Ex Parte Marcussen et al

Patent Trial and Appeal Board

Jul 25, 2016

13627677 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/627,677 09/26/2012
25908 7590 07/27/2016
NOVOZYMES NORTH AMERICA, INC
60 EAST 42ND STREET
SUITE 700
NEW YORK, NY 10165
FIRST NAMED INVENTOR
Erik Marcussen
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.
5766-US-CNT[2] 7854
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
DOCKETING@novozymes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK MARCUSSEN
and CHRISTIAN PEDERSEN
Appeal2014-008459
Application 13/627,677
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-29 under 35 U.S.C. § 103(a) as unpatentable over De Lima et al. 1 in
view of Herrman, 2 as evidenced by Motoi et al. 3 and Rowe. 4 We have jurisdiction
under 35 U.S.C. § 6(b ).
1 US 6,136,772, issued October 24, 2000 ("De Lima").
2 WO 97/43482, published November 20, 1997 ("Herrman").
3 US 6,010,736, issued January 4, 2000 ("Motoi").
4 Rowe et al., Handbook of Pharmaceutical Excipients 42 (Pharmaceutical Press
2003), identified in the Information Disclosure Statement dated April 2, 2013
("Rowe"). We were not able to locate the Rowe publication in the electronic file
Appeal2014-008459
Application 13/627,677
We AFFIRM.
Independent claims 1 and 25 are reproduced below from the Claims
Appendix of the Appeal Brief dated March 17, 2014 ("App. Br."). The limitations
at issue are italicized.
1. A feed composition comprising at least one granule comprising
a particulate component comprising one or more particles, wherein the
particulate component constitutes less than 75of100 parts by weight
of the granule and the particles have a mean size of more than 40 µm
in its longest dimension.
25. A feed composition comprising at least one granule comprising
a mixture of less than 7 5 of 100 parts by weight of a particulate
component having a mean size of less than 100 µm in the longest
dimension and more than 25 of 100 parts by weight of an enzyme or
an enzyme and granulating agent, wherein the particulate component
comprises a cereal grain flour, and wherein the granule comprises at
least three particles of the particulate component, and wherein the
particles of the particulate component have a span value of less than
2.5.[S]
B. uISCUSSION
De Lima discloses an enzyme-containing granulate, made up of enzyme-
containing granules or particles, with extremely low tendency to dust formation.
De Lima, col. 1, 11. 16-18. De Lima discloses that the enzyme-containing
granulates of the invention are well suited for use in detergents, in animal feed
compositions, in baking and in the treatment of textiles. De Lima, col. 10, 11. 3 7-
40.
("eDAN") of the instant Application. The Examiner relies on Rowe as evidence
that bentonite has a particle size of 50-150 microns. Examiner's Answer dated
June 4, 2014 ("Ans."), at 2.
5 The Appellants disclose that "'span' indicates the breadth of the PSD [Particle
Size Distribution] and is expressed as: (D90-D10) I D50." Spec. 8, 11. 23-25.
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Application 13/627,677
De Lima discloses that extremely low tendency to dust formation is
achievable when the granules are based on suitably selected cores (particles). De
Lima, col. 2, 11. 9-12. Preferred cores are said to comprise starch and/or modified
starch, wherein exemplary starches include cassava. De Lima, col. 5, 11. 22-23,
48-5 3. The Examiner finds, and the Appellants do not dispute, that the particle
size of the cassava starch core is 300-1000 microns (µm), i.e., a mean size of more
than 40 µm as recited in claim 1. 6 Ans. 3. De Lima discloses that for most
purposes, the cores are substantially spherical. De Lima, col. 4, 11. 42--48.
De Lima discloses that the granules may comprise one or more outside
coating layers and "[a] given coating layer may contribute from 0.5% to as much
as 50% by weight of the finished granule." De Lima, col. 11, 11. 2-5, 26-27. Thus,
we find De Lima teaches that the cores (particles) may constitute less than 7 5 of
100 parts by weight of the granule as recited in claim 1. The Examiner also finds
Herrman discloses an enzyme-containing granule comprising less than 7 5% by dry
weight of a particulate component. Ans. 3. The Appellants do not direct us to any
error in the Examiner's finding.
The feed composition recited in claim 25 comprises, inter alia, "at least one
granule comprising a mixture of less than 7 5 of 100 parts by weight of a particulate
component having a mean size of less than 100 µm in the longest dimension ...
and wherein the particles of the particulate component have a span value of less
than 2.5." App. Br., Claims Appendix (emphasis added).
6 De Lima discloses that "the mean particle size of the granules (and in many cases,
correspondingly, of the core particles therein) will suitably be in the range from 50
to 4000 µm, such as 200-2000 µm (e.g. in the range of 200-1000 µm)." De Lima,
col. 10, 11. 30-33 (emphasis added); see also In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) ("even a slight overlap in range establishes a prima facie case of
obviousness").
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Appeal2014-008459
Application 13/627,677
The Examiner finds Herrman discloses a particulate component comprising
organic flour with a degree of grinding of 30 to 100%. Ans. 3 (citing Herrman 3,
11. 5-7). Herrman also discloses that the "flour source is ... ground to a particle
size distribution with the primary proportion of particle sizes in the range of 500 to
5 µm; preferably the proportion of particles with a particle size of 300 to 500 µm
does not exceed 10 wt%." Herrman 7, 11. 18-21; see also Ans. 4 (citing Herrman
4, 11. 19-21 ); App. Br. 7 (directing our attention to an example on page 20 of
Herrman wherein pea fine flour or soy fine flour is the particulate component);7
Herrman 20, 11. 11-16 ("the particle size distribution of the pea or soy fine four that
was used ... exhibited a very narrow particle size distribution under 150 µm with
very fine quality: pea fine flour: 64 wt%< 36 µm [and] soy fine flour: 49 wt%<
36 µm").
As for the claimed span value, the Examiner finds that "[ s ]ince [Herrman] is
using a cereal flour of fine particle size distribution, this span value is intrinsic in
the flour particles disclosed by [Herrman]." Ans. 5. The Appellants do not direct
us to any error in the Examiner's finding.
Additionally, the Examiner concludes:
[I]t would have been obvious to one having ordinary skill in the art at
the time the invention was made; to use particles having the claimed
dimensions since the general sizes of the particulate building blocks
[e.g., flour] are taught by the prior art cited and thus following the
teachings of prior art cited, one of ordinary skill in the art would have
produced the overall enzyme granules having the claimed size and
there does not appear to be anything critical about the size claimed.
Absent any evidence to [the] contrary and based on the teachings of
the reference[ s] cited, it would [have] be[ en] prima facie obvious to
7 The pages of the Appeal Brief are not numbered. Therefore, the numbering
herein refers to the numbering automatically generated in the electronic file
("eDAN") of the instant Application.
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Appeal2014-008459
Application 13/627,677
select the overlapping portions of the ranges and thus a reasonable
expectation of success would have prevailed.
Ans. 5. The Appellants have failed to establish otherwise.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to substitute the granules of the feed composition of De Lima with
the enzyme granules disclosed in Herrman. The Examiner finds that one of
ordinary skill in the art would have been motivated to make the proposed
modification "to produce feed compositions having enzyme granules of a narrow
particle size distribution, i.e.[,] granules of uniform size, which can be accurately
dosed and which prevent particle segregation in a mixture comprising animal
feed." Ans. 5---6.
The Appellants argue that Herrman is not analogous art, and thus, is not
properly combined with De Lima in the rejection on appeal. More specifically, the
Appellants argue that "Herrman is not from the same field of endeavor as the
claimed invention" because "Herrman simply relates to an enzyme granulate for
washing and cleaning." App. Br. 3. The Appellants also argue that "the purpose
of the enzyme granules in Herrman is for use in washing and cleaning applications,
which relates to a solution to [a] problem very different than that addressed by the
Appellants in a feed composition." App. Br. 4.
In the Appeal Brief, the Appellants do not identify their field of endeavor or
the problem solved by their invention. In re Wood, 599 F.2d 1032, 1036 (CCPA
1979) (determination that a reference is from a nonanalogous art considers whether
the reference "is within the field of the inventor's endeavor" and if it is not,
whether the reference "is reasonably pertinent to the particular problem with which
the inventor was involved"). Nonetheless, we find the Appellants' argument that
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Application 13/627,677
Herrman is not from the Appellants' field of endeavor to contradict statements
made in their own Specification. More specifically, the Appellants disclose:
The enzyme containing mixer granule according to the
invention is useful where ever enzymes are to be stored alone or to be
incorporated in another dry product, and an improved enzyme stability
is needed to enable good storage and/or processability properties of
the enzyme in the granule. . . . [T]he invention provides a
composition comprising the granule of the invention. The
composition is preferably a detergent composition ....
Spec. 24, 11. 17-28; see also Spec. 6, 11. 17-23 (invention provides a feed
composition, a flour and/ or baking and/ or dough composition, and a detergent
composition comprising the disclosed granular enzyme product). Thus, a
preponderance of the evidence of record supports a finding that Herrman is from
the Appellants' field of endeavor. 8
The Appellants also argue that the overall particle size distribution of the
enzyme granules disclosed in De Lima is relatively narrow, i.e., for at least 90% of
the particles in a given sample, the ratio between the largest and the smallest
particle size is less than 4:1, and most preferably less than 1.5:1. App. Br. 9 (citing
De Lima, col. 10, 11. 51-56). On the other hand, the Appellants argue that in
Herrman Examples 2.1 and 2.2, the ratio between the largest and the smallest
8 In the Reply Brief, the Appellants argue that "in the present specification it is a
stated technical problem to provide more controlled size and/or size distribution of
enzyme mixer granulation products." Reply Brief dated August 1, 2014 ("Reply
Br."), at 3. The Appellants argue that "the washing and cleaning compositions of
the Herrman reference are not reasonably pertinent to the technical problems faced
by the inventors in development of the claimed feed compositions comprising
granules with a narrow size distribution." Reply Br. 4. Suffice it to say that
Herrman is from the Appellants' field of endeavor. Therefore, it is not necessary
to consider the second prong of the Wood test, i.e., whether Herrman "is
reasonably pertinent to the particular problem with which the inventor was
involved." Wood, 599 F.2d at 1036.
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Application 13/627,677
particles is 5:1. App. Br. 9 (citing Herrman 23, 25). Thus, the Appellants argue
that "one of skill in the art would not consider use of enzyme granules of Herrman
in a feed composition of De Lima, because the size distribution is not within the
narrow range described by De Lima." App. Br. 9.
The Appellants' argument is not persuasive of reversible error. Claim 25
recites that "the particles of the particulate component have a span value of less
than 2.5." App. Br., Claims Appendix (emphasis added). The portions of Herrman
relied on by the Appellants relate to granule size, not particle size. See Herrman 23
("Acceptable granules 200-1000 µm"); Herrman 25 ("Acceptable granules 200-
1000 µm"). Notably, in Example 2b, Herrman expressly discloses that the particle
size distribution of the pea flour (corresponding to the claimed particles of the
particulate component) "exhibited a very narrow particle size distribution."
Herrman 20.
For the reasons set forth above and reasons provided in the Examiner's
Answer, the§ 103(a) rejection of claims 1-29 is sustained.
C. DECISION
The decision of the Examiner is affirmed.
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).
AFFIRMED
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