ICM, Inc.Download PDFPatent Trials and Appeals BoardSep 15, 20212021001926 (P.T.A.B. Sep. 15, 2021) Copy Citation 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. 14/486,970 09/15/2014 Charles C Gallop 3097.017US1 9920 21186 7590 09/15/2021 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER PERRIN, CLARE M ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 09/15/2021 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES C. GALLOP Appeal 2021-001926 Application 14/486,970 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and DEBRA L. DENNETT, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 7–18, and 21. A telephone hearing was held on August 30, 2021, a transcript of which will be made part of the record. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies ICM, Inc. as the real party in interest. Appeal Brief (“Appeal Br.”) filed September 24, 2020, at 2. Appeal 2021-001926 Application 14/486,970 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to methods of removing suspended solids from process streams. Specification (“Spec.”) filed September 15, 2014, ¶ 2.2 The methods include adding a chemical to a process stream in combination with a mechanical device to enhance solid- liquid separation to remove suspended solids, recover components, reduce energy needed for downstream processing, and to increase overall process efficiency. Id. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A method comprising: adjusting a pH of a process stream; adding an amount of a cationic flocculant via an inline static mixer to the process stream comprising solid particles suspended in a liquid, wherein the solid particles suspended in the liquid comprise particles of at least one of: one or more fractions, one or more by-products, or one or more co-products of one or more agricultural grains; sending the cationic flocculant mixed with the process stream to a tank, to avoid excessive shearing, for a predetermined amount of time to induce flocculation of two or more of the solid particles suspended in the liquid to aggregate and to form flocs of the solid particles suspended in the liquid, wherein the flocs formed are clusters; 2 This Decision also cites to the Final Office Action (“Final Act.”) dated August 23, 2019, the Examiner’s Answer (“Ans.”) dated November 18, 2020, and the Reply Brief (“Reply Br.”) filed January 19, 2021. Appeal 2021-001926 Application 14/486,970 3 removing the flocs of suspended solid particles from dissolved particles in the process stream which was mixed with the cationic flocculant; and producing a suspended particles stream of the flocs of the suspended solid particles and a clarified process stream. Independent claim 7 recites a method which differs from that of claim 1, in that a charged cationic polymer is added via the inline static mixer to form the flocs in the tank. Independent claim 14 recites a method which differs from that of claim 1, in that the pH of a process stream ranging from about 3 to about 9 is adjusted and there is no requirement that the cationic flocculant is added via an inline mixer. REFERENCES The Examiner relies on the following prior art: Name Reference Date Carbonell et al. (“Carbonell”) US 5,695,647 Dec. 9, 1997 Wilmer et al. (“Wilmer”) US 2004/0057334 A1 Mar. 25, 2004 Scheimann et al. (“Scheimann”) US 2006/0006116 A1 Jan. 12, 2006 Breneman et al. (“Breneman”) US 2011/0020880 A1 Jan. 27, 2011 Collins et al. (“Collins”) US 2012/0125859 A1 May 24, 2012 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections under 35 U.S.C. § 103: Appeal 2021-001926 Application 14/486,970 4 1. Claims 1–5 and 21 as unpatentable over Scheimann in view of Breneman, Collins, and Wilmer; 3 2. Claims 7–13 as unpatentable over Scheimann in view of Breneman and Wilmer; 3. Claims 14–17 as unpatentable over Scheimann in view of Breneman and Collins; and 4. Claim 18 as unpatentable over Scheimann in view of Breneman and Collins, and further in view of Carbonell. OPINION Rejection 1: Obviousness of Claims 1–5 and 21 The Examiner rejects claims 1–5 and 21 under 35 U.S.C. § 103 as unpatentable over Scheimann in view of Breneman, Collins, and Wilmer. Ans. 3–6. Appellant’s arguments focus on the limitations of claim 1; Appellant relies on the arguments raised against claim 1 for each of dependent claims 2–5 and 21. Appeal Br. 10–16. Consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2019), claims 2–5 and 21 stand or fall with claim 1. The Examiner finds that Scheimann teaches a method of separating suspended solids from a thin stillage stream substantially as recited in claim 1, but does not explicitly recite adjusting the pH of the process stream, uses a cationic coagulant rather than a cationic flocculant, and uses a slow mix tank rather than an inline static mixer. Id. at 3–5. However, the Examiner finds that Breneman teaches thin stillage streams typically possess a pH of 3.8–4.5. Id. at 4. As such, the Examiner finds that Scheimann’s thin stillage 3 The Examiner notes, without objection, that claim 5 was inadvertently omitted from the statement of rejection, but was discussed in the body of the rejection. Ans. 3. The statement of rejection above reflects the correct status of the claims subject to this rejection. Appeal 2021-001926 Application 14/486,970 5 stream inherently has a pH within the range of about 2 to about 10. Id.4 Alternatively, the Examiner concludes that it would have been obvious to have adjusted Scheimann’s pH so as to obtain a thin stillage process stream of a pH of about 2–10 in view of Breneman’s teaching. Id. With regard to the use of a cationic flocculant, the Examiner finds that Collins teaches adding a pair of chemicals to a thin stillage process stream to induce the formation of three phases (water phase, particle phase, and oil phase), wherein the pair of chemicals may be selected from the group consisting of: an anionic flocculant with a cationic flocculant, an anionic coagulant with a cationic flocculant, and a cationic coagulant with an anionic flocculant. Ans. 4–5. The Examiner concludes that it would have been obvious to have used any of the pairs of chemicals Collins identifies in Scheimann’s process as equivalents since Scheimann teaches one of the three options for the pairs of chemicals (i.e., cationic coagulant and anionic flocculant). Id. With regard to the use of a static inline mixer, the Examiner finds that Scheimann teaches that the mixing can be accomplished by any means suitable for gentle mixing to prevent shear. Ans. 5. In addition, the Examiner finds that Wilmer teaches that gentle mixing of process streams to avoid shear can be accomplished via inline static mixers. Id. The Examiner 4 We note that claim 5 recites “adjusting a pH of the process stream to from about 2 to about 10.” The use of “to from” is grammatically awkward and confuses the meaning of this claim. For example, is the pH adjusted to arrive at a pH of 2–10? Or is the pH adjusted from a pH of about 2 to a pH of about 10? We note the Specification discloses that the pH is adjusted to about 2 to about 10. Spec. ¶ 75. On the other hand, the Specification discloses that the pH is adjusted from 4 to about 8, or from about 3 to about 9, and also that the pH may be adjusted to increase the pH. Id. ¶¶ 75, 105, 108. Appeal 2021-001926 Application 14/486,970 6 concludes that it would have been obvious to substitute an inline static mixer for Scheimann’s slow mixer because an ordinary artisan would have readily recognized the equivalence of static mixers and slow mixers for the purpose of gentle mixing while avoiding shear damage to the materials being mixed. Id. Appellant argues that Breneman fails to render a step of adjusting the pH of Scheimann’s process stream because Breneman describes processing methods without the addition of alkali or acid for pH adjustment. Appeal Br. 11. Appellant asserts that Breneman teaches the pH of thin stillage process streams typically range from 3.8 to 4.5 without pH adjustment, and that pH does not require adjustment. Id. at 11–12. As such, Appellant contends that Breneman teaches away from adjusting pH and would not have motivated an ordinary artisan to modify Scheimann to adjust pH. Id. at 12. Appellant’s argument that Breneman fails to motivate, and indeed teaches away from, adjusting the pH of Scheimann’s thin stillage process stream is not persuasive of reversible error. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). Initially, we note that claim 1 merely recites “adjusting a pH of a process stream.” There is no limitation as to how and with what the pH is adjusted, nor what the original pH is, nor what the final pH should be. Thus, Appeal 2021-001926 Application 14/486,970 7 any change in pH, however small, and by any means is encompassed by this limitation. Breneman teaches that the pH of thin stillage varies significantly depending on the processing plant, with typical pH values ranging from 3.8 to 4.5. Breneman ¶ 6. We note that Scheimann adds both a cationic coagulant and an anionic flocculant, either of which would have been expected to at least slightly alter the pH of a typical process stream depending on its starting pH due at least to diluting the thin stillage. Any change in the pH of the thin stillage upon addition of the coagulant and flocculant would adjust the pH of the thin stillage as required by claim 1. Although Breneman teaches a process for processing starch into soluble dextrins and ethanol without the addition of alkali or acid for pH adjustment (id. ¶ 2), Breneman’s teaching in this regard is directed to the process of producing and fermenting the mash before separation into various components, including thin stillage. Id. ¶¶ 16–18. As such, Breneman’s teaching is not a teaching away with respect to changes in pH of the thin stillage after ethanol distillation. Appellant next argues that there is no reasoning for combining Scheimann’s cationic coagulant for dewatering a process stream with Collins’ cationic flocculant and either an anionic coagulant or an anionic flocculant for oil recovery. Appeal Br. 12. Appellant asserts that Collins’ processing aid pair induces formation of three phases: a water phase; a particle phase; and an oil phase. Id. This argument is not persuasive of reversible error because Scheimann actually uses one of the three processing aid pairs—cationic coagulant and anionic flocculant—listed in Collins to separate the thin Appeal 2021-001926 Application 14/486,970 8 stillage into three phases, including an oil phase, just as taught in Collins. Scheimann ¶ 12, 55, 62 (“The primary effluent stream 8 is the treated process stream which contains little to no suspended solids, fats, oils or greases. The second effluent stream 9 is the underflow stream where solids, fats, oils and greases are concentrated and discharged for further processing.”). Further, Scheimann claims a process for removing suspended solids, fats, oils and grease from a thin stillage process stream (id. at claim 1), whereas Collins is also directed to a process for recovery (by separation) of solids, fats, and oils from a thin stillage (Collins ¶ 3). Appellant further argues that the Examiner failed to properly and completely construe “cationic flocculant” as used in the claims. Appeal Br. 13. In particular, Appellant contends that the Examiner equated cationic coagulant or a combination of anionic flocculant with a cationic flocculant or an anionic coagulant with a cationic flocculant to the term “cationic flocculant.” Id. Appellant asserts that the Examiner failed to state how the “cationic flocculant” construction is arrived at or applied, with adequate rationale and evidence, and that the Examiner ignored how the Specification and prosecution history uses these terms. Id. at 13–14. Appellant further asserts that the Specification describes “cationic” as meaning that the polymers may carry a positive charge. Id. at 14. Appellant further distinguishes between “coagulant” and “flocculant.” Id. We are not persuaded that the Examiner failed to properly and completely construe “cationic flocculant” as used in the claims, Specification, and prosecution history. Scheimann teaches a processing aid pair comprising a cationic coagulant and an anionic flocculant for removing suspended solids from thin stillage. Scheimann ¶¶ 1, 10, 46, 47. Similarly, Appeal 2021-001926 Application 14/486,970 9 Collins teaches that a cationic coagulant and an anionic flocculant may be used as a processing aid pair for removing suspended solids from thin stillage. Collins ¶ 10. Collins also teaches two other equivalent processing aid pairs: an anionic flocculant and a cationic flocculant; and an anionic coagulant and a cationic flocculant. Id. Appellant neither argues that Collins’ cationic flocculant is somehow different from the claimed cationic flocculant, nor identifies any difference therebetween. It was, therefore, reasonable for the Examiner to determine that Collins’ cationic flocculant is encompassed within the “cationic flocculant” of the claims. Moreover, it was not the Examiner who equated Scheimann’s cationic coagulant and anionic flocculant processing aid pair with either an anionic flocculant and a cationic flocculant, or an anionic coagulant and a cationic flocculant. Collins teaches such equivalence for the same purpose as in Scheimann. Collins ¶ 10. An express teaching need not be present in the art to support the substitution of one element for another element used for the same purpose. In re Fout, 675 F.2d 297, 301 (CCPA 1982). Further, the substitution of one known element for another is obvious when the combination yields no more than a predictable result, as here (i.e., using the any of Collins’ processing aid pairs in Scheimann’s process). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Further, Appellant argues that Collins nowhere describes each of the processing pairs as “equivalent” for all purposes and processes, but only teaches that these different pairs are acceptable in Collins’ specific method. Reply Br. 9. We disagree. An ordinary artisan would have readily recognized that Collins’ processing aid pairs would be interchangeable in similar processes, such as Scheimann’s treatment of thin stillage, for similar Appeal 2021-001926 Application 14/486,970 10 purposes, such as Scheimann’s removal of suspended solids, fats, and oils. Collins’ listing of three processing aid pairs, all useable in processes of removing suspended solids, fats, and oils from thin stillage, provides a reasonable basis to believe that the listed pair alternatives are interchangeable with a reasonable expectation of success. Similarly, Appellant’s contention that Scheimann fails to teach use of an anionic flocculant is also without merit. Reply Br. 7. Although Scheimann refers to an anionic polymer, it is clear within the context of Scheimann’s disclosure that this anionic polymer is the same compound Scheimann discloses as an anionic flocculant. Scheimann ¶¶ 1, 8, 24, 46. Although Appellant did not argue the Examiner’s findings and reasoning with regard to Wilmer with regard to the rejection of claim 1, we nonetheless note that Appellant argues against Wilmer as applied in Rejection 2. Appeal Br. 17–18. Because each of Rejections 1 and 2 rely on Wilmer for the same feature and the Examiner’s findings and reasoning regarding Wilmer is the same in both rejections, we address Appellant’s arguments here for completeness. In particular, Appellant argues that “Wilmer refers to blending of ultra-high purity chemicals, the blending of abrasive slurries with other chemicals for the polishing of semiconductor wafers, and high-accuracy blending of chemical.” Appeal Br. 17. Appellant contends that “Wilmer’s subject matter is not particularly relevant to Appellant’s subject matter.” Id.; see also Reply Br. 13. Appellant further contends that there is a vast difference between Wilmer’s system with flow rates of about 100–250 ml/min, and Scheimann’s system with flow rates of 100–2000 gpm. Reply Br. 14. Appeal 2021-001926 Application 14/486,970 11 Appellant’s arguments regarding Wilmer are not persuasive of reversible error. A reference is analogous art if it is either in the field of the applicant’s endeavor, or is reasonably pertinent to the particular problem with which the inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In addition, a reference need not be reasonably pertinent to every problem facing the inventor to be analogous prior art, but rather need only be “reasonably pertinent to one or more of the particular problems to which the claimed invention[] relate[s].” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020). Appellant identifies a number of purported differences between Wilmer and the appealed claims in an attempt to undermine the Examiner’s analogous art determination. But “a reference can be analogous art with respect to a patent even if there are significant differences between the two references.” Donner, 979 F.3d at 1361. “Indeed, there will frequently be significant differences between a patent and a reference from a different field of endeavor.” Id. What matters is whether these differences support a determination that the reference is not reasonably pertinent to a problem to which the claimed inventions relate. Id. Here, Appellant contends that the flow rates between Wilmer and Scheimann are so significantly different that one skilled in the art would not have looked to Wilmer for solutions to the problem of gentle mixing without shear. However, we first note that inline static mixers are well-known in the Appeal 2021-001926 Application 14/486,970 12 art, of which Wilmer