CELLULOSE SCIENCES INTERNATIONAL, INC.

Patent Trials and Appeals Board

Oct 1, 2021

2021004632 (P.T.A.B. Oct. 1, 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.
15/337,302 10/28/2016 Rajai H. Atalla 024470-9008-US01 8653
23510 7590 10/01/2021
MICHAEL BEST & FRIEDRICH LLP (Mad)
790 N WATER ST
SUITE 2500
Milwaukee, WI 53202
EXAMINER
WHITE, EVERETT
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
madipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAJAI H. ATALLA and ROWAN S. ATALLA

Appeal 2021-004632
Application 15/337,302
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 1–3, 5–11, 12, 27, and 28 under
35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and set forth a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cellulose
Sciences International (CSI). Appeal Br. 3.
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STATEMENT OF THE CASE
Claims 1–3, 5–11, 12, 27, and 28 stand rejected by the Examiner in
the Final Office Action under 35 U.S.C. 103 as obvious in view of Atalla
(US Publication No. 2014/0220228 A1, published Aug. 7, 2014) (“Atalla”)
and Schneider et al. (US Publication No. 2004/0102625 A1, published May
27, 2004) (“Schneider”). Final Act. 5; Ans. 4.2
Claim 1, the only independent claim on appeal, is reproduced below:
1. A method of treating and stabilizing a cellulosic
material, comprising
a) contacting a cellulosic material with a treatment
solution of an alkali in an alcohol/water co-solvent to yield (i) a
nano-deaggregated cellulose and (ii) a post-treatment solution
which contains dissolved phytochemicals; and then
b) treating the nano-deaggregated cellulose and the post-
treatment solution with an acid to reduce pH to yield a
stabilized nano-deaggregated cellulose and a neutralized post-
treatment solution, the pH being reduced to a level such that the
stabilized nano-deaggregated cellulose is not mercerized upon
exposure to water.
REJECTION
Step (a) of claim 1 recites “contacting a cellulosic material with a
treatment solution of an alkali in an alcohol/water co-solvent to yield (i) a
nano-deaggregated cellulose and (ii) a post-treatment solution which

2 Claims 13–16 were rejected in the Final Office Action, but in the Answer,
the Examiner withdrew the rejection of them and stated they were in
condition for allowance. Ans. 6. In addition, there was a rejection under
35 U.S.C. § 112 in the Final Office Action, but it was not repeated in the
Answer. Consequently, we have not addressed the § 112 rejection and
consider it withdrawn. Appellant stated that 1–16, 25, 28, and 30 were
rejected by the Examiner as obvious, but these claim numbers do not
correspond to the claim numbers listed as rejected in the Final Office Action
and Answer.
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contains dissolved phytochemicals.” The Examiner found that Atalla
describes this step, citing paragraphs 54, 78, and Example 1 (beginning at
paragraph 89). Final Act. 6. For example paragraph 78 of Atalla discloses:
At step 202, the cellulosic material is subjected to a
pretreatment step in accordance with embodiments described
herein, e.g., a treatment solution of alkali in a co-solvent system
201 of water and a second solvent, such as an alcohol, e.g.,
ethanol, or another water-miscible solvent, to deaggregate the
cellulose.
Example 1 of Atalla further discloses treating corn stover, a
“cellulosic material,” with potassium hydroxide, an alkali, and the same
solvent recited in step a) of ethanol and water:
The solution prepared for treatment of the com stover consisted
of a 1.5 N solution of potassium hydroxide (KOH) in a mixture
of ethanol (CH3CH2OH) and water that was 75% ethanol by
volume.
Atalla ¶ 91.
The Examiner also found step b) of “treating the nano-deaggregated
cellulose and the post-treatment solution with an acid to reduce pH to yield a
stabilized nano-deaggregated cellulose and a neutralized post-treatment
solution” is described by Atalla. Specifically, the Examiner referred to
paragraphs 94 and 100 of Atalla, which the Examiner found describes
neutralizing the corn stover with acid. Final Act. 7–8. The Examiner also
cited Example 2 of Atalla of treating samples C and D of “raw bagasse” with
acetic acid. Id. at 8.
The Examiner further cited Schneider as describing carbonic acid, but
makes this statement only with respect to claim 3. Final Act. 6. Claim 3
depends from claim 1, and further recites “wherein the acid is carbonic acid
formed by dissolving/reacting carbon dioxide (CO2) in/with post-treatment
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solution.” The Examiner stated it would have been obvious to one of
ordinary skill in that to substitute carbonic acid as described in Schneider for
the acetic acid of Atalla. Id. at 7.
Appellant argues that “method of claim 1 utilizes an acid to stabilize
nano-deaggregated cellulose, while Atalla ’228 utilizes a decantation
washing method with washes of co-solvent followed by water washes.”
Appeal Br. 7. Appellant also states that “[n]owhere does Atalla ’228 add any
acid or even suggest or hint at adding acid to the combined nano-
deaggregated cellulose and post-treatment solution.” Id. at 10.

CLAIM INTERPRETATION
We begin with interpreting claim 1. The first step of the claim
comprises contacting a cellulose material with a treatment solution of “of an
alkali in an alcohol/water co-solvent” to yield “(i) a nano-deaggregated
cellulose and (ii) a post-treatment solution which contains dissolved
phytochemicals.” According to the Specification, the alkali extracts
phytochemical from the cellulose. Spec. 10:2–13. We interpret the “post-
treatment solution” to be the treatment solution comprising the “alkali in an
alcohol/water co-solvent” and the phytochemicals extracted from the
cellulose. After the alkali extraction step is performed, (i) the nano-
deaggregated cellulose and (ii) the post-treatment solution are treated with
acid “to reduce pH to yield a stabilized nano-deaggregated cellulose and a
neutralized post-treatment solution.”
Claim 1 does not specify whether (i) and (ii) are separated from each
other. Therefore, we interpret the claim to cover acid treatment of (i) and (ii)
of the combination of cellulose and post-treatment solution, or alternatively,
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acid treatment of (i) and (ii) separately when (i) and (ii) have been separated
from each other prior to the acid treatment.

ATALLA
Appellant is correct that Atalla, throughout its disclosure, describes
separating the cellulose and post-treatment solution after alkali treatment,
and then washing the cellulose (also called the “bagasse”) to remove the
remaining alkali. Atalla ¶¶ 15, 74. See Appeal Br. 8.
The Examiner found, however, that Atalla describes in Example 1,
that “the first water wash was neutralized with acetic acid, resulting in
precipitation of some solubilized material.” Atalla ¶ 100. The Examiner
stated that the water washes of the cellulose “can comprise acetic acid,” and
that these water washes contacted the cellulose, and therefore the Examiner
found that Atalla describes treating (i) the cellulose and (ii) post-treatment
solution with acid as required by the claim. Ans. 6.
The Examiner’s finding is not supported by a preponderance of the
evidence. Atalla describes adding the acid to the “first water wash” to
precipitate the solubilized material and analyze the precipitated material by
“Raman spectroscopy.” Atalla ¶ 100. The first water wash is obtained after
removing the solvent, washing the cellulose sample with water, and
decanting the water (“After decanting the solvent the last time, the sample
was washed with water, decanted, and refilled with water.”). Id. It would
make little sense, as argued by Appellant, to precipitate the extracted
material with acid while in contact with the cellulose, as found by the
Examiner, because that would add the alkali-extracted material back to the
cellulose and it could not be determined what material was extracted during
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the alkali treatment step. See Appeal Br. 12. The extracted material would be
put back into the cellulose slurry by acid precipitation and it would therefore
contain the extracted material and the non-extracted material which
remained with the cellulose. For this reason, the “first water wash” would be
understood by one of ordinary skill in the art to be the water obtained after
the washing and decantation of the cellulose and not the water before it is
applied to the corn cellulose, Consequently, the Examiner erred in finding
that the neutralization step in ¶ 100 of Atalla meets step b) of claim 1 in
which the (ii) post-treatment solution with phytochemicals is treated with
acid.

Claims 30, 2, and 5
Appellant provided separate arguments for claims 30, 2, and 5.
Claim 30 depends from claim 1, and recites “further comprising at
step (b), precipitating the alkali as an alkali salt.”
Claim 2, depend depends from claim 30, and further recites
c) separating the nano-deaggregated cellulose and precipitated
alkali salt from the neutralized post-treatment solution, and
d) separating the alkali salt from the nano-deaggregated
cellulose.

Claim 5, which depends from claims 28, 2, and 30, further recites
“comprising treating the alkali salt to recover the alkali and recycling the
recovered alkali to form treatment solution.
Although Appellant argued claim 30, it was not rejected in the Final
Office Action or Answer as obvious. It is unclear to us how claims 2 and 5,
which depend from claim 30 found not to be obvious over the cited prior art,
could still be determined to be obvious.
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With respect to claims 2 and 5, the Examiner did not address the
specific limitation recited in the claims in the Final Office Action or in the
Answer. Consequently, we reverse the obviousness rejection of claims 2 and
5.
Summary
The rejection of claims 1–3, 5-11, 12, 27 and 28 based on Atalla and
Schneider is reversed.

NEW GROUNDS OF REJECTION
Anticipation
Atalla describes treating the cellulose material with “an alkali in an
alcohol/water co-solvent” as required by step a) of the claim 1. Atalla ¶ 91
(“The solution prepared for treatment of the corn stover [“cellulosic
material” of rejected claim 1] consisted of a 1.5 N solution of potassium
hydroxide (KOH) [alkali] in a mixture of ethanol (CH3CH2OH) and water
that was 75% ethanol by volume [alcohol/water co-solvent of claim 1]”; ¶ 93
(“The experimental sample had 45 mL of KOH treatment solution added.”).
Atalla, next, describes removing the solvent comprising the alkali
(KOH) and alcohol (ethanol). Atalla ¶ 94 (“The solvent was then
centrifuged, decanted over filter paper and the process repeated two times.”).
The “solvent” corresponds to the claimed post-treatment solution comprising
the alkali in the alcohol/eater co-solvent. After the solvent is removed, Atalla
discloses that “the sample was washed with water, decanted, and refilled
with water. Atalla ¶ 94.
Atalla further describes in Example 1 isolating the “biomass”
extracted by the alkali/alcohol/treatment of the cellulose and the “biomass”
from the subsequent water washes. Atalla ¶ 99 (“In the experiment wherein
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it was shown that 27% of the sample was removed during the treatment, the
biomass matter extracted in the treatment and the wash was isolated. In the
first step toward isolating this fraction the solids were precipitated by
neutralization of the solutions.”). These fractions of Atalla represent the
claimed ii) the post-treatment solution.
The isolation of the biomass is accomplished by “neutralization.” Id.
Atalla does not specifically describe the “neutralization” in ¶ 99 but in ¶ 100
(cited by the Examiner) in the same Example 1, Atalla discloses a water
wash being “neutralized with acetic acid, resulting in precipitation of some
solubilized material.” Consequently, one of ordinary skill in the art would
reasonably understand that the fraction comprising the post-treatment
solution is treated with acetic acid in ¶ 99 of Atalla, meeting the part of step
b) of claim 1 in which the (ii) post-treatment solution with phytochemicals is
treated with acid.
Atalla also describes, in the same example, adding phosphoric acid to
the cellulose after the alkali/alcohol solvent treatment and water wash. Atalla
94.3 The addition of acid to the cellulose meets step (b) of claim 1 of
“treating the nano-deaggregated cellulose and the post-treatment solution
with an acid.” Dr. Atalla, in the declarations4 provided by Appellant, did not
address this disclosure in the Atalla publication.

3 “The solvent was then centrifuged, decanted over filter paper and the
process repeated two times. After decanting the solvent the last time, the
sample was washed with water, decanted, and refilled with water. Using a
pH meter, 85% phosphoric acid was added gradually to the sample until the
pH of the fluid was 5.23.”
4 Declaration under 37 C.F.R. § 1.132 of Rajai H. Atalla (dated Dec. 10,
2018); Declaration under 37 C.F.R. § 1.132 of Rajai H. Atalla (dated Aug.
15, 2019).
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With respect to the requirement of claim 1 that the acid treatment
yields “a stabilized nano-deaggregated cellulose and a neutralized post-
treatment solution, the pH being reduced to a level such that the stabilized
nano-deaggregated cellulose is not mercerized upon exposure to water,”
because acid is contacted with the cellulose in the same way as in claim 1,
step (b), there is reasonable basis to believe it would be stabilized and have
the same properties as required by the claim. The burden therefore properly
is shifted to Appellant to disprove this rationale. In re Chudik, 674 Fed.
Appx. 1011, 1015 (Fed. Cir. 2017) (“[I]f it is established that an examiner
has reason to believe that a functional limitation is taught in the single prior
art reference, the burden shifts to the applicant to disprove the examiner’s
belief. An examiner’s belief, however, must be tethered to or grounded in
some rationale so as to establish a prima facie case of anticipation.”); In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (when inherency is the basis of a
rejection, the Examiner must have a “sound basis” for believing that a
process carried out in the prior art produces the same product as claimed).
Further, as held in In re Best, 562 F.2d 1252 (CCPA 1977):
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Id. at 1255 (footnote omitted) (citation omitted).
Appellant argued that claim requires the acid to be added to the
“combined” (i) and (ii), but did not identify language in the claim which
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supports this interpretation. Appeal Br. 10. As explained above, the claim
includes adding the acid to each of (i) and (ii), separately. Appellant’s
interpretation is not the broadest reasonable interpretation of the claim.
For the foregoing reasons, pursuant to 37 C.F.R. § 41.50(b), we set
forth a new ground of rejection of claim 1 under 35 U.S.C. § 102(a)(1) as
anticipated by Atalla. As the Board’s function is primarily one of review
and not search, we leave to the Examiner the determination of whether this
rejection should be applied to address any of the other claims.

Obviousness
Example 2 of Atalla describes treating the cellulose “bagasse”
(cellulose material) of samples A, B, C, and D with “a solution of 1.5 molar
sodium hydroxide in a co-solvent mixture of 75% ethanol and 25% water”
(Atalla ¶ 111), as in step a) of claim 1. After centrifuging and decanting the
ethanol/water, and repeating the solvent extraction several times (Atalla
¶112), Atalla discloses filling the tubes with water and decanting for a total
of three times (Atalla ¶ 113). After decanting the wash water, Atalla
discloses that “samples C and D had acetic acid dropped in until the pH
reached 5.22 and 5.15 respectively” (id.). The claim requires the acid to be
added to both the “cellulose and the “post-treatment solution.” However,
Atalla only discloses adding acid to C and D after the sample have been
washed three times. The acid is therefore added only to the cellulose. There
is no disclosure in Example 2 of adding the acid to the decanted wash water.
Consequently, Example 2 as described and relied upon in the Examiner’s
rejection does not describe both steps a) and b) of claim 1, unlike Example 1
discussed above regarding anticipation.
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Example 1 does disclose adding phosphoric acid to the cellulose
rather than acetic acid. Both acetic acid and phosphoric acid are acids and
therefore functionally equivalent to each other, making it obvious to
substitute one for the other. “Express suggestion to substitute one equivalent
for another need not be present to render such substitution obvious.” In re
Fout, 675 F.2d 297, 301 (CCPA 1982); In re Mayne, 104 F.3d 1339, 1340
(Fed. Cir. 1997) (“Because the applicants merely substituted one element
known in the art for a known equivalent, this court affirms [the rejection for
obviousness].”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2008)
(“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result”).
Appellant argues that Atalla in Example 2:
uses acetic acid after the deaggregated cellulose is stabilized to
prepare it for enzymatic hydrolysis. The enzymes for hydrolysis
work best at certain pHs. The acetic acid was not used to
stabilize deaggregated cellulose as the acetic acid was applied
after the deaggregated cellulose was already stabilized by the
decantation washing method previously described and shown in
the above diagram.
Appeal Br. 13.
However, Appellant has not guided us to objective evidence that the
addition of the acetic acid to the cellulose did not result in a stabilized nano-
deaggregated cellulose and a neutralized post-treatment solution, the pH
being reduced to a level such that the stabilized nano-deaggregated cellulose
is not mercerized upon exposure to water” An argument made by counsel in
a brief does not substitute for evidence lacking in the record. Estee Lauder,
Inc. v. L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
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Appellant states it is “very clearly stated in Example 2 that Samples C
and D were stabilized by the washing method of Atalla.” Appeal Br. 14.
Appellant did not direct us to where the “clear” statement was made in
Example 2 nor did Appellant guide us to statement in Dr. Atalla’s
declarations, who had full knowledge of Atalla as being the sole inventor of
it, that the cellulose was stabilized prior to the addition of acid in Example 2,
as well as Example 1 which also adds acid to the cellulose.
For the foregoing reasons, pursuant to 37 C.F.R. § 41.50(b), we set
forth a new ground of rejection of claim 1 under 35 U.S.C. § 103 as obvious
in view of by Atalla. As the Board’s function is primarily one of review and
not search, we leave to the Examiner the determination of whether the cited
prior art or other combination of prior art should be applied to address the
remaining claims.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–3, 5-11,
12, 27, 28

103 Atalla,
Schneider
1–3, 5-
11, 12,
27, 28

1 102(a)(1) Atalla 1
1 103 Atalla 1
Overall
Outcome
1–3, 5-
11, 12,
27, 28
1

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. 41.50(b)