Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE CINDY S. ORSER, STEVEN E. LINDOW, NICKOLAS J. PANOPOULOS AND
BRIAN J. STASKAWICZ
Appeal No. 89-0662
June 29, 1989
Application for Patent filed July 3, 1984. Serial No. 627,375, which is a Continuation of Serial Number 06/371,162 filed April 23, 1982 now U.S. Patent Number 4,464,473 granted August 7, 1984. Novel Ice Nucleating Microorganisms.
Bertram I. Rowland et al. for appellants
Examiner--James Martinell * * *
Before Pellman, Skinner and Haight
This is an appeal from the final rejection of claims 23, 24, 27, 28, 31, 32, 34-36 and 38, all of the claims remaining in this application.
Claims 31 and 35 are representative:
31. A method for preventing supercooling of an aqueous medium using bacterial cells with enhanced ice-nucleation activity as a result of introducing into said cell or a parent of said cell a vector plus DNA insert encoding an ice nucleation substance, said method comprising:
introducing said cells into said aqueous medium at or before the time said aqueous medium is cooled to a temperature at or below freezing.
35. A method for preventing supercooling of an aqueous medium using an ice-nucleation substance containing subcellular portion or extract derived from a bacterial cell with enhanced ice-nucleation activity as a result of introducing into said cell or a parent of said cell a vector plus a DNA insert encoding an ice-nucleation substance, said method comprising:
introducing said subcellular portion or extract, wherein said subcellular portion or extract contains said ice-nucleation substance, into said aqueous medium at or before the time said aqueous medium is cooled to a temperature at or below freezing.
Reference relied on by the examiner:
Woerpel 4,200,228 Apr. 29, 1980
Appellants cite the following references:
Maki et al (Maki), 'Bacteria as Biogenic Sources of Freezing Nuclei', Journal of Applied Meteorology, Vol. 17, pages 1049-1053 (July 1978).
Yankofsky et al (Yankofsky), 'Some Basic Characteristics of Bacterial Freezing Nuclei', Journal of Applied Meteorology, Vol. 20, pages 1013-1019 (September 1981).
All of the claims on appeal stand rejected under 35 USC 103 as unpatentable over Woerpel. We affirm.
Appellants have not argued the patentability of each of the rejected claims with specificity. The dependent claims will therefore stand or fall with independent claims 31 and 35. In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525 (Fed. Cir. 1987); In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
As defined by the claims on appeal, appellants' invention is directed to a method for preventing supercooling of an aqueous medium. The method comprises the step of introducing bacterial cells having enhanced ice-nucleation activity into the aqueous medium before cooling. Appellants' bacterial cells having enhanced ice-nucleation activity are themselves novel and are the subject of the claims of U.S. Patent No. 4,464,473.
*2 It is the examiner's position that the claimed method would have been obvious to one of ordinary skill in the art from the teachings of Woerpel. Woerpel discloses that the inherent tendency of water to supercool and remain in a liquid state even at low temperature can be overcome by the step of incorporating naturally occurring ice-nucleating organisms into the water prior to lowering the temperature (column 1, lines 27-29; column 2, lines 1-10; column 4, lines 44-48). The examiner urges that it would have been obvious to use the novel ice-nucleating genetically engineered bacteria described in the instant specification in the process taught by Woerpel, relying on In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985).
Appellants argue that the appealed claims differ from the prior art in requiring a bacterium having enhanced ice-nucleation activity as a result of being transformed with a DNA construct encoding an ice-nucleation substance, i.e., having ice-nucleating frequencies orders of magnitude greater than naturally occurring (wild-type) organisms. Appellants further take the position that Durden is inapposite since their novel starting material (recombinant bacteria) affects the claimed method, bringing about an unexpected and superior result.
We have carefully considered appellants' arguments, but are not persuaded of error in the examiner's conclusion. We are of the opinion that, in the particular fact situation of record, Durden is applicable and we are constrained to affirm the rejection.
As stated in Durden:
'Of course, an otherwise old process becomes a new process when a previously unknown starting material, for example, is used in it which is then subjected to a conventional manipulation or reaction to produce a product which may also be new, albeit the expected result of what is done. But it does not necessarily mean that the whole process has become unobvious in the sense of § 103. In short, a new process may still be obvious, even when considered 'as a whole,' notwithstanding the specific starting material or resulting product, or both, is not to be found in the prior art.'
In our view, the process claimed here would have been predictable and obvious to those of ordinary skill in the art from Woerpel. The conventional manipulative step of 'introducing' a bacteria into water prior to cooling is employed, to produce the expected result. Although, as in Durden, a novel starting material is used, the process as a whole would have been obvious and the result predictable from the teaching of Woerpel and mere possession of the starting bacteria.
Both appellants and the examiner have discussed at length the enhanced ice- nucleating frequencies of the recombinant bacteria. We agree that the starting material, with its characteristic ice-nucleating activity, is novel. However, it is well settled that the use of an unobvious starting material does not render a process unobvious. In re Durden, supra; In re Albertson, 332 F.2d 379, 141 USPQ 730 (CCPA 1964); Ex parte Kifer, 5 USPQ2d 1904 (BPAI 1988).
*3 Appellants also urge that the novelty of the starting material may lend unobviousness to the process, particularly where the process itself is affected. As a general proposition, we do not disagree with this statement. Our difficulty is that, on this record, we are not convinced of any influence on the process stemming from use of the novel bacteria. Appellants point to data in the specification indicative of enhanced ice-nucleation frequency (i.e. a greater proportion of bacterial cells containing active ice nuclei) in the genetically engineered bacteria. However, appellants have not clearly explained and we are unable to discern how this enhanced frequency brings about an 'unexpected and superior result' in the claimed process. In short, we find no objective evidence of an effect on the claimed process resulting from use of the novel starting material, which could be considered for its probative value in the determination of obviousness under § 103.
The rejection of claims 23, 24, 27, 28, 31, 32, 34-36 and 38 is affirmed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Irving R. Pellman
William A. Skinner
James C. Haight