Ex Parte Garcia-Perez et al

Patent Trial and Appeal Board

Apr 19, 2017

13483493 (P.T.A.B. Apr. 19, 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.
13/483,493 05/30/2012 Manuel Garcia-Perez 03170035AA 1150
30743 7590 04/20/2017
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
04/20/2017 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 MANUEL GARCIA-PEREZ and CRAIG FREAR
Appeal 2016-001932
Application 13/483,4931
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 6—8,
10-15, and 17—20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants state that the real party in interest is “Washington State
University of Pullman, Washington” (Appeal Brief filed on March 26, 2015,
hereinafter “Appeal Br.,” 3).
2 Appeal Br. 14—24; Reply Brief filed on November 23, 2015, hereinafter
“Reply Br.,” 1—6; Final Office Action mailed on December 31, 2014,
hereinafter “Final Act.,” 4—8; Examiner’s Answer mailed on October 5,
2015, hereinafter “Ans.,” 1—11.
Appeal 2016-001932
Application 13/483,493
BACKGROUND
The subject matter on appeal relates to a system including, inter alia,
a thermochemical reactor (i.e., a pyrolysis reactor) for processing biomass
(e.g., lignocellulosic materials) and an anaerobic digester (Specification,
hereinafter “Spec.,” 1,11. 14—16; Fig. 3). Representative claim 1, the sole
independent claim on appeal, is reproduced from page 26 of the Appeal
Brief (Claims Appendix) (emphasis added), as follows:
1. A system for the processing at least one biomass source
comprising:
at least one thermochemical reactor which degrades high
solid content biomass;
a fractional condenser system which condenses volatiles
produced by the thermochemical reactor to produce an aqueous
fraction containing light oxygenated organic compounds
selected from the group consisting of formic acid, acetic acid,
propionic acid, methanol, glyocoaldehyde, and acetol;
a transfer system to transport the aqueous fraction
produced in the fractional condenser system; and
an anaerobic digester which digests low solid content
biomass and is configured to receive said aqueous fraction
produced in said fractional condenser system from said transfer
system at a spatial or temporal position between a middle an
[sic, and] end section of said anaerobic digester which contains
a methanogenic bacterial population,
wherein the at least one thermochemical reactor includes
a pyrolysis reactor.
REJECTION ON APPEAL
The Examiner rejected claims 1, 6—8, 10-15, and 17—20 under
35 U.S.C. § 103(a) as unpatentable over Manzer et al.3 (hereinafter
3 US 2009/0151253 Al, published June 18, 2009.
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Appeal 2016-001932
Application 13/483,493
“Manzer”) in view of Warner et al.4 (hereinafter “Warner”) (Final Act. 5—8;
Ans. 1-11).
DISCUSSION
The Examiner finds that Manzer describes every limitation recited in
claim 1 except “Manzer does not explicitly disclose the use of an anaerobic
digester” (Final Act. 5). The Examiner finds further, however, that Manzer
“does disclose [that] the treated feedstock can be transported to a plant for
further processing such as fermentation” (id.). In addition, the Examiner
finds that Warner teaches an integrated thermochemical and biocatalytic
energy production system comprising a thermochemical reactor and an
anaerobic digester (id.). Based on these findings, the Examiner concluded
(id. at 6):
It would have been obvious to one of ordinary skill in the
art at the time of the invention to combine apparatus of Manzer
with the system of Warner in order to create a unified system for
disposing organic wastes while capturing the energy content of
organic wastes for conversion into fuel and/or other beneficial
uses.
Regarding the disputed limitation highlighted above in reproduced claim 1,
the Examiner states that these limitations are process or intended use
limitations that do not define the claimed system over the prior art system
(id.). According to the Examiner (id.), “the pipeline as disclosed by Manzer
in paragraph 72 is capable [of] transferring an aqueous fraction from a
fractional condensing system to a anaerobic digester at a spatial or temporal
position between a middle and end section of said anaerobic digester” (id.)
(emphasis added).
4 US 2007/0117195 Al, published May 24, 2007.
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Appeal 2016-001932
Application 13/483,493
The Appellants contend, inter alia, that “claim 1 requires introduction
of the aqueous fraction in a specific location: between a middle and end
section of said anaerobic digester” and that “[t]he Examiner has
inappropriately interpreted the phrase ‘configured to’ as merely denoting an
intended use” (Appeal Br. 15). Specifically, the Appellants argue (id.):
The present specification supports an interpretation where the
phrase “configured to” denotes an actual state of configuration
that fundamentally ties so-called intended use (i.e. receiving the
aqueous fraction at a spatial or temporal position between a
middle and end section of the anaerobic digester) to the physical
characteristics of the feature preceding the phrase “configured
to” (i.e. the anaerobic digester). As a result, the disputed claim
language reaches well beyond merely describing an intended use
since the claims actively recite an actual state of configuration.
The Examiner responds that “the test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references” (Ans. 6).
According to the Examiner (id. at 7), the recitation “‘between a middle and
an end section’ can lie at practically any point along the transfer pipeline”
and, therefore, “it would have been obvious to one having ordinary skill in
the art... to provide the fraction at a spatial or temporal position in order to
provide a structurally sound placement of the transfer pipeline.”
We agree with the Appellants that the Examiner’s rejection is not
well-founded. Claim 1 explicitly requires the anaerobic digester to be
“configured to receive said aqueous fraction produced in said fractional
condenser system from said transfer system at a spatial or temporal position
between a middle an end section of said anaerobic digester” (Appeal Br. 26).
Thus, when the disputed claim language is read in proper context, the terms
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Appeal 2016-001932
Application 13/483,493
relating to the materials and operation further define the system’s structure
because they define a structural relationship between the transfer system and
the anaerobic digester in terms of a specific “spatial or temporal position”
(i.e., “between a middle an[d] end section of said anaerobic digester”). In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
The Examiner fails to address the structural relationship recited in
claim 1. Although Warner has been shown to describe methane production
by “anaerobic digestion” (| 39), the Examiner does not direct us to any
evidence indicating that Warner discloses or suggests the spatial or temporal
positional relationship between a transfer system and an anaerobic digester,
as specified in claim 1. The Examiner’s bare assertion that “‘between a
middle and an end section’ can lie at practically any point along the transfer
pipeline” (Ans. 7) (emphasis added) is ineffective to address this claimed
structural relationship.
Because the Examiner failed to provide a sufficient articulated reason
with some rational underpinning to support the conclusion that a person
having ordinary skill in the art would have configured the anaerobic digester
to receive an aqueous fraction “at a spatial or temporal position between a
middle an[d] end section of said anaerobic digester which contains a
methanogenic bacterial population” as required by claim 1, we cannot
affirm.
SUMMARY
The Examiner final decision to reject claims 1, 6—8, 10-15, and 17—20
is reversed.
REVERSED
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