Ex Parte Mecham

Board of Patent Appeals and Interferences

Feb 23, 2010

11281965 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LORRIE ELMER MECHAM
__________

Appeal 2009-003070
Application 11/281,965
Technology Center 1700
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Decided: February 23, 2010
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Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 31-36. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

Appeal 2009-003070
Application 11/281,965

Claims 31 and 36, reproduced below, are representative of the subject
matter on appeal.
31. A fuel from which bacteria have been separated out
following fermentation to achieve a level of no more than 100
CFUs/ml, and wherein the fuel is reclaimed or renewable.

36. The fuel of claim 31 wherein is other than fermentation
derived ethanol.

App. Br., Claims Appendix.1
The following Examiner’s rejections are before us on appeal:
Claims 31 and 36 are rejected under 35 U.S.C. § 112, first paragraph,
based on the written description requirement.
Claims 31-35 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Maye.2
B. ISSUES
Does the disclosure of the application, as originally filed, provide
written description support for the step of separating out bacteria following
fermentation as recited in claim 31 and fermentation derived fuels other than
ethanol as recited in claim 36?
Does Maye render obvious a fuel that contains viable bacteria in an
amount of no more than 100 CFUs/ml as recited in claim 31?
C. FINDINGS OF FACT
The Appellant discloses that many fuels, especially reclaimed or
renewable fuels such as biodiesel and fermentation derived ethanol, are
heavily contaminated. Spec. 1:5-6.

1 Appeal Brief dated July 7, 2008.
2 US 2004/0044087 A1 published March 4, 2004.
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Application 11/281,965

The Appellant discloses that there is a need for a method for cleaning
dirty fuels. Spec. 2:9-10.
According to the Appellant’s Specification, the present invention
provides a method for cleaning dirty fuel by reducing microbial
contamination. Spec. 2:12-17.
The Appellant discloses that preferred fuels contain no more than
1000 CFUs/ml of microbial contamination, more preferably no more than
100 CFUs/ml of microbial contamination. Spec. 2:22-24.
A CFU is said to be a colony forming unit, as defined by the U.S.
Department of Agriculture. Spec. 2:17-18.
The Appellant discloses that all types of fuel are contemplated in the
present invention, including agriculturally based compositions, such as
biodiesel, ethanol, olive, soybean, cotton, rapeseed, safflower, corn, and
other vegetable oils. Spec. 2:19-20, 4:19-23.
Maye discloses that “best ethanol yields were achieved when the
viable number of bacteria was reduced below 104 CFU/mL . . . .” Maye,
para., [0016].
D. DISCUSSION
1. Issue (1)
a. Principles of law
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph is whether the disclosure of
an application, as originally filed, reasonably conveys to one of ordinary
skill in the art that the inventor had possession at that time of the later
claimed subject matter. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
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Application 11/281,965

“[T]he invention claimed does not have to be described in ipsis verbis
in order to satisfy the description requirement of § 112.” In re Lukach, 442
F.2d 967, 969 (CCPA 1971). However, the description must be sufficiently
clear that one of ordinary skill in the art would have recognized from the
disclosure that the applicant invented the later claimed subject matter. In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976).
b. Analysis
The Examiner contends that “[t]he original filed specification does not
support the bacteria having been separated out following fermentation” as
recited in claim 31. Ans. 3.3 In particular, the Examiner argues that the
original disclosure does not provide written description support for a fuel
produced by a fermentation process. Ans. 5.
The Appellant contends that the Specification discloses a number of
fuels, including some agriculturally based compositions created through a
fermentation process. The Appellant directs our attention to page 4, lines
19-30 of the Specification for support. App. Br. 3.
According to the original disclosure, contemplated fuels include
agriculturally based compositions, such as ethanol. Spec. 4:19-23. The
Appellant also discloses that an object of the invention is to clean
contaminated fuels, and fermentation derived ethanol is described as a
contaminated fuel. See, e.g., Spec. 1:5-6, 2:6-10. Based on these
disclosures, we find that the original disclosure provides written description
support for cleaning a fuel produced by a fermentation process, i.e.,
fermentation derived ethanol.

3 Examiner’s Answer dated August 4, 2008.
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Application 11/281,965

The Examiner also contends that the original disclosure does not
provide written description support for claim 36. Ans. 3.
Claim 36 depends from claim 31 and recites that the fuel is “other
than fermentation derived ethanol.” We interpret claim 36 as reciting a fuel
from which bacteria have been separated out following fermentation wherein
the fermentation derived fuel is other than fermentation derived ethanol.
Referring to page 4, lines 18-30 of the Specification, the Appellant
argues that the Specification discloses a number of fuels that include “both
fermentation derived ethanol, and things other than fermentation derived
ethanol.” Reply Br. 2.4 However, the Appellant has failed to direct us to
any evidence establishing that the original disclosure describes, to a person
having ordinary skill in the art, a fuel, other than ethanol, that is produced by
a fermentation process.
In sum, the original disclosure provides written description support for
the subject matter of claim 31 but does not provide written description
support for the subject matter of claim 36.
2. Issue (2)
The Examiner found:
Maye teaches six hop acids that are effective in inhibiting the
growth of bacteria common to fuel ethanol production by
fermentation (see abstract). Maye teaches that the best ethanol
yields were achieved when the viable number of bacteria was
reduced below 104 CFU/ml (see paragraph 0016).

Ans. 4.
The Appellant argues that “104 CFU/ml” appears to be a
typographical error which should read “104 CFU/ml.” App. Br. 4; Reply Br.

4 Reply Brief dated October 6, 2008.
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Application 11/281,965

3. However, the Appellant argues that even if “104 CFU/ml” is not a
typographical error, Maye only teaches reducing the viable amount of
bacteria to below 104 CFU/ml. The Appellant argues that the process used
by Maye kills the bacteria but does not remove the bacteria as taught in the
Appellant’s invention. App. Br. 4.
The Appellant attempts to distinguish the fuel disclosed in Maye from
the Appellant’s fuel by arguing that Maye uses a different process than the
Appellant to produce the disclosed fuel. App. Br. 4. However, claim 31 is
written in product-by-process form, and the patentability of a product recited
in a product-by-process claim is determined based on the product, not on the
method of making the product. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985).
The fuel recited in claim 31 is produced by a process that results in a
level of viable bacteria within a range of “no more than 100 CFUs/ml,” i.e.,
0 to 100 CFUs/ml. Claim 31 does not recite that the process results in any
other bacteria levels in the fuel, such as the level of nonviable or dead
bacteria. Thus, we conclude that claim 31 does not exclude a fuel that
contains a level of viable bacteria within the claimed range as well as an
amount of nonviable or dead bacteria.
Maye discloses that “best ethanol yields were achieved when the
viable number of bacteria was reduced below 104 CFU/mL.” Maye, para.
[0116]. The Appellant has not come forward with timely evidence or an
argument explaining why the “104” would have been recognized as a
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Application 11/281,965

typographical error by a person having ordinary skill in the art.5 Thus, the
Examiner’s interpretation has not been shown to be erroneous.
Moreover, regardless of whether Maye describes a viable number of
bacteria below 104 CFU/ml or 104 CFU/ml, the fact remains that Maye
discloses a range of viable bacteria that overlaps the claimed range. Where a
prior art range overlaps a claimed range, the Appellant bears the burden of
demonstrating that the claimed range is critical, generally by showing that
the claimed range achieves unexpected results compared to the prior art
range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In this case,
the Appellant has failed to direct us to any evidence demonstrating that the
claimed range of “no more than 100 CFUs/ml” achieves unexpected results.
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (unexpected results
must be established by factual evidence). Thus, based on the record before
us, it is reasonable to conclude that the fuel recited in claim 31 would have
been obvious from the fuel disclosed in Maye.
F. DECISION
The rejection of claim 31 under 35 U.S.C. § 112, first paragraph,
based on the written description requirement, is reversed.
The rejection of claim 36 under 35 U.S.C. § 112, first paragraph,
based on the written description requirement, is affirmed.

5 The Appellant indicates that a copy of “Essia, N et al., Appl. Microbiol.
Biotechnol.; 33: 490-493, 1990,” cited in Maye, is enclosed with the Reply
Brief. Reply Br. 3. However, according to the electronic file (“eDan”) of
the instant application, the Appellant included a copy of Y. C. Huang, et al.,
Relationship Between Sluggish Fermentations and the Antagonism of Yeast
by Lactic Acid Bacteria, 47 Am. J. Enol. Vitic. 1-10 (1996), with the Reply
Brief. In any event, the article was not timely submitted and will not be
considered. 37 C.F.R. § 41.41(a)(2) (2009).
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Appeal 2009-003070
Application 11/281,965

The rejection of claims 31-35 under 35 U.S.C. § 103(a) as
unpatentable over Maye is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
tc

Lorrie Elmer Mecham
871 NE Tanger Street
Mountain Home, ID 83647
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