Ex Parte Giles et alDownload PDFPatent Trials and Appeals BoardJun 19, 201913116860 - (D) (P.T.A.B. Jun. 19, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation