Mark E. Knuth et al.

Patent Trials and Appeals Board

Nov 4, 2019

12810142 - (R) (P.T.A.B. Nov. 4, 2019)

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.
12/810,142 09/28/2010 Mark E. Knuth CIBUS-003-US 3228
35938 7590 11/04/2019
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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@acuitylg.com
PTOL-90A (Rev. 04/07)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK E. KNUTH, PETER R. BEETHAM, KEITH A. WALKER,
and BERNHARD D. KUEBITZ
____________

Appeal 2018-002294
Application 12/810,142
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request, filed October 21, 2019, for rehearing
of our Decision dated August 29, 2019.
Appellant argues that the Board misapprehended the material fact that
the Examiner’s calculations regarding the amounts of the various
components in the mixtures disclosed by Demmering are not supported by
Demmering’s teachings (Req. Reh’g. 2). Appellant contends that the
Examiner’s calculations fail to appreciate that Demmering is directed to
mixtures of components A, B, and C (Req. Reh’g. 3). Appellant argues that
Demmering teaches that component A may be present in the mixture in the
range from 58% to 95% and component B may be present in the amount
ranging from 4% to 40% (Req. Reh’g. 3). Appellant argues that in a
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particular mixture where component A is present in an amount of 95% of the
composition, then component B cannot be present in an amount of 40%
(Req. Reh’g. 3). Appellant contends that Demmering teaches the following
mixtures at the extremes of the ranges: (1) 95% component A, 4 to 5%
component B and balance component C or (2) 58 to 60% component A, 40%
component B and balance component C (Req. Reh’g. 3). Based on mixture
(1), Appellant calculates that the amount of the mixture would include 65.8
wt% of saturated fatty acids having 12 to 18 carbons and monounsaturated
fatty acids having 12 to 18 carbons as opposed to the claimed range of 80 to
100% (Req. Reh’g. 4). Appellant calculates that Demmering’s mixture (1)
would also have 34.3% of polyunsaturated fatty acids and saturated fatty
acids having more than 12 carbons as opposed to the claim requirement of
less than 20% (Req. Reh’g. 4). Appellant calculates that mixture (2) would
have 21.6% polyunsaturated fatty acids and saturated fatty acids having
more than 12 carbons as opposed to the claim requirement of less than 20%.
Appellant contends that Demmering’s mixture (2) would further have 78.4%
of saturated fatty acids having from 8 to 12 carbon and monounsaturated
fatty acids having 12 to 18 carbons unlike the claim requirement of from 80
to 100% (Req. Reh’g. 4). Appellant argues that the extreme limits of the
range of component A cannot exist with the extreme limits of the range of
component B in a mixture (Req. Reh’g. 6). Appellant contends that the
claimed ranges do not overlap or lie inside ranges disclosed in the prior art
(Req. Reh’g. 6). Appellant argues that moving from 40% of component B to
4% component B in Demmering would lead away from the claimed amounts
within the ranges (Req. Reh’g. 5). Appellant contends that it is factually
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impossible to arrive at the claimed amount based on Demmering’s teachings
(Req. Reh’g. 6).
Although Appellant argues that these arguments should not be
considered new arguments (Req. 6), we note that the Board raised this issue
with Appellant during oral argument where similar arguments were made
(Tr. 5). Appellant indicated that this argument was not made in the Briefs
(Tr. 5). In other words, Appellant’s argument is new to the record as not
having be raised in the principal Brief or Reply Brief and is improper for
being raised in a rehearing request. 37 C.F.R. § 41.52(a) (“Arguments not
raised . . .pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the
request for rehearing except as permitted by paragraphs (a)(2) through (a)(4)
of this section.”).
Nevertheless and contrary to Appellant’s argument, our analysis on
pages 3 to 6 of the Decision is based on the Examiner’s analysis of
Demmering’s teachings regarding the amount of component A and
component B in mixture with one another. On page 4 of the Decision, we
noted, “The Examiner’s calculations on pages 7–8 and 11–14 of the Answer
establish that the exemplified embodiment includes a composition with
ranges of the various fatty acid esters that either overlap or are very close as
to abut the ranges recited in the claims.” (Emphasis added). Appellant’s
calculations support that amount of saturated fatty acids having 8 to 12
carbons and monounsaturated fatty acids having 12 to 18 carbons (78.4%)
and the amount of polyunsaturated fatty acids and saturated fatty acids
having more than 12 carbons (21.6%) are close to the claimed ranges (i.e.,
80 to 100% of saturated fatty acids having 8 to 12 carbons and
monounsaturated fatty acids having 12 to 18 carbons and less than 20% of
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polyunsaturated fatty acids and saturated fatty acids having more than 12
carbons) (Req. Reh’g. 5). In other words, Demmering’s embodiment where
component A is 60% of the mixture and component B is 40% of the mixture
yields fatty acid ester ranges that are very close to those ranges recited in
claim 1 by Appellant’s own calculations. The proximity of Demmerings
values are so close that one of ordinary skill in the art would have expected
Demmering’s biodiesel composition to have similar properties as those
disclosed by Appellant. Titanium Metals Corp. v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985). Appellant has not provided any evidence of criticality
in the claimed ranges.
We adhere to our decision for the reasons discussed above.
Appellant’s rehearing request is denied.

Outcome of Decision on Rehearing:
Claims 35 U.S.C § Reference(s)/Bas
is
Denied Granted
1, 141–159 103(a) Demmering 1, 141–159
Overall
Outcome
1, 141–159

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C. § Reference(s)/B
asis
Affirmed Reversed
1, 141–159 103(a) Demmering 1,141–159
Overall
Outcome
1, 141–159

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
Appeal 2018-002294
Application 12/810,142

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DENIED