12795869 (P.T.A.B. Aug. 29, 2016)

Ex Parte Stromberg et al

Patent Trial and Appeal BoardAug 29, 2016

12795869 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121795,869 06/08/2010 23117 7590 08/31/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Berti! STROMBERG 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. GPK-10-1947 1759 EXAMINER VANBUREN,LAURENK ART UNIT PAPER NUMBER 1651 NOTIFICATION DATE DELIVERY MODE 08/31/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERTIL STROMBERG, THOMAS PSCHORN, PETER MRAZ, and SERGE GENDREAU Appeal2014-006512 Application 12/795,869 Technology Center 1600 Before JEFFREY N. FRED MAN, ULRIKE W. JENKS, and JOHN E. SCHNEIDER, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1 under 35 U.S.C. Â§ 134 involving claims to a method for pre-treatment of cellulosic biomass feedstocks. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Statement of the Case Background The present invention relates to pre-treatment of cellulosic biomass feedstocks, such as, agricultural residues (which may include com stalks, com stover, hulls, cereal straws, etc.); 1 Appellants identify the Real Party in Interest as Andritz Inc. (see App. Br. 3). Appeal2014-006512 Application 12/795,869 energy plants (such as high yielding grasses like Switchgrass, Miscanthus, EnergyCane, etc.); and/or forest or sawmill residues (such as wood chips, shredded thinnings, etc.) for the further production of bio-fuels and chemicals. (Spec. if 2). The Claims Claims 1-8, 10-15, and 17-21 are on appeal. Independent claim 1 is representative and reads as follows: 1. A method comprising the steps of: pretreating a cellulosic biomass feedstock with at least one of water, enzymes, organisms, or chemicals to form a pretreated cellulosic biomass feedstock, feeding the pretreated cellulosic biomass feedstock comprising precursors and reactants for bioreactions via a compression device to a centrifugal mixer comprising a rotor and a stator, and rotating the rotor to disintegrate larger particle agglomerates of the pretreated cellulosic biomass feedstock. The Issues A. The Examiner rejected claims 1 and 12-15 under 35 U.S.C. Â§ 102(b) as anticipated by Hamilton2 (Ans. 3--4). B. The Examiner rejected claims 1--4, 8, 12-15, and 17-21under35 U.S.C. Â§ 103(a) as obvious over Hamilton, Eroma, 3 Nguyen, 4 and Duck5 (Ans. 8-12). 2 Hamilton, R., US 5,478,441, issued Dec. 26, 1995. 3 Eroma et al., US 2002/0164 731 A 1, published Nov. 7, 2002. 4 Nguyen, X., US 2008/0057555 Al, published Mar. 6, 2008. 5 Duck et al., US 2004/0005674 Al, published Jan. 8, 2004. 2 Appeal2014-006512 Application 12/795,869 C. The Examiner rejected claims 1, 2, and 5-7 under 35 U.S.C. Â§ 103(a) as obvious over Hamilton, Nguyen, Eroma, and Bohlig6 (Ans. 12-15). D. The Examiner rejected claims 1 and 10 under 35 U.S.C. Â§ 103(a) as obvious over Hamilton, Bohlig, and Johan7 (Ans. 15-17). E. The Examiner rejected claims 1 and 11 under 35 U.S.C. Â§ 103(a) as obvious over Hamilton and Snekkenes8 (Ans. 17-18). A. 35 US.C. Â§ 102(b) over Hamilton The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Hamilton teaches "pretreating a cellulosic biomass feedstock" as required by claim 1? Findings of Fact 1. The Specification teaches "pre-treatment of cellulosic biomass feedstocks, such as, agricultural residues (which may include com stalks, com stover, hulls, cereal straws, etc.); energy plants (such as high yielding grasses like Switchgrass, Miscanthus, EnergyCane, etc.); and/or forest or sawmill residues (such as wood chips, shredded thinnings, etc.)" (Spec. i-f 2). 2. Hamilton teaches "a process for the recovery and re-use of raw materials from paper mill waste sludge" (Hamilton 3:38--40). 3. Hamilton teaches that the papermaking fibre with which the sludge is mixed prior to or after the recovery treatment can be fresh virgin pulp, mill broke (i.e. recycled waste from within the mill), pre-consumer broke 6 Bohlig, J., US 2005/0115690 Al, published June 2, 2005. 7 Johan, A., US 3,471,365, issued Oct. 7, 1969. 8 Snekkenes et al., US 2008/0271861 Al, published Nov. 6, 2008. 3 Appeal2014-006512 Application 12/795,869 (i.e. paper which has left the paper mill but has not reached the end-user, for example waste from a paper converting plant), or good quality waste paper (i.e. paper which has been used by a printer or other end-user, and which is referred to hereafter as post-consumer broke), or any combination of these. (Hamilton 3:65 to 4:6; emphasis added). 4. Hamilton teaches "concentrated semi-solid sludge, now termed 'crumble' falls into a conical chute ... Dilution water is supplied ... so as to dilute the crumble to about 6% consistency" (Hamilton 5:47-52). 5. Hamilton teaches that: Pumping of the sludge to the chest 6 is facilitated by first diluting to around 2 % consistency with water ... the diluted sludge from the effluent chest 6 is pumped to a pulper 7. Various types of broke (as ... described) are also added to the pulper and the mixture is slushed at about 6% consistency. White water from the paper machine is used for dilution and slushing. (Hamilton 5:62 to 6:3). 6. Hamilton then teaches that the "proportion of sludge added does not normally exceed about 30%, and more typically is of the order of 10 to 20%. The proportions of pulp, pre- and post-consumer waste can vary widely, but pulp and pre-consumer waste normally predominate" (Hamilton 6:4--8). 7. Hamilton teaches that after additional processing, the "thickened stock is then passed into a plug screw 14 which forms a pressure seal. ... The plug screw conveys the stock into a screw-fed pressurized heating chamber 15" (Hamilton 6:41--46). 4 Appeal2014-006512 Application 12/795,869 8. Hamilton teaches that the "heated stock then passes through a screw-fed fluffer 16 prior to its passage through the disperser 17. The disperser 17 is of conventional design, as discussed earlier in this specification" (Hamilton 6:48-51 ). 9. Hamilton teaches that a "disperser, also known as a disintegrator pump or as a disperger, is a type of radial-discharge centrifugal pump having teeth in the rotor shaft which mesh with teeth in the peripheral stator bars to provide a mechanical action on the liquid passing through the machine" (Hamilton 3:2-7). 10. Figure 2 of Hamilton is reproduced below: FIG 2 !JJLij{[/) I f'l!EÂ·Tl1EATEO &fJOCf ' ("F" "'" ' I I ' .>.~ ' , o. Ii ; ... J FFF.' "["T C."'[. SCREEN I ! l?E.iECTS 1ob' i?f/fCTS UNOF!U ~ !J1:5FU.Si1Jlr STAC.t fSff f!C. JJ -ii "FIG. 2 is a simplified schematic block flow diagram showing the mixing of sludge with papermaking fibre from other raw materials and subsequent screening and cleaning" (Hamilton 5:32-34). 5 Appeal2014-006512 Application 12/795,869 11. Figure 3 of Hamilton is reproduced below: ACCEPfS f P.tJ# lfJfl!i COA'SlSTEllCY l?OtAtl#~ SCREE,.t' (flC. 2J ( \ --'--Â·.Â·.Â·.Â·.Â·.Â·Â·+----- ' ~ FIG. 3 __________ _t ____________ _ r~~~Â·~-- 12-1 Sl~REJf ff!ICKflllNC tlN!lS j f!Lfl?A.TE 1-----.i 1 C()UEC!llJ.lt' l3 ( !~ faJ ;~~SSt!l?llfll HEAflh'li I CllAJIBflf ! __ __j ____ ....... -.Â·.-.. -----~ fi.!!.Fllll f"'"--~-Â·.Â·.w.Â·.--â€¢-1__â€¢â€¢Â»""""" n ~~ O!SP[ftSflf ~--Â·Â·Â· lA!M I PllA!N rÂ·---L--.... ---- 1 Wlf ! TE l'A Tfl? : STOl?At?f ! TA,fil ~ I ! I I !Bb 1-Â·~---â€¢-> ____ i .. ______ __ ,..---------.- \ ! SftJCK STOfMCF Â·ma , T.41/lS I YIJ%t::r -~ .. ~--Â·Â·Â·Â·Â·----~ l i I ... __ rA-NA'._s_....,,1s{PAPmt;~ _ J +----~Â ' \ '. PULPEll ;rsEEl:tt. tJ I "FIG. 3 is a simplified schematic block flow diagram showing the dispersion stage of the process" (Hamilotn 5:36-37). 6 Appeal2014-006512 Application 12/795,869 Principles of Law Anticipation under 35 U.S.C. Â§ 102 requires that "'each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference."' In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 3--4; FF 1-11) and agree that the claims are anticipated by Hamilton. In particular, Figure 2 of Hamilton shows a process where various types of broke (i.e. waste paper) are mixed with sludge and water in pulper 7 (FF 10), satisfying the "pretreating" step by combining the feedstock composed of waste paper and sludge with water. Figure 2 then shows transfer of this diluted material to cleaners 9 and 10 which transfer the material to the headbox 11 in Figure 3 (FF 10-11 ). Figure 3 shows feeding the material to a heating chamber by the use of plug screw 14, identified by the Examiner as a compression device (see Ans. 4), followed by transfer and treatment in disperser 1 7 (FF 11 ), where disperser 17 is a centrifugal mixer comprising a rotor and stator that functions to disintegrate the feedstock (FF 9). We address Appellants' arguments below. Appellants "submit that Hamilton's sludge is not a 'paper material,' as seemingly assumed by the Office Action dated June 6, 2013. Hamilton never identifies its sludge as a 'paper,' and the Patent Office does not point to any portion of Hamilton that identifies its sludge as a paper" (Br. 11 ). 7 Appeal2014-006512 Application 12/795,869 Appellants contend that Hamilton's sludge "is not a cellulosic biomass feedstock. Not only is it not a cellulosic biomass feedstock, Hamilton calls this a 'sludge'; it is not 'waste paper' or 'paper waste' ... The rejection is simply incorrect that Hamilton's sludge contains paper" (Br. 13). We find this argument unpersuasive because the Examiner finds that in "addition to this sludge which contains the paper parts, the Hamilton reference also mentions that papermaking fiber can be mixed with the sludge before or after the treatment taught by Hamilton" (Ans. 5). Hamilton expressly teaches that "papermaking fibre with which the sludge is mixed prior to or after the recovery treatment can be fresh virgin pulp, mill broke ... pre-consumer broke ... or good quality waste paper" (FF 3). Hamilton exemplifies combining broke with the sludge in Figure 2 (FF 10). Therefore, Hamilton expressly treats formation of a cellulosic feedstock that comprises both paper and sludge, and then teaches treatment of that feedstock with water in Figure 2 (FF 10). Appellants contend that "[i]f the energy content of sludge is inadequate for combustion, there is no reason or rationale to believe that it would be adequate as a reactant in a bioreactor" (Br. 14 ). We find this argument unpersuasive for claim 1, because claim 1 includes no requirement that the final material obtained function as a reactant in a bioreactor. See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims.") However, even for later claims that require such reaction, Hamilton teaches that the final product is a combination of sludge and broke (i.e. 8 Appeal2014-006512 Application 12/795,869 waste paper) and that the product is normally comprised of no more than 30%, and preferably 10 to 20% sludge, with the remainder of the product being broke (i.e. waste paper) (FF 6). Appellants provide no evidence that this final product, minimally composed of 70% broke, would fail to function as a reactant in a bioreactor. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Appellants contend that "[ d]ilution is simply not pretreatment, such as hydrolysis or autohydrolysis, that changes or treats a material, such that it becomes a pretreated material" (Br. 16). We find this argument unpersuasive because claim 1 specifically recites "pretreating a cellulosic biomass feedstock with at least one of water, enzymes, organism, or chemicals". Claim 1 therefore, only requires "pretreating" with one of the four components, not necessarily all four, and treatment with water satisfies the "pretreating" step in claim 1. Claim 1 includes no requirement for hydrolysis or autohydrolysis of the material. Self, 671 F.2d at 1348. Hamilton teaches mixing the sludge and broke with water prior to further processing (FF 5, 10), reasonably satisfying the "pretreating" limitation of claim 1. Conclusion of Law The evidence of record supports the Examiner's conclusion that Hamilton teaches "pretreating a cellulosic biomass feedstock" as required by claim 1. 9 Appeal2014-006512 Application 12/795,869 B-E. 35 US.C. Â§ 103(a) rejections Because the same issues are dispositive for each of these rejections, we will consider the obviousness rejections together. The issue with respect to these rejection is: Does the evidence of record support the Examiner's conclusion that the combination of the prior art renders the claims obvious? Findings of Fact 12. Eroma teaches that "lignocellulose-containing material from xylan-containing matter in biomass comprising pentose and hexose, is processed by hydrolysis ... The processed solution can be fermented with microbes to produce a fermented solution comprising fermented ethanol and spent microbes" (Eroma i-f 18). 13. Eroma teaches that the "xylan-containing matter can comprise one or more of the following: wood ... processed paper" (Eroma i-f 19). 14. Nguyen teaches that: Increasing demand for liquid fuels and higher cost of petroleum crude oil have encouraged new technologies to manufacture liquid fuel such as ethanol and chemicals from renewable biomass resources. It is desirable for the U.S. to transition to resources which are low cost, plentiful and renewable for its energy needs. (Nguyen i-f 56). 15. Nguyen teaches "a process to manufacture ethanol from lignocellulosic materials, especially for the abundantly available hardwood, softwood, and not excluding other biomass sources such as com stover, sugarcane, grass, waste papers, recycled papers, etc." (Nguyen i-f 104). 10 Appeal2014-006512 Application 12/795,869 16. Nguyen teaches that "cellulose can be converted directly to ethanol by adding cellulase and yeast or bacteria together in a simultaneous saccharification fermentation" (Nguyen i-f 111 ). 17. Nguyen teaches that "continuous biomass hydrolyzers employ screw feeders to feed biomass into the reactor under pressure. The pressure in the screw feeders can reach as high as 1,200 psig" (Nguyen i-f 144). 18. Duck teaches that "' [b ]iomass' includes ... waste paper" and that "[g]enerally, the substrate is of high lignocellulose content, including ... switchgrass" (Duck i-fi-127-28). 19. Johan teaches that "mechanical disintegration ... is effected subsequent to the last cooking step and under the same conditions regarding temperature and pressure. The disintegration may, however, also be effected under atmospheric conditions" (Johan 4:64--69). 20. Snekkenes teaches that after reaction, pulp is moved to a mixer "to promote the penetration of the saturated fluid phase into the cellulose fibre. The fall in pressure across this mixer is to be kept as low as possible, preferably well under 1 bar, and the mixer may in its simplest form be a static mixer" (Snekkenes i-f 31 ). Principles of Law "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability." Id. at 417. 11 Appeal2014-006512 Application 12/795,869 Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 8-17; FF 1-20) and agree that the claims are rendered obvious by the cited prior art. We address Appellants' arguments below. Claim 1 Appellants contend that "nothing in Nguyen that would teach or suggest that Hamilton's sludge could be used as a biomass feedstock" and that "[ t ]here is no reason that a person having ordinary skill in the art would have applied the techniques of sludge processing taught in Hamilton to the waste paper (made of white bond, brown cardboard, boxes, clippings, etc.) ofNguyen" (Br. 17, 19). Appellants contend that "Eroma's raw materials are unrelated to Hamilton's waste sludge. There is no art-based reason that a person having ordinary skill in the art would have substituted Hamilton's sludge with Eroma's material" (Br. 19). Appellants contend that "Bohlig appears to be directed to the use a waste paper to produce recycled pulp to be used in the paper industry. This is similar to Nguyen's waste paper and is unrelated to Hamilton's waste sludge" (Br. 20). We are not persuaded. As discussed above, Hamilton teaches a feedstock that is a mixture of no more than 3 0% sludge with paper including waste paper (FF 3, 6). Nguyen teaches that biomass materials comprising waste paper serve as feedstocks for ethanol manufacture (FF 15-16). Eroma teaches that processed paper (FF 13) may be used in the ethanol production process (FF 12). Moreover, Nguyen provides reasons to generate ethanol from such biomass including a desire "to transition to resources which are 12 Appeal2014-006512 Application 12/795,869 low cost, plentiful and renewable" (FF 14). See DyStar Textilfarben GmbH & Co. Deutschland KG v. CH Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) ("[A Jn implicit motivation to combine exists ... when the 'improvement' is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.") Appellants contend that a "person having ordinary skill in the art would thus not have replaced Hamilton's sludge with any of Duck's biomass materials. Duck does not teach or suggest that sludges and biomasses would be recognized as substitutable equivalents" (Br. 20). We are not persuaded. Duck teaches that both waste paper and switchgrass are equivalent biomass materials (FF 18) as also shown in Duck's table from paragraph 28 reproduced on page 20 of Appellants' Brief that recites materials including switchgrass and refuse paper. The substitution of known equivalent materials such as switchgrass and refuse paper (taught by Hamilton (FF 3, 6)) is obvious. See Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (The Court found a "strong case of obviousness based on the prior art references of record. [The claim] recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known ... agent for another.") Claim 2 Appellants contend that "there is nothing in Nguyen that would lead one having ordinary skill in the art to believe that the waste sludge of 13 Appeal2014-006512 Application 12/795,869 Hamilton could be an adequate feedstock for conversion in a reactor using enzymatic hydrolysis, treatment with one or more microorganisms, or fermentation" (Br. 23). We do not find this argument persuasive for the reasons already given. To briefly reiterate, Hamilton teaches a composition that comprises at most 30% sludge, with the remaining components being waste paper (FF 3, 6). Therefore, Hamilton's final product would have reasonably been expected to be adequate for combustion as well as conversion to ethanol in the absence of evidence to the contrary. Pearson, 494 F.2d at 1405. Nguyen teaches the conversion of biomass including waste paper into ethanol (FF 15-16) and provides specific reasons for doing so (FF 14). Specific to claim 2, Nguyen teaches treating biomass feedstock with enzymes such as cellulase and microorganisms such as yeast or bacteria (FF 16). The repeated use of a compression device, taught by Hamilton and Nguyen, would also have been obvious method of transferring material (FF 7, 17; cf Ans. 11 ). Conclusion of Law The evidence of record supports the Examiner's conclusion that the combination of the prior art renders the claims obvious. SUMMARY In summary, we affirm the anticipation and obviousness rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 14