Ex Parte DERUYTER et al

Patent Trial and Appeal Board

Sep 10, 2018

14510145 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/510,145 10/09/2014
23906 7590 09/12/2018
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
JOHN C DERUYTER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CL6137USNP 9317
EXAMINER
HENDRICKSON, STUART L
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. DERUYTER, ANDREW H. HEGGENSTALLER,
STEVEN W. OGLE, STEPHANIE C. VRAKAS, and
DAVID WILLIAM WOOD
Appeal 2017-011359
Application 14/510, 145
Technology Center 1700
Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision finally rejecting claims 1, 3-6, and 27-33. 3 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our Decision refers to the Specification ("Spec.") filed October 9, 2014,
the Examiner's Final Office Action ("Final Act.") dated August 17, 2016,
Appellant's Appeal Brief ("Appeal Br.") filed January 9, 2017, the
Examiner's Answer ("Ans.") dated July 13, 2017, and Appellant's Reply
Brief ("Reply Br.") filed September 11, 2017.
2 Appellant is the Applicant, E. I. du Pont de Nemours and Company, which
is identified in the Appeal Brief as the real party in interest (Appeal Br. 2).
3 Pending claims 11-26 have been withdrawn from consideration and are not
before us on appeal (Final Act. 1 ).
Appeal2017-011359
Application 14/510,145
STATEMENT OF THE CASE
The invention relates to a composition containing ash from burning
filter cake and, optionally lignocellulosic syrup, co-products of a process for
the production of alcohol from a lignocellulosic biomass which is useful
land applications (Spec. 2:7-13).
Claims 1 and 28, reproduced below from the Claims Appendix to the
Appeal Brief, are illustrative of the subject matter on appeal. The limitations
at issue are italicized.
1. A composition comprising (i) ash produced by burning
lignocellulosic filter cake and optionally lignocellulosic
syrup, and (ii) combusted combustion enhancement
material, wherein the filter cake and syrup are co-products
of a process for the production of alcohol from a
lignocellulosic biomass.
28. A composition comprising (i) ash produced by burning
lignocellulosic filter cake and optionally lignocellulosic
syrup, and (ii) additional syrup, wherein the filter cake and
syrup are co-products of a process for the production of
alcohol from a lignocellulosic biomass.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
1. Claims 1, 3---6, 27-29, and 31-33 under 35 U.S.C. § I02(a)(l)
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Griffin; 4
4 WO 2013/029171 Al, published March 7, 2013. The Examiner relies,
without objection, on Griffin et al., US 9,102,951 B2, issued August 11,
2015 ("Griffin"), as an equivalent reference.
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Application 14/510,145
2. Claims 1, 3-6, 27-29, and 31-33 under 35 U.S.C. § 103 as
unpatentable over Griffin taken with Martinez; 5 and
3. Claims 1, 3-6, and 27-33 under 35 U.S.C. § 103 as
unpatentable over Griffin taken with Martinez and Brown. 6
ANALYSIS
For purposes of this appeal, to the extent that the claims are
separately argued, we will address them separately consistent with 3 7 C.F .R.
§ 4I.37(c)(l)(iv). Appellant does not dispute the prior art status of the
applied references.
Claim 1
The Examiner finds, in Rejection 1, Griffin teaches burning the
remains from a biomass-to-alcohol process to make ash (Ans. 1 ). The
Examiner finds that there appears to be no difference between Griffin's ash
and the ash as recited in claim 1, even though the process for producing each
ash product may not be the same because the original starting material is not
relevant and the syrup is optional (id.). In addition, the Examiner finds
Griffin's extraneous salts meet the additive since the combustion of CaC03
results in CaO, which in water with the salts makes a Ca salt (id. at 1-2).
In Rejection 2, the Examiner finds that, to the extent that Griffin fails
to explicitly teach CaO, Griffin nonetheless teaches adding CaO to a
fertilizer (Ans. 2). The Examiner concludes it would have been an obvious
expedient to add CaO to Griffin's ash composition to make a better fertilizer
(id.).
5 Martinez Garmendia, WO 2012/069665 Al, published May 31, 2012
("Martinez").
6 Brown, US 7,867,365 B2, issued January 11, 2011.
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Application 14/510,145
In Rejection 3, the Examiner acknowledges that Griffin fails to teach
the form 7 of the ash product, but nonetheless finds the form to be an obvious
expedient given Griffin's teaching of recovering, selling, and transporting
the ash (Ans. 2). Moreover, the Examiner finds Brown teaches the
composition of a cake and other "leftovers," and concludes the use of
Brown's material in Griffin's process "is an obvious expedient to recover a
valuable product" (id.).
Appellant argues that Griffin fails to teach or suggest the combusted
combustion enhancement material of claim 1 (Appeal Br. 3, 4). Further,
Appellant contends that Griffin removes salts generated during the process
from the still bottoms because the presence of salts therein causes problems
during incineration (id. at 3). Appellant notes that the combustion
enhancement material is added to the combustion process to enhance or
improve combustion (id.).
Appellant additionally argues that an ash generated by burning the
lignocellulosic filter cake, and optionally lignocellulosic syrup, is
substantially different from Griffin's ash (Appeal Br. 4). Because Griffin
removes salts from the still bottoms, Appellant urges that Griffin's ash
contains little or no salts (id.). Appellant contends that the present invention,
in contrast, does not remove inorganic salts prior to incineration and the
resulting ash contains significant amounts of such salts including potassium
chloride as well as mineral nutrients needed for plant growth such as sulfur,
potassium, phosphorus, magnesium, and iron (id. at 5).
7 The Examiner's reference to the "form" of the ash product appears to be in
reference to claim 30's recitation that "the composition is in the form of
pellets, granules or briquettes."
4
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Application 14/510,145
Appellant's arguments are not persuasive of reversible error. We
begin, appropriately, with construing claim 1. See Oakley, Inc. v. Sunglass
Hut Int'!, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (explaining that anticipation
and obviousness require comparison of the properly construed claims to the
available prior art); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
F.3d 1343, 1351 (Fed. Cir. 2001) ("Only when a claim is properly
understood can a determination be made ... whether the prior art anticipates
and/or renders obvious the claimed invention."). During examination, claim
terms are given their broadest reasonable construction consistent with the
specification. Under a broadest reasonable interpretation, words of the claim
must be given their ordinary and customary meaning given to the term by
those of ordinary skill in the art at the time of the invention, unless such
meaning is inconsistent with the specification. Honeywell Int 'l Inc. v.
Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007).
Here, claim 1 recites a composition comprising an ash produced by
burning lignocellulosic filter cake and combusted combustion enhancement
material (CEM), wherein the filter cake is a co-product of a process for the
production of alcohol from a lignocellulosic biomass. The ash need not
include burned lignocellulosic syrup because such syrup is optional.
Moreover, claim 1 does not require that the CEM be added to the filter cake
prior to burning; rather, the combusted CEM may be added to ash produced
by burning only the filter cake. In addition, claim 1 neither requires
inorganic salts nor excludes their removal prior to burning the filter cake.
Indeed, claim 1 does not recite any specific compositional elements or
molecules for the resulting composition. Claim 1 merely requires that the
ash be produced by burning a filter cake from an alcohol from
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lignocellulosic biomass production process and that the composition
includes a combusted CEM of unknown composition.
Appellant discloses that a CEM is "any material that is added to the
combustion process of the present invention that enhances or improves the
combustion" (Spec. 7:6-8). Appellant further discloses that common CEMs
"include but are not limited to calcined clay and limestone" (id. at 7:8-9).
Appellant's Specification also teaches that any appropriate CEM may be
added "such as sand, calcium carbonate, and calcined clay" (id. at 15 :4---6).
Thus, although Appellant identifies several materials as examples of a
suitable CEM, the CEM may be any material that enhances or improves
combustion. Given this description of CEM, we note that the breadth of a
combusted CEM is even greater because it covers any combustion product
of any CEM.
As indicated above, one possible CEM is a calcium carbonate or
limestone material. The Examiner finds, without dispute, that burning of
limestone results in CaO. As the Examiner finds, Griffin teaches that the
feedstock for the lignocellulosic conversion process includes a variety of
materials including calcium (Griffin 14:53-58). We note Griffin also
teaches not only that lime is injected into the incinerator bed, but that the
final product would include a mix of calcium sulfate and CaO (id. at
Example 2, 17:48-50, 66). Griffin further teaches that, even where
inorganic salts have been removed, the final ash product would contain some
CaO (id. at Example 3, 19: 1-2). It is, therefore, clear that Griffin's ash
contains CaO, which is the same material as combusted CEM where the
CEM is limestone or calcium carbonate.
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We further note that Griffin teaches that the filter cake, prior to
incineration contains sand (Griffin, Example 1, 15:58-59). Since sand is
also one of the CE Ms Appellant's Specification teaches, the result of
burning Griffin's filter cake would include combusted sand. Accordingly,
we agree with the Examiner that Appellant's composition of claim 1 is
indistinguishable from Griffin's ash product, either with or without removal
of inorganic salts.
Once the Examiner, as here, establishes a prima facie case of
anticipation and/or obviousness, the burden to prove that Griffin's products
do not necessarily or inherently possess the characteristics of the claimed
product shifts to Appellant. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir.
1985). Appellant fails to direct our attention to persuasive technical
reasoning or an evidentiary showing demonstrating that Griffin's product is
not the same or similar to that claimed.
We, therefore, affirm the Examiner's anticipation and obviousness
rejections of claim 1.
Claim 27
Claim 27 depends from claim 1 and further requires that the CEM is
calcined clay or limestone. Appellant argues that Griffin fails to teach or
suggest a CEM such as calcined clay or limestone (Appeal Br. 5). This
argument is not persuasive of reversible error because, as set forth above,
not only does Griffin teach that the filter cake includes calcium, Griffin
specifically teaches the addition of lime to the incinerator bed and that the
final ash product includes CaO, i.e., combusted limestone. We, therefore,
affirm the Examiner's anticipation and obviousness rejections of claim 27.
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Claim 28
Independent claim 28, unlike claim 1, requires not only the ash
produced by burning the lignocellulosic filter cake and optionally
lignocellulosic syrup, but also additional lignocellulosic syrup. In other
words, claim 28 recites a composition of ash and lignocellulosic syrup.
Appellant argues that Griffin fails to teach such a combination (Appeal Br.
5).
This argument is persuasive of reversible error. Claim 28, when
properly construed as above, requires syrup in the final composition. The
Examiner erroneously interprets claim 28 as not requiring the presence of
syrup in the final composition, only a combustion product of syrup (Ans. 3).
Moreover, the Examiner makes no findings regarding such a combination
nor presents a conclusion that such a combination would have been obvious
to one of ordinary skill in the art. As such, we cannot say that the Examiner
has provided some articulated reasoning with sufficient rational
underpinning to support the conclusion of obviousness. In re Kahn, 441
F.3d 977,988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness."), quoted with approval in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007). Accordingly, we reverse the
Examiner's obviousness rejection of claim 28, and claims 29-33 which
depend therefrom.
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1,
3-6, and 27 under 35 U.S.C. § 103(a) as unpatentable over Griffin, alone or
further taken with Martinez and Brown, is affirmed.
However, for the reasons given in the Appeal and Reply Briefs, the
decision of the Examiner rejecting claims 28-33 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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