Zhangfang KangDownload PDFPatent Trials and Appeals BoardNov 13, 202013808163 - (D) (P.T.A.B. Nov. 13, 2020) Copy Citation 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. 13/808,163 01/03/2013 Zhangfang Kang 11727-US-PCT 1088 25908 7590 11/13/2020 NOVOZYMES NORTH AMERICA, INC. US PATENT DEPARTMENT 77 PERRYS CHAPEL CHURCH ROAD PO BOX 576 FRANKLINTON, NC 27525-0576 EXAMINER HOLLAND, PAUL J ART UNIT PAPER NUMBER 1656 NOTIFICATION DATE DELIVERY MODE 11/13/2020 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): DOCKETING@novozymes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ZHANGFANG KANG __________ Appeal 2020-001805 Application1 13/808,163 Technology Center 1600 __________ Before DONALD E. ADAMS, DEBORAH KATZ, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method of producing a fermentation product from lignocellulse-containing material, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s specification states that “[a] vast number of processes of producing fermentation products, such as ethanol, by fermentation of sugars 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Novozymes A/S and Novozymes North America, Inc. (Appeal Br. 1.) Appeal 2020-001805 Application 13/808,163 2 provided by degradation of starch-containing and/or lignocellulose- containing material are known in the art.” (Spec. 1.) Appellant’s invention is directed to a process for increasing the yield of the fermentation product, which thereby reduces the production costs. (Id.) Claims 2–7, 11–14, and 21–24 are on appeal. Claim 2 is representative and reads as follows: 2. A process of producing a fermentation product from lignocellulose-containing material, comprising the steps of: (a) pre-treating lignocellulose-containing material; (b) hydrolyzing the pre-treated lignocellulose-containing material; and (c) fermenting the hydrolysate or a portion thereof in a fermentation medium with a fermenting organism and one or more Family 61 glycoside hydrolase (GH61) polypeptides added into the fermenting step, to produce a fermentation product, wherein the hydrolyzing and the fermenting are carried out as separate hydrolysis and fermentation, the one or more GH61 polypeptides are added after the hydrolysis step is completed, and wherein the yield of fermentation product is increased as compared to a process where one or more GH61 polypeptides are not added into fermentation. (Appeal Br. 9.) Appeal 2020-001805 Application 13/808,163 3 The prior art relied upon by the Examiner is: Name Reference Date Delozier WO 2009/042622 A2 Apr. 2, 2009 Brown WO 2005/074647 A2 Aug. 18, 2005 S. Brethauer and C.E. Wyman, Review: Continuous hydrolysis and fermentation for cellulosic ethanol production, 101 Bioresource Tech., 4862–74, (2010). The following grounds of rejection by the Examiner are before us on review: Claims 2–7, 11, 14, and 24 under 35 U.S.C. § 103(a) as unpatentable over Delozier. Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over Delozier and Brown. Claims 21–23 under 35 U.S.C. § 103(a) as unpatentable over Delozier and Brethauer. Claims 2–7, 11, 14, and 21–24 on the ground of non-statutory obviousness-type double patenting over claims 1, 2, and 7–11 of US Patent 8,883,456. DISCUSSION I There is a single issue dispositive of the Examiner’s outstanding obviousness rejections under 35 U.S.C. § 103. Indeed, Appellant argues all claims together in addressing the Examiner’s obviousness rejection. Thus, we address the rejections together and focus on representative claim 2. The Examiner finds that Delozier teaches fermentation of lignocellulosic material that includes a pretreatment step, and a hydrolysis Appeal 2020-001805 Application 13/808,163 4 step that is separate from the fermentation step. (Final Action 3.) The Examiner further finds that Delozier teaches the hydrolysis of the lignocellulose can be enzymatic and that the cellulolytic enzyme preparation includes “one or more polypeptides of the family GH61 origin [see p. 8, lines 14-23].” (Id.) In addition, the Examiner finds that “Delozier [] also teach wherein the polypeptides having cellulolytic enhancing activity (GH61) are present during hydrolysis and/or fermentation [see p. 22, bottom; claim 19].” (Id.; see also id. at 7 (addressing independent claim 21)) In light of the foregoing disclosures, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to add the GH61 polypeptide following the hydrolysis step. (Id. at 4–5.) In short, the Examiner determines that the use of “and/or” in claim 19 means that “the scope of Delozier []’s invention encompasses a scenario wherein the GH61 polypeptide is present in the fermentation step and not in the hydrolysis step.” (Id. at 5; see also Ans. 10–11.) We agree with the Examiner’s conclusion of obviousness. Delozier teaches that before “wood-containing material can be fermented into the desired fermentation product . . . , it has to be converted into fermentable sugars.” (Delozier 3:17–19.) A hydrolysis step in the fermentation process of lignocellulosic material is, thus, used to break down cellulose that can then be used as a substrate during fermentation. (Id.; see, also id. at 4, 8.) The hydrolysis of the cellulose can be accomplished enzymatically, such as with a cellulase. (Id. at 8, 18–19.) Delozier further teaches GH61A polypeptides are known to have cellulolytic enhancing activity and thus hydrolysis is carried out using a cellulolytic enzyme Appeal 2020-001805 Application 13/808,163 5 preparation comprising one or more polypeptides of family GH61A origin. (Id.; see also id. at 22.) Delozier explains that [t]he polypeptides having cellulolytic enhancing activity enhance the hydrolysis of a lignocellulose derived material catalyzed by proteins having cellulolytic activity by reducing the amount of cellulolytic enzyme required to reach the same degree of hydrolysis[.] (Id.) Thus, with a lesser amount of enzyme, the same extent of hydrolysis can be achieved. In other words, Delozier teaches that the polypeptide of GH61A origin is important to obtaining more effective/efficient hydrolysis by the cellulolytic enzyme. Delozier teaches that hydrolysis and fermentation can be carried out separately or simultaneously. (Id. at 4.) Two types of simultaneous processes are described, hybrid hydrolysis and fermentation (“HHF”) and simultaneous hydrolysis and fermentation (“SHF”). (Id. at 4, 9.) With respect to SHF, Delozier teaches that “[i]n general this means that the combined hydrolysis and fermentation is carried out at conditions (e.g., temperature and/or pH) suitable for the fermenting organism in question.” (Id. at 9.) For HHF, Delozier explains that a separate hydrolysis step is started and the process “ends with a simultaneous hydrolysis and fermentation step.” (Id. at 8.) Delozier further states that “[t]he separate partial hydrolysis step is an enzymatic cellulose saccharification step.” (Id.) Despite that Delozier teaches that the polypeptide of GH61A origin makes the hydrolysis by the cellulolytic enzyme more effective/efficient, Delozier also states that “the hydrolysis and/or fermentation is carried out in the presence of a cellulolytic enzyme in combination with a polypeptide having enhancing activity,” (id. at 22 (emphasis added)) and in claim 19 states “[t]he process of any of claims 1-17, further wherein one or more Appeal 2020-001805 Application 13/808,163 6 polypeptides having cellulolytic enhancing activity is(are) present during hydrolysis and/or fermentation or HHF or SHF” (id. at 30; see also id. at 29 (Delozier’s claim 11, from which claim 19 may depend, requires that the hydrolysis and fermentation steps are carried out separately or as HHF or SHF)).) In other words, Delozier specifically teaches adding a cellulolytic enhancing activity, such as GH61A, at a fermentation step that is not HHF or SHF and, not during hydrolysis. We do not agree that because Delozier teaches advantages of using a polypeptide having cellulolytic enhancing activity during hydrolysis, it necessarily teaches away from Delozier’s explicit disclosure of using such a peptide during fermentation, rather than hydrolysis (Appeal Br. 6–7). That Delozier may not have disclosed or recognized a benefit of adding such a polypeptide at fermentation is of no import. Inherency may supply a missing claim limitation in an obviousness analysis. See, e.g., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012). That Appellant recognized a new benefit to the fermentation process is not patentable as the benefit is simply the natural result of the prior art method. See, e.g., Bristol- Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (“Newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”); Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005). “In determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted); see also Beckman Instruments, Inc. v. LKB Produkter AB, 892 Appeal 2020-001805 Application 13/808,163 7 F.2d 1547, 1551 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). Appellant’s claim is directed at doing what Delozier teaches one of ordinary skill in the art to do. Consequently, we affirm the Examiner’s rejection of the claims as being obvious over Delozier alone, Delozier and Brown, as well as Delozier and Brethauer. II Despite the outstanding rejection of claims 2–7, 11, 14, and 21–24 on the ground of non-statutory obviousness-type double patenting over claims 1, 2, and 7–11 of US Patent 8,883,456 in the Final Action from which this Appeal was taken, (Final Action 10–11), Appellant did not contest the rejection until the filing of the Reply Brief. (Reply Br. 5.) “[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Appellant has not demonstrated any specific Examiner findings presented for the first time in the Answer necessitating this new argument in rebuttal in the Reply Brief. “If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.” MPEP § 1205.02, Appeal 2020-001805 Application 13/808,163 8 Consequently, we summarily affirm the outstanding rejection of claims 2–7, 11, 14, and 21–24 on the ground of non-statutory obviousness-type double patenting over claims 1, 2, and 7–11 of US Patent 8,883,456. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–7, 11, 14, 24 103 Delozier 2–7, 11, 14, 24 12, 13 103 Delozier, Brown 12, 13 21–23 103 Delozier, Brethauer 21–23 2–7, 11, 14, 21–24 Nonstatutory Double Patenting 2–7, 11, 14, 21–24 Overall Outcome 2–7, 11, 14, 21–24 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation