Ex Parte Stewart et al

Patent Trial and Appeal Board

Sep 28, 2012

11784719 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/784,719 04/09/2007 David Stewart 0106.07 7691
25295 7590 09/28/2012
USDA, ARS, OTT
5601 SUNNYSIDE AVE
RM 4-1159
BELTSVILLE, MD 20705-5131
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
09/28/2012 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 DAVID STEWART, WILBUR WIDMER, KAREL
GROHMANN, and MARK WILKINS
____________

Appeal 2011-008018
Application 11/784,719
Technology Center 1700
____________

Before FRED E. McKELVEY, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

The named inventors (collectively hereinafter “Appellant”) appeal
under 35 U.S.C. § 134 from the Examiner's rejection of claims 1, 3, 5, 7-12,
15-15, and 17-32, which are directed to a method for producing ethanol from
solid citrus waste. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2011-008018
Application 11/784,719

2
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
.
1. A method of producing ethanol from solid citrus waste, said
method comprising (i) optionally reducing the particle size of
said solid citrus waste prior to heating, (ii) heating said solid
citrus waste by direct steam injection at a temperature of about
80o to about 240oC to form heated citrus waste and a vapor
containing water and peel oil components, (iii) separating said
heated citrus waste and said vapor containing water and peel oil
components to produce separated heated citrus waste and
separated vapor containing water and peel oil components by
releasing said heated citrus waste and said vapor containing
water and peel oil components into a flash tank or flash tube at
a pressure lower than (ii), (iv) cooling said separated heated
citrus waste to form cooled solid citrus waster, (v)
simultaneously or sequentially hydrolyzing and fermenting said
cooled solid citrus waste to produce ethanol and residue
wherein said hydrolyzing involves adding hydrolytic enzymes
to said cooled solid citrus waste, and (vi) separating said
alcohol from said residue; wherein water is added in said
method only in the form of steam during said heating.

The Examiner relies upon the following evidence of unpatentability:
King US 4,503,079 Mar. 5, 1985
Neves US 4,564,595 Jan. 14, 1986
Brink US 5,628,830 May 13, 1997
Talluri US 2005/0054064 A1 Mar. 10, 2005

THE REJECTIONS
Claims 1, 3, 5, 9, 10, 14, 15, 17-22, and 24-32 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Talluri in view of King. Claims 7
and 8 stand rejected under § 103(a) as unpatentable over Talluri in view of
Appeal 2011-008018
Application 11/784,719

3
King and Neves. Claims 12 and 13 stand rejected under § 103(a) as
unpatentable over Talluri in view of King and Brink.

ISSUE
Does the Examiner err in determining that the applied art suggests the
claimed method of producing ethanol from “solid citrus waste”?
We answer this question in the affirmative and REVERSE.
ANALYSIS
This appeal turns on the proper construction of the claim term “solid
citrus waste.” We give claims the broadest interpretation that is reasonable
in light of the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004); see In re Suitco Surface, Inc., 603 F.3d 1255,
1260 (Fed. Cir. 2010); accord In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (“it would be unreasonable for the PTO to ignore any interpretive
guidance afforded by the applicant’s written description”).
The Specification explains why dilution of “solid citrus waste” with
water is undesirable in ethanol production. Spec. ¶ [0006] (“energy
consumption for recovery of ethanol by distillation rapidly increases with
decreasing ethanol concentration,” therefore, “[d]ilution of solid citrus waste
with large amounts of water” is not practical). The Specification defines
“solid citrus waste” as “wet citrus waste containing primarily peel,
membranes, and seeds, which result from the processing of citrus fruit for
juice.” Spec. ¶ [0030]. The Specification further defines “solid citrus
waste” as a material wherein “there is no continuous liquid phase between
waste particles and liquid is soaked into the particles.” Id. Furthermore, the
Appeal 2011-008018
Application 11/784,719

4
Specification makes clear that the “solid citrus waste” of the invention “is
not a slurry, liquid mixture, or suspension.” Id.
The term “solid citrus waste” cannot reasonably be construed in light
of the Specification to include fruit pulp that is surrounded by an aqueous
liquid such as sweet sorghum juice (Talluri) or a citrus molasses slurry that
contains a moisture content of 90% (King). The Examiner’s reasoning on
this point, discussed below, conflicts with the Specification.
The Examiner finds that Talluri discloses a method of producing
ethanol “through the addition of solid fruit pulp to an existing organic waste
stream (i.e. sweet sorghum juice).” Ans. 5 (citing Talluri ¶¶ [0029]-[0045]);
Ans. 10 (“it is agreed that the fruit pulp is added to a sweet sorghum juice”).
The Examiner recognizes that Talluri does not specifically disclose a citrus
fruit pulp, and thus turns to King, which discloses “citrus molasses slurry
comprising 10% solids.” Ans. 5 (citing King 8:31-39, which further explains
that citrus molasses contains “a moisture and volatiles content of 90%”).
The Examiner explains that “King is merely relied on as evidence that one of
ordinary skill would not only have desired to generate ethanol from mango,
banana, pineapple, cantaloupe, etc. solid pulps, but also from citrus wastes.”
Ans. 12-13 (citing King 1:6-34). The Examiner thus finds that the combined
disclosures of Talluri and King suggest the claimed method of producing
ethanol from “solid citrus waste.” Ans. 5-6.
However, King has not been shown to disclose or suggest the
fermentation of solid citrus waste materials, as that term is defined in the
Specification. Rather, as pointed out by Appellant at page 5 of the Appeal
Brief, King teaches processing citrus molasses, namely, the expelled juices
from citrus waste residue. King 1:16-19.
Appeal 2011-008018
Application 11/784,719

5
In response to Appellant’s argument that neither of these references
discloses a “solid citrus waste” within the meaning of claim 1, App. Br. 5,
the Examiner finds that the “claims only require that solid wastes are
processed to generate ethanol, and in no way preclude the processing of
solid pulp materials in a liquid juice, which is what is taught by Talluri.”
Ans. 10. Regarding Talluri, the Examiner further states that “[t]he fact that
the solid pulp is added to a juice does not mean that the solid pulp has
somehow become liquefied.” Ans. 12. Adds the Examiner: “Surely
Appellant understands that it is possible to process solid fruit pulp to
generate ethanol when the solid fruit pulp is surrounded by a liquid.” Id.
The Examiner’s reasoning does not properly take into account the meaning
given to the disputed claim term in the written description and is, in fact, at
odds with the Specification. See, e.g., Spec. 30 (“solid citrus waste” is a
material wherein “there is no continuous liquid phase between waste
particles” and such material “is not a slurry, liquid mixture, or suspension”);
see Reply Br. 4-9 (and citations to Specification therein).
In view of the above, we reverse the rejection of claims 1, 3, 5, 7-12,
15-15, and 17-32.

CONCLUSION
The rejection of claims 1, 3, 5, 7-12, 15-15, and 17-32 is reversed.

REVERSED

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