Ex Parte Ohgren Gredegard et al

Patent Trial and Appeal Board

Jan 22, 2018

12865947 (P.T.A.B. Jan. 22, 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.
12/865,947 11/15/2010 Karin Ohgren Gredegard 9868-56 7636
20792 7590 01/23/2018
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
ROBINSON, HOPE A
ART UNIT PAPER NUMBER
1652
MAIL DATE DELIVERY MODE
01/23/2018 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 KARIN OHGREN GREDEGARD and GUIDO ZACCHI
____________

Appeal 2017-004997
Application 12/865,9471
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and
ELIZABETH A. LAVIER, Administrative Patent Judges.

LAVIER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejections of claims 40–43 and 54. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification describes “ethanol production using at least two
starting materials; one which contains lignocellulosic material and another
which is high in fermentable sugars, starch or another material which easily
can be converted to fermentable sugars.” Spec. 1:2–5. This allows for

1 Appellants state the real party in interest is Sekab E-Technology AB. Appeal
Br. 3.
Appeal 2017-004997
Application 12/865,947

2
ethanol production “based on biomass as a whole, such as different crops as
a whole.” Id. at 1:5–7.
Claim 54, the only independent claim, is illustrative:
54. A method of improving the ethanol yield in production of
an ethanol-containing product from straw and a starch-rich
biomass, comprising:
a first hydrolysis treatment of said straw in one or more steps to
obtain straw-derived treatment products including fermentable
sugars, furfural, acetic acid and 5-(hydroxymethyl)furfural
(HMF);
a second hydrolysis treatment of said starch-rich biomass in one
or more steps to obtain starch-derived fermentable sugars; and
fermentation of a mixture using a fermenting agent, wherein the
mixture comprises at least part of said straw-derived treatment
products and at least part of said starch-derived fermentable
sugars to obtain said ethanol-containing product;
wherein an amount of straw-derived material and an amount of
material derived from the starch-rich biomass are mixed in the
fermentation step or earlier such that said at least part of said
straw-derived treatment products and said at least part of said
starch-derived fermentable sugars are present in the mixture;
and the amount of straw-derived material and the amount of
material derived from the starch-rich biomass are controlled
such that said mixture comprises furfural in a concentration of
0.2 to 0.9 g/l, acetic acid in a concentration of 0.35 to 8 g/l and
HMF in a concentration of 0.015 to 0.75 g/l and said fermenting
agent is subjected to stress by straw-derived treatment products
to the extent that said ethanol yield is improved.
Appeal Br. 17–18 (Claims Appendix).
Appeal 2017-004997
Application 12/865,947

3
REJECTIONS MAINTAINED ON APPEAL
1. Claims 40–43 and 54 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Öhgren,2 Larsson,3 Bai,4 Medoff,5 and
Taherzadeh.6 Ans. 3.
2. Claim 43 stands rejected under 35 U.S.C. § 112, second paragraph,
as indefinite. Ans. 6.
DISCUSSION
A. Rejection 1 (§ 103(a))
Öhgren teaches co-fermentation of glucose and xylose in corn stovers;
the Examiner notes that “[t]he authors state that the presence of HMF,
furfural and other carbonylated pretreatment by-products in the corn stover
slurry most likely contributed to the enhanced ethanol yield.” Final Action 6
(citing Öhgren 495). Larsson utilizes softwood as a starting material for
ethanol production, and “disclose[s] that the concentration of some
fermentation inhibitors, such as acetic acid, increase the ethanol yield at
lower concentrations whereas higher concentrations result in a decreased
ethanol yield.” Id. (citing Larsson 156). The Examiner observes that neither

2 Öhgren et al., Simultaneous Saccharification and Co-Fermentation of
Glucose and Xylose in Steam-Pretreated Corn Stover at High Fiber Content
with Saccharomyces cerevisiae TMB3400, 126 J. BIOTECH. 488 (2006).
3 Larsson et al., The Generation of Fermentation Inhibitors during Dilute Acid
Hydrolysis of Softwood, 24 ENZYME & MICROBIAL TECH. 151 (1999).
4 Bai et al., Ethanol Fermentation Technologies from Sugar and Starch
Feedstocks, 26 BIOTECH. ADVANCES 89 (2008).
5 Medoff, US 8,399,216 B1, issued Mar. 19, 2013.
6 Taherzadeh et al., Enzyme-Based Ethanol, 2 BIORESOURCES 707 (2007).
Appeal 2017-004997
Application 12/865,947

4
Öhgren nor Larsson teaches mixing two different starting materials to
increase ethanol yield. See id. However, the Examiner cites Bai for the
general disclosure “that ethanol can be made from sugar and starch” (id. at 6
(citing Bai Abstract)) and Medoff for the proposition that “efficient
production of ethanol from low-cost biomass (e.g., corn, sugar beets, sugar
cane, switch-grass and/or paper) has become increasingly important in
making ethanol competitive with gasoline and decreasing the United States’
dependence on foreign oil.” (id. (quoting Medoff Abstract)). The Examiner
further cites Taherzadeh for teaching enzymatic hydrolysis processes
including a pretreatment step for producing ethanol from lignocellulosic
materials (id. at 7 (citing Taherzadeh 707–713)). Although Taherzadeh
focuses on improving ethanol yield from lignocellulosic materials,
Taherzadeh also recognizes that current processes use sugars (e.g.,
sugarcane juice, molasses) and starches (e.g., wheat, corn). See id. at 7–8;
see also Taherzadeh 707 (describing current starting materials), 708
(explaining that “the present work is dedicated to “enzymatic processes of
ethanol production from lignocellulosic materials”).
As to the combination of these references, the Examiner finds, inter
alia:
The claimed method is obvious because an ordinary skilled
worker would with a reasonable expectation of success combine
two known methodologies for the added effect of higher yield,
especially since the individual methods on their own result in
improvements. The above cited references disclose ethanol
production via lignocellulosic material and ethanol production
via fermentable sugars, the need in the art for ethanol
production and improvements to said production in the
respective composition.
Ans. 5–6.
Appeal 2017-004997
Application 12/865,947

5
1. Combination of the references
Appellants argue that none of the references teaches or suggests
combining lignocellulosic material with starch-rich material generally, nor
specifically in such a manner as specifically recited in the claims, to obtain a
“significantly improved ethanol yield over the yield from either starting
material alone.” Appeal Br. 8.
Regarding Appellants’ general proposition, as an initial matter, claim
54 does not quantify the improvement in ethanol yield (or define the relative
comparison point), but merely recites “[a] method of improving the ethanol
yield . . .” in the preamble. Further, as the Examiner notes, claim 54 does
not recite starting amounts of straw and starch-rich biomass, nor how to
control their levels to achieve the claimed concentration ranges of furfural,
acetic acid, or HMF. See Final Action 12. However, we agree with
Appellants insofar as the Examiner has not pointed to any particular teaching
in the prior art of using lignocellulosic and starch-rich materials together to
generate ethanol. Nonetheless, “[i]t is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
This is because “the idea of combining [the compositions] flows logically
from their having been individually taught in the prior art.” Id. The
Examiner relies on this reasoning from Kerkhoven, finding that “[e]nzyme
based hydrolysis process for ethanol production from lignocellulosic
materials and from starch-rich material is well established in the art. It is
within the purview of one of skill in the art to combine different components
that have similar end results.” Ans. 11 (citing Kerkhoven; MPEP
Appeal 2017-004997
Application 12/865,947

