Butamax Advanced Biofuels LLCv.GEVO, INC.

Patent Trial and Appeal Board

May 21, 2015

13441459 (P.T.A.B. May. 21, 2015)

Trials@uspto.gov Paper 30
571-272-7822 Entered: May 21, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BUTAMAX ADVANCED BIOFUELS LLC,
Petitioner,

v.

GEVO, INC.,
Patent Owner.
____________

Case IPR2014-00143
Patent 8,378,160 B2

Before SHERIDAN K. SNEDDEN, CHRISTOPHER L. CRUMBLEY, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73

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I. INTRODUCTION
Butamax Advanced Biofuels LLC (“Petitioner”) filed a Petition to institute
an inter partes review of claims 1–21 of U.S. Patent No. 8,378,160 B2 (“the ’160
patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Gevo, Inc. (“Patent
Owner”) did not file a preliminary response to the Petition. On May 22, 2014, we
instituted trial for challenged claims 1–21 on the following grounds of
unpatentability asserted by Petitioner:
Challenged Claim[s] Basis Reference[s]
1–10, 12, 15–18, 2021 § 102(e) D’Amore1
1–10, 12, 15–18, 2021 § 103(a) D’Amore and ASTM D48142
11 § 103(a) D’Amore, Wilke,3 and ASTM D4814
13 § 103(a) D’Amore and ASTM D9754
14 § 103(a) D’Amore and ASTM D16555
19 § 103(a) D’Amore and D9106
Decision to Institute (Paper 9, “Dec.”).
After institution of trial, the Patent Owner filed a Patent Owner Response

1 D’Amore, US 2008/0132741 A1, published June 5, 2008. Ex. 1003.
2 ASTM Standard D4814, “Standard Specification for Automotive Spark-Ignition
Engine Fuel,” ASTM International, West Conshohocken, PA, Sept. 2007, available
at http://www.astm.org (“ASTM D4814”). Ex. 1014.
3 Wilke, US 4,359,533, issued Nov. 16, 1982 . Ex. 1006.
4 ASTM Standard D975, “Standard Specification for Diesel Fuel Oils,” ASTM
International, West Conshohocken, PA, Aug. 2007, available at
http://www.astm.org (“ASTM D975”). Ex. 1015.
5 ASTM Standard D1655, “Standard Specification for Aviation Turbine Fuels,”
ASTM International, West Conshohocken, PA, July 2007, available at
http://www.astm.org (“ASTM D1655”). Ex. 1017.
6 ASTM Standard D910, “Standard Specification for Aviation Gasolines,” ASTM
International, West Conshohocken, PA, Aug. 2007, available at
http://www.astm.org (“ASTM D910”). Ex. 1016.
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(Paper 16, “PO Resp.”), to which Petitioner filed a Reply (Paper 18, “Reply”).
Petitioner relies upon the Declarations of Dr. Joseph T. Joseph (Exs. 1030
and 1040) in support of its Petition.
Oral argument was conducted on January 14, 2015. A transcript is entered
as Paper 29 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). In this Final Written Decision,
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we determine
Petitioner has shown by a preponderance of the evidence that claims 1–21 of the
’160 patent are unpatentable.
A. Related Proceedings
Petitioner informs us of no related litigations. Pet. 2. Concurrent with the
present inter partes review, Petitioner also requested review of, and the Board
instituted trial on, the following claims in patents in the same family as the ’160
patent: claims 1–23 of U.S. Patent No. 8,193,402, Case IPR2014-00142 (PTAB
May 22, 2014) (Paper 9); claims 1–14 and 16–19 of U.S. Patent No. 8,487,149,
Case IPR2014-00144 (PTAB May 22, 2014) (Paper 9); and claims 1–21 of US
Patent No. 8,546,627, Case IPR2014-00250 (PTAB May 22, 2014) (Paper 8).
Additionally, Petitioner requested review of, and the Board instituted trial on,
claims 1–15 of unrelated U.S. Patent No. 8,373,012 in IPR2014-00402 (PTAB
August 8, 2014) (Paper 11).
B. The ’160 patent (Ex. 1001)
Transportation fuels are defined as mixtures of typically aliphatic and
(optionally) aromatic hydrocarbons that meet a collection of physical properties
and requirements, as defined in standards such as ASTM D4814 (gasoline), ASTM
D975 (diesel fuel), ASTM D910 (aviation gasoline), and ASTM D1655 (jet fuel).
Ex. 1001, 12:15–17:25. Gasoline, for example, is defined not by its composition,
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but by its ability to function in a spark ignition engine according to properties
defined by ASTM D4814. Id. at 11:36–43. Such properties include vapor
pressure, energy density, octane number, water solubility, thermal oxidation
stability, gum content, and drivability. Id. at 15:27–45. The properties of gasoline
can be adjusted by modifying the amounts and types of organic molecules that
make up the gasoline. Id. For example, the octane number of a gasoline mixture
can be raised by adding high octane components. Id.
The ’160 patent, titled “Renewable Compositions,” describes methods for
making renewable hydrocarbons. Id. at 3:62–4:59. The methods involve
preparing a feedstock from a biomass to serve as a carbon source. Id. at 5:47–6:13.
The feedstock is fermented with microorganisms to form C2–C6 alcohols. Id. at
3:65–67. The alcohols are dehydrated to form C2–C6 olefins (alkenes). Id. at 4:1–
3. The olefins are reacted with an oligomerization catalyst to form more highly
alkylated aromatic hydrocarbons, for example, C6–C24 unsaturated oligomers. Id.
at 4:5–8 and 9:62–10:9. The dehydration step and oligomerization step may be
carried out separately or combined into a single process. Id. at 20:50–54. The
olefins are then reduced to heat-stable saturated hydrocarbons in a hydrogenation
reaction. Id. at 23:53–59. The ’160 patent discloses that the compositions
produced according to the methods of the patent meet the fuel-defining ASTM
International specifications. Id. at 18:26–38.
C. Illustrative Claim
Claim 1 is the only independent claim of the ’160 patent, and is reproduced
below:
1. A process for preparing renewable hydrocarbons comprising:
(a) treating biomass to form a feedstock;
(b) fermenting the feedstock with one or more species of
microorganism, thereby forming isobutanol;
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(c) dehydrating at least a portion of the isobutanol obtained in
step (b), thereby forming a product comprising one or more C4
olefins;
(d) isolating the one or more C4 olefins;
(e) oligomerizing at least a portion of the one or more C4 olefins
isolated in step (d), thereby forming a product comprising one or more
C8–C24 unsaturated oligomers; and
(f) hydrogenating at least a portion of the product of step (e) in
the presence of hydrogen, thereby forming a product comprising one
or more C8–C24 saturated alkanes;
whereby the product of step (f) itself meets the requirements of
at least one of ASTM D4814, ASTM D975, ASTM D910, or ASTM
D1655, or a blend of at least 10% of the product of step (f) with a
mixture of hydrocarbons meets the requirements of at least one of
ASTM D4814, ASTM D975, ASTM D910 or ASTM D1655.

Id. at 62:48–7:2.
II. ANALYSIS
A. Claim Interpretation
We interpret claims using the “broadest reasonable construction in light of
the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015)
(“Congress implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO regulation.”).
Under that standard, and absent any special definitions, we give claim terms their
ordinary and customary meaning, as would be understood by one of ordinary skill
in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
We interpret the following claim terms of the challenged claims as part of
our analysis.
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1. “whereby the product of step (f) itself meets the requirements of at
least one of ASTM D4814. . . .”
Challenged claims 1–12, 15–18, and 2021 require products produced by
the claimed method to meet requirements of certain standards developed by ASTM
International, such as ASTM D4814, which is the standard specification for
gasoline. Ex. 1014. Petitioner contends that the Patentee of the ’160 patent acted
as his own lexicographer by expressly disavowing ASTM D4814’s distillation
curve as a requirement for gasoline produced by the claimed process. Pet. 12–13.
Petitioner directs our attention to the following portion of the ’160 patent:
The distillation curve of a gasoline mixture is measured using ASTM
method D86, and the specification is calibrated by how the typical
hydrocarbon mixtures that comprise gasoline behave in an engine.
When a substantial amount of the hydrocarbon component in a
gasoline mixture is replaced with a different type of organic
compound, i.e. an alcohol such as n-butanol or isobutanol, the
distillation curve will differ from what is specified in ASTM D4814,
even though the blend has similar, if not identical, engine performance
compared to unblended gasoline. For this reason, the distillation
curve specification is not used to describe the gasoline compositions
of the present invention.

Ex. 1001, 15:62–16:6 (emphasis added).
Patent Owner does not address claim construction or Petitioner’s contention
regarding the ’160 patent disavowing ASTM D4814’s distillation curve as a
requirement for gasoline produced by the claimed process.
We agree with Petitioner that the above disclosure in the ’160 patent
amounts to an express disavowal of ASTM D4814’s distillation curve as a
requirement for products produced according to the method of challenged claims
1–12, 15–18, and 2021.
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B. Principles of Law
To prevail in its challenges to the patentability of the claims, a petitioner
must establish facts supporting its challenges by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
§ 102 if a prior art reference discloses every limitation of the claimed invention,
either explicitly or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047
(Fed. Cir.1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed. Cir. 1999) (holding that “[t]o anticipate, a single reference must teach every
limitation of the claimed invention,” and any limitation not taught explicitly must
be taught inherently and would be so understood by a person experienced in the
field); In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (the
dispositive question is “whether one skilled in the art would reasonably understand
or infer” that a reference teaches or discloses all of the elements of the claimed
invention).
The principle of inherency, in the law of anticipation, requires that any
information missing from the reference would nonetheless be known to be present
in the subject matter of the reference, when viewed by persons experienced in the
field of the invention. We note, however, that “anticipation by inherent disclosure
is appropriate only when the reference discloses prior art that must necessarily
include the unstated limitation, [or the reference] cannot inherently anticipate the
claims.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed.
Cir. 2002) (internal citation omitted); see Hitzeman v. Rutter, 243 F.3d 1345, 1355
(Fed. Cir. 2001) (“consistent with the law of inherent anticipation, an inherent
property must necessarily be present in the invention described by the count, and it
must be so recognized by persons of ordinary skill in the art”) (citations omitted);
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (that a feature in the prior art
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reference “could” operate as claimed does not establish inherency). Thus, when a
claim limitation is not set forth explicitly in a reference, evidence “must make clear
that the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (citations omitted).
It is not sufficient if a material element or limitation is “merely probably or
possibly present” in the prior art. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295
F.3d 1292, 1295 (Fed. Cir. 2002) (citations omitted); see W.L. Gore & Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (anticipation “cannot be
predicated on mere conjecture respecting the characteristics of products that might
result from the practice of processes disclosed in references”) (citation omitted); In
re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (to anticipate, the asserted inherent
function must be present in the prior art).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations, including: (1) the scope
and content of the prior art; (2) any differences between the claimed subject matter
and the prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966).
We analyze the instituted grounds of unpatentability in accordance with the
above-stated principles.
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C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the time it
was made, we consider the level of ordinary skill in the pertinent art at the time of
the invention. Graham v. John Deere, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of maintaining
objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d
714, 718 (Fed. Cir. 1991).
Petitioner contends that a person of ordinary skill in the art at the time of the
’160 patent would have a Ph.D. in Chemistry, Chemical Engineering, or a similar
related discipline and would have experience in organic chemistry and/or fuel
chemistry, as well as transportation fuel production. Pet. 4 (citing Ex. 1030 ¶ 16).
Petitioner argues, in the alternative, that a person of ordinary skill in the art would
have a Bachelor’s degree in Chemistry, Chemical Engineering, or a similar related
discipline and substantial experience in an industry involving organic chemistry
and/or fuel chemistry, as well as transportation fuel production. Id. Patent Owner
states that one of ordinary skill in the art at the time of the ’160 patent would have
a Ph.D. in Chemistry, Chemical Engineering, or a similar related discipline and
would have experience in fuel chemistry. Tr. 42:21–43:12.
Based on our review of the ’160 patent and the types of problems and
solutions described in the ’160 patent and cited prior art, we conclude a person of
ordinary skill in the art at the time of the ’160 patent would have a Ph.D. in
Chemistry, Chemical Engineering, or a similar related discipline and some
experience in an industry involving organic chemistry and/or fuel chemistry.
Based on the stated qualifications of Joseph T. Joseph, Ph.D. (Ex. 1030 ¶¶ 9–14)
and his Curriculum Vitae (Ex. 1035), Petitioner’s declarant meets the requirements
of this definition. We further note that the applied prior art reflects the appropriate
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level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001).
D. Alleged Anticipation of Claims 1–10, 12, 15–18, and 2021 by D’Amore
Petitioner contends D’Amore anticipates, under 35 U.S.C. § 102(e), claims
1–10, 12, 15–18, and 2021 of the ’160 patent. Pet. 15–35. For the following
reasons, we determine Petitioner has not shown by a preponderance of the
evidence that claims 1–10, 12, 15–18, and 2021 are unpatentable under 35 U.S.C.
§ 102(e).
1. Overview of D’Amore
D’Amore describes an invention useful for the production of intermediate
compounds used in transportation fuels such as gasoline. Ex. 1002 ¶ 20.
Specifically, D’Amore discloses producing isobutanol (a C2–C6 alcohol) by
culturing microorganisms in the presence of carbohydrates. Ex. 1003 ¶¶ 23, 56.
D’Amore specifically teaches converting isobutanol into butene (a C2–C6 olefin) in
the presence of a catalyst (id. ¶ 56, Fig. 1) and converting dimerized butene into
isooctene (id. ¶¶ 64, 76). Recovered isooctene can be reacted with a hydrogenation
catalyst to produce isooctane. Id. ¶¶ 57, 64, 76. D’Amore discloses that isooctane
produced by the disclosed processes is useful as an additive to transportation fuels,
such as gasoline. Id. at Abstract and ¶¶ 20, 64, 76.
2. Analysis
a. D’Amore Qualifies as 102(e) Prior Art
D’Amore was filed on June 13, 2007, published on June 5, 2008, and claims
priority to U.S. Provisional Application No. 60/814,137 (“the ’137 application”),
filed on June 16, 2006. See Ex. 1004. The disclosure in the ’137 application (Ex.
1004) is the same disclosure found in D’Amore (Ex. 1003). Ex. 1030 ¶ 46. Thus,
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we conclude that D’Amore qualifies as prior art to the claims of the ’160 patent
under 35 U.S.C. § 102(e) as of the ’137 application’s filing date of June 16, 2006.
b. Independent Claim 1
Petitioner contends D’Amore, as summarized in the overview above,
discloses each limitation of independent claim 1 of the ’160 patent, except that
D’Amore does not disclose explicitly that its products (e.g., isooctane) meet the
requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or
ASTM D1655, as recited in claim 1. Pet. 1523. Petitioner contends, however,
that the isooctane of D’Amore necessarily meets the requirements of, for example,
ASTM D4814, without blending. Id. at 2223; see Tr. 9:1–10:3. According to
Petitioner, the product of D’Amore’s process could contain up to 30%
contamination with isobutene and the mixture would still meet the standards in
ASTM D4814. Tr. 9:1–18; Ex. 1040 ¶¶ 17–18.
Petitioner relies on two Declarations from Dr. Joseph to support its position.
See Exs. 1030, 1040. Dr. Joseph testifies that isooctane, a product of D’Amore’s
disclosed processes, meets the following criteria set forth in ASTM D4814: (i) the
maximum vapor pressure of ASTM D4814 Table 1 (Ex. 1030 ¶¶ 50–51); (ii) the
lead content maximum, copper strip corrosion maximum, silver strip corrosion
maximum, solvent-washed gum content maximum, sulfur % mass maximum,
oxidation stability minimum, and water tolerance of ASTM D4814 (id. ¶¶ 53–56);
(iii) the vapor/liquid maximum ratio of ASTM D4814 Table 3 (id. ¶¶ 57–60); (iv)
the “Workmanship” requirements of ASTM D4814 (id. ¶ 61); and (v) the
antiknock requirements of ASTM D4814 (id. ¶ 62). Dr. Joseph also testifies that
D’Amore’s process necessarily would result in the production of isooctane free of
lower molecular weight hydrocarbons, such as isobutene, and the recovered
isooctane would meet the requirements of ASTM D4814 on its own. Ex. 1040
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¶¶ 11–12. Dr. Joseph opines that a person of skill in the art would not be
concerned by the presence of “contaminating” isobutene and that the isooctane
produced by D’Amore’s process still necessarily would meet the requirements of
ASTM D4814 on its own or when blended, even if contaminating amounts
isobutene were present. Id. ¶ 14.
Patent Owner disagrees with Petitioner’s characterization of D’Amore and
argues that D’Amore does not disclose, directly or inherently, a process for
producing (1) “renewable hydrocarbons” which meet the requirements of at least
one of ASTM D975, ASTM D910, or ASTM D1655, or (2) a blend of at least 10%
of the product renewable hydrocarbons produced by the claimed process which
meet the requirements of at least one of ASTM D975, ASTM D910, or ASTM
D1655. PO Resp. 4–7. Additionally, Patent Owner argues that the isooctane
produced by D’Amore may not be of sufficient purity to meet the standards of
ASTM D4814, in particular. Id. at 5. According to Patent Owner,
the process of D’Amore may just as readily produce isooctene having
sufficiently high, e.g., isobutene or other low molecular weight alkene
content, whereby after hydrogenation the isooctane produced contains
enough lower molecular weight hydrocarbons such that it fails to
meet, e.g., (i) the maximum vapor pressure standard of ASTM D4814
Table 1. For example, a fuel meeting the requirements of ASTM
D4814 (distillation class AA) can have a maximum vapor pressure of
54 kPa. Isobutane has a vapor pressure of 760 mm Hg (101.325 kPa)
at –11.7ºC. Thus, even the presence of a small amount of, e.g.,
isobutane in the isooctane allegedly provided by the process of
D’Amore could result in a product that itself fails to meet the
requirements of, e.g., ASTM D4814. . . .

Id. at 67 (citing Ex. 1003, 74–76; Ex. 1004, Table 1). Patent Owner concludes
that D’Amore’s failure necessarily and inevitably to produce a product that meets
claim 1 prohibits a finding that D’Amore inherently anticipates claim 1. Id. at 7–8.
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We are unpersuaded by Petitioner’s argument that isooctane produced by the
process disclosed in D’Amore necessarily and inherently meets the specifications
in ASTM D4814 as required in the “whereby” clause of claim 1. Pet. 23; Ex.
1001, 59:52–57. Although we credit the testimony of Dr. Joseph regarding the
characteristics of pure isooctane and the impact of certain impurities on whether
isooctane would meet the criteria set forth in ASTM D4814, we find insufficient
support for Dr. Joseph’s statement that “D’Amore’s process would necessarily
result in the production of isooctane free of lower molecular weight hydrocarbons,
such as isobutane.” Ex. 1040 ¶ 11. Dr. Joseph’s testimony appears to be directed
to the characteristics of pure isooctane (Tr. 7:16–20), however, D’Amore does not
disclose the purity level of the isooctane produced by its process. Ex. 1003 ¶ 76.
Despite the testimony provided by Dr. Joseph, we have insufficient information to
determine how much isooctene is converted in D’Amore to isooctane. Ex. 1030
¶¶ 42–47; Ex. 1040 ¶¶ 10–11. Furthermore, we have insufficient evidence to
determine (1) what low molecular weight hydrocarbons may result from
D’Amore’s process or (2) the level of other low molecular weight hydrocarbons
that may be present. The missing crucial link in Petitioner’s analysis is the
difference between pure isooctane as discussed by Dr. Joseph and the products
possibly produced in D’Amore. Thus, we conclude that Petitioner has not carried
its burden to show that D’Amore’s product is pure isooctane, that the only possible
contaminant is isobutene, that the isobutene is less than 30%, or that D’Amore’s
product has the exact properties as discussed by Dr. Joseph.
Accordingly, we find that Petitioner has not shown by a preponderance of
the evidence that claim 1 is anticipated under 35 U.S.C. § 102(e) by D’Amore.
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c. Dependent Claims
Claims 2–10, 12, 15–18, and 2021 depend from claim 1, and Petitioner
contends that D’Amore discloses embodiments that teach aspects of each
dependent claim. Pet. 24–35; Ex. 1030 ¶¶ 67–87. Patent Owner does not provide
separate contentions regarding additional limitations recited in the dependent
claims. After careful consideration of the language recited in claims 2–10, 12, 15–
17, 19–20, 22, and 23, and the testimony of Dr. Joseph, we are unpersuaded that
D’Amore anticipates these dependent claims for the same reasons discussed with
respect to claim 1.
Accordingly, we find that Petitioner has not shown by a preponderance of
the evidence that claims 2–10, 12, 15–18, and 2021 are anticipated under 35
U.S.C. § 102(e) by D’Amore.
E. Obviousness of Claims 1–10, 12, 15–18, and 20–21 over the
Combination of D’Amore and ASTM D4814
Petitioner argues that the combination of D’Amore, as summarized in the
overview in Section II.D.1 above, and ASTM D4814 renders each of claims 1–10,
12, 15–18, and 20–21 obvious. Pet. 36–42. For reasons that follow, we determine
Petitioner has shown by a preponderance of the evidence that claims 1–10, 12, 15–
18, and 20–21 are unpatentable under 35 U.S.C. § 103(a).
1. Overview of ASTM D4814
ASTM D4814 describes standard specifications for automotive spark-
ignition engine fuel (i.e., automotive fuel or gasoline). Ex. 1014 ¶ 1.3. Such
specifications include the materials and manufacture of automotive fuel, how the
automotive fuel is tested, and the required performance characteristics of such fuel.
Id.
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2. Analysis
a. Independent Claim 1
Petitioner contends D’Amore, as summarized in the overview above,
discloses each limitation of claim 1 of the ’160 patent, except that D’Amore does
not disclose explicitly that its products (e.g., isooctane) meet the requirements of at
least one of ASTM D4814, ASTM D975, ASTM D910, or ASTM D1655, as
recited in claim 1. Pet. 1523. Petitioner further contends that a person of
ordinary skill in the art would have had reason to reach the invention recited in
claim 1 based on the combined teachings of D’Amore and ASTM D4814 (Ex.
1014), which discloses the standards for automotive fuel (i.e., gasoline) within the
fuel industry. Id. at 36–42. According to Petitioner, although D’Amore does not
disclose explicitly renewable isooctane meeting the standards set forth in ASTM
D4184, a person of ordinary skill in the art would have had reason to review and
meet the ASTM specifications when preparing automotive fuel, because the ASTM
standards are used by governmental agencies to regulate the transportation fuel
industry. Pet. 37 (citing Ex. 1030 ¶¶ 92–96). Petitioner reasons that a person of
ordinary skill in the art would have had reason to modify the products of D’Amore
to meet the ASTM D4814 specification in order to have a commercially useful
fuel. Id.
Petitioner asserts that producing a renewable isooctane that meets the
specifications of ASTM D4184 using D’Amore’s process would have been
obvious to a person of ordinary skill in the art and would have required no more
than routine optimization. Id. Petitioner supports this assertion with the first
Declaration of Dr. Joseph, who testifies that the transportation fuel additives
discussed in D’Amore are regulated by the Environmental Protection Agency
(“EPA”) and/or Federal Aviation Administration (“FAA”), which have
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incorporated ASTM standards into their regulations governing approval of
transportation fuel. Ex. 1030 ¶¶ 46–48. Dr. Joseph further testifies that a person of
ordinary skill in the art would understand that in order to be approved for
commercial use as a transportation fuel, a hydrocarbon product would have to meet
the ASTM standards. Id. Dr. Joseph reasons that any alternative mechanism for
bringing the product to market for the fuel industry would require “going through
the lengthy, burdensome, and expensive testing process,” and such process would
render the fuel commercially unviable. Id. Dr. Joseph specifically states a person
of skill in the art reading D’Amore’s disclosure of methods of making renewable
isooctanes for use as a transportation fuel, including gasoline, would have had a
reason to ensure that isooctane met the ASTM D4814 industry standard because
“meeting the requirements of ASTM D4814 is one step in the process of obtaining
EPA approval to sell a gasoline.” Id. ¶ 93. Moreover, Dr. Joseph testifies that
isooctane, a product of D’Amore’s disclosed processes, would meet the standards
set forth in ASTM D4814. Id. ¶¶ 46–65.
Patent Owner contests Petitioner’s position, arguing that ASTM D4814
merely provides a set of metrics to determine whether or not a given composition
meets the limitations of the subject ASTM standard. PO Resp. 8–11. Patent
Owner contends ASTM D4814 does not provide any disclosure or guidance
regarding a process to make a fuel that meets the requirements of ASTM D4814.
Id. at 9. According to Patent Owner, a person of skill in the art would need a
reference detailing the process steps between D’Amore and ASTM D4814 in order
to create a product that would comply with the specification in ASTM D4814,
because such information is not evidently and indisputably within the common
knowledge of those skilled in the art. Id. at 9–10; Tr. 39:1–40:18. Patent Owner
argues that the Declaration of Dr. Joseph (Ex. 1030) cannot support a finding of
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obviousness based on D’Amore and ASTM D4814, because: (1) the testimony is
conclusory; (2) claim rejections must be based on prior art; and (3) rather than
merely relying on the opinion of Dr. Joseph, a reference should be provided to
establish that modifying the process of D’Amore as proposed was obvious. PO
Resp. 910.
We find that D’Amore discloses each of required steps (a)–(f) of claim 1.
First, D’Amore discloses steps (a) and (b) by treating an aqueous stream of
biomass-derived carbohydrates that are fermented with microorganisms to create a
fermentation broth that produces isobutanol (C4H10O, an alcohol). Ex. 1003 ¶¶ 56,
57. Second, D’Amore discloses step (c) by separating the isobutanol-rich phase
dehydrating isobutanol (id. ¶¶ 3, 21) and using an acid catalyst to convert the dry
isobutanol into isolated butene (C4H8, an alkene olefin) (id. ¶¶ 56–57). Lastly,
D’Amore discloses steps (e) and (f) by oligomerizing butene into isooctene (C8H16,
an unsaturated oligomer) (id. ¶¶ 64, 74) and hydrogenating the isooctene to form
isooctane (C8H18, an saturated alkane)(id. ¶ 76). Therefore, we find that D’Amore
discloses the required steps (a)–(f).
Claim 1 further recites “whereby the product of step (f) itself meets the
requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or
ASTM D1655, or a blend of at least 10% of the product of step (f) with a mixture
of hydrocarbons meets the requirements of at least one of ASTM D4814, ASTM
D975, ASTM D910 or ASTM D1655.” Despite Patent Owner’s contentions, we
are persuaded by Petitioner’s arguments and find that a person of ordinary skill in
the art could have combined the teachings of D’Amore and ASTM D4814 to reach
the invention recited in the whereby clause of claim 1, and would have had reason
to do so.
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As discussed above, the level of skill in the art is that of a person with a
doctoral degree in chemistry or related discipline (see supra, Section II.C.), and it
is easier to establish obviousness under a higher level of ordinary skill in the art.
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir.
2012); see also Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323–
24 (Fed. Cir. 2011) (finding that a less sophisticated level of skill generally favors
a determination of nonobviousness, while a higher level of skill favors the reverse).
Given this high level of skill in the art, we credit the testimony of Dr. Joseph that a
person of ordinary skill in the art would have had reason to modify the isooctanes
of D’Amore to meet the ASTM D4814 specification (Ex. 1030 ¶¶ 90–99), and that
such modifications could have been accomplished using routine optimization
techniques that were common in the art (id. ¶ 98). Dr. Joseph cites to multiple
publications providing several examples of well-known properties of isooctane and
techniques to produce a mixture of saturated alkanes and aromatic hydrocarbons
that meets ASTM D4814. Id. ¶¶ 1719, 4445, 9198. Thus, we are persuaded
that a Ph.D. chemist would have knowledge of routine techniques as discussed by
Dr. Joseph and would have had a reasonable expectation that such techniques
would be successful. See, e.g., Randall Mfg. v. Rea, 733 F.3d 1355, 1363 (Fed.
Cir. 2013) (recognizing that combining familiar elements with known functions,
according to known methods, and yielding predictable results likely is obvious).
We are unpersuaded by Patent Owner’s contention that “[p]etitioner
attempts to circumvent the requirement that claims rejections be based on prior art
by relying on Dr. Joseph’s opinions.” PO Resp. 910. Rather, we conclude that
Petitioner relies on the testimony of Dr. Joseph to indicate the knowledge of one of
ordinary skill in the art in order to demonstrate that the teachings of D’Amore, in
view of the teachings ASTM D4814, as understood by one of ordinary skill in the
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art, would have rendered the challenged claims obvious at the time of the
invention. See Ex. 1030 ¶¶ 1719, 4445, 9198.
We also are unpersuaded by Patent Owner’s contentions that:
[i]f the presently claimed process were indeed obvious, and the
knowledge in the art was so readily known and available to one
skilled in the art, Petitioner would not rely on the opinions of Dr.
Joseph, but rather, would simply provide a reference to establish that
modifying the process of D 'Amore as proposed was obvious

(PO Resp.10), because the Supreme Court has cautioned against the overemphasis
on publications and the explicit contents of issued patents during an obviousness
analysis. KSR, 550 U.S. at 415–16. In KSR, the Supreme Court criticized a rigid
approach to determining obviousness based on the disclosures of individual prior
art references, with little recourse to the knowledge, creativity, and common sense
that an ordinarily skilled artisan would have brought to bear when considering
combinations or modifications. Id. at 415–22. Thus, we conclude that a person
with a doctoral degree in chemistry would not need a reference detailing the
process steps between D’Amore and ASTM D4814 in order to create a product that
would comply with the specification in ASTM D4814.
Accordingly, we find Dr. Joseph’s testimony persuasive and hold that
Petitioner has shown by a preponderance of the evidence that claim 1 is
unpatentable under 35 U.S.C. § 103(a) for obviousness in view of the disclosures
of D’Amore and ASTM D4814.
b. Dependent Claims
Claims 2–10, 12, 15–18, and 2021 depend from claim 1, and Petitioner
contends that D’Amore and ASTM D4814 teach or suggest each dependent claim.
Pet. 2442. Patent Owner does not provide separate contentions regarding
additional limitations recited in the dependent claims. PO Resp. 811.
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After careful consideration of the language recited in claims 2–10, 12, 15–
18, and 2021, we are satisfied D’Amore in view of ASTM D4814 teaches or
suggests the elements recited in the dependent claims. See e.g., Ex. 1003 ¶¶ 56,
75, 76 (disclosing dehydrating, oligomerizing, and hydrogenating in the presence
of a catalyst, as recited in claim 2); ¶ 79 (disclosing two steps of claim 2 being
carried out in the same reaction zone, as recited in claim 4); ¶¶ 21, 50, 75
(disclosing dehydrating and oligomerizing, and hydrogenating in the presence of
an acidic catalyst, as recited in claims 57); ¶ 77 (disclosing list of hydrogenation,
as recited in claim 9); ¶ 74 (disclosing C1–C6 alcohol isobutanol converted to
isooctane to be used as a biofuel precursor, as recited in claim 16); ¶ 64 (disclosing
C2–C6 alcohol isobutanol is converted to butene, which is oligomerized to
isooctane and used as a biofuel precursor, as recited in claim 18); and ¶¶ 49, 91
(disclosing dehydration “reaction can be carried out in liquid or vapor phase . . . ,”
with a vapor phase being a gas phase as recited in claim 22).
Accordingly, we find that Petitioner has shown by a preponderance of the
evidence that claims 2–10, 12, 15–18, and 2021 are unpatentable under 35 U.S.C.
§ 102(e) because they would have been obvious in view of D’Amore and ASTM
D4814.
F. Obviousness of Claim 11 over the Combination of D’Amore, Wilke, and
ASTM D4814
1. Overview of Wilke
Wilke discloses a process for producing and recovering alcohols using a
combination of vacuum fermentation and vacuum distillation. Ex. 1006, Abstract.
Wilke further discloses the fermentative production of alcohols below atmospheric
pressure, such that a vapor of aqueous alcohol is removed. Id. at 5:12–17 and
7:67–8:1. Wilke specifically discloses that “[t]he pressure of the fermentation can
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be subatmospheric on the order of about 50 to 500 mm Hg.” Id. at 5:12–17. Wilke
also teaches that removing alcohol during the fermentative process by fermenting
at reduced pressure would benefit the microorganisms by relieving any alcohol
toxicity. Id. at 3:25–28.
2. Analysis
Petitioner contends that claim 11 would have been obvious over the
combination of D’Amore, ASTM D4814, and Wilke. Pet. 48–50. Claim 11
provides as follows:
11. The process of claim 10, wherein said removing comprises
carrying out said fermenting in step (b) below atmospheric pressure,
whereby aqueous isobutanol vapor is removed.

Petitioner refers to D’Amore’s disclosure of a method for producing
isooctane for use as an additive to transportation fuels. Id. ASTM D4814 is relied
upon for defining standard specifications for automotive park-ignition engine fuel
(i.e., gasoline) within the fuel industry. Id. (citing Ex. 1014). Such specifications
include the materials and manufacture of gasoline, how the gasoline is tested, and
the required performance characteristics of such fuel. Ex. 1014.
Petitioner contends that performing fermentation below atmospheric
pressure was known in the art and determining the pressure at which to perform
fermentation would have been a design choice. Pet. 48–49 (citing Ex. 1030 ¶
120123). Petitioner further contends that “fermenting at below atmospheric
pressure would have been a matter of common sense and routine optimization
based on the knowledge of techniques that would have yielded nothing more than
predictable results.” Id. at 49.
Patent Owner states that Wilke does not cure the deficiencies of the
combination of D’Amore and ASTM D4814. PO Resp. 23. Yet, in its Response,
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Patent Owner does not present argument or evidence attempting to distinguish any
other features of claim 11 over the prior art.
Our Scheduling Order in this case cautioned Patent Owner that “any
arguments for patentability not raised in the [Patent Owner Response] will be
deemed waived.” Paper 14, 3. The Board’s Trial Practice Guide, furthermore,
states that the Patent Owner Response “should identify all the involved claims that
are believed to be patentable and state the basis for that belief.” Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Furthermore, as the
Board has stated, our governing statute and Rules “clearly place some onus on the
patent owner, once trial is instituted, to address the material facts raised by the
petition as jeopardizing patentability of the challenged claims.” Johnson Health
Tech Co. Ltd. v. Icon Health & Fitness, Inc., Case IPR2013-00463, slip op. at 12
(PTAB Jan. 29, 2015) (Paper 41). We do not consider any argument not presented
in Patent Owner’s Response.
In our Decision to Institute, we concluded that Petitioner had made a
threshold showing that the combination of taught all the limitations of claim 11,
sufficient for us to conclude that there was a reasonable likelihood that Petitioner
would prevail in showing that the challenged claims were obvious over the
combination of D’Amore, ASTM D4814, and Wilke. Dec. 14–15. The record
contains the same arguments and evidence regarding the merits of this ground as it
did at the time of our Decision to Institute. We must now determine whether the
preponderance of the evidence of record supports a finding that the combination of
D’Amore, ASTM D4814, and Wilke renders claim 11 obvious. 35 U.S.C.
§ 316(e).

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As discussed above, we are persuaded by Petitioner’s arguments and the
supporting testimony of Dr. Joseph. Specifically, as discussed above, we are
persuaded that D’Amore teaches each required of steps (a)–(f), the wherein
clauses, and the whereby clause of claim 1. See supra, Section II.D.2.b. Claim 11
depends directly from claim 1. Based upon review of the evidence of record
summarized above, Petitioner has set forth sufficiently how each element of claim
11 of the ’160 patent is taught or suggested by D’Amore, ASTM D4814, and
Wilke. Furthermore, Petitioner has presented articulated reasoning with rational
underpinning to support the combination of D’Amore, ASTM D4814, and Wilke.
See KSR Int’l Co., 550 U.S. at 418.
Accordingly, we determine that Petitioner has shown by a preponderance of
the evidence that claim 11 is unpatentable under 35 U.S.C. § 103(a) for
obviousness in view of the disclosures of D’Amore, Wilke, and ASTM D4814.
G. Obviousness of Claim 13 over the Combination of D’Amore and ASTM
D975
Petitioner argues that the combination of D’Amore and ASTM D975 renders
claim 13 obvious. Pet. 45–47. In view of the overview of D’Amore provided
above (see supra, Section II.D.1) and for reasons that follow, we determine
Petitioner has shown by a preponderance of the evidence that claim 13 is
unpatentable under 35 U.S.C. § 103(a).
1. Overview of ASTM D975
ASTM D975 describes standard specifications for diesel fuel oils (i.e., diesel
fuel). Ex. 1015. Such specifications include the materials and manufacture of
diesel fuel, how the diesel fuel is tested, and the required performance
characteristics of such fuel. Id.
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2. Analysis
Claim 13 provides as follows:
13. A process of preparing a renewable diesel fuel comprising the
method of claim 1, whereby the product of step (f) itself meets the
requirements of ASTM D975, or a blend of at least 10% of the
product of step (f) with a mixture of hydrocarbons meets the
requirements of ASTM D975.
Petitioner contends that a person of ordinary skill in the art would have had
reason to reach the invention recited in claim 10 based on the combined teachings
of D’Amore, which discloses a method for producing isooctane used in
transportation fuels such as diesel fuel (Ex. 1003 ¶ 20), and ASTM D975, which
discloses the standards for diesel fuel within the fuel industry (Ex. 1015). Pet. 42–
44. According to Petitioner, although D’Amore does not disclose explicitly
renewable isooctane meeting the standards set forth in ASTM D975, a person of
ordinary skill in the art would have had reason to review and meet the ASTM
specifications when preparing diesel fuel, because the ASTM standards are used by
governmental agencies to regulate the transportation fuel industry. Id. (citing Ex.
1030 ¶¶ 97–103). Petitioner reasons that a person of ordinary skill in the art would
have had reason to modify the products of D’Amore to meet the ASTM D975
specification in order to have a commercially useful diesel fuel. Pet. 43–44; Ex.
1030 ¶ 104.
Petitioner further contends that producing a renewable isooctane that meets
the specifications of ASTM D975 using D’Amore’s process would have been
obvious to a person of ordinary skill in the art and would have required no more
than routine optimization. Id. at 43 (citing Ex. 1030 ¶¶ 97–104). Petitioner’s
position is supported by the testimony of Dr. Joseph, who states a person of skill in
the art would have been able to modify D’Amore’s process to produce saturated
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alkanes that meet the ASTM D975 industry standard. Ex. 1030 ¶¶ 102. Dr. Joseph
explains that “[f]or example, isooctaness kinematic viscosity is below that required
in ASTM D975[, but a person of ordinary skill in the art] would have readily been
able to modify D’Amore’s process to increase the kinematic viscosity of the
product by running the oligomerization step further to produce not only dimers, but
also trimers and tetramers in order to ASTM D975’s requirements.” Id. ¶ 102. Dr.
Joseph further testifies that “[s]imilarly, D975 requires a certain cetane number for
diesel fuel[, and a person of ordinary skill in the art] would have known that a fuel
with a high octane number has a low cetane number (and vice versa).” Id. ¶ 101
(citing Ex. 1015, Table 1; Ex. 1021, 8). Dr. Joseph concludes that a person of
ordinary skill in the art would have the knowledge and skill to optimize the
processes disclosed in D’Amore to meet the parameters of ASTM D975. Id. ¶ 103.
Patent Owner contests Petitioner’s position, contending that claim 1 is not
rendered obvious merely by providing D’Amore’s methods and a set of metrics to
determine whether or not a given composition meets the limitations of a subject
ASTM standard. PO Resp. 11–15. Patent Owner also proffers the same arguments
as presented against the combination of D’Amore and ASTM D4814. Id.
We are persuaded by Petitioner’s arguments and the supporting testimony of
Dr. Joseph. Despite Patent Owner’s contentions, we are persuaded by Petitioner’s
arguments and find that a person of ordinary skill in the art could have combined
the teachings of D’Amore and ASTM D975 to reach the invention recited in
dependent claim 10, and would have had reason to do so. As discussed above, the
level of skill in the art is that of a person with a doctoral degree in chemistry or
related discipline (see supra, Section II.C.). Given this high level of skill in the art,
we credit the testimony of Dr. Joseph that a person of ordinary skill in the art
would have had reason to modify the isooctanes of D’Amore to meet the ASTM
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D975 specification (Ex. 1030 ¶¶ 97–104), and that such modifications could have
been accomplished using routine optimization techniques that were common in the
art (id. ¶ 106). Dr. Joseph cites to multiple publications providing several
examples of well-known properties of isooctane and techniques to produce a
mixture of saturated alkanes and aromatic hydrocarbons that meet ASTM D975.
Id. ¶¶ 103–104 (citing Exs. 1019, 1021, 1029, 1037, 1038). Thus, we find that a
Ph.D. chemist would have knowledge of routine techniques as discussed by Dr.
Joseph and would have had a reasonable expectation that such techniques would be
successful. See, e.g., Randall Mfg., 733 F.3d at 1363.
As discussed in detail above (see supra, Section II.D.3.b), we are
unpersuaded by Patent Owner’s contentions regarding Dr. Joseph’s testimony. PO
Resp. 12–14. Rather, we conclude that Petitioner relies on the testimony of Dr.
Joseph to indicate the knowledge of one of ordinary skill in the art in order to
demonstrate that the teachings of D’Amore, in view of the teachings ASTM D975,
as understood by one of ordinary skill in the art, would have rendered the
challenged claims obvious at the time of the invention. See Ex. 1030 ¶¶ 97–104
(citing Exs. 1019, 1021, 1029, 1037, 1038).
Accordingly, we find Dr. Joseph’s testimony persuasive and hold that
Petitioner has shown by a preponderance of the evidence that claim 13 is
unpatentable under 35 U.S.C. § 103(a) for obviousness in view of the disclosures
of D’Amore and ASTM D975.
H. Obviousness of Claim 14 over the Combination of D’Amore and ASTM
D1655
Petitioner contends that claim 14 would have been obvious over the
combination of D’Amore and ASTM D1655. Pet. 50–52. Claim 14 provides as
follows:
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14. A process of preparing a renewable jet fuel comprising the method
of claim 1, whereby the product of step (f) itself meets the
requirements of ASTM D1655, or a blend of at least 10% of the
product of step (f) with a mixture of hydrocarbons meets the
requirements of ASTM D1655.

As in previous grounds, Petitioner refers to D’Amore’s disclosure of a
method for producing isooctane for use as an additive to transportation fuels such
as jet fuel. Id. (citing Ex. 1003 ¶ 20). ASTM D1655 describes standard
specifications for aviation turbine fuels. Ex. 1017. Such specifications include the
materials and manufacture of aviation turbine fuels, how the fuels are tested, and
the performance characteristics of such fuel. Id.
Petitioner contends that a person of ordinary skill in the art would have had
reason to reach the invention recited in claim 14 based on the combined teachings
of D’Amore and ASTM D1655. Pet. 44–46. According to Petitioner, although
D’Amore does not disclose explicitly renewable isooctane meeting the standards
set forth in ASTM D1655, a person of ordinary skill in the art would have had
reason to review and meet the ASTM specifications when preparing jet fuel,
because the ASTM standards are used by governmental agencies, such as the FAA,
to regulate the jet fuel industry. Pet. 44–46 (citing Ex. 1030 ¶¶ 105–110).
Petitioner reasons that a person of ordinary skill in the art would have had reason
to modify the products of D’Amore to meet the ASTM D1655 specification in
order to have an approvable and sellable jet fuel. Id.
Petitioner further contends that producing a renewable isooctane that meets
the specifications of ASTM D1655 using D’Amore’s process would have been
obvious to a person of ordinary skill in the art and would have required no more
than routine optimization. Id. (citing Ex. 1030 ¶¶ 106–109). Petitioner’s position
is supported by the testimony of Dr. Joseph, who states a person of skill in the art
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would have been able to modify D’Amore’s process to produce alkanes that meet
the ASTM D1655 industry standard. Ex. 1030 ¶ 105. Dr. Joseph explains that
“[f]or example [a person of ordinary skill in the art] would have known that if the
specific properties of a reaction product, such as its density, would fail to meet
ASTM D1655’s requirements, then continuing oligomerization to increase the
chain length of the reaction product would increase those properties.” Id. (footnote
omitted). Dr. Joseph concludes that a person of ordinary skill in the art would have
the knowledge and skill to optimize the processes disclosed in D’Amore to meet
the parameters of ASTM D1655. Id. ¶ 107.
Patent Owner contests Petitioner’s position, contending that ASTM D1655
merely provides a set of metrics to determine whether or not a given composition
meets the limitations of the subject ASTM standard, and proffering the same
arguments as present regarding the combination of D’Amore and ASTM D4814.
PO Resp. 15–19.
We are persuaded by Petitioner’s arguments and the supporting testimony of
Dr. Joseph. Specifically, as discussed above, we are persuaded that D’Amore
teaches each of required steps (a)–(f), the wherein clauses, and the whereby clause
of claim 1. See supra, Section II.D.2.b. Claim 14 depends directly from claim 1.
Despite Patent Owner’s contentions, we are persuaded by Petitioner’s arguments
and find that a person of ordinary skill in the art could have combined the
teachings of D’Amore and ASTM D1655 to reach the invention recited in
dependent claim 14, and would have had reason to do so. As discussed above, the
level of skill in the art is that of a person with a doctoral degree in chemistry or
related discipline (see supra, Section II.C.). Given this high level of skill in the art,
we credit the testimony of Dr. Joseph that a person of ordinary skill in the art
would have had reason to modify the isooctanes of D’Amore to meet the ASTM
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D1655 specification (Ex. 1030 ¶¶ 106–109), and that such modifications could
have been accomplished using routine optimization techniques that were common
in the art (id. ¶ 107). Dr. Joseph cites to multiple publications providing several
examples of well-known properties of isooctane and techniques to produce a
mixture of saturated alkanes and aromatic hydrocarbons that meet ASTM D1655.
Id. ¶¶ 107(citing Exs. 1017, 1019, 1023). Thus, we find that a Ph.D. chemist
would have knowledge of routine techniques as discussed by Dr. Joseph and would
have had a reasonable expectation that such techniques would be successful. See,
e.g., Randall Mfg., 733 F.3d at 1363.
As discussed in detail above (see supra, Section II.D.2.b), we are
unpersuaded by Patent Owner’s contentions regarding Dr. Joseph’s testimony. PO
Resp. 16–19. Rather, we conclude that Petitioner relies on the testimony of Dr.
Joseph to indicate the knowledge of one of ordinary skill in the art in order to
demonstrate that the teachings of D’Amore, in view of the teachings ASTM
D1655, as understood by one of ordinary skill in the art, would have rendered the
challenged claims obvious at the time of the invention. See Ex. 1030 ¶¶ 107 (citing
Exs. 1017, 1019, 1023).
Accordingly, we find Dr. Joseph’s testimony persuasive and hold that
Petitioner has shown by a preponderance of the evidence that claim 14 is
unpatentable under 35 U.S.C. § 103(a) for obviousness in view of the disclosures
of D’Amore and ASTM D1655.
I. Obviousness of Claim 19 over the Combination of D’Amore and ASTM
D910
Petitioner contends that claim 19 would have been obvious over the
combination of D’Amore and ASTM D910. Pet. 49–51. Claim 19 provides as
follows:
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19. A process of preparing a renewable aviation gasoline comprising
the method of claim 1, whereby the product of step (f) itself meets the
requirements of ASTM D910, or a blend of at least 10% of the
product of step (f) with a mixture of hydrocarbons meets the
requirements of ASTM D910.

As in previous grounds, Petitioner refers to D’Amore’s disclosure of a
method for producing isooctane for use as an additive to transportation fuels such
as gasoline and jet fuel. Id. (citing Ex. 1003 ¶ 20). ASTM D910 describes
standard specifications for aviation gasolines. Ex. 1016. Such specifications
include the materials and manufacture of aviation turbine fuels, how the fuels are
tested, and the performance characteristics of such fuel. Id.
Petitioner contends that a person of ordinary skill in the art would have had
reason to reach the invention recited in claim 12 based on the combined teachings
of D’Amore and ASTM D910. Pet. 46–49. According to Petitioner, although
D’Amore does not disclose explicitly renewable isooctane meeting the standards
set forth in ASTM D910, a person of ordinary skill in the art would have had
reason to review and meet the ASTM specifications when preparing aviation
gasolines, because the ASTM standards are used by governmental agencies, such
as the FAA, to regulate the aviation fuel industry. Id. (citing Ex. 1030 ¶¶
111115). Petitioner reasons that a person of ordinary skill in the art would have
had reason to modify the products of D’Amore to meet the ASTM D910
specification in order to have an approvable and sellable jet fuel. Id.
Petitioner further contends that producing a renewable isooctane that meets
the specifications of ASTM D910 using D’Amore’s process would have been
obvious to a person of ordinary skill in the art and would have required no more
than routine optimization. Id. at 49–50 (citing Ex. 1030 ¶¶ 111115). Petitioner’s
position is supported by the testimony of Dr. Joseph, who states a person of skill in
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the art would have been able to modify D’Amore’s process to produce saturated
alkanes that meet the ASTM D9 10 industry standard. Ex. 1030 ¶¶ 111115. Dr.
Joseph explains that, for example, a person of ordinary skill in the art “would have
looked to isooctane’s physical properties, such as vapor pressure, and compared
those to the ASTM D910’s requirements.” Id. ¶ 113. Dr. Joseph then states that
“[t]o increase the vapor pressure, a [person of ordinary skill in the art] could have
optimized D’Amore’s process by blending lighter weight alkanes, such as
isobutanes to meet the vapor pressure requirement.” Id. Dr. Joseph concludes that
a person of ordinary skill in the art would have the knowledge and skill to optimize
the processes disclosed in D’Amore to meet the parameters of ASTM D910. Id. ¶¶
112–115.
Patent Owner contests Petitioner’s position, contending that ASTM D910
merely provides a set of metrics to determine whether or not a given composition
meets the limitations of the subject ASTM standard, and proffering the same
arguments as presented regarding the combination of D’Amore and ASTM D4814.
PO Resp. 20–23.
We are persuaded by Petitioner’s arguments and the supporting testimony of
Dr. Joseph. Specifically, as discussed above, we find that D’Amore teaches each
of required steps (a)–(f), the wherein clauses, and the whereby clause of claim 1.
See supra, Section II.D.2.b. Claim 21 depends directly from claim 1. Despite
Patent Owner’s contentions, we are persuaded by Petitioner’s arguments and find
that a person of ordinary skill in the art could have combined the teachings of
D’Amore and ASTM D910 to reach the invention recited in dependent claim 21,
and would have had reason to do so. As discussed above, the level of skill in the
art is that of a person with a doctoral degree in chemistry or related discipline (see
supra, Section II.C.). Given this high level of skill in the art, we credit the
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testimony of Dr. Joseph that a person of ordinary skill in the art would have had
reason to modify the isooctanes of D’Amore to meet the ASTM D910 specification
(Ex. 1030 ¶¶ 111–115), and that such modifications could have been accomplished
using routine optimization techniques that were common in the art (id. ¶ 113).
Thus, we find that a Ph.D. chemist would have knowledge of routine techniques as
discussed by Dr. Joseph and would have had a reasonable expectation that such
techniques would be successful. See, e.g., Randall Mfg., 733 F.3d at 1363.
As discussed in detail above (see supra, Section II.D.2.b), we are
unpersuaded by Patent Owner’s contentions regarding Dr. Joseph’s testimony. PO
Resp. 22–23. Rather, we conclude that Petitioner relies on the testimony of Dr.
Joseph to indicate the knowledge of one of ordinary skill in the art in order to
demonstrate that the teachings of D’Amore, in view of the teachings ASTM D910,
as understood by one of ordinary skill in the art, would have rendered the
challenged claims obvious at the time of the invention. Ex. 1030 ¶¶ 113 (citing Ex.
1019).
Accordingly, we find Dr. Joseph’s testimony persuasive and hold that
Petitioner has shown by a preponderance of the evidence that claim 19 is
unpatentable under 35 U.S.C. § 103(a) for obviousness in view of the disclosures
of D’Amore and ASTM D910.

III. CONCLUSION
We conclude Petitioner has shown the following by a preponderance of the
evidence:
1. Unpatentability of claims 1–10, 12, 15–18, and 2021 under
35 U.S.C. § 103(a) for obviousness over D’Amore and ASTM D4814;
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Patent 8,378,160 B2

33

2. Unpatentability of claim 11, under 35 U.S.C. § 103(a) for obviousness
over D’Amore, Wilke, and ASTM D4814;
3. Unpatentability of claim 13, under 35 U.S.C. § 103(a) for obviousness
over D’Amore and ASTM D975;
4. Unpatentability of claim 14 under 35 U.S.C. § 103(a) for obviousness
over D’Amore and ASTM D1655; and
5. Unpatentability of claim 19 under 35 U.S.C. § 103(a) for obviousness
over D’Amore and ASTM D910.
IV. ORDER
For the reasons given, it is
ORDERED that claims 1–21 of the ’160 patent are unpatentable;
FURTHER ORDERED that because this is a Final Written Decision, parties
to the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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Patent 8,378,160 B2

34

PETITIONER:
Deborah A. Sterling
Peter A. Jackman
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
dsterlin-PTAB@skgf.com
pjackman-PTAB@skgf.com

PATENT OWNER:

Thomas Blinka
William Brow
COOLEY LLP
tblinka@cooley.com
wbrow@cooley.com

Brett Lund
GEVO, INC
blund@gevo.com