12996671 (P.T.A.B. Aug. 4, 2016)

Ex Parte Benjelloun Mlayah et al

Patent Trial and Appeal BoardAug 4, 2016

12996671 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/996,671 12/07/2010 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 08/08/2016 FIRST NAMED INVENTOR Bouchra Benjelloun Mlayah 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0546-1163 9768 EXAMINER HEINCER, LIAM J ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 08/08/2016 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BOUCHRA BENJELLOUN MLA Y AH, MICHEL DELMAS, GERARD LEVASSEUR, and THIERRY SCHOLASTIQUE Appeal2015-002651 Application 12/996,671 Technology Center 1700 Before TERRY J. OWENS, JAMES C. HOUSEL, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 8-12 and 15-25. We have jurisdiction. 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to the Appellants, the real party in interest is COMP AGNIE INDUSTRIELLE DE LA MATIERE VEG ET ALE. Appeal Br. 1. Appeal2015-002651 Application 12/996,671 STATEMENT OF THE CASE Appellants describe the present invention as pertaining "to a non- hydrolysing pretreating plant starting material for the purpose of producing bioethanol and sugar." Appeal Br. 4. Appellants explain that the cellulose, hemicelluloses, and lignins of plant material are separated in a pretreatment chamber to obtain an un-hydrolysed pretreated plant material that can later be hydrolysed and fermented for the production ofbioethanol. Id. at 5. The same treatment chamber could be used to extract sugar at different time periods. Spec. 10: 12-30. Claim 8, reproduced below, is illustrative of the claimed subject matter: 8. A method for pretreating plant starting material for producing bioethanol and sugar by means of a common pretreatment chamber for pretreatment of the plant material, compnsmg: introducing plant material to be pretreated into the common pretreatment chamber through at least one upstream inlet; discharging through at least one downstream outlet the pretreated plant material from the common pretreatment chamber; circulating the plant material from upstream to downstream; bringing the plant material into contact with a pretreatment liquid which circulates overall, from downstream to upstream, in an opposite direction to a direction of circulation of the plant material inside said common pretreatment chamber; recovering a solid phase and a liquid phase containing at least a part of the pretreatment liquid; wherein: during a first period, the plant material to be pretreated, introduced into the common pretreatment chamber, is a lignocellulosic plant starting material, said pretreatment of 2 Appeal2015-002651 Application 12/996,671 which only separates cellulose, hemicelluloses and lignins contained in said lignocellulosic plant starting material so as to obtain a pretreated plant material for later hydrolysation and fermentation for the production ofbioethanol; during a second period, the plant material (MP) to be pretreated, introduced into the common pretreatment chamber, is a sacchariferous plant starting material, said pretreatment of which only extracts therefrom, by diffusion, a sugar juice for the later production of sugar and of bioethanol. Appeal Br. 18 (Claims Appendix). REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Mlayah et al. WO 2006/117295 Al Nov. 9, 2006 (hereinafter "Mlayah") Dias et al., Evaluation of Energy Demand during Bioethanol production from Sugarcane and Sugarcane Bagasse-Computer based Scenario Approach, 18th European Symposium on Computer Aided Process Engineering - ESCAPE 18, 2008 (hereinafter "Dias") rT"i ' 1 TTâ€¢ , â€¢ "J. f 1 1 â€¢ I' Tr â€¢ ' â€¢ 1 T'lo 1 â€¢ I' T'llo l u et ai., Aznenc 1vioaetzng OJ rormzc Acza rutpzng OJ liagasse, Journal of Agricultural and Food Chemistry, 3097 (2006) (hereinafter "Tu") REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 8, 10-12, 16-19, 22, and 23 under 35 U.S.C. Â§ 103 as unpatentable over Dias in view ofMlayah. Ans. 2. Rejection 2. Claims 9 and 15 under 35 U.S.C. Â§ 103 as unpatentable over Dias in view ofMlayah and further in view of Tu. Ans. 4. Rejection 3. Claims 20 and 21under35 U.S.C. Â§ 103 as unpatentable over Dias. Ans. 6. 3 Appeal2015-002651 Application 12/996,671 Rejection 4. Claims 24 and 25 under 35 U.S.C. Â§ 103 as unpatentable over Dias as applied to claims 20 and further in view of Mlayah. Ans. 6-7. ANALYSIS After having considered the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify reversible error, and we affirm the Examiner'sÂ§ 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection 1. The Examiner rejects claims 8, 10-12, 16-19, 22, and 23 as obvious over Dias in view of Mlayah. Appellants do not separately argue claims 10-12, 16-19, 22, or 23. We therefore limit our discussion to claim 8. Claims 10-12, 16-19, 22, and 23 stand or fall with that claim. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). The Mlayah reference discloses substantially the same apparatus as the present Specification. Compare Mlayah Fig. 1 with Spec. Fig. 1. ivilayah explains the disclosed device can be used to extract, for example, lignins or sugars from plant material. Ans. 9; Mlayah 10:13-18. Dias teaches extraction of sugars from plant material and "pre-hydrolysis of hemicellulose fraction; delignification; and cellulose hydrolysis." Ans. 8; Dias 2. Appellants argue that the Examiner erred in relying upon Dias as prior art because "it is not clear if the Dias et al. publication was truly locatable to those of ordinary skill in the art at the time the present application was filed." Appeal Br. 7. As a threshold matter, Appellants argue that their application is entitled to a June 23, 2008, priority date based on its corresponding French application. Appeal Br. 6. The Examiner responds that Appellants did not perfect the June 23, 2008, priority date by filing a 4 Appeal2015-002651 Application 12/996,671 certified English translation of the French application (Ans. 8), but Appellants state that they filed a translation along with their reply brief (Reply Br. 3). 2 Even assuming arguendo that Appellants may claim priority to June 23, 2008, the record does not establish that the Examiner erred in relying on the Dias reference as prior art. Appellants state that Dias is "from the proceedings of the 18th European Symposium on Computer Aided Process Engineering, 2008, which was held in Lyon France on June 1--4, 2008." Appeal Br. 6. Information from the publisher, Elsevier, indicates that the "research papers and contributions" for ESCAPE 18 were published on May 15, 2008. Elsevier, https://www.elsevier.com/books/18th-european- symposium-on-computer-aided-process-engineering/braunschweig/97 8---0- 444--53227-5 (last visited July 29, 2016). A preponderance of the evidence thus supports that Dias was published before June 23, 2008. We therefore discern no error based upon the Examiner's reliance on Dias as prior art. Appellants also argue that Dias does not teach or suggest two different pretreatment periods "using two different plant starting materials, i.e., lignocellulosic [i.e., dry plant matter] or sacchariferous [i.e., plant matter containing or yielding sugar], depending on the concerned period." Appeal Br. 8. The Examiner, however, cogently explains that Dias teaches the two recited steps, and also explains that because they are separate steps, they "necessarily occur at different periods when using a common apparatus as set forth in the rejection." Ans. 8; see also Dias 2 (teaching "extraction of sugars" and also "pre-hydrolysis of hemicellulose fraction; delignification; and cellulose hydrolysis" for a "Ligbioethanol Production Process"). 2 We have not evaluated Appellants' foreign priority claim on the merits as doing so is unnecessary in rendering this decision. 5 Appeal2015-002651 Application 12/996,671 Appellants further attempt to distinguish Mlayah by explaining that it makes use of pumps for suctioning off organic acids. Appeal Br. 10. The Examiner correctly concludes, however, that claim 8's recited language does not preclude such a pump. Therefore, this is not a point of distinction. Appellants also argue that combining Dias and Mlayah is improper hindsight reconstruction and that the proposed combination would change the principle of operation of Mlayah. Appeal Br. 10-11. The Examiner, however, provides adequate rationale for combining these references. Final Act 3; 7; Ans. 8-10. Contrary to Appellants' argument (Appeal Br. 11), both Mlayah and Dias teach processing of both sacchariferous and lignocellulosic plant material. Ans. 3, 8. Mlayah teaches that its apparatus can be used to remove sugars or lignin. Ans. 3; see also, e.g., Mlayah Title; 1:7-9; 1:19-35; 10:13-18. Dias teaches "extraction of sugars" from sugar cane and treatment of the sugarcane bagasse. Ans. 3; Dias 2. Appellants identify nothing in the Specification that would require construing "lignocellulosic" as recited in claim 8 so narrowly that sugarcane bagasse would be not be "lignocellulosic plant starting material." Use of the apparatus of Mlayah to accomplish the process described by Dias is no more than predictable use of prior art elements according to their established functions. KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Appellants, therefore, have not identified reversible error based upon the Examiner combining these two references. We therefore sustain the Examiner's rejection of claims 8, 10-12, 16-19, 22, and 23. Rejection 2. The Examiner rejects claims 9 and 15 as obvious over Dias in view of Mlayah and further in view of Tu. Appellants do not separately argue claim 15 so we therefore focus on claim 9. 3 7 C.F .R. 6 Appeal2015-002651 Application 12/996,671 Â§ 41.37(c)(l)(iv) (2013). Claim 9 recites: "The method according to Claim 8, wherein during said first period, the pretreatment liquid is a mixture containing formic acid and water at a temperature of between 95Â°C and 110Â°C." Appeal Br. 18 (Claims Appendix). We address Appellants arguments regarding Dias and Mlayah above. Appellants also argue that Tu teaches only "a single process, even if it is two phases." Appeal Br. 12. The recitations of claims 8 and 9, however, do not require more than one process; the claims only recite a step "during a first period" and a step "during a second period." Appeal Br. 17-18 (Claims Appendix). Moreover, the Examiner's rejection of claim 9 is based upon the combination of Dias, Mlayah, and Tu. Final Act. 4. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). We thus sustain the rejection of claims 9 and 15. Rejection 3. The Examiner rejects claims 20 and 21 as obvious over Dias alone. Appellants do not separately argue claim 21 so we therefore focus on claim 20. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). Claim 20 recites, in part, a "two phase method for pretreating plant starting material for producing bioethanol and sugar in a common pretreatment chamber" during a first period and a second period. Appeal Br. 20 (Claims Appendix). Appellants argue it would not have been obvious to perform the two steps of Dias in a common pretreatment chamber. Appeal Br. 14--15. The Examiner correctly of explains that a person of skill would have been motivated to perform both extractions in one chamber in order to cut equipment costs. Ans. 6. Dias suggests sharing equipment where possible by stating that "[l]igbioethanol may share the infrastructure where bioethanol is produced, such as fermentation and distillation units, what [sic] 7 Appeal2015-002651 Application 12/996,671 diminishes equipment costs." Dias 1-2. Appellants note that this sentence refers, in particular, to distillation equipment (Appeal Br. 15), but Dias nonetheless teaches a desire to use common equipment where possible. We thus discern no error in the Examiner's obviousness conclusion and sustain the Examiner's rejection of claims 20 and 21. Rejection 4. The Examiner rejects claims 24 and 25 as obvious over Dias and further in view of Mlayah. Appellants again argue that a person of skill would not combine these references. We disagree for the reasons explained above and sustain the Examiner's rejection. DECISION For the above reasons, we affirm the Examiner's rejection of claims 8-12 and 15-25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 8 Notice of References Cited * Document Number Date Country Code-Number-Kind Code MM-YYYY A US- B US- c US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- * Document Number Date Country Code-Number-Kind Code MM-YYYY N 0 p Q R s T Application/Control No. 12/996,671 Examiner BPAI U.S. PATENT DOCUMENTS Name FOREIGN PATENT DOCUMENTS Country NON-PATENT DOCUMENTS Name Applicant(s)/Patent Under Reexamination Appeal No 2015-002651. Art Unit 1700 I Page of Classification Classification * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) u https://www.elsevier.com/books/18th-european-symposium-on-computer-aided-process-engineering/braunschweig/978--0--* 444--53227--5 (last visited July 29, 2016). v w x *A copy of this reference 1s not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. 18th European Symposium on Computer Aided Process Engineering - Elsevier Page 1 of 2 "'} ...... ~ Q SEARCH tÂ·-; = MENU (!) Volun1e 25. 18th European Sy1nposiun1 on Co1nputer .. Aid- ed Process Engineering 1st Edition Editors: Beiirand Braunschweig, Xavier Joulia Print ISBN 9780444532275 Print hook 0 Deiivery may take up to 10 days ~-----------------------------------------------------------------:~-~--~~--~~~~'.Y _____________________________________________________________ ...I V~ev~; on SdenceDkect : Â· Â· ? Help and Contact ::,::. Description Tabie of Contents Details Description The 18th European S;1nposium on Computer Aided Process Engineering contains papers presented at the 18th European Symposium of Computer A.ided Process Engineering (ESCAPE 18) held in Lyon, France, from I-<1 ,June 2008. The ESCAPE series brings the latest innovations and achievements by leading professionals from the industrial and academic communities. 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