Ex Parte Vos et al

Patent Trial and Appeal Board

Jan 17, 2018

13814823 (P.T.A.B. Jan. 17, 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.
13/814,823 02/07/2013 Dirk Jan Vos BJS-5984-2 6932
23117 7590 01/19/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MACAULEY, SHERIDAN R
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
01/19/2018 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK JAN VOS and SIMON RUSTENBURG
Appeal 2017-002224
Application 13/814,82s1
Technology Center 1600
Before DONALD E. ADAMS, DEBORAH KATZ, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 20-36 (see
Final Act.2 2).3 Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “NEWFOSS HOLDING
B.V.” (App. Br. 3).
2 Examiner’s August 12, 2015, Final Office Action.
3 Pending “[cjlaims 37-41 [stand] withdrawn” from consideration (Final Act.
2; see also App. Br. 5, n. 2).
Appeal 2017-002224
Application 13/814,823
STATEMENT OF THE CASE
Appellants’ disclosure “relates to a process for the conversion of
biomass wherein the biomass is of plant origin” (Spec. 1: 4—5). Claim 20 is
representative and reproduced below:
20. A process for the conversion of biomass into a
biomass product which is suitable for use as a fuel, wherein the
biomass is of plant origin and comprises microorganisms
naturally occurring in the biomass, which process comprises
- preparing a slurry by dispersing the biomass comprising
the naturally occurring microorganisms in an aqueous liquid,
- maintaining the slurry at conditions suitable for aerobic
digestion by the microorganisms to obtain a slurry comprising
the biomass product as a dispersed solid phase, and
- recovering the biomass product, which recovering
comprises washing using water as a washing liquid and drying
the biomass product.
(App. Br. 21.) Appellants’ claims 21—36 depend directly or indirectly from
Appellants’ claim 20 (see id. at 21—23).
The claims stand rejected as follows:
Claims 20-29 and 31—36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Catan,4 Schaub,5 and Werner.6
Claims 20-36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Catan, Schaub, Werner, and Shanmugam.7
4 Catan, EP 0 055 790, published July 14, 1982.
5 S.M. Schaub et al., Composting: An alternative waste management option
for food processing industries, 7 Trends in Food Science & Technology
263-268 (1996).
6 Werner, US 2011/0089271 Al, published Apr. 21, 2011.
7 Shanmugam et al., US 7,098,009 B2, issued Aug. 29, 2006.
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Appeal 2017-002224
Application 13/814,823
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion that the combination of Catan, Schaub, and Werner, with or
without Shanmugam, suggests the preparation of a slurry by dispersing a
biomass in an aqueous liquid?
ANALYSIS
Appellants’ claimed process requires, inter alia, the preparation of a
slurry by dispersing a biomass in an aqueous liquid (see App. Br. 21).
Examiner concludes that the combination of Catan, Schaub, Werner, and
Shanmugam makes obvious the subject matter of Appellants’ claimed
invention (see Final Act. 10-11; see also id. at 3—10 (wherein Examiner
concludes that the combination of Catan, Schaub, and Werner makes
obvious the subject matter of Appellants’ claims 20—29 and 31—36)).
Examiner relies on Catan for a disclosure of a method of producing a
green charcoal or fuel, wherein Catan’s method comprises, inter alia,
“spraying, wetting or soaking ... [a biomass] with water” (see Catan 4: 34—
35; see also id. at Abstract; Final Act. 3—5; Ans. 3). Examiner asserts that
“‘soaking’ a biomass product in water, would produce a slurry that meets the
limitations of [Appellants’] claims” (Ans. 3). We are not persuaded.
“[Rejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). On this
record, Examiner failed to establish that Cantan’s disclosure of “soaking” a
biomass with water necessarily results in the addition of a sufficient amount
of water to result in the preparation of a slurry wherein the biomass is
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Appeal 2017-002224
Application 13/814,823
dispersed in water as is required by Appellants’ claimed invention (see App.
Br. 14 (“Catan does not teach or suggest, for example, a slurry of the
biomass in an aqueous liquid”)). In this regard, we do not find, and
Examiner failed to identity, a disclosure in Catan to support a conclusion
that Catan’s use of the term “soaking” refers to the preparation of a slurry as
defined by Appellants’ claimed invention, as opposed to, for example, the
preparation of a wet (i.e., soaked) biomass.
Appellants’ claimed invention requires the preparation of “a slurry by
dispersing the biomass ... in an aqueous liquid’'' (see App. Br. 21 (emphasis
added)). Thus, Appellants’ claimed invention provides a definition for the
term slurry. Therefore, even if we consider Examiner’s dictionary
definitions of the term “slurry” as including “‘a thick mixture of water and
another substance’ and ‘a watery mixture of insoluble matter’ (see the
[Merriam]-Webster Dictionary, for example),” Examiner failed to establish
that Catan’s method necessarily results in the preparation of a slurry by
dispersing the biomass in an aqueous liquid as required by Appellants’
claimed invention (Ans. 4).8 Examiner also failed to establish an evidentiary
basis on this record to support a conclusion that by using the term “soaking,”
Catan necessarily discloses the addition of sufficient water to a biomass to
produce a watery mixture of biomass, as opposed to a wet biomass (see id.).
Further, to the extent that Examiner would assert that soaking a
biomass inherently results in the preparation of a slurry by dispersing a
biomass in an aqueous liquid, we find that although our reviewing court has
8 We recognize Appellants’ objection to Examiner’s reliance on a Merriam-
Webster Dictionary definition of the term “slurry” and their subsequent
reference to additional evidentiary materials regarding the definition of the
terms: “slurry” and “dispersion” (see App. Br. 14; see also Reply Br. 6—7).
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Appeal 2017-002224
Application 13/814,823
‘“recognized that inherency may supply a missing claim limitation in an
obviousness analysis’ ... [it has] emphasized that ‘the limitation at issue
necessarily must be present’ in order to be inherently disclosed by the
reference . . . .” Southwire Company v. Cerro WireLLC, 870 F.3d 1306,
1311 (Fed. Cir. 2017). As discussed above, on this record, Examiner failed
to establish that soaking a biomass with water necessarily results in the
preparation of a slurry by dispersing the biomass in an aqueous liquid as
required by Appellants’ claimed invention (see App. Br. 21—23; cf. Catan 4:
34—35).
Schaub and Werner, with or without Shanmugam, alone or in
combination, fail to make up for the foregoing deficiency in Catan.
Examiner relies on Schaub to disclose “processes for composting
biomass,” which includes “maintaining a high moisture content” within the
composting material (Final Act. 4). Notwithstanding Examiner’s assertion
to the contrary, Examiner failed to establish an evidentiary basis on this
record to support a conclusion that “maintaining a high moisture content”
within a composting biomass necessarily results in the preparation of a
slurry by dispersing the biomass in an aqueous liquid as required by
Appellants’ claimed invention (see Final Act. 4; cf. App. Br. 21—23). Thus,
Examiner failed to establish that Schaub makes up for the foregoing
deficiency in Catan (see App. Br. 17 (“Schaub does not teach or suggest a
slurry of biomass”)).
Examiner’s reliance on Werner to disclose “a process for the
conversion of biomass into biomass product,” which includes “washing the
biomass product using water and drying the biomass product” also fails to
suggest the preparation of a slurry by dispersing the biomass in an aqueous
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Appeal 2017-002224
Application 13/814,823
liquid (see Final Act. 4; cf. App. Br. 21—23). To the contrary, Werner, at
best, suggests that after Catan’s biomass is partially decayed into a biomass
product, Catan’s partially decayed product may be washed with water and
dried (see Catan 5: 1—17 (Catan’s steps (c)-(h) relate to a partially decayed
biomass product that is then cut and ground, step (c); pelletized, step (f);
dried, step (g); and packaged, step (h)); cf Werner || 1 and 3 (Werner
relates to the production of “press-molded fuel made of moist biomass of all
types,” wherein the biomass is subjected to “a first comminution process,”
press-molded, and dried); see Werner 121 (“the biomass [may be] subjected
to a washing process before or after the first comminution”)). Thus,
Examiner failed to establish that Werner makes up for the foregoing
deficiencies in the combination of Catan and Schaub (see generally App. Br.
17 (“Werner does not suggest a process as described in the presently claimed
invention”)).
Examiner relies on Shanmugam to disclose that “lactic acid-producing
bacteria may be isolated from lignocellulosic sources, such as wood chips or
compost” (Final Act. 10 (citing Shanmugam, Abstract and 6: 20-37)).
Examiner, however, failed to establish that Shanmugam makes up for the
foregoing deficiencies in the combination of Catan, Schaub, and Werner (see
App. Br. 20 (“Shanmugam [] fails to cure deficiencies of the combination of
Catan, Schaub and Werner”)).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion that the combination of Catan, Schaub, and Werner,
with or without Shanmugam, suggests the preparation of a slurry by
dispersing a biomass in an aqueous liquid.
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Appeal 2017-002224
Application 13/814,823
The rejection of claims 20—29 and 31—36 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Catan, Schaub, and Werner is
reversed.
The rejection of claims 20—36 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Catan, Schaub, Werner, and
Shanmugam is reversed.
REVERSED
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