Robert den Hoed

Patent Trials and Appeals Board

Feb 2, 2021

2020002805 (P.T.A.B. Feb. 2, 2021)

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.
15/591,301 05/10/2017 Robert den Hoed P08126US0 2629
34082 7590 02/02/2021
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
EXAMINER
HANLEY, SUSAN MARIE
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
crasmussen@zarleylaw.com
emarty@zarleylaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DEN HOED
Appeal 2020-002805
Application 15/591,301
Technology Center 1600
Before DEBORAH KATZ, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, and 3–21. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant has not identified the real party in interest. See Appeal Br.
1. A search of the assignment records for this application reveals no
recorded assignment for the application. We shall therefore treat the inventor
as the “applicant.”
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Application 15/591,301

2
CLAIMED SUBJECT MATTER
The claims are directed to a method of producing jellyfish collagen
extract. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of producing jellyfish collagen extract, comprising
the steps of:
obtaining a quantity of frozen jellyfish;
adding the frozen jellyfish to a tank containing water;
adding protease enzymes and sodium bisulfate to the tank
to form a mixture;
heating the tank to 60° C for a period of time that permits
a reaction in the mixture;
filtering the mixture to remove sediment concentrate from
the mixture to form a solid; and
drying the solid to form a jellyfish collagen extract.
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Jackson US 3,875,138 Apr. 1, 1975
Sjolander US 5,411,887 May 2, 1995
Zukor US 2011/0068106 A1 Mar. 24, 2011
Trowell US 2015/0094219 A1 Apr. 2, 2015
Suzuki US 2016/0010890 A1 Jan. 14, 2016
Gueta US 2016/0120955 A1 May 5, 2016

Ikeda JP 2001-1078492 Jul. 3, 2001
Yoshinaka2 JP 2007-051191 A Mar. 1, 2007

2 Citations are to the English translation of records.
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REJECTIONS
Claims 1, 3–19, and 21 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement. Final Act. 2.
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over
Sjolander in view of Yoshinaka, Ikeda, Jackson, and Gueta, as evidenced by
Suzuki , Zukor, and Trowell. Final Act. 10.
OPINION
Enablement
The Examiner finds that the claims are not enabled as the
Specification does not teach one skilled in the art how to practice the
claimed method without undue experimentation. Final Act. 2. Applying the
factors recited in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), the
Examiner finds that because of the unpredictable nature of the art and
limited amount of guidance in the specification, and undue amount of
experimentation would be required to practice the claimed method,
particularly the heating of a mixture containing the jellyfish to 60°C. Final
Act. 3–6. In support of this finding, the Examiner point to the teaching of
Sjolander and Yoshinaka were it teaches that the temperature should not
exceed 42°C or 34°C. Id. at 4.
Appellant contends that the claims are fully enabled. Appeal Br. 5.
Appellant contends that the art is not unpredictable and that the Specification
provides ample guidance as to how to practice the invention particularly the
steps required and the order in which the steps are performed. Id. at 3–4.
Appellant also contends that the Examiner fails to give proper weight to the
Declaration of Dr. Den Hoed which show that the claimed method does in
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fact work as described in the Specification.3 Id. at 4. Appellant contends that
no undue experimentation is required to practice the invention as one skilled
in the art would understand how to heat the mixture to the desired
temperature. Id. Appellant contends that the teachings of the references are
irrelevant to the issue of enablement as Sjolander relates to a different
starting material and the method of Yoshinaka is different from the method
of the claims.
Legal Principles
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant. . . . After evidence or argument is submitted by the
applicant in response, patentability is determined on the totality
of the record, by a preponderance of evidence with due
consideration to persuasiveness of argument.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
[A] [S]pecification disclosure which contains a teaching
of the manner and process of making and using the invention in
terms which correspond in scope to those used in describing
and defining the subject matter sought to be patented must be
taken as in compliance with the enabling requirement of the
first paragraph of § 112 unless there is reason to doubt the
objective truth of the statements contained therein which must
be relied on for enabling support.

In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971).

3 37 C.F.R. § 1.132, Declaration of Robert den Hoed, filed May 24, 2019
(hereinafter “den Hoed Decl.”).
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Analysis
We have considered the arguments presented by the Examiner and
Appellant as well as the evidence of records and conclude that Appellant has
the better position. The Specification and den Hoed Declaration both
establish that the claimed method is enabled. The example reported in the
Specification reports that conducting the recited method at 60°C resulted in
the production of collagen having the composition reported in the
Specification. Spec. 2–4. Dr. den Heod’s declaration confirms that the work
reported in the Specification was actually performed and resulted in the
production of collagen. See den Heod Decl. ¶¶ 3–6.
The Examiner contends that the den Heod Declaration should be
given little weight as it merely restates the claimed method and that the
method was enabled. Ans. 21. The Examiner contends that the declaration
does not present any data or reasoning to support the conclusions given the
teachings of Sjolander and Yoshinaka. Id.
We are unpersuaded by the Examiner’s arguments. Dr. den Heod’s
declaration confirms that the work reported in the Specification was actually
performed and achieved the results reported in the Specification. See den
Heod Decl. ¶¶ 3–4. The Examiner has not provided any persuasive argument
or evidence, other than the Sjolander and Yoshinaka references, to show
why Dr. den Heod’s testimony should be ignored. And Dr. den Heod’s
declaration provides a plausible explanation for why the production of
collagen in the claimed method is effective at 60°C: the claimed method
involves cleaved sulphur reacting with protease enzymes, which is different
than the reactions of Sjolander and Yoshinaka for salting out collagen. Id.
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¶¶ 7–14. Dr. den Heod’s declaration is corroborated by what the
Specification and prior art references teach.
We find the Examiner’s reliance of Sjolander and Yoshinaka to be
misplaced. The method taught in Sjolander uses a different starting materials
and different method steps. See Sjolander, Abstract. Most notably, Sjolander
does not teach the addition of sodium bisulfate prior to heating the mixture.
Id. Yoshinaka teaches the use of jellyfish as the starting material but does
not teach the addition of a protease and sodium bisulfate prior to heating.
See Yoshinaka ¶ 12.
Given the significant differences in the claimed method and those
described in the prior art, we do not agree with the Examiner that the
teachings of the references support a finding on non-enablement. Nor does
the record support any reason to doubt the objective truth of the statements
of Dr. den Hoed’s declaration which was relied on for enabling support.
Conclusion
Based on the forgoing we do not sustain the Examiner’s rejection of
claims 1, 3–19, and 21 s under 35 U.S.C. § 112(a) for lack of enablement.
Obviousness
The Examiner has rejected claim 20 under 35 U.S.C. § 103 as
unpatentable over Sjolander combine with Yoshinaka, Ikeda, Jackson, and
Gueta, as evidenced by Suzuki, Zukor, and Trowell. Claim 20 is similar to
claim 1 recited above with the exception that claim 20 does not specify that
the heating step is performed at 60°C. Appeal Br. 10 (Claims App.).
The Examiner finds that Sjolander teaches a method for extracting
collagen from animal tissue by placing the tissue in ice water at a given pH
and the heating the mixture to about 42 to 44°C. Final Act. 10. The
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Examiner finds that Sjolander teaches that a proteolytic enzyme is then
added to the mixture and permitted to react for from 1.75 to 3.5 hours. Id.
The Examiner finds that Sjolander teaches that the collagen is then collected.
Id.
The Examiner finds that Sjolander does not teach or suggest the
addition of sodium bisulfate. Id. at 11.
The Examiner finds that Yoshinaka teaches a method for extracting
collagen from jellyfish and that the method include the addition of salt to aid
in recovering the collagen. Id.
The Examiner finds that Jackson discloses the use of sodium bisulfate
to initiate fibril formation and that Gueta teaches that collagen precipitate is
in the form of fibrils. Id. at 12–13.
The Examiner concludes
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the instant invention to
collect the collagen freed by hydrolysis of jellyfish in the
method of modified Sjolander by salting out with sodium
bisulfate and freeze-drying the resultant solid. The ordinary
artisan would have been motivated to do so because, Jackson
teaches that inorganic salts including sodium chloride, sodium
sulfate and sodium bisulfate precipitate polypeptides by fibril
formation and collagen is precipitated in the form of fibrils.
Yoshinaka teaches freeze-drying of the resultant solid. The
ordinary artisan would have had a reasonable expectation that
one could precipitate the freed collagen in the method of
modified Sjolander by the addition of sodium bisulfate because
collagen is precipitated in the form of fibrils and sodium
bisulfate is known to precipitate polypeptides via the initiation
of fibril formation.

Id. at 13
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Appellant contends that the cited references do not teach or suggest
the limitation of adding the protease enzyme and sodium bisulfate together
to form a mixture. Appeal Br. 6. Appellant contends that the cited references
teach the use of salts to salt out the collagen and not to provide sulfur to the
enzymatic reaction. Id. Appellant also contends that Jackson is not relevant
to the claimed process as it is directed to recovering glucagon which is
significantly different from collagen. Id.
Analysis
We have considered the arguments advanced by the Examiner and
Appellant as well as the evidence of record and find that Appellant has the
better position. None of the cited references, either alone or in combination,
teach or suggest the claimed method.
We begin by construing claim 20. “[N]ot unlike a determination of
infringement, a determination of anticipation, as well as obviousness,
involves two steps. First is construing the claim, followed by, in the case of
anticipation or obviousness, a comparison of the construed claim to the prior
art.” Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir.
1998).
Claim 20 recites the steps of “adding protease enzymes and sodium
bisulfate to the tank to form a mixture” and “heating the tank for a period of
time that permits a reaction in the mixture.” Appeal Br. 10 (Claims App.).
Given that the claim calls for forming a mixture followed by permitting a
reaction in the mixture we construe the claims to call for mixing the protease
enzyme and sodium bisulfate before the heating step. This is consistent with
the teachings of the Specification as reflected in Figure 2 below which
shows addition of sodium bisulfate before the heating step.
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Figure 2 of the present application showing a flowchart of the claimed
method.

In addition, the Specification teaches
A mixture of protease enzymes 18 and sodium bisulfate
20 are then added to the tank 14. . . .
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The contents of the tank 14 is then heated to 60 ° C
which is maintained for between 2 and 20 hours to permit the
contents of the tank to react with one another.

Spec. 2. Thus the Specification supports our interpretation of claim 20
to require that the sodium bisulfate is added to the mixture before the
heating step. Toro Co. v. White Consolidated Inds., 199 F.3d 1295,
1301 (Fed. Cir. 1999) (claim terms construed in light of Specification
and drawings).
As Appellant points out, the references cited by the Examiner all teach
the addition of salt after the heating step as part of the extracting the
collagen from the reaction mixture. Appeal Br. 6. For example, Yoshinaka
teaches the use of a salting out step as part of the collecting step. Yoshinaka,
claim 7. Similarly, Jackson, which purports to teach the use of sodium
bisulfate, teaches the addition of salt to initiate fibril formation. See Jackson,
col. 5, ll. 49–51. Fibril formation occurs after the glucagon is separated from
the other materials. See Jackson, Fig. 1.
We agree with Appellant that none of the references teach or suggest
the present method that calls for mixing the protease enzymes with sodium
bisulfate prior to heating.
The Examiner contends that the order of the steps is irrelevant. Final
Act. 13–14. While this is generally true, as discussed above, the claims in
this case are properly construed to require the steps be performed in order.
See Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322,
(Fed.Cir.1999) (The language of the claim, the Specification and prosecution
history can support a construction in which the steps are performed in the
order written.). Thus it is incumbent on the Examiner to show a teaching or
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suggestion in the art that the addition of sodium bisulfate occurs before the
heating step. The Examiner has not pointed to any such a teaching in the
references nor do we discern one. See Ans. 23–26.
Conclusion
Based on the forgoing we conclude that a preponderance of the
evidence does not support the Examiner’s finding that the subject matter of
claim 20 would have been obvious to one of ordinary skill in the art at the
time the invention was made over Sjolander combined with Yoshinaka,
Ikeda, Jackson, and Gueta, as evidenced by Suzuki, Zukor, and Trowell.
DECISION
The Examiner’s rejections are reversed.
More specifically:
The rejection of claims 1, 3–19, and 21 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement is reversed.
The rejection of claims 20 under 35 U.S.C. § 103 as being
unpatentable over Sjolander in view of Yoshinaka, Ikeda, Jackson, and
Gueta, as evidenced by Suzuki , Zukor, and Trowell is reversed.

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CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–19, 21 112(a) Enablement 1, 3–19, 21
20 103 Sjolander,
Yoshinaka, Ikeda,
Jackson, Gueta,
Suzuki, Zukor,
Trowell
20
Overall
Outcome
1, 3–21

REVERSED