Ex parte Starnes

Board of Patent Appeals and Interferences

Jun 13, 2000

08318019 (B.P.A.I. Jun. 13, 2000)

Applicant requested an oral hearing on April 4, 1996. However, on review of this1
file in anticipation of setting a hearing date, we determined that a hearing would not be
necessary.
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publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT L. STARNES
__________
Appeal No. 1997-0467
Application 08/318,019
__________
ON BRIEF1
__________
Before WINTERS, WILLIAM F. SMITH and SCHEINER, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting claims 15 through
22. Claims 23 through 32, which are the only other claims remaining in the application,
Appeal No. 1997-0467
Application 08/318,019
2
stand allowed.
Claims 15 and 17, which are illustrative of the subject matter on appeal, read as
follows:
15. A process of using a cyclodextrin glycosyl transferase, comprising
(a) treating a liquefied starch solution with the cyclodextrin glycosyl transferase at a
temperature above 70EC and a pH in the range of 5.0-6.0; and
(b) recovering a cyclodextrin;
wherein the cyclodextrin glycosyl transferase used in the treatment is derived from a strain
of Clostridium and has a pH optimum of about 5.0 and a temperature optimum in the range
of 80-85EC.
17. A process according to claim 16, wherein the liquefied starch solution is
treated with the cyclodextrin glycosyl transferase at a temperature above 85EC.
The prior art reference relied on by the examiner is:
Japanese Unexamined Patent Application 52-25043 Feb. 24, 1977
(Assignee Japan Maize Products Co. Ltd.)(Maize)
The issues presented for review are:
(1) Whether the examiner erred in rejecting claims 15, 16 and 18 through 22 under
35 U.S.C. § 103 as unpatentable over Maize; and
(2) Whether the examiner erred in rejecting claim 17 under 35 U.S.C. § 112, first
paragraph, as based on a non-enabling disclosure.
On consideration of the record, we reverse both of the examiner's rejections.
Appeal No. 1997-0467
Application 08/318,019
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DISCUSSION
In resolving questions of obviousness, a decision-maker must consider the claimed
subject matter as a whole. 35 U.S.C. § 103. Here, independent claim 15 recites a
process of treating a liquefied starch solution with cyclodextrin glycosyl transferase
“wherein the cyclodextrin glycosyl transferase used in the treatment is derived from a strain
of Clostridium and has a pH optimum of about 5.0 and a temperature optimum in the range
of 80-85EC.” Further, according to claim 15, the treating step is carried out “at a
temperature above 70EC.” Manifestly, the Maize reference relied on by the examiner
constitutes insufficient evidence to support a conclusion of obviousness of claims
containing those limitations.
The Maize disclosure, like applicant's specification, relates to a process for
enzymatically converting a liquefied starch solution to cyclodextrin using cyclodextrin
glycosyl transferase. Maize, however, discloses cyclodextrin glycosyl transferase
produced by Bacillus unlike applicant's cyclodextrin glycosyl transferase “derived from a
strain of Clostridium” having “a pH optimum of about 5.0 and a temperature optimum in the
range of 80-85EC.” See the Maize reference (English translation), page 1, second and
third paragraphs; paragraph bridging pages 2 and 3; and page 4, third full paragraph.
Further, Maize discloses that cyclodextrinization “is carried out at 30-65EC” (page 3, fourth
full paragraph) whereas claim 15 requires “a temperature above 70EC.” On this record,
Appeal No. 1997-0467
Application 08/318,019
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the examiner has not explained how the prior art would have led a person having ordinary
skill from “here to there,” i.e., from the Maize process using cyclodextrin glycosyl
transferase produced by Bacillus, where cyclodextrinization is carried out at 30-65EC, to
the claimed process using cyclodextrin glycosyl transferase derived from a strain of
Clostridium, where cyclodextrinization is carried out above 70EC.
In the advisory action mailed July 25, 1995 (Paper No. 8), the examiner refers to In
re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). To the extent that the
examiner relies on Durden as providing support for the rejection of claims 15, 16, and 18
through 22 under 35 U.S.C. § 103, that reliance is misplaced. As stated in In re Ochiai, 71
F.3d 1565, 1570 , 37 USPQ2d 1127, 1132 (Fed. Cir. 1995), “there are not 'Durden
obviousness rejections' or 'Albertson obviousness rejections' [In re Albertson, 332 F.2d
379, 141 USPQ 730 (CCPA 1964)], but rather only section 103 obviousness rejections.”
Reliance on per se rules of obviousness, eliminating the need for a fact-specific analysis of
claims and prior art, is legally incorrect and must cease. In re Ochiai, 71 F.3d at 1572, 37
USPQ2d at 1133; In re Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed. Cir.
1995).
Independent claim 15 requires the use of cyclodextrin glycosyl transferase “wherein
the cyclodextrin glycosyl transferase used in the treatment is derived from a strain of
Clostridium and has a pH optimum of about 5.0 and a temperature optimum in the range of
Appeal No. 1997-0467
Application 08/318,019
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80-85EC.” Dependent claim 19 requires that the cyclodextrin glycosyl transferase be
derived from a strain of Clostridium thermoamylolyticum, and claim 20 recites the strain
ATCC 39,252. Likewise, dependent claim 21 requires that the cyclodextrin glycosyl
transferase be derived from a strain of Clostridium thermo-hydrosulfuricum, and claim 22
recites the strain ATCC 53,016. The examiner acknowledges that applicant's cyclodextrin
glycosyl transferase is novel and unobvious. See the examiner's answer, page 8, first full
paragraph, referring to “the novel and patentable cyclodextrin glycosyl transferase.” Also,
see page 8, second full paragraph (“[t]he process as claimed employs the novel glycosyl
transferase”); page 9, last line, referring to applicant's “novel patentable transferase;” and
page 10, lines 2 and 3, referring to “the patentable transferase.” Where, as here,
applicant's cyclodextrin glycosyl transferase constitutes an essential limitation in each
claim on appeal, and where the examiner acknowledges that applicant's cyclodextrin
glycosyl transferase is novel, unobvious, and patentable, it follows that the cited prior art
would not have led a person having ordinary skill to the claimed process considered as a
whole.
The rejection of claims 15, 16 and 18 through 22 under 35 U.S.C. § 103 as
unpatentable over Maize is reversed.
As stated in the examiner's answer, page 12, second paragraph:
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Claim 17 is now rejected under 35 U.S.C. § 112, first paragraph, as the
claimed invention is not described in such full, clear, concise and exact
terms as to enable any person skilled in the art to make and use the same,
and/or for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
The basis for this rejection is somewhat unclear. For example, according to the examiner,
claim 17 does not “particularly point out and distinctly claim the subject matter which
applicant regards as the invention” even though the examiner has not entered a rejection
under 35 U.S.C. § 112, second paragraph.
It is further unclear whether this rejection is predicated on the description or
enablement requirement, or both the description and enablement requirements, of
35 U.S.C. § 112, first paragraph. The examiner expresses concern respecting the “open
ended” claim language in claim 17 “at a temperature above 85EC.” Nonetheless, claims
15, 16 and 18 through 22 also include “open ended” language (“at a temperature above
70EC”), and the examiner has not entered a rejection of those claims under 35 U.S.C. §
112, first paragraph. For this reason, we find that the examiner's rejection is internally
inconsistent. The examiner refers to In re Fisher,
427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) for the principle that “the scope of the
claims must bear a reasonable correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art.” However, the examiner has not
adequately explained why Fisher controls the outcome of this case. On this record, the
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examiner has not established a prima facie case of non-enablement with adequate
reasons or evidence.
Accordingly, the rejection of claim 17 under 35 U.S.C. § 112, first paragraph, is
reversed.
In conclusion, we do not sustain the examiner's rejection of claims 15, 16, and 18
through 22 under 35 U.S.C. § 103. Nor do we sustain the rejection of claim 17 under 35
U.S.C. § 112, first paragraph. The examiner's decision rejecting claims
15 through 22 is reversed.
REVERSED
)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TONI R. SCHEINER )
Administrative Patent Judge )
SDW/cam
Appeal No. 1997-0467
Application 08/318,019
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Steve T. Zelson
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