Ex Parte Downey et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201712565839 (P.T.A.B. Feb. 16, 2017) Copy Citation 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. CIRS-1018US 1282 EXAMINER NEGIN, RUSSELL SCOTT ART UNIT PAPER NUMBER 1631 MAIL DATE DELIVERY MODE 12/565,839 09/24/2009 Robert A. Downey 22186 7590 02/16/2017 MENDELSOHN DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 312 PHILADELPHIA, PA 19102 02/16/2017 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 ROBERT A. DOWNEY and MARC WARE1 Appeal 2014-009861 Application 12/565,839 Technology Center 1600 Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and RYAN H. FLAX, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a bioconversion method, which have been rejected as anticipated or obvious, and for containing new matter. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification states that “indigenous syntrophic anaerobic microbes known as methanogenic consortia . . . have the ability to convert the carbon in coal, and other carbon-bearing materials, to methane.” (Spec. 1 Appellants identify the Real Party in Interest as Ciris Energy, Inc. (Appeal Br. 1.) Appeal 2014-009861 Application 12/565,839 15.) The Specification discloses a “mathematical calculation model. . . [that] enables the iterative prediction of a plurality of responses in terms of generation of a particular desirable component such as methane of the subterranean formation deposit in response to a range of assumed inputs.” (Id. 137.) Claims 2—27 are on appeal. Claims 8 and 18 are illustrative and read as follows (emphasis added): 8. A process for producing a gaseous product by bioconversion of a subterranean carbonaceous deposit, comprising: bioconverting a subterranean carbonaceous deposit to the gaseous product by use of a methanogenic consortia; said bioconverting being operated using operating conditions based on a mathematical simulation that predicts the production of the gaseous product, said mathematical simulation including predicting production of the gaseous product by use of at least (i) one or more physical properties of the deposit; (ii) one or more changes in one or more physical properties of the deposit as result of said bioconverting; (iii) one or more operating conditions of the process; and (iv) at least one of growth or decay of the methanogenic consortia. 18. The process of claim 8 wherein the simulation comprises the simultaneous solution of equations 1—8. Claims 21 and 27 are also independent. Claim 21 is similar to claim 8 and also requires operating a bioconversion based on a mathematical simulation that predicts production of a gaseous product, based on similar parameters. Claim 27 is directed to a similar process, but also requires the mathematical simulation to comprise “the simultaneous solution of equations 1—8.” 2 Appeal 2014-009861 Application 12/565,839 The claims stand rejected as follows: Claims 18 and 27 under 35 U.S.C. § 112, first paragraph, for lack of adequate written description (new matter) (Final Act.2 2); Claims 3, 4, 8, 10, and 12—14 under 35 U.S.C. § 102(b) as anticipated by Larter3 with evidence provided by Microorganism4 (Final Act. 7); Claims 9 and 11 under 35 U.S.C. § 103(a) based on Larter, Microorganism, and Mishra5 (Final Act. 12); Claim 7 under 35 U.S.C. § 103(a) based on Larter, Microorganism, and Dahm6 (Final Act. 14); Claims 2, 5, 6, and 16 under 35 U.S.C. § 103(a) based on Larter, Microorganism, and Watts7 (Final Act. 15); Claims 15 and 21—26 under 35 U.S.C. § 103(a) based on Larter, Microorganism, Watts, and Mishra (Final Act. 17); and Claim 17 under 35 U.S.C. § 103(a) based on Larter, Microorganism, Higgins,8 and Lee9 (Final Act. 20). 2 Office Action mailed June 5, 2013. 3 WO 2005/115649 Al, pub. Dec. 8, 2005 4 Describe favourable factors for the growth of micro-organisms and explain how materials and apparatus can be sterilized before use, from The Hutchinson Unabridged Encyclopedia with Atlas and Weather Guide (2010) 5 Mishra et al., Evaluation of Inoculum Addition to Stimulate In Situ Bioremediation of Oily-Sludge-Contaminated Soil, 67 Applied and Environmental Microbiology 1675-1681 (2001) 6 US 5,640,331, iss. June 17,1997 7 WO 00/37898, pub. June 29, 2000 8 US 3,794,116, iss. Feb. 26, 1974 9 US 2005/0201831 Al, pub. Sept. 15, 2005 3 Appeal 2014-009861 Application 12/565,839 I The Examiner has rejected claims 18 and 27 on the basis that the limitation of “the simultaneous solution of equations 1—8” is new matter. (Final Act. 2—3.) The Examiner reasons that original claim 18 recites using a different simultaneous solution using a system of twelve (and not eight) equations. Consequently, the original set of claims does not have support for solving the relied upon system of EIGHT equations simultaneously. Likewise, the original specification only discloses simultaneous solutions of equations in paragraph 47 on page 13 of the specification. However, in this paragraph, the specification is silent on how many (eight equations, more than eight equations, or less than eight equations) are solved simultaneously. {Id. at 3.) Appellants argue that “[t]he only issue is whether claims 18 and 27 are consistent with and are described by the specification as filed.” (Appeal Br. 26.) Appellants point out that claims 18 and 27 “each recite a mathematical simulation that comprises the simultaneous solution of equations 1-8 and that these equations are disclosed in the original as filed specification on pages 29-32.” {Id.) We agree with Appellants that the disputed limitation is supported by an adequate written description in the Specification. As Appellants point out, Equations 1—8 are shown and described on pages 29-32 of the Specification, which also states that “[t]he calculations of the calculation model are based on simultaneous equation solutions of each of certain of the equations using identical parameters for all equations employing that parameter.” (Spec. 147.) 4 Appeal 2014-009861 Application 12/565,839 Thus, a person of ordinary skill in the art would have recognized that Appellants were in possession of a method that included simultaneous solution of Equations 1—8 at the time this application was filed. Whether Appellants were also in possession of a method that involved simultaneous solution of twelve equations, as recited in original claim 18, is not relevant to the issue of whether claims 18 and 27, as now written, are supported by an adequate written description in the Specification. The new matter rejection is reversed. II The Examiner has rejected claims 3, 4, 8, 10, and 12—14 as anticipated by Larter, as evidenced by Microorganism. (Final Act. 8.) The Examiner finds that “the schematic in Figure 2 of Larter et al. is ... a stoichiometric set of chemical equations that mathematically simulates and predicts the product of the gaseous product (i.e. methane).” {Id. at 8—9.) The Examiner finds that the process shown in Larter’s Figure 2 includes all of the parameters recited in claim 8, including bacterial growth, because Microorganism provides evidence that fermentation results in growth of microorganisms. {Id. at 9.) Appellants argue that “[tjhere is no mathematics or mathematical simulation in the Larter Fig. 2 chemical reaction” because a “chemical equation only illustrates that when defined reactants react with each other they produce a defined product(s); therefore, a chemical equation is not a mathematical simulation in that it does not involve a mathematical calculation.” (Appeal Br. 19.) Appellants also argue that “Larter has no 5 Appeal 2014-009861 Application 12/565,839 disclosure of operating a bioconversion using operating conditions based on a mathematical simulation that predicts production of product.” {Id. at 20.) We agree with Appellants that the Examiner has not shown that Larter discloses a process meeting the limitations of claim 8. The Examiner points to Larter’s Figure 2, which is reproduced below, as showing the mathematical simulation of claim 8: Petroleum Hydrocarbons Non-hydrocarbons syntrophs fermenters C02 + H;;+ A pressure + acetate Sulphate reducing j bacteria (SRBs) | H2St HjjOt C02 mefhan&gens ...................CH 4 / methanotrophs Rg. .2 Figure 2 shows “the processes involved in methane production from petroleum.” (Larter 10:9—10.) In more detail, Figure 2 shows that petroleum hydrocarbons and non-hydrocarbons are converted by syntrophs and fermenters to produce CO2, H2, acetate and a change in pressure; that methanogens convert those products to CH4 (methane); that sulphate reducing bacteria convert the original products to H2S, H20, and C02; and that methanotrophs convert methane to those same products. However, Figure 2 provides no indication of the rate of any of these conversions or any other data that would allow prediction of any particular product that would be expected under particular reaction conditions over a particular amount of time. Thus, regardless of whether Larter’s chemical reaction would be considered a “mathematical equation,” as the Examiner 6 Appeal 2014-009861 Application 12/565,839 interprets it (Ans. 3), it does not allows predicting the production of a gaseous product, as required by claim 8. We therefore reverse the rejection of claim 8 and dependent claims 3,4, 10, and 12—14 as anticipated by Larter. Ill The Examiner has rejected claims 2, 5, 6, 7, 9, 11, 15—17, and 21—26 as obvious based on Larter and Microorganism, further combined with one or more of Mishra, Dahm, Watts, Higgins, and Lee. Each of the obviousness rejections relies on the Examiner’s finding that Larter discloses a process meeting all the limitations of claim 8. (Final Act. 12—21.)10 We therefore reverse all of the § 103 rejections for the same reason discussed above. SUMMARY We reverse all of the rejections on appeal. REVERSED 10 Although the Examiner rejects independent claim 21 as obvious based on Larter, Microorganism, Watts, and Mishra, he does not point to any teachings in Watts or Mishra that make up for the deficiency in Larter. (See Final Act. 17—20.) 7 Copy with citationCopy as parenthetical citation