Ex Parte Du et al

Patent Trial and Appeal Board

Aug 7, 2018

14005038 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/005,038 01/10/2014
20999 7590 08/09/2018
HAUG PARTNERS LLP
745 FIFTH A VENUE - 10th FLOOR
NEW YORK, NY 10151
FIRST NAMED INVENTOR
Wei Du
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.
326002-2001 5012
EXAMINER
CHONG, STEPHEN M
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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):
docket@haugpartners.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEI DU, DEHUA LIU, and LUOLE ZHU1
Appeal2017-008942
Application 14/005,038
Technology Center 1600
Before DONALD E. ADAMS, CHRISTOPHER G. P AULRAJ, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a method for preparing biodiesel. The Examiner's final rejection of
claims 1-10 under 35 U.S.C. § 103(a) is appealed. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse. 2
1 The Real Party in Interest is identified as "Tsinghua University." Br. 1.
2 Herein we have considered and refer to the Specification of Sept. 13, 2013
("Spec."), the Final Office Action of Feb. 24, 2016 ("Final Action"), the
Appeal Brief of Nov. 25, 2016 ("Br."), and the Examiner's Answer of Mar.
30, 2017 ("Answer"). No Reply Brief was filed.
Appeal2017-008942
Application 14/005,038
STATEMENT OF THE CASE
The Specification states, "[ t ]he present invention belongs to the
technical field of biofuel synthesis, in particular, it relates to a method for
preparing biodiesel using a liquid lipase in combination with an immobilized
lipase." Spec. 1. Relating to this generalization of the invention, the
Specification further states:
the invention at least has the following advantages and beneficial
effects: in the method of the invention for preparing biodiesel
using a liquid lipase in combination with an immobilized lipase,
no preprocessing is required for the oil and fat feedstock, and the
conversion ratio from oil and fat to biodiesel can reach more than
90%; in the later stage of catalysis process by immobilized
lipase, by introducing an online dehydration during the whole
process or part of the reaction process, the yield ofbiodiesel can
exceed 98%, and the acid value of the product can be less than
0.5mg KOH per gram of oil.
Id. at 4.
Independent claim 1 is representative and is reproduced below:
1. A method for preparing biodiesel, wherein said method
comprises steps of:
(1) adding oil and fat, short chain alcohol, water, and
liquid lipase into a single-stage or multi-stage reactor for
conducting a reaction, then separating the reaction liquid into a
heavy phase and a light phase; recovering and reusing the liquid
lipase in the heavy phase, and using the light phase for
subsequent conversion by immobilized lipase;
(2) flowing the light phase obtained in step (1) into a
single-stage or multi-stage reactor containing immobilized
lipase, and adding short chain alcohol for conducting a reaction;
wherein an online dehydration is carried out during the whole
reaction or part of the reaction.
Br. 15 (Claims App'x).
2
Appeal2017-008942
Application 14/005,038
The following rejection is on appeal:
Claims 1-10 stand rejected under 35 U.S.C. § 103(a) over CN '316, 3
CN '216, 4 and CN '322. 5 Answer 3.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419. However, "[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." Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). "Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious." In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
The Examiner determined the rejected claims would have been
obvious over the CN '316- CN '216- CN '322 prior art combination.
3 CN 100494316 C (pub. June 3, 2009) (English translation) ("CN '316").
4 CN 101358216 B (pub. Nov. 9, 2011) (English translation) ("CN '216").
5 CN 101418322 A (pub. Apr. 29, 2009) (English translation ("CN '322").
3
Appeal2017-008942
Application 14/005,038
Final Action 6-13 and Answer 3-10 (citing these references, essentially, in
their entireties).
Appellants argue that CN '316 teaches producing biodiesel from palm
oil using low-carbon alcohol and an immobilized lipase, but does not teach
using a liquid lipase followed by using an immobilized lipase and also
utilizing online dehydration during the reaction with immobilized lipase, as
claimed. Br. 10-11. Appellants argue CN '216 teaches producing biodiesel
with an enzymatic method involving online dehydration, but does not teach
using a liquid lipase followed by an immobilized lipase as claimed and as
not taught by CN '316. Id. at 11. Appellants further argue CN '322 teaches
producing biodiesel and recovering used liquid lipase for reuse, but does not
disclose using liquid lipase followed by immobilized lipase or online
dehydration during the immobilized lipase reaction as claimed and as not
taught by CN '316. Id.
As determined by the Examiner, CN '316 teaches processing palm oil,
water, an alcohol, e.g., methanol, with a solid (immobilized) and/or liquid
catalyst, e.g., lipase; this is followed by separating light and heavy phases of
the oil to produce biodiesel. However, there is no disclosure in this
reference of using two lipase catalyst steps, specifically where the first is
liquid lipase and the second is solid (immobilized) lipase reacted with a light
phase of the oil, nor is there a disclosure of online dehydration at any point
in the process. To the contrary, the reference suggests omitting a solid
catalyst in subsequent processing. CN '316, 2 ("The solid catalyst in
subsequent processing can be omitted in conventional processes, washing
") processes... . .
4
Appeal2017-008942
Application 14/005,038
CN '216 teaches that when processing biodiesel from oil using a solid,
immobilized enzyme, e.g., lipase, as a catalyst, it is important to use online
dehydration to greatly improve yield. Thus, as determined by the Examiner,
CN '216 supports combining such a dehydration step with the process of CN
'316 when an immobilized lipase is used (which would be before separation
of light and heavy phases). However, like CN '316, this reference does not
suggest two catalyst steps, the first one using a liquid and the second one
using a solid catalyst.
Finally, CN '322, like CN '316, teaches that both solid (immobilized)
and liquid (non-immobilized) lipases are used in the biodiesel production
industry, but teaches that immobilized lipases are costly to produce, and so it
is preferable to use liquid lipases, recover them, and reuse them. Thus, as
determined by the Examiner, this reference suggests recovering liquid
catalyst used in the process of CN '316 for reuse (but also suggests doing so
in lieu of using a solid catalyst at all). However, this reference, like the
others, does not teach or suggest a two-lipase-step process, first using a
liquid, then using a solid/immobilized lipase.
Because we agree with Appellants that the prior art combination does
not teach or suggest each element as claimed, as discussed above, we
conclude the Examiner has not established a prima facie case for
obviousness and, therefore, we reverse the rejection.
SUMMARY
The obviousness rejection is reversed.
REVERSED
5