Ex Parte Budaraju et al

Patent Trial and Appeal Board

Jul 8, 2016

12771496 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121771,496 04/30/2010
42982 7590 07112/2016
Rockwell Automation, Inc./FY
Attention: Linda H. Kasulke E-7Fl 9
1201 South Second Street
Milwaukee, WI 53204
FIRST NAMED INVENTOR
Srinivas Budaraju
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.
10AB076-US/YOD
ALBR:0370
CONFIRMATION NO.
1845
EXAMINER
HARWARD, SOREN T
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
07/12/2016 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):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectualproperty@ra.rockwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIV AS BUDARAJU and JAMES BAR TEE 1
Appeal2013-009184
Application 12/771,496
Technology Center 1600
Before DEMETRA J. MILLS, ULRIKE W. JENKS, and TA WEN CHANG,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
uECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
controlling a biofuel production process. The Examiner rejects the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the Real Party in Interest is Rockwell
Automation Technologies, Inc. (App. Br. 2.)
Appeal2013-009184
Application 12/771,496
STATEMENT OF THE CASE
Claims 1-9 and 16-20 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claims and 1 and 16 are representative of the
claims on appeal, and read as follows:
1. A method for controlling a biofuel production process,
compnsmg:
(a) predicting a yeast activity value of a fermentation
sub-process of the biofuel production process using a dynamic
predictive model;
(b) estimating the yeast activity value using a yeast
activity sensor;
( c) adjusting the predicted yeast activity value using the
estimated yeast activity value; and
( d) controlling the biofuel production process based on
the adjusted predicted yeast activity value.
16. A method of controlling a biofuel production process,
compnsmg:
controlling a fermentation sub-process of the biofuel
production process based on a predicted yeast activity value
from a dynamic predictive model, wherein the predicted yeast
activity value is biased by an estimated yeast activity value
generated by a yeast activity sensor.
Appellants seek review of the Examiner's rejection of claims 1-9 and
16-20 under 35 U.S.C. § 103(a) over Bishop,2 Pitner,3 and Macharia.4
The Examiner finds that Bishop "teaches controlling the fermentation
process based on a measured nutrient concentration (and its trajectory)"
(Final Act. 3). "[T]he model that predicts the nutrient consumption rate is a
2 Bishop et al., US 5,595,905, issued Jan. 21, 1997 ("Bishop").
3 Pitner et al., US 6,900,030 B2, issued May 31, 2005 ("Pitner").
4 Macharia et al., US 2008/0109100 Al, published May 8, 2008
("Macharia").
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Application 12/771,496
dynamic model" (id.). The Examiner acknowledges that Bishop "does not
teach controlling the fermentation process based on a yeast activity value
estimated using a yeast activity sensor" (id.). The Examiner looks to Pitner
for teaching a rapid measurement of "cellular metabolic activity of yeasts in
a fermentation process using a fluorescence sensor" (id.). Although both
Bishop and Pitner teach fermentation processes the Examiner finds that
neither reference "teaches that the fermentation process is part of a biofuel
production process" (id. at 3). The Examiner looks to Macharia to teach the
use of microbial "fermentation in a biofuel production process using a
predictive control model" (id. at 4).
Appellants contend "that the cited references, taken alone or in
hypothetical combination, fail to teach or suggest controlling a biofuel
production process based on a predicted yeast activity value from a dynamic
predictive model, the predicted yeast activity value being biased by an
estimated yeast activity value generated by a yeast activity sensor" (Reply
Br. 3--4; see App. Br. 5---6).
The issue is: Does the preponderance of evidence of record support
the Examiner's conclusion that the combination teaches controlling a biofuel
production process using a yeast activity indicator value?
Findings of Fact
FF 1. Bishop teaches a process control system for batch fermentation
(Bishop, Title). Bishop explains that "[ d]uring fermentation
processes, the bacteria or yeasts growing in a fermentation broth
consume nutrient at a variable rate related to, among other things, the
microorganism density and rate of growth" (id. at 1: 19-22). Bishop
explains that when "nutrient concentration is too low, or absent, the
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Application 12/771,496
growth of the microorganisms is restricted usually resulting in
reduced productivity of the process" (id. at 1 :42--44).