is merely an example. Moreover, the flow rates of Scheimann and Wilmer are not particularly relevant to whether one of ordinary skill in the art would have understood that inline static mixers would provide gentle shear-free mixing of chemical components of a flowing process stream. Indeed, those skilled in the art would have understood that flow rates for use in gentle shear-free mixing are dependent on, among other parameters, the passage through which the process stream is flowing; higher flow rates may be used through larger flow passages while maintaining low shear, and lower flow rates are used through smaller flow passages to maintain low shear. Because Wilmer teaches that the inline static mixer may be used to provide gentle shear-free mixing of chemicals and Scheimann teaches that any known means for performing gentle shear-free mixing of the treated thin stillage process stream may be used, a preponderance of the evidence supports the Examiner’s obviousness conclusion. Accordingly, we sustain the Examiner’s obviousness rejection of claims 1–5 and 21. Rejection 2: Obviousness of Claims 7–13 The Examiner rejects claims 7–13 under 35 U.S.C. § 103 as unpatentable over Scheimann in view of Breneman and Wilmer. Ans. 6–8. Appellant relies on the same arguments raised against the combination of Scheimann, Breneman, and Wilmer raised against claim 1 in Rejection 1 above. Appeal Br. 16–18. For the same reasons given above, these arguments are not persuasive of reversible error. Accordingly, we likewise sustain the Examiner’s obviousness rejection of claims 7–13. Appeal 2021-001926 Application 14/486,970 13 Rejection 3: Obviousness of Claims 14–17 The Examiner rejects claims 14–17 under 35 U.S.C. § 103 as unpatentable over Scheimann in view of Breneman and Collins. Ans. 8–10. Appellant relies on the same arguments raised against the combination of Scheimann, Breneman, and Collins raised against claim 1 in Rejection 1 above. Appeal Br. 18–21. For the same reasons given above, these arguments are not persuasive of reversible error. Accordingly, we likewise sustain the Examiner’s obviousness rejection of claims 14–17. Rejection 4: Obviousness of Claim 18 The Examiner rejects claim 18 under 35 U.S.C. § 103 as unpatentable over Scheimann in view of Breneman and Collins, and further in view of Carbonell. Ans. 10–11. Appellant argues that Carbonell fails to cure the deficiencies of Scheimann, Breneman, and Collins. Appeal Br. 22. Because Carbonell relates to clarifying turbid wastewater containing at least one contaminant, Appellant argues that Carbonell’s subject matter is not particularly relevant to Appellant’s subject matter. Id. Appellant fails to address with any particularity the Examiner’s findings and reasoning for combining the teachings of Scheimann and Carbonell. In particular, the Examiner finds that Carbonell teaches a flocculation method using potassium sulfate to facilitate flocculation and that Scheimann contemplates that additional processing aids may be used in addition to the coagulant and flocculant pair. Ans. 11. Thus, a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to include potassium sulfate in Scheimann as a flocculation processing aid with a reasonable expectation of success. Accordingly, we likewise sustain the Examiner’s obviousness rejection of claim 18. Appeal 2021-001926 Application 14/486,970 14 We note that Appellant provides additional, more detailed arguments regarding Carbonell in the Reply Brief. Reply Br. 15–16. Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2); see also Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the Reply Brief is considered waived); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal). Appellants have provided this record with no such showing. Accordingly, we will not consider this new argument in the Reply Brief. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Examiner’s Answer, the Examiner’s decision to reject claims 1–5, 7–18, and 21 under 35 U.S.C. § 103 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 21 103 Scheimann, Breneman, Collins, Wilmer 1–5, 21 7–13 103 Scheimann, Breneman, Wilmer 7–13 14–17 103 Scheimann, Breneman, Collins 14–17 Appeal 2021-001926 Application 14/486,970 15 18 103 Scheimann, Breneman, Collins, Carbonell 18 Overall Outcome 1–5, 7–18, 21 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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