Ex Parte DERUYTER et alDownload PDFPatent Trial and Appeal BoardSep 10, 201814510145 (P.T.A.B. Sep. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/510,145 10/09/2014 23906 7590 09/12/2018 EIDUPONTDENEMOURSANDCOMPANY LEGAL PATENT RECORDS CENTER CHESTNUT RUN PLAZA 721/2340 974 CENTRE ROAD, P.O. BOX 2915 WILMINGTON, DE 19805 JOHN C DERUYTER 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. CL6137USNP 9317 EXAMINER HENDRICKSON, STUART L ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 09/12/2018 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): PTO-Legal.PRC@dupont.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN C. DERUYTER, ANDREW H. HEGGENSTALLER, STEVEN W. OGLE, STEPHANIE C. VRAKAS, and DAVID WILLIAM WOOD Appeal 2017-011359 Application 14/510, 145 Technology Center 1700 Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and MONTE T. SQUIRE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision finally rejecting claims 1, 3-6, and 27-33. 3 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our Decision refers to the Specification ("Spec.") filed October 9, 2014, the Examiner's Final Office Action ("Final Act.") dated August 17, 2016, Appellant's Appeal Brief ("Appeal Br.") filed January 9, 2017, the Examiner's Answer ("Ans.") dated July 13, 2017, and Appellant's Reply Brief ("Reply Br.") filed September 11, 2017. 2 Appellant is the Applicant, E. I. du Pont de Nemours and Company, which is identified in the Appeal Brief as the real party in interest (Appeal Br. 2). 3 Pending claims 11-26 have been withdrawn from consideration and are not before us on appeal (Final Act. 1 ). Appeal2017-011359 Application 14/510,145 STATEMENT OF THE CASE The invention relates to a composition containing ash from burning filter cake and, optionally lignocellulosic syrup, co-products of a process for the production of alcohol from a lignocellulosic biomass which is useful land applications (Spec. 2:7-13). Claims 1 and 28, reproduced below from the Claims Appendix to the Appeal Brief, are illustrative of the subject matter on appeal. The limitations at issue are italicized. 1. A composition comprising (i) ash produced by burning lignocellulosic filter cake and optionally lignocellulosic syrup, and (ii) combusted combustion enhancement material, wherein the filter cake and syrup are co-products of a process for the production of alcohol from a lignocellulosic biomass. 28. A composition comprising (i) ash produced by burning lignocellulosic filter cake and optionally lignocellulosic syrup, and (ii) additional syrup, wherein the filter cake and syrup are co-products of a process for the production of alcohol from a lignocellulosic biomass. REJECTIONS The Examiner maintains, and Appellant requests our review of, the following grounds of rejection: 1. Claims 1, 3---6, 27-29, and 31-33 under 35 U.S.C. § I02(a)(l) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as unpatentable over Griffin; 4 4 WO 2013/029171 Al, published March 7, 2013. The Examiner relies, without objection, on Griffin et al., US 9,102,951 B2, issued August 11, 2015 ("Griffin"), as an equivalent reference. 2 Appeal2017-011359 Application 14/510,145 2. Claims 1, 3-6, 27-29, and 31-33 under 35 U.S.C. § 103 as unpatentable over Griffin taken with Martinez; 5 and 3. Claims 1, 3-6, and 27-33 under 35 U.S.C. § 103 as unpatentable over Griffin taken with Martinez and Brown. 6 ANALYSIS For purposes of this appeal, to the extent that the claims are separately argued, we will address them separately consistent with 3 7 C.F .R. § 4I.37(c)(l)(iv). Appellant does not dispute the prior art status of the applied references. Claim 1 The Examiner finds, in Rejection 1, Griffin teaches burning the remains from a biomass-to-alcohol process to make ash (Ans. 1 ). The Examiner finds that there appears to be no difference between Griffin's ash and the ash as recited in claim 1, even though the process for producing each ash product may not be the same because the original starting material is not relevant and the syrup is optional (id.). In addition, the Examiner finds Griffin's extraneous salts meet the additive since the combustion of CaC03 results in CaO, which in water with the salts makes a Ca salt (id. at 1-2). In Rejection 2, the Examiner finds that, to the extent that Griffin fails to explicitly teach CaO, Griffin nonetheless teaches adding CaO to a fertilizer (Ans. 2). The Examiner concludes it would have been an obvious expedient to add CaO to Griffin's ash composition to make a better fertilizer (id.). 5 Martinez Garmendia, WO 2012/069665 Al, published May 31, 2012 ("Martinez"). 6 Brown, US 7,867,365 B2, issued January 11, 2011. 3 Appeal2017-011359 Application 14/510,145 In Rejection 3, the Examiner acknowledges that Griffin fails to teach the form 7 of the ash product, but nonetheless finds the form to be an obvious expedient given Griffin's teaching of recovering, selling, and transporting the ash (Ans. 2). Moreover, the Examiner finds Brown teaches the composition of a cake and other "leftovers," and concludes the use of Brown's material in Griffin's process "is an obvious expedient to recover a valuable product" (id.). Appellant argues that Griffin fails to teach or suggest the combusted combustion enhancement material of claim 1 (Appeal Br. 3, 4). Further, Appellant contends that Griffin removes salts generated during the process from the still bottoms because the presence of salts therein causes problems during incineration (id. at 3). Appellant notes that the combustion enhancement material is added to the combustion process to enhance or improve combustion (id.). Appellant additionally argues that an ash generated by burning the lignocellulosic filter cake, and optionally lignocellulosic syrup, is substantially different from Griffin's ash (Appeal Br. 4). Because Griffin removes salts from the still bottoms, Appellant urges that Griffin's ash contains little or no salts (id.). Appellant contends that the present invention, in contrast, does not remove inorganic salts prior to incineration and the resulting ash contains significant amounts of such salts including potassium chloride as well as mineral nutrients needed for plant growth such as sulfur, potassium, phosphorus, magnesium, and iron (id. at 5). 7 The Examiner's reference to the "form" of the ash product appears to be in reference to claim 30's recitation that "the composition is in the form of pellets, granules or briquettes." 4 Appeal2017-011359 Application 14/510,145 Appellant's arguments are not persuasive of reversible error. We begin, appropriately, with construing claim 1. See Oakley, Inc. v. Sunglass Hut Int'!, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness require comparison of the properly construed claims to the available prior art); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("Only when a claim is properly understood can a determination be made ... whether the prior art anticipates and/or renders obvious the claimed invention."). During examination, claim terms are given their broadest reasonable construction consistent with the specification. Under a broadest reasonable interpretation, words of the claim must be given their ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention, unless such meaning is inconsistent with the specification. Honeywell Int 'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). Here, claim 1 recites a composition comprising an ash produced by burning lignocellulosic filter cake and combusted combustion enhancement material (CEM), wherein the filter cake is a co-product of a process for the production of alcohol from a lignocellulosic biomass. The ash need not include burned lignocellulosic syrup because such syrup is optional. Moreover, claim 1 does not require that the CEM be added to the filter cake prior to burning; rather, the combusted CEM may be added to ash produced by burning only the filter cake. In addition, claim 1 neither requires inorganic salts nor excludes their removal prior to burning the filter cake. Indeed, claim 1 does not recite any specific compositional elements or molecules for the resulting composition. Claim 1 merely requires that the ash be produced by burning a filter cake from an alcohol from 5 Appeal2017-011359 Application 14/510,145 lignocellulosic biomass production process and that the composition includes a combusted CEM of unknown composition. Appellant discloses that a CEM is "any material that is added to the combustion process of the present invention that enhances or improves the combustion" (Spec. 7:6-8). Appellant further discloses that common CEMs "include but are not limited to calcined clay and limestone" (id. at 7:8-9). Appellant's Specification also teaches that any appropriate CEM may be added "such as sand, calcium carbonate, and calcined clay" (id. at 15 :4---6). Thus, although Appellant identifies several materials as examples of a suitable CEM, the CEM may be any material that enhances or improves combustion. Given this description of CEM, we note that the breadth of a combusted CEM is even greater because it covers any combustion product of any CEM. As indicated above, one possible CEM is a calcium carbonate or limestone material. The Examiner finds, without dispute, that burning of limestone results in CaO. As the Examiner finds, Griffin teaches that the feedstock for the lignocellulosic conversion process includes a variety of materials including calcium (Griffin 14:53-58). We note Griffin also teaches not only that lime is injected into the incinerator bed, but that the final product would include a mix of calcium sulfate and CaO (id. at Example 2, 17:48-50, 66). Griffin further teaches that, even where inorganic salts have been removed, the final ash product would contain some CaO (id. at Example 3, 19: 1-2). It is, therefore, clear that Griffin's ash contains CaO, which is the same material as combusted CEM where the CEM is limestone or calcium carbonate. 6 Appeal2017-011359 Application 14/510,145 We further note that Griffin teaches that the filter cake, prior to incineration contains sand (Griffin, Example 1, 15:58-59). Since sand is also one of the CE Ms Appellant's Specification teaches, the result of burning Griffin's filter cake would include combusted sand. Accordingly, we agree with the Examiner that Appellant's composition of claim 1 is indistinguishable from Griffin's ash product, either with or without removal of inorganic salts. Once the Examiner, as here, establishes a prima facie case of anticipation and/or obviousness, the burden to prove that Griffin's products do not necessarily or inherently possess the characteristics of the claimed product shifts to Appellant. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985). Appellant fails to direct our attention to persuasive technical reasoning or an evidentiary showing demonstrating that Griffin's product is not the same or similar to that claimed. We, therefore, affirm the Examiner's anticipation and obviousness rejections of claim 1. Claim 27 Claim 27 depends from claim 1 and further requires that the CEM is calcined clay or limestone. Appellant argues that Griffin fails to teach or suggest a CEM such as calcined clay or limestone (Appeal Br. 5). This argument is not persuasive of reversible error because, as set forth above, not only does Griffin teach that the filter cake includes calcium, Griffin specifically teaches the addition of lime to the incinerator bed and that the final ash product includes CaO, i.e., combusted limestone. We, therefore, affirm the Examiner's anticipation and obviousness rejections of claim 27. 7 Appeal2017-011359 Application 14/510,145 Claim 28 Independent claim 28, unlike claim 1, requires not only the ash produced by burning the lignocellulosic filter cake and optionally lignocellulosic syrup, but also additional lignocellulosic syrup. In other words, claim 28 recites a composition of ash and lignocellulosic syrup. Appellant argues that Griffin fails to teach such a combination (Appeal Br. 5). This argument is persuasive of reversible error. Claim 28, when properly construed as above, requires syrup in the final composition. The Examiner erroneously interprets claim 28 as not requiring the presence of syrup in the final composition, only a combustion product of syrup (Ans. 3). Moreover, the Examiner makes no findings regarding such a combination nor presents a conclusion that such a combination would have been obvious to one of ordinary skill in the art. As such, we cannot say that the Examiner has provided some articulated reasoning with sufficient rational underpinning to support the conclusion of obviousness. In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006) ("[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."), quoted with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Accordingly, we reverse the Examiner's obviousness rejection of claim 28, and claims 29-33 which depend therefrom. 8 Appeal2017-011359 Application 14/510,145 DECISION Upon consideration of the record, and for the reasons given above and in the Examiner's Answer, the decision of the Examiner rejecting claims 1, 3-6, and 27 under 35 U.S.C. § 103(a) as unpatentable over Griffin, alone or further taken with Martinez and Brown, is affirmed. However, for the reasons given in the Appeal and Reply Briefs, the decision of the Examiner rejecting claims 28-33 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation