Ex Parte VANDER HOFF et alDownload PDFPatent Trial and Appeal BoardMar 29, 201713765782 (P.T.A.B. Mar. 29, 2017) 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. 13/765,782 02/13/2013 MARK VANDER HOFF 014832.215 US 6139 24239 7590 03/31/2017 MOORE & VAN AT .TEN PLLC P.O. BOX 13706 3015 Carrington Mill Boulevard, Suite 400 Research Triangle Park, NC 27709 EXAMINER FAN, LYNN Y ART UNIT PAPER NUMBER 1651 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): iplaw @ mvalaw. com u sptomail @ m valaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK VANDER HOFF, TODD BENSON, JASON BELL, and MARC PUGH1 Appeal 2016-000340 Application 13/765,782 Technology Center 1600 Before ERIC B. GRIMES, ERICA A. FRANKLIN, and DAVID COTTA, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of making biodiesel fuel, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE “Biodiesel is produced through a chemical reaction of [] triglycerides (TG) or free fatty acids (FFA) with an alcohol, such as methanol, to form an 1 Appellants identify the Real Party in Interest as Smartflow Technologies, Inc. (Appeal Br. 3.) Appeal 2016-000340 Application 13/765,782 alkyl ester. . . . [Conversion of both free fatty acids and triglycerides may be effected with enzyme catalysis.” (Spec. 1 6.) One “issue confronting the production of biodiesel occurs during the transesterification of oil wherein unwanted high levels of glycerol may be formed.” {Id. 116.) “Th[e] separation of glycerol, water and other unwanted products can be accomplished by the use of a cross-flow filtration cassette.” {Id. 117.) Claims 1—4, 6—8, 10-12, and 18 are on appeal. Claim 1 is the only independent claim and reads, in part, as follows (emphasis added): 1. A method for producing an alkyl ester for use as a biodiesel fuel from an oil or grease source, wherein the oil or grease source comprises free fatty acids and triglycerides, the method comprising: (a) providing the oil or grease source as a liquid medium; (b) moving the oil or grease source through a first cross-flow filtration cassette wherein such oil or grease source is dewatered and the water content is separated into a water permeate stream and the remaining oil or grease source in the retentate stream is collected; (c) combining the oil or grease source retentate with an esterification biocatalyst and an alcohol in a first reaction medium to provide for an esterification reaction of any fatty acids in the oil or grease source retentate thereby from fatty acid esters; (d) separating the esterification biocatalyst from the reaction medium by using a second cross-flow filtration cassette, wherein the biocatalyst is on the retentate stream and is moved back to reaction medium of step c or captured for reuse by passing through a third cross-flow filtration cassette; (e) moving the formed fatty acid esters and triglycerides in the permeate stream to a second reaction medium containing a transesterification biocatalyst and an alcohol to provide transesterification of the triglycerides thereby forming crude biodiesel and crude glycerol; (f) separating the formed crude biodiesel and crude glycerol from the second reaction medium by using a fourth cross-flow filtration cassette; 2 Appeal 2016-000340 Application 13/765,782 (g) separating the transesterification biocatalyst from the crude glycerol and water by using a fifth cross-flow filtration cassette, wherein the transesterification biocatalyst is moved back to reaction medium of step e or captured for reuse; and (h) purifying the crude glycerol by passing through a sixth cross-flow filtration cassettes thereby forming a refined glycerol,.... Claim 1 also includes limitations defining the structure of the cross- flow filtration cassettes. The Specification states that “[t]he biocatalyst refers to a lipase enzyme (triacylglycerolhydrolases) capable of catalyzing a transesterification and/or esterification reaction.” (Spec. 114.) DISCUSSION The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a) as obvious based on either (1) Dube,2 Fjerbaek,3 Tremblay,4 Kopf,5 and Drapcho (“the First Rejection”),6 or (2) Tremblay, Kopf, and Drapcho (“the Second Rejection”). (Ans. 4, 9.) The First Rejection The Examiner finds that Dube teaches production of biodiesel fuel (fatty acid methyl esters, or FAME) by reacting canola oil and methanol in 2 M. A. Dube et al., Biodiesel Production Using a Membrane Reactor, 98 Bioresource Technology, 639-647 (2007). 3 Fene Fjerbaek et al., A Review of the Current State of Biodiesel Production Using Enzymatic Transesterification, 102 Biotechnology and Bioengineering, 1298—1315 (2009). 4 Andre Yves Tremblay et al., US 2008/0250700 Al, published Oct. 16, 2008. 5 Henry B. Kopf, US 5,593,580, issued Jan. 14, 1997. 6 Caye M. Drapcho et al., Biofuels Engineering Process Technology, McGraw Hill, 197-268, (2008). 3 Appeal 2016-000340 Application 13/765,782 the presence of an acid catalyst in a membrane reactor that retains oil droplets while allowing reaction products, methanol, and acid to pass through. {Id. at 5—6.) The Examiner finds that Fjerbaek teaches producing biodiesel using enzyme catalysts, and concludes that it would have been obvious to modify Dube’s reaction to use an enzyme, rather than an acid, as a catalyst. {Id. at 6.) The Examiner finds that “Tremblay teaches a method for separating fatty acid alkyl esters and glycerol in alcohol from an oil and producing biodiesel (0039, 0040), wherein the oil feedstock may require minimal pre treatment by subjecting to water removal (0082).” {Id.) The Examiner concludes that it would have been obvious to include a dewatering step in the process made obvious by Dube and Fjerbaek. The Examiner finds that Kopf discloses cross-flow filtration cassettes and Drapcho discloses phase separation of the components of biodiesel reactions, and concludes that it would have been obvious to use cross-flow filtration cassettes to separate the phases. {Id. at 7—9.) Appellants argue that, in the claimed process, “reaction vessel 1 provides for esterification and vessel 2 provides for transesterification. . . . With this inclusion in the reaction vessels, the reactions can be properly watched for proper conversion.” (Appeal Br. 12.) Appellants argue that in Dube’s process, by contrast, “all reactions occur in the reaction-membrane unit.” {Id. at 13.) Appellants also argue that Fjerbaek “provides no guidance for the very specific separation steps of the present invention.” {Id. at 15.) Appellants argue that “the Examiner is using impermissible hindsight 4 Appeal 2016-000340 Application 13/765,782 because the cited prior art does not provide the necessary guidance to go in the direction of Appellant’s claimed invention.” (Id. at 16.) Appellants argue that Tremblay, Kopf, and Drapcho do not make up for these deficiencies (id. at 17—18), and conclude that “the Examiner has not met [her] burden of establishing a prima facie case of obviousness” (id. at 18). We agree with Appellants that the Examiner has not shown that the cited references support a prima facie case of obviousness. The Examiner cites Tremblay as disclosing a dewatering step like step (a) of claim 1. Tremblay discloses that low cost feedstock, such as non-edible oils, waste frying oils and animal fats may be used as raw materials. However, the higher amounts of free fatty acids (FFA) and water in such feedstocks (relative for example to canola oil) can result in the production of soaps for example in the presence of an alkali catalyst. (Tremblay 178.) Tremblay states that soap formation (saponification) is an undesirable side-reaction. (Id. 179.) Tremblay states that this problem is traditionally avoided by pre treating the feedstock “to remove any water and either FFA or soap from the reaction mixture,” such as by “pre-reacting (i.e. esterifying) the FFA with an acid catalyst followed by neutralization and addition of base to perform the transesterification of the oil.” (Id. If 78.) Tremblay states that when its apparatus “is used for esterification of such TG sources, saponification is less of an issue.” (Id. | 80.) “It follows that in selected embodiments the oil feedstock may require minimal pre-treatment. If required, the oil feedstock may optionally be subjected to very coarse filtering and water removal.” (Id. 1 82.) 5 Appeal 2016-000340 Application 13/765,782 Thus, Tremblay teaches that soap formation can be a problem when using an alkali catalyst, but not an acid catalyst, for biodiesel production. Importantly, however, the rejection is based on modifying the biodiesel production method disclosed by Dube (which is also described by Tremblay) to use the enzyme catalysts disclosed by Fjerbaek. Fjerbaek discloses that, in biodiesel production, “[cjatalysts investigated for transesterification are either acids, bases, both liquid and heterogeneous, as well as free or immobilized (imm.) enzymes.” (Fjerbaek 1298, right col.) Fjerbaek states that alkaline transesterification is most often used industrially, but “raw material with a high water or free fatty acid (FFA) content needs pretreatment with an acidic catalyst in order to esterify FFA . . . [and] reduce soap formation during the reaction.” (Id.) Fjerbaek states that “[c]ontrary to alkaline catalysts, enzymes do not form soaps and can esterify both FFA and TAG [triglycerides] in one step.” (Id.) Thus, Fjerbaek discloses that using an enzyme catalyst, instead of an alkaline catalyst, avoids the problem of soap formation in feedstocks with a high water or FFA content. Based on this disclosure, it is unclear what reason would have prompted a skilled artisan to include a dewatering step, as required by claim 1, in Dube’s method if it was also modified to use an enzyme catalyst. The Examiner’s conclusion that it would have been obvious “to remove unwanted water from the oil source since Tremblay discloses that the oil feedstock may require minimal pre-treatment by subjecting to water removal” (Ans. 6—7) is not adequately supported because the evidence does 6 Appeal 2016-000340 Application 13/765,782 not show that water would have been “unwanted” when using an enzyme catalyst. In addition, Fjerbaek states that enzyme catalysts can esterify both free fatty acids and triglycerides in one step. (Fjerbaek 1298, right col.) Fjerbaek states that one of the advantages of using enzyme catalysts is that they are “able to produce biodiesel in fewer process steps.” {Id. at 1299, left col.) In view of these teachings, it is also unclear what reason a skilled artisan would have had to include separate esterification and transesterification steps in Dube’s process, if it was modified to use an enzyme catalyst, since one of the advantages of enzyme catalysts is the ability to use fewer process steps. The Examiner’s rejection does not explain what would have led a skilled artisan to separate the esterification and transesterification steps when using an enzyme catalyst. In summary, we conclude that the Examiner has not made a prima facie case of obviousness based on Dube, Fjerbaek, Tremblay, Kopf, and Drapcho. We therefore reverse this rejection. The Second Rejection The Second Rejection relies upon the disclosure in Tremblay of a biodiesel production method involving an enzyme catalyst. Ans. 10—11. Although not cited in connection with the Second Rejection, Fjerbaek reflects the knowledge of those skilled in the art prior to the filing of the present patent application. As discussed above, Fjerbaek states that enzyme catalysts can esterify both free fatty acids and triglycerides in one step, (Fjerbaek 1298, right col.), and teaches that one of the advantages of using enzyme catalysts is that they are “able to produce biodiesel in fewer process 7 Appeal 2016-000340 Application 13/765,782 steps.” (Id. 1299, left col.) In view of these teachings, it is unclear why a skilled artisan, performing the method of Tremblay using an enzyme catalyst (see, Tremblay 144), would have included separate esterification and transesterification steps. Accordingly, we conclude that the Examiner has not made a prima facie case of obviousness based on Tremblay, Kopf, and Drapcho. We therefore reverse this rejection. REVERSED 8 Copy with citationCopy as parenthetical citation