Raymond Wallage

Patent Trials and Appeals Board

Aug 21, 2019

13338883 - (D) (P.T.A.B. Aug. 21, 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.
13/338,883 12/28/2011 Raymond Wallage 1-57454/AET-01ORD 5796
65526 7590 08/21/2019
Arno T. Naeckel
15850 N. Thompson Peak Parkway
2161
Scottsdale, AZ 85260
EXAMINER
HANLEY, SUSAN MARIE
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
tnaeckel@cox.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RAYMOND WALLAGE
__________

Appeal 2018-0029601
Application 13/338,883
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
JOHN G. NEW, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
The application involved in this appeal under 35 U.S.C. § 134(a) has
been before us previously, in Appeal 2016-005232 (decision entered July 1,
2016). Although the claims in this appeal are not identical to the claims in
the previous appeal, the claims in this appeal recite methods of recovering
hydrocarbons from oil shale, like the claims in the previous appeal.
The present appeal is from twelve obviousness rejections entered by
the Examiner. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Raymond Wallage, the inventor, is the real party in interest of the present
application. App. Br. 4.
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STATEMENT OF THE CASE
Appellant’s invention is directed to “a method for recovering
hydrocarbons from oil shale.” Spec. ¶ 13. Appellant’s method includes the
steps of “providing a biomedium of microorganisms, water, and nutrients;
providing shale laden with oil; treating the oil shale with the biomedium;
mechanically agitating the treated oil shale and biomedium approximately
twelve hours to form a liquid suspension; and separating the components of
the liquid suspension to provide a hydrocarbon mixture.” Id.
The Specification explains that, “[o]ptionally, the nutrients can
include sugar and molasses. Optionally, the biomedium further includes
muriatic acid and yeast.” Id. The Specification explains further that the
“mechanical agitation can be rotary tumbling.” Id.
Claims 11 and 17 illustrate the appealed subject matter and read as
follows:
11. A method for recovering one or more hydrocarbons from
a feedstock comprising oil shale, the method comprising:
a) providing a biomedium of microorganisms, water,
sugar, molasses, and yeast;
b) providing fragmentary oil shale comprised of kerogen
ensconced in a sedimentary matrix;
c) treating the fragmentary oil shale with the biomedium
in a container that is configured to rotate;
d) reducing the fragmentary oil shale to a liquid form by
rotary tumbling the treated oil shale while in the container; and
e) separating the liquefied oil shale into the one or more
liquid hydrocarbons and one or more aqueous minerals from the
sedimentary matrix.
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17. The method of claim 11, wherein the rotary tumbling in
the container liquefies the oil shale by physical impact and the
progressive breaking of the fragmentary oil shale.
App. Br. 64–65 (emphasis added to claim 11 to show process step primarily
at issue).
The Examiner entered the following rejections:
(1) Claims 11, 16–19, 21, 22, and 32, under 35 U.S.C. § 103(a) as
being unpatentable over Sanderson,2 McDaniel,3 Simpson,4 Hitzman5,
Goklen,6 Cuypers,7 Tunnicliffe,8 Baird,9 Nishida,10 Takeda,11 and Kampfer12
(Final Action 38–49 (entered April 4, 2017));
(2) Claims 11, 15–19, 21, 22 and 32, under 35 U.S.C. § 103(a) as
being unpatentable over Sanderson, McDaniel, Simpson, Hitzman, Goklen,

2 US 2,641,565 (issued June 9, 1953).
3 US Patent No. 3,000,793 (issued Sept. 19, 1961).
4 US Patent App. Pub. No. 2010/0105115 A1 (published Apr. 29, 2010).
5 US Patent No. 3,340,930 (issued Sept. 12, 1967).
6 Kent E. Göklen et al., A Method for the Isolation of Kerogen from Green
River Oil Shale, 23 Ind. Eng. Chem. Prod. Res. Dev. 308–311 (1984).
7 Chiel Cuypers et al., Prediction of Petroleum Hydrocarbon Bioavailability
in Contaminated Soils and Sediments, 10(5) Soil and Sediment
Contamination 459–482 (2001).
8 WO 98/22195 A1 (published Nov. 13, 1997).
9 US 2010/0105975 A1 (published Apr. 29, 2010).
10 Shoki Nishida & Masaaki Imaizumi, Toxigenicity of Clostridium
histolyticum, 91 J. Bacteriol. 477–483 (1966).
11 Kiyoshi Takeda & Choseki Furusaka, Studies on the bacteria isolated
anaerobically from paddy field soil III. Production of Fatty Acids and
Ammonia by Clostridium Species, 21 Soil Sci. Plant Nutrition 113–118
(1975).
12 Peter Kämpfer et al., Microbiological Characterization of a Fuel-Oil
Contaminated Site Including Numerical Identification of Heterotropbic
Water and Soil Bacteria, 21 Microb. Ecol. 227–251 (1991).
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Cuypers, Tunnicliffe, Baird, Nishida, Takeda, Kampfer, Szuhay,13 Weil,14
and Basile15 (Final Action 49–52);
(3) Claims 11, 16–22, and 32, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, McDaniel, Simpson, Hitzman, Goklen,
Cuypers, Tunnicliffe, Baird, Nishida, Takeda, Kampfer, and Lin16 (Final
Action 52–53);
(4) Claims 11, 16–22, and 32, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, McDaniel, Simpson, Hitzman, Goklen,
Cuypers, Tunnicliffe, Baird, Nishida, Takeda, and Bell17 (Final Action 53–
54);
(5) Claims 12, 23, and 24, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, Cuypers, Tunnicliffe, Baird, Nishida, Takeda,
and Kampfer (Final Action 54–62);
(6) Claims 12, 23, and 24, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, Cuypers, Tunnicliffe, Baird, Nishida, Takeda,
Kampfer, and Zwick18 (Final Action 62–63);
(7) Claims 25 and 26, under 35 U.S.C. § 103(a) as being unpatentable
over Sanderson, Szuhay, Weil, Basile, Yen,19 Goklen, Toledo,20 Metzger,21
Zobell,22 Tunnicliffe, Baird, and Tournas23 (Final Action 63–75);

13 US 2010/0163460 A1 (published July 1, 2010).
14 US 4,003,821 (issued Jan. 18, 1977).
15 US 4,169,802 (issued Oct. 2, 1979).
16 US 6,294,351 B1 (issued Sept. 25, 2001).
17 US 2009/0017513 A1 (published Jan. 15, 2009).
18 US 2003/0080029 A1 (published May 1, 2003).
19 US 4,043,885 (issued Aug. 23, 1977).
20 US 2010/0047793 A1 (published Feb. 25, 2010).
21 US 3,711,392 (issued Jan. 16, 1973).
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(8) Claims 25–27, under 35 U.S.C. § 103(a) as being unpatentable
over Sanderson, Szuhay, Weil, Basile, Yen, Goklen, Toledo, Metzger,
Zobell, Tunnicliffe, Baird, Tournas, and Lin (Final Action 76–77);
(9) Claims 25, 26, and 28, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, Szuhay, Weil, Basile, Yen, Goklen, Toledo,
Metzger, Zobell, Tunnicliffe, Baird, Tournas, and Bell (Final Action 77–78);
(10) Claims 25, 26, and 29, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, Szuhay, Weil, Basile, Yen, Goklen, Toledo,
Metzger, Zobell, Tunnicliffe, Baird, Tournas, and Hitzman (Final Action
78–79);
(11) Claims 25, 26, 29, and 30, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, Szuhay, Weil, Basile, Yen, Goklen, Toledo,
Metzger, Zobell, Tunnicliffe, Baird, Tournas, Hitzman, and Maclennan24
(Final Action 79–80); and
(12) Claims 25, 26, and 29–31, under 35 U.S.C. § 103(a) as being
unpatentable over Sanderson, Szuhay, Weil, Basile, Yen, Goklen, Toledo,
Metzger, Zobell, Tunnicliffe, Baird, Tournas, Hitzman, Maclennan, and
Bartee25 (Final Action 80–82).

22 US 2,641,566 (issued June 9, 1953).
23 V.H. Tournas & Eugenia Katsoudas, Mould and yeast flora in fresh
berries, grapes and citrus fruits, 105 Int. J. Food Microbiol. 11–17 (2005).
24 US 8,158,396 B2 (issued Apr. 17, 2012).
25 US 2012/0003623 A1 (published Jan. 5, 2012).
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REJECTIONS 1–4
The Examiner’s Position
We select claims 11 and 17 as representative of the claims under
rejection in Rejections 1–4. See 37 C.F.R. § 41.37(c)(1)(iv).
In Rejection 1, the Examiner cited Sanderson as describing a process
having the same basic steps as recited in claim 11, including providing a
microorganism-containing nutrient medium, providing fragmentary oil
shale, treating the oil shale with the medium, mechanically agitating the
medium, and separating liquid hydrocarbons from the treated medium. See
Final Action 39–42.
To show that claim 11’s use of rotary tumbling would have been an
obvious technique of mechanically agitating Sanderson’s
shale/medium/microorganism mixture, the Examiner cited Cuypers as
teaching that, when using microorganisms to remove hydrocarbons from
soil, i.e. bioremediating or biodegrading the soil, rotary tumbling was known
in the art to be a suitable method of mechanically agitating the
microorganism/soil mixture. Id. at 42–43 (citing Cuypers 464).
The Examiner cited Tunnicliffe as evidence that when separating the
hydrocarbons from the treated oil shale as taught by Sanderson, it also would
have been obvious to separate one or more aqueous minerals from the shale
matrix, as recited in claim 11. Id. at 44–45. The Examiner cited McDaniel
and Simpson to show that sugar and molasses, recited in claim 11 as
components of the biomedium, were known to be useful carbon sources for
the organisms employed in Sanderson’s process. Id. at 45–46. The
Examiner cited Hitzman to show that it would have been obvious to include
yeast, also recited in claim 11, as one of the oil shale treating
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microorganisms in Sanderson’s process. Id. at 46.
The Examiner summarized the rejection as to claim 11 as follows:
In conclusion, Sanderson teaches a method for obtaining
hydrocarbons from oil shale by a general process in which oil
shale particles are mechanically agitated to obtain a suspension.
The hydrocarbons obtained are separated from the reaction
medium by liquid extraction. Cuypers and Tunnicliffe provide
the ordinary artisan with motivation to agitate the fine oil shale
particles by a mechanical rotary tumbler in a vessel followed by
separation of the reaction mixture via centrifugation. The
ordinary artisan is motivated to use of sugars and molasses in
the medium for the P. fluorescens and/or microorganisms from
the genus of Clostridium for the processing of the oil shale as
McDaniel . . . and Simpson teach that sugars and molasses are
desirable for the growth of these bacteria. Sanderson motivates
the use of yeast as Sanderson teaches that fungi can be used in
the process and Hitzman teaches the use of both bacterial and
yeast for processing oil (e.g., hydrocarbons) from strata.
Id. at 48.
As to claim 17, the Examiner conceded that the “references are silent
regarding the characteristics of the ‘physical impact and progressive
breaking down of the fragmentary oil shale’ (instant claim 17).” Id.
The Examiner found, nevertheless, that the cited references teach or
suggest the process recited in claim 17 “because the rotary tumbling is
acting on the oil shale to tumble it and the microbes are in the mixture at
optimum temperature and pressure with nutrients which indicates that the
claimed characteristics should be present in the prior art invention as also as
those instantly claimed.” Id. at 49.
In addition, the Examiner urged that because it was reasonable to
conclude that the process suggested by the prior art would achieve the
results recited in claim 17, the burden shifted to Appellant “to distinguish the
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instant invention over the prior art.” Id. (citing In re Best, 562 F.2d 1252
(CCPA 1977)).
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellant does not persuade us that the Examiner’s prima facie case
of obviousness as to claim 11 is not supported by a preponderance of the
evidence. In particular, Appellant does not persuade us that the cited
references fail to teach or suggest a process that includes a step
corresponding to step (d) of claim 11. See Appeal Br. 36–40, 42–45; Reply
Br. 3–9.
The dispute as to step (d) of claim 11 primarily involves an issue of
claim interpretation. In that regard, our reviewing court has directed that,
although the PTO is “required to give all claims their broadest reasonable
construction, . . . any such construction [must] be consistent with the
specification, and th[e] claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012)
(citation omitted).
“Indeed, the specification is always highly relevant to the claim
construction analysis. Usually it is dispositive; it is the single best guide to
the meaning of a disputed term.” Id. (internal quotes and citations omitted).
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The claim language in dispute, step (d) of claim 11, recites “reducing
the fragmentary oil shale to a liquid form by rotary tumbling the treated oil
shale while in the container.” Appeal Br. 64.
The portions of the Specification cited by Appellant as supporting
claim 11’s step (d) are listed as “pg. 5, line 25, pg. 8, lines 23-24 ¶[0043];
pg. 9, lines 28-29 ¶[0025].” Id. at 4.
Paragraph 25, at page 5 of the Specification (which includes
Appellant’s cited line 25 of page 5), describes producing a small blend that
contains oil shale (or other starting raw material), a microorganism-
containing biomedium, and muriatic acid, and then agitating the blend:
The next step varies depending on what is to be liquefied,
oil shale, coal, or cellulose material. The process however is
the basically same except for material. At this point, I will
describe the ratios established for a small blend. We then added
about th[r]ee cups of oil shale, coal, or cellulose material
(whatever we wished to liquefy) to a glass container, stirred,
added about 1.5 teaspoons (0.5 fluid ounces) of muriatic acid,
and stirred or whisked.
Spec. ¶ 25 (emphasis added).
Paragraph 43, at page 8 of Appellant’s Specification describes the
liquefaction step in an embodiment that treats 22 pounds of pebble-sized oil
shale with a biomedium that contains water, microorganisms, yeast, and
sugar. See id. ¶¶ 40–43. In describing the liquefaction step of the 22 pound
embodiment, paragraph 43 of the Specification (which includes Appellant’s
cited lines 23 and 24 of page 8) discloses that agitation of the mixture, by
itself, is sufficient to reduce the oil shale to a liquid form:
Turn the tumbler or mixer on to rotate and agitate the
entire mixture. The tumbler or mixer speed may affect the
speed at which the microorganisms will liquefy the contents.
Faster speeds up the process, slower will slow the process. I
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have not determined the upper limits on the speed of the
tumbler or mixer. This formula has had success in liquefying
oil shale in less than 12 hours.
Id. ¶ 43.
Paragraph 49 of the Specification (which includes Appellant’s cited
lines 28 and 29 of page 9) does not appear to relate to the liquefying step of
Appellant’s process. Rather, paragraph 49 describes the methods that may
be used to accomplish the final step of separating the components produced
by the agitation step:
The final step to marketable product is to recover the oil
from the liquid mixture oil shale, liquid coal, or cellulose
material. The oil may be removed through the use of a weir
dam, by the use of chemical separation agents, or any number
of existing ore separation methods, including a centrifuge.
Id. ¶ 49.
Thus, contrary to Appellant’s repeated contention that agitation by
itself is insufficient to provide claim 11’s reduction of the fragmentary oil
shale to a liquid form, the portions of the Specification cited by Appellant as
support for claim 11’s step (d) expressly describe agitation of the
shale/nutrient/microorganism mixture, including by rotary tumbling, as
being sufficient to accomplish liquefaction. Indeed, the claim language
itself states that the claimed “reducing” is achieved “by rotary tumbling the
treated oil shale while in the container.” Appeal Br. 64. Appellant does not
explain what specific physical action on the part of a practitioner, not
suggested by the cited prior art, is required by claim 11 to perform the
liquefying step recited in the claim.
Moreover, contrary to Appellant’s repeated contention that the
recitation of preparing a “liquid form” in step (d) of claim 11 (Appeal Br.
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64) does not encompass preparing a suspension, the Specification repeatedly
refers to an agitated mixture of oil shale and a biomedium as a suspension.
See Spec. ¶ 13 (describing “mechanically agitating the treated oil shale and
biomedium approximately twelve hours to form a liquid suspension”)
(emphasis added); id. ¶ 16 (“After a suitable period of mechanical agitation,
a liquid suspension of biomedium, hydrocarbons, and inert materials is
produced.”) (emphasis added); id. ¶ 17 (“the inert materials are fine particles
in the liquid suspension”); id. ¶ 48 (“In yet another embodiment, the
biomedium is placed in a rotary tumbler with pea-size oil shale. The rotary
tumbler mechanically agitates the mixture for approximately twelve hours to
produce a liquid suspension.”) (emphasis added); ¶¶ 53–56 (“components of
the liquid suspension are separated by use of” either a weir dam, centrifuge,
or filter) (emphasis added).
Accordingly, in light of the above, giving claim 11 its broadest
reasonable interpretation consistent with the Specification, we conclude that
claim 11’s “reducing” step (d) encompasses producing a liquid suspension
by subjecting, to rotary tumbling, a mixture that contains microorganisms,
water, sugar, molasses, yeast, and fragmentary oil shale composed of
kerogen ensconced in a sedimentary matrix.
Appellant does not persuade us that the references cited by the
Examiner fail to suggest a process having claim 11’s step (d).
As recited in steps (a)–(c) of claim 11, Sanderson describes a treating
milled oil shale with a microorganism-containing nutrient medium.
Sanderson 3:31–38. As to step claim 11’s (d), Sanderson discloses that the
“shale and medium are combined in proportions to form a slurry which can
be agitated as by mechanical means to maintain the solid particles of the
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shale in suspension. This insures intimate and continued contact of the
microorganisms with the shale particles.” Id. at 3:46–51 (emphasis added).
Thus, as required by step (d) of claim 11, Sanderson describes using
mechanical agitation to produce a liquid suspension that contains
microorganisms, water, and fragmentary oil shale particles. Although
Sanderson does not describe using claim 11’s rotary tumbling to produce the
suspension, we agree with the Examiner that a skilled artisan would have
considered rotary tumbling an obvious method of performing Sanderson’s
agitation.
In particular, the Cuypers reference cited by the Examiner teaches that
when using microorganisms to remove hydrocarbons from soil, i.e.
bioremediating or biodegrading the soil, rotary tumbling is a suitable method
of mechanically agitating the microorganism/soil mixture. Cuypers 464
(“[D]egradation potential was demonstrated during growth of the enrichment
and during experiments in which the inoculum was added to sterilized
contaminated soil. After inoculation bottles were capped and incubated at
30°C. Samples were mixed on a rotary tumbler at 22 rpm.”).
Given Cuypers’s teaching that rotary tumbling was a useful method of
mechanically agitating a mixture of microorganisms and hydrocarbon-
containing soil for the purpose of removing the hydrocarbons, we agree with
the Examiner that an ordinary artisan would have reasonably inferred that
technique would be also useful for mechanically agitating the similar
microorganism/shale medium described in Sanderson as producing the
liquid suspension. Appellant therefore does not persuade us that a skilled
artisan lacked motivation or a reasonable expectation of success in
employing rotary tumbling as the agitation method for preparing the
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shale/microorganism suspension described in Sanderson. See Appeal Br. 44,
57–60; Reply Br. 9, 20–24.
Moreover, even if we were to agree (which we do not) that a skilled
artisan would not have considered it possible to incorporate a rotary tumbler
into the particular devices described in Sanderson (see Appeal Br. 44, 60–62;
Reply Br. 24–27), that fact does not persuade us that a skilled artisan would
have considered a rotary tumbler unsuitable for performing the agitation step
in the process described in Sanderson. In addition, because step (d) of claim
11, as discussed above, encompasses producing a liquid suspension through
agitation by rotary tumbling, and because, as also discussed above, the
combined teachings of Sanderson and Cuypers suggest producing a liquid
suspension through agitation by rotary tumbling, Appellant does not
persuade us that the combined teachings of the cited references fail to
suggest a process having all of the steps and features required by claim 11.
See Appeal Br. 36–40, 44–45; Reply Br. 6–9.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner’s prima facie case of obviousness as to claim 11 is not
supported by a preponderance of the evidence. We therefore affirm the
Examiner’s rejection of claim 11 over Sanderson, McDaniel, Simpson,
Hitzman, Goklen, Cuypers, Tunnicliffe, Baird, Nishida, Takeda, and
Kampfer (Rejection 1).
Claims 16, 19, 21, 22, and 32, also subject to Rejection 1, were not
argued separately. Claims 16, 19, 21, 22, and 32 therefore fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
In Rejections 2–4, the Examiner cited additional references to show
that features recited in certain claims depending from claim 11 would have
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been obvious elements of the process described in Sanderson. See Final Act.
49–54. Other than the arguments discussed above in relation to claim 11,
Appellant does not assert any specific error in the combinations of
references advanced by the Examiner in Rejections 2–4. We therefore also
affirm Rejections 2–4.
We also affirm the Examiner’s rejection of claim 17, which was
subject to Rejection 1. Claim 17 recites “[t]he method of claim 11, wherein
the rotary tumbling in the container liquefies the oil shale by physical impact
and the progressive breaking of the fragmentary oil shale.” Appeal Br. 65.
Appellant cites “pg. 9, lines 17-18, ¶[0047]” as support for claim 17.
Id. at 4. The cited portion of paragraph 47 of the Specification states that
“[m]echanical agitation promotes physical breaking of the shale and ensures
that the sedimentary matrix is constantly exposed to the biomedium and
acid.” Spec. ¶ 47. Thus, like the portions of the Specification noted above
in relation to claim 11, the Specification discloses that mechanical agitation
provides the physical impact and progressive breaking of the oil shale
recited in claim 17.
As discussed above, Sanderson expressly describes mechanical
agitation to ensure contact between the microorganisms and the oil shale,
and Cuypers discloses, in a similar microbe-mediated process of removing
hydrocarbons from soil, that rotary tumbling was a useful technique of
mechanical agitation. See Sanderson, 3:46–51; Cuypers 464. Thus, the
mechanical agitation expressly described in Sanderson, and the rotary
tumbling suggested by the combination of Sanderson and Cuypers, apply
precisely the same action to the shale/microorganism mixture as is taught in
the Specification as creating the physical impact and breaking recited in
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Appellant’s claim 17. Appellant therefore does not persuade us that the
Examiner failed to provide a reasonable basis for finding that the cited
references teach or suggest a process having the features recited in claim 17.
See Appeal Br. 45–48; Reply Br. 9–13.
As explained by our reviewing court’s predecessor, when the Office
advances a reasonable basis for concluding that a functional property recited
in a claim at issue is present in a prior art product, the Office may require an
applicant to demonstrate that the prior art product lacks the claimed
functional property. See In re Best, 562 F.2d at 1255. As explained in In re
Best, whether the rejection at issue “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.” Id.
For the reasons discussed above, we agree with the Examiner that
there is a reasonable basis for finding that the rotary tumbling step suggested
by the cited references would necessarily provide the physical impact and
breaking recited in Appellant’s claim 17. Appellant does not advance any
specific evidence controverting the Examiner’s reasonable finding. We
therefore also affirm the Examiner’s rejection of claim 17 (Rejection 1).
Because claim 18 was argued in the same claim grouping as claim 17, claim
18 falls with claim 17. See 37 C.F.R. § 41.37(c)(1)(iv).
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REJECTIONS 5 AND 6
The Examiner’s Position
We select claims 12 and 24 as representative of the claims under
rejection in Rejections 5 and 6. See 37 C.F.R. § 41.37(c)(1)(iv).
In Rejection 5, the Examiner provided a similar rationale to that
discussed above in relation to Rejections 1–4. Specifically, the Examiner
cited Sanderson as describing a process having the same basic steps as
recited in independent claim 12, including providing a microorganism-
containing aqueous nutrient medium, providing fragmentized oil shale,
mechanically agitating the fragmentized shale in the medium at ambient
temperature and pressure to provide a liquefied suspension, and separating
liquid hydrocarbons from the liquefied suspension. See Final Action 55–57.
The Examiner again cited Cuypers as evidence that rotary tumbling
would have been an obvious technique of mechanically agitating
Sanderson’s shale/medium/microorganism mixture. Id. at 58–59. The
Examiner again cited Tunnicliffe as evidence that when separating the
hydrocarbons from the treated oil shale as taught by Sanderson, it would
have been obvious to separate one or more aqueous minerals from the shale
matrix. Id. at 59–61.
The Examiner summarized the rationale for rejecting claim 12 as
follows:
Sanderson teaches a method for obtaining hydrocarbons
from oil shale by a general process in which oil shale particles
are mechanically agitated to obtain a suspension. The
hydrocarbons obtained are separated from the reaction medium
by liquid extraction. Cuypers and Tunnicliffe provide the
ordinary artisan with motivation to agitate the fine oil shale
particles by a mechanical rotary tumbler in a vessel followed by
separation of the reaction mixture via centrifugation.
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Id. at 61.
As to claim 24, similar to claim 17 discussed above, the Examiner
determined that there was a reasonable basis for finding that the rotary
tumbling action taught in the prior art would physically break the oil shale
mineral matrix. Id. The Examiner reasoned, therefore, that sufficient
evidence had been advanced to shift to Appellant the burden of showing that
the result recited in claim 24 would not have been present in the process
taught by the prior art. Id. (citing In re Best, 562 F.2d 1252).
In Rejection 6, the Examiner applied all of the references cited in
Rejection 5, and additionally cited Zwick as evidence that a cement mixer
(recited in claim 12 as an alternative device to a rotary tumbler) would have
been an obvious device for performing the mechanical agitation step in
Sanderson’s oil shale-processing method. Final Action 62–63.
Analysis
For reasons similar to those provided above in relation to Rejections
1–4, Appellant does not persuade us that the Examiner’s prima facie case as
to claims 12 and 24 is not supported by a preponderance of the evidence.
As to Rejection 5, Appellant again contends that mechanical agitation
by rotary tumbling is insufficient to achieve the liquefaction step recited in
claim 12. See Appeal Br. 48–52; Reply Br. 13–14. Again, we are not
persuaded. In particular, Appellant does not explain what specific physical
action on the part of a practitioner, not suggested by the cited prior art, is
required by claim 12 to perform the liquefying step recited in the claim.
The language at issue in claim 12 appears in step (c), and recites
“liquefying the fragmentized oil shale by the biomedium in conjunction with
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rotary tumbling while in one of a cement mixer and a rotary tumbler at
ambient temperature and pressure.” Appeal Br. 64.
As discussed above, we agree with the Examiner that the combination
of Sanderson and Cuypers renders obvious the use of rotary tumbling to
accomplish the mechanical agitation of shale/microorganism/nutrient
suspension taught in Sanderson. For essentially the same reasons discussed
above as to claim 11, Appellant does not persuade us that claim 12 fails to
encompass the process suggested by the prior art.
As support in the Specification for claim 12’s liquefying step,
Appellant cites “pg. 8, lines 13-28, ¶[0041]; line 24, ¶[0043]).” Id. at 4.
Neither paragraph 41 nor paragraph 43 supports Appellant’s
contention that claim 12’s liquefying step requires any action on the part of
the practitioner other than agitation of the shale/microorganism/nutrient
mixture suggested by the cited references. Specifically, paragraph 41
merely explains that the amount of the microorganism/nutrient mixture can
affect the speed of the liquefaction:
Pour in the microorganism mixture. For this size batch, 3
quarts (96 ounces) of microorganism mixture should be
sufficient. If there is less, liquefying the oil shale, coal, or
cellulose material will take longer. More mixture may speed up
the process, but since microorganism mixtures are expensive,
the amount shown may be the optimum amount for commercial
profitability.
Spec. ¶ 41. And similar to the discussion above as to claim 11, paragraph 43
supports a conclusion that, as recited in claim 12, the liquefying step is
accomplished by agitation of the shale/microorganism/nutrient mixture. See
id. ¶ 43 (“Tum the tumbler or mixer on to rotate and agitate the entire
mixture. The tumbler or mixer speed may affect the speed at which the
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microorganisms will liquefy the contents. Faster speeds up the process,
slower will slow the process.”).
Again, moreover, contrary to Appellant’s contention that the recitation
of “liquefying” in step (c) of claim 12 (Appeal Br. 64) does not encompass
preparing a suspension, the Specification repeatedly refers to an agitated
mixture of oil shale and a biomedium as a suspension in the context of the
liquefaction step. See Spec. ¶¶ 13, 16, 17, 48, 53–56.
In light of the above, giving claim 12 its broadest reasonable
interpretation consistent with the Specification, we conclude that claim 12’s
“liquefying” step (c) encompasses producing a liquid suspension by
subjecting, to rotary tumbling using either a cement mixer or rotary tumbler,
a mixture that contains microorganisms, water, nutrients, and fragmentized
oil shale. For the reasons discussed above, we agree with the Examiner that
the combination of Sanderson and Cuypers suggests a process having that
step.
Because Appellant, therefore, does not persuade us that the
Examiner’s prima facie case of obviousness is not supported by a
preponderance of the evidence, we affirm the Examiner’s rejection of claim
12 over Sanderson, Cuypers, Tunnicliffe, Baird, Nishida, Takeda, and
Kampfer (Rejection 5). Because Appellant did not argue claim 23
separately, claim 23 falls with claim 12. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s claim 24 recites “[t]he method of claim 12 wherein the
rotary tumbling imparted by the container liquefies the feedstock in part by
the physical breaking of the mineral matrix.” Appeal Br. 65. For reasons
similar to those discussed above as to claim 17, we affirm this rejection as
well.
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Specifically, the mechanical agitation expressly described in
Sanderson, and the rotary tumbling suggested by the combination of
Sanderson and Cuypers, apply the same physical action to the
shale/microorganism mixture as is taught in the Specification as creating the
physical breaking recited in Appellant’s claim 24. Therefore, Appellant
does not persuade us that the Examiner failed to provide a reasonable basis
for finding that the cited references suggest a process having the features
recited in claim 24. Because Appellant cites no specific evidence
demonstrating error in the Examiner’s finding, we affirm the Examiner’s
rejection of claim 24 over Sanderson, Cuypers, Tunnicliffe, Baird, Nishida,
Takeda, and Kampfer (Rejection 5).
We also affirm the Examiner’s rejection of claims 12, 23, and 24 over
Sanderson, Cuypers, Tunnicliffe, Baird, Nishida, Takeda, Kampfer, and
Zwick (Rejection 6).
As noted above, in Rejection 6, the Examiner cited Zwick as evidence
that a skilled artisan would have considered it obvious to use a cement mixer
to perform Sanderson’s step of mechanically agitating the disclosed
shale/microorganism/nutrient mixture. Final Action 62–63.
Appellant contends that, because Zwick uses its cement mixer prior to
processing oil shale rather than during the oil-releasing treatment, Zwick
does not suggest using a cement mixer to perform Sanderson’s mechanical
agitation. Appeal Br. 52; Reply Br. 15. Moreover, Appellant contends, the
treatment in Zwick that releases the oil from shale involves very high
temperatures that would kill the microorganisms in Sanderson’s process.
Appeal Br. 52–53; Reply Br. 16.
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We find that the Examiner has the better position. As noted above,
Sanderson discloses a method of separating liquid hydrocarbons from oil
shale, the method including a step of mechanically agitating a
shale/microorganism/nutrient mixture. See Sanderson 3:46–51 (“[Milled]
shale and medium are combined in proportions to form a slurry which can be
agitated as by mechanical means to maintain the solid particles of the shale
in suspension. This insures intimate and continued contact of the
microorganisms with the shale particles.”) (emphasis added).
Although Sanderson does not expressly describe using a cement mixer
to perform the mechanical agitation, Zwick discloses a process of recovering
oil from shale that involves pulverizing the shale, mixing the shale with
ethanol, and then heating the mixture to at least 465º F. Zwick, abstract. As
part of the pulverizing step, Zwick describes mixing the shale in a cement
mixer for 40 minutes. Id. ¶ 49.
We agree with the Examiner that, based on Zwick’s disclosure that a
cement mixer was a useful device for mechanically agitating small particles
of oil shale in an oil-extracting process, a skilled artisan would have
reasonably inferred that a cement mixer also would be useful for performing
the step of mechanically agitating the shale/microorganism/nutrient mixture
in Sanderson’s process. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (In determining whether the prior art supplies a reason for practicing
the claimed subject matter, the analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
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The fact that Zwick might not employ the cement mixer during the
shale processing steps does not persuade us that a skilled artisan would have
failed to recognize that a cement mixer would be useful for performing
Sanderson’s mechanical agitation step. See id. at 421 (“A person of ordinary
skill is . . . a person of ordinary creativity, not an automaton.”). Moreover,
that, after using the cement mixer, Zwick’s process involves the use of
temperatures that would kill Sanderson’s microorganisms does not address,
or demonstrate error in, the Examiner’s determination that a cement mixer
would have been recognized as a useful agitation device in Sanderson’s
process. Appellant’s argument in that regard does not address the rejection
presented by the Examiner.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in rejecting Appellant’s claims 12, 23, and 24 over
Sanderson, Cuypers, Tunnicliffe, Baird, Nishida, Takeda, Kampfer, and
Zwick (Rejection 6). We therefore affirm that rejection.
REJECTIONS 7–12
Claim 25, the sole independent claim subject to each of
Rejections 7–12, reads as follows:
25. A method of producing one or more liquid hydrocarbon
compounds, from a feedstock comprising oil shale, the method
comprising:
a) providing a particular load of pebble sized feedstock
comprising kerogen ensconced in a mineral matrix into an open
ended tumbler that is rotatable about an axis;
b) providing a quantity of water sufficient to cover the
load of pebble sized feedstock;
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c) providing an acidic biomedium comprising mold found
on moldy oranges that has been pre-trained to act on the
particular load of feedstock provided and nutrients;
d) reducing the particular load of pebble sized feedstock
to a liquid by the combined biotic action of the acidic
biomedium on the pebble sized feedstock and progressively
breaking the pebble sized feedstock by rotating the tumbler at
ambient temperature and pressure; and
e) separating the liquefied feedstock to recover the one or
more liquid hydrocarbon compounds and aqueous minerals.
Appeal Br. 65–66 (emphasis added to show limitations upon which our
analysis focuses).
In Rejection 7, similar to the rejections discussed above, the Examiner
cited Sanderson as disclosing a process having the basic steps recited in
claim 25, and cited a number of additional references as evidence that
claimed features not expressly described in Sanderson were either inherent
in Sanderson’s teachings, or would have been obvious elements of
Sanderson’s process. Final Action 64–75.
In this instance we are not persuaded that the Examiner has shown by
a preponderance of the evidence that a process having all of the steps and
features required by claim 25 would have been obvious to an ordinary
artisan.
Appellant argues, among other things, that “none of the Examiner’s
references describes an open ended tumbler. Sanderson and Cuypers
certainly do not. As such, the rejection must be reversed for at least this
additional and independent reason.” Appeal Br. 57.
The Examiner responds that “this limitation is taught by Yen (page 71
of the Final rejection).” Ans. 70.
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Appellant, noting that page 71 of the Examiner’s Final Action cites to
column 2, line 22–55 of Yen, contends that neither the cited disclosure nor
Figures 6 and 7 of Yen teach or suggest an open-ended tumbler as recited in
claim 25. Reply Br. 19–20.
We find that the preponderance of the evidence supports Appellant’s
position. The Examiner stated as follows in the Final Rejection:
Regarding the use of an open-ended rotary tumbler to
carry out the bioremediation method of modified Sanderson
(part (a) of claim 25), Yen teaches a method for the extraction
of pyrite from kerogen-containing substance such as coal and
oil shale (abstract, col. 2, lines 22-36). Yen teaches that oil
shale feed material is added to a slurry vessel. It is preferred
that slurrying take place under agitated conditions such as by a
rotating impeller by grinding or pulverizing which happens
with a ball mill. In the case of using a ball mill, the pulverizing
and slurrying can take place simultaneously. This is
particularly applicable to the processing of oil shale (col. 2,
lines 36-55).
Final Action 71.
Having reviewed the cited portions of Yen, we note that although the
reference describes a slurry vessel in which oil shale is pulverized or ground
under conditions as would occur in a ball mill, Yen does not disclose either
that the device is rotatable, or that the device is open-ended, as Appellant’s
claim 25 requires. See Yen, 2:24–55.
We note that the Examiner also relied on Basile as teaching an open-
ended tumbler. See Final Action 71 (“The disclosure of a rotating jar meets
the limitations of a tumbler that rotates about an axis because the jar (of
which one end is open) rotates the pebbles which results in a churning or
tumbling action.”).
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Rather than being directed to oil shale processing, however, Basile
describes a process of preparing chromium dioxide particles for use in
magnetic recording tape. Basile, 1:8–10. We note, nevertheless, that Basile
does describe using a rotatable ball mill to produce chromium dioxide
particles preferably no larger than 10 microns. Id. at 3:56–42. Basile,
however, does not state expressly whether the mill is open-ended, as
required by Appellant’s claim 25. See id.
We are not persuaded, therefore, that in rejecting claim 25 the
Examiner has identified any specific teaching in the prior art of an open-
ended axially-rotatable tumbler that might be useful as the agitation
mechanism in Sanderson’s process. Nor are we persuaded that the Examiner
has adequately explained why the cited teachings in Yen and Basile, even
when combined, would have suggested using an open-ended axially-
rotatable tumbler as the agitation mechanism in Sanderson’s process,
particularly given that Basile’s process has, at best, a tenuous relationship
with shale processing.
We are not persuaded, moreover, that the Examiner has shown by a
preponderance of the evidence that the references cited in the rejection
would have suggested including mold found on moldy oranges, as recited in
claim 25, as the microorganisms in Sanderson’s shale-treating medium. The
Examiner reasoned that because Sanderson discloses that mold and fungi
may be employed as the microorganisms in the shale-treating process, and
because virtually any mold may be found on oranges (as shown by Tournas),
“the teaching by Sanderson of a mold meets the limitations of mold found on
moldy oranges.” Final Act. 65.
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Sanderson, however, does not disclose that just any mold may be
employed in its process. Rather, Sanderson specifies that the
microorganisms to be used in the shale-treating process are organisms “that
are capable of effecting alterations or modifications in the structures of
selected compounds or mixtures thereof, usually termed ‘substrates.’”
Sanderson, 2:9–12.
Sanderson goes on to explain a number of the desired properties of its
“preferably anaerobic” microorganisms (id. at 2:16), including the capacity
to attack sulfur and nitrogen bonds in compounds present in oil shale, the
capacity to split longer hydrocarbons into shorter hydrocarbons, and the
capacity to release acids. See id. at 2:15–39.
We are not persuaded that the Examiner has explained sufficiently
why a skilled artisan would have expected that claim 25’s mold found on
moldy oranges would have any of the desirable properties described by
Sanderson. Indeed, rather than disclosing that virtually any mold can be
found on oranges, Tournas specifically identified only six fungal genera that
were found on different orange varieties. See Tournas 16 (Table 4). The
Examiner does not point to, nor do we discern, any evidence of record
suggesting that any fungus listed in Tournas, or any other mold known to be
found on moldy oranges, possesses properties that would be desirable in
Sanderson’s process or are otherwise known equivalents of useful
organisms. We are not persuaded, therefore, that the Examiner has shown
by a preponderance of the evidence that it would have been obvious to
employ mold found on moldy oranges, as recited in claim 25, as one of the
microorganisms in Sanderson’s shale-treating medium.
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In sum, for the reasons discussed, we are not persuaded that the
Examiner has shown by a preponderance of the evidence that the references
cited in rejecting Appellant’s claim 25 would have taught or suggested a
process having all of the claimed steps and features. We, therefore, reverse
the Examiner’s rejection of claim 25, and its dependent claim 26, over
Sanderson, Szuhay, Weil, Basile, Yen, Goklen Toledo, Metzger, Zobell,
Tunnicliffe, Baird, and Tournas (Rejection 7).
In Rejections 8–12, the Examiner cited the combination of references
applied in Rejection 7, discussed above, and cited additional references to
show that features recited in claims depending from claim 25 would have
been obvious elements of the process described in Sanderson. See Final Act.
76–82. Because Rejections 8–12, therefore, have the same deficiencies as
those discussed above in relation to Rejection 7, we also reverse Rejections
8–12.
SUMMARY
For the reasons discussed, we affirm Rejections 1–6.
For the reasons discussed, however, we reverse Rejections 7–12

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART