Mark E. Knuth et al.

Patent Trials and Appeals Board

Aug 29, 2019

12810142 - (D) (P.T.A.B. Aug. 29, 2019)

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.
12/810,142 09/28/2010 Mark E. Knuth CIBUS-003-US 3228
35938 7590 08/29/2019
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
docketing@acuitylg.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK E. KNUTH, PETER R. BEETHAM,
KEITH A. WALKER, and BERNHARD D. KUEBITZ
__________

Appeal 2018-002294
Application 12/810,142
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants1 appeal under 35 U.S.C. § 134 the final rejection claims 1,
and 141–159. Appellants presented oral argument in this appeal on August
20, 2019. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to mixture of fatty acids or blends of two or
more oils useful as feedstocks for the production of biodiesel wherein the
blend or mixture has improved cold climate performance. (Spec. ¶¶ 1, 14).
Claim 1 is illustrative of the subject matter on appeal:
1. A mixture of fatty acids comprising:
80% to 100% saturated fatty acids having 8-12 carbons and
monounsaturated fatty acids having 12-18 carbons;
5% to 80% caprylic acid (C8:0) and capric
acid (C10:0), and
less than 20% lauric acid (C12:0);
wherein said monounsaturated fatty acids account for 5% to 95% by
weight of the mixture; and
wherein said mixture comprises less than 20% polyunsaturated
fatty acids and saturated fatty acids having more than 12 carbons;
wherein said fatty acids are alkyl-esterified;
wherein the alkyl-esterified fatty acids comprise one or more alkyl
esters selected from the group consisting of methylesters, ethylesters, n-
propylesters, n-butyl esters, and
isopropylesters; or wherein the alkyl-esterified fatty acids comprise
straight chain alkyl esters.

1 Appellants identify “Cibus US LLC,” as the real party in interest (App. Br.
4).
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Appellants appeal the following rejection:
Claims 1 and 141–159 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Demmering (US 5,389,113, pat. Feb. 14, 1995).
Appellants argue similar limitations in independent claims 1, 141, and
142 (App. Br. 8–10, 14–16). We select claim 1 as representative of this
grouping.
Appellants argue separately claims 143–159 (App. Br. 10–14, 16–20).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Demmering are
located on pages 3–9 of the Answer. In the Answer, the Examiner
maintained the original § 103 rejection of claims 1 and 141–159 over
Demmering based upon an optimization rationale (Ans. 3–7). The Examiner
included a new ground of rejection of independent claims 1, 141, and 142
over Demmering based upon an overlapping or abutting range rationale for
the various components of the mixture/blend (Ans. 7–9).

CLAIMS 1, 141, and 142
Appellants argue that Demmering provides no direction on how to
arrive at the claimed invention (App. Br. 9). Appellants contend that there is
nothing in the record that establishes the relative percentages of
polyunsaturated fatty acids and saturated fatty acids having more than 12
carbons, lauric acid, caprylic acid and capric acid as recited in claim 1 are
result-effective variables that would have been optimized (App. Br. 9).
Appellants contend that the Examiner provides no objective reasoning as to
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why one of ordinary skill in the art would have been motivated to adjust the
mixture of Demmering to arrive at the claimed blends (App. Br. 9).
The Examiner finds that Demmering teaches at column 1, lines 10–13
that the composition of fatty acid esters provides improved low-temperature
stability for use as fuel for diesel engines (Ans. 15). The Examiner finds
that biodiesel is listed by Demmering as one of the forms of diesel fuel (Ans.
15). The Examiner further finds that Demmering exemplifies a particular
fatty acid ester composition that includes various amounts of different fatty
acid esters (Non-final Act. 3–5; Ans. 3–5 and 7–8). The Examiner’s
findings above establish that the amounts of fatty acid esters in the mixture,
which include amounts of the various carbon-chain lengths recited in the
claim, are important variables in controlling the low-temperature stability of
the mixture as used in biodiesel. The Examiner’s calculations on pages 7–8
and 11–14 of the Answer establish that the exemplified embodiment
includes a composition with ranges of the various fatty acid esters that either
overlap or are very close as to abut the ranges recited in the claims. The
Examiner denominated this finding as a new ground of rejection in the
Answer (Ans. 7–8). This additional finding with regard to Demmering
reinforces the Examiner’s determination that the fatty acid ester composition
of claim 1 would have been obvious over Demmering.
In response to the Examiner’s new ground of rejection based on
overlapping ranges, Appellants argue that Demmering does not disclose the
unsaturation or saturation level of the various fatty acids listed in the
exemplified embodiment at column 3, line 56 to column 4, line 12 (Reply
Br. 5). Appellants contend that it is unclear how the Examiner arrives at that
calculation (Reply Br. 5).
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Contrary to Appellants’ arguments, we find that the saturation level of
the listed fatty acid esters in Demmering’s example can be ascertained by
simply looking up the definition of any of the particular fatty acid esters as
found by the Examiner in the Answer (Ans. 11). Notably, Appellants do not
assert that the Examiner’s findings regarding the saturation levels of the fatty
acid esters are inaccurate (Reply Br. 5). Rather, Appellants merely argue
that it is unclear how the Examiner arrives at the calculation. The Examiner
provides, however, a clear outline of how the calculations were performed in
determining that Demmering teaches an example with overlapping or
abutting ranges (Ans. 7–8, 11–14).
Appellants argue that the Examiner’s findings regarding the capric,
and caprylic acid esters are wrong because the Examiner’s calculation
assumes that 100% of the 4 to 40% by weight of at least one ester of fatty
acids containing 6 to 14 carbon atoms and lower aliphatic alcohols
containing 1 to 4 carbon atoms would have been these compounds (Reply
Br. 5). Appellants contend that Demmering describes the capric acid and
caprylic acid esters as “starting material” and provides no guidance to
support the Examiner’s finding (Reply Br. 5).
Demmering teaches that the example includes component A that
includes various fatty acids (col. 2, ll. 4–21). The rapeseed oil acid methyl
ester described in column 3, line 59 to column 4, line 1 corresponds to
component A. Cf. Demmering, col. 2, ll. 4–21, col. 4, l. 59 to col. 3, l. 1.
Demmering teaches that component B of composition are fatty acid lower
alkyl esters that include ethyl, propyl, butyl or methyl esters of fatty acids
containing 6 to 14 carbon atoms, such as caprylic acid, capric acid, caproic
acid, myristic acid, lauric acid, or mixtures thereof (col. 2, ll. 34–38). The
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head-fractionated fatty acid methyl ester based on coconut oil in column 4,
ll. 6–12 corresponds to component B. In other words, Demmering teaches
that the starting materials listed in the example correspond to the different
components of the mixture before they are mixed together. Demmering
teaches in Table 1 examples of how the starting materials are blended
together (column 4, Table 1). The Examiner’s calculations regarding the
amounts of the various components including caprylic acid, and capric acid
are supported by Demmering’s teachings.
Appellants advance similar arguments regarding independent claims
141 and 142 (App. Br. 14–16). We find these arguments unpersuasive for
the same reasons discussed above.
On this record, we affirm the Examiner’s rejection of claims 1, 141,
and 143 is affirmed.

CLAIMS 143 AND 149
Appellants argue that there is no articulated reasoning to modify
Demmering to arrive at the subject matter of claim 143 or claim 149 (App.
Br. 10–11, 16). Appellants contend that there is no logical explanation for
one of ordinary skill in the art to arrive at the specific blend in which oleic
acid and palmitoleic acid account for 50 to 85% of the mixture based on
Demmering (App. Br. 16).
The Examiner finds that oleic acid methyl ester may comprise 100%
of component A (Non-Final Act. 6). The Examiner explains that when oleic
acid methyl ester is the only fatty acid methyl ester in component A the oleic
acid methyl ester would comprise 58% to 95% of the total mixture and the
palmitoleic acid would be zero percent of the mixture (Ans. 16, 19).
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Demmering teaches that the composition includes “at least one ester
with an iodine value of 50 to 150 derived from fatty acids containing 12 to
22 carbon atoms” and Demmering discloses a list of suitable fatty acid alkyl
esters of component A that includes esters of oleic acid and palmitoleic acid,
among other fatty acids (Demmering col. 1, ll. 43–45; col. 2, ll. 4–21).
Demmering prefers mixture of fatty acids that include oleic acid, linoleic
acid, linolenic acid, and erucic acid methyl ester (col. 2, ll. 19–21). Based
upon Demmering’s disclosures a single fatty acid ester would have included
oleic acid alone as found by the Examiner. The Examiner correctly
determines that claim 143 does not exclude either the oleic or palmitoleic
acid amount from being zero percent (Non-Final Act. 6). All that claim 143
requires is that the combined amount of oleic acid and palmitoleic acid is
between 58 to 85% of the composition.
We affirm the § 103 rejection of claims 143 and 149 over
Demmering.

CLAIMS 144, 150, and 155
Appellants argue that the Examiner has not provided any logical
explanation regarding why one of ordinary skill in the art based on
Demmering’s teachings would have selected the particularly claimed fatty
acid esters (App. Br. 11, 17). Appellants contend that the Examiner’s
rejection lacks articulated reasoning why such a modification would have
been obvious (App. Br. 11, 17).
The Examiner finds that when component A of Demmering is solely
oleic acid methyl ester and component B is capric acid, caproic acid and/or
caprylic acid, then stearic acid and palmitic acid may not be present (Non-
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Final Act. 6; Ans. 16). As noted above with regard to claim 143,
Demmering’s teachings would have suggested any one of the listed fatty
acid esters, including oleic acid, may be component A of the mixture.
Demmering exemplifies an embodiment in column 4 where component B
includes only caproic acid, caprylic acid, and capric acid, which supports the
Examiner’s finding that stearic and palmitic acid may be excluded from the
composition. Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“That the . . .patent discloses a multitude of effective
combinations does not render any particular formulation less obvious.”).
Claim 144 recites that the amount of stearic and palmitic acid accounts for
less than 4% of the mixture, which includes zero percent of each of the
acids.
On this record, we affirm the Examiner’s rejection of claims 144, 150,
and 155.

CLAIMS 145, 151, and 156
Appellants argue that claim 145 is even more specific in that linoleic
acid (15:2) and linolenic acid (18:3) account for less than 3% of the mixture,
and the Examiner provides no logical explanation as to why a person of
ordinary skill in the art would have modified Demmering in the manner
required by claim (App. Br. 11, 17–18). Appellants contend that the
Examiner provides no articulated reasoning for the modification proposed
(App. Br. 12, 17–18).
The Examiner finds that when oleic acid methyl ester is the only fatty
acid, then the amount of linoleic acid and linolenic acid ester would be zero
percent (Ans. 16). As with claims 143 and 144, Demmering teaches that
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component A may include only one fatty acid ester, which does not require
linoleic acid or linolenic acid. Claim 145 does not exclude having zero
percent linoleic acid and linolenic acid.
On this record, we affirm the Examiner’s rejection of claims 145, 151,
and 156.

CLAIMS 146, 152, and 157
Appellants argue that the Examiner provides no logical explanation
for one of ordinary skill in the art to arrive at the subject matter of claim 146
(App. Br. 12). Appellants contend that the Examiner has not provided any
articulated reasoning to support that Demmering would have rendered
obvious the subject matter of claim 146 (App. Br. 12–13).
The Examiner finds that Demmering teaches claim 146 but fails to
teach using 5 to 15% lauric acid (Non-final Act. 5). The Examiner finds that
Demmering teaches that component B may include lauric acid (Non-final
Act. 5). The Examiner finds that the amount of lauric acid would have been
obvious based upon routine optimization (Non-final Act. 5).
Demmering teaches that component A may be between 58% and 95%
of the overall fatty alkyl ester composition and component A includes at
least one fatty acid ester, which may be lauric acid and oleic acid (col. 3, ll.
18–21; col. 2, ll. 4–20). Demmering’s disclosures would have rendered
obvious the combination of oleic acid and lauric acid. Merck v. Biocraft,
874 F.2d at 807. Demmering exemplifies where component B primarily
includes caprylic acid and capric acid (col. 4, ll. 6–12). Demmering teaches
that the amount of component B constitutes from 4 to 40% of the overall
composition (col. 3, ll. 22–24). Demmering teaches that the goal of the
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invention is to produce a mixture of fatty alkyl lower alkyl esters having
improved low-temperature stability (col. 1, ll. 10–13). Accordingly, it
would have been with the skill level of the ordinarily skilled artisan to
optimize the amounts of the various fatty acid esters used in the
compositions including lauric acid, oleic acid, capric acid and caprylic acid.
No evidence of unexpected results has been shown with regard to the subject
matter of claim 146.
On this record, we affirm the Examiner’s § 103 rejection of claims
146, 152, and 157.

CLAIMS 147, 153, and 158
Appellants argue that the Examiner fails to provide any logical
explanation or articulated reasoning for arriving at the particular blend of
capric acid, caprylic acid, and lauric acid in the amounts recited in claim 147
(App. Br. 13).
The Examiner finds that Demmering does not teach a mixture of alkyl
esterified fatty acids that comprise the amounts recited in claim 147 (Non-
final Act. 6–7). The Examiner finds that Demmering teaches that
component B may include capric, caprylic, caproic, and myristic acids (Non-
Final Act. 7). The Examiner determines that it would have been obvious to
use 60–85% combined of caprylic acid, capric acid, and lauric acid as a
matter of routine optimization (Non-final Act. 7).
Claim 147 depends from claim 1 wherein the “mixture” refers to the
overall mixture of the fatty acids. In other words, the combination of
caprylic acid, capric acid, and lauric acid must be between 60 and 85% of
the entire mixture. Demmering describes that lauric acid may be part of
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component A of the composition (col. 2, ll. 4–20). Demmering teaches that
component A may be between 58% and 95% of the overall fatty alkyl ester
composition (col. 3, ll. 18–21). Demmering’s disclosures would have
rendered obvious the combination of caprylic acid, capric acid, and lauric
acid. Merck v. Biocraft, 874 F.2d at 807. Demmering exemplifies where
component B primarily includes caprylic acid and capric acid (col. 4, ll. 6–
12). Demmering teaches that the amount of component B constitutes from 4
to 40% of the overall composition (col. 3, ll. 22–24). Demmering teaches
that the goal of the invention is to produce a mixture of fatty alkyl lower
alkyl esters having improved low-temperature stability (col. 1, ll. 10–13).
Accordingly, it would have been with the skill level of the ordinarily skilled
artisan to optimize the amounts of the various fatty acid esters used in the
compositions including lauric acid, capric acid and caprylic acid. No
evidence of unexpected results has been shown with regard to the subject
matter of claim 147.
On this record, we affirm the § 103 rejection of claims 147, 153, and
158.
CLAIMS 148, 154, and 159
Appellants argue the Examiner fails to provide any logical
explanation or articulated reasoning for arriving at the particular blend of
oleic acid and palmitoleic acid in an amount of 15 to 40% of the mixture as
recited in claim 148 (App. Br. 13).
Claim 148 merely requires that the combined amounts of oleic acid
and palmitoleic acid is within the range of 15% to 40% of the mixture.
Claim 148 does not exclude either one of the oleic acid or palmitoleic acid
being at zero percent. The Examiner finds that Demmering teaches that
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component A of the fatty acid ester blend may include a mixture of fatty
acid esters that include oleic acid, lauric acid, and palmitoleic acid (Non-
final Act. 6). The Examiner finds that other acids “may also be added that
accounts for the oleic and palmitoleic acid being 15 to 40% of the mixture
(Non-Final Act. 6). The Examiner further finds that Demmering’s example
discloses that the oleic methyl ester may be present in an amount of 60% of
58 to 95% of the mixture (i.e., 34.8 to 57%) of the mixture (Ans. 18). The
Examiner finds that palmitoleic acid is not included in the example and so
would not be present in the composition (Ans. 18).
The Examiner has established a prima facie case of obviousness over
the subject matter of claim 148, 154, and 159. We affirm the Examiner’s §
103 rejection of claims 148, 154, and 159.

On this record, we affirm the Examiner’s § 103 rejection of claims 1,
and 141 to 159 over Demmering.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED