Ex Parte Chornet et al

Patent Trial and Appeal Board

Dec 29, 2015

12587389 (P.T.A.B. Dec. 29, 2015)

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.
12/587,389 10/06/2009 Michel Chornet 80685.5 4666
7590 12/30/2015
Raymond J. Lillie, Esq.
c/o Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
12/30/2015 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
____________

Ex parte MICHEL CHORNET, ESTEBAN CHORNET, and
JEAN-MICHEL LAVOIE
____________

Appeal 2014-004891
Application 12/587,389
Technology Center 1700
____________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 2–7 and 10–19 under 35 U.S.C.
§103(a) based on the combined prior art of Xiang2, Nguyen3, and Foody4.
We have jurisdiction under 35 U.S.C. § 6.

1 According to Appellants, the real party in interest is CRB Innovations, Inc.
(Br. 1).
2 Qian Xiang et al., Heterogeneous Aspects of Acid Hydrolysis of α-
Cellulose, Applied Biochemistry and Biotechnology Vol. 105-108, pp. 505–
514 (2003).
3 Tam-Anh D. Nguyen et al., Hydrogen production by the hyperthermophilic
eubacterium, Thermotoga neapolitana, using cellulose pretreated by ionic
liquid, Int’l Journal of Hydrogen Energy Vol. 33, pp. 5161–5168 (2008).
Appeal 2014-004891
Application 12/587,389

2
Upon consideration of the appeal record, including the Appellants’
position in this appeal as set forth on pages 3–5 of the Appeal Brief filed
October 11, 2013, we affirm the Examiner’s rejection for the reasons stated
by the Examiner (Final Act. mailed January 11, 2013, at 2–8; Examiner’s
Answer mailed December 3, 2013, at 2–9).
Notably, Appellants have not presented any cogent arguments
sufficient to address the Examiner’s obviousness position based on the
combined teachings of Xiang, Nguyen, and Foody (Br. 3 (asserting that
“Foody teaches away from the present invention” without an analysis of why
the combined references’ teachings fail to render the claimed invention
obvious); Br. 4 (merely pointing out that “Xiang and Nyugen . . . lack an
ammonia treatment step”)). See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425-26 (CCPA
1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.”).
Furthermore, whether a reference teaches away from a claimed
invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553

4 Pat Foody and Vijay Anand, Process for producing a pretreated feedstock,
US Patent No. 7,709,042 B2 (2010).
Appeal 2014-004891
Application 12/587,389

3
(Fed. Cir. 1994). In evaluating references it is proper to take into account
not only the specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom. In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992); In re
Preda, 401 F.2d 825, 826 (CCPA 1968).
As pointed out by the Examiner, Xiang, Nguyen and Foody all relate
to an acid treatment of cellulose, and Foody is relied upon to teach that
ammonia is a known alternative for neutralizing acid after an acid treatment
of wet cellulose (Ans. 7, 8). Appellants have not directed us to any evidence
that discourages the use of ammonia to neutralize acid in this environment.
In re Gurley, 27 F.3d at 553.
Thus, Appellants’ argument that Foody teaches away from the
claimed invention is not persuasive of reversible error.
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).

AFFIRMED

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