess.’” Office Action 7. Responding to Appellants’
interpretation of “an excess” as referring to levels at which the CO2 available
to the organism is not rate limiting as to the fixation of carbon (Appeal Br.
18), the Examiner also states that there is no “baseline for what is normal for
the organism to which the excess fossil fuel inorganic carbons are to be
increased,” and asks, “What should one of ordinary skill in the art measure
in order to determine that ‘further increases [in CO2] have no effect’?”
Answer 14-15.
As Appellants point out, see Reply Br. 11, claim 49 does not refer to a
baseline for carbon fixation, and the Examiner has not provided any
persuasive reason why a person of ordinary skill in the art must establish
such a baseline to determine whether or not carbon fixation is rate-limited by
the immediate availability of fossil fuel inorganic carbons. Thus, the
Examiner’s rejection fails to set forth a sufficient basis to reject claim 49 as
indefinite.
In addition, the Examiner determines that in claim 52, “[i]t is unclear
how long or how many nucleic acids are needed to encode which enzymes to
produce which fuel product”; in claim 53, “[i]t is unclear to which organism,
or organisms, these nucleic acids are heterologous”; and in claim 54, “it is
unclear what fuel products are not naturally produced by aquatic non-
vascular C3 photosynthetic organisms.” Office Action 8-9. The Examiner’s
grounds for rejecting claims 52-54 do not identify any aspect of the claims
that are unclear or ambiguous. While the claims are broad, breadth is not a
sufficient ground for rejecting a claim as indefinite. See In re Miller, 441
F.2d 689, 693 (CCPA1971).
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For the above reasons, we determine that the Examiner reversibly
erred in rejecting claims 49, 50, 52-55, 57-63, and 73-78 on the ground of
indefmiteness.
Obviousness
The Examiner finds that Sears teaches the limitations of claim 49
other than the requirement that the “fuel product has a 513C distribution of
less than -40%o.” Office Action 9-10. While the Examiner notes that
Farquhar also does not teach the 513C distribution of claim 49, the Examiner
finds that Farquhar teaches that the 513C distribution in aquatic non-vascular
C3 photo synthetic plants may be as low as -39%o, id. at 10 (citing Farquhar
517), and finds that
for one of ordinary skill in the art to go from a biodiesel produced
with a 513C distribution of-39%o to a biodiesel that has a 513C
distribution of less than -40%o is merely routine optimization,
something that is well within the abilities of one of ordinary skill
in the art.
Id.
We are not persuaded that the Examiner has established a prima facie
case of obviousness with respect to independent claim 49. In particular, the
Examiner cites to paragraph 76 of Sears to establish that Sears teaches “an
excess of fossil fuel inorganic carbons.” Id. While Sears refers to the
presence of “un-absorbed CO2” in a closed system for scrubbing CO2 from
flue gas, see Sears ^ 76, the Examiner has not pointed to any teaching in
Sears that CO2 would ever be present in proximity to the photosynthetic
organisms, such that carbon fixation is not rate-limited by the immediate
availability of CO2. Nor has the Examiner established a persuasive reason to
believe that “an excess” of CO2, as we interpret that phrase in this decision
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to mean concentrations at or above which the concentration is no longer rate
limiting as to the fixation of carbon, would inherently exist in the process
described by Sears, in view of Farquhar. The Examiner has also failed to
show, persuasively, that a person of ordinary skill in the art would have
modified the Sears process, in view of Farquhar, to achieve a 513C
distribution of less than -40%o by routine optimization.
Therefore, the Examiner reversibly erred in rejecting independent
claim 49 on the ground of obviousness. The rejections of dependent claims
50, 52-55, 57-63, and 73-78 do not remedy this error. Thus, we reverse the
Examiner’s decision to reject claims 49, 50, 52-55, 57-63, and 73-78 under
35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is reversed.
REVERSED
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