JENA TRADING APS

Patent Trials and Appeals Board

Apr 9, 2021

2020005870 (P.T.A.B. Apr. 9, 2021)

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.
15/315,777 12/02/2016 Per Vinther GUARD-37409.251 4688
72960 7590 04/09/2021
Casimir Jones, S.C.
2275 Deming Way Ste 310
Middleton, WI 53562
EXAMINER
MARTIN, PAUL C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
04/09/2021 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):
docketing@casimirjones.com
pto.correspondence@casimirjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PER VINTHER and JOHN MARK LAWTHER
____________

Appeal 2020-005870
Application 15/315,777
Technology Center 1600
____________

Before DONALD E. ADAMS, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a method for extracting cuticular wax from cereal straw.1 Claims 1–5, 8–
13, and 18–20 are on appeal as rejected under 35 U.S.C. § 103. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 “Appellant” herein refers to the “applicant” as defined by 37 C.F.R. § 1.42.
Appellant identifies the Real Party-in-Interest as “Jena Trading Aps.”
Appeal Br. 2.
2 Oral argument was heard from Appellant on March 23, 2021. A transcript
of the hearing will be made a part of the record.
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STATEMENT OF THE CASE
Independent claim 1 is representative and is reproduced below:
1. A method for extracting cuticular wax from cereal
straw after removal of grains, comprising:
a. providing a sample of straw fines enriched in plant wax,
wherein the sample of straw fines enriched in plant wax results
from removing the grains from the cereal straw and mechanically
dry-treating the cereal straw at ambient temperature after
removal of the grams,
b. adding water to the sample of straw fines in a ratio of
water:straw fines of at least 5:1 (by weight), followed by mixing
and agitation at a temperature adjusted for solubilizing water
soluble components in the mixture,
c. adding one or more enzymes to the mixture and
adjusting the temperature and pH to optimize the activity of the
enzyme(s) added, wherein the one or more enzyme(s) degrade
proteins associated with the cuticular wax in the sample of straw
fines,
d. heating the enzyme-treated mixture to a temperature
whereby the cuticular wax is liquefied, the one or more
enzyme(s) are inactivated, and a liquid mixture is produced, and
e. separating the cuticular wax from the liquid mixture;
wherein the cereal straw is selected from wheat, rye,
barley, oats, sorghum, and rice.
Appeal Br. 49 (Claims Appendix; edited for readability).
The Specification states that the “invention concerns a process for the
extracting of wax from plants, in particular from agricultural plants and
preferabl[y] from agricultural biowaste.” Spec. 1:4–5. The Specification
indicates that such agricultural biowaste is a byproduct of fermentation
biofuel production. Id. at 1:8–21. The Specification indicates that a thermal
pre-treatment followed by “enzymatic hydrolysis” are conventional steps in
the bioethanol fermentation process. Id. at 1:32–2:6. The Specification
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describes “wheat straw” as an optimal biomass feedstock for at least one
known bioenergy production process, which is also adaptable to other
feedstock, such as corn stover. Id. at 2:7–15. The Specification describes
that an effect of the thermal pre-treatment is the removal of wax from the
straw, which may then be used for other commercial purposes, e.g., power or
heating. Id. 4:1–3.
The Specification explains that this wax is part of a coating of the
plants’ leaf and stem surfaces. Id. at 4:5–15. The Specification states that
such plant waxes have traditionally been extracted using organic solvents or
using a supercritical CO2 process, but that other ways of efficient and low
price extraction are desired. Id. at 4:31–5:6.
The following rejections are appealed:
Claims 1–5, 8–12, and 18–20 stand rejected under 35 U.S.C. § 103
over Garcia,3 Kobzeff,4 Deswarte,5 and Merriam-Webster.6 Final Action 3.
Claims 1–5, 8–13, and 18–20 stand rejected under 35 U.S.C. § 103
over Garcia, Kobzeff, Deswarte, Merriam-Webster, and Deswarte 2008.7 Id.
at 20.
FINDINGS OF FACT
Although we agree with and adopt herein the Examiner’s findings of
fact and rationale as set forth in the Final Action (at 4–24) and Answer (at 3–
34), we make the following findings of fact to highlight certain evidence:

3 US 1,715,194 (issued May 28, 1929) (“Garcia”).
4 WO 03/092628 A2 (published Nov. 13, 2003) (“Kobzeff”).
5 WO 2006/082437 A1 (published Aug. 10, 2006) (“Deswarte”).
6 Merriam-Webster Dictionary, straw, https://www.merriam-
webster.com/dictionary/straw, Nov. 18, 2019 (“Merriam-Webster”).
7 Fabien Deswarte, Towards a wheat straw based biorefinery (plan or
proposal), indicated in the record to be published 2008 (“Deswarte 2008”).
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FF1. Garcia discloses a nearly century-old process of extracting
wax from candelilla plant matter. Garcia 1:1–7, 1:51–55, 2:78–81
(Garcia predates U.S. patents including column numbering, which we
add for clarity).
FF2. Garcia’s wax extraction method includes (1) mechanically
crushing a candelilla plant until “thoroughly broken up”; (2) sifting wax
and dust (finely divided non-waxy matter) with a “wire mesh or the like”
to separate them from the plant fiber; and (3) mixing the wax and finely
divided non-waxy matter with hot water and steam (60–80°F or higher,
e.g., 212°F, which is the boiling point of water), which is “the well
known manner for separating the waxy material from the non-waxy
matter.” Id. at 1:51–3:2.
FF3. Regarding the steps recited by claim 1, the Examiner
determined that
Garcia did not teach a method wherein the water added to
the plant fines is in a ratio of at least 5:1, adding one or more
enzymes (protease) to the mixture and adjusting the temperature
and pH to optimize enzyme activity (degrading wax-associated
proteins) followed by inactivation by heating the mixture to at
least 80 °C and producing a liquid mixture, . . .
[and] wherein the fractionated plant was cereal straw
which has had the grains removed.
Final Action 5 (emphasis added).
FF4. Kobzeff is directed to “methods of preparing [a high-quality
lipid composition] from a lipid-containing material that include
enzymatic degradation of protein and/or carbohydrate components of the
material. Lipid-containing materials include biomass.” Kobzeff,
Abstract.
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FF5. Kobzeff discloses that prior “[t]echniques [for extracting
lipids from biomass] include[d] direct extraction of the biomass with
solvents, heating, pressure waves generated via electric arcs, direct
saponification via KOH and ethanol, sonication, freezing and grinding
and bead mills.” Id. at 1:16–19. Kobzeff further states that,
“[a]lternatively, a microbial fermentation broth can be subjected to
extreme conditions of pH and/or temperature or additional equipment
such as a homogenizer can be used to disrupt the cells.” Id. at 1:20–22.
Kobzeff states that “[p]roblems with prior methods include poor product
quality due to chemically aggressive conditions of high temperature and
high pH, high costs due to the need to dry the biomass or for additional
equipment such as homogenizers and pressure vessels.” Id. at 1:23–25.
FF6. Kobzeff is most focused on extracting lipids having an
anisidine value of 2 or less, which the reference indicates are “high-
quality” lipids having experienced less oxidative stress, which would
mitigate the production of aldehydes or ketones in the lipids. Id. at 2:12–
14, 3:5–11. Kobzeff is not limited to such lipids, however, and states
“the term ‘lipid’ includes phospholipids; free fatty acids; esters of fatty
acids; triacylglycerols; diacylglycerides; monoacylglycerides;
lysophospholipids; soaps; phosphatides; sterols and sterol esters;
carotenoids; xanthophylls (e.g., oxycarotenoids); hydrocarbons; and
other lipids known to one of ordinary skill in the art.” Id. at 5:4–7
(emphasis added).
FF7. Kobzeff, when addressing specific extraction methods, is
most focused on algae, which Kobzeff classifies as a “microorganism.”
Id. at 7:3–4, 10:17–12:28. Kobzeff is not limited to such biomass
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sources, however, and states “[e]xamples of plant sources include
macroalgae, flaxseeds, rapeseeds, corn, evening primrose, soy and
borage.” Id. at 5:9–11 (emphasis added); see also Webster’s Dictionary
(defining straw as stalks of grain after threshing –– corn is a grain).
FF8. Kobzeff discloses that “the lipids are liberated from a lipid-
containing biomass using a protease enzyme whereby protein
components of the lipid-containing material are proteolyzed, or other
enzyme that is appropriate for breaking down or reacting with the lipid-
containing material,” which “provides an economical and simple way of
releasing the lipid from the biomass.” Kobzeff 3:23–26, 4:7–8.
FF9. Kobzeff discloses:
For different oil-containing materials, different enzymes
and reaction conditions can be employed. For these different
materials, an important enzyme selection criterion is to select an
enzyme that will attack and degrade a portion of the material
(such as the proteins, polysaccharides, cell wall, cell outer
membrane, peptidoglycan layer, cellulose, chitin, hemicellulose,
lignin, lignin-related compounds, etc.) that is otherwise
impeding recovery of the oil. Preferably, nonspecific protease
enzymes such as trypsin, chymotrypsin, or the like are used . . . .
Id. at 6:15–21.
FF10. Kobzeff discloses that:
The selection of reaction conditions, including enzyme type,
enzyme concentration, temperature, pH, water activity, other
reagent concentration, reaction time, etc. will depend in part on
the specific enzyme and material that the lipid is being liberated
from. These conditions can be readily determined from
information about the enzyme (and typically available from the
supplier or in the literature), or determined by somebody skilled
in the art. Typical temperatures may range between
approximately 20-80°C, although some special enzymes may be
sufficiently active and stable for use outside of this range.
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Id. at 6:23–30. Further, Kobzeff teaches that the enzymatic treatment can
be conducted “at pH conditions of approximately 5-9.” Id. at 4:3–5.
FF11. Kobzeff discloses an example where a dried biomass is
treated as follows:
• Added to distilled water (51 g of biomass to 300 g water)
• The pH was adjusted to the range of 6.9-7.3 with 2N
H2SO4
• The mixture was heated to 60 C in a water bath
• 1.5 ml of Alcalase [(a protease)] 2.4L FG was added
• The broth mixture was then purged with nitrogen to
exclude oxygen and incubated at 60C for 15 hours
• 120 ml of isopropanol (99.9%) was added with gentle
mixing
• The broth-alcohol mixture was then centrifuged at 4000
RPM for 5 minutes
• The lipid phase (supernatant) was collected.
Id. at 12:6–18 (Example 3). Note, the water-to-biomass ratio used was
5.9:1 (i.e., at least 5:1), the pH and temperature was adjusted for enzyme
activity, and the protease Alcalase was used for degrading proteins
associated with lipids so the lipids could be collected. Id. at 12:6–28.
FF12. Kobzeff teaches that its “invention involves the use of a
combination of the enzyme treatment, or the enzyme plus surfactant
treatment, along with homogenization. This combination in some cases
can achieve higher quality and/or higher yield than with homogenization
or enzyme treatment alone.” Id. at 9:10–13.
FF13. Deswarte discloses that natural waxes are commercially
desirable and that “wheat straw waxes have been demonstrated to exhibit
ideal properties for the cosmetic industry.” Deswarte 1:7–13.
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FF14. Deswarte 2008 teaches straw constitutes the portion of the
wheat plant stem from which the seed head has been removed and that
wheat straw waxes are desirable products to be extracted from wheat
straw, which, upon wax removal, leave straw byproducts that can be
pelleted for other commercial uses. See generally Deswarte 2008; see
also Merriam-Webster (defining straw as stalks of grain after threshing).
DISCUSSION
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Arguments made by Appellant in the Appeal Brief (no Reply Brief is of
record) have been considered. See 37 C.F.R. § 41.37(c)(1)(iv) (2015); see
also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“Any bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.”).
Regarding obviousness, “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). “[I]f a technique has been used to improve one device [or
method], and a person of ordinary skill in the art would recognize that it
would improve similar device [or methods] in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
Id. at 417. “In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
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patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” Id. at 419.
We review the Examiner’s determinations and Appellant’s arguments
in view of these standards of law.
As an initial note, Appellant argues the patentability of all claims as a
group. See generally Appeal Br. “Since the claims are not separately
argued, they all stand or fall together.” In re Kaslow, 707 F.2d 1366, 1376
(Fed. Cir. 1983). We address all claims together and all claims fall with
independent claim 1.
The Examiner determines, regarding claims 1–5, 8–12, and 18–20,
that Garcia teaches a mechanical and thermal method of extracting wax from
plants, which sets a foundation upon which the Examiner supplements
teachings from Kobzeff regarding improving such an extraction process (for
lipids generally and “high-quality” lipids most specifically) from plants
(including cereal/straw, i.e., corn), by using an optimized (by enzyme
choice, pH, temperature, water addition, and homogenization) enzymatic
process that liberates lipids from associated proteins. Final Action 4–20; see
also FF1–FF12 (highlighting evidence of Garcia’s and Kobzeff’s
disclosures). The Examiner adds the teachings of Deswarte and Merriam-
Webster to this combination for their disclosures that harvesting wax from
wheat straw is highly desirable and that such “straw” constitutes the stalks of
grain post seed/grain removal. Final Action 7; see also FF13 (highlighting
Deswarte’s disclosure).
The Examiner determines that the skilled artisan would have been
motivated to make this prior art combination to improve known methods of
wax extraction from plants, represented by Garcia’s mechanical and thermal
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technique, using newer, milder, economical, and predictable techniques, and
expanding those techniques to a wider variety of equivalent plant biomass.8
Final Action 8–10. The Examiner determined that such a combination of
prior art teachings would have been reasonably expected to succeed because
the cited references are drawn to the same field of endeavor, the results
would have been predictable, and the modifications required mere
substitutions of equivalent materials. Id. at 8–10.
Regarding these same claims, but most specifically claim 13, the
Examiner adds Deswarte 2008’s teachings to the same prior art combination
for its disclosure of pelletizing dewaxed wheat straw for the purpose of
using the pellets as an energy source. Id. at 20–21; see also FF14
(highlighting Deswarte 2008’s disclosure).
Appellant argues that Garcia fails to teach the claimed addition of
water and its ratio to straw fines, or the limitations surrounding the use of
enzymes; that Kobzeff fails to teach extracting wax from cereal straw after
grain removal or the claimed water-to-grain ratio; and that Deswarte fails to
teach the claimed method of wax extraction. Appeal Br. 5 (and passim). As
an initial matter, “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

8 Appellant provides an undisputed definition of the skilled artisan of record,
which is that “the level of ordinary skill in the art can be considered to be
relatively high, such that a person of ordinary skill in the art would have an
advanced degree and/or several years of experience in the relevant field.”
Appeal Br. 4. We apply this definition herein.
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Therefore, such arguments by Appellant are not persuasive because it is the
combination of prior art and its teachings as a whole that must be evaluated.
Appellant argues that the skilled artisan would not have been
motivated to combine Kobzeff with Garcia because Kobzeff is focused on
extracting “high-quality lipids,” which is different from wax. Appeal Br. 5–
7. This argument is not persuasive. “[A] reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972). As noted above, although Kobzeff is most focused on such
high-quality lipids, it is expressly not limited to such and its methods are
applicable to extraction of any known lipids, which would include wax (a
more complex lipid, according to Appellant). See FF4, FF6; see also Appeal
Br. 6 (discussing wax as a complex lipid). Furthermore, Kobzeff expressly
invites its combination with Garcia in proposing to improve upon prior art
lipid-extraction techniques, such as those involving mere heating and
mechanical (e.g., sonication) means, like Garcia’s. FF5.
Appellant argues that the skilled artisan would not have had a
reasonable expectation of success in using Kobzeff’s enzymes to degrade
proteins associated with cuticular wax, because the cell wall, which is of
focus in Kobzeff’s methods using enzymes, is a structure distinct from the
plant cuticle. Appeal Br. 7–10 (see drawing reproduced by Appellant
illustrating the various parts of the outer surface of a generic plant). This
argument is also not persuasive. Other than the fact that plants include
various physical features, e.g., cells with cell walls and cuticle layers, there
is no evidence that a protease as taught by Kobzeff would have any less
effect on the proteins of one protein-comprising feature over another. In
fact, Kobzeff expressly teaches that “the lipids are liberated from a lipid-
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containing biomass using a protease enzyme whereby protein components of
the lipid-containing material are proteolyzed, or other enzyme that is
appropriate for breaking down or reacting with the lipid-containing
material,” which indicates that enzymes are selectable for their desired
proteolysis purpose, if need be. FF8. Therefore, although it is reasonably
likely that the expressly disclosed proteases would function to liberate lipids
from plant cuticle, just as they do for cell walls, Kobzeff suggests that other
known and available enzymes would readily do the job and could be used in
place of any specified proteases. See FF11 (Kobzeff detailing the process
steps of one example, which was very similar to the claimed method).
Appellant argues that it would not have been obvious to combine
Kobzeff’s enzyme treatment with homogenization (mechanical process as
taught by Garcia) because Kobzeff offers no evidence to support its
statements that the two processes are effective together. This argument is
not persuasive. Kobzeff expressly discloses combining its enzyme treatment
with the mechanical processing of homogenization, stating that the
combination “can achieve higher quality and/or higher yield” than either
alone. FF12. This suggests that combining Kobzeff’s techniques with
Garcia’s would enhance each process for extracting lipid/wax from plant
biomass.
Appellant argues that Kobzeff does not teach extracting wax from
cereal straws. Appeal Br. 9–10. This argument is not persuasive. As noted
above, Kobzeff’s teachings are not limited to high-quality lipids and would
reasonably include wax, which was also a lipid known to the skilled artisan.
FF6; see also supra n.7 (Appellant emphasizing the high level of skill and
experience of the skilled artisan). Moreover, Kobzeff is also not limited to
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only extracting lipids from algae, but also includes grains/cereals such as
corn. FF7. Moreover, Deswarte emphasizes the fact that the skilled artisan
would have used such processes to extract wax from cereals because it
would be commercially desirable. FF13; see also FF14 (Deswarte 2008 was
not cited for, but nonetheless supports this proposition).
For the reasons set forth above, we find that the Examiner presents a
prima facie case for obviousness and we are not persuaded by Appellant’s
arguments to the contrary. Therefore, we affirm the Examiner’s obviousness
rejections.
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8–12,
18–20
103
Garcia, Kobzeff,
Deswarte,
Merriam-Webster
1–5, 8–12,
18–20

1–5, 8–13,
18–20
103
Garcia, Kobzeff,
Deswarte,
Merriam-Webster,
Deswarte 2008
1–5, 8–13,
18–20

Overall
Outcome:
1–5, 8–13, 18–20

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