ECODUNA AG

Patent Trials and Appeals Board

Jul 13, 2021

2020005261 (P.T.A.B. Jul. 13, 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.
15/314,674 11/29/2016 Franz EMMINGER 06430009US 4794
62008 7590 07/13/2021
MAIER & MAIER, PLLC
345 SOUTH PATRICK STREET
ALEXANDRIA, VA 22314
EXAMINER
PYLA, PAUL D
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
07/13/2021 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):
docket@maierandmaier.com
maierandmaier_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte FRANZ EMMINGER
__________

Appeal 2020-005261
Application 15/314,674
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
method of culturing phototropic microorganisms. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

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 Ecoduna AG
(see Appeal Br. 3). We refer to the Specification of Nov. 29, 2016
(“Spec.”); Non-Final Action of May 28, 2019 (“Non-Final Act.”); Appeal
Brief of Nov. 26, 2019 (“Appeal Br.”); and Examiner’s Answer of Mar. 19,
2020 (“Ans.”).
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Statement of the Case
Background
“The invention relates to a method for a photochemical process, such
as a photocatalytic and/or photosynthetic process, in particular for the
culture and production or the hydroculture of, preferably phototropic,
microorganisms” (Spec. 1). The Specification further teaches “wherein a
reaction medium, for instance, an aqueous solution or a suspension of
microorganisms and nutrient solution, is conducted in a meandering manner
in a reactor element which is made of at least two upright and connected
pipes or chambers” (id.).
The Claims
Claims 16–34 are on appeal. Independent claim 16 is representative
and reads as follows:
16. A method of culturing phototropic microorganisms in a
reaction medium in a bioreactor, wherein the bioreactor
comprises at least one reactor element, wherein the reactor
element comprises an inlet for the reaction medium from
outside of the reactor element, an outlet for the reaction
medium to outside of the reactor element, and at least two pipes
or chambers for the reaction medium, wherein the at least two
pipes or chambers are oriented upright, parallel and fluidly
connected to each other, and wherein a first pipe or chamber of
the at least two pipes or chambers has the inlet and a second
pipe or chamber of the at least two pipes or chambers has the
outlet, and wherein the inlet and the outlet are arranged on or
close to a lower face of the reactor element, said method
comprising:
conducting the reaction medium containing the
phototrophic microorganisms in an up and down meandering
manner through the at least two upright and parallel pipes or
chambers, such that one pipe or chamber has a reaction medium
flow against the direction of gravity and with a first fill level,
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and an adjacent other pipe or chamber has a reaction medium
flow in the direction of gravity and with a second fill level that
is the same as the first fill level, wherein the reaction medium
flows occur one after the other in the meandering manner
through the at least two pipes or chambers and such that an
entirety of an inner surface of the inlet and an entirety of an
inner surface of the outlet come into contact with the reaction
medium during said conducting;
exposing, during the conducting, at least a portion of the
phototrophic microorganisms to an amount of light sufficient
for growth of the portion of the phototrophic microorganisms;
and
introducing, into the reaction medium during the
conducting, at least one of a liquid additive and a gaseous
additive at or close to a lower face of the reactor element and
into lower ends of each of the first and second pipes or
chambers,
wherein, during the introducing, the liquid or gaseous additive
is:
introduced into the first pipe or chamber at a location
adjacent to the inlet and flows in a same upward flow direction
as the reaction medium from a bottom of the first pipe or
chamber to the first fill level; and
introduced into the second pipe or chamber at a location
adjacent to the outlet and flows in an upward flow direction
while the reaction medium flows from the second fill level
toward a bottom of the second pipe or chamber.

The Issue
The Examiner rejected claims 16–34 under 35 U.S.C. § 103(a) as
obvious over Van De Ven (WO 2009/051478 A2; pub. Apr. 23, 2009) and
Cathcart (US 2011/0027875 A1; pub. Feb. 3, 2011) (Non-Final Act. 3–25).
The Examiner finds “Van De Ven teaches a method of culturing in a
photobioreactor a reaction medium containing phototrophic organisms (e.g.,
microalgae), where a mixture of a liquid and phototropic organisms have
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been introduced into a reactor component comprising one or more tubes that
are transparent to allow light” (Non-Final Act. 3). The Examiner further
finds Van De Ven teaches “an inlet, connected to the reactor component, for
the introduction of a liquid and phototropic organisms at the lower surface of
the bioreactor, a cleaning system, a number of fluidly connected elongated
transparent that can be vertical tubes (i.e., upright tubes in parallel) that are
arranged in a meandering pattern, and an outlet” (id. at 4).
The Examiner states “Van De Ven does not explicitly teach that the
bioreactor has bioreactor tubes in the vertical position, the inlet is arranged
on the lower surface of the first tube of the bioreactor, while the outlet is
arranged on the lower surface of the second vertical tube of the bioreactor”
(Non-Final Act. 8).
The Examiner finds “Cathcart teaches a photobioreactor for growing
microalgae where there are vertical parallel transparent columns (i.e.,
multiple up and down vertical parallel columns) connected in a serpentine
fashion” (Non-Final Act. 8). The Examiner finds it obvious
to utilize the bioreactor tubes within Van De Ven in the vertical
position as taught in Cathcart since Van De Ven suggests such a
structure, while Cathcart further teaches that such a set up (i.e.,
photobioreactors that have vertical parallel transparent columns
(i.e., multiple up and down vertical parallel columns) connected
in serpentine fashion) was well known in the art.
(id. at 11).
Appellant contends Van De Ven “does not explicitly teach a reactor
with tubes that are arranged in a vertical orientation while having an inlet
and an outlet on the lower end of the bioreactor” (Appeal Br. 10). Appellant
also contends Van De Ven “fails to teach or suggest using a same fill level
for the reaction medium between adjacent pipes of a vertically arranged
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bioreactor, much less, one with an inlet and an outlet on the lower end of the
bioreactor” (id. at 11; underlining omitted).
Appellant contends “CATHCART, while shown vertically arranged,
use different fill levels for the medium. Indeed, this is most clearly seen in
Fig. 5 which shows different fill levels 24 and 8” (Appeal Br. 12;
underlining omitted). Appellant also contends “CATHCART specifically
teaches an inlet 22 and an outlet 25 which are located at an upper end of the
bioreactor rather than at a lower end of the bioreactor, as recited in claim 16”
(id. at 13; underlining omitted).
The issues with respect to this rejection are: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Van De Ven
and Cathcart suggest a bioreactor culture method for phototropic organisms
with vertical pipes where introduction of gas or media occurs at the lower
end of the pipes and where adjacent pipes have the same fill level?
Findings of Fact
1. Van De Ven teaches a “photobioreactor for the production of
phototropic organisms, especially (micro)algae” which is composed of “a
reactor component in which a mixture of a liquid and some phototropic
organisms has been or is to be introduced” (Van De Ven 3:21–24).
2. Van de Ven teaches “the reactor component comprises one or
more tubes, whose walls are at least partly transparent to allow light
especially daylight to enter the reactor component in order to enable the
organisms there to carry out their photosynthesis” (Van De Ven 3:24–26).
3. Van De Ven teaches the reactor component comprises “an inlet,
connected to the reactor component, for the introduction of a liquid and/or
phototropic organisms; [] an outlet, connected to the reactor component, for
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the removal of the mixture of the liquid and the phototropic organisms”
(Van De Ven 3:28–31).
4. Figure 1 of Van De Ven is reproduced below:

Figure 1 depicts a bioreactor with “a number [of] elongated tubes 4, which
are essentially transparent in order to allow daylight to pass through to the
reactor component 2” (Van De Ven 8:21–22).
5. Van De Ven teaches that in “order to minimize the base area
needed for the tubes, they are arranged in a meandering pattern. . . . The
tubes 4 are arranged horizontally in [Figure 1], but different orientations,
such as vertical or oblique arrangements, are equally possible for them”
(Van De Ven 8:23–28).
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6. Van De Ven teaches
sensors are connected to an electronic control unit 12, which
uses the resulting sensor values to determine whether the algae
in the feed barrel 8 need any extra nutrients and/or carbon
dioxide in order to achieve a better algal growth. If extra
nutrients and/or carbon dioxide are needed, the control unit 12
actuates one or more of the pumps 15-17. In the embodiment
illustrated [in Figure 1], there are three pumps, namely a pump
15 for regulating the acidity in the barrel 8, a pump 16 for
regulating the amount of nutrients in the mixture, and a harvest
pump 17 with which the algae are harvested.
(Van De Ven 9:14–21).
7. Van De Ven teaches “the number of pumps can vary in practice
in order to be able to introduce either more or fewer different nutrients
and/or gases and so promote the growth of the algae” (Van De Ven 9:21–
23).
8. Van De Ven teaches the “flow of the liquid/alga mixture is
regulated with the aid of the liquid pump 9, which is connected to one of the
pipes 10. The liquid pump 9 can also be actuated by the control unit 12. In
normal operation, the mixture is in most cases pumped in just one direction”
(Van De Ven 9:29–32).
9. Van De Ven teaches “[g]rowing algae make use of light and
specific nutrients, mainly carbon dioxide, soluble nitrogen compounds and
phosphate. Daylight is generally used in practice as the necessary light, but
artificial light can be used as an alternative to daylight or in addition to it”
(Van De Ven 7:27–30).
10. Cathcart teaches:
Closed photobioreactors may be used to grow algae
. . . . By being closed systems, rather than an open pond or
pool, undesired material and organisms can be minimized more
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effectively. In closed systems culture parameters such as pH,
nutrient levels, temperature, CO2, light, etc can be controlled
thus allowing for precise culture conditions.
(Cathcart ¶ 4).
11. Figure 1 of Cathcart is reproduced below:

Figure 1 depicts “an array of adjacent, parallel vertical columns. They are
alternating ‘up’ columns 1 and ‘down’ columns 3. The top of each up
column is connected by an upper U-coupling 2 to the next down column”
(Cathcart ¶ 29). Figure 1 shows “[a]nother port is the media/nutrient port
21. The third port is a gas input port 23 on the gas manifold 6. These, as
well as the output port for harvesting 7 have valves 20 25 26 27 for
controlling their use” (Cathcart ¶ 32).
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12. Cathcart teaches “[v]ertical systems have an advantage in being
able to use an upward flow of rising bubbles to accomplish a relatively
gentle (compared to a pump) but turbulent mixing” (Cathcart ¶ 9).
13. Cathcart teaches “[i]nput and output ports can have many
various [sic, variations] know[n] to those skilled in the art” (Cathcart ¶ 91).
14. Cathcart teaches
In a vertical serpentine bioreactor partially filled with a
flow-able, pourable media these actions occur (in no specific
time ordering)
. . . i. Gas bubbles rise up from a diffuser into one or more
columns. The intensity, volume or rate of bubble is such as to
raise the fluid level from not completely full to overflowing
those columns into adjacent columns;
. . . iv. Optionally the fluid from the last column in the
serpentine sequence is introduced into the first column in the
serpentine constituting recirculation.
(Cathcart ¶¶ 53–54, 57).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
We agree with the Examiner that Van De Ven clearly discloses that
the tubes can be placed in a vertical orientation, teaching “different
orientations, such as vertical . . . are equally possible” (FF 5). And we also
agree that while Van De Ven does not teach particular locations for the inlet
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and outlets when in a vertical orientation, Cathcart does disclose an outlet
port 7 that is on the lower face of the reactor (FF 11). Cathcart further
teaches that “[i]nput and output ports can have many various [sic variations]
know[n] to those skilled in the art” (FF 13). Thus, we agree with the
Examiner that the ordinary artisan would have recognized that the location
of the inlet and outlet ports is a matter of routine optimization, and they can
be placed, like outlet port 7 in Cathcart, on or close to a lower face of the
reactor element (see FF 11).
However, the Examiner provides no teaching in either Van De Ven or
Cathcart that suggests the requirement for adjacent pipes and a first pipe
“with a first fill level, and an adjacent other pipe or chamber has a reaction
medium flow in the direction of gravity and with a second fill level that is
the same as the first fill level” (Claim 16; cf. Claims 24 and 25 “a second fill
level that is the same as the first fill level”). The only evidence of record in
Cathcart, Figures 1 and 5, reasonably show that the fill levels are not the
same as required by the claims (FF 11; cf. Appeal Br. 12).
While a teaching in the prior art is preferred for establishing
disclosure, we do acknowledge that the Examiner may rely upon logic and
sound scientific principle (see MPEP § 2144.02 (9th Ed., Rev. 10.2019, June
2020)) or other legal reasoning (see MPEP § 2144.04). The Examiner
reasons that
it would have been within the purview of one of ordinary skill
in the art to utilize sensors taught in Van De Ven in
coordination with the control unit and pumps to detect and
maintain reaction medium levels at predetermined levels for
proper health and growth of the culture within the reactor.
Additionally, in view of such teachings of Van De Ven, the
controlling unit in conjunction with the nutrient media pumps
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would provide and maintain a medium fill level within the
vertical bioreactor tubes that would be the same fill level within
the tubes. . . . This fill level is assured since Van De Ven
teaches that the control unit in conjunction with liquid pumps
will add media to pass the liquid through the tubes where the
flow is regulated in the system.
(Ans. 23–24).
We find the Examiner’s logic unpersuasive because Cathcart
evidences that a vertical system need not have identical fill levels (FF 11).
Thus, the Examiner’s reliance on Van De Ven is misplaced because it is not
inherent or necessary that fill levels will be identical simply based on the use
of liquid pumps. “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999; emphasis omitted).
While we recognize that it would have been technically possible for
artisans using Van De Ven or Cathcart, alone or in combination, to make the
fill levels identical, the Examiner does not provide any persuasive reasoning
for using such identical fill levels. “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR, 550 U.S. 398 at 418.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s conclusion that Van De Ven and Cathcart teach or suggest a
bioreactor with “a second fill level that is the same as the first fill level.”

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16–34 103(a) Van De Ven,
Cathcart
16–34

REVERSED