Accelergy Corporation

Patent Trials and Appeals Board

Sep 16, 2020

15278513 - (D) (P.T.A.B. Sep. 16, 2020)

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.
15/278,513 09/28/2016 Rocco A. Fiato 109.26 7021
61565 7590 09/16/2020
Kevin McMahon
191 Marshall Ridge Road
New Canaan, CT 06840
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
09/16/2020 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 ROCCO A. FIATO, RICHARD F. BAUMAN,
SIOMA ZACZEPINSKI, and ATTILIO BISIO

Appeal 2019-005804
Application 15/278,513
Technology Center 1700
____________

Before MASHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Sept. 28, 2016
(“Spec.”), the Final Office Action dated July 12, 2018 (“Final Act.”), the
Appeal Brief filed Feb. 7, 2019 (“Appeal Br.”), the Examiner’s Answer
dated May 30, 2019 (“Ans.”), the Reply Brief filed July 28, 2019 (“Reply
Br.”), and the Declaration of Rocco A. Fiato dated Oct. 10, 2018 (“Decl.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Accelergy Corporation as the real
party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The invention relates to integrated coal or coal and biomass to liquids
or electrical power processes and systems in which CO2 emissions are
substantially reduced by using CO2 to produce algal biomass, including
cyanobacteria, and the use thereof as a biofertilizer, and optionally for
producing synthesis gas and H2. Spec. 1:4–9. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. Method for converting a coal containing solid carbonaceous
material to liquid fuels and cyanobacteria based biofertilizer,
comprising the steps of:
a. directly liquefying a coal containing solid carbonaceous
material by subjecting said material to elevated
temperatures and pressures in the presence of a solvent
and a molybdenum containing catalyst for a time sufficient
for producing hydrocarbon liquids and byproduct CO2;
b. upgrading hydrocarbon liquids produced by step a to
liquid fuels and byproduct ammonia;
c. producing hydrogen and byproduct CO2 from a
carbonaceous feed, and supplying at least a portion of said
hydrogen as inputs to said direct liquefaction and said
upgrading steps;
d. producing a biofertilizer including the steps of:
i. reproducing in a photobioreactor with the use of
byproduct CO2 produced by one or both of said direct
liquefaction and hydrogen producing steps and
ammonia produced by said upgrading step, an inoculant
that includes a soil-based, nitrogen fixing cyanobacteria
that has been selected to be substantially optimized for
use with the soil composition and environmental
conditions where it is to be applied; and
ii. incorporating the reproduced cyanobacteria containing
inoculant in the biofertilizer.
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Appeal Br. 10 (Claims Appendix).

ANALYSIS
We review the appealed rejections 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
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
The Examiner maintains the rejection of claims 1–12 under 35 U.S.C.
§ 103(a) over the following prior art references:
Name Reference Date
Flynn US 2008/0236227 A1 Oct. 2, 2008
Fiato US 2009/0286889 A1 Nov. 19, 2009
Ascon US 2010/0159539 A1 June 24, 2010

Appellant argues claims 1–12 subject to the rejection as a group.
Appeal Br. 3–8. Therefore, claims 2–12 stand or fall with independent claim
1, from which they depend. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends the Examiner erred in rejecting claim 1 because
Fiato does not teach or suggest producing cyanobacteria of any kind, and
particularly nitrogen fixing cyano bacteria as required by claim 1. Appeal
Br. 5. Appellant acknowledges that Fiato discloses its process produces CO2
and can be used to produce algae by photosynthesis, which algae may be
gasified and/or used directly to produce liquid hydrocarbons. Id. at 4 (citing
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Fiato ¶ 10). Appellant argues, however, that Fiato discloses a preferred use
of directly converting the algae to hydrocarbons by hydroprocessing if the
lipid content of the algae is high enough. Id. (citing Fiato ¶ 15). Appellant
argues that a nitrogen fixing cyanobacteria would not be suitable for Fiato’s
process because they tend to produce less lipids. Id. at 5 (citing Decl. ¶ 10).
For these reasons, Appellant contends Fiato teaches away from the
production of nitrogen fixing algae of any kind. Id. (citing Fiato ¶ 14).
Appellant argues that Ascon’s disclosed cyanobacteria are unrelated
to the claimed invention because they are aquatic cyanobacteria, which are
not suitable for use as a biofertilizer component. Id. at 6–7. Appellant
contends that Flynn does not suggest combining a standalone system for
producing a cyanobacteria containing biofertilizer from CO2 with a system
that proudces byproduct CO2 and ammonia. Id. at 8. Appellant argues that
the only reason for combining Fiato and Ascon with Flynn comes from
improper hindsight gleaned from Appellant’s Specification. Id.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1 as obvious over the teachings of Fiato in
view of Ascon and Flynn.
Appellant’s argument that none of the cited references teaches
precisely producing a biofertilizer containing a soil-based, nitrogen fixing
cyanobacteria from a process that produces byproduct CO2 and ammonia is
not persuasive because the rejection is based on the references’ combined
teachings. An obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim.” KSR Int’l
Co. v. Teleflex, Inc., 440 U.S. 398, 418 (2007). Appellant does not dispute
the Examiner’s finding (Final Act. 3) that Fiato teaches an integrated coal-
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to-liquids process that recovers carbon dioxide emission and uses it as
feedstock to produce algae and liquid products such as liquid fuels.
Appellant does not dispute the Examiner’s finding (Final Act. 4–5) that
algae is a common term that encompasses cyanobacteria. Appellant also
does not dispute the Examiner’s finding (Final Act. 5) that Flynn discloses a
process for producing a photosynthetic-fixing biofertilizer containing a
cyanobacteria that enhances soil fertility. The record supports the
Examiner’s findings. Fiato ¶¶ 22, 23; Ascon ¶¶ 66, 67; Appeal Br. 6
(“cyanobacteria are commonly referred to colloquially as algae”); Flynn
¶ 16.
Based on these teachings, the Examiner reasonably determines (Final
Act. 5) it would have been obvious to a person having ordinary skill in the
art to use Fiato’s excess byproducts in a process that produces biofertilizer
including cyanobacteria as taught by Flynn because Fiato teaches utilizing
biomass and recycling the byproducts for efficiency while Flynn teaches a
process in which the byproducts of Fiato can be used to fertilize soil and
produce biomass that may be used in Fiato. The Examiner’s modification of
Fiato’s CO2 recovery process to integrate it with Flynn’s biofertilizer
production system is consistent with Fiato’s teachings to produce algae on
site using CO2 produced, reduce green house gas emissions, increase carbon
efficiency of the process, and create an integrated complex.
Appellant’s argument (Appeal Br. 4–5) that Fiato cannot be modified
with Flynn’s biofertilizer process because Fiato’s algae has a preferred lipid
content that distinguishes it from Flynn’s cyanobacteria is not persuasive of
error. In a determination of obviousness, a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
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the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”). Moreover, “a
reference is not limited to the disclosure of specific working examples.” In
re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted). Thus, we are
not persuaded that a person having ordinary skill in the art would understand
Fiato’s algae biomass teaching to be limited in a way that excludes
cyanobacteria. Nor are we persuaded that a person having ordinary skill in
the art would understand Fiato’s teaching about carbon efficiency to exclude
integrating Flynn’s process that would use the CO2 byproduct to form a
biofertilizer.
The preponderance of the evidence in this appeal record therefore
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Fiato’s method that recovers and uses CO2
byproduct in an integrated system that forms algae as a biomass and Flynn’s
system that produces a biofertilizer from cyanobacteria. Accordingly, we
affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) for the
above reasons and those provided by the Examiner.
Because we find Appellant’s arguments unpersuasive of error in the
Examiner’s rejection of claim 1 for the reasons discussed above, we likewise
affirm the Examiner’s rejection of claims 2–12 for the same reasons.

CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–12 under 35 U.S.C. § 103(a) as obvious
over the cited prior art references.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–12 103(a) Fiato, Ascon, Flynn 1–12

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)(1)(iv).

AFFIRMED