Ex Parte Ampulski et al

Patent Trial and Appeal Board

Apr 26, 2017

13618528 (P.T.A.B. Apr. 26, 2017)

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.
13/618,528 09/14/2012 Robert S. Ampulski 026757-0032P 4420
34284 7590
Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
CALL, DOUGLAS BRYANT
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
patents @ rutan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT S. AMPULSKI, JOHN T. TURNER,
and JOEL K. MONTEITH
Appeal 2016-005461
Application 13/618,5281
Technology Center 1700
Before TERRY J. OWENS, AVELYN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1—8, 10-18, and 20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as Sundrop Fuels, Inc., 2410 Trade
Centre Ave., Suite A, Longmont, CO 80503, USA. App. Br. 4.
Appeal 2016-005461
Application 13/618,528
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A biomass composition of matter to be used in 1) a
biomass gasification reaction where larger organic molecules
making up the biomass are decomposed into smaller molecules
to create syngas components, including hydrogen (H2) and
carbon monoxide (CO), as a product of the biomass gasification
reaction, 2) a torrefaction process, or 3) any combination of the
two, comprising:
the biomass composition of matter is in a particle form
and is created in a pretreatment step that occurs prior to the
biomass gasification reaction or torrefaction process, where the
biomass initially has a bulk structure including organic
polymers of lignin that surround a plurality of cellulose fibers
in a fiber bundle, where the bulk structure of the biomass
composition of matter is 1) stripped apart biomass to at least
partially separate an outer layer of lignin from the cellulose
fibers, 2) internally blown apart biomass to create fragments of
the fiber bundle, and 3) any combination of the two, wherein
the pretreatment step uses at least moisture, pressure, and heat
to liberate and expose the cellulose fibers to be able to react in a
two-stage sequence during the biomass gasification reaction
rather than react in a repeating cycle of multiple layers of lignin
followed by the cellulose and hemicelluloses, and wherein the
biomass composition of matter in particle form has a length to
thickness aspect ratio on average of less than 300 to 1, a
thickness on average of less than 100 microns thick and a
length on average of less than 3000 microns, and
wherein the bulk structure of the biomass composition of
matter in particle form that has been either i) stripped apart or
ii) internally blown apart and has the length to thickness aspect
ratio on average of less than 300 to 1, the thickness on average
of less than 100 microns thick and the length on average of less
than 3000 microns is configured to cause the decomposition of
the large organic molecules making up the biomass
composition of matter when undergoing the two-stage sequence
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Application 13/618,528
in the biomass gasification reaction at an elevated heat of
greater than 700 degrees C to react during the biomass
gasification reaction to produce a reaction product of resultant
stable ash formation, a complete amelioration of tar to less than
500 milligrams per normal cubic meter, and a yield of at least
90% of the biomass composition of matter in particle form into
reaction products including the stable ash, and the hydrogen,
the carbon monoxide and carbon dioxide gaseous products.
Appellants (App. Br. 9) request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1—7 and 10-17 rejected under 35 U.S.C. § 103(a) as
unpatentable over Medoff (US 2009/0286295 Al, published November 19,
2009), McMillan (James D. McMillan, Pretreatment of Lignocellulosic
Biomass, Enzymatic Conversion of Biomass for Fuels Production Chapter
15 (ACS Symposium Series), 1994, pp. 292—324), and Asadullah
(Mohammad Asadullah, Shin-Ichi Ito, Kimio Kunimori, Muneyoshi Yamada
and Keiich Tomishige, Energy Efficient Production of Hydrogen and Syngas
from Biomass: Development of Low-Temperature Catalytic Process for
Cellulose Gasification, Environ. Sci. Technol., 2002, 36, pp 4476-4481).
II. Claims 8 and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Medoff, McMillan, Asadullah, and Obae (US
2011/0064805 Al, published March 17, 2011).
III. Claim 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Medoff, McMillan, Asadullah, and Burke (US 2010/0024806 Al,
published February 4, 2010).
For Rejection I, Appellants indicate that the respective composition of
matter claims 1—7 and 10 and the respective method claims 11—17 stand or
fall together. App. Br. 9. Further, in arguing the method claims, Appellants
rely on the arguments presented when discussing independent claim 1. Id. at
50. In addition, Appellants rely on the arguments presented when discussing
claim 1 to address the separate rejections of claims 8, 18 (Rejection II) and
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20 (Rejection III). Id. at 50—51. Appellants do not address or further
distinguish the additionally cited secondary references in these separate
rejections based on the additional limitations of the respectively rejected
claims. Id. Accordingly, we select claim 1 as representative of the subject
matter before us on appeal. Claims 2—8, 10-18, and 20 stand or fall together
with representative claim 1.
OPINION
Claim 1
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of representative claim
1 for the reasons presented by the Examiner. We add the following for
emphasis.
Claim 1 is directed to a pretreated biomass in particle form
comprising fragments of a cellulose fiber bundle where the fragments have a
length to thickness aspect ratio on average of less than 300 to 1, a thickness
on average of less than 100 microns thick and a length on average of less
than 3000 microns.2 The claimed dimensions of the pretreated biomass in
particle form also provide the property of decomposing large organic
molecules making up the biomass composition of matter into smaller
molecules to create syngas components when undergoing the two-stage
sequence in the biomass gasification reaction. App. Br. 12—14.
2 Both Appellants and the Examiner principally discuss the embodiment of
the biomass in particle form that is created by pretreatment using steam
explosion, which is associated with the claimed embodiment of internally
blown apart biomass fragments of a fiber bundle. Spec. Tflf 4, 14, 34, 36;
Final Act. 5—6; App. Br. 42. Accordingly, we focus our discussion on this
particular embodiment.
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Application 13/618,528
The Examiner found Medoff discloses a cellulose particle (pretreated
biomass composition of matter in particle form) having an average length to
diameter ratio of greater than 8:1 (cf. claimed average length to diameter
ratio of less than 300 to 1), an average width (diameter or thickness) of
between about 5 to 50 microns (cf claimed width of less than 100 microns)
and an average length of between about 0.5 to 2.5 mm (cf. claimed average
length of less than 3000 microns, which converts to less than 3 mm)
produced by pretreating biomass, such as wood comprising cellulose,
hemicellulose and lignin, via steam explosion. Final Act. 53; Medoff H 110,
113, 138, 144, 171, 367. The Examiner found Medoff s average length to
diameter ratio, average width, and average length either overlap or
encompass the claimed ranges for each of these limitations. Final Act. 5.
The Examiner also found Medoff discloses this particle as useful for
gasification processes. Final Act. 5; Medoff 1406. The Examiner
determined that, absent a showing to the contrary, Medoff s biomass in
particle form appears to be substantially identical to the claimed biomass in
particle form. Final Act. 4; Ans. 35—36.
Appellants argue the Examiner has not provided evidence that
Medoff s biomass in particle form possesses the property of decomposing
3 A discussion of the references to McMillan and Asadullah is unnecessary
for disposition of this appeal. The Examiner relied on McMillan principally
as evidence that the structure of Medoff s biomass in particle form includes
lignin surrounding cellulose fibers, numerous methods for the pretreatment
of lignocellulosic biomass including mechanical comminution, various
explosion methods and acid hydrolysis. Final Act. 6; McMillan 293—298,
300-317. The Examiner relied on Asadullah to teach a gasification process.
Final Act. 6—7; Asadullah 4481. These references are not relied upon to
address the specific structure of the claimed biomass in particle form.
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large organic molecules making up the biomass composition of matter into
smaller molecules to create syngas components when undergoing the two-
stage sequence in a biomass gasification reaction, as claimed. App. Br. 13.
According to Appellants, when the biomass composition of matter in particle
form has structural characteristics exposing the internal layers of the
chemical compound of biomass and breaking down some of physical and
chemical bonds in the chemical compound and has particle dimensions as
claimed, then this biomass composition of matter in particle form also has
the characteristic of producing different chemical reaction products at a
different yield/conversion rate when undergoing the specific chemical
reaction (biomass gasification) associated with this property in the claim. Id.
at 13—14, 19—20. Thus, Appellants argue the biomass in particle form of the
prior art does not exhibit this characteristic. Id. at 23.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 36—37. The mere recitation of a property or
characteristic not disclosed by the prior art does not necessarily confer
patentability. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (“There is no
question that all evidence of the properties of the claimed compositions and
the prior art must be considered in determining the ultimate question of
patentability, but it is also clear that the discovery that a claimed
composition possesses a property not disclosed for the prior art subject
matter, does not by itself defeat a prima facie case.”).
[Wjhere the prior art gives reason or motivation to make the
claimed [invention], ... the burden (and opportunity) then falls
on an applicant to rebut that prima facie case. Such rebuttal or
argument can consist of a comparison of test data showing that
the claimed compositions possess unexpectedly improved
properties or properties that the prior art does not have ....
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Id. at 692-93.
As shown above, the Examiner established that Medoff discloses a
biomass in particle form having ranges for its dimensions that either
encompass or overlap the claimed ranges for the same dimensions. Final
Act. 5; Medoff 1144. In addition, the Examiner established that, like
Appellants, Medoff discloses that the biomass in particle form can be
created via steam explosion. Final Act. 5; Medoff H 110. Thus, the
Examiner has provided a reasonable basis to establish that the biomass in
particle form of the claimed invention appears to be structurally similar to
the biomass in particle form of the prior art. Dillon, 919 F.2d at 692—93.
Given Medoff s disclosure that steam explosion produces fibrous material
(that is, fragments) and that such pretreated biomass material is useful in
gasification processes that produce syngas (Medoff H 110, 368—369, 372—
373, 406-409), there is a reasonable basis for one skilled in the art to expect
Medoff s biomass in particle form to possess the claimed characteristic of
producing different chemical reaction products at a different
yield/conversion rate when undergoing the specific chemical reaction
(biomass gasification) associated with this property.
Accordingly, the burden is properly shifted to Appellants to
demonstrate that the claimed property or characteristic was not possessed by
the prior art. Appellants have not adequately explained or directed us to
evidence showing why Medoff s biomass in particle form does not
necessarily or inherently possess the disputed property.
Appellants argue Medoff does not disclose particles of biomass where
lignin and cellulose exist but are separated. App. Br. 19, 38—39. We find
this argument unavailing. As previously indicated, Medoff utilizes a steam
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explosion process to create the fiber source, which is one of the processes
used and disclosed by Appellants. Medoff 367, 370; Spec. 12.
Appellants have not adequately explained why Medoff s steam explosion
process of pretreating a biomass would not result in fragments from a fiber
bundle. Appellants have not adequately explained how Medoff s steam
explosion process is different from Appellants’ disclosed steam explosion
process or why it would yield a different biomass in particle form.
Moreover, the claimed embodiment where internally blown apart biomass is
created only requires creation of fragments of the fiber bundle without
specifying the presence of specific components of the fiber bundle.
Appellants’ assertion that Medoff discloses chemically removing the
lignin from the biomass material is equally unavailing. App. Br. 38. The
portion of Medoff relied upon by Appellants in support of this assertion
states that, if desired, lignin can be removed from any of the fibrous
materials that include lignin. Medoff 1138. At best, this portion suggests
an alternative, perhaps preferred, embodiment disclosed by Medoff. It is
well settled that a reference may be relied upon for all that it discloses,
including non-preferred embodiments. Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art,
including unpreferred embodiments, must be considered” (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976))). The disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971).
Thus, Appellants have not pointed to error in the Examiner’s
determination of obviousness.
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Accordingly, we affirm the Examiner’s prior art rejection of claims 1—
7 and 10-17 under 35 U.S.C. § 103 (a) (Rejection I) as well as the separate
prior art rejections of claims 8, 18, (Rejection II) and 20 (Rejection III) for
the reasons presented by the Examiner and given above.
DECISION
The Examiner’s prior art rejections of claims 1—8, 10—18, and 20
under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
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).
AFFIRMED
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