Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 28, 2017

12337798 (P.T.A.B. Mar. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/337,798 12/18/2008 James H. Wang KCX-1618
(64496811US01)
4346
7590
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
CHRISS, JENNIFER A
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
03/28/2017 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 JAMES H. WANG and BO SHI1
Appeal 2014-006587
Application 12/337,798
Technology Center 1700
Before BEVERLY A. FRANKLIN, MARKNAGUMO, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 2—4, 6—9, 11, 12, and 38 in the above-
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Kimberly-Clark Worldwide, Inc. as the real party in
interest. Appeal Br. 1, Jan. 22, 2014.
2 Final Office Action, July 29, 2013 [hereinafter Action]; Examiner’s
Answer, Mar. 6, 2014 [hereinafter Answer],
Appeal 2014-006587
Application 12/337,798
BACKGROUND
Appellants’ invention is generally directed to
a thermoplastic starch for use in a melt-processed composition
(e.g., fiber, nonwoven web, etc.). The thermoplastic starch con­
tains an enzymatically debranched starch and a plasticizer. . . .
[T]he present inventors have discovered that a native starch may
be hydrolyzed in a highly efficient manner to form compositions
having a comparably lower weight average molecular weight and
viscosity, which are particularly suitable for use in the formation
of thermoplastic starches for use in melt processing applications.
Spec. 4. A representative embodiment is defined by sole independent claim
11:
11. A nonwoven web comprising a plurality of fibers,
wherein the fibers contain a thermoplastic starch formed from
about 40 wt.% to about 98 wt.% of at least one enzymatically
debranched starch and from about 2 wt.% to about 60 wt.% of
at least one plasticizer, wherein the enzymatically debranched
starch has an amylose content of about 50 wt.% or more, a
water content of about 5 wt.% to about 16 wt.%), and a weight
average molecular weight of from about 500,000 to about
3,000,000 grams per mole, and further wherein the
thermoplastic starch has an apparent melt viscosity of from
about 1 to about 100 Pascal-seconds, determined at a
temperature of 160°C and a shear rate of 1000 secwherein
the enzymatically debranched starch is formed by reacting a
native starch with an enzyme within a solution, and isolating
the debranched starch from the solution, further wherein the
enzyme includes an isoamylase or a pullulanase, wherein the
enzymatically debranched starch is formed from a native starch
having an amylose content of less than about 50 wt.%.
Appeal Br. 14 (emphasis added to highlight some key limitations).
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Application 12/337,798
The Examiner maintains the following grounds of rejection:
I. Claims 2-4, 6—9, 11, 12, and 38 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. See Action 2—3; Answer 9-10.
II. Claims 2-4, 6—9, 11, 12, and 38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Trokhan3 (including Mackey4 which
Trokhan incorporates by reference5) in view of Muller.6 See Action 3—11;
Answer 10—13.
In the Appeal Brief, Appellants argue the claims as a group, focusing
on claim 11. See Appeal Br. 3—12. Therefore, consistent with 37 C.F.R.
§ 41.37(c)(l)(iv) (2016), we limit our discussion to claim 11. Dependent
claims 2-4, 6—9, 12, and 38 stand or fall with claim 11.
DISCUSSION
Rejection I
The Examiner finds that the viscosity of a thermoplastic starch is
dependent on the moisture content of the starch. Action 2—3 (citing J.L.
Willett et al., Melt Rheology of Thermoplastic Starch, in Polymers from
Agricultural Coproducts 50, 54—55 (M. Fishman et al. eds., 1994)).
Because claim 11 contains a range of water content from about 5 wt.% to
about 16 wt.%, the Examiner concludes that the claim is indefinite unless
3 Trokhan et al., Patent Pub. No. US 2003/0203196 Al (published Oct. 30,
2003).
4 Mackey et al., Patent No. US 7,041,369 B1 (issued May 9, 2006).
5 See Action 4 (citing Trokhan § 107; Prosecution History for U.S. Patent
Application No. 10/220,573, Applicant’s Remarks, June 10, 2005).
6 Muller et al., Patent Pub. No. US 2005/0070703 Al (published Mar. 31,
2005).
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Application 12/337,798
Appellants “specify a single moisture content to which the sample is
equilibrated prior to viscosity measurement.” Answer 10.
We disagree with the Examiner’s conclusion. Appellants argue, see
Appeal Br. 4, that a person of ordinary skill in the art would understand that
the scope of claim 11 is defined by performing the required viscosity test on
the thermoplastic starch, and that the starch used to make the nonwoven web
must have a water content within the range defined by claim 11. Because
the Examiner’s Rejection I does not establish an ambiguity in the scope of
claim 11, we reverse the Examiner’s rejection.
Rejection II
The Examiner finds that Trokhan (including by incorporation
Mackey) teaches a nonwoven web that uses enzymatically debranched
starch, having component ranges of thermoplastic starch, plasticizer, and
water overlapping the ranges specified in claim 11, and teaches that the
thermoplastic starch has a molecular weight in a range overlapping the
ranges specified in claim 11. See Action 4—6.
While Trokhan does not specifically teach isoamylase or pullulanase
as debranching enzymes, the Examiner finds that Trokhan teaches amylase
enzymes as a suitable class of enzymes to modify starches. See Action 5. In
addition, the Examiner finds that Muller teaches pullulanase and isoamylase
as enzymes suitable for debranching polysaccharides. See id. at 7. Thus, the
Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to use pullulanase or isoamylase as debranching
enzymes in combination with the teachings of Trokhan. See id. at 8.
Although the Examiner notes that Trokhan, Mackey, and Muller do
not specifically teach an apparent melt viscosity measured under the
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Application 12/337,798
conditions specified in claim 11, the Examiner notes that Trokhan and
Mackey teach a shear viscosity less than about 30 Pa- s. See id. at 4, 6. The
Examiner also finds that although Trokhan teaches measuring the viscosity
at a lower temperature than claim 11, “[t]he viscosity of starch is
temperature dependent, with elevated temperature resulting in lower
viscosity” Action 10. The Examiner also cites Willett as evidence that the
relationship of apparent melt viscosity to both temperature and shear rate
was known in the art. See Answer 11—12. The Examiner concludes that
“Trokhan uses like materials from like sources acted upon by enzymes to
result in like starches useful in like applications, [therefore] one would
expect such like materials to exhibit like properties to those contemplated by
appellant at the specified conditions.” Answer 12.
Appellants argue that a person of ordinary skill in the art would not
have been motivated to use pullulanase or isoamylase. See Appeal Br. 5—8.
First, Appellants argue that Trokhan and Mackey do not recognize an
advantage of isoamylase and pullulanase over amylase-based hydrolyzing
enzymes: that isoamylase and pullulanase selectively break a-l,6-glucosidic
bonds linking the branches of amylopectin, whereas amylase
indiscriminately breaks bonds in both the branches and the main chains of
amylopectin; thus the starch molecules are “cut into chains that are too small
for use in melt extrusion or melt processing applications.” Id. at 5—7.
Although the two enzymes are mentioned in Muller, Appellants argue that
Muller “fails to recognize the criticality” of using enzymes that are highly
specific for breaking a-l,6-glucosidic linkages. See id. at 8.
This argument does not persuade us of reversible error in the
rejection. Muller teaches that both pullulanase and isoamylase may be
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useful for enzymatic decomposition, including debranching. See 1 Muller
30. It is not enough to impart patentability to the non woven webs of claim
11 that Appellants have discovered a new benefit of debranching starch
using enzymes known for that purpose. See In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990).
Moreover, we note that claim 11 is a product-by-process claim in
which the enzymatically debranched starch is defined, in part, by the method
in which it is made. We determine the patentability of such claims based on
the product itself, rather than the process by which it is made. See In re
Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985). Thus, the prior art need not
teach the identity of the enzymes used to make the enzymatically
debranched starch, so long as the prior art teaches a composition otherwise
defined by the limitations of claim 11.
Appellants also argue that in Muller
[ijsoamylase and pullulanase are included in a laundry list of pos­
sible enzymes for use in the enzymatic decomposition of the net­
working polysaccharide (e.g., starch), the majority of which are
non-specific hydrolysis enzymes which will attack both the
branches and the main chains such that the resulting material is
not suitable for forming a thermoplastic starch.
Appeal Br. 7 (citing Muller 130). We do not find this argument persuasive.
That a prior art references recognizes many effective compositions “does not
render any particular formulation less obvious.” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Appellants further argue that “the starch materials in Muller, et al. are
polysaccharides that are not thermoplastic due to their network structure, and
the intention is to form gels which are not thermoplastic,” and that a person
of ordinary skill in the art would not look to Muller for a teaching about
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Application 12/337,798
debranching enzymes, because Muller is directed to forming networks,
where more branching is desirable. Appeal Br. 8. We do not find this
argument persuasive. Appellants do not persuasively show how Muller
teaches a person of ordinary skill in the art that a branched amylopectin-like
structure is more desirable than a debranched amylose-like structure when
forming a network. Muller does, however, teach that “pure amylose gels”
may form networks, see Muller 114, and that amylopectins “neither
crystallize by themselves nor can form networks,” id. 115. Moreover,
Muller teaches that a mixture of “amylopectin-like macromolecules” and
“amylose-like macromolecules participate in the formation of strong and
even high-strength gels,” id. 114, and that in order to obtain networking
polysaccharides for such a mixture, isoamylase and pullulanase may be used
to debranch a native starch, see id. 1128-30; see also Answer 11, Action 7.
Muller is analogous art because it is “reasonably pertinent to the particular
problem with which the inventor is involved,” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004), that of debranching a native starch. Moreover,
Muller’s teaching to use isoamylase or pullulanase for debranching a native
starch is applicable to Trokhan, even though Muller is directed to forming a
network structure while Trokhan is directed to forming a nonwoven web
structure. See In re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
structures.”).
Next, Appellants argue that Trokhan, Mackey, and Muller fail to teach
a composition with the apparent melt viscosity required by claim 11. Appeal
Br. 8. Claim 11 requires the viscosity to be “determined at a temperature of
160°C and a shear rate of 1000 sec-1.” Id. at 14. In Trokhan, the viscosity is
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Application 12/337,798
measured at a test temperature of 15—90°C, and the reported viscosity value
is extrapolated to a shear rate of 3000 sec-1. Trokhan 1199. According to
Appellants, the starch in Trokhan “is for electrospinning, which requires an
aqueous starch solution, and water boils at 100°C.” Appeal Br. 9. Thus,
Appellants argue that the Trokhan compositions “would not possess a
measurable shear viscosity at 160°C due to the water present.” Id.
Appellants also argue that Muller does not cure the deficiencies of Trokhan
in this regard. See id. at 9-10.
We do not find Appellants’ arguments persuasive of reversible error.
When “the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The Examiner has
persuasively shown that the combined teachings of Trokhan, Mackey, and
Muller would have produced a composition that is identical or substantially
identical in terms of both structure and method of production. Moreover, the
Examiner has noted that Trokhan discloses a viscosity of 30 Pa- s or less as
measured under the conditions disclosed in Trokhan, and has provided
persuasive reasons why even the unmodified Trokhan compositions would
be expected to remain within the range of 1—100 Pa- s if performed under the
conditions set forth in claim 11. See Answer 12.
Because the Examiner has established a prima facie case of inherency,
Appellants may rebut by pointing to evidence that the apparent melt
viscosity of claim 11 is not necessarily present or “the natural result of the
combination of elements explicitly disclosed by the prior art.” PAR Pharm.,
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773 F.3d at 1196; see also Best, 562 F.2d at 1255. Appellants have not
persuasively shown a relationship between the temperature at which the
starch in Trokhan may be electrospun and the temperature at which a
viscosity test may be conducted, or that the viscosity test of claim 11 could
not be performed on the starch of Trokhan and Mackey (as modified by
Muller) without the presence of an aqueous solution. By a preponderance of
the evidence presented to us on this record, we are not persuaded of
reversible error in the Examiner’s finding that the composition resulting
from the combination of Trokhan, Mackey, and Muller would naturally
result in an apparent melt viscosity as required by claim 11.
Finally, Appellants argue that Muller teaches away from the
composition of claim 11. Appeal Br. 10. According to Appellants, Muller
“is directed to a mixture of basic polysaccharides and networking
polysaccharides.” Id. at 11 (citing Muller | 58). Because isoamylase and
pullulanase are “described in reference to the networking polysaccharides,”
and Muller “teaches that only by dissolving the starch can a suitable ... gel
network be formed,” Miller “teaches away from a thermoplastic starch
formed via the use of isoamylase and pullulanase debranching enzymes as
required by pending claim 11.” Id. (citing Muller || 30, 39, 41). Appellants
also argue that Muller discusses problems with thermoplastic starch
processing that does not include a mixture of basic polysaccharides and
networking polysaccharides, thus a person of ordinary skill in the art would
have been led away from using isoamylase and pullulanase to form a
thermoplastic starch as in claim 11. Id. at 12 (citing Muller ]f]f 3—7).
We do not find these arguments persuasive of reversible error. While
Muller discusses embodiments that include the formation of gels and
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mixtures of basic and networking polysaccharides, these teachings do not
“criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In particular, Muller’s
teaching that pullulanase and isoamylase may be used to obtain networking
polysaccharides “by chemical and/or enzymatic decomposition, especially
by debranching,” Muller 130, does not criticize, discredit, or otherwise
discourage the use of such debranched polysaccharides in a context other
than the formation of a network, or where the networking polysaccharides
are not mixed with basic polysaccharides.
For the above reasons, Appellants have not persuaded us that the
Examiner reversibly erred in rejecting claim 11 under 35 U.S.C. § 103(a),
and likewise, we are not persuaded of reversible error in the rejections of
claims 2-4, 6—9, 12, and 38.
DECISION
The Examiner’s decision to reject claims 2—4, 6—9, 11, 12, and 38
under 35 U.S.C. § 112, second paragraph is reversed.
The Examiner’s decision to reject claims 2—4, 6—9, 11, 12, and 38
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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