Ex Parte Capanema et al

Patent Trial and Appeal Board

Mar 23, 2018

14213680 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/213,680 03/14/2014
119630 7590
Renmatix
C/O Ballard Spahr LLP
999 Peachtree Street
Suite 1000
Atlanta, GA 30309
03/27/2018
FIRST NAMED INVENTOR
Ewellyn A. Capanema
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.
37447.0020U2 (070US) 4080
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
uspatentmail@ballardspahr.com
travis.gasa@renmatix.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EWELL YN A. CAP ANEMA and MIKHAIL Y. BALAKSHIN
Appeal2017-003064
Application 14/213,680 1
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
JANEE. INGLESE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-30. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The appealed invention relates to technical lignins. According to the
Specification technical lignins are obtained as a result of lignocellulosic
1 According to Appellants, the real party in interest is Renmatix, Inc. See
App. Br. 2.
2 The Examiner has indicated that the subject matter of claims 31 and 32 is
allowable. Final Act. 11.
Appeal2017-003064
Application 14/213, 680
biomass processing. The Specification further discloses the multiple
reactions taking place during biomass processing results in technical lignins
that dramatically differ from native lignins. (Spec. i-f 7). Independent claims
1, 11 and 21 are representative of the appealed subject matter. Independent
claim 1 is reproduced below:
1. A technical lignin comprising:
a methoxyl content of 102 units to 120 units, per 100 aromatic
units; and
an oxygenated aliphatic content of 100 units to about 150 units,
per 100 aromatic units.
Claims Appendix to App. Br.
Appellants (see App. Br., generally) request review of the following
rejections:
I. Claims 1-30 rejected under 35 U.S.C. §103(a) as
unpatentable over Balakshin et al. (Characterization of
Lignocellulosic Materials, Chapter 9, Blackwell Publishing,
149,170 (2008)). 3
II. Claims 1, 2, 4---6, 8, 9, 11-13, and 15-19 rejected 35 U.S.C.
§ 103(a) as unpatentable over Capanema et al. (Capanema,
E., et al. 2005. "Isolation and characterization of residual
lignins from hardwood pulps: Method improvements," Proc.
3 It is noted in the final action the Examiner failed to include claims 23, 24,
and 27-29 in the statement of the rejection. However the discussion of the
rejection provided an explanation why these claims were obvious over
Balakshin. (Final Act. 7-8).
2
Appeal2017-003064
Application 14/213, 680
13th ISWFPC, Auckland, New-Zealand, v. III, 57-64
(2005)).
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 2-11.)
OPINION4
After consideration the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
determination that the subject matter recited in claims 1-30 would have been
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a). Accordingly, we reverse Rejection I and II.
The Examiner found both Balakshin and Capanema teach lignins
having specific structures that would have suggested the lignins specified by
independent claims 1, 11 and 21. The Examiner specifically found
Balakshin and Capanema described the lignins (1) PRL, (2) BRL, and (3)
EGL DL (Final Act. 3 and 9). The Examiner asserts it would have been
obvious to a person having ordinary skill in the art at the time of Appellants'
invention to select a lignin having the claimed methoxyl content, and the
motivation to do so would have been, it would have been expected to have
similar properties to the lignin of both Balakshin and Capanema. (Final Act.
3 and 9). The Examiner's position is the claimed methoxyl content and the
disclosed lignins of the prior art are sufficiently close to render obvious the
4 Our discussion applies to independent claims 1, 11 and 21.
3
Appeal2017-003064
Application 14/213, 680
claimed lignin structure. In support of this position, the Examiner relies on
Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)
for the proposition that "[t]he proportions are so close that prima facie one
skilled in the art would have expected them to have the same properties"
(Final Act. 3 and 9).
Appellants argue the Examiner has not constructed a range from either
Balakshin or Capanema in rejecting the independent claims, but rather relies
solely on the proximity of the claimed range of methoxyl content to the
values of the three identified lignins. (App. Br. 10). Appellants contend this
result was disapproved in Jn re Patel, 566 Fed. Appx. 1005, 1010 (Fed. Cir.
2014) ("[A] rejection based on ranges approaching each other might well be
appropriate where there is a teaching in the prior art that the end points of
the prior art range are approximate, or can be flexibly applied."). Appellants
argue the Examiner failed to identify any teachings in either Balakshin or
Capanema that the end points can be flexibly applied.
The Examiner in the Answer contends the facts of the present case are
not similar to In re Patel. (Ans. 13). The Examiner contends Balakshin and
Capanema do not teach a preferred range, but merely sets forth data points
very close to the claimed range, much like in Titanium Metals Corp. of
America v. Banner. The Examiner further contends the cited embodiments
of the prior art provide values very close to the claimed range on each side
of the claimed range. Thus, the Examiner concludes there is nothing in the
references to teach away from the claimed range or to imply that the values
are not flexible. (Ans. 13).
4
Appeal2017-003064
Application 14/213, 680
We agree with the Appellants that the Examiner has not sufficiently
shown that the skilled artisan would have recognized sufficient identity
between the end points of the identified lignins' non-overlapping ranges to
conclude that the ranges "are close enough that one skilled in the art would
have expected them to have the same properties." The Examiner has not
directed us to a teaching in either Balakshin or Capanema that would have
suggested forming lignins that would have fallen within the range specified
by the claimed invention. Balakshin is directed to the methodology utilized
in analysis of biorefinery ligands and Capanema is directed to the isolation
and characterization of residual lignins from hardwood pulps. The Examiner
has not directed us to teachings within these references that would have
directed a person of ordinary skill in the art to form lignins that would have a
methoxyl content falling within the range specified by the claimed invention.
Thus, the Examiner has not established that the disclosure of either
Balakshin or Capanema is sufficient to support the obviousness rejections of
independent claims 1, 11 and 21. Therefore, we reverse the appealed
rejections.
Accordingly, we reverse the Examiner's decision to reject claims 1-
30 for the reasons presented by Appellants and given above.
ORDER
The obviousness rejection of claims 1-30 are reversed.
REVERSED
5