Ex Parte Carlson et alDownload PDFPatent Trial and Appeal BoardMar 15, 201611816384 (P.T.A.B. Mar. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111816,384 06/18/2008 Ting L. Carlson 38550 7590 03/16/2016 CARGILL, IN CORPORA TED P.O. Box 5624 MINNEAPOLIS, MN 55440-5624 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CGL04/0261US01 8422 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 MAILDATE DELIVERY MODE 03/16/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TING L. CARLSON, ANTON WOO, and GUO-HUA ZHENG Appeal2014-005765 Application 11/816,3 84 Technology Center 1700 Before CHUNG K. PAK, CHRISTOPHER C. KENNEDY, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner to reject claims 1-24 of Application 11/816,384 filed August 15, 2007. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as Cargill, Inc. (Br. 2). Appeal2014-005765 Application 11/816,3 84 BACKGROUND The subject matter on appeal relates to methods for making substantially clear low-glycemic syrup ("LGS") by reacting two or more substrates with an altemansucrase enzyme. Br. 6. Representative claim 1 is reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A method of making a substantially clear syrup comprising reacting two or more substrates at a concentration of about 40 % w/w to about 60 % w/w with at least one altemansucrase enzyme at a temperature of about 45°C to about 55°C to form a substantially clear syrup, wherein at least one substrate is chosen from sucrose. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Paul et al. us 5,141,858 Aug. 25, 1992 (hereinafter "Paul") Kossmann et al. US 6,570,065 Bl May 27, 2003 (hereinafter "Kossmann") Popper DE 102 09 629 B3 Jan. 8, 2004 Gregory L. Cote & John F. Robyt, Acceptor Reactions of Alternansucrase from Leuconostoc mesenteroides NRRL B-13 5 5, 111 CARBOHYDRATE RESEARCH 127-142 (1982) (hereinafter "Cote"). A. Lopez-Munguia et al., Production and purification of alternansucrase, a glucosyltransferase from Leuconostoc mesenteroides NRRL B-1355,for the synthesis of oligoalternans, 15 ENZYME MICROB. TECHNOL. 77- 85 (1993) (hereinafter "Lopez-Munguia"). 2 Appeal2014-005765 Application 11/816,3 84 THE REJECTIONS 1. Claims 1-24 stand rejected under 35 U.S.C. § 112, first paragraph, for lack of enablement. 2. Claims 1-9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cote in view of Paul and Lopez-Munguia. 3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cote in view of Paul and Kossmann. 4. Claims 13-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cote in view of Paul and Popper. DISCUSSION 1. § 112 Enablement Rejection To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation."' Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 199 3)). "The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims." Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (quoting Nat'! Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999)); see also In re Fisher, 427 F.2d 833, 839 (CCPA 1970) ("[T]he 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."). 3 Appeal2014-005765 Application 11/816,3 84 The Examiner finds that Appellants' Specification (hereinafter "Spec.") would not have enabled a person of ordinary skill in the art to perform the claimed method by reacting more than two substrates with altemansucrase, for reasons including the following: ( 1) the Specification shows reaction of altemansucrase only with two substrates; (2) the "reaction is much more complicated as each substrate is added:" (3) the prior art is devoid of information regarding reaction of altemansucrase with sucrose as donor substrate, and maltose combined with other acceptors, in a single reaction; and (4) the nature of the invention is unpredictable. Final Act. 2-3; Ans. 2-3. Appellants argue that reactions involving more than two substrates were understood in the art at the time of filing the Specification, as evidenced by Paul, which "describes several reactions involving more than two substrates." Br. 10. Appellants also point to two portions of the Specification as supporting their argument that "the specification as a whole clearly contemplates and teaches reactions involving 'sucrose and one or more initial acceptors' and the use of syrups comprising more than one acceptor." Id.; Spec. 1:12-17, 3:6-19. Appellants' arguments are not persuasive of reversible error in the rejection. The portions of the Specification on which they rely do not explain that reactions involving sucrose and one or more initial acceptors were known in the art at the time of the invention, nor do they describe how to perform the claimed method. Spec. 1: 12-17, 3: 6-19. With respect to Paul, as the Examiner responded in the Answer and correctly finds, Paul does not disclose a reaction in which more than two substrates are present at the onset of the reaction with altemansucrase. Ans. 8-9. Appellants do not 4 Appeal2014-005765 Application 11/816,3 84 dispute this; notably, no reply brief was filed. Moreover, Appellants do not dispute several of the Examiner's other findings, namely the complicated nature of the claimed reaction when more than two substrates are involved, and the unpredictable nature of the invention. Br. 10. Accordingly, we sustain the rejection of claims 1-24 for lack of enablement. 2. § 103 Rejections Appellants argue the claims subject to Rejection 2 as a group, and they present no separate substantive arguments for the claims subject to Rejections 3 and 4. See Br. 11-20. We select claim 1 as representative of the rejected claims. All other claims will stand or fall with claim 1. The Examiner finds that Cote discloses all of the limitations of Appellants' claim 1, except for the concentration of the substrates and the reaction temperature. Ans. 4--5. The Examiner further finds that the substrate concentration and reaction temperature are taught by Paul, which discloses a glucosyltransferase reaction involving a sucrose substrate at 5- 450C (Ans. 5; Paul 3:63--4:3), and that Lopez-iviunguia discloses that altemansucrase L. mesenteroides B-1355 has 50% activity at 50°C. Id.; Lopez-Munguia 82. The Examiner concludes that a person of ordinary skill in the art would have been led, with a reasonable expectation of success in making a clear syrup, to modify the reaction temperature and substrate concentration of Cote as disclosed by Paul and Lopez-Munguia, to obtain a higher yield and higher solubility profile. Ans. 6. Appellants argue that a person skilled in the art would have been led away from such a modification because Cote and Paul disclose different altemansucrase enzymes, which have different mechanisms of action and activity profiles, requiring different reaction temperatures and substrate concentrations. Br. 13. The Examiner concedes that Paul uses a different 5 Appeal2014-005765 Application 11/816,3 84 altemansucrase, B-1299, but notes that Lopez-Munguia discloses the same B-1355 enzyme used by Cote and Appellants. Ans. 10. Further, Figure 4 of Lopez-Munguia clearly shows that B-1355 "retains 50% of its activity even at 50[0 ]C." Ans. 10. Thus, even though Appellants correctly note that Lopez-Munguia shows maximal activity ofB-1355 around 40°C2 in a 10% sucrose solution, and quickly diminishes beyond that point, they have not responded to the Examiner's finding that B-1355 nonetheless retains 50% of its activity at 50°C (even much higher activity at "about 45°C"), or demonstrated why that level of activity ofB-1355 would lead a person of ordinary skill in the art away from modifying the reaction temperature of Cote to a temperature within the claimed range. Br. 13-14. Therefore, we do not find Appellants' arguments persuasive. Appellants further argue that the claimed method unexpectedly provides a higher reaction rate at temperatures above 40°C, thus reducing the amount of enzyme used, the conversion time, and the risk of microbial contamination. Br. 15. Appellants rely on the data in Table 2 of the Specification, which shows effects of substrate concentration and temperature on substrate conversion and reaction rate, at substrate concentrations ranging from 20 % w/w to 50% w/w, and reaction temperatures ranging from 37°C to 50°C. Spec. 11, Table 2; Br. 15. We have reviewed Appellants' arguments and the Specification, and determine that Appellants do not meet their burden of showing unexpected results 2 Lopez-Munguia's Figure 4 appears to show the optimum or maximum activity ofB-1355 at a temperature between about 38°C and 46°C ("around 40°C" referred to by Appellants) in a 10% sucrose solution. 6 Appeal2014-005765 Application 11/816,3 84 because they are not supported by sufficient factual evidence. First, other than attorney arguments in the Appeal Brief, we find that Appellants have not identified any averment in the Specification or in any other evidentiary submissions, supporting that the results relied upon would have been unexpected by one of ordinary skill in the art. 3 In re Geisler, 116 F .3d 1465, 1471 (Fed. Cir. 1997) (explaining that Geisler failed to carry the burden of establishing unexpected results because "Geisler made no such assertion [of unexpected results] in his application ... [or] submit any such statement through other evidentiary submissions, such as an affidavit or declaration .... ) (citing In re Orfeo, 440 F.2d 439, 441 (CCPA 1971)); In re Klosak, 455 F .2d 1077, 1080 (CCP A 1972) (" [I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference."). Further, the results shown in Table 2 do not show unexpected results for the entire range of reaction temperatures, substrates (including acceptors) and substrate concentrations, and enzyme dosages encompassed by claim 1. Table 2, for example, shows that the reaction rate and substrate depletion decrease when the reaction temperature goes from 50°C to 55°C for given specific substrates and substrate concentrations and specific enzyme dosages. Spec. 11, Table 2. Table 2 also shows that the reaction rate and substrate depletion decrease as the temperature goes from 37°C to 55°C, when higher 3 L6pez-Munguia's Figure 4 appears to show optimum activity ofB-1355 at a temperature between about 38°C and 46°C in a 10% sucrose solution, thus indicating that the Specification results relied upon by Appellants are expected by one of ordinary skill in the art. In re Skoner, 517 F.2d 947, 948 (CCPA 1975) (explaining that expected results are evidence of obviousness just as unexpected results are evidence of nonobviousness ). 7 Appeal2014-005765 Application 11/816,3 84 enzyme dosages (9.35 U/g or 6.17 U/g) and low substrate concentrations (20 to 30 weight%) are used. Id. Thus, Table 2 is not sufficient to establish that asserted unexpected results are reasonably commensurate with the scope of the claims. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims."); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.'") (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Appellants also attempt to show unexpected results by pointing to Tables 4, 6, and 7 of the Specification, which relate to Examples 6 and 7 and purportedly show that syrups made at higher temperatures and higher overall substrate concentrations ( 50°C and 50 wt% substrate) were noticeably clearer than syrups made at lower temperatures and lower overall substrate concentrations (37°C and 20 wt% substrate). Br. 17. For the reasons set forth above, we do not find Appellants' argument persuasive. Appellants have not met their burden of proof to show unexpected results, and further, they have not responded to the Examiner's findings that the experimental conditions of Example 7 lead to inconclusive results concerning the comparative clarity of the syrups (i.e., no reply brief was filed). Ans. 14--15. Accordingly, we affirm the rejection. SUMMARY We affirm the rejection of claims 1-24 under 35 U.S.C. § 112, first paragraph, for the reasons set forth above. 8 Appeal2014-005765 Application 11/816,3 84 We affirm the rejection of claims 1-24 under 35 U.S.C. § 103(a), for the reasons set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation