Biogenic Reagent Ventures, LLC

Patent Trials and Appeals Board

Dec 2, 2020

2020000082 (P.T.A.B. Dec. 2, 2020)

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.
14/523,358 10/24/2014 Daniel J. Despen 126267-8026.US01 9654
113677 7590 12/02/2020
Perkins Coie LLP - CHI General
PO Box 1247
Seattle, WA 98111-1247
EXAMINER
HENDRICKSON, STUART L
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. DESPEN, JAMES A. MENNELL, and
DAVID REAMER
Appeal 2020-000082
Application 14/523,358
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16, 18, 19, 21–26, and 28–36. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Carbon
Technology Holdings, LLC. Appeal Brief (“Appeal Br.”) filed September 7,
2017, 2.
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Application 14/523,358

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CLAIMED SUBJECT MATTER
The invention relates to processes for the production of activated
carbon starting from biomass sources. Specification (“Spec”) filed October
24, 2014, ¶ 2.2 Appellant discloses that best practices for combusting
carbonaceous materials, e.g., for the production of energy, generally include
maximizing energy output while minimizing residual waster, such as ash. Id.
¶ 3. Appellant discloses methods for combusting carbonaceous materials,
e.g., biomass, to produce energy, while increasing ash production, wherein
the ash may be further processed to produce useful products such as
activated carbon. Id. ¶ 4.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A process for producing an activated carbon product, said
process comprising:
(a) providing a carbon-containing feedstock;
(b) combusting, in a combustion unit, said feedstock with
an oxidant comprising oxygen, to generate energy, combustion
products, and ash, wherein said ash contains at least about 10
wt% carbon; and
(c) further processing said ash to increase the carbon
content, thereby generating an activated carbon product.
REFERENCES
The Examiner relies on the following prior art:

2 This Decision additionally cites to the Examiner’s Answer (“Ans.”) dated
August 2, 2019, and the Reply Brief (“Reply Br.”) filed October 2, 2019.
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Name Reference Date
Jha et al. (“Jha”) US 5,187,141 Feb. 16, 1993
Shearer et al. (“Shearer”) US 8,361,186 B1 Jan. 29, 2013

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claim 21 under 35 U.S.C. § 112(b) as indefinite;
2. Claims 1–16, 18, 19, 21–26, and 28–36 under 35 U.S.C. § 103 as
unpatentable over Shearer; and
3. Claims 1–16, 18, 19, 21–26, and 28–36 under 35 U.S.C. § 103 as
unpatentable over Shearer in view of Jha.
OPINION
Rejection 1: Indefiniteness
Claim 21 depends from claim 1, and further requires that step (b)
includes combusting at a feedstock residence time that is lower than an
optimal residence time for the feedstock. Appeal Br. 15, Claims App’x.
The Examiner rejects claim 21 under 35 U.S.C. § 112(b) as indefinite,
apparently determining that it is unclear what “optimal” means. See Ans. 4.
Appellant agrees to cancel claim 21 without acquiescing to the merits
of this rejection. Appeal Br. 12. Appellant does not contest or otherwise
respond to the rejection. Accordingly, we summarily affirm this rejection.
Rejection 2: Obviousness over Shearer
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
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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.”). After considering the record
before us, we are not persuaded of reversible error in this rejection. We add
the following for emphasis.
Appellant argues all the pending and rejected claims as a group. We
select claim 1 as representative, and remaining claims 2–16, 18, 19, 21–26,
and 28–36 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2016).
The Examiner finds that Shearer teaches heating biomass in an
atmosphere which can contain oxygen producing a product which can be
further treated and whose carbon content can be optimized to the values
recited in the claims. Ans. 4.
Appellant argues that claim 1 recites ash that contains at least about
10 wt% carbon, whereas Shearer is silent to the carbon content of ash.
Appeal Br. 10. Appellant also argues that because Shearer is directed to
biomass and does not teach production of activated carbon products from
ash, a skilled artisan would not equate Shearer’s teachings, including
Shearer’s materials, with the claimed ash product. Id. at 11. In addition,
Appellant contends that the Examiner fails to provide evidentiary support
that the biomass combustion process could be adjusted to intentionally
generate a carbon-containing ash and then produce carbon from the ash. Id.
The Examiner responds that Shearer teaches a product having 10–99.5
wt% carbon, wherein the product may be improved by further treatment.
Ans. 5. The Examiner further finds that “true ash” has no carbon and thus
cannot be improved to increase its carbon content. Id. The Examiner,
therefore, interprets claim 1 as reciting the treatment of a solid reaction
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product including ash and carbon. Id. Since Shearer also teaches forming a
carbonaceous product for further treatment, and desires up to 99.5 wt%
carbon, the Examiner determines that there is no patentable difference
between Shearer and the claimed process. Id. Thus, although Shearer teaches
making biochar, the Examiner determines that this product is
indistinguishable from Appellant’s product because “both were made from
biomass using essentially the same process.” Id. at 6.
Appellant objects to the Examiner’s response as based on new facts
and reasoning which is an improper, undesignated new ground of rejection.
Reply Br. 3–4. As such, Appellant invites the Board to decline consideration
of such new facts and reasoning. Id. at 4 (citing Ex parte Yudoovsky, Appeal
2011-006238, n.3 (Feb. 16, 2012) and Ex parte Haalck, Appeal 2010-00260
(July 14, 2010)).
Whether the Examiner should have designated a new ground of
rejection is a petitionable matter and is, therefore, not properly before us.
This matter must be raised by a petition under 37 C.F.R. § 1.181; failure of
Appellant to timely file such a petition constitutes waiver of any argument
that the rejection must be designated as a new ground of rejection. See
37 C.F.R. § 41.40(a) (2019). Petitionable matters are not appealable to the
Patent Trial and Appeal Board. In re Berger, 279 F.3d 975, 984–985 (Fed.
Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); see
also MPEP § 1201.
Appellant further argues that Shearer fails to teach combusting a
feedstock with an oxidant, thereby generating ash comprising carbon. Reply
Br. 4. Appellant contends, in contrast, that Shearer teaches pyrolyzing a
feedstock in the absence of an oxidant to produce char. Id. at 4–6. Appellant
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asserts that a skilled artisan would appreciate that combustion (claims) and
pyrolysis (Shearer) are not equivalent processes. Id. at 6. Moreover,
Appellant urges that “ash” means any solid residue that remains following a
combustion process, and is not limited in composition. Id. at 7.
The issue before us is whether there is a patentable distinction
between an incomplete combustion process resulting in “ash contain[ing] at
least about 10 wt% carbon” as recited in claim 1 and an incomplete pyrolysis
process resulting in char containing at least about 10 wt% carbon as Shearer
teaches. Combustion is a process by which biomass is converted to, among
other products, ash via reaction with oxygen at elevated temperatures.
Pyrolysis is a process by which biomass is converted to, among other
products, char via reaction in the absence of oxygen at elevated
temperatures. Thus, superficially, combustion and pyrolysis appear to be
different processes with different products, i.e., ash and char, respectively.
However, a comparison of Appellant’s process and resulting product with
Shearer’s process and resulting product indicates that combustion and
pyrolysis and the products they produce are indistinct when operated under
similar process conditions.
In this regard, we note that Appellant discloses that the combustion
process is controlled so that the resulting product is ash containing at least
10 wt% carbon. Spec. ¶ 7. Among the parameters Appellant discloses that
may be controlled to achieve this result are residence time, temperature, and
amount of oxygen. Id. ¶ 8. Shearer teaches that the pyrolysis process can be
controlled so that the resulting product contains any desired amount of
carbon from 10–99.5 wt%. Shearer 8:5–12. Shearer also teaches that the
pyrolysis unit can be controlled such that the feedstock is heated at a specific
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rate to a desired temperature while being exposed to a specified level of
oxygen. Id. at 6:13–34. Thus, although Shearer indicates that the absence of
oxygen may be preferred in pyrolysis (id. at 6:40–41), Shearer nonetheless
contemplates the presence of a specified level of oxygen. See Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll
disclosures of the prior art, including unpreferred embodiments, must be
considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In
re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior
art reference’s disclosure is not limited to its examples).
In addition, Appellant has not demonstrated that Shearer’s ranges of
pyrolysis conditions, such as residence times and temperatures, differ from
those applied in the claimed combustion process so as to result in distinct
processes and products. Indeed, Appellant discloses combustion oxygen
levels overlapping pyrolysis oxygen levels. Compare Spec. ¶ 30 (“[i]n
pyrolysis, less oxygen is present than is required for complete combustion of
the material, such as less than 10% . . .”) and ¶ 58 (“one or more combustion
zones may include an atmosphere comprising oxygen in an amount of no
more than about 20% to no more than about 1%.”). Therefore, Appellant has
not established that the recited combustion process controlled so as to
produce ash containing at least 10 wt% carbon is patentably distinct from
Shearer’s pyrolysis process similarly controlled so as to produce char
containing 10–99.5 wt% carbon.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1–16, 18, 19, 21–26, and 28–36 as unpatentable over Shearer.

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Rejection 3: Obviousness over Shearer and Jha
As above, we review the appealed rejection for error based upon the
issues Appellant identifies, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(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.”). After considering
the record before us, we are not persuaded of reversible error in this
rejection. The following is added for emphasis.
The Examiner finds that Jha teaches a similar process and acid washes
to increase carbon content and activate carbon. Ans. 4, 6. The Examiner
states that “Jha teaches exactly the details that Shearer indicates would be
useful to treat the product to enhance it.” Id. at 6.
Appellant argues that Jha fails to remedy the deficiencies with regard
to Shearer argued previously. Appeal Br. 12. Appellant also contends that
Jha’s process of acid leaching is a purification process in contrast to step (c)
of claim 1, wherein the ash comprising carbon undergoes chemical reactions
to generate an activated carbon product. Reply Br. 7.
Initially, as discussed above, Appellant fails to persuade us of any
deficiencies in the rejection over Shearer that require remedy by Jha. In
addition, we note that claim 1, step (c) merely recites “further processing
said ash to increase the carbon content, thereby generating an activated
carbon product.” Appeal Br. 14, Claims App’x. This step does not require
chemical reaction to increase carbon content, and broadly encompasses
removal of non-carbon materials as one way to increase carbon content.
Therefore, Appellant fails to identify reversible error with regard to Jha.
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Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1–16, 18, 19, 21–26, and 28–36 over Shearer and Jha.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–
16, 18, 19, 21–26, 28–36 under 35 U.S.C. § 103 as unpatentable over
Shearer, alone or in view of Jha, is affirmed.
In addition, we summarily affirm the Examiner’s rejection of claim 21
under 35 U.S.C. § 112(b) as indefinite.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21 112(b) Indefiniteness 21
1–16, 18, 19,
21–26, 28–36
103 Shearer 1–16, 18, 19,
21–26, 28–36

1–16, 18, 19,
21–26, 28–36
103 Shearer, Jha 1–16, 18, 19,
21–26, 28–36

Overall
Outcome
1–16, 18, 19,
21–26, 28–36

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED