Ex Parte Jansen et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11185527 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/185,527 07/20/2005 Robert Jansen 2027.699000/KDG
(2006990)
3610
79138 7590 03/13/2012
WILLIAMS, MORGAN & AMERSON, P.C.
10333 RICHMOND, SUITE 1100
HOUSTON, TX 77042
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
03/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte ROBERT JANSEN, DAVID SASS,
GORDON WALKER, and ERIC LUTZ

_________________

Appeal 2010-002637
Application 11/185,527
Technology Center 1700
_________________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002637
Application 11/185,527

2
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1, 4-11, and 14-17. (App. Br. 2.)
Claims 2, 3, 12, and 13 have been cancelled. (Id.) We have jurisdiction
under 35 U.S.C. § 6(b). We reverse the Examiner’s decision.
The Examiner rejected claims 1, 4-7, 10, 11, and 14-17 under
35 U.S.C. § 103(a) over Giesfeldt2, Buchanan3, Ulrich4, Lewis5, and Chen6.
The Examiner also rejected claims 8 and 9 under 35 U.S.C. § 103(a) over
Giesfeldt, Buchanan, Ulrich, and Robertson7.
Appellants’ Specification is directed to corn “wet-milling” processes,
that is, milling processes that include a steeping step in liquid to soften the
corn before milling. (See Spec., abstract.) The Specification provides that
the wet milling process can be used to produce ethanol. (See Spec. 8, ll. 7-
11.) Appellants’ claim 11 recites (bracketed step numbers added for
reference):
A process comprising:
[1] steeping corn kernels in an aqueous liquid, producing
softened corn;
[2] milling the softened corn in a first mill, producing a
first milled corn;

1 The real party in interest is said to be Tate & Lyle Ingredients Americas,
Inc. (App. Br. 2.)
2 Giesfeldt et al., U.S. Patent 5,073,201, issued December 17, 1991.
3 Buchanan et al., U.S. Patent 6,352,845 B1, issued March 5, 2002.
4 Ulrich and Jakel, U.S. Patent 6,740,508 B2, issued May 25, 2004.
5 Lewis and Van Hulzen, U.S. Patent Application Publication 2007/0202214
A1, published August 30, 2007.
6 Chen and Xu, U.S. Patent Application Publication 2007/0014905 A1,
published January 18, 2007.
7 Robertson and Cao, U.S. Patent 5,851,301, issued December 22, 1998.
Appeal 2010-002637
Application 11/185,527

3
[3] separating germ from the first milled corn, producing
a germ-depleted first milled corn;
[4] milling the germ-depleted first milled corn in a
second mill, producing a second milled corn;
[5] separating the second milled com into a first
starch/protein portion that comprises starch and protein and a
first fiber portion that comprises fiber, starch, and protein;
[6] milling the first fiber portion in a third mill,
producing a milled fiber material that comprises fiber, starch,
and protein;
[7] contacting the milled fiber material with at least one
enzyme to convert at least some of the starch therein to
dextrose, wherein at least some of the starch in the milled fiber
material is gelatinized by heating, is at least partially liquefied
by alpha amylase, and is at least partially saccharified by
amyloglucosidase, producing a material comprising dextrose
and fiber; and
[8] converting at least some of the dextrose to ethanol by
fermentation.

(App. Br. 14-15, Claims App’x.)
Giesfeldt teaches that wet-milling of corn (steps [1]-[6] of claim 11)
was a known method of separating fiber from starch and protein to produce a
high fiber content product. (See Giesfeldt, col. 2, ll. 52-63; see also Spec. 2,
ll. 2-12.) The Examiner does not find that Giesfeldt teaches that ethanol
may be produced from the products of the wet-milling process described.
Thus, the Examiner turns to Buchanan, Ulrich, Lewis, and Chen. These
references teach that it was known that starch can be converted to dextrose
with amylase and that the dextrose can be fermented to ethanol. (See
Buchanan, col. 8, ll. 40-65; Ulrich, col. 4, ll. 20-35; Lewis, ¶¶ [0021]-
[0027]; Chen, ¶¶ [0076] and [0080].)
Appeal 2010-002637
Application 11/185,527

4
Appellants argue that there is no teaching or suggestion in the
references to use starch recovered from fiber to make ethanol. (App. Br. 7;
see also Reply Br. 4-7.) Though the Examiner finds that starch is a well-
known ingredient used in ethanol production (Ans. 8), the Examiner does
not provide a reason why those in the art would have used the process taught
in Giesfeldt, which emphasizes a high fiber content, to make ethanol.
Most inventions arise from a combination of old
elements and each element may often be found in the prior art.
. . . However, mere identification in the prior art of each
element is insufficient to defeat the patentability of the
combined subject matter as a whole. . . . Rather, to establish a
prima facie case of obviousness based on a combination of
elements disclosed in the prior art, the Board must articulate the
basis on which it concludes that it would have been obvious to
make the claimed invention.
In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (citations omitted).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 988 (quoted in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007). Because the Examiner did not provide a sufficient reason
why those of skill in the art would have combined the teachings of Giesfeldt
to maximize fiber content, with Buchanan, Ulrich, Lewis, and Chen, which
discuss converting starch to dextrose and eventually to ethanol, we do not
sustain the rejection of claim 11. We also do not sustain the rejection of
claim 1 and the claims that depend on claims 1 and 11, claims 4-7, 10, and
14-17, for the same reason.
Appeal 2010-002637
Application 11/185,527

5
Finally, we do not sustain the rejection of claims 8 and 9 because they
are based on the same combination of Giesfeldt and the other references.

ORDER

Upon consideration of the record it is ORDERED that,
the rejection of claims 1, 4-7, 10, 11, and 14-17 under 35 U.S.C.
§ 103(a) is not sustained; and
the rejection of claims 8 and 9 under 35 U.S.C. § 103(a) is not
sustained.
We reverse the decision of the Examiner to reject the claims.

REVERSED

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