Ex Parte Carlson et al

Patent Trial and Appeal Board

Mar 15, 2016

11816384 (P.T.A.B. Mar. 15, 2016)

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).
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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").
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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.").
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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
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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
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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.
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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 ).
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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.
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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
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