Ex Parte Datta et alDownload PDFPatent Trial and Appeal BoardDec 30, 201312561116 (P.T.A.B. Dec. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/561,116 09/16/2009 Rathin Datta 2031 (4575/23) 1679 7590 12/31/2013 CARDINAL LAW GROUP Suite 2000 1603 Orrington Avenue, Evanston, IL 60201 EXAMINER HURST, JONATHAN M ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 12/31/2013 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 RATHIN DATTA and RALPH CORLEY __________ Appeal 2012-006862 Application 12/561,116 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 4, 8-10, 12-18, 22, and 23. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is directed to a process for producing synthesis gas and the biological conversion of CO and mixtures of CO2 and H2 to liquid products, such as ethanol (Spec. ¶ [0001]). Appeal 2012-006862 Application 12/561,116 2 Claim 14 is illustrative: 14. A process for the production of liquid products from a biomass feedstock by indirect gasification to syngas comprising CO2, CO, H2 and CH4, and bio-conversion of syngas components, said process comprising: providing a biomass feedstock to a gasifier and indirectly gasifying the biomass feedstock by contact with a heating medium to produce a syngas stream comprising CO2, CO, H2 and at least 10 mole % CH4 on an anhydrous basis; passing a feed gas comprising the syngas stream and containing at least 10 mole % CH4 on an anhydrous basis from the gasifier to a bioreactor to convert CO and CO2 and H2 to liquid products by contact with microorganisms therein; withdrawing a bioreactor effluent stream containing the liquid products from the bioreactor and recovering liquid products from the bioreactor effluent stream; recovering a tail gas stream from the bioreactor comprising CO2 and CH4; separating CO2 from the tail gas stream to produce a CH4 rich gas stream; passing at least a portion of the CH4 rich stream to a reformer to produce a reformed stream comprising CO and CO2 and H2; and, passing at least a portion of the reformed stream to the bioreactor along with syngas from the gasifier to provide the feed gas to the bioreactor. Appellants appeal the following rejections: 1. Claims 4, 8-10, 12-16, 18, 22, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Phillips et al. (Thermochemical Ethanol via Indirect Gasification and Mixed Alcohol Synthesis of Lignocellulosic Biomass, National Renewal Energy Laboratory Technical Report NREL/TP-510-41168, April 2007) in view of Cortright et al. (US 2008/0216391 A1, published Sept. 11, 2008). 2. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Phillips in view of Cortright and Gaddy et al. (US 2003/0211585 A1, published Nov. 13, 2003). Appeal 2012-006862 Application 12/561,116 3 ISSUE Did the Examiner engage in impermissible hindsight in concluding that it would have been obvious to modify Phillips’ process to include the steps of “recovering a tail gas stream from the bioreactor comprising CO2 and CH4,” “separating CO2 from the tail gas stream to produce a CH4 rich gas stream,” “passing at least a portion of the CH4 rich stream to a reformer to produce a reformed stream comprising CO and CO2 and H2” and “passing at least a portion of the reformed stream to the bioreactor along with syngas from the gasifier to provide the feed gas to the bioreactor”? We decide this issue in the affirmative. FINDINGS OF FACT & ANALYSIS Appellants argue that “[i]t is only with the knowledge of the different operating possibilities permitted by Applicant’s combination of indirect gasification and a biological syngas conversion process that the substitutions and alteration in the Phillips arrangement would [have] be[en] made” (App. Br. 11). In other words, Appellants argue that the Examiner engaged in impermissible hindsight in concluding that it would have been obvious to modify Phillips’ process to pass the CH4 acquired from the tail gas of the bioreactor to a reformer in order to form a synthesis gas for recycle back to the bioreactor. We agree. The Examiner finds that Phillips teaches the claimed process except for the four steps recited on page 6 of the Answer. The missing steps from Phillips include recovering a tail gas from the bioreactor; separating the CH4 and CO2 from the tail gas; and passing at least portion of the CH4 from the tail gas to a reformer to produce CO, H2, and CO2 that is recycled to the Appeal 2012-006862 Application 12/561,116 4 bioreactor (Ans. 6). The Examiner finds that Phillips teaches that the syngas is fed to a reformer after gasification but before being fed to the bioreactor (Ans. 6). The Examiner finds that one of ordinary skill in the art would have recognized the treatment of the CH4 before feeding to the bioreactor and the treatment of the CH4 after feeding to the bioreactor as equivalent methods for breaking down CH4 (Ans. 6). The Examiner concludes that it would have been obvious to modify Phillips’ process such that the CH4 reforming is performed after the bioreactor as the mere substitution of equivalent methods to achieve the same result (Ans. 6-7). The Examiner, however, has not adequately explained why one of ordinary skill in the art would have modified Phillips’ process in the manner suggested absent hindsight. As noted by Appellants, Phillips discloses using a catalyst to synthesize the alcohol (Phillips 11). Phillips conditions and cleans-up the syngas by reforming tars and other hydrocarbons prior to feeding to the catalyst process to reduce the CO2 content and thus avoid damaging the catalyst (Phillips 11). Accordingly, Phillips would not have suggested relocating the reforming process step after the bioreactor synthesis. The Examiner relies on Cortright to teach the equivalence of a bioreactor using microorganisms and catalytic process to form alcohols (Ans. 7). The Examiner concludes that it would have been obvious to substitute Cortright’s bioreactor process that uses microorganisms for the catalytic alcohol synthesis in Phillips’ process as known equivalents (Ans. 7). However, even if such a substitution were made to Phillips’ process, the Examiner has not explained why, absent hindsight, one of ordinary skill in the art would have relocated the CH4 reforming step to after Appeal 2012-006862 Application 12/561,116 5 the bioreactor process. While the Examiner opines that CH4 “appears to go through the bioreactor unchanged in any regard,” no evidence has been provided to substantiate this remark. (Ans. 6, 10.) The Examiner has not shown that pretreatment of CH4 is necessarily equivalent to Appellants’ post treatment of CH4. On this record, we find that the Examiner has engaged in impermissible hindsight in concluding that Appellants’ claimed invention would have been obvious. We reverse the Examiner’s § 103 rejections. DECISION The Examiner’s decision is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation