ALKYMAR AS

Patent Trials and Appeals BoardSep 27, 2021

2021000820 (P.T.A.B. Sep. 27, 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. 15/510,278 03/10/2017 Olav Asle DJUPEVÅG 19727-0150 7056 29052 7590 09/27/2021 EVERSHEDS SUTHERLAND (US) LLP 999 PEACHTREE STREET, N.E. SUITE 2300 ATLANTA, GA 30309 EXAMINER MARTIN, PAUL C ART UNIT PAPER NUMBER 1653 NOTIFICATION DATE DELIVERY MODE 09/27/2021 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): patentdocket@eversheds-sutherland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLAV ASLE DJUPEVÅG and TORSTEIN FRANTZEN Appeal 2021-000820 Application 15/510,278 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 9–15, and 51. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Alkymar AS as the real party in interest. Appeal Br. 2. Appeal 2021-000820 Application 15/510,278 2 CLAIMED SUBJECT MATTER The Specification describes “a continuous flow-based enzymatic processing plant for enzymatic processing of organic molecules.” Spec. 2. According to the Specification, “[b]y the use of a turbulence generating pipe having a repeatedly changing centre-line and/or a repeatedly changing cross- section [] turbulence is generated without the need for mixing mechanisms with moving parts or for static mixing elements.” Id. at 3. Due to the “turbulent flow through the turbulence-generating pipe, the reaction mixture is mixed and maintained as a homogenous mixture through the process” and the risk of sedimentation is reduced. Id. Claim 1, the only independent claim, is illustrative of the claimed subject matter and is reproduced below: 1. An enzymatic processing plant for continuous flow-based enzymatic processing of organic molecules, comprising: an enzymatic processing area, wherein the enzymatic processing area comprises a turbulence-generating pipe with a repeatedly changing centre-line and/or a repeatedly changing cross-section, for generating turbulence to mix a reaction mixture and prevent sedimentation of particles as the reaction mixture is flowing through the turbulence-generating pipe, wherein the turbulence-generating pipe is provided in a stacked, coiled or nested arrangement, in one or more broadly horizontal layers, wherein the enzymatic processing plant and the enzymatic processing area are arranged such that the reaction mixture is subjected to turbulence within the enzymatic processing area for a reaction time of 15 minutes or more, Appeal 2021-000820 Application 15/510,278 3 wherein turbulence is generated in the turbulence generating pipe without moving parts, and is generated throughout the bulk of the flow, wherein the turbulence-generating pipe comprises a number of notional repeating units, wherein the number of repeating units is greater than 10, wherein the plant is arranged to operate with the reaction mixture having a flow velocity of less than 2 m/s through the turbulence generating pipe, wherein the enzymatic processing area includes one or more turbulence generating pipe(s) with a total length of at least 50m, and wherein the turbulence-generating pipe has an average diameter in the range of 20 mm to 200 mm. Appeal Br. 11 (Claims App. A). REJECTIONS The Examiner rejected claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 as being unpatentable over Ogly.2 The Examiner rejected claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 as being unpatentable over Ogly in view of Nankai.3 The Examiner rejected claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 as being unpatentable over Ogly in view of Sorenson.4 2 Ogly, RU2490323, published August 8, 2013, EPO machine translation (“Ogly”). 3 Nankai et al., US 4,434,229, issued Feb. 28. 1984 (“Nankai”). 4 Sorenson et al., WO 2004/049818 A1, published June 17, 2004 (“Sorenson”). Appeal 2021-000820 Application 15/510,278 4 ISSUES AND ANALYSIS Rejection of claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 as being unpatentable over Ogly The Examiner finds that Ogly teaches a microbioreactor comprising an enzymatic processing area, the enzymatic processing area comprising vertical sequentially ordered turbulence-generating pipes with a repeatedly changing cross-section, and a length of 1 m and an average diameter of 4.5 mm. Final Act. 3 (citing Ogly 4:9–11, 13–16, 7:16–22, Figs. 1–4). The Examiner also finds that Ogly teaches that “the enzymatic processing area [is] arranged such that the reaction mixture is subjected to turbulence within the enzymatic processing area for a reaction time of 15 minutes or more (4 hours),” “wherein turbulence is generated without moving parts and wherein the flow velocity in the microbioreactor operates with a reaction mixture having a flow velocity of 0.03 m/s through the turbulence generating pipes.” Id. (citing Ogly 8:9–11, 9:4–5). With regard to the limitations of claim 1 that recite, “for generating turbulence to mix a reaction mixture and prevent sedimentation of particles as the reaction mixture is flowing through the turbulence generating pipe” and “turbulence . . . is generated throughout the bulk of the flow,” the Examiner finds that “these appear to be either intended use limitations or inherent characteristics of the claimed invention which is structurally the same as that of the prior art and would therefore be expected to have the same properties/characteristics when in use.” Id. at 4 (citing MPEP § 2173.05(g)). The Examiner acknowledges that Ogly does not teach “a device wherein the turbulence generating pipes are in a layered/stacked horizontal Appeal 2021-000820 Application 15/510,278 5 arrangement and comprises more than 10 notional repeating units,” “wherein the one or more turbulence generating pipes have a total length of at least 50 m,” and “wherein the turbulence generating pipes have an average diameter of 20-200 mm;” however, the Examiner finds that it would have been obvious to those of ordinary skill in the art to modify the bioreactor of Ogly to have these characteristics. Id. According to the Examiner, Ogly teaches a turbulence generating pipe having at least 5 notional repeating units, a length of 1 m and an average diameter of 4.5 mm, and “changing . . . the number of repeating units, length (to greater than 50 m) and diameter of the pipe (to 20-200 m) will change the flow velocity of the reaction mixture and increase the amount of contact between the immobilized enzyme and reaction mixture.” Id. at 5. The Examiner further asserts that it would have been obvious to modify the bioreactor of Ogly “so that the vertical sequentially ordered turbulence-generating pipes are horizontally oriented (and thereby stacked) based upon the space available and the desire of the practicing artisan.” Id. According to the Examiner, “[f]or example, due to spatial constrictions (such as on a ship) a horizontal rectangular shape might be more desirable in certain situations than a vertical rectangular shape.” Id. at 6. Appellant asserts that Ogly does not disclose at least 10 repeating units, a pipe length of at least 50 m, and an average diameter of 20 mm to 200 mm. Appeal Br. 4. Appellant further contends that Ogly “does not recognize that the combination of these variables is in and of itself a result- effective variable.” Id. According to Appellant, the claimed “combination of variables cannot be considered merely the discovery of ‘optimum or Appeal 2021-000820 Application 15/510,278 6 workable ranges’ if the reference does not recognize the combination of variables as a parameter to be optimized.” Id. at 5. Appellant further contends that Ogly relates to micro-bioreactors and teaches against scaling up the size of the micro-bioreactor in stating, “[d]ue to the fact that the known devices (bioreactors) have a large volume, the energy in them is distributed unevenly.” Id. (citing Ogly 1). Appellant also argues that Ogly does not teach that the turbulence- generating pipes be in horizontal layers. Id. at 6. Appellant asserts that the micro-bioreactor of Ogly “is for use with liquid-liquid and liquid-gas systems, along with solid particles carrying an immobilized enzyme” and, “[a]lthough one aim of the present invention is to prevent sedimentation of solid particles, in Ogly, repeated sedimentation of the enzyme-carrying solid particles is a requirement.” Id. According to Appellant, “Ogly discloses a pulsed flow in the vertical direction, allowing the enzymes-carrying solid particles to flow up and down periodically.” Id. at 7 (citing Ogly 3). Appellant concludes that, “Ogly therefore depends on the upward/downward flow of the enzyme-carrying solid particles (where the downward flow is implicitly due to the influence of gravity), so the skilled person would always operate the apparatus of Ogly in a vertical orientation.” Id. at 8. We find that Appellant has the better position. The Examiner does not provide sufficient evidence to show that it would have been obvious to one of ordinary skill in the art to modify the vertical turbulence-generating pipes of Ogly to be in horizontal layers. The Examiner contends that “due to spatial constrictions (such as on a ship) a horizontal rectangular shape might be more desirable in certain situations than a vertical rectangular shape;” however, the Examiner does not cite to any support for this assertion nor Appeal 2021-000820 Application 15/510,278 7 does the Examiner persuasively show that such modification is taught or suggested by Ogly. See Final Act. 6. In response to Appellant’s argument that Ogly depends on the upward/downward flow of the enzyme-carrying solid particles, the Examiner contends that the ordinary artisan would recognize that mechanical pumps could be used to “eliminate the need for a solely vertical gravity dependent orientation;” however, again, the Examiner cites to no evidence in support of this assertion. Ans. 17. It is also not clear that the Examiner has sufficiently shown that the number of repeating units, pipe length, and pipe diameter are result-effective variables; however, we need not make this determination because the evidence of record does not support the Examiner’s assertions with regard to modifying the vertical pipes of Ogly to be in horizontal layers. Thus, for the reasons discussed above, we do not sustain the rejection of claims 1–4, 9–15, and 51 as being unpatentable over Ogly. Rejection of claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 as being unpatentable over Ogly in view of Nankai The Examiner’s application of Ogly and Nankai in rejecting claims 1– 4, 9–15, and 51 does not cure the deficiency in Ogly discussed above. See Final Act. 12–13. Therefore, we do not sustain the rejections of these claims as unpatentable over Ogly and Nankai. Rejection of claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 as being unpatentable over Ogly in view of Sorenson The Examiner’s application of Ogly and Sorenson in rejecting claims 1–4, 9–15, and 51 does not cure the deficiency in Ogly discussed above. See Final Act. 13–15. Therefore, we do not sustain the rejections of these claims as unpatentable over Ogly and Sorenson. Appeal 2021-000820 Application 15/510,278 8 CONCLUSION The Examiner’s rejections of claims 1–4, 9–15, and 51 under 35 U.S.C. § 103 are reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 9–15, 51 103 Ogly 1–4, 9–15, 51 1–4, 9–15, 51 103 Ogly, Nankai 1–4, 9–15, 51 1–4, 9–15, 51 103 Ogly, Sorenson 1–4, 9–15, 51 Overall Outcome 1–4, 9–15, 51 REVERSED