Xiang H. Wang et al.

Patent Trials and Appeals Board

Sep 26, 2019

14733067 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/733,067 06/08/2015 Xiang H. Wang EDT 108 CON 6842
23579 7590 09/26/2019
Pabst Patent Group LLP
1545 PEACHTREE STREET NE
SUITE 320
ATLANTA, GA 30309
EXAMINER
CALANDRA, ANTHONY J
ART UNIT PAPER NUMBER
1748
MAIL DATE DELIVERY MODE
09/26/2019 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 XIANG H. WANG, JIAN HUA MA, CHENGLIANG JIANG,
and HOWARD KAPLAN
____________

Appeal 2018-001303
Application 14/733,067
Technology Center 1700
____________

Before KAREN M. HASTINGS, GEORGIANNA W. BRADEN, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE1
Appellant2 seeks review under 35 U.S.C. § 134(a) from the
Examiner’s maintained rejections under 35 U.S.C. § 112, first paragraph of
claims 1–3, 5–8, 10–13, and 19–25 as failing to comply with the written
description requirement and 35 U.S.C. § 103 of claim 25 as obvious over

1 We refer to the Specification filed June 8, 2015 (“Spec.”), the Final Office
Action mailed May 23, 2016 (“Final Act.”), the Appeal Brief filed May 24,
2017 (“Br.”), and the Examiner’s Answer mailed Sept. 19, 2017 (“Ans.”).
2 The Appellant, Enzymatic Deinking Technologies, L.L.C., is also
identified as the real party in interest. Br. 2.
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Wang3 in view of Lund,4 as evidenced by Smook.5 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s invention relates to treating wood pulp “with an esterase
formulation in combination with a metal ion or cationic polymer to increase
the stability or activity or both of esterase enzymes . . . in order to enhance
the reduction of pitch problems . . . in the manufacture of paper.” Spec.,
Abstract.
Claims 1 and 25 are independent, and are reproduced below.
1. A method of enhancing the reduction of pitch deposition
or controlling pitch related problems during the pulp and paper
making process, the method comprising:
treating a pitch-containing pulp stock at a temperature
from 80°C to 98°C with an enzyme formulation consisting
essentially of one or more esterases (EC 3.1.1),
treating the pitch-containing pulp, prior to or during the
treatment with the enzyme formulation, with one or more
aluminum salts in an amount effective to stabilize the one or
more esterases,
treating the pitch-containing pulp at a temperature below
80°C with one or more esterases.

25. A method of enhancing the reduction of pitch deposition
or controlling pitch related problems during the pulp and paper
making process, the method comprising:

3 Wang et al., US 2007/0261806 A1, published November 15, 2007.
4 Lund et al., US 2005/0003516 A1, published January 6, 2005.
5 Gary A. Smook, HANDBOOK FOR PULP & PAPER TECHNOLOGISTS, 222 (2d
Ed., 1992).
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treating a pitch-containing pulp stock at a temperature
from 80°C to 98°C with one or more esterases (EC 3.1.1) and at
a temperature below 80°C with one or more esterases, and
treating the pitch-containing pulp prior to or during the
esterase treatment at a temperature from 80°C to 98°C with one
or more aluminum salts, cationic polymer, or both in an amount
effective to stabilize the one or more esterases.
Br. 21, 24 (Claims App.).
Claim 19, depending from claim 1, further recites “wherein the one or
more esterases used to treat the pitch-containing pulp at a temperature below
80°C further comprise cellulose, hemicellulose, pectinase, amylase, or a
combination thereof.” Id. at 23.
DISCUSSION
We review the appealed rejection for error based upon the issues
identified by appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072 (BPAI) (precedential), cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections.”). Upon consideration of the evidence and
opposing contentions of Appellant and the Examiner, we are not persuaded
that Appellant has identified harmful error in the Examiner’s decision
rejecting the claims.
Written Description
A Specification complies with the 35 U.S.C. § 112, first paragraph
written description requirement if it “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (citation omitted). Whether the written
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description suffices is a question of fact. Id. A “description that merely
renders the [claim] obvious does not satisfy the requirement.” Id. at 1352
(citing Lockwood v. Am. Airlines, 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)).
It is also not enough that the claims are enabled; “requiring a written
description of the invention . . . curtail[s] claims that do not require undue
experimentation to make and use, and thus satisfy enablement, but that have
not been invented, and thus cannot be described.” Id.
The Examiner finds that the Specification does not have written
description “support for two different enzyme formulations being applied
and the enzyme formulations being applied at different temperatures.” Final
Act. 5. In particular, the Examiner finds support lacking for the second-
recited enzyme treatment set forth in independent claim 1, reciting “treating
pitch-containing pulp, at a temperature below 80ºC with one or more
esterases,” and in independent claim 25, reciting “at a temperature below
80ºC with one or more esterases.” Id. The Examiner further finds support
lacking “for the second enzyme formulation contents” recited by claim 19
(id. at 6), discounting disclosure of such enzymes in the Specification
because “they are not discloses [sic] as part of a second formulation at a
temperature below 80 degrees C in addition to the first formulation at 80 to
98 degrees C” (id. at 4 (citing Spec. 8:14–24)).
As to claims 1–3, 5–8, 10–13, and 20–24, Appellant contends there is
“adequate written description support of the claimed limitation of treating
pitch-containing pulp with enzymes at two different temperatures.” Br. 9.
Appellant relies on the Specification disclosing that “[t]he pulp methods
described in the [S]pecification . . . ‘work at a temperature range from about
70 ºC to 98 ºC,’” “that certain enzyme formulations have a ‘working
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temperature range . . . from about 55 ºC to 85 ºC, with an optimum from
65 ºC to 80 ºC,’” and on “Examples 3 and 4 . . . describ[ing] the treatment
with an enzyme formulation with and without alum ‘at different
temperatures from 65 to 85 ºC’ . . . and at ‘high temperatures from 75 to 90
ºC.’” Id. (citing Spec., 5:9–12, 8:14–24; 12:6–9, 12:22–23). Appellant
argues the written description suffices both because it is set forth “in such
full, clear, concise, and exact terms as to enable any person skilled in the art
. . . to make and use the same” and because “a person skilled in the art would
recognize that one can treat pitch-containing pulp with enzymes at a
temperature of 80ºC to 98C and at a temperature below 80ºC.” Id.
Appellant relies on the Specification “not limit[ing] treating pitch-containing
pulp(s) with a single enzyme at temperatures above 80C” and that “[t]he
skilled artisan would recognize it would be advantageous to treat pitch-
containing pulp(s) with enzymes . . . at their respective working or optimum
conditions.” Id. at 9–10 (citing Spec. 5:1–12, 10:2–6).
On this record, we are not persuaded the Examiner erred in finding a
lack of written description for the claimed limitation of treating pitch-
containing pulp with enzymes at two different temperatures because
Appellant’s arguments go to whether the disclosure would enable the skilled
artisan to make and use the same, that is, to practice the claimed method, and
to whether it would have been obvious in light of the Specification’s
disclosure, neither of which suffice to meet the written description
requirement. Ariad, 598 F.3d at 1351–52.
As to dependent claim 19, requiring that “the one or more esterases
used to treat the pitch-containing pulp at a temperature below 80ºC further
comprise cellulose, hemicellulose, pectinase, amylase, or a combination
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thereof,” Appellant relies on page 8, lines 14 to 24, of the Specification.
Br. 10. The cited portion of the Specification points to the use of EnzOx®
products and discloses that they “contain principally esterases, cellulases,
hemicellulose, amylases, and pectinases.” Spec. 8:14–17. The Examiner
does not squarely address Appellant’s argument as to claim 19, but relies
instead on the lack of written description for a second enzyme formulation
(or treatment), which is essentially the written description rejection of claim
1, discussed above. See Final Act. 4. In effect, claim 19 stands rejected for
lack of sufficient written description because it depends from independent
claim 1.
As to claim 25, Appellant simply relies on its contentions as to claims
1–3, 5–8, 10–13, and 20–24. Br. 10–11. As discussed above, Appellant
fails to persuade us that the Examiner erred in finding the written description
requirement is not met.
We affirm the written description rejection of claims 1–3, 5–8, 10–13,
and 19–25 on the basis that there is not sufficient written description support
for independent claims 1 and 25 as set forth by the Examiner.
Obviousness Rejection of Claim 25
Wang relates to methods of treating pulp stocks with enzyme
formulations, including those containing esterases. Wang, Abstract. The
Examiner relies on Wang for “disclos[ing] treating pulp which has been
treated with alum with esterases. Final Act. 7 (citing Wang ¶ 8). The
Examiner notes that alum is an aluminum metal salt, specifically, an
aluminum sulfate, as evidenced by Smook. Id. (citing Smook, 222). As to
the recited temperature range of 80ºC to 98ºC for treatment with one or more
esterases, the Examiner relies further on Wang for disclosing an overlapping
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temperature range of 30 to 95 degrees C and an abutting temperature range
of 50 to 80 degrees C. Id. (citing Wang ¶ 8). The Examiner relies on the
overlapping range supporting the prima facie obviousness of the recited
temperature range. Ans. 4–5. As to the aluminum salts being provided in an
amount effective to stabilize the one or more esterases, the Examiner relies
on Wang’s treatment of the pulp “with enough alum to reach a pH of 4.5–5,”
and on this pH range as stabilizing the enzymes. Id. at 8; see Wang ¶ 8.
Lund also relates to methods for treating a pulp that include an
alkaline treatment and treatment with a pectin lyase and/or a pectate lyase.
Lund, Abstract. Lund explains that pectin released from plant fibers during
the pulping process “contribut[es] to a phenomenon known as anionic trash,”
which “results in an over-consumption of cationic additives” used in the
paper-making process. Id. ¶¶ 3–4. The Examiner relies on Lund for
“disclos[ing] treating pulp with a pectin lyase” and for “disclos[ing] a
preferred temperature of 40 to 70 degrees.” Final Act. 7 (citing Lund,
Abstract, ¶ 68). The Examiner also relies on Lund for disclosing that use of
pectin lyase decreases the cationic demand of the pulp. Id. (citing Lund ¶ 4).
The Examiner determines that one of ordinary skill in the art would
have found it obvious at the time of the invention to combine the first
enzyme treatment of Wang, which decreases pitch, with the second enzyme
treatment of Lund, which decreases the cationic demand of the pulp. Final
Act. 7.
Appellant contends that the cited prior art in combination does not
teach every step of claim 25. Br. 15–16. Appellant argues that Lund’s
temperature ranges fall within the temperature ranges of Wang, not outside
of them, such that there is not disclosure of treating a pulp at two different
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(opposing) temperature ranges. Id. at 16 (citing Lund, Abstract, ¶¶ 58, 68,
83, 120, 122, 124). Appellant also argues that the prior art fails to “teach or
suggest the step of treating the pitch-containing pulp at a temperature from
80ºC to 98ºC with one or more aluminum salts in an amount effective to
stabilize the one or more esterases” because “Wang is silent on the
temperature required for the alum treatment” and “Lund and Smook are
silent on enzymatic treatments including alum.” Id.
On this record, Appellant fails to establish the Examiner erred
reversibly in determining that the cited combination teaches each step of
claim 25. As explained by the Examiner, the temperature range of the first
enzyme treatment is prima facie obvious on the basis of Wang’s disclosure
of an overlapping range (Ans. 4–5), the temperature range of the second
enzyme treatment is obvious on the basis of Lund’s disclosure of a second
different enzyme treatment falling within that range (id. at 5), and Appellant
fails to argue cogently that there is no motivation to combine the teachings
(id.; see generally Br.). Also, as explained by the Examiner, Wang teaches
addition of alum before enzyme addition, as well as during enzyme
treatment, from which it follows that the pitch-containing pulp will be
treated “during the esterase treatment at a temperature from 80°C to 98°C
with one or more aluminum salts” upon the first enzyme treatment at the
prima facie obvious temperature range of from 80 ºC to 98 ºC. Ans. 6
(citing Wang ¶¶ 8, 49).
Appellant also contends that the cited prior art provides no reasonable
expectation of success because “one would not expect esterase enzymes to
remain functional at temperatures between 80ºC and 98ºC.” Br. 17.
Appellant relies on Lund’s disclosed examples “show[ing] that enzymatic
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treatments occur at about 55ºC” and its teaching deactivation of enzymes by
“heat[ing] . . . above their optimal working temperatures, such as up to 85ºC,
and holding this temperature for 30 minutes.” Id. at 17–18 (citing Lund,
Example 4). Appellant relies on Wang for teaching a preferred temperature
range of “about 50ºC to about 80ºC” and using, in its examples,
“temperatures of about 65C.” Id. at 18 (citing Wang ¶¶ 8, 52).
On this record, Appellant fails to establish that there is no reasonable
expectation of success. As set forth by the Examiner, Wang explicitly
discloses the range of 30 to 95 ºC for its esterase treatment, which is
sufficient even if a different range is preferred. Ans. 6–7. Also, as set forth
by the Examiner, Lund’s teaching that a different enzyme with a different
preferred temperature range does not counteract the teaching of Wang. Id.
Further, claim 25 does not require “enhancing the reduction of pitch
deposition,” as Appellant contends, for at least the reason that this is recited
in the alternative in the preamble with “controlling pitch related problems.”
This alternative purpose also appears met by the relied-on combination
where there is no recited level of reduction in the level of pitch.
Appellant contends that the results are unpredictable from the cited
art, and relies on the increase in the enzyme’s effective working
temperatures, and broader pH range, allowing greater effectiveness and other
benefits. Pet. 18–19 (citing Spec., 5:14–22). Generally, Appellant
emphasizes predictability as “key to determining obviousness.” Id. at 12
(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007).
Specifically, Appellant relies on Example 4 and Figures 3 and 4
demonstrating an improvement in enzyme thermostability. Id. at 19
(quoting Spec. 12:27–13:5). Appellant argues “[t]he cited art in
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combination does not even hint at improving enzyme thermostability with
metal ions or polymers.” Id. Appellant contends “Wang is silent as to the
concentration of alum used . . . or the temperature at which alum is used”
and that “Lund is silent on alum.” Id. Appellant argues it is “Appellant’s
disclosure [that] provides that the addition of metal ions or cationic polymers
to the pulp prior to enzyme treatment stabilizes the enzyme formulation and
speed up the enzymatic reactions at high temperature and broader pH
range.” Id. On these bases, Appellant contends “[n]othing in the cited art in
combination makes claim 25 predictable, or provides a reasonable
expectation that a method falling within the scope of claim 25 will be
successful at enhancing the reduction of pitch deposition.” Id. at 20.
As to Appellant’s emphasis on predictability as “key to determining
obviousness,” Appellant provides no argument that the combination would
not reasonably be expected to provide both the benefit of an effective
esterase treatment, as taught by Wang, and an effective pectin lyase
treatment, as taught by Lund. We find, however, there is a basis for the
combination to obtain the benefit of both enzyme treatments, as set forth by
the Examiner, and discussed above.
Contrary to Appellant’s contention, claim 25 does not require
“enhancing the reduction of pitch deposition” relative to enzyme treatment
without alum stabilization, for at least the reason, discussed above, that it is
recited in the alternative with “controlling pitch related problems.” As to
“improving enzyme thermostability with metal ions or polymers” not being
specifically disclosed by the cited prior art, the Examiner notes, correctly,
both that no particular degree of stabilization is required and that the claim
simply requires stabilizing the one or more esterases, not increasing their
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thermostability. Ans. 8. Such “arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.” In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
On this record, further, we discern insufficient cogent argument that
the addition of alum relied on by the Examiner would not stabilize the
enzyme formulation, as Appellant contends only that the increased
thermostability is not disclosed. Br. 19. This is not adequate to establish the
Examiner erred. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art. Because Lovin did not provide such arguments,
the Board did not err in refusing to separately address claims 2–15, 17–24,
and 31–34.”); see also DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir.
1999) (“A brief must make all argument accessible to the judges, rather than
ask them to play archaeologist with the record.”). Moreover, in not filing a
Reply Brief, Appellant declined to respond to the Examiner’s further
findings as to the stabilization of enzymes by adjusting the pH by addition of
alum (Ans. 8), and these are not shown to be erroneous on this record. Cf. In
re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“Findings of the
Examiner not shown to be erroneous may be accepted as fact.”).
Turning to Appellant’s further reliance on the results as unpredictable,
we find them inadequate to rebut the prima facie case of obviousness. To
establish patentability on the basis of unexpected results, Appellant must
show that the claimed invention imparts unexpected results and that the
unexpected results are reasonably commensurate with the scope of
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protection sought by the claim on appeal. In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant directs us to no basis
for the results being unexpected. See generally Br. Critically, the test is not
that the cited prior art does not teach the result, but rather that the result, at
the time of invention, would have been unexpected. As to the results being
commensurate with claim 25, Appellant fails to sufficiently explain how, or
if, the tests performed including EnzOx® B treatment with alum addition
establish unexpected results over the breadth of claim 25, which recites
treatment with “one or more aluminum salts, cationic polymer, or both in an
amount effective to stabilize the one or more esterases.” For these reasons,
Appellant has not shown evidence of unexpected results commensurate with
the scope of the claims. See In re Harris, 409 F.3d 1339, 1343 (Fed. Cir.
2005) (holding that the applicant must show unexpected results covering the
scope of the claimed range or narrow the claims).
Accordingly, none of the arguments apprise us of reversible error in
the rejection of claim 25 over Wang in view of Lund.
DECISION
The Examiner’s rejection of claims 1–3, 5–8, 10–13, and 19–25 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement is affirmed.
The Examiner rejection of claim 25 under 35 U.S.C. § 103 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED