Shailesh Atreya et al.

Patent Trials and Appeals Board

Oct 29, 2020

2019005961 (P.T.A.B. Oct. 29, 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.
12/859,976 08/20/2010 Shailesh Atreya 10-0322-US-NP 9077
122219 7590 10/29/2020
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin Street
Suite 2350
Chicago, IL 60606
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
bmatthias@millermatthiashull.com
patentadmin@boeing.com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAILESH ATREYA, DAVID WHELAN, MARIANNE E.
MATA, TINA R. STOIA, and DAVID GILL
Appeal 2019-005961
Application 12/859,976
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5–8, 11, 13–17, and 19–22. See
Final Act. 3, 6, 7. 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 “The Boeing
Company.” Appeal Br. 2.
Appeal 2019-005961
Application 12/859,976

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CLAIMED SUBJECT MATTER
The claims are directed to “the creation of power, water, and heat
utilizing a fuel cell system.” Spec. ¶ 5. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for generating water and power within a system
including a biofuel creation subsystem and a fuel cell system, the
method comprising:
producing biofuel from biofuel ingredients and water in
the biofuel creation subsystem;
conditioning the biofuel prior to utilization in a solid oxide
fuel cell (SOFC) to produce conditioned biofuel for the solid
oxide fuel cell;
receiving the conditioned biofuel at the SOFC;
utilizing the conditioned biofuel within the SOFC to
generate a power output, a combustible fuel byproduct and water,
the combustible fuel byproduct consisting of broken down
biofuel;
separating the water generated in the SOFC from the
combustible fuel byproduct;
burning the combustible fuel byproduct to produce a heat
output; and
providing the separated water generated in the SOFC to
the biofuel creation subsystem for production of the biofuel.
Claims Appendix (Appeal Br. 17) (emphases added).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Hoffjann US 2004/0038089 A1 Feb. 26, 2004
Gummalla US 2008/0070078 A1 Mar. 20, 2008
Medoff US 2010/0064746 A1 Mar. 18, 2010
Borole US 2010/0203359 A1 Aug. 12, 2010
Sridhar US 2011/0281185 A1 Nov. 17, 2011

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Application 12/859,976

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REJECTIONS
The Examiner rejects claims 1, 3, 5, 6, 11, 13, 15, 17, and 21 under 35
U.S.C. § 103(a) as being unpatentable over Sridhar in view of Borole. Final
Act. 2.
The Examiner rejects claims 7, 8, 16, 19 and 20 under pre–AIA 35
U.S.C. § 103(a) as being unpatentable over Sridhar in view of Borole, and
further in view of Gummalla. Final Act. 6.
The Examiner rejects claim 14 under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over Sridhar in view of Borole, and further in view of
Hoffjann. Final Act. 7.
The Examiner rejects claim 22 under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over Sridhar in view of Borole, and further in view of
Medoff. Final Act. 7.
OPINION
In rejecting claim 1 over Sridhar in view of Borole, the Examiner
acknowledges that “Sridhar does not teach a biofuel creation subsystem
using the separated water to produce a biofuel from biofuel ingredients.”
Final Act. 5. The Examiner turns to Borole for the teaching of “an
economical, convenient and environmentally friendly method and system for
producing ethanol as a biofuel from cheap and renewable cellulosic biomass
feedstock (biofuel ingredients)” as well as the teaching that “copious
amounts of water are used in the processing of the cellulosic biomass
materials, and thus it is highly desirable to recycle used process water into
the cellulosic ethanol process.” Id. The Examiner further finds that “Sridhar
teaches separating and reusing water generated in the SOFC from the
combustible fuel byproduct in a byproduct separation phase” and that
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“Borole teaches recycling separated process water to a biofuel creation
subsystem[.]” Ans. 8 (citing Borole ¶ 35); see also Final Act. 5 (citing
Borole ¶ 35 and finding that Borole “teaches that copious amounts of water
are used in the processing of the cellulosic biomass materials, and thus it is
highly desirable to recycle used process water into the cellulosic ethanol
process”). Based on the combined prior art teachings, the Examiner
concludes that a skilled artisan would have found obvious the limitations
“producing biofuel from biofuel ingredients and water in the biofuel creation
subsystem” as recited in claim 1. Final Act. 5. The Examiner explains that
the skilled artisan would have combined the prior art references “with the
reasonable expectation of providing an economical, convenient and
environmentally friendly system . . . in order to maximize efficiency of the
system.” Id.
Appellant argues that “neither Sridhar nor Borole teach providing
separated water generated in the solid oxide fuel cell to the biofuel
production subsystem for production of the biofuel” and therefore the
combined prior art teachings would not have taught or suggested the
limitation. Appeal Br. 14. Appellant, however, acknowledges that “[a]t
paragraph [0035], Borole teaches that water recovered at the end of the
fermentation process can be recycled back into the biomass generating
system.” Reply Br. 3.
More specifically, Borole states that “at least a portion of cleansed
process water . . . is recycled into a next (or subsequent) process cycle
wherein fresh raw biomass is to be processed using the recycled water”
including “[t]he pretreatment process [which] involves reacting the raw
cellulosic biomass material, typically as a finely divided mixture or slurry in
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water, with an acid[.]” Borole ¶¶ 4, 35. The Examiner’s finding that “Borole
teaches recycling separated process water to a biofuel creation subsystem”
and that a skilled artisan would have found desirable such use of recycled
water (Final Act. 5; Ans. 9), including in a reaction of raw biomass material
in water with acid (Borole ¶ 35), is therefore indisputably supported by the
record. See Reply Br. 3.2
Appellant’s argument that the references individually do not teach or
suggest “providing separated water generated in the solid oxide fuel cell to
the biofuel production subsystem for production of the biofuel” (Appeal Br.
13; see also Reply Br. 3) is not persuasive as the argument attacks the
references individually, rather than considering what the combined
references would have suggested to the person of ordinary skill in the art.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing
In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant’s argument regarding the Examiner’s reasoning to combine
the references is also unpersuasive. More specifically, Appellant argues that
the Examiner’s proposed combination “is not only highly illogical, but also
very tenuous,” but does not identify reversible error in the Examiner’s
rationale in support of the rejection. Compare Appeal Br. 15, with Final Act.
5, 9 (citing various portions of Borole in support of the rationale for the
rejection which includes that a skilled artisan would have “recognize[d] that

2 Appellant also asserts that the Examiner “must be relying on Official
Notice” for the rejection. Appeal Br. 15. This assertion is not supported by
the evidence in the record.
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Application 12/859,976

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recycling the separated water would reduce waste and reduce the amount of
additional water needed, thus improving the system efficiency”).
Lastly, we note that Appellant raises various arguments (and
introduces new references) in the Reply Brief that were not raised in the
opening brief. See, e.g., Reply Br. 4–8. We decline to consider these new
arguments for such arguments raised for the first time in a Reply Brief can
be considered waived if Appellant does not explain why they could not have
been raised previously – which Appellant in this case has not done. See Ex
parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) (“Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.”). Advancing new arguments in such a
manner has not afforded the Examiner an opportunity to respond to the new
argument. It is a requirement of 37 C.F.R. § 41.37(c)(1)(iv) that Appellant
submit arguments in the Brief(s) specifying all of the errors made by the
Examiner in the rejection. See Ex Parte Hindersinn, 177 USPQ 78, 80 (Bd.
App. 1971).

CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 6,
11, 13,
15, 17, 21
103(a) Sridhar, Borole 1, 3, 5, 6,
11, 13, 15,
17, 21

7, 8, 16,
19, 20
103(a) Sridhar, Borole,
Gummalla
7, 8, 16,
19, 20

14 103(a) Sridhar, Borole,
Hoffjann
14
22 103(a) Sridhar, Borole,
Medoff
22
Overall
Outcome:

1, 3, 5–8,
11, 13–17,
19–22

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED