Ex Parte Willson et al

Patent Trial and Appeal Board

Aug 30, 2016

11871728 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111871,728 10/12/2007 Bryan Willson
35657 7590 09/01/2016
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
477889.357390 7386
EXAMINER
MARCHESCHI, MICHAEL A
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN WILLSON, GUY BABBITT, CHRISTOPHER
TURNER, PETER LETVIN, KRISTINA WEYER-GEIGEL, ANNA
ETTINGER, AMY BOCZON, NICHOLAS RANCIS, and
JAMES MURPHY
Appeal2014-005629
Application 11/871, 72 8
Technology Center 1700
Before BRADLEY R. GARRIS, PETER F. KRATZ, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal1under35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 13, 14, 21, 26, 31, 38, 44--49, and 54--
57. We have jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a closed system
photobioreactor and a method of producing a biofuel using such a reactor.
Claims 1 and 26 are illustrative and reproduced below:
1 Appellants identify "SOLIX BIOSYSTEMS, INC. and COLORADO
STATE UNIVERSITY RESEARCH FOUNDATION" as "the real parties in
interest to this application" (App. Br. 2). Our references to the Appeal Brief
(App. Br.) are to the Amended Appeal Brief filed April 15, 2013.
Appeal2014-005629
Application 11/871,728
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Gudin
Arad
Berzin
us 3,955,317
us 5,534,417
WO 2006/020177 Al
May 11, 1976
Jul. 9, 1996
Feb.23,2006
The Examiner maintains the following grounds of rejection:
Claims 26, 31, 38, and 44--49 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Claims 1, 21, and 54--57 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gudin in view of Berzin.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gudin in view of Berzin and Arad.
We affirm the rejection under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement. We reverse the
obviousness rejections under 35 U.S.C. § 103(a). Our reasoning follows.
Written Description Rejection
The burden of showing that the claimed invention is not described in
the specification rests on the Examiner. In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996); In re Wertheim, 541F.2d257, 262-265 (CCPA 1976).
The Examiner meets this burden by adducing "evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description
of the invention defined by the claims." Wertheim, 541 F.2d at 263-64.
The Examiner has determined that the rejected appealed claims fail to
comply with the written description requirement because the Specification,
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Application 11/871,728
as filed, furnishes insufficient written descriptive support for the amendment
adding the limitation "extending a surface area of the one or more closed
photobioreactor chambers by placing each of the one or more closed
photobioreactor chambers at an angle with respect to a top level in the water
basin ... "as part of a method of producing a biofuel as recited in claim 26
to establish that Appellants were in possession of the subject matter of claim
26 and its pending dependent claims 31, 3 8, and 44--49 in light of the
aforementioned limitation (claim 26; Final Act. 2-3; Ans. 2-3, 22-24; Spec.
ifif 29, 42, 47-50, 63, 66, 150-152; Figs. 10, 11, 13A).
In particular, the Examiner has determined that Appellants'
Specification description of the closed system photobioreactor chambers and
the method of arranging the reactor panels at an angle (making the
photobioreactor system) fails to establish that Appellants were in possession
of a method of making biofuel that includes a step of "extending the surface
area of one or more closed photobioreactor chambers by placing each of the
one or more closed photobioreactor chambers at an angle with respect a top
level of water in the water basin ... "as recited in claim 26 as part of the
claimed method of producing biofuel (Ans. 2-3, 22-24; Spec. iii! 29, 42, 47-
50, 63, 66, 150-152; Figs. 10, 11, 13A).
Thus, the Examiner has advanced evidence and reasoning as to why
artisans would not recognize a description of the invention as now claimed
in the originally filed disclosure.
Appellants' argument exposes no reversible error in the lack of
written description rejection substantially for reasons advanced by the
Examiner. Appellants' argument that apparatus claim 54 includes a similar
limitation, which apparatus claim was not rejected as lacking written
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descriptive support, is not germane to the Examiner's rejection of method
claim 26 and lacks persuasive effect for the additional reasons set forth by
the Examiner (Ans. 23-24; see App. Br. 13).
Moreover, Appellants have not articulated how the cited Specification
disclosures that pertain to certain techniques for arranging and making the
closed system photobioreactor chambers establishes that Appellants were in
possession of a biofuel producing method including steps of growing
microorganisms, harvesting microorganisms, and converting lipids or
carbohydrates into a biofuel, as well as a step of extending a surface area of
one or more of the closed photobioreactor chambers, as part of the biofuel
producing method, with these steps being performed in any order as
embraced by amended claim 26.
While it may have been obvious to extend a surface area of one or
more of the closed photobioreactor chambers in forming a closed system
photobioreactor before those particular chambers were utilized in a method
of producing biofuel according to the growing, harvesting and converting
steps of Appellants' claim 26, claim 26 encompasses a biofuel producing
method that includes a surface area extending step that may occur
subsequent to any of the other recited steps. Appellants have not described
such an embodiment in the Specification as filed. See, e.g., Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) (Possession of a
claimed invention is established by description of the invention, including all
of its claimed limitations, in the Specification disclosure, not by disclosure
of that which may render it obvious to one of ordinary skill in the art).
Accordingly, upon due consideration of Appellants' argument and the
Specification description and evidence of record brought to bear on the lack
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of written description rejection before us, we find that the weight of the
evidence supports the Examiner's lack of written description determination
with respect to the rejected appealed claims.
It follows that we shall affirm the Examiner's lack of written
description rejection of claims 26, 31, 3 8, and 44--49.
Obviousness Rejections
Concerning the Examiner's first stated obviousness rejection, the
Examiner has determined that (1) Gudin does not teach one or more closed
system photobioreactor chambers that form "an angle with respect to the
ground surface, from a cross-sectional view, to extend a surface area of the
photobioreactor ... ",as required by independent claim 1 and (2) Gudin does
not teach a photobioreactor that has "a cross-sectional shape of the
photobioreactor along at least a portion of a length of the photobioreactor
has a longest dimension which forms a nonzero angle with respect to a top
surface of water in the water basin, thereby increasing exposure of the
photobioreactor to diffuse light" as required by independent claim 54 (Final
Act. 4, 5; Ans. 4, 5).
The Examiner turns to Berzin for alleged teachings of these features
(Final Act. 4, 5; Ans. 4, 5). The Examiner maintains that one having
ordinary skill in the art at the time of the invention would have been led to
modify Gudin's photobioreactor(s) with the angled arrangement features of
Berzin given the functional equivalence of the differing arrangements of
Gudin and Berzin (Final Act. 4--6; Ans. 5, 16).
Appellants argue, inter alia, that Gudin teaches a photobioreactor
system that relies on water-supported containers/rafts and the Examiner has
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not furnished an apparent reason as to why one of ordinary skill in the art
would have been led to equip Gudin with the angled photobioreactors of
Berzin (App. Br. 10, 11).
The applied prior art appears to support Appellants' argument. In this
regard, Gudin discloses the use of a raft made of tubes that can be held in a
rigid frame and floated on a body of water (col. 3, 11. 1-5; col. 4, 11. 18-62;
Figs. 1-3). The Examiner has not established that one of ordinary skill in
the art would have recognized that the photobioreactor system of Berzin in
the referred to Figures IA and 3C, which involve a reactor conduit or an
array of reactors that can be arranged at certain inclination angles (Berzin, p.
25, 11. 12-19) is designed so as to be formed as a floating raft and/or that
arranging the reactor tubes of Gudin in a manner as taught by Berzin for the
photobioreactor arrangement of Berzin would have provided a functional
equivalent arrangement of reactors (tubes) for the purposes of forming the
raft of Gudin.
In particular, the Examiner has not adequately explained why,
regardless of the differences between Gudin and Berzin, one of ordinary
skill in the art would have been led to make modifications to Gudin's
floating raft arrangement of reactors/tubes based on Berzin's teachings in a
manner so as to form a functionally equivalent arrangement of Gudin's
reactor tubes as part of Gudin's raft that would correspond to Appellants'
claimed photobioreactor arrangement with a reasonable expectation of
success in so doing.
Consequently, the Examiner has not established an apparent reason
for the proposed modification of Gudin based on the combined teachings of
the applied prior art. As stated in KSR Int 'l. Co. v. Teleflex Inc., 550 U.S.
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398, 418 (2007), "'[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"' (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants' claims. See In re Warner, 379 F.2d
1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art"). Accordingly, we do not
sustain the Examiner's first stated obviousness rejection.
In the Examiner's second stated obviousness rejection pertaining to
dependent claims 13 and 14, the Examiner does not rely on the additionally
applied prior art to cure the aforementioned deficiency in the base rejection.
It follows that we shall likewise reverse the latter rejection.
CONCLUSION
The Examiner's decision to reject claims 26, 31, 38, and 44--49 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement is affirmed.
The Examiner's decision to reject claims 1, 21, and 54--57 under 35
U.S.C. § 103(a) as being unpatentable over Gudin in view ofBerzin and to
reject claims 13 and 14 under 35 U.S.C. § 103(a) as being unpatentable over
Gudin in view of Berzin and Arad is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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