Ex Parte 8101808 et al

Patent Trial and Appeal Board

Aug 30, 2016

95000666 (P.T.A.B. Aug. 30, 2016)

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.
95/000,666 05/07/2012 8101808 GEVO-048/09US
310142-2361
7380
58249 7590 08/30/2016
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
HUANG, EVELYN MEI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BUTAMAX ADVANCED BIOFUELS LLC
Requester and Respondent

v.

GEVO, INC.
Patent Owner and Appellant
____________

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Patent 8,101,808 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, RAE LYNN P. GUEST, and
ZHENYU YANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s final rejection of claims 1–4, 6–10, 12, 14, 15, 17, 19–30, 32,
33, 35, 37–43, 61–66, 69–73, 133–137, and 140–168 in the above-identified
inter partes reexamination of United States Patent 8,101,808 B2. The
Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315
(pre-AIA). We affirm.
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I. STATEMENT OF THE CASE
The patent in dispute in this appeal is US 8,101,808 B2 (“the ’808
patent”) which issued January 24, 2012. A request for inter partes
reexamination of the ’808 patent under 35 U.S.C. §§ 311–318 and 37 C.F.R.
§§ 1.902–1.997 was filed May 7, 2012. The Third Party Requester is
Butamax Advance Biofuels LLC (“Requester”). Requester Respondent Br.
1. The real party in interest for the ’808 patent is GEVO, Inc. (“Patent
Owner”). Appeal Br. 1.
The claimed subject matter of the ’808 patent is directed to methods
of producing a C3-C6 alcohol, such as butanol, by culturing a
microorganism in a fermentation medium in a fermentor and recovering the
alcohol. The method includes separating an alcohol-rich phase from a
water-rich (or alcohol-depleted) phase and conducting the water-rich phase
back to the fermentor.
Claims 1–4, 6–10, 12, 14, 15, 17, 19–30, 32, 33, 35, 37–43, 61–66,
69–73, 133–137, and 140–168 stand finally rejected by the Examiner. Right
of Appeal Notice (“RAN”) (Feb. 4, 2015). Claims 157–168 were added
during this reexamination proceeding. The claims stand rejected by the
Examiner as follows:
1. Ground 113 - Claims 1–4, 6–10, 12, 15, 17, 19–24, 26–30, 33, 35,
37–40, 43, 61–64, 69–73, 133–137, 140–144, and 148–152 under 35 U.S.C.
§ 103(a) (pre-AIA) as obvious in view of English1 and D’Amore II.2

1 English et al., US 4,349,628, issued Sept. 14, 1982 (“English”).
2 D’Amore et al., US 2008/0045754 A1, published Feb. 21, 2008
(“D’Amore II”).
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2. Ground 114 - Claims 2–4 and 145–147 under 35 U.S.C. § 103(a)
(pre-AIA) as obvious in view of English, D’Amore II, and Bramucci.3
3. Ground 115 - Claim 14 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of English, D’Amore II, and Donaldson.4
4. Ground 116 - Claims 30, 32, and 63–66 under 35 U.S.C. § 103(a)
(pre-AIA) as obvious in view of English, D’Amore II, and Tedder.5
5. Ground 117 - Claim 41 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of English, D’Amore II, and Wilke.6
6. Ground 118 - Claim 42 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of English, D’Amore II, and Freier.7
7. Ground 120 - Claims 153–156 under 35 U.S.C. § 103(a) (pre-AIA)
as obvious in view of English, D’Amore II, and Hess.8
8. Ground 121 - Claims 1, 7, 9, 12, 19–24, 26–30, 33, 61–64, 69–73,
133–137, 140, 142, and 148–156 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of Maiorella II,9 Hess, and D’Amore II.

3 Bramucci et al., US 2008/0124774 A1, published May 29, 2008
(“Bramucci”).
4 Donaldson et al., US 2007/0092957 A1, published Apr. 26, 2007
(“Donaldson”).
5 Tedder, US 4,517,298, issued May 14, 1985.
6 Wilke et al., US 4,359,533, issued Nov. 16, 1982 (“Wilke”).
7 Freier et al., Characterization of Clostridium thermocellum JW20, 54
Applied Environmental Microbiology 204–211 (1998) (“Freier”).
8 Hess, BP and DuPont Plan Biobutanol, Chemical and Engineering News 9
(2006).
9 Maiorella et al., Economic Evaluation of Alternative Ethanol Fermentation
Processes, 26 Biotechnology and Bioengineering 1003–1025 (1984)
(“Maiorella II”).
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9. Ground 122 - Claims 2–4 and 145–147 under 35 U.S.C. § 103(a)
(pre-AIA) as obvious in view of Maiorella II, Hess, D’Amore II, and
Bramucci.
10. Ground 123 - Claim 14 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of Maiorella II, Hess, D’Amore II, and Donaldson.
11. Ground 124 - Claims 63–66 under 35 U.S.C. § 103(a) (pre-AIA)
as obvious in view of Maiorella II, Hess, D’Amore II, and Tedder.
12. Ground 125 - Claim 32 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of Maiorella II, Hess, D’Amore II, and Lu.10
13. Ground 126 - Claims 35 and 37–43 under 35 U.S.C. § 103(a) as
obvious in view of Maiorella II, Hess, D’Amore II, and Saida.11
14. Ground 140 - Claims 25 and 157–168 under 35 U.S.C. § 112, first
paragraph (pre-AIA), as failing to comply with the written description
requirement.
15. Ground 141 - Claims 25 and 157–168 under 35 U.S.C. § 112, first
paragraph (pre-AIA), as failing to comply with the enablement requirement.

II. CLAIMS
There are three independent claims which are pending, claims 1, 153,
and 157. Claim 1 is representative and reads as follows (underlining and
brackets indicate changes relative to the original claim):

10 Lu et al., Salting-out separation and liquid-liquid equilibrium of tertiary
butanol aqueous solution, 78 Chemical Engineering Journal 165–171 (2000)
(“Lu”).
11 Saida, US 4,822,737, issued Apr. 18, 1989.
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1. A method to recover a C3-C6 alcohol from a fermentation
broth [comprising microorganisms and the C3-C6 alcohol,]
comprising:
a. in a fermentor, culturing a microorganism in a
fermentation medium, thereby providing a fermentation broth
comprising the microorganism and the C3-C6 alcohol;
b. removing a portion of the fermentation broth from the
fermentor;
[a] c. [increasing the activity of the C3-C6 alcohol in a]
distilling the portion of the fermentation broth, thereby forming
a C3-C6 alcohol-rich vapor phase which is [to] at least [that of
saturation of] saturated in the C3-C6 alcohol, [in the portion]
and a C3-C6 alcohol-depleted liquid phase comprising viable
microorganisms;
[b] d. forming a C3-C6 alcohol-rich liquid phase and a
water-rich liquid phase from the [portion of the fermentation
broth] C3-C6 alcohol-rich vapor phase; [and]
[c] e. separating the C3-C6 alcohol-rich liquid phase
from the water-rich liquid phase; and
f. conducting the C3-C6 alcohol-depleted liquid phase
comprising viable microorganisms back to the fermentor.

III. RELATED INTER PARTES REVIEW
The ’808 patent is related to two U.S. Patents which have been subject
to Inter Partes Review under 35 U.S.C. § 311.
U.S. Patent 8,283,505 (“the ’505 patent) issued on October 9, 2012,
from a continuation application of the ’808 patent. The ’505 patent was
subject to Inter Partes Review in IPR2013-00215 filed on March 26, 2013.
On September 23, 2014, the Board entered a Final Written Decision which
invalidated all claims. ButamanTM Advanced BioFuels LLC v. Gevo, Inc.,
IPR2013-00215 (PTAB Sept. 23, 2014) (Paper 47). The claims of the ’505
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patent are similar to those in the ’808 patent, but are limited to producing
isobutanol.
U.S. Patent 8,304,588 (“the ’588 patent”) issued on November 6,
2012, from a continuation application of the ’808 patent. The ’588 patent
was subject to Inter Partes Review in IPR2013-00214 filed on March 26,
2013. On September 23, 2014, the Board entered a Final Written Decision
which invalidated all claims. ButamanTM Advanced BioFuels LLC v. Gevo,
Inc., IPR2013-00214 (PTAB Sept. 23, 2014) (Paper 46). The decision on
appeal to the Federal Circuit was affirmed. In re Gevo, Inc., 638 F. App’x
1018 (Fed. Cir. 2016). The claims of the ’588 patent are similar to those in
the ’808 patent, but are limited to producing isobutanol. Claim 1 of the ’588
patent has steps in which “the isobutanol-depleted portion of the
fermentation medium” and the “water-rich liquid phase” are returned to the
fermenter. These are steps are similar to the two steps in claim 157 in this
proceeding. In IPR2013-00214, claim 1 was found to be obvious under 35
U.S.C. § 103 in view of English, Hess, and D’Amore I. Claim 157 in this
proceeding was not subject to a prior art rejection.

DAUGULIS DECLARATIONS
During the course of the inter partes reexamination, Requester
provided three declarations by Andrew J. Daugulis, Ph.D., in support of the
obviousness of the claimed subject matter. Patent Owner argues that the
Examiner improperly relied on the declarations because the Examiner cited
the declarations “in support of the rejections,” but rejections in
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reexamination proceedings can only be based on either prior art patents or
printed publications. Appeal Br. 12.
In Rejection 121, The Examiner cited the Second Daugulis
declaration, paragraph 15, as establishing that “it was well known in the art
that . . . C3-C6 alcohols (such as butanol) . . . are not completely miscible in
water.” RAN 28. To the extent that this fact is necessary to sustain this, or
any other, rejection, Dr. Daugulis’s testimony in paragraph 15 merely
establishes a well-known fact at the time of the invention about the
properties of butanol in water. The rejection is thus based on a fact that Dr.
Daugulis testified was known to one of ordinary skill in the art at the time of
the invention. Patent Owner has not established that Dr. Daugulis was
incorrect in his testimony or that the ordinary skilled worker was not aware
of this fact at the time of the invention. Consequently, we conclude that the
Examiner did not err in relying on Dr. Daugulis’s declaration as factual
evidence of what the skilled artisan would have understood from the
teachings of the prior art.
Patent Owner also challenges the Daugulis declarations as containing
conclusory legal opinions with respect to statements regarding the
obviousness of the claimed invention and an allegedly undisclosed material
business relationship with the Requester. Appeal Br. 13–15. Since the
allegedly conclusory opinions expressed in the Daugulis declarations were
not relied upon in reaching the Decision to affirm the Examiner, it is
unnecessary for us to address these arguments.

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OBVIOUSNESS – REJECTIONS 113 AND 121
Independent claim 1 is rejected as obvious under Grounds of
Rejection 113 and 121. Rejection 113 of claim 1 is based on English and
D’Amore II. Rejection 121 of claim 1 is based on Maiorella II, Hess, and
D’Amore II. English and Maiorella II are applied by the Examiner for the
same teachings. Compare RAN 15 and 27. Patent Owner acknowledged
that the publications are applied by the Examiner for the same teachings, and
consequently did not argue the rejections based on Maiorella II separately,
but rather stated that the rejected claims in Rejection 121 are patentable for
the same reasons that the claims in Rejection 113 are patentable over the
combination of English and D’Amore II. Appeal Br. 29. For this reason,
while we only address the rejections based on English and D’Amore II, our
reasoning and conclusions are applicable to the rejections citing Maiorella II
and Hess.

A. Rejection of independent claim 1
Independent claim 1 is directed to a method of recovering a C3-C6
alcohol from a fermentation broth. The claim has six steps, numbered a.
through f. The method involves culturing a microorganism in the
fermentation broth in a fermentor to produce the C3-C6 alcohol (step a). A
portion of the fermentation broth is removed from the fermentor (step b) and
this portion is treated in the subsequent steps (steps c–e) to remove the
alcohol and return or recycle the alcohol-depleted liquid phase back to the
fermentor (step f). The purpose of the removal and return step is to
continuously reduce the alcohol in the fermentor “since presence of high
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concentrations of alcohol in the fermentation broth can adversely impact the
ability of the micro-organisms to produce alcohol.” ’808 patent, col. 34, ll.
31–38. According to the patent, returning water back to the fermentor
reduces the energy and operating costs required to remove the alcohol from
the fermentation broth (“dry the spent fermentation broth”). Id. at col. 8, ll.
23–42.
The Examiner found that English describes step a of culturing in a
fermentation medium to provide a fermentation broth and step b of removing
a portion of the fermentation broth from the fermentor. RAN 15. In
English, the removed portion is transferred to a flash vessel 208 (also called
a “separator”), where step c is accomplished by distilling the fermentation
broth to form 1) “a C3-C6 alcohol-rich vapor phase which is at least
saturated in the C3-C6 alcohol” and 2) “a C3-C6 alcohol-depleted liquid
phase comprising viable microorganisms.” Id. The Examiner further found
that English describes returning the “C3-C6 alcohol-depleted liquid phase
comprising viable microorganisms” of step c to the fermentor as required by
step f of claim 1. Id.
The Examiner found that English’s method does not describe step d,
in which the “C3-C6 alcohol-rich vapor phase” of step c is formed into “a
C3-C6 alcohol-rich liquid phase and a water-rich liquid phase,” and step e,
in which the phases of step d are then separated. Id. at 15–16. However, the
Examiner found that both steps d and e are described by D’Amore. Id. at 16.
The Examiner found that English exemplified a process for recovering
ethanol, a C2 alcohol, but found that English states that its invention could
also be used to recover “other alcohols” and specifically mentioned
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“butanol,” which is a C4-alcohol. Id. at 15. The Examiner reasoned that it
would have been obvious to one of ordinary skill in the art to have applied
D’Amore II’s teachings to English when producing n-butanol by
fermentation because
ethanol (C2 alcohol) in English’s exemplified process forms a
homogeneous ethanol/water azeotrope that upon condensation
forms a single phase liquid. But for the recovery of ethanol-
like C3-C6 alcohols (such as butanol) that are not completely
miscible in water, condensing the vapor phase is known to form
a C3-C6 alcohol-rich liquid phase and a water-rich liquid phase,
which can be easily separated in a decanter, as specifically
described by D’Amore II in the same field of endeavor.
Id. at 16.
Patent Owner contends that the rejection is improper because the
Examiner did not demonstrate “a reasonable expectation of success, and the
proposed combination would render English unsuitable for its intended
purpose” of purifying ethanol. Appeal Br. 15.

Discussion
Patent Owner contends that modifying English with D’Amore II’s
teachings would eliminate the advantages described by English for its
alcohol purification process (Appeal Br. 16) and make it unsuitable for
purifying ethanol (id. at 18). As a result, Patent Owner argues that the
modification proposed by the Examiner would make it “inoperable” for
purifying ethanol and would therefore fundamentally change the principles
of operation of the English process. Id. at 18, 22.
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These arguments do not persuade us that the Examiner erred in
rejecting the claims as obvious in view of English and D’Amore II, or
Maiorella II, Hess, and D’Amore II.

Is the combination of publications improper?
As found by the Examiner, English explicitly teaches utilizing butanol
in its process: “[T]he invention is also suitable for the preparation of other
alcohols and ketones such as butanol, isopropanol and acetone from
appropriate feedstocks using suitable microorganisms.” English, col. 4, ll.
1–4. Patent Owner’s argument about fundamentally changing English’s
principle of operation because it would no longer work to purify ethanol
ignores the explicit teaching in English that its process is applicable to other
alcohols, including butanol. When butanol is utilized, a preponderance of
the evidence establishes the one of ordinary in the art would know that
English’s process for purifying ethanol would require modification. This is
explained in more detail below.
Patent Owner’s declarant Angelo Lucia, Ph.D., testified that ethanol
forms a homogenous azeotrope, while 1-butanol (also known as n-butanol)
and isobutanol form heterogeneous azeotropes. First Lucia Decl.12 ¶ 9. Dr.
Lucia testified in his declaration that English’s process would not be capable
of purifying 1-butanol made in a fermentation process because the
fermentation process would result in a heterogeneous azeotrope which
would require different steps than those described in English. Id. ¶¶ 12, 13,
17. Based on Dr. Lucia’s testimony, which refers to prior art teachings for

12 First Declaration of Angelo Lucia, Ph.D., dated June 7, 2013.
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separating alcohols from homogeneous and heterogeneous azeotropes, we
conclude that the methods for separating both types of azeotropes were
known in the art. First Lucia Decl. ¶ 12; Second Lucia Decl.13 ¶¶ 14, 25.
This conclusion is consistent with D’Amore II which the Examiner found to
describe recovering 1-butanol from a heterogenous azeotrope. RAN 16;
D’Amore II ¶ 43. Thus, the person of ordinary skill in the art who sought to
separate butanol from a fermentation process, as suggested by English,
would know that it forms a heterogeneous azeotrope and would have known
how to separate it from the teachings of D’Amore II.
Dr. Lucia testified that it would not have been obvious to modify
English with D’Amore II’s teachings because they employ fundamentally
different and distinct separation technologies. First Lucia Decl. ¶ 26. This
argument is not persuasive because Dr. Lucia admitted that English’s
process would require modification to purify an azeotrope based on 1-
butanol. Id. ¶¶ 12, 13, 17. The preponderance of the evidence establishes
that the modification to purify butanol was known in the prior art and would
have been obvious to implement when carrying out English’s suggestion to
utilize its fermentation process for butanol.
Dr. Lucia also testifies that modifying English would result in the loss
of the goal of English to reduce energy utilization and efficiency. Id.
¶¶ 14, 27. However, Dr. Lucia did not explain why integrating D’Amore II
into English would result in the loss of energy and efficiency, particularly
when the step of recycling fermentation broth back to the fermenter is
conserved.

13 Second Declaration of Angelo Lucia, Ph.D., dated January 7, 2014.
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Would there have been an expectation of success?
Patent Owner also contends that the rejection should be reversed
because there was no expectation of success that D’Amore II could be
implemented in English. This argument is not supported by adequate
evidence.
Dr. Lucia described two different designs for butanol separating,
stating that “without significant process and economic simulation work, it is
simply not possible for even a skilled chemical engineer to form an informed
opinion as to which . . . is the most suitable process design for a given 1-
butanol/water separation.” First Lucia Decl. ¶ 8. However, a process design
does not have to be the “most suitable” for it to have been obvious. “[J]ust
because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.” In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012). The key question is whether such
alternative, which in this case would be D’Amore II’s process, is operable to
separate butanol when combined with English. A teaching that a process
would be inferior or less desirable is not a teaching away unless the use
would render the process “inoperable.” See In re ICON Health and Fitness
Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007); In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Inoperability is addressed below.
Dr. Lucia stated that “even seemingly small changes can have a
substantial impact on the overall process.” First Lucia Decl. ¶ 7. For this
reason, Dr. Lucia stated:
Knowing this, experienced chemical engineers would not be
able to reliably predict the effects of even seemingly small
changes in a separation process on process operability,
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controllability, process economics, safety, or environmental
impact without expending significant effort in analyzing such
changes through process simulations and economic analyses.
Id., see also id. ¶¶ 10, 24.
Despite Dr. Lucia’s statement that English’s process operability, when
modified by D’Amore II, would not have been predictable and that there
would have been no predictable expectation of success (id. ¶¶ 7, 10, 24, 26),
we have not been pointed to adequate evidence to establish a factual basis
for this opinion. Dr. Lucia discusses process efficiency (id. ¶¶ 7, 14–15),
impact on process economics (id. ¶¶ 16, 19, 28), and energy utilization
considerations (id. ¶ 27), but none of these adequately address whether
modifying English’s process with the separation steps taught by D’Amore II
would be expected to be “inoperable,” namely, not capable of being used
successfully, as he asserted.
Dr. Lucia takes the position that for the chemical engineer “to form an
opinion with respect to whether or not the proposed could be successful, a
POSA [person of ordinary skill in the art] would first perform some
modeling, simulation, and economic analysis.” Second Lucia Decl. ¶ 41.
Dr. Lucia states that there are a number of factors that would have to be
considered to determine whether the process would fail. Id. ¶¶ 42, 43. Dr.
Lucia states that the modified process would have “a low capital and
operating cost process, which is unsafe or difficult to operate or control,
[and] would not be considered a successful separation process design.” Id. ¶
43.
Dr. Lucia’s analysis does not adequately address whether the process
would work, the proper standard for determining obviousness. In re Gurley,
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27 F.3d at 553. Rather, Dr. Lucia focuses on the economy and efficiency of
the process without clear identifying those factors which would make the
process inoperable. For example, Dr. Lucia states “[i]n certain
circumstances, proposed changes may render a process completely
inoperable, and significant changes .in design may be required to
accommodate these changes.” Second Lucia Decl. ¶ 45. But Dr. Lucia does
not specifically identify what changes would “render a process completely
inoperable,” particularly how combining D’Amore II with English would be
a change that would render D’Amore II inoperable to separate n-butanol.

B. Rejection of independent claim 153
Independent claim 153 stands rejected by the Examiner based on
English, D’Amore II, and Hess. Patent Owner contends that claim 153 is
not obvious for the same reasons argued for the combination of English and
D’Amore II. Appeal Br. 28. Patent Owner states that Hess does not remedy
the deficiencies in English and D’Amore, and neither does the additionally
cited evidence. Id. As we have found, Patent Owner’s arguments regarding
the combination of English and D’Amore II unpersuasive, we conclude that
independent claim 153 is obvious for the same reasons.

C. Rejections of dependent claims
Grounds 114–118 and 122–126 involve rejections of dependent
claims where the Examiner cited a prior art publication in addition to
English and D’Amore II, or Maiorella, Hess, D’Amore II, to meet
limitations in the dependent claims. See supra 3–4. For most of the
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rejections, Patent Owner argues that the additional publication does not
correct the deficiency of the base combination of English and D’Amore II,
or Maiorella II, Hess, and D’Amore II. Consequently, since we have already
addressed English and D’Amore II, we need not discuss these rejections any
further.
However, for Rejections 116 and 117, Patent Owner addressed the
additionally cited publication. Consequently, these rejections are discussed
individually below.

1. Rejection 116
Patent Owner argues that none of the cited publications teach the
further alcohol separation limitations recited in claim 32. Appeal Br. 25.
The Examiner found that Tedder describes an alcohol separation technique
that meets the limitations of claim 32. RAN 23. The Examiner identified
where in Tedder the limitations are described. Id. Patent Owner states that
the solvent/alcohol stream separated in Tedder is not an “alcohol-rich liquid
phase” stream of step d, as in claim 32. Appeal Br. 25–26. However, this
argument is not persuasive because the basis of the rejection is the
obviousness of applying Tedder’s technique to the alcohol-containing
streams described in English as modified by D’Amore II. RAN 23. Patent
Owner did not identify a defect in the Examiner’s fact-based reason for
applying Tedder to English’s and D’Amore II’s stream. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).”
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Patent Owner also separately argues claims 65 and 66. Claim 65,
which depends from claim 1 and claim 63, requires further “processing the
C3-C6 alcohol-rich phase” of claim 1 (see claim 63), where “the step of
processing comprises combining the C3-C6 alcohol-rich liquid phase
[formed in step d] with a hydrocarbon liquid that is immiscible in water,
whereby the combination forms a single uniform phase.” The Examiner
found Tedder describes utilizing a hydrophobic carbon solvent, which is an
solvent immiscible in water, to form a uniform phase with the alcohol as in
claim 65. RAN 23. Claim 66, which depends from claims 1 and 63, recites
the same solvent as in claim 65, but whereby a light and heavy phase are
formed. The Examiner found that the solvent would form an
solvent/alcohol-rich light phase and a water-rich heavy phase. Id. at 24.
Patent Owner contends that Tedder teaches extraction directly from a
fermentation medium, not from an alcohol-rich liquid phase of claims 65
and 66. Appeal Br. 26.
The Examiner responded to this argument by identifying disclosure in
Tedder where an organic extractant is described to separate water and
alcohol phases. RAN 48–49. The Examiner’s argument is supported at
column 4, lines 27–36 and col. 5, lines 12-16 of Tedder. Consequently, we
are not persuaded that the Patent Owner identified a reversible error in the
Examiner’s finding and reasoning.

2. Rejection 117
Patent Owner separately argues claim 41. Claim 41 depends from
claim 1, through claims 39, 38, and 37. Claim 41 recites “wherein the
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fermentor is at below atmospheric pressure.” The Examiner found that
“Wilke (col. 5, lines 12-13) discloses that fermentation can be performed at
below atmospheric pressure.” RAN 24. Indeed, Wilke teaches vacuum
fermentation was well known in the art for lowering the boiling point of the
alcohol to that of the fermentation temperature for continual vaporization of
alcohol from the fermentation broth to avoid self-inhibiting effects of
alcohol during the fermentation process. See Wilke, col. 1, ll. 60-68. Patent
Owner contends that Wilke does not disclose or suggest heterogeneous
azeotropes. Appeal Br. 26. This argument is not persuasive because Wilke
was relied upon for the fermentation conditions for alcohol production from
microorganisms. A skilled artisan would have recognized that the same
vacuum fermentation process would be suitable for other continuous alcohol
production processes from microorganisms.

CLAIM 157
Claim 157 was added during the reexamination proceeding. See
Patent Owner Amendment filed June 10, 2013. Under 37 C.F.R. § 1.906(a),
“Claims in an inter partes reexamination proceeding will be examined . . .
with respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S.C. 112.” Because
claim 157 was added during the proceeding, it is subject to examination
based on section 112. Under this statutory authority, the Examiner found
that claim 157 does not satisfy the written description and enablement
requirements of § 112, first paragraph (pre-AIA). RAN 37, 39. We affirm
the written description rejection and reverse the enablement rejection.
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Written description rejection
Claim 157, like claim 1, is directed to a method of producing a C3-C6
alcohol. The claim recites eight steps, numbered a through h. Step d is
“returning the C3-C6 alcohol-depleted portion of the fermentation medium
from step (c) to the fermentation unit.” Claim 1 also has such a return step.
Step h is drawn to a second return step, “returning the water-rich liquid
phase from step (g) back to the fermentor.” This second return step is not
recited in claim 1. The Examiner found there is no description in the ’808
patent specification of a method with all eight steps and no description of the
second water return step h. RAN 37. Specifically, the Examiner found that
the patent specification describes recycling water back to the fermenter after
extraction with an alcohol-selective extractant as in steps c and d of claim
157. Id. at 37. However, the Examiner found there is no description of
returning a water-rich liquid phase back to the fermenter, where such liquid
phase is produced from distilling the remaining alcohol-rich portion of the
fermentation medium (step e) after the solvent extraction (step c) as in step h
of claim 157. Id. at 38–39.
Patent Owner acknowledged
while the specification does not provide ipsis verbis description
of the claimed combination (i.e., distillation to form an alcohol-
rich liquid phase and a water-rich liquid phase [steps e, f, and g
of claim 157], and returning the water-rich liquid phase to the
fermentor [step h of claim 157]), there are multiple places in the
issued patent specification that clearly and unambiguously
teach returning a water-rich liquid phase (e.g., from a decanter
or liquid-liquid separator) to a fermentor as claimed. Thus, such
ipsis verbis description is not required, as a skilled artisan,
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confronted with the multiple descriptions of the claimed step of
returning a water-rich liquid phase to a fermentor in the issued
patent specification, and explicit description of the claimed step
of returning the water rich phase to the fermentor as a preferred
embodiment, would have understood that Patent Owner clearly
contemplated and was in possession of the claimed
combination, including returning a water-rich liquid phase (e.g.,
from a decanter or liquid-liquid separator) to a fermentor, at the
time of filing.
Appeal Br. 35.
To support the written description of the claim, Patent Owner cited
disclosure in the ’808 patent at column 4, lines 7, 17–18, column 6, lines 47–
50, column 20, lines 13–18, and original claims 25 and 68. Id. at 34.

Legal principles
To satisfy the written description requirement of 35 U.S.C. § 112, the
inventor must “convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the invention.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “One
shows that one is ‘in possession’ of the invention by describing the
invention, with all its claimed limitations.” Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997).
There is no requirement that the wording in the claim be identical to
that used in the specification as long as there is sufficient disclosure to show
one of skill in the art that the inventor “invented what is claimed.” Union
Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
The written description “need not recite the claimed invention in haec verba
but [it] must do more than merely disclose that which would render the
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claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
F.3d 1368, 1377 (Fed. Cir. 2009). A description which renders obvious a
claimed invention is not sufficient to satisfy the written description
requirement of that invention. Lockwood, 107 F.3d at 1572. Thus, so long
as “a person of ordinary skill in the art would have understood the inventor
to have been in possession of the claimed invention at the time of filing,
even if every nuance of the claims is not explicitly described in the
specification, then the adequate written description requirement is met.” In
re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).

Discussion
In this case, the disclosure in the ’808 patent identified by Patent
Owner to support steps e, f, g, and h refer to the first water recovery step in
which water extracted from the fermentation medium is returned to the
fermentor. See, e.g., ’808 patent, col. 20, ll. 8–18, describing increasing the
activity of alcohol in a portion of the fermentation medium after culturing
with a microorganism to produce an alcohol. Patent Owner argues that one
of ordinary skill in the art would have understood this disclosure to convey
possession of the step of returning a water-rich liquid phase after other
process steps in the alcohol production method. Appeal Br. 34–35.
However, this argument is flawed for two independent reasons.
First, Patent Owner did not establish support in the cited disclosure for
steps f, g, and h of the claimed method. In these steps, the vapor phase
produced by the distillation of step e is condensed to form an alcohol-rich
liquid phase and a water-rich liquid phase (steps f and g), and then the water-
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rich liquid phase is returned to the fermenter (step h). Patent Owner has not
identified where these steps are described in the cited disclosures at column
4, lines 7, 17–18; column 6, lines 47–50; and column 20, lines 13–18 which
they cited for support.
Second, while Patent Owner argues that the ordinary skilled worker
“would have understood that Patent Owner clearly contemplated and was in
possession of the claimed combination,” Patent Owner has not provided
evidence, such as testimony by an ordinary skilled worker in the pertinent
field of the invention, to substantiate this attorney argument. Appeal Br. 35.
When the specification lacks the literal wording recited in a claim
added by amendment after the application’s filing date, it must be
determined whether the inventors “possessed” what is now claimed. Alton,
76 F.3d at 1175–1176. Possession of the claim limitations must be
distinguished from the situation where the added claim limitation, or the new
claim, itself, would have been obvious to one of ordinary skill in the art, but
is neither literally nor implicitly described by the inventors. ICU Med, 558
F.3d at 1377; Lockwood, 107 F.3d at 1572. In this case, Patent Owner has
not provided sufficient evidence to show that the inventor had possession of
the claimed invention. The disclosure in the patent identified by Patent
Owner is generic, and does not explicitly describe a second post-distillation
recycle step in which a vapor is condensed to form a water-rich liquid phase
that is returned back to the fermenter. Patent Owner has not provided
adequate evidence that such step was possessed by the inventors, even if
such a step would have been obvious to one of ordinary skill in the art upon
reading the patent disclosure.
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Patent Owner also cited to claims 25 and 68, which are original claims
of the ’808 patent. Original claims may satisfy the written description
requirement. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349
(Fed. Cir. 2010).
Original claim 68 (now canceled) was an independent claim. It had a
single step in which “the water rich phase” is conducted “to the fermentation
medium in the step a.” Step a recited “decreasing the activity of water in a
portion of the fermentation broth to at least at least that of saturation of the
C3-C6 alcohol in the portion.” Claim 25 depends from original claim 1, and
is also directed to a first water return step in which a water-rich phase
produced from distilling a portion of a fermentation broth is combined with
the broth. Patent Owner did not explain in the Appeal Brief how a process
with a single step in which water is recycled back to fermentation broth
describes a process with a second water return step h in claim 157. The
discussion about “possession” versus what would have been obvious to one
of ordinary skill in the art applies equally to Patent Owner’s reliance on
original claims 25 and 68.

Enablement rejection
The Examiner rejected the claims as lacking enablement because the
“water rich liquid phase recited in step (h) . . . has much higher alcohol
concentration than the fermentation medium or the starting aqueous alcohol
solution prior to distillation” and the “high amounts of C3-C6 alcohol [] can
inhibit alcohol production and growth of microorganisms in the fermentor.”
RAN 39–40.
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The rejection is reversed. As argued by Patent Owner, the ’808 patent
discloses that microorganisms genetically engineered to tolerate higher
levels of butanol can be used in the claimed method. Appeal Br. 36. In
addition, the patent discloses that as much as 9 wt% of alcohol may be
present in the fermentation broth (id.), an amount close to the 8% amount
which the Examiner found, without sufficient evidence, “may be toxic to the
microorganisms in the fermentor” (RAN 40). Because the rejection is not
supported by adequate evidence, we reverse it.

SUMMARY
For the foregoing reasons, the obviousness rejections of claims 1, 32,
41, 65, 66, and 153 are affirmed (Grounds 113, 116, 120, 121, and 125).
The obviousness rejections of the dependent claims were not argued
separately and thus fall with claims 1, 32, 41, and 153 (Grounds 113, 114,
115, 116, 117, 118, 120, 211, and 122). See 37 C.F.R. 41.68(c)(1)(vii).
The written description rejection of claims 25 and 157–168 (Ground
140) is affirmed.
The enablement rejection of claims 25 and 157–168 (Ground 141) is
reversed.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a) (1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under
§ 41.77(a).” A request for rehearing must be in compliance with
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37 C.F.R. § 41.79(b). Comments in opposition to the request and additional
requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c) &
(d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting
rehearing under paragraph (a) of this section, for requesting further rehearing
under paragraph (d) of this section, and for submitting comments under
paragraph (c) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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PATENT OWNER:
COOLEY LLP
Attn: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004

THIRD PARTY REQUESTOR:
Peter A, Jackman
STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
1100 New York Avenue, N.W.
Washington, DC 20005-3934

cdc