6
§ 2144.06). We discern no error in this analysis, especially as Appellants
have not pointed to any teaching in the prior art cautioning against making
such a combination.7
As to Appellants’ more specific argument, i.e., regarding an alleged
failure of the prior art to teach or suggest levels of furfural, acetic acid, and
HMF within the claimed ranges, we are also not persuaded. The Examiner
finds that because the two starting materials for ethanol production were
known in the art, arriving at claim 54 would have been a matter of routine
optimization. See Ans. 11. Appellants allege this analysis is not backed by
evidence (see Appeal Br. 8–9), but this is not the case. The Examiner’s
position (see Final Action 6) takes its support from the following prior art
teachings: (1) Öhgren’s observation that HMF, furfural, and other
byproducts “most likely contributed to the enhanced ethanol yield” (Öhgren
495); and (2) Larsson’s finding that “[a]cetic acid, formic acid, and levulinic
acid up to 100 mmol l-1 increased the ethanol yield. Higher concentrations
than this resulted in a decrease in the ethanol yield” (Larsson 156).
Although Appellants are correct that Öhgren does not expressly state that “a
small amount of these components is needed to improve the ethanol yield”

7 Appellants also argue that the Examiner’s rationale for combining the
references, i.e., a motivation for enhanced or optimized ethanol production, is
too general to support the rejection. See Appeal Br. 10–11. The Kerkhoven
analysis is sufficient to rebut this argument as well. Cf. Ans. 15–16
(discussing general prior teachings regarding combining biomass sources and
the desire in the prior art for improved ethanol production).
Appeal 2017-004997
Application 12/865,947

7
(Reply Br. 2 (quoting Ans. 9)), this is the import of these prior art
teachings.8
However, while “the discovery of an optimum value of a variable in a
known process is normally obvious,” In re Antonie, 559 F.2d 618, 620
(CCPA 1977), there are exceptions, including situations in which: (1) the
results of optimizing a variable were unexpectedly good, or (2) the
parameter optimized was not recognized in the prior art as one that would
affect the results. Id. Neither exception applies here. Regarding the first
exception, as discussed below, we are not persuaded by Appellants’
purported evidence of unexpected results, as they are not commensurate in
scope with claim 54. Regarding the second exception, as discussed above,

8 As Appellants point out, Table 2 of Öhgren lists the concentrations of
furfural, acetic acid, and HMF in the two tested corn stover batches, and the
reported concentrations of furfural (1.5 and 1.3 g/l) are outside the claimed
range of 0.2 to 0.9 g/l. See Reply Br. 2. Appellants also refer to their own
experimental data (see Spec. 49 (Spec. Table 2)), in which a sample
(Experiment 6) with a furfural concentration of 1.28 g/l (i.e., higher than the
claimed range but slightly lower than Öhgren Table 2) did not show increased
ethanol yield versus the 100% starch sample (Experiment 1), to argue that the
ordinarily skilled artisan would have been “guided by Ohgren to an amount
of furfural that is outside the presently claimed range.” Id. However, we are
not persuaded that Öhgren’s reported values teach away from testing lower
values, as Appellants point to no teaching in Öhgren (or elsewhere) cautioning
against lower furfural concentrations than those tested. As to Appellants’ own
data, furfural concentration is not the only experimental variable, so absent
further analysis we are unconvinced that any conclusions can be drawn from
comparing furfural concentrations alone against ethanol yield. Moreover,
Appellants’ assertion that these data show that “a furfural concentration of
1.28 actually results in a decreased ethanol yield (80.2% compared to 81.1%
for 100% starch)” is not accompanied by any analysis purporting to show that
the difference in these ethanol yields is statistically significant. Id.
Appeal 2017-004997
Application 12/865,947

8
Öhgren and Larsson teach that levels of furfural, acetic acid, and HMF affect
ethanol yields.
2. Unexpected results
Appellants also posit that their experimental data (see Spec. 49 (Spec.
Table 2)) demonstrate that the claimed invention produces unexpected,
synergistic results in the form of higher ethanol yields. See generally
Appeal Br. 5–6, 8–10, 11. Appellants argue these data undermine the
Examiner’s prima facie case of obviousness, because the references do not
suggest synergistic results. See Appeal Br. 8. Similarly, Appellants further
argue that even if the Examiner has made a prima facie case, Appellants’
data show unexpected results sufficient to overcome it, specifically the
“unexpectedly superior levels of ethanol production (as much as a 19%
increase).” Id. at 5.
Table 2 of the Specification reports results of six experiments, with
varying starting amounts of starch and straw:

Spec. 49. The Specification provides:
As shown in Table 2, the ethanol yield was 81.1 % when the
conventional way of recovery of saccharides from a material,
i.e. the one line concept, was used. When the two line concept
was used and the material flows were mixed in the same
Appeal 2017-004997
Application 12/865,947

9
proportion, i.e. 50% of treated straw and 50% of wheat flour
starch, the ethanol yield raised to surprisingly high 97.1%.
Id. This explanation supports Appellants’ characterization of the results of
Experiment 2 (generating the 97.1% ethanol yield) as unexpected. But
Experiments 3 and 4 also fall within the claimed concentration ranges of
acetic acid, furfural, and HMF, as Appellants point out. See Appeal Br. 9.
Although Appellants include Experiments 3 and 4 as resulting in
“synergistically enhanced” ethanol yield along with Experiment 2 (id.), this
is unsupported attorney argument. Appellants cite no support in the
Specification or elsewhere indicating that the increased yields of
Experiments 3 and 4 are significant over the controls (or as compared to
Experiment 5, which falls outside the scope of claim 54 due to its somewhat
elevated furfural concentration), or that the mildly increased yields of
Experiments 3 and 4 would have been unexpected. Accordingly, because
claim 54 is broad enough to encompass not only the conditions of
Experiment 2, but also of Experiments 3 and 4, Appellants have not carried
their burden to demonstrate that the unexpected results of Experiment 2 are
commensurate in scope with claim 54.
Having considered Appellants’ arguments,9 we are not persuaded that
the Examiner has reversibly erred in rejecting claim 54 as obvious.

9 Our decision expressly addresses all of Appellants’ arguments germane to
those portions of the Examiner’s findings on which we rely. Appellants’
arguments regarding inherency (see Appeal Br. 11, 13), the specificity of
claim 54 vis a vis the motivation in the prior art to combine straw and starch-
rich biomass (see id. at 11), the lignocellulosic nature of sugar cane bagasse
(see id. at 12), and the drafting choice to specify ranges of byproducts instead
of starting materials (see id. at 12–13), have been considered, but need not be
discussed further as they do not affect the basis for our decision.
Appeal 2017-004997
Application 12/865,947

10
Accordingly, we affirm the rejection of claim 54. Appellants do not
separately argue claims 40–43; these claims fall with claim 54. See 37
C.F.R. § 41.37(c)(1)(iv).
B. Rejection 2 (§ 112, second paragraph)
Claim 43, the subject of this rejection, depends from claim 54 and
further recites “wherein said first treatment comprises pretreatment and said
mixing takes place after said pretreatment of said straw.” Appeal Br. 17
(Claims Appendix). The Examiner finds that claim 43 is unclear because:
Claim 43 can be construed as pretreatment of straw; second
hydrolysis treatment with starch and fermentation of mixture of
a part of straw and a part of starch OR pretreatment of straw;
first hydrolysis of straw; second hydrolysis of starch and
fermentation mixture of a part of straw and a part of starch.
Thus, the claim language in claim 43 does not present clear
antecedent basis.
Ans. 18. We disagree. The first of these two scenarios would fall outside
the scope of claim 54 (and thus outside the scope of claim 43) because claim
54 requires a first hydrolysis of straw.
Accordingly, we reverse this rejection of claim 43.
CONCLUSION
The rejection of claims 40–43 and 54 under 35 U.S.C. § 103(a) is
affirmed. The rejection of claim 43 under 35 U.S.C. § 112, second
paragraph, is reversed.

Appeal 2017-004997
Application 12/865,947

11
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).
AFFIRMED