Ex Parte Koizumi et al

Patent Trial and Appeal Board

Dec 11, 2012

10940026 (P.T.A.B. Dec. 11, 2012)

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.
10/940,026 09/14/2004 Satoshi Koizumi 00766.000020.2 4992
5514 7590 12/11/2012
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
EXAMINER
RAGHU, GANAPATHIRAM
ART UNIT PAPER NUMBER
1652
MAIL DATE DELIVERY MODE
12/11/2012 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 SATOSHI KOIZUMI, KATSUTOSHI SASAKI, TETSUO ENDO,
KAZUHIKO TABATA, and AKIO OZAKI
__________

Appeal 2011-000965
Application 10/940,026
Technology Center 1600
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for producing a complex carbohydrate. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

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STATEMENT OF THE CASE
Claims 2, 3, 5, 7-14, 16-18, 20 and 72-77 are on appeal. Claims 2 and
3 are independent and representative. The method of the invention is
claimed as a one-step process in claim 2 and a two-step process in claim 3.
(See e.g., Reply Br. 2-3.) Claims 2 and 3 provide as follows (emphasis
added):
2. A process for producing a complex carbohydrate, which
comprises:
selecting, as enzyme sources,
(a) a culture of a microorganism belonging to the genus
Corynebacterium and capable of producing NTP from a
nucleotide precursor, or a treated product of the culture,
(b) a culture of at least one microorganism belonging to
the genus Escherichia or Corynebacterium, said culture being
capable of producing a sugar nucleotide from a sugar and NTP,
or a treated product of the culture and
(c) a culture at least one microorganism belonging to the
genus Escherichia or Corynebacterium, said culture being
capable of intracellularly producing a complex carbohydrate
from a sugar nucleotide and a complex carbohydrate precursor,
or a treated product of the culture;
allowing the enzyme sources, the nucleotide precursor,
the sugar and the complex carbohydrate precursor to be present
in an aqueous medium to form and accumulate the complex
carbohydrate in the aqueous medium; and
recovering the complex carbohydrate from the aqueous
medium, wherein the sugar nucleotide is a uridine diphosphate
compound, a guanosine diphosphate compound or a cytidine
monophosphate compound, and
wherein the treated product of culture is a concentrated
product of the culture, a dried product of the culture, cells
obtained by centrifuging the culture, a dried product of the
cells, a freeze-dried product of the cells, a surfactant-treated
product of the cells, a solvent-treated product of the cells, an
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enzyme-treated product of the cells, or an immobilized product
of the cells.

3. A process for producing a complex carbohydrate,
which comprises:
(I) selecting, as enzyme sources,
(a) a culture of a microorganism belonging to the
genus Corynebacterium and capable of producing NTP
from a nucleotide precursor, or a treated product of the
culture, and
(b) a culture of at least one microorganism
belonging to the genus Escherichia or Corynebacterium
capable of producing a sugar nucleotide from a sugar and
NTP, or a treated product of the culture;
allowing the enzyme sources, the nucleotide
precursor and the sugar to be present in an aqueous
medium to form and accumulate the sugar nucleotide in
the aqueous medium; and
recovering the sugar nucleotide from the aqueous
medium, and
(II) selecting, as an enzyme source, a culture of a
microorganism belonging to the genus Escherichia or
Corynebacterium capable of intracellularly producing a
complex carbohydrate from a sugar nucleotide and a complex
carbohydrate precursor, or a treated product of the culture;
allowing the enzyme source, the complex carbohydrate
precursor and the sugar nucleotide prepared by (1) to be present
in an aqueous medium to form and accumulate the complex
carbohydrate in the aqueous medium; and
recovering the complex carbohydrate from the aqueous
medium, wherein the sugar nucleotide is a uridine diphosphate
compound, a guanosine diphosphate compound or a cytidine
monophosphate compound, and
wherein the treated product of culture is a concentrated
product of the culture, a dried product of the culture, cells
obtained by centrifuging the culture, a dried product of the
cells, a freeze-dried product of the cells, a surfactant-treated
product of the cells, a solvent-treated product of the cells, an
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enzyme-treated product of the cells, or an immobilized product
of the cells.

The claims stand rejected as follows:
I. Claims 2, 3, 5, 7-9, 16-18, 20 and 75-77 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Roth (WO
95/02683, published Jan. 26, 1995), Snetkova et al. (Translated
from KHIMIYA PRIRODNYKH SOEDINENII, 1988, No.2, pages 221-
226) and Nyholm at al. (A method for production of
13
C/N
15
double
labelled RNA in E. Coli, and subsequent in vitro synthesis of
ribonucleotide 5’ triphosphates, 30 J. BIOCHEM. BIOPHYS.
METHODS 59- 68 (1995)).
II. Claims 10-14 and 72-73 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Roth, Snetkova, Nyholm and
DeFrees (WO 96/32491, published Oct. 17, 1996).
III. Claim 74 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Roth, Snetkova, Nyholm, DeFrees and Aoki at al.
(Cloning of a Streptococcus mutans Glucosyltransferase Gene
Coding for Insoluble Glucan Synthesis, 53 INFN. IMMUN. 587-594
(1996)).
Each rejection set forth by the Examiner relies on the disclosures of
Roth, Snetkova and Nyholm. Because the same issue is dispositive for each
rejection, we will consider them together.
I.
Issue
The Examiner finds that the
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claims as written encompass[ ] any one of the steps in the
alternative for selecting enzyme sources from (a)-(c) including
free enzymes or crude enzyme extracts as the source of the
enzyme(s) and contrary to the Appellants‟ arguments that
indicate claims are: (i) limited to encompasses/requires „all the
three steps‟ in a sequential manner in said method; and (ii) only
intact live cells are required in the said process or intracellular
production of complex carbohydrate.

(Ans. 17.) As such, the Examiner finds that “[t]he cited references are in
congruence with the obviousness rejection and teach all limitations of the
instant claims.” (Id. at 18.)
Appellants contend that “[t]he use of the word „and‟ in this context,
rather than „or,‟ makes clear that the claims are not written in the
alternative.” (Reply Br. 7; emphasis in original.) Appellants further argue
“that no reference teaches using cell culture to produce a sugar nucleotide”
and “that no reference teaches using cell culture to produce a complex
carbohydrate intracellularly.” (Reply Br. 14; emphasis in original.)
The issue presented is: Does the evidence of record support the
Examiner‟s findings that the combination of references cited teach or
suggest all limitations of claim 2?
Findings of Fact
FF1. Roth discloses a method of synthesizing saccharide
compositions where “an acceptor moiety is contacted with at least one donor
saccharide in the presence of at least one cell surface-bound
glycosyltransferase specific for catalyzing the coupling of the acceptor
moiety with the donor saccharide.” (Roth, Abstract.)
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FF2. Roth discloses that “[t]he acceptor moiety used is a
carbohydrate, a protein, a glycoprotein, a lipid, or a glycolipid.” (Id.)
FF3. Roth discloses that “[t]he donor saccharide is provided in the
form of a nucleoside mono- or diphosphate sugar.” (Roth 7, ll. 17-18.)
FF4. Roth discloses as follows:
In a preferred embodiment, a bioreactor containing a cell
culture that expresses a given conjugate sugar nucleotide donor,
due to transfection of cDNAs that encode the enzymes
necessary for synthesis of this saccharide donor, is allowed to
interact with another bioreactor containing a cell culture which
has surface expression of the appropriate glycosyltransferase
for the conjugate sugar nucleotide.
(Roth 17, last ¶.)

FF5. Snetkova discloses that a set of enzymes is present in E. coli
and Corynebacterium species for “synthesizing nucleoside 5′-triphosphates
(NTPs) from bases and 5-phosphoribosyl l-pyrophosphate (PRPP) without
the isolation of the intermediate products” and allows for the “elimination of
the stage of forming nucleosides.” (Snetkova, 221.)
FF6. Nyholm discloses “an enhanced method for the large scale
production of high quality
13
C/
15
N labelled NTPs” in E. coli cells. (Nyholm,
Abstract.)
Principles of Law
The meaning given to claim terms must be consistent with how they
would be read by those of ordinary skill in the art. See Phillips v. AWH
Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)(“[T]he words of a claim
„are generally given their ordinary and customary meaning.‟ … [T]he
ordinary and customary meaning of a claim term is the meaning that the
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term would have to a person of ordinary skill in the art in question at the
time of the invention.”).
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention — including all its
limitations — with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995). As the Supreme Court pointed out in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Rather, the Court
stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does … because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added); see also id. at 418 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added). Similarly, as our reviewing court has stated, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
Analysis
We agree with Appellants that independent claims 2 and 3 require
selection of a culture or treated product of the culture from each of the
enzyme sources (a), (b) and (c). We find that the Examiner has not provided
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an adequate basis for requiring “and” to be interpreted as “or” in the context
of claims 2 and 3.
Having determined the scope of Appellants‟ claims, we agree with
Appellants that the cited references do not support a prima facie case of
obviousness. Like Appellants, we are unable to find where in the references
it is either taught or suggested that each of the three enzyme sources recited
in claims 2 and 3 are used sequentially in a method for producing a complex
carbohydrate. (See e.g., App. Br. 9-10.) For example, none of the
references appear to disclose a process for producing sugar nucleotide from
NTP. (See e.g., step (b) of claim 2; Reply Br. 14.) We further agree that the
Examiner has not adequately explained how the references would have
suggested using a cell culture to produce a complex carbohydrate
intracellularly, as required by step (c) of claim 2 and step (II) of claim 3.
(See e.g., Reply Br. 14.)
Since all claim limitations are not taught or suggested by the applied
prior art, the Examiner has failed to establish a prima facie case for the
obviousness of independent claims 2 and 3.
Conclusion of Law
We conclude that the preponderance of the evidence of record does
not support the Examiner‟s conclusion that the combination of Roth,
Snetkova and Nyholm discloses a method having all limitations of
independent claims 2 and 3 and dependent claims thereto (claims 5, 7-14,
16-18, 20 and 72-77). We thus reverse the rejections under 35 U.S.C. §
103(a) that rely on the teachings of Roth, Snetkova and Nyholm.
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SUMMARY
We reverse the rejection of claims 2, 3, 5, 7-9, 16-18, 20 and 75-77
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Roth, Snetkova, and Nyholm.
We reverse the rejection of claims 10-14 and 72-73 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Roth, Snetkova,
Nyholm and DeFrees.
We reverse the rejection of claim 74 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Roth, Snetkova, Nyholm,
DeFrees and Aoki.

REVERSED

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