Biogenic Reagent Ventures, LLCDownload PDFPatent Trials and Appeals BoardDec 2, 20202020000082 (P.T.A.B. Dec. 2, 2020) Copy Citation 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. Appeal 2020-000082 Application 14/523,358 2 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. Appeal 2020-000082 Application 14/523,358 3 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), Appeal 2020-000082 Application 14/523,358 4 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 Appeal 2020-000082 Application 14/523,358 5 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 Appeal 2020-000082 Application 14/523,358 6 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 Appeal 2020-000082 Application 14/523,358 7 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. Appeal 2020-000082 Application 14/523,358 8 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. Appeal 2020-000082 Application 14/523,358 9 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 Copy with citationCopy as parenthetical citation