Ex Parte Giles et al

Patent Trials and Appeals Board

Jun 19, 2019

13116860 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/116,860
11806 7590
Fox Rothschild LLP
Charlotte Office
FILING DATE
05/26/2011
06/21/2019
997 Lenox Drive
Lawrenceville, NJ 08648
FIRST NAMED INVENTOR
Richard Giles
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.
5012918.00?US 1 6364
EXAMINER
CHOWDHURY, IQBAL HOSSAIN
ART UNIT PAPER NUMBER
1656
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD GILES and MATTHEW PARROW
Appeal2018---001890
Application 13/116,860 1
Technology Center 1600
Before ERICA A. FRANKLIN, ELIZABETH A. LA VIER, and
DAVID COTTA, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1, 3, 5, 7, 11, 12, 14--20, and 26-28. We
have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we REVERSE and enter a NEW
GROUND OF REJECTION.
1 Appellants identify the real party in interest as The University of North
Carolina at Charlotte. Br. 3.
Appeal2018-001890
Application 13/116,860
BACKGROUND
The Specification describes the use of whole microorganisms in
treatments for decomposing lignocellulosic materials. Spec. 1:9-11.
Claim 1 is illustrative:
1. A method of treating lignocellulosic material comprising:
degrading lignin of the lignocellulosic material with at least one
white rot fungus; and
hydrolyzing cellulose of the degraded lignocellulosic material
with at least one brown rot fungus.
Br. 19 (Claims Appendix) (formatting added).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 3, 11, and 12 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. Ans. 2.
2. Claims 1, 3, 5, 7, 11, 12, 14--20 and 26-28 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Filley,2 Akhtar, 3 Lyons, 4 and
Valjamae. 5 Ans. 4.
2 T.R. Filley et al., Lignin Demethylation and Polysaccharide
Decomposition in Spruce Sapwood Degraded by Brown Rot Fungi, 33
ORGANIC GEOCHEM. 111-124 (2002).
3 Akhtar et al., US 5,460,697, issued Oct. 24, 1995.
4 Lyons et al., US 2010/0248320 Al, published Sept. 30, 2010.
5 P. Valjamae et al., Acid Hydrolysis of Bacterial Cellulose Reveals Different
Modes of Synergistic Action between Cellobiohydrolase I and
Endoglucanase I, 266 EUR. J. BIOCHEM. 327-334 (1999).
2
Appeal2018-001890
Application 13/116,860
3. Claims 1, 3, 5, 7, 11, 12, 14--20 and 26-28 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Medoff, 6 Akhtar, and Filley. Ans.
13.
DISCUSSION
A. Appealed Rejections
1. Rejection 1: Indefiniteness
The Examiner rejects claims 3, 11, and 12, which each require a
"plurality" of fungi (white rot for claim 3,7 brown rot for claim 11, brown rot
and white rot8 for claim 12). The Examiner explains: "[t]he metes and
bounds of the term 'at least one white rot fungus comprises a plurality of
white rot fungus' or 'at least one brown rot fungus comprises a plurality of
brown rot fungus' are not clear to the Examiner. How at least one white rot
fungus comprises a plurality of white rot or brown rot fungi'? [sic]." Non-
Final Action 3. 9
We are not persuaded that claims 3, 11, and 12 are indefinite under 3 5
U.S.C. § 112, second paragraph. Rather, we determine that such claims
have been "cast in clear-as opposed to ambiguous, vague, indefinite-
terms." In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014).
"Plurality means more than one." In re Dickerman, 44 F.2d 876, 878
(CCPA 1930). Thus, it is clear that a "plurality of white rot fungi" means
6 Medoff et al., US 2015/0010989 Al, published Jan. 8, 2015.
7 Claim 3, for example, recites "[ t ]he method of claim 1, wherein the at least
one white rot fungus comprises a plurality of white rot fungi." Br. 19
(Claims Appendix).
8 By way of claim 12 's dependency on claim 3.
9 Non-Final Action dated Feb. 2, 2017.
3
Appeal2018-001890
Application 13/116,860
more than one white rot fungus, and a "plurality of brown rot fungi" means
more than one brown rot fungus.
Accordingly, we reverse Rejection 1.
2. Rejections 2 & 3: Obviousness
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the combination of prior art references or would have been obvious based on
the knowledge of those of ordinary skill in the art. In re Fine, 83 7 F .2d
1071, 1074 (Fed. Cir. 1988). "[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006).
We conclude that the Examiner has not met this burden as to
Rejection 2 or Rejection 3, for at least the two reasons discussed further
below.
First, both obviousness rejections rely on the combination of Filley
with other references, but we find that the Examiner has not set forth clearly
how Filley supports the rejections. According to the Examiner, Filley
teaches:
a single fungus P. placenta or G. trabeum [that] acts like BR
fungus and WR fungus and raised the possibility of using a
single fungus P. placenta or G. trabeum to degrade cheap plant
LCM[ 10J for producing expensive biomolecule ethanol by
fermentation, which reads on claimed invention of claim 1,
where Appellants use two fungus, but Filley et al. indeed teach
10 Lignocellulosic material.
4
Appeal2018-001890
Application 13/116,860
using a single fungus that acts like both WR[ 11 J and BR[ 12]
fungus, which is very simple and inexpensive that requires less
steps results in reducing the cost and time for producing
expensive biomolecule form inexpensive plant material, which
is industrially, commercially and financially beneficial.
Non-Final Action 5---6; see also id. at 34. Insofar as the Examiner means
that Filley reads on both the white rot fungus and the brown rot fungus of
claim 1 by virtue of its brown rot fungus that "acts like both WR and BR
fungus," this is in error. Claim 1 does not merely require certain
biochemical functions usually associated with brown rot and white rot fungi,
but the actual use of "at least one white rot fungus" and "at least one brown
rot fungus" specifically.
Furthermore, as illustrated in the quoted passage above, 13 the
Examiner extols the efficiency gains from using a single brown rot fungus as
taught in Filley to accomplish both the lignin degradation and cellulose
hydrolysis functions of claim 1, in lieu of using two different fungi. But in
explaining the rationale for combining the references (here, for Rejection 2),
the Examiner states:
One of ordinary skilled in the art would have been also
motivated to use white rot fungus and brown-rot fungus
together, which would degrade efficiently the lignin and
cellulose part of lignocellulosic material, that can be the
11 White rot.
12 Brown rot.
13 The above-quoted passage is illustrative of logic employed by the
Examiner throughout the rejection. See, e.g., Non-Final Action 12
("Similarly, Filley et al. indeed teach using a single fungus that acts like both
WR and BR fungus, which is very simple and inexpensive that requires less
steps results in reducing the cost and time for producing expensive
biomolecule form inexpensive plant material, which is industrially,
commercially and financially beneficial.").
5
Appeal2018-001890
Application 13/116,860
substrate for cellulose hydrolysis to produce monomeric sugar
for fermentation for producing ethanol, a biofuel, which is
industrially and financially beneficial.
Non-Final Action 11-12 (Rejection 2); see also id. at 38-39 (Rejection 3).
Thus, the Examiner finds it is more efficient to use one fungus instead of
two and more efficient to use two fungi instead of one. It cannot be both.
This logical inconsistency is also fatal to the Examiner's rationale for
rejecting the claims over combinations including Filley.
Second, and in part for related reasons, we find that the Examiner has
not adequately rebutted the arguments raised by Appellants relating to the
difficulty of combining white rot and brown rot fungi (see generally Br. 9-
10, 15). 14 Appellants present arguments based on an additional reference,
Boddy, 15 which Appellants maintain "conclusively demonstrates intrinsic
incompatibility and hostility of different wood decaying fungi in a common
environment." Br. 10 (emphasis omitted). Appellants also argue Filley
evinces such incompatibility. See id. The Examiner dismisses these
arguments as not persuasive "because Filley et al. identified a fungus as
brown rot fungus because it degrades not only cellulose but also lignin, i.e.
said brown rot fungus is also a white rot fungus and that the clue for using
white rot and brown rot fungus together to degrade and hydrolyze LCM."
Ans. 31 (Rejection 2); see also Ans. 40 (likening Appellants' arguments for
Rejection 3 to those made for Rejection 2, and finding them unpersuasive).
In thus blurring the distinction between types of fungi, the Examiner fails to
14 These issues are discussed in greater detail infra with respect to the new
ground of rejection.
15 L. Boddy, Interspecific Combative Interactions between Wood-Decaying
Basidiomycetes, 31 FEMS MICROBIOLOGY ECOLOGY 185-194 (2000).
6
Appeal2018-001890
Application 13/116,860
provide a persuasive response to Appellants' argument. As to Boddy, the
Examiner's response is perfunctory: "Appellants are reminded that in
biological system, the knowledges are continuously evolving and there is no
hard and fast rule as mentioned for B [ oddy] et al. or Filley et al. as
suggested." Ans. 31; see also id. at 41. This statement is too general to be
of any persuasive value.
In sum, claim 1 requires not only the biochemical functions of
degrading lignin and hydrolyzing cellulose, but "at least one white rot
fungus" to accomplish the former and "at least one brown rot fungus" to
accomplish the latter. The Examiner's analyses of Rejections 2 and 3,
including the Examiner's responses to Appellants' arguments, largely fail to
account for this distinction.
Accordingly, on this record, we are constrained to find that the
Examiner has failed to carry the burden of establishing a prima facie case of
obviousness of claim 1. We reverse Rejections 2 and 3.
B. New Ground of Rejection
We enter a new ground of rejection of claims 1, 3, 5, 7, 11, 12, 14--20,
and 26-28 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement.
"Although not explicitly stated in section 112, 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."' In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)
(quoting In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 1991)). During
prosecution,
7
Appeal2018-001890
Application 13/116,860
the PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
Id. at 1561-62. In unpredictable arts, "broad generic claims" are not enabled
by "specifications that demonstrate the enablement of only one or a few
embodiments and do not demonstrate with reasonable specificity how to
make and use other potential embodiments across the full scope of the
claim." PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564
(Fed. Cir. 1996).
Claim 1 broadly encompasses any combination of white rot fungus
and brown rot fungus, limited only by their respective abilities in degrading
lignin ( white rot) and hydrolyzing cellulose (brown rot). These functional
limitations provide no guidance to the ordinarily skilled artisan as to the
identity of the combinations of fungal species that would be expected to be
useful in carrying out the method of treating lignocellulosic material recited
by claim 1. To be sure, the Specification provides selected lists of individual
white rot and brown rot fungi useful in the invention. See Spec. Table I,
Table II. But the Specification's working example (Example 1) involves
only a single combination of fungi: Ceriporiopsis subvermispora FP-90031-
sp (white rot) and Postia placenta Mad-698-R (brown rot). Id. at 18.
Further, Example 1 only demonstrates the efficacy of combining C.
subvermispora and P. placenta when there is a sterilization step in between
the application of the two fungi (see Spec. Table IV (Treatments 5 and 6),
8
Appeal2018-001890
Application 13/116,860
Figure 2 (showing results)). But claim 1 does not require such an
intervening sterilization step. 16
By Appellants' own admission, using brown rot fungi and white rot
fungi together presents "formidable challenges and incompatibilities." Br.
10. As evidence, Appellants point to Boddy, which begins by stating
"[ c ]ompetition is the most common type of interaction occurring between
wood-decaying higher fungi." Boddy Abstract. Boddy reports "mycelial
confrontations between different species or individuals of the same species"
(id. at 189) and evaluates various factors affecting the outcome of
interactions, including environmental conditions, size and quality of wood
resources, state of decay, and growth time (id. at 190). Further, the more
fungi involved, the more complicated the interactions: "[i]nitial spatial
configuration of inoculum in complex tessellations of more than two species
considerably influences community development regardless of inoculum
quantity or proportion." Id.
Appellants also take the position that Filley provides "further
evidence of the incompatibility between white rot and brown rot fungi" (Br.
10):
Filley, for example, discloses fundamental differences in the
chemical and biological reactivities of brown rot degraded
wood and white rot degraded wood, thereby calling into serious
question whether brown rot fungi can operate on lignocellulosic
material having exposure to white rot fungi. Filley also
recognizes the degradative pathways employed by brown rot
fungi remain largely unknown, further negating any teaching
16 Indeed, claim 27, which depends from claim 1, further recites applying the
white rot and brown rot fungi "substantially simultaneously." Br. 22
(Claims Appendix).
9
Appeal2018-001890
Application 13/116,860
that brown rot fungi are suitable for use on lignocellulosic
material having exposure to white rot fungi.
Id. Filley acknowledges the limited understanding in the field, at the time of
its writing, regarding the specific chemical reactions utilized by brown rot
fungi: "[ t ]he mechanism of BR decay is not yet determined but is the focus
of active research." Filley 112.
In summary, a review of the references of record demonstrates that
many factors were known to affect fungal interactions (Boddy), and that the
knowledge in the art regarding the degradative biochemistry of brown rot
fungi was limited (Filley). Further, we hold Appellants to their assessment
that the "independent scientific journal literature" documents "the
formidable challenges and incompatibilities" (Br. 10) involved in attempting
to use both white rot and brown rot fungi to degrade lignocellulosic
material. 17 This lack of predictability in the art, combined with the limited
disclosure provided by the Specification, leads us to find that that claim 1 is
17 While this admission by Appellants, and those discussed above, was made
in service of addressing the § 103 rejections, the state of the art at the time of
the invention is relevant to both the obviousness and enablement inquiries.
The state of the art informs, inter alia, whether an expectation of success is
reasonable (for obviousness), as well as whether practicing the invention
would require undue experimentation (for enablement). See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007) ("Often, it will be necessary for a
court to look to inten-elated teachings of multiple patents; the effects of
demands known to the design community or present in the marketplace; and
the background knowledge possessed by a person having ordinary skill in
the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.");
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) ("The determination of
what constitutes undue experimentation in a given case requires the
application of a standard of reasonableness, having due regard for the nature
of the invention and the state of the art.'') ( quotation omitted).
10
Appeal2018-001890
Application 13/116,860
not enabled across its full scope, as undue experimentation would be
required to practice it. The single combination of white rot and brown rot
fungi provided as a working example in the Specification ( and only then,
with an intervening sterilization step between the application of each fungus)
would not have been sufficient to meaningfully guide the ordinarily skilled
artisan (i.e., without requiring undue experimentation), in selecting other
useful combinations.
None of the other appealed claims (all of which depend directly or
indirectly from claim 1) is sufficiently narrow to escape this problem. As a
general matter, we observe that the Specification offers no working
examples involving more than two fungi. But none of the claims is limited
to a combination of only two fungi. Such higher-order combinations, per
Boddy, would yield increasingly complex interaction patterns, which in tum,
we infer, would be even more difficult to predict.
Claim 7 18 is the narrowest in terms of the selection of fungi, insofar as
it recites "the white rot fungus comprises Ceriporiopsis subvermispora,
Phlebia tremellosa or Scytinostroma galactinium." Br. 19 (Claims
Appendix). But this provides no guidance as to the selection of the brown
rot fungus ( or fungi), or of the manner of their combination ( e.g., as with
claim 1, no sterilization step is required between inoculations). Nor does
claim 7 limit itself to the selection of a single white rot fungus; both claims 5
18 Claim 7 depends directly from claim 5, and indirectly from claim 1.
Claim 5 recites, in full: "The method of claim 1, wherein the lignin is
selectively degraded with the at least one white rot fungus." Br. 19 (Claims
Appendix).
11
Appeal2018-001890
Application 13/116,860
and 1 (from which claim 7 depends) recite "at least one white rot fungus,"
and claim 7 does not specify that there must be only one.
Claim 18 19 recites applying the white rot fungus "prior to" the brown
rot fungus, and claim 19 (which depends directly from claim 18) further
recites "sterilizing the lignocellulosic material prior to application of the
brown rot fungus." Id. at 20-21. Thus, claim 19 tracks the process outlined
in Example 1 of the Specification (see Spec. 20 (Treatment 5) ), at least in a
very general way. But like claim 1, claims 18 and 19 place no limitations on
the possible combinations of brown and white rot fungi.
Claim 28 20 recites using the at least one brown rot fungus to hydrolyze
hemicellulose of the degraded lignocellulosic material. See Br. 20 (Claims
Appendix). This functional constraint, even if it materially limits the
identity of the brown rot fungi ( an issue on which we need not take any
position), still leaves the selection of the white rot fungus ( or fungi) wide
open, as well as the possibility of using additional brown rot fungi.
We discern no distinguishing limitations in the other appealed claims
germane to the enablement issues identified above. As such, we find that
none of the appealed claims satisfies the enablement requirement of§ 112,
first paragraph.
19 Claim 18 depends directly from claim 1.
2° Claim 28 depends directly from claim 1.
12
Appeal2018-001890
Application 13/116,860
CONCLUSION
We reverse Rejections 1, 2, and 3. We enter a new ground of
rejection of claims 1, 3, 5, 7, 11, 12, 14--20, and 26-28 under 35 U.S.C.
§ 112, first paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b) (Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011,
effective Jan. 23, 2012). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
13