Ex Parte Lacaze et al

Patent Trial and Appeal Board

Mar 19, 2018

13535594 (P.T.A.B. Mar. 19, 2018)

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.
13/535,594 06/28/2012 Alberto Daniel Lacaze Alberto-RAH 7474
37476 7590 03/20/2018
WHITE-WELKER & WELKER, LLC
P.O. BOX 199
CLEAR SPRING, MD 21722-0199
EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
03/20/2018 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 ALBERTO DANIEL LACAZE
and KARL NICHOLAS MURPHY
____________

Appeal 2017-005765
Application 13/535,594
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 the final rejections of
claims 1–10, 12–14, and 16–19. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a method and system for robotic
algae harvest for use in bio-fuel production and other applications.
(Spec. 1).

1 Appellants identify the real parties in interest as Alberto Daniel Lacaze and
Karl Nicholas Murphy. (Br. 3).
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Claim 1 is illustrative (italics added):
1. A method for robotic algae harvest comprising the steps of:
transporting collected carbon dioxide to an algae broth location;
said algae broth location being an ocean going platform;
a set of floating interconnecting photobioreactors creating
the ocean going platform;
continuously feeding and re-circulating the algae broth through
a plurality of photobioreactors;
suspending said photobioreactors and the algae broth in the
ocean;
transforming the CO2 into biomass in a continuous process of
photosynthesis;
changing the buoyancy of the platform and photobioreactors
using the CO2 available;
extracting algae;
transferring the extracted algae using wave energy; and
processing the extracted algae into a stable mix of oil and one
or more by-products off-shore.
Appellants appeal the following rejections:
1. Claims 1–10, 12–14, and 16–19 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
2. Claims 1–10, 12–14, and 16–19 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to point out and particularly claim the
subject matter applicant regards as the invention.
3. Claims 1, 2, 8–10, 12–14, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sanchez-Pina et al. (US 2010/0105129
A1, published Apr. 29, 2010, “Sanchez-Pina”) with evidence from
Wittwer et al. (18 Econ. Botany 34–56 (1964), “Wittwer”), in view of
Oyler (US 7,977,076 B2, issued July 12, 2011), and Khan et al. (US
2007/0130929 A1, published June 14, 2007, “Khan”).
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4. Claims 3–5 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Sanchez-Pina with evidence from Wittwer, in view of Oyler, Khan,
and Knapp (Offshore Aquaculture in the United States: Economic
Considerations, Implications & Opportunities (Pre-Publication Copy),
pp. 15–50 (2008)).
5. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sanchez-Pina with evidence from Wittwer, in view of Oyler, Khan,
Knapp, and Bell (US 2009/0107107 A1, published Apr. 30, 2009).
6. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sanchez-Pina with evidence from Wittwer, in view of Oyler, Khan,
Knapp, and Hagiwara (US 7,214,378 B2, issued May 8, 2007).
7. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sanchez-Pina with evidence from Wittwer, in view of Oyler, Khan,
and Decker (deceased) et al. (US 4,156,997, issued June 5, 1979,
“Decker”).
8. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sanchez-Pina with evidence from Wittwer, in view
of Oyler, Khan, Decker, and Hardman et al. (US 3,934,168, issued
Jan. 20, 1976, “Hardman”).
Regarding rejections (1) and (2), Appellants rely on arguments made
regarding independent claim 1 rather than provide separate arguments. (Br.
10–12). Regarding rejection (3), Appellants argue claims 1, 2, 9, 12, and 13
as a group, claims 10 and 14 as a group, and each of claims 8 and 16
separately. (Br. 12–20). Regarding rejections (4)–(6), Appellants rely on
arguments made regarding claim 3 rather than provide separate arguments.
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(Br. 20–21). Regarding rejections (7) and (8), Appellants argue each of
claims 17, 18, and 19 separately. (Br. 21–24).
We select claims 1 and 10 as representative of each of their respective
argued claims grouping for rejection (3).
FINDINGS OF FACT & ANALYSIS
Rejection (1): 35 U.S.C. § 112, ¶ 1, Enablement
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors,
which are illustrative, not mandatory, see Amgen, Inc. v. Chugai Pharm. Co.,
927 F.2d 1200, 1213 (Fed. Cir. 1991), to be considered in determining
whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the
art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Enablement is a question
of law. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). See also MPEP
§ 2164.08 (“All questions of enablement are evaluated against the claimed
subject matter. The focus of the examination inquiry is whether the
substantial scope of the claim is enabled.”).
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In this instance, the Examiner finds that
[t]he claims are extremely broad and cover any and all ways of
collecting or re-capturing CO2,; continuously feeding and re-
circulating the algae broth through a plurality of
photobioreactors; extracting algae; transferring the extracted
algae using wave energy; processing the extracted algae into a
stable mix of oil and one or more by-products off-shore and on-
shore; autonomously moving the platform of photobioreactors;
generating energy from waves, wind, or solar power; etc.
(Final Act. 3). The Examiner further finds that Appellants have “provided
no direction or working examples on how any of the method steps claimed
can be accomplished.” (Id.). In particular, the Examiner finds that “the
prior art does not disclose predictable methods of using floating
photobioreactors in all the ways claimed.” (Id.). Therefore, according to the
Examiner, “the quantity of experimentation needed to use the invention
based on the content of the disclosure is extremely high and undue.” (Id.).
The Examiner, however, does not provide persuasive analysis to
support this determination.
Indeed, contrary to the Examiner’s finding that the prior art is silent
with respect to predictable methods of using floating bioreactors, Appellants
correctly point out (Br. 12) that the prior art includes US 8,161,679;
US 6,328,165; and US 2007/0209278. Appellants’ arguments are persuasive
that this prior art “represent[s] known floating photobioreactors as known
and used in a related manner.” (Id.). In addition, the Specification discloses
several suitable microalgae species and experimental results from
microalgae harvesting in open ponds and land based photobioreactors.
(Spec. 8; Figs. 2, 3).
Thus, while the Examiner makes factual findings applicable to some
Wands factors such as the breadth of the claims; the amount of direction or
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guidance presented; and the presence or absence of working examples, the
Examiner has failed to make sufficient factual findings applicable to the
other relevant Wands factors to show that the claimed inventions would
require undue experimentation to make or use them. Indeed, in reference to
our above discussion, the Examiner fails to provide sufficient findings or
analysis regarding the relevant skill of those in the art; the relevant state of
the prior art in the automated algae harvesting field; and the relevant level of
predictability in the automated algae harvesting art.
Because the Examiner’s analysis does not make sufficient factual
findings applicable to the relevant Wands factors to prove that the claimed
inventions are not enabled, we reverse the Examiner’s rejection of claim 1
and its dependent claims 2–10, 12–14, and 16–19 under 35 U.S.C. § 112,
first paragraph.
Rejection (2): 35 U.S.C. § 112, ¶ 2, Indefiniteness
The Examiner determines that the limitation “changing the buoyancy
of the platform and photobioreactors using the CO2 available” recited in
claim 1 is indefinite. (Final Act. 4 (emphasis added)). The Examiner
concludes that “[i]t is unclear how or from where this CO2 is available
because in the previous step it was transformed ‘into biomass in a
continuous process of photosynthesis.’” (Id.).
Appellants respond by noting that the Robotic Algae Harvester (RAH)
uses “the amount of CO2 available in the PBR [i.e., photobioreactor] to
change its buoyancy.” (Br. 12). Appellants further note that the RAH
includes “round/oval compartments[, which] are air pockets used to provide
buoyancy control.” (Id. (citing Spec. 12)).
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We agree with the Examiner’s determination that the language “using
the CO2 available” in claim 1 is indefinite. (Final Act. 5). Although
Appellants refer to the Specification as showing that the RAH uses CO2 in
the PBR and the purpose for doing so (Br. 12; Spec. 12), Appellants have
not adequately explained how this disclosure provides a basis for
understanding which CO2 is available if it has been previously transformed
into biomass. In other words, Appellants have not addressed the issue raised
by the Examiner.
Accordingly, we affirm the Examiner’s rejection of claim 1 and its
dependent claims 2–10, 12–14, and 16–19 under 35 U.S.C. § 112, second
paragraph, based on the disputed language “using the CO2 available” of
independent claim 1 for the reasons presented above and given by the
Examiner.
Rejection (3): 35 U.S.C. § 103(a)
Claims 1, 2, 9, 12, and 13
The Examiner finds that Sanchez-Pina teaches all the method steps of
claim 1, except: (i) processing an algal biomass into a stable mix of oil and
one or more by-products off-shore and (ii) extracting algae, then transferring
the extracted algae using wave energy. (Final Act. 4–5).
With respect to (i), the Examiner finds that Oyler teaches the
production of bio-fuels and other by-products from an algal biomass in an
integrated process. (Id. at 5). The Examiner concludes that it would have
been obvious for the ordinary skilled artisan to combine the teachings of
Sanchez-Pina with Oyler because the latter teaches “an efficient process for
the conversion of algae to biofuels.” (Id.).
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With regard to (ii), the Examiner finds that Khan teaches a system and
method of using wave energy on a floating platform to produce compressed
air. (Id.). The Examiner concludes that it would have been obvious for the
ordinary skilled artisan to “modify the teachings of Sanchez-Pina[] . . . in
view of Oyler, to use wave energy to produce compressed air by as taught by
Khan[] to transfer the algae because it would reduce the energy consumption
of the system of Sanchez[-Pina].” (Id.).
Appellants argue that the Examiner’s combination of the teachings of
Sanchez-Pina, Oyler, and Kahn is improper because “such a combination
would result in a bizarre situation where an immobile platform . . . is
anchored and can only move up or down adjusting depth[], but is not mobile
like the present invention.” (Br. 12–13). Appellants contend that the present
invention requires that floating photobioreactors “use wave energy to move
to the northern hemisphere in the northern summer[,] to the southern
hemisphere in the northern winter[,] and vice versa[,] to be continually in a
growing season for the algae.” (Id. at 13). According to Appellants, such
mobility would have frustrated the purpose of Sanchez-Pina’s anchored,
immobile platform. (Id.).
The Examiner states that Appellants argue limitations not found in the
claims, which are silent regarding the seasonally dependent mobility of
floating photobioreactors across hemispheres (Ans. 6). We agree.
Furthermore, we agree with the Examiner that Sanchez-Pina merely teaches
“that only one embodiment of their system ‘may include a plurality of
anchors.’” (Id. (citing Sanchez-Pina ¶ 43 (emphasis added))). Therefore,
Appellants have not persuasively argued that removal of these anchors
would frustrate the purpose of Sanchez-Pina’s system.
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Claim 8
The Examiner finds Sanchez-Pina teaches that the location of the
disclosed platform “can be automatically controlled by raising and lowering
the photobioreactors on the platform depending on the conditions.” (Ans.
6). According to the Examiner, these “different depths [would] have
different amounts of photosynthetically active radiation” and, thus, teaches
or suggests the claimed “zones” limitation. (Id.).
Appellants similarly argue, as set forth above regarding claim 1, that
Sanchez-Pina does not teach the disputed limitation because changing the
depth of the platform is not the same as moving the platform to a new
location. (Br. 14). Appellants further argue that the anchored feature of
“Sanchez-Pina explicitly teaches away from” autonomous location control
“by moving it to zones with photosynthetically active radiation; and
submerging the photobioreactors based on the weather or sea conditions.”
(Id. at 15).
For the reasons set forth above regarding claim 1, Appellants’
arguments urging reversal of the obviousness rejection to claim 8 are
similarly unpersuasive. Simply put, Sanchez-Pina does not require that
anchors must secure the system to the sea floor. (Sanchez-Pina ¶ 43).
Furthermore, we agree with the Examiner that Appellants’ definition
of a zone as a new location on the ocean’s surface is neither found in the
claims, nor supported by the Specification. (Ans. 7). Therefore, we do not
find that Sanchez-Pina’s disclosure teaches away; it does not indicate that
“the line of development flowing from the reference’s disclosure is unlikely
to be productive of the result sought by applicant.” In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994).
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Claims 10 and 14
The Examiner finds that, although Sanchez-Pina does not use wave
energy, “with the increasing cost of energy and the concerns of greenhouse
gases produced by fossil fuels to generate energy, the method of Sanchez-
Pina et al. is ready for improvement by using wave energy.” (Final Act.
6, 7).
Appellants argue that because the Examiner has not provided support
for this position, the Examiner’s application of official notice without
documentary evidence is improper. (Br. 15).
We are not persuaded by Appellants’ argument because, inter alia,
Appellants explicitly admit that Sanchez-Pina is ready for improvement by
using wave energy for the reasons forth by the Examiner. (Id. at 13; see also
M.P.E.P. § 2141.III.(D) (“Exemplary rationales that may support a
conclusion of obvious” include “[a]pplying a known technique to a known
device (method . . . ) ready for improvement to yield predictable results”)).
Furthermore, the Examiner has identified support in the record evidence for
the determination that it would have been obvious to modify Sanchez-Pina,
in view of Oyler and Khan, which teaches a system and method of using
wave energy on a floating platform to produce compressed air. (Final Act.
5–6; Ans. 10 (citing Khan Abstract)). Therefore, Appellants’ arguments
have not identified reversible error in the Examiner’s determination that the
applied prior art would have rendered claims 10 and 11 obvious.
Claim 16
The Examiner finds that Sanchez-Pina teaches triangular-shaped
bioreactors. (Final Act 7). The Examiner determines that “[t]he
organization of triangular bioreactors into hexagons is merely a design
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choice, one which is prima facie obvious for one of ordinary skill in the art
without undue experimentation.” (Id.).
In response, Appellants argue that “(t)he specific arrangement is based
on complex fluid dynamic considerations, not the mere trial and error of
building a multi-million dollar platform, of which only on [sic] might be
feasably [sic] constructed, multiple times to determine which arrangement
might be the most resilient to sea forces.” (Br. 16).
Appellants proffer no evidence to substantiate the mere attorney
argument that using triangular shaped photobioreactors organized into
hexagons is only possible using “complex fluid dynamic considerations.”
(Id.). Arguments of counsel cannot take the place of evidence in the record.
In re Schulze, 346 F.2d 600, 602 (CCPA 1965). In our view, one of ordinary
skill in the art would have combined the teachings of Sanchez-Pina, Oyler,
and Khan to achieve the organization of triangular bioreactors into hexagons
by design choice, as the Examiner finds.
On this record, we affirm the Examiner’s § 103 rejection of claims 1,
2, 8–10, 12–14, and 16 over Sanchez-Pina with evidence from Wittwer, in
view of Oyler and Khan for the reasons presented above and given by the
Examiner.
Rejections (4)–(6): 35 U.S.C. § 103(a)
Claims 3–7
With regard to the claimed steps requiring transporting extracted algae
onshore for further bio-fuel processing, Appellants argue that “the Examiner
cannot find any prior art teach [sic] or support for the combination of the
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references and has merely made up motivation, which actually teaches away
from the entire concept and claims of the present invention.” (Br. 9).
Appellants’ arguments are not persuasive. As the Examiner
determined, it would have been obvious for the ordinary skilled artisan to
“situate bio-fuels processing facilities on-shore and transport the produced
and collected biomass on-shore because the fabrication of off-shore facilities
to process biomass into bio-fuels is more expensive when compared to
fabricating similar facilities on-shore.” (Ans. 9 (citing Knapp 19)). Knapp
explicitly discloses that “[c]osts of production are relatively low for a limited
number of inshore sites with low exposure to waves and wind,” whereas
when “farming expands to offshore areas with high exposure, costs
increase.” (Knapp 19). Therefore, we do not find that Knapp’s disclosure
teaches away—such disclosure would likely have produced situating bio-
fuels processing facilities on-shore and transporting the produced and
collected biomass on-shore, as claimed by Appellants. See Gurley, 27 F.3d
at 553.
On this record, we affirm the Examiner’s § 103 rejections (4)–(6) of
claims 3–7 over Sanchez-Pina with evidence from Wittwer, in view of
Oyler, Khan, Knapp, and either with or without Bell or Hagiwara for the
reasons presented above and given by the Examiner.
Rejection (7): 35 U.S.C. § 103(a)
Claim 17
The Examiner finds that Decker teaches the use of fluid filled tubes
for providing compression support. (Final Act. 9–10). The Examiner
determines that it would have been obvious for one of ordinary skill in the
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art to combine Sanchez-Pina, in view of Oyler and Khan, with Decker’s
fluid filled tubes “because it provides a light weight structural unit.” (Id.
at 10).
Appellants argue that Decker is non-analogous art because it: (i)
“makes no mention, suggestion, or teaching for off-shore platform of any
kind” and (ii) “is not related to the particular problem, which is how to
control and strengthen a floating structure since all the structures mentioned
in Decker are land based.” (Br. 22).
Appellants’ analysis does not explain why Decker is not concerned
with the same field of endeavor, namely the field of structural designs for
supporting structures, regardless of where that structure is situated.
Furthermore, Appellants do not persuasively explain why Decker is not
reasonably pertinent to Appellants’ problem (i.e., providing compression
support of fluid filled tubes regardless of whether they are on-shore or off-
shore). Accordingly, we find that Decker is in the same field of endeavor,
and is also reasonably pertinent to Appellant’s problem, and, therefore, is
analogous art.
On this record, we affirm the Examiner’s § 103 rejection of claim 17
over Sanchez-Pina with evidence from Wittwer, in view of Oyler, Khan, and
Decker for the reasons presented above and given by the Examiner.
Rejection (8): 35 U.S.C. § 103(a)
Claim 18
The Examiner finds that Hardman teaches the use of tensioned wire
frame supports for tubes. (Final Act. 10). The Examiner determines that it
would have been obvious for one of ordinary skill in the art to combine
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Sanchez-Pina, in view of Oyler, Kahn, and Decker, with Hardman’s
tensioned wire frame supports for tubes “because it provides extra support
from adverse oceanic conditions.” (Id.).
Appellants argue that Hardman is non-analogous art because it:
(i) belongs to the patent classification of Lighting Arresters, which is
“wholly unrelated” to the instant field of endeavor of off-shore algae
farming and (ii) is “wholly incompatible” with “designing a float and core
for submersion in the open ocean.” (Br. 23). According to Appellants,
Hardman is merely “directed to a grid electrode for an electron tube with
planar electrodes [that] consists of a planar array of fine wires mounted on a
support frame.” (Id.).
Appellants’ arguments are not persuasive. The patent classification
system does not control the analogous art inquiry. See, e.g., In re Mlot-
Fijalkowski, 676 F.2d 666, 669 n.5 (CCPA 1982); In re Ellis, 476 F.2d 1370,
1371–72 (CCPA 1973). We agree with the Examiner that Hardman
“demonstrate[s] that the use of tensioned wire frame supports for tubes is
well known.” (Ans. 9). Furthermore, Appellants do not explain why
Hardman’s wires mounted on a support frame would not be reasonably
pertinent to Appellants’ problem, namely providing extra support from
adverse oceanic conditions. Accordingly, we find that Hardman is
reasonably pertinent to Appellant’s problem and, thus, is analogous art.
Claim 19
Claim 19 recites the limitation “wherein each triangle shaped
photobioreactor includes air pockets to provide buoyancy control.” (Br. 26
(Claims App.).
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The Examiner finds that Sanchez-Pina teaches “that the
photobioreactor has a depth controller (26), which meets the claimed
limitation of an air pocket, into which air is introduced.” (Final Act. 10).
Appellants argue that depth controller (26) is distinguished from the
instant claim 19 because “[i]n the present invention air is added directly to
the photobioreactors, not pumped into other platform structures such as
‘depth controllers 26.’” (Br. 23). Appellants further argue that Sanchez-
Pina teaches away from the present invention because such air pumping into
photobioreactors “would risk contaminating the algae or affecting the
growing conditions of the algae and carbon dioxide levels which are being
strictly controlled to provide optimum growing conditions.” (Id.).
We are not persuaded by Appellants’ arguments. First, Appellants’
attempt to distinguish claim 19 from depth controller (26) argues limitations
not found in the claim. Second, Appellants proffer no evidence to
substantiate the mere attorney argument that air pumping into
photobioreactors would disrupt optimal algae growing conditions.
Arguments of counsel cannot take the place of evidence in the record. See
Schulze, 346 F.2d at 602.
On this record, we affirm the Examiner’s § 103 rejection of claims 18
and 19 over Sanchez-Pina with evidence from Wittwer, in view of Oyler,
Khan, Decker, and Hardman for the reasons presented above and given by
the Examiner.
DECISION
The Examiner’s decision is affirmed.
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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)(iv).
ORDER
AFFIRMED