Ex Parte Foody

Patent Trial and Appeal Board

Oct 29, 2018

13833353 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/833,353 03/15/2013
20995 7590 10/31/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Patrick J. Foody
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.
I0GEN.005C2 3874
EXAMINER
BOWERS, ERIN M
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. FOODY 1
(Applicant: I OGEN CORPORATION)
Appeal2017-001999
Application 13/833,353
Technology Center 1600
Before RICHARD J. SMITH, TA WEN CHANG, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
to reduce the life cycle GHG emissions associated with production of
biomethane. A hearing was held on September 11, 2018. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the obviousness rejection and reverse the indefiniteness
rejection.
1 According to Appellant, the real party in interest is Iogen Corporation.
(Appeal Br. 3.)
2 The transcript (Tr.) of the hearing is of record in the Application file.
Appeal2017-001999
Application 13/833,353
STATEMENT OF THE CASE
Background
"In recent years there has been significant concern about greenhouse
gas ('GHG') emissions and their effect on climate. GHGs, especially carbon
dioxide, ... contribute to climate change. One of the largest sources of
GHG emissions is the production and use of fossil fuels for transportation."
(Spec. ,r 3.)
"Like any other fuel source containing carbon, combustion of
renewable fuels such as ethanol releases carbon dioxide in the atmosphere.
In addition, the process of fermenting plant derived organic material to
produce the fuel will also produce carbon dioxide, which unless captured
will enter the atmosphere." (Spec. ,r 5.)
"Although an unwanted by-product of combustion, carbon dioxide has
substantial industrial uses .... Carbon dioxide enhanced oil recovery [EOR]
places the gas into under-producing or non-producing oil-bearing geologic
formations to increase the mobility of the oil, thus aiding in its recovery."
(Spec. ,r 6.)
"[N]umerous jurisdictions ... have set annual targets for reduction in
average life cycle GHG emissions of transportation fuel. Such an approach
is often referred to as a Low Carbon Fuel Standard ('LCFS')." (Spec. ,r 12.)
Claims on Appeal
Claims 46 and 49-52 are on appeal. 3 (corrected Claims Appendix
submitted July 13, 2016 ("App."), 31-32.) Claim 46 is illustrative and reads
as follows:
3 Pursuant to a required election of species, Appellant elected that the
"anaerobically digested organic material" be "plant derived organic
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Application 13/833,353
46. A method to reduce the life cycle GHG em1ss10ns
associated with production of biomethane, said method
compnsmg:
(i) anaerobically digesting organic material [plant
derived/sorghum] to produce biogas comprising biomethane and
biogenic carbon dioxide;
(ii) separating the biomethane and biogenic carbon
dioxide;
(iii) collecting an amount of biogenic carbon dioxide
generated from the step of separating;
(iv) introducing the biogenic carbon dioxide into apparatus
that transports carbon dioxide to one or more enhanced oil or gas
recovery sites and displacing or causing displacement of
geologic carbon dioxide, wherein one or more of the sites have,
within a 25 mile radius from their carbon dioxide underground
injection point, a carbon dioxide pipeline into which geologic
carbon dioxide is introduced, and written documentation reflects
that biogenic carbon dioxide is used to displace geologic carbon
dioxide; and
( v) generating or causing the generation of an advanced
biofuel or LCFS fuel credit due at least in part to GHG emission
savings resulting from said displacement in step (iv), wherein
said advanced biofuel or LCFS fuel credit is not subject to
invalidation, cancellation or invalidity in the event leakage of the
carbon dioxide from one or more of the sites occurs.
Examiner's Rejections
1. Claims 46 and 49--52 stand rejected under 35 U.S.C. § 103(a)
material," and that sorghum was the source of the plant derived organic
material. (Ans. 30, citing the Restriction Requirement dated June 6, 2013,
and Appellant's response dated July 3, 2013.) We limit discussion and
consideration to the elected species. See Ex parte Ohsaka, 2 USPQ2d 1460,
1461 (Bd. Pat. App. Int. 1987).
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Application 13/833,353
as unpatentable over Marshall, 4 ENS, 5 Xu, 6 Taglia, 7 RF A, 8 McMorris, 9 and
McPhail. 10 (Final Act. 5-15.) 11
2. Claims 51 and 52 stand rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. (Id. at 3--4.)
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes. Additional findings may also be found in this Decision, the Final
Action, and the Examiner's Answer.
FF 1. The Specification states that carbon dioxide inputs to the atmosphere
from "combustion of renewable fuels such as ethanol," or "the process of
fermenting plant derived organic material to produce the fuel," are
"considered relatively benign." (Spec. ,r 5.) The Specification also states
this relatively benign nature is also true of carbon dioxide
released due to the combustion, processing or decay of plant
matter and other organic material or biological sources, where
4 Marshall et al., US 2007 /0249029 Al, published Oct. 25, 2007
("Marshall").
5 Environmental News Service, Scientists develop fast-growing sorghum for
biofuel, http://www.ens-newswire.com/ens/oct2007 /2007-10-
09-094.asp, 10/09/2007, accessed 04/23/2013 ("ENS").
6 Y. Xu et al., Adding value to carbon dioxide from ethanol fermentations,
Bioresource Technology 101, 3311-19 (2010) ("Xu").
7 P. Taglia, Enhanced Oil Recovery (EOR): Petroleum Resources and Low
Carbon Fuel Policy in the Midwest (July 2010) ("Taglia").
8 Renewable Fuels Association,
http://web.archive.org/web/20100721235658/http://www.ethanolrfa.org/pag
es/taxincentives, archived 07/21/2012, accessed 04/23/2013 ("RFA").
9 McMorris, III et al., US 2007/0265897 Al, published Nov. 15, 2007
("McMorris").
10 L. McPhail et al., The Renewable Identification Number System and US.
Biofuel Mandates, USDA BI0-03 (2011) ("McPhail").
11 Final Office Action dated Sept. 24, 2015 ("Final Act.").
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(Id.)
the underlying carbon had previously been removed from the
atmosphere by photosynthesis. Carbon dioxide from such
biological sources is generally referred to as "biogenic carbon
dioxide."
FF 2. The Specification states that a
non-biogenic source of carbon dioxide for industrial use is that
which originates from underground reservoirs or deposits. This
type of carbon dioxide is produced underground from natural
processes. Carbon dioxide from this [] source is referred to as
"geologic carbon dioxide." ... release of geologic carbon dioxide
into the atmosphere is generally thought to increase
concentrations of atmospheric carbon dioxide and life cycle
GHG emissions, and thereby have an effect on the climate.
(Spec. ,r 8.)
FF 3. The Specification states that numerous jurisdictions have set annual
targets for reduction in average life cycle GHG emissions of transportation
fuel, an approach often referred to as "a Low Carbon Fuel Standard
('LCFS '), where credits may be generated for the use of fuels that have
lower life cycle GHG emissions than a specific baseline fuel." (Spec. ,r 12.)
FF 4. The Specification states that a Renewable Identification Number,
referred to as a RIN, is a credit used to track and manage the production,
distribution and use of renewable fuels for transportation purposes. (Spec.
,r 11.) According to the Specification, a RIN having a D code of 5 is an
advanced biofuel under current regulations (Spec. ,r,r 152, 164), although
"the information required for RIN generation and/or the format of the
information may change depending on prevailing regulations" (id. at ,r 159).
FF 4. Marshall teaches that the major products of fermentation and
distillation of biomass include ethanol, carbon dioxide, and stillage.
(Marshall ,r 27 .) Marshall teaches anaerobic digestion of organic material,
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such as stillage, wherein the biogas produced (methane and carbon dioxide)
may be collected and stored separately. (Id. at ,r,r 1, 27, 28, and 34.)
Marshall further teaches that the collected carbon dioxide may be supplied to
various industries. (Id. at ,r 28; see also Final Act. 6.)
FF 5. ENS teaches that sorghum can be used to produce biomass, the raw
material for cellulosic biofuels, that sorghum leaves and stalks hold the
greatest potential for sorghum-to-ethanol production, and that "high-biomass
sorghum ... could produce ... more than four times the current starch-to-
ethanol process." (ENS 1--4; see also Final Act. 7.)
FF 6. Xu teaches that:
Ethanol is produced through fermentation of . . . sorghum . . .
with CO2 as a by-product. ... Different from fossil energy, there
is no net CO2 contribution to the atmosphere during ethanol
fermentation since the carbon released was taken-up from the
atmosphere as the crops grew the previous year .... if the CO2
released during ethanol fermentation can be captured and stored,
there will be a sustained net removal of carbon from the
atmosphere. . . . Carbon capture and storage, coupled with
biomass energy production, will result in a negative CO2
em1ss10n.
(Xu 3312; see also Final Act. 8.)
FF 7. Taglia teaches "[t]he carbon-reduction opportunities ofEOR are
especially pertinent with low carbon fuel policies [ such as a low carbon fuel
standard (LCFS)] that are designed to reduce greenhouse gas emissions from
transportation fuels using lifecycle analysis." (Taglia 1.)
FF 8. Taglia teaches the use ofbiogenic C02 12 rather than or in place of
geologic CO2. (Taglia 14.) Taglia further teaches that
12 The designations CO2 and CO2 for carbon dioxide are used
interchangeably.
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every ton of CO2 captured from biological sources, such as
biomass combustion or ethanol fermentation, and stored in a
geological formation would actually count as a negative ton of
CO2 in carbon accounting. For example, if plants are grown for
energy, combusted in a power plant, and the CO2 is injected into
a geologic reservoir, the system will be actually pumping
atmospheric CO2 underground as new plants grow and absorb
additional CO2 from the atmosphere. The lifecycle analysis of a
system like this would still need to account for the so-called
"upstream" emissions related to harvest and transportation, but if
a substantial amount of biological CO2 is captured and stored
these energy systems provide opportunities for overall negative
CO2 emissions.
(Id. at 15.)
FF 9. Taglia teaches that "[t]he application of EOR to climate mitigation is
unique in that the CO2 reduction from the process can vary considerably
depending on where the CO2 originated, how the EOR operation is
performed, and how credits for the stored CO2 [are] allocated." (Taglia 34
( emphases added).) Taglia further teaches that"[ c ]onventional carbon
accounting treats CO2 emissions from biological materials to be 'climate
neutral."' (Id. at 14, n.19 .)
FF 10. The Examiner finds that "McMorris teaches a method of
systematically generating fuel credits," and that "production practice data
can be reported and may include identifying production practice compliance
through labeling that may include government approval or confer a
regulatory shield." (Final Act. 13-14; see also Final Act. 9-10 and
McMorris ,r,r 5, 10, 21, 35-36, 42, 51, 52, and 77.) The Examiner further
finds that the labeling of McMorris "can be interpreted as 'written
documentation'" and that McMorris teaches that "the labeling may identify
the source of the environmental removal units; in a method in which the
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displacement of geologic carbon dioxide by biogenic carbon dioxide results
in a decrease in life cycle GHG emissions, the labeling would, therefore,
include information about the displacement." (Final Act. 14.)
DISCUSSION
We adopt the Examiner's findings regarding scope and content of, and
motivation to modify or combine, the prior art, as set forth in the Final
Action and Answer. We discern no reversible error in the Examiner's
rejection of claims 46 and 49--52 as obvious.
We do not adopt the Examiner's findings regarding indefiniteness of
claims 51 and 52, and we discern reversible error in that rejection.
Obviousness Rejection
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection under 35 U.S.C. § 103(a).
Principles of Law
The test for obviousness is "what the combined teachings of the
references would have suggested to those of ordinary skill in the art" and not
"that the claimed invention must be expressly suggested in any one or all of
the references." In re Keller, 642 F.2d 413,425 (CCPA 1981) (citing cases).
An obviousness analysis "need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007). The question is "whether the combination was obvious to a person
of ordinary skill in the art .... any need or problem known in the field of
endeavor at the time of invention and addressed by the patent [application]
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can provide a reason for combining the elements in the manner claimed."
Id. at 420.
Analysis
Claim 46
We begin with claim construction. The Examiner construes the
phrase "that transports carbon dioxide to the one or more enhanced oil or gas
recovery sites" as merely reciting the intended use of the apparatus, and thus
the phrase "introducing the biogenic carbon dioxide into apparatus" reads on
any apparatus capable of transporting carbon dioxide to sites. (Final Act. 3.)
Appellant contends that "the phrase [ that transports carbon dioxide to the
one or more enhanced oil or gas recovery sites] is to be given patentable
weight because it further defines the apparatus in such a way as to
distinguish it from apparatus that do not transport carbon dioxide to the one
or more sites." (Appeal Br. 27.) We find that the Examiner properly
construes the subject phrase as a statement of intended use of the apparatus,
and that the phrase is also properly construed as an apparatus capable of
transporting carbon dioxide to sites as opposed to an apparatus that is not
capable of transporting carbon dioxide to sites. 13 (See Ans. 34.)
We construe the terms "displacing," "displace," or "displacement"
with respect to geologic carbon dioxide, consistent with the Specification, as
meaning "preventing, reducing or avoiding extraction of an amount of
geologic carbon dioxide from underground reservoirs or deposits that would
otherwise occur if geologic sources were used." (See Spec. ,r 43.)
13 Examples provided for transporting CO2 include "a pipeline, a container
for transporting the biogenic carbon dioxide by rail, trucking, shipping,
barge, or any other commercial distribution system." (Spec. ,r 98.)
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As claim 46 is properly interpreted, the claimed displacement occurs
with respect to "one or more" recovery sites, "wherein one or more of the
sites" have a geologic carbon dioxide pipeline within a 25 mile radius from
their carbon dioxide underground injection point. (App. 31.) That is,
"displacement" occurs regardless of a site's proximity to a geologic carbon
dioxide pipeline (i.e., not every site needs to be within the claimed proximity
to a CO2 pipeline). (See id.) As recited in claim 46, "written
documentation" and credit "due at least in part to GHG emission savings
resulting from said displacement" thus apply to a displacement regardless of
a site's proximity to a geologic carbon dioxide pipeline. In other words, as
claim 46 is written, the recited benefits occur regardless of the location of
the displacement site. (See Final Act. 12.)
Examiner's Position14
The Examiner determines that
the generation of biogenic carbon dioxide from ethanol
production and its use in EOR is known in the art, and it would
have been obvious to one of ordinary skill in the art that the use
of carbon dioxide produced by the method of Marshall would
replace the use of geologic carbon dioxide in EOR because
Taglia teaches that the majority of carbon dioxide used in EOR
is geologic carbon dioxide and that using carbon dioxide from
biological sources in EOR provides an opportunity for climate
mitigation and a negative carbon count in carbon accounting.
These benefits would apply regardless of the site's proximity to
a carbon dioxide pipeline containing geologic carbon dioxide.
(Final Act. 12.)
14 The Examiner sets forth findings, and conclusions based on those
findings, to support the rejection under Section 103. (Final Act. 5-15.) This
section of the decision does not set forth all of those findings or conclusions,
but only certain conclusions pertinent to Appellant's arguments.
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Application 13/833,353
Appellant's Arguments
Appellant advance several arguments in response to the Examiner's
rejection and relies on two declarations of the named inventor, Patrick J.
Foody. 15
Displacement of geologic CO2
Appellant contends that none of the references "teach or suggest
displacing geologic carbon dioxide with biogenic carbon dioxide as
claimed," and that "the Examiner fails to properly consider the strong
countervailing motivation to continue using readily available geologic
carbon dioxide (within 25 miles of the recited recovery sites)." (Appeal Br.
13.)
We are not persuaded. Taglia specifically teaches that
C02-EOR as performed traditionally in West Texas does not
provide any climate benefits since the CO2 that remains in the
oil reservoir originated in natural geologic deposits of CO2 ....
But using biogenic CO2, or the CO2 that is recycled in the
atmosphere by plant growth and decay or consumption, provides
an opportunity for even lower carbon EOR operations .... When
carbon from plant growth is sequestered in geologic formations,
this activity has the potential for energy with negative carbon
em1ss10ns.
(Taglia 14.) Thus, Taglia teaches the use ofbiogenic CO2 in place of (or
"avoiding extraction of') geologic CO2 (i.e., displacement) for EOR
operations, as well as "the potential for energy with negative carbon
emissions" as a result of such displacement. (See Ans. 17-18.) Moreover,
claim 46 does not require that every displacement site have the claimed
15 Declaration under 37 C.F.R. § 1.132 of Patrick J. Foody dated Sept. 2,
2014 ("Foody 1st Declaration") and Second Declaration of Patrick Foody
under 37 C.F.R. § 1.132 dated June 23, 2015 ("Foody 2nd Declaration").
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proximity to a geologic CO2 pipeline, and the fact that it may be more
convenient to use geologic CO2 rather than biogenic CO2 does not obviate
the motivation to combine the teachings of the respective references. See,
e.g., Medichem, S.A. v Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
("[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine."). (See Ans. 20.)
Appellant further contends that the Examiner erred by failing to
consider the extent to which various portions of Xu and Taglia undermine
the obviousness rejection, and "improperly picks and chooses from among
seven different references." (Appeal Br. 14.) In particular, Appellant
contends that none of the prior art "discloses an advanced biofuel or LCFS
fuel credit that is (1) due at least in part to GHG emission savings resulting
from displacement and (2) not subject to invalidation, cancellation or
invalidity in the event leakage of carbon dioxide occurs." (Id.) Appellant
further contends that Taglia teaches away and that, in view of Taglia, there is
a lack of a reasonable expectation of success. (Id.)
We note that picking and choosing may be entirely appropriate in an
obviousness rejection, In re Arkley, 455 F.2d 586, 587 (CCPA 1972), and
that the mere number of references used does not weigh against a conclusion
of obviousness, In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
Advanced biofuel or LCFS fuel credit
Appellant acknowledges that numerous jurisdictions have LCFS
programs for reduction in average life cycle GHG emissions of
transportation fuel "where [LCFS] credits may be generated for the use of
fuels that have lower life cycle GHG emissions than a specific baseline
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fuel." (FF 3.) In view of the teachings of Taglia regarding the benefits of
displacing geologic CO2 with biogenic CO2, and the motivation provided by
such LCFS credits, a person skilled in the art would appreciate that the
displacement taught by Taglia would result in an LCFS credit that was "due
at least in part to GHG emission savings resulting from said displacement."
(See Ans. 19.)
Appellant also argues that the prior art does not teach that the
advanced biofuel or LCFS fuel credit is not subject to invalidation,
cancellation or invalidity in the event leakage of carbon dioxide occurs, and
that "there was an expectation by those skilled in the art at the time of the
invention that the potential for leakage impaired the value of advance biofuel
and LCFS credits." (Appeal Br. 15-17, quoting Foody 2nd Declaration
,r 12.) Yet Appellant acknowledges that leakage ofbiogenic CO2 to the
atmosphere is considered relatively benign. (FF 1.) Moreover, Xu expressly
teaches that "[ c ]arbon capture and storage, coupled with biomass energy
production, will result in a negative CO2 emission" (FF 6), and Taglia
expressly teaches that conventional carbon accounting treats CO2 emissions
from biological materials to be "climate neutral" (FF 8, 9). Art cited by the
Examiner thus clearly shows that emissions of biogenic CO2 should not
result in invalidation, cancellation or invalidity of a credit. Thus, a person of
ordinary skill in the art would have reasonably understood and inferred that
leakage ofbiogenic CO2 would not result in invalidation or cancellation of
the subject credit. See KSR, 550 U.S. at 418.
Appellant argues in the Reply Brief that the Examiner's statements
that certain aspects of the fuel credit are not expressly or explicitly taught
indicates that the Examiner is relying on inherency, and that the Examiner
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has failed to establish inherency. (Reply Br. 4--6.) 16 However, that a
particular aspect of the fuel credit is not expressly or explicitly taught does
not mean that the Examiner is relying on inherency. The test for
obviousness is "what the combined teachings of the references would have
suggested to those of ordinary skill in the art." See Keller, 642 F.2d at 425;
see also KSR, 550 U.S. at 418 (the obviousness analysis "can take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ").
Taglia and Foody Declarations
Appellant advances arguments regarding Taglia and the Foody 2nd
Declaration. (Appeal Br. 17-26.)
Relying on the Foody 2nd Declaration, Appellant argues that Taglia
addresses "the risk that CO2 stored during the [EOR] process may leak,"
that, due in part to the risk of carbon dioxide leakage, "Taglia expressly
discourages the use of carbon dioxide in EOR applications (C02-EOR) as a
recognized method of achieving a reliable level of GHG emission
reduction," and that "there were considerable uncertainties associated with
the use of carbon dioxide at recovery sites because the amount of leakage at
any one particular site was typically unknown and therefore the risk of
leakage was always a consideration." (See Appeal Br. 17-20.)
We are not persuaded. We note that Taglia is an overview paper that
discusses the use ofmanmade (anthropogenic) carbon dioxide, geologic
16 See also Appeal Brief 14--16 ("[s]uch fuel credits are not an inherent result
of using biogenic carbon dioxide in EOR," "LCFS and advanced biofuel fuel
credits (including RIN s) do not inherently meet the recited fuel credit
limitation," and "the recited fuel credit limitation is not inherent.").
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carbon dioxide, and biogenic carbon dioxide in EOR, and that Appellant's
citations to leakage issues do not specify whether Taglia is referring to all of
those three sources of CO2 or fewer than those three sources ( e.g., just
geologic carbon dioxide or anthropogenic carbon dioxide). What is clear,
however, is that Taglia teaches that the use ofbiogenic CO2 in EOR
"provides an opportunity for even lower carbon EOR operations" and "has
the potential for energy with negative carbon emissions," that
"[ c ]onventional carbon accounting treats CO2 emissions from biological
materials to be 'climate neutral,"' and that biogenic CO2 that "would
normally vent to the atmosphere [] is not typically considered to have a
climate impact." (See Taglia 14, 15, n.19.) Based on these teachings, we
are unpersuaded by Appellant's contention that, in view of Taglia, there is a
lack of a reasonable expectation of success.
Based on the foregoing, we thus discern no error in the Examiner's
statement that
Taglia's teachings that carbon dioxide leaks from EOR sites but
that carbon dioxide from fermentation is considered climate
neutral provides the entire basis for the GHG emission reduction
seen in [Appellant's] invention: the substitution of a climate-
neutral source of carbon dioxide (i.e., biogenic carbon dioxide)
for a source of carbon dioxide that would have a large climate
impact (i.e., geologic carbon dioxide) when used in a process that
leaks carbon dioxide into the atmosphere.
(Ans. 24.)
Thus, rather than teaching away, as alleged by Appellant, Taglia
"encourages the approach taken by [Appellant]." See In re Brandt, 886 F.3d
1171, 1178 (Fed. Cir. 2018).
Appellant also argues in the Reply Brief that the "evidence of record
includes unexpected results." (See Reply Br. 6-7; Foody 2nd Declaration ,r,r
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11-22.) We are not persuaded. Among other requirements, 17 evidence of
unexpected results requires a showing that the results are unexpected.
However, Appellant does not persuasively establish that a person of ordinary
skill in the art would have found the asserted results unexpected. See In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Moreover, the burden of showing
unexpected results rests on "he who asserts them" (Appellant), and it is not
enough to show that results are obtained which differ from those obtained in
the prior art. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). We are
similarly unpersuaded by Appellant's argument that the Examiner failed to
properly weigh the evidence of record. 18 (See Appeal Br. 26; Reply Br. 7-
8.)
Obviousness Summary (Claim 46)
Appellant acknowledges the known concern of CO2 emissions to the
atmosphere, that atmospheric emission of biogenic CO2 is "considered
relatively benign" whereas atmospheric emission of geologic CO2 "is
generally thought to increase concentrations of atmospheric carbon dioxide
and life cycle GHG emissions," and that numerous jurisdictions have set
targets for reducing average life cycle GHG emissions of transportation fuel
and provide credits (such as RINs) for the use of fuels that have lower life
17 For example, unexpected results must be shown to be unexpected
compared with the closest prior art. See In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991).
18 We are also unpersuaded by Appellant's hindsight argument. (Appeal Br.
26.) Any concern regarding hindsight bias is overcome because the
Examiner points to specific disclosures in the prior art that give a reason or
motivation to make the claimed combination. See Otsuka Pharm. Co., Ltd.
v. Sandoz, Inc., 678 F.3d 1280, 1292 (Fed. Cir. 2012).
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cycle GHG emissions than a specific baseline fuel. (FF 1--4.) The combined
teachings of Marshall and ENS teach and suggest the anaerobic digestion of
sorghum to produce biogas, comprising methane and carbon dioxide, and the
separation, collection, and supply of the biogenic carbon dioxide to other
industries. (FF 4 and 5.) Xu and Taglia teach the displacement of geologic
CO2 with biogenic CO2 and the opportunities for reduction of life cycle
GHG emissions and credits. (FF 6-9.) McMorris teaches the generation of
fuel credits, and written documentation that would include information about
the displacement when the method of Taglia is used to displace geologic
CO2 with biogenic CO2. (FF 10.) Finally, given the accepted benign nature
of biogenic CO2 emissions, a person of ordinary skill in the art would
understand that a credit based on such displacement would not be subject to
invalidation, cancellation or invalidity. See KSR, 550 U.S. at 421 ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton").
Claims 51 and 5 2
Dependent claims 51 and 52 recite a numerical range that the life
cycle GHG emission associated with the production of the biomethane are
reduced, 19 as a result of the displacement of geologic carbon dioxide
pursuant to the process of claim 46. (Appeal Br. 31-32.) The Examiner
rejected claims 51 and 52 because they recite the result of practicing the
method of claim 46, and "[a] clause in a method claim is not given
patentable weight when it simply expresses the intended result of a process
step positively recited." (Final Act. 2.) Appellant contests the rejection
19 Claim 51 recites "reduced by between about 2 g C02eq/MJ and about 35 g
C02eq/MJ" and claim 52 recites "reduced by between about 10 g C02eq/MJ
and about 35 g C02eq/MJ." (App. 31-32.)
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because "the Examiner failed to give patentable weight to the recited life
cycle GHG emission reductions" and because the Examiner "did not point to
any teaching or suggestion in the cited references to meet the [ recited] life
cycle GHG emission reductions." (Appeal Br. 28.)
The Specification states that the reduction in life cycle GHG
emissions is a function of the amount of CO2 produced (e.g., in the
production ofbiomethane) and the amount of that CO2 used in
displacement, and that "[t]he amount of carbon dioxide savings ... can be
calculated using methods known in the art." (See Spec. ,r,r 32, 51, 55, 130,
195, 196.) Thus, we agree with the Examiner that claims 51 and 52 merely
recite the result of practicing the method of claim 46, and do not otherwise
add any nonobvious limitations to the method of claim 46. See Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1375-76 (Fed.
Cir. 2001) (finding that the subject claim expression "is only a statement of
purpose and intended result ... [that] does not result in a manipulative
difference in the steps of the claim.").
The decision in L.A. Biomedical Res. Inst. at Harbor-UCLA Medical
Center v. Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) does not warrant a
different conclusion. (See Supplemental Brief dated Sept. 14, 2017.) In
Lilly, the only independent claim used the terms "arresting or regressing,"
which the court concluded added "an efficacy requirement that is not
otherwise found in the claim language." Lilly, 849 F.3d. 1061. In contrast,
claim 46 does not require a certain efficacy and claims 51 and 52 do not add
any nonobvious limitations to the method of claim 46. That is, claims 51
and 52 merely recite a result of practicing claim 46. See Bristol-Myers
Squibb, 246 F.3d at 1375-76.
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Accordingly, for the reasons of record and as set forth above, we
affirm the obviousness rejection of claims 46, 51, and 52. Claims 49 and 50
were not argued separately and fall with claim 46.
Printed Matter
"Claim limitations directed to printed matter are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied." Praxair Distribution, Inc.
v. Malllinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018)
( citing cases). "Claim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to patentable
weight because such information is not patent eligible subject matter under
35 U.S.C. § 101." Id. at 1032; see In re Chaifzeld, 545 F.2d 152, 157
(CCPA 1976) ("Some inventions, however meritorious, do not constitute
patentable subject matter, e.g., printed matter .... "). "While the doctrine's
underlying rationale is in subject matter eligibility, its application has been
in analyzing other patentability requirements, including ... nonobviousness
under 35 U.S.C. § 103, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1072-74
(Fed. Cir. 2011)." Praxair, 890 F.3d at 1032.
Certain limitations of claim 46 recite printed matter because they are
directed to the content of information. Those limitations include "written
documentation [that] reflects that biogenic carbon dioxide is used to displace
geologic carbon dioxide," the "advanced biofuel or LCFS fuel credit due at
least in part to GHG emission savings resulting from said displacement,"
and that the credit "is not subject to invalidation, cancellation or invalidity in
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the event leakage of the carbon dioxide."20 (Spec. ,r 167.)
The informational nature of those claim limitations was confirmed
during the oral hearing with Appellant's counsel Joseph Mallon:
written documentation
JUDGE SMITH: So what is [ written documentation]
exactly, and who prepares that?
MR. MALLON: That would be prepared by the person
who -- or the entity that wants the fuel credit, in a lot of cases.
JUDGE SMITH: Okay. It's got information in it that
basically says that this displacement took place. Is that
essentially what --
MR. MALLON: That's right.
(Tr. 8.)
advanced biofuel or LCFS fuel credit
JUDGE SMITH: Okay. So ifwe move to step 5, and there
is a generation of -- causing generation of a fuel credit.
Now, what exactly -- who actually generates that, and what --
what type of information does that include?
MR. MALLON: So the generating of the fuel credit would
be by the -- you know, in most cases, by the person who's seeking
the fuel credit, and they would seek to substantiate the fact that
they are qualified for the -- qualified for the fuel credit. ... Now,
it's going to be individualized for a particular set of facts, and
you would substantiate that on the record.
JUDGE SMITH: Okay. So it is basically, for lack of a
better way to say it, compiling the pertinent information that
would justify the government entity providing the credit. Is that
right?
20 See, for example, the various information provided by a RIN at paragraphs
158-173 of the Specification, including "a D code of 5 instead of 6 by
carrying out the displacement in accordance with the invention." (Spec.
,r,r 158-173.)
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MR. MALLON: I think that's fair to say, yes.
(Tr. 8-9.)
credit not subject to invalidation, cancellation or invalidity
JUDGE SMITH: Okay. So then the last -- and you've got
this last statement here, the credit, basically, is not subject to
invalidation, cancellation, or invalidity. Is that something that
you are claiming that has been invented, if you will? That's
basically backing your calculation; is that correct?
MR. MALLON: Well, you would have to -- you would
have to seek that. It's not something that automatically follows
out of the fact that you've done this displacement. . . . So the
government or the regulator wouldn't just issue it automatically,
because you have, you know, said that you did displacement, I
think is the point. ...
JUDGE SMITH: So you would provide the appropriate
authorities with the information about what you've done, and
essentially try to persuade them to give you a credit that can't be
cancelled? Is that --
MR. MALLON: Yes. But the reason -- the physical
reason that it wouldn't be cancelled would be the fact that the
geologic is remaining underground. And any leakage of the
biogenic would not change that fact, right?
(Tr. 12-13.)
Here, the limitations at issue are clearly directed to the content of
information (i.e. printed matter) and, "[ w ]here the printed matter is not
functionally related to the substrate, the printed matter will not distinguish
the invention from the prior art in terms of patentability." In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d 1381,
1387 (Fed. Cir. 1983).). (See FF 4.)
As further basis for the "printed matter" nature of the subject claim
limitations, Appellant refers to calculations (see Appeal Br. 20-23) that are
essentially mental steps premised on the notion that leakage of biogenic CO2
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is offset by the same amount of geologic CO2 that is displaced (avoided or
not used) that would otherwise have leaked had biogenic CO2 not been used,
and they underlie the claim recitation that the "credit is not subject to
invalidation, cancellation or invalidity in the event leakage of the carbon
dioxide from one or more of the sites occurs." (See Tr. 9--10.) Here, those
mental steps are considered printed matter and are thus not entitled to
patentable weight. See Praxair, 890 F .3d at 1033-34. ("Because claim
limitations directed to mental steps may attempt to capture informational
content, they may be considered printed matter lacking patentable weight in
an obviousness analysis.").
We also find that the printed matter of claim 46 is not functionally
related to the substrate (i.e. the medium) on or in which it is applied. 21 Thus,
in addition to our conclusion that the Examiner did not err in determining
that the claim limitations "written documentation [that] reflects that biogenic
carbon dioxide is used to displace geologic carbon dioxide," the "advanced
biofuel or LCFS fuel credit due at least in part to GHG emission savings
resulting from said displacement," and that the credit "is not subject to
invalidation, cancellation or invalidity in the event leakage of the carbon
dioxide" would have been obvious in view of the prior art, we also
determine that those claim limitations are not entitled to patentable weight
because they are directed to printed matter and not functionally related to the
substrate on which they are applied.
21 For example, the Specification states that "[p ]referably, such written
documentation is in computer readable format" (Spec. ,r 106), and, under
current regulations, a RIN contains "information in the forms of data
elements that are introduced into a web-based system administered by the
EPA" (id. at i1 159).
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Indefiniteness Rejection
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, as indefinite.
Analysis
The Examiner states that claims 51 and 52 recite levels of GHG
emission reductions "between about particular values." (Final Act. 4.)
According to the Examiner, "[ w ]hile either the term 'between' or the term
'about' may be acceptable in a claim, the combination of the two introduces
indefiniteness without a reasonable explanation in [Appellant's
Specification]." (Id.) Appellant contests the rejection "because the
interpretation set forth by the Examiner unreasonably and improperly parses
the terms 'between' and 'about' in such a way as to read them separately
instead of together." (Appeal Br. 29.)
"[A] claim is indefinite when it contains words or phrases whose
meaning is unclear," i.e., "ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention." In re
Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014); see also In re McAward,
No. 2015-006416 (PTAB Aug. 25, 2017) (precedential). Here, claims 51
and 52 recite "between about ... and about." (App. 31-32.)
We do not find the claimed terminology indefinite. The term "about"
may well be sufficiently definite, as the Examiner acknowledges. (Final
Act. 4.) In our view, once the limits of "about" are determined for each end
of the range, the phase "between about ... and about" would be sufficiently
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clear to a person of ordinary skill in the art. Accordingly, we reverse the
indefiniteness rejection of claims 51 and 52.
Conclusions of Law
A preponderance of evidence of record supports the Examiner's
rejection of claims 46 and 49-52 under 35 U.S.C. § 103(a).
A preponderance of evidence of record fails to support the Examiner's
rejections of claims 51 and 52 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as indefinite.
SUMMARY
We affirm the obviousness rejection and reverse the indefiniteness
rejection.
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).
AFFIRMED
24