FF2. Bishop teaches "controlling nutrient concentration levels in a broth
under the control of a computer" (id. at 2:65---67). The disclosed
method contains the following steps: (a) fermenting, (b) periodically
withdrawing a sample, ( c) measuring nutrient concentration in the
sample, ( d) comparing nutrient concentration to a prior sample, ( e)
"determining the nutrient utilization rate in real-time by comparing
the nutrient concentration of the designated sample" to the prior
sample, (t) comparing the calculated rate to the rate during a prior
time period, (g) "predicting from comparing such rates an estimated
rate at which the nutrient concertation of the broth is expected to
decrease in an interval succeeding the designated interval," and (h)
adding nutrients if necessary (id. at 3: 1-30).
FF3. Bishop teaches withdrawing the sample from the fermentator without
depleting broth using pressure or vacuum. "Because back-pressure is
maintained on the fermentation broth in the sparged fermentor [],
when the solenoid valve[] is opened, broth[] is forced through the
orifice, into the tubing [] and to a nutrient concentration analyzer[] to
which the sampling device is also attached. Alternatively or
additionally, the nutrient concentration analyzer[] can apply a
vacuum to pull broth to the analyzer" (id. at 5:21-27).
FF4. Pitner teaches using "[a] fluorescing sensor compound ... which
exhibits a quantifiable degree of quenching when exposed to
oxygen. . . . [A Jn increase in fluorescence is indicative of respiring
aerobic microorganisms, which utilize (and thereby reduce) the
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Application 12/771,496
oxygen in the sample" (Pitner 4:60 to 5:2). To work, "[t]he
fluorescent compound must be placed in chemical communication
with the oxygen of the test sample to exhibit the quenching. This can
be achieved by placing the compound directly in contact with the
sample" (Pitner 7: 8-11 ).
FF5. Pitner teaches that "[t]he detection of fluorescent intensity can be
performed by any means ordinarily used for such measurements, e.g.
a fluorometer. Alternatively, the fluorescent intensity can be observed
visually and, optionally, compared with a reagent control (e.g. a
system containing no live organisms or a system with no added test
chemicals)" (Pitner 7:42--47).
FF6. Macharia teaches that "[b ]iofuel refers to any fuel derived from
biomass, i.e., from recently living organisms or their bi-products
[sic]" (Macharia, l:i-f 3). "Biomass is converted by yeast and enzymes
into a biofuel and by-products such as carbon dioxide, water and non-
fermentable biomass (solids), in the fermentation units .... The
fermentation process is a batch process with multiple fermenters in
parallel" (Macharia, 1 :i-f 8). One example of a biofuel is ethanol
(Macharia, 1 :i-f 5).
FF7. Macharia teaches:
[A] method for managing batch fermentation in biofuel
production. An optimizer executes a nonlinear
multivariate predictive model of a batch fermentation
process in accordance with an end of batch objective
specifying a target end of batch biofuel concentration ....
The batch fermentation process is controlled per the
target values to produce biofuel in accordance with the
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Appeal2013-009184
Application 12/771,496
determined optimal batch trajectory, to substantially
optimize the end of batch biofuel yield."
(Macharia, Abstract.)
FF8. Macharia teaches:
[A] dynamic prediction model ... may be incorporated
as a process model in a model-based dynamic control
system (MPC). The MPC system may project what will
happen based on the dynamic prediction model and
recent process history. This projection may be updated
or biased based on the currently received process
information and the control algorithms may be used to
recursively estimate the best current and future control
moves on the model inputs to achieve a desired output
path. Thus targets set on the dynamic model outputs may
be compared to what that output may do over a predictive
future horizon and the best available controllable model
input moves may be estimated to best achieve the
controller targets. In this case, targets on biofuel
production may be calculated by estimating the best
current and future moves regarding fermentation
temperature. Because of the long dynamics and process
lag within large volume fermenters, model-based control
may have significant advantages in attempting to
approach targeted biofuel production throughout a batch
(e.g. wt%, gallons, kg, etc.).
(Macharia, 16:if 181.)
FF9. The Specification teaches that "[b ]iomass [] may be converted by
yeast and enzymes into a biofuel [] and by-products such as carbon
dioxide, water, and non-fermentable biomass (solids) in the
fermenters []"(Spec. 3:if 13.)
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Application 12/771,496
FF 10. Fig. 5 of the Specification is reproduced below:
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Fig. 5 shows the various input parameters that may be measured or
obtained during biofuel production. "The fermentation dynamic
predictive model 52 may derive a predicted or estimated value for
yeast activity based on various input parameters 60 measured or
otherwise derived from the biofuel production plant 1 O" (Spec. 19 :i-f
54).
Principle of Law
"If the claim extends to what is obvious, it is invalid under § 103."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). "The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Id. at 416.
Analysis
Claim 1
Appellants contend that "[t]he examiner has apparently merely
identified a reference that arguably describes a 'yeast activity sensor' (i.e.,
the florescence detection methods of Pitner) and suggested that it would
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Appeal2013-009184
Application 12/771,496
have been obvious to use the florescence detection methods of Pitner to
control a biofuel production process" (App. Br. 7).
We are not persuaded by Appellants contention. Appellants err in
attacking the references individually, as the rejection is based on a
combination of references. See In re Merck & Co., Inc., 800 F .2d 1091,
1097 (Fed. Cir. 1986). The references cannot be read in isolation, but for
what they teach in combination with the prior art as a whole. See id.
Bishop teaches a batch fermentation system, taking samples from the
fermentation vessel, analyzing the nutrient content, comparing the sample to
a prior sample in order to determine the rate at which the nutrient
concentration is decreasing, and using this information to predict the
decrease in a future sample over a given period of time (FF1-FF3). Nutrient
consumption is affected among other things by the density and growth of the
microorganism (FF 1 ). Pitner teaches measuring the activity of a
microorganism in a sample using a fluorescent indicator and sensor based on
observing a reduction in oxygen levels in the samples over time (FF4 and
FF5). Macharia teaches a method for managing batch fermentation for the
production ofbiofuels (FF6 and FF7). Specifically, Macharia calculates
"targets on biofuel production ... by estimating the best current and future
moves regarding [for example] fermentation temperature" (FF8). Thus,
Macharia recognizes that fermentation temperature affects biofuel
production by the microorganism.
Nutrient concentration levels also affect the growth rate of the
microorganism and the density of the microorganism in tum affects the rate
of consumption of the nutrients by the microorganism (FF 1 ). Thus,
measuring the health and well-being of a microbial population will provide
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Application 12/771,496
information that can be used to predict nutrient requirements in the
population during the fermentation process (FF1-FF5). Here, Pitner
provides a method to determine if the microorganisms are alive and growing
in a particular system (FF4 and FF5). The Examiner explained that based on
the combined teachings one of ordinary skill in the art "would have been
motivated to substitute yeast activity measurements from a yeast activity
sensor - as taught by Pitner - in the fermentation control method of Bishop
because Pitner teaches that such measurements can be made more rapidly
and from a single sample than the concentration measurement procedure in
the method of Bishop" (Final Act. 5). We find no error with the Examiner
application of Pitner' s detection method as an alternative measurement to
predict nutrient requirements in the batch fermentation based on the
microbial growth determined by oxygen depletion.
Accordingly, we affirm the obviousness rejection of claim 1.
Appellants do not separately argue dependent claims 2-6 and 8. (App. Br.
12-13.) Therefore, these claims fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 16
Appellants contend that "neither Bishop nor Pitner teaches or suggests
fermentation sub-processes that are part of a biofuel production process"
(App. Br. 9), "that the teachings of Pitner are not 'clearly analogous' to the
techniques described in Bishop, as asserted by the examiner" (Reply Br. 2),
and "that it would not be obvious to one of ordinary skill in the art to extend
the methods of adding broth based on nutrient concentrations to the model
predictive control techniques of a fermentation sub-process of a biofuel
production process" (id. at 3).
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Application 12/771,496
We are not persuaded. The references cannot be read in isolation, but
for what they teach in combination with the prior art as a whole. In re
Merck & Co., 800 F.2d at 1097. As explained by the Examiner,
when the yeast activity measurement of Pitner is
substituted for the nutrient concentration measurement of
Bishop, the result of the modification is a method of
controlling a fermentation process based on predicted a
yeast activity value (rather than a predicted nutrient
consumption rate), the predicted yeast activity value
having been biased[] by a yeast activity value estimated
from a yeast activity sensor (rather than estimated from a
nutrient concentration sensor).
(Ans. 4; see FF1-FF5).
Although the Examiner acknowledges "that neither Bishop nor Pitner
teaches biofuel production" (Ans. 4), both references teach the use of
microorganisms in fermentation processes and monitoring the activity of the
microorganisms (FF1-FF5). The art and Specification recognize that
biofuel is a resulting product of the action of yeast or enzymes on a biomass
(FF6 and FF9). Because both references measure microbial activity in a
fermentation process, a process also used in biofuel production, we find no
error with the Examiner's conclusion that it would have been obvious to use
Pitner' s yeast activity measurements in place of the nutrient consumption
measurements in Bishop to measure yeast productivity in association with
biofuel production.
Appellants contend that the Examiner used hindsight reconstruction,
arguing that "[t]here is absolutely no suggestion in any of the cited
references that values generated by a yeast activity sensor could or should be
used to directly control any processes, much less a fermentation sub-process
of a biofuel production process" (App. Br. 10).
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Application 12/771,496
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the "combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results." KSR,
550 U.S. at 416.
Here, the Examiner "has relied only on knowledge available to one of
ordinary skill in the art at the time of invention" (Ans. 5). Both Bishop and
Macharia teach tracking a batch fermentation process, making predictions
based on inputs received during the process, and making adjustments in the
system based on the predictions (FF1-FF3, FF7, and FF8). Pitner's
detection technique measures the activity of the microorganism in the
samples based on the rate of oxygen consumption in the samples (FF4-FF5).
Here, the incorporation of Pitner' s activity measurement into the
fermentation calculations of Bishop and Macharia is merely a "predictable
use of prior art elements according to their established functions." KSR, 550
U.S. at 417. In other words, Pitner's activity measurement is but one
additional input parameter into the calculations that provides information
regarding the health of the microorganism in the sample based on the
oxygen consumption.
Appellants have not provided sufficient persuasive evidence of error
that overcomes the preponderance of evidence supporting the Examiner's
obviousness conclusion. Accordingly, we affirm the obviousness rejection
of claim 16. Appellants do not separately argue dependent claims 1 7, 19,
and 20. (App. Br. 12-13.) Therefore, these claims fall with claim 16. 37
C.F.R. § 41.37(c)(l)(iv).
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Claim 7
We recognize, but are not persuaded by, Appellants' contention that
repeating the method steps every 3---6 hours is not obvious. As recognized
by the Examiner, both Bishop and Pitner take measurements at repeated
intervals (Ans. 7). We adopt the Examiner's finding and conclusion as set
out in the Answer (Ans. 6-7). Although the references together suggest an
interval for taking measurement that is repeated every 15 minutes, we agree
that the interval could be increased to every 3---6 hours by routine
experimentation. "[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
We affirm the rejection of claim 7.
Claims 9 and 18
We are not persuaded by Appellants' contention that "there is no
suggestion in Pitner that the fluorescence detection methods disclosed
therein could be performed on samples that are delivered in an automated
manner" (Reply Br. 5).
"[I]t is well settled that it is not 'invention' to broadly provide a
mechanical or automatic means to replace manual activity which has
accomplished the same result." In re Venner, 262 F.2d 91, 95 (CCPA 1958).
Furthermore, as explained by the Examiner, "Bishop and Macharia both
teach this step [of automatically sampling and delivering to the sensor], and
in the combined control method of Bishop, Pitner and Macharia, the sensor
being used is a yeast activity sensor" (Ans. 7).
We affirm the rejection of claims 9 and 18.
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SUMMARY
We affirm the rejection of claims 1, 7, 9, 16, and 18 under 35 U.S.C.
§ 103(a) over Bishop, Pitner, and Macharia. Claims 2---6, 8, 17, 19, and 20
were not separately argued and fall with claims 1 and 16.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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