G. Whiteman

Patent Trials and Appeals Board

Apr 16, 2020

12044293 - (D) (P.T.A.B. Apr. 16, 2020)

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.
12/044,293 03/07/2008 G. Robert Whiteman 19864.00024 (ABS-6) 7000
112619 7590 04/16/2020
Belvis Law
P.O. Box 11317
Chicago, IL 60611
EXAMINER
NGUYEN, NGHI V
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
04/16/2020 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):
docket@belvislaw.com
gbelvis@belvislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte G. ROBERT WHITEMAN
____________

Appeal 2020-000188
Application 12/044,293
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and TAWEN CHANG,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from Examiner’s
decision to reject claims 73 and 96–107 (Final Act.3 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Dr. G.
Robert Whiteman and Advanced Biological Services, Inc.” (Appellant’s
April 15, 2019 Appeal Brief (Appeal Br.) 2).
2 This Appeal is related to Appeal 2010-001533 (Application 10/395,424),
Appeal 2019-006725 (Application 12/640,913), and Application 12/640,861,
notice of Appeal filed September 19, 2019 (see generally Appeal Br. 2).
3 Examiner’s July 13, 2018 Final Office Action.
Appeal 2020-000188
Application 12/044,293

2
STATEMENT OF THE CASE
Appellant’s disclosure relates, inter alia, to
a method of removing contaminants from soil, comprising
depositing an inoculum comprising microbes into a
fermentation system; adding nutrient, water and defoamer to the
fermentation system to provide a fermentation mixture;
fermenting the fermentation mixture to provide a treatment
batch comprising the microbes; and applying at least a portion
of the treatment batch to a soil surface.
(Spec.4 ¶ 22.) Claims 73, 99, and 105–107 are reproduced below:
73. A method of removing contaminants from soil, the method
comprising:
a) providing an on-site system for growing of microbes at a
location of a contaminated soil, wherein the contaminated
soil contains a pollutant;
b) depositing inoculum, nutrient, and water into the on-site
system, wherein the inoculum comprises microbes selected
to degrade the pollutant; wherein the microbes in the
inoculum are not isolated, concentrated or freeze dried;
c) growing the inoculum in the on-site system to provide a
treatment batch, consisting essentially of the microbes and
the water, and comprising an increased number of the
microbes, the growing comprising heating and mixing the
inoculum in the on-site system; whereby the treatment batch
has a concentration of microbes that is at least 100 times
larger than the concentration of microbes in the inoculum;
and, directly releasing and thereby directly applying at least
a portion of the treatment batch to the contaminated soil;
thereby degrading the pollutant.
(Claims App.5 1.)

4 Appellant’s March 7, 2008 Specification.
5 Appeal Br., “Claims Appendix”.
Appeal 2020-000188
Application 12/044,293

3
99. The method of claim 73, wherein growing the inoculum is
for about 8 to 24 hours.
(Id.)
105. The method of claim 73, wherein the step of applying
comprises releasing the portion of the treatment batch from the
on-site system directly onto a surface of the contaminated soil.
(Id. at 2.)
106. The method of claim 73, wherein the step of growing
further comprises aerating the inoculum.
(Id.)
107. The method of claim 73, comprising wherein the step of
applying comprises mixing the portion of the treatment batch
from the on-site system directly into the contaminated soil.
(Id.)

Grounds of rejection before this Panel for review:
Claims 73 and 96–107 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 73 and 99–107 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perriello.6
Claims 96–98 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Perriello, DeBenedetto,7 Boyle,8 and Mosbach.9

6 Perriello, US 5,888,396, issued Mar. 30, 1999.
7 DeBenedetto et al., US 5,958,241, issued Sept. 28, 1999.
8 Boyle, US 5,206,168, issued Apr. 27, 1993.
9 Mosbach et al., US 4,647,536, issued Mar. 3, 1987.
Appeal 2020-000188
Application 12/044,293

4
DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that the phrase “wherein the microbes in the inoculum are not isolated,
concentrated or freeze dried,” as set forth in Appellant’s claim 73, is
indefinite?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses:
The use of microbes for wastewater treatment and
environmental clean up of contaminated soils is well known.
Examples of this can be seen in industry, such as microbial
products sold to biological wastewater treatment
plants (WWTP). . ., [wherein] [t]hese microbial products target
various problems associated with the operation of the treatment
systems.
The basis of these commercial products is the isolation or
pre-selection of microbes from different environments other
than the actual site being treated. These non-indigenous
microbes, hereafter referred to as “exogenous” microbes, are
isolated by such companies and grown or fermented under
controlled conditions in a manufacturing facility. From the
fermenter, the pure culture of microbes is concentrated into a
paste, reconstituted, and placed on an inert carrier, such as bran,
oatmeal, rye, or cornhusks. . . . This reconstituted mixture then
undergoes a stabilization procedure, usually freeze-drying.
(Spec. ¶¶ 3–4; see Ans.10 4.)
FF 2. Appellant discloses that “isolation of the indigenous functional,
desired, or target microbes and fermentation on-site, outside the competitive
environment of the WWTP, enhances the efficacy and effectiveness of [its]

10 Examiner’s August 6, 2019 Answer.
Appeal 2020-000188
Application 12/044,293

5
applications, since the indigenous population tends to have more stable
genetic characteristics” (Spec. ¶ 11 (emphasis added); see Ans. 4).
FF 3. Appellant discloses:
The types of microbe or microbes present in the inoculum
depend on the type of wastewater to be treated. The inoculum
may contain a single strain or multiple strains of microbes
depending on the wastewater problem being addressed.
Inoculum may be provided as a liquid or a dry product. Dry
product is commonly freeze dried or air dried. Additionally,
the microbes may be exogenous to the wastewater or
indigenous microbes may be isolated from the wastewater
under treatment.
(Spec. ¶ 44 (emphasis added); see Ans. 4.)
FF 4. Appellant’s originally filed claims 1 and 17–19 are reproduced
below:
1. A method of removing contaminants from an aqueous
liquid, comprising:
depositing an inoculum comprising microbes into a
fermentation system;
fermenting the inoculum in the fermentation system to
provide a treatment batch comprising the microbes; and
applying at least a portion of the treatment batch to an
aqueous liquid.
17. The method of claim 1, wherein the microbes are not
isolated after the fermenting.
18. The method of claim 1, wherein the treatment batch is not
subjected to concentration.
19. The method of claim 1, wherein the microbes are not freeze
dried after the fermenting.
(Spec. 53–54.)

Appeal 2020-000188
Application 12/044,293

6
ANALYSIS
According to Examiner, the phrase “wherein the microbes in the
inoculum are not isolated, concentrated or freeze dried,” when read in light
of Appellant’s Specification, does not reasonably apprise those skilled in the
art of the scope of the invention (see Final Act. 2; see also Ans. 4 (Examiner
maintains that the limitation, “‘wherein the microbes in the inoculum are not
isolated’ raises significant confusion because said limitation is conflicting
with the claim as a whole”)). See Union Pacific Resources Co. v.
Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001) (“The
definiteness inquiry focuses on whether those skilled in the art would
understand the scope of the claim when the claim is read in light of the rest
of the specification.”).
As Examiner explains, the requirement in Appellant’s claim 73 that
the microbes in the inoculum are not, inter alia, isolated is confusing and
inconsistent with Appellant’s Specification which describes microbes,
whether exogenous or indigenous to the treatment site, are isolated and
formulated into an inoculum (see generally Ans. 4–5; see also FF 1–3).
Appellant’s contention that “when read in the context of the claim as a
whole, [the phrase at issue] relates to the inoculum that is in the on-site
system[, wherein] [t]he inoculum in the on-site system, is not isolated,
concentrated or freeze dried” (Appeal Br. 7; see also Reply Br. 2–3) is not
consistent with the requirements of the claim and is, therefore, not
persuasive (see Claims App. 1 (Appellant’s claim 73 requires, inter alia, that
“the inoculum comprises microbes selected to degrade the pollutant; wherein
the microbes in the inoculum are not isolated, concentrated or freeze dried”)
(emphasis added)).
Appeal 2020-000188
Application 12/044,293

7
Looking to Appellant’s originally filed claims (see FF 4), it becomes
clear that rather than the microbes in the inoculum, it is the microbes in the
treatment batch, that are not isolated, freeze-dried, or concentrated prior to
releasing the treatment batch from the on-site system, i.e. bioreactor.
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
the phrase “wherein the microbes in the inoculum are not isolated,
concentrated or freeze dried,” as set forth in Appellant’s claim 73, is
indefinite. The rejection of 73 under 35 U.S.C. § 112, second paragraph, is
affirmed. Claims 96–107 are not separately argued and fall with claim 73.

OBVIOUSNESS:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
CLAIM INTERPRETATION
Examiner interprets the phrase “‘on-site system for growing of
microbes at a location of a contaminated soil’ . . .[, as it appears in
Appellant’s claim 73, as] analogous to a bioreactor apparatus which serves
to culture microbes” (Final Act. 4–5).
In addition, for the reasons set forth above, the phrase “wherein the
microbes in the inoculum are not isolated, concentrated or freeze dried,” as it
appears in Appellant’s claim 73, is unclear and inconsistent with Appellant’s
Specification. Therefore, we interpret this phrase to relate to the microbes in
the treatment batch rather than the microbes in the inoculum.

Appeal 2020-000188
Application 12/044,293

8
FACTUAL FINDINGS (FF)
FF 5. Perriello “relates to the degradation of pollutants, and more
particularly relates to bioremediation of pollutants such as chlorinated
aliphatic hydrocarbons using butane-utilizing microorganisms” (Perriello
1:5–8; see Final Act. 4).
FF 6. Perriello discloses that its “butane-utilizing organisms . . . may be
used for in-situ or ex-situ bioremediation of chlorinated hydrocarbon
contaminants contained in air, soil and groundwater waste streams”
(Perriello 2:45–48; see id. at 4:4–6 (Perriello’s “bioremediation process may
be performed either in-situ or ex-situ to remove contaminants from various
environments including aqueous systems”); see also Final Act. 4; Ans. 5–6).
FF 7. Perriello discloses that “[i]n-situ bioremedial processes that may be
used in accordance with the present invention include the injection of non-
indigenous butane-utilizing microorganisms into the surface or subsurface
and/or the use of indigenous butane-utilizing microorganisms” (Perriello
19:66–20:3; see generally Ans. 6).
FF 8. Perriello discloses the inoculation of a bioreactor with
microorganisms to produce a “biofilm . . . on an aluminum screen substrate”
within the bioreactor (Perriello 21:60; see also id. at 22: 4–5 (“[t]he isolates
in Sample ID 3NB were chosen to seed the bioscreen”); see generally id. at
22:1–25; Final Act. 5; Ans. 6).
FF 9. Perriello discloses that microorganism “[g]rowth was established by
operating the bioreactor . . . as a growth chamber in which butane and
oxygen were provided by injection,” through a port, into the bioreactor’s
headspace (Perriello 21:61–64; see id. at 22:7–12 (Perriello discloses a
“recirculation system . . . driven by a hermetically-sealed bellows vacuum
Appeal 2020-000188
Application 12/044,293

9
pump . . . producing 622 ml/min of air flow,” wherein “[t]he pump was
scheduled to run 30 minutes every 4 hours to produce a pulsing effect within
the bioreactor between the two phases (liquid and gaseous)”); see generally
Final Act. 5–6; Ans. 6).
FF 10. Perriello discloses running the bioreactor for 9 hours, i.e. from an
initial time of 14:28 hours to a final time of 23:30 hours (see Perriello
22:25–29; Final Act. 5–6; Ans. 6).
FF 11. Examiner finds that Perriello does not teach the requirement of
Appellant’s claimed invention that “the treatment batch has a concentration
of microbes that is at least 100 times larger than the concentration of
microbes in the inoculum” (Final Act. 6).
FF 12. Examiner finds that Perriello does not teach inoculum microbes in
gelatin capsules or nutrient in gelatin capsules or water soluble bags and
relies on DeBenedetto, Boyle, and Mosbach to make up for these
deficiencies in Perriello (see Final Act. 8–9).
ANALYSIS
The rejection over Perriello:
Examiner concludes that, at the time Appellant’s invention was made,
Perriello would have made obvious Appellant’s claim invention (see Final
Act. 4–7; see FF 5–11). We find no error in Examiner’s conclusion of
obviousness.

Claim 73:
Perriello discloses an in-situ bioremediation process, wherein non-
indigenous butane-utilizing microorganisms are injected into the surface or
subsurface of, inter alia, soil (FF 6–7). Therefore, we are not persuaded by
Appeal 2020-000188
Application 12/044,293

10
Appellant’s contention that Perriello exclusively discloses an ex-situ process
and “has no disclosure or suggestion to be configured to grow a treatment
batch of microbes and then directly release and directly apply that treatment
batch to contaminated soil” (Appeal Br. 7–8; see also id. at 10 (Perriello
fails to disclose “an ‘on-site system at a location of a contaminated soil
wherein the contaminated soil contains a pollutant’, as is required
by . . . [Appellant’s] claims” (emphasis omitted)); see generally id. at 10–12;
cf. FF 5–11). For the same reason, we are not persuaded by Appellant’s
contention that a person of ordinary skill in this art would need to change
Perriello’s principle of operation in order to practice Appellant’s claimed
invention (see Appeal Br. 8–9; see also Reply Br. 4).
Perriello discloses seeding an on-site system, i.e. bioreactor, with an
inoculum that is not subsequently isolated (see generally FF 8). Therefore,
we are not persuaded by Appellant’s contention that Perriello does not
disclose “that the inoculum in the on-site system not be isolated” (Appeal
Br. 10).
Perriello discloses seeding an inoculum onto a bioscreen, i.e. an
aluminum screen substrate in a bioreactor, and growing the microorganisms
in the inoculum for 9 hours to form a biofilm on the bioscreen (see FF 8 and
10). Appellant failed to establish an evidentiary basis on this record to
support a conclusion that a biofilm, resulting from the growth of microbes in
an inoculum for 9 hours, does not inherently contain a concentration of
microbes that is at least 100 times larger than the concentration of microbes
in the inoculum. Therefore, we are not persuaded by Appellant’s contention
that Office failed to meet its burden of establishing a prima facie case of
obviousness (see Appeal Br. 13; see generally id. at 13–16).
Appeal 2020-000188
Application 12/044,293

11

Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (footnote omitted) (citation
omitted). As the Court explained in Best, this principle “is applicable to
product and process claims reasonably considered as possessing the
allegedly inherent characteristics.” See id.

Claim 99:
As discussed above, Perriello discloses seeding an inoculum onto a
bioscreen, i.e. an aluminum screen substrate in a bioreactor, and growing the
microorganisms in the inoculum for 9 hours to form a biofilm on the
bioscreen (see FF 8 and 10). Thus, Perriello discloses a method within the
scope of Appellant’s claim 99.
Therefore, we are not persuaded by Appellant’s contention that
Perriello, as relied upon by Examiner, “does not show growing of the
inoculum” or that Perriello discloses that cell counts decreased during
Perriello’s 9 hour growth period (Appeal Br. 12). Notwithstanding
Appellant’s contention to the contrary, Perriello did not determine, i.e.
“N/A,” cell count at the end of the growth period (see Perriello 22, Table
15). In this regard, we note that a biofilm, as is required by Perriello’s
Appeal 2020-000188
Application 12/044,293

12
disclosure, cannot be formed from a microbial inoculum unless the
microorganisms in the inoculum grow during Perriello’s 9 hour growth
period.

Claims 105 and 107:
Perriello discloses an in-situ bioremediation process wherein a
bioreactor is used to grow a treatment batch of microorganisms from an
inoculum for release on the surface of, or injected, i.e., mixed, into,
contaminated soil (FF 7). Therefore, we are not persuaded by Appellant’s
contention that Perriello fails to teach a method wherein the treatment batch
is directly released onto a surface of contaminated soil or mixed into
contaminated soil (see Appeal Br. 12–13).

Claim 106:
Perriello discloses the injection of oxygen into a bioreactor
comprising a microbial inoculum, wherein Perriello’s recirculation system
“was scheduled to run 30 minutes every 4 hours to produce a pulsing effect
within the bioreactor between the two phases (liquid and gaseous)” (FF 9).
Appellant failed to establish an evidentiary basis on this record that
Perriello’s system does not inherently result in aerating the inoculum as
required by Appellant’s claim 106.
Therefore, we are not persuaded by Appellant’s contention that
Perriello “merely discloses [growing inoculum microorganisms] ‘in the
presence of oxygen’,” but “does not disclose or suggest ‘aerating’, which is
more than just having oxygen present” (Appeal Br. 12). For the same
reasons, we are not persuaded by Appellant’s contention that Perriello does
Appeal 2020-000188
Application 12/044,293

13
not disclose that “‘oxygen’ is . . . present during the growing of an inoculum
to form a treatment batch in an on-site system, as required by [Appellant’s]
claim 106” (id.).

The rejection over the combination of Perriello, DeBenedetto, Boyle, and
Mosbach:
Based on the combination of Perriello, DeBenedetto, Boyle, and
Mosbach, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious to modify Perriello’s method
to provide inoculum microbes in gelatin capsules or nutrient in gelatin
capsules or water soluble bags as suggested by the combination of
DeBenedetto, Boyle, and Mosbach (Ans. 7–9; see FF 1–12).
We do not find, and Appellant failed to identify, error in this rejection
(see Ans. 3). Therefore, the rejection is affirmed.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 73, 99, and 105–107 under 35 U.S.C. § 103(a)
as unpatentable over Perriello is affirmed. Claims 100–104 are not
separately argued and fall with claim 73.
The rejection of claims 96–98 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Perriello, DeBenedetto, Boyle, and
Mosbach is affirmed.

Appeal 2020-000188
Application 12/044,293

14
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
73, 96–107 112(b) Indefiniteness 73, 96–107
73, 99–107 103 Perriello 73, 99–107
96–98 103 Perriello,
DeBenedetto,
Boyle, Mosbach
96–98
Overall
Outcome
73, 96–107

TIME PERIOD FOR RESPONSE
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