ICM, Inc.

Patent Trials and Appeals Board

Sep 15, 2021

2021001926 (P.T.A.B. Sep. 15, 2021)

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.
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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.
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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:
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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.
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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.
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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,
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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
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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,
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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
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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.
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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
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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.
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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.
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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
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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).
AFFIRMED