Wiatr, Christopher L. et al.

Patent Trials and Appeals Board

Oct 9, 2019

14585218 - (D) (P.T.A.B. Oct. 9, 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.
14/585,218 12/30/2014 Christopher L. Wiatr 3597-209-04 1008
33432 7590 10/09/2019
KILYK & BOWERSOX, P.L.L.C.
400 HOLIDAY COURT
SUITE 102
WARRENTON, VA 20186
EXAMINER
ORWIG, KEVIN S
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
10/09/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CHRISTOPHER L. WIATR,
MICHAEL L. CORCORAN, THOMAS E. MCNEEL,
RICHARD A. CLARK,
RITA DE CASSIA BORTOTO PORTO, DAVID OPPONG,
and PHILIP HOEKSTRA1
________________

Appeal 2018-008203
Application 14/585,218
Technology Center 1600
________________

Before DONALD E. ADAMS, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.142”. Appellant identifies Buckman Laboratories
International, Inc. as the real party-in-interest. App. Br. 3.
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 35–41 as unpatentable under 35 U.S.C.
§ 112, first paragraph, for failing to meet the written description
requirement.
Claims 35–41 also stand rejected as unpatentable under 35 U.S.C.
§ 112, first paragraph, for lack of enablement.
Claims 35–41 stand further rejected as unpatentable under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 35 and 37–41 stand rejected as unpatentable under 35 U.S.C.
103(a) as being obvious over the combination of De Sa et al. (WO
2009/010836 A2, January 22, 2009) (“De Sa”), Enzien et al. (US
2008/0199901 A1 August 21, 2008) (“Enzien”), and Souter et al. (US
2004/0164029 A1, August 26, 2004) (“Souter”).
Claims 35–41 stand rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over the combination of De Sa, Enzien, Souter, and Dailey
et al. (US 2009/0233340 A1, March 13, 2008) (“Dailey”).
Claims 35–41 also stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of De Sa, Enzien, Edwards,
Dailey, and Souter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to methods for controlling the
growth of bacteria in ethanol fermentation systems with antibiotic
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alternatives, which can be nonoxidizing biocides, stabilized oxidizers, or any
combination thereof. Abstr.

REPRESENTATIVE CLAIM
Claim 35 is representative of the claims on appeal and recites:
35. A method for producing ethanol with fermentation
comprising:

a) providing stabilized chloramine in water, wherein the
water comprises a water supply or recycled process water for a
fermenter vessel;

b) introducing the stabilized chloramine in water in the
fermenter vessel;

c) fermenting a fermentable mash in the presence of the
stabilized chloramine in water, and yeast in the fermenter vessel
to produce ethanol and a solids content, wherein the stabilized
chloramine is added to the fermentable mash in a concentration
of from 10 ppm to 500 ppm, based on fermentable material, on a
dry solids weight/weight basis, wherein said stabilized
chloramine in water releases oxidizing byproducts at a slower
rate than chloramine, and said stabilized chloramine in water
controls growth of bacteria in the mash without reducing yeast
population; and

d) distilling the fermented mash to separate at least a
portion of the ethanol from the solids content of the fermented
mash.

App. Br. 43.

ISSUES AND ANALYSES
We decline to adopt the Examiner’s findings, reasoning, and
conclusion that the claims on appeal are unpatentable under 35 U.S.C. § 112,
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first or second paragraphs. However, we adopt the Examiner’s findings,
reasoning, and conclusion that the claims on appeal are prima facie obvious
over the cited prior art. We address the arguments raised by Appellant
below.

A. Rejection of the claims under 35 U.S.C. § 112, first paragraph
Issue 1: Lack of written descriptive support
Appellant argues the Examiner erred in finding that Appellant’s
Specification fails to provide written descriptive support for the claim term
“stabilized chloramine.” App. Br. 10.

Analysis
The Examiner finds that paragraph [0057] of Appellant’s
Specification discloses that: “These stabilized oxidizers can be formulated as
preparations of the type that retard the rate of release of oxidizing
byproducts of the material, such as, for example, microgranules or buffered
compounds.” Final Act. 4. The Examiner finds that the same paragraph
discloses that: “some oxidizers can be stabilized in a solid form.” Id.
(quoting Spec. ¶ 57). Therefore, the Examiner finds, the broad language of
the claims on appeal encompasses embodiments where chloramine (i.e.,
monochloramine, Appellant’s elected species) is prepared as a solid and/or
as microgranules. Id.
The Examiner next points to paragraphs [0056] and [0069] of
Appellant’s Specification, which disclose that the “stabilized oxidizer” can
be “stabilized ch[l]oramine”. Final Act. 5. The Examiner finds that
Appellant’s only other disclosure of chloramine is in original Appellant’s
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claim 15. Id. The Examiner finds that the term “microgranules” (or any
“granule”) is mentioned only once in paragraph [0057] of the Specification.
Id. Therefore, the Examiner finds, Appellant’s Specification provides no
disclosure related to the materials, structures, or process(es) required to
prepare chloramine in solid form (i.e., as microgranules). Id.
The Examiner finds that chloramine is known in the art to be an
unstable liquid with a melting point of -66 °C, and is prepared by chlorine
with ammonia. Final Act. 5. The Examiner finds that Appellant has failed
to provide any further description of solid chloramine in any form that
would provide adequate written description for the scope of the claim. Id.
The Examiner notes that adequate written descriptive support would require
a precise definition, such as structure, formula, chemical name, or physical
properties, and that Appellant has not provided any of these that could be
used to prepare solid chloramine (e.g., as microgranules). Id.
Appellant argues that there is no recitation of “solid chloramine” in
claim 35, nor in any other claim on appeal, nor does Appellant’s
Specification use that specific terminology or require that the chloramine or
stabilized chloramine be in a solid form. App. Br. 12. Appellant alleges that
the Examiner essentially reads that absent term into Appellant’s claims and
finds that Appellant did not possess the absent claim term at the time of
invention. Id. However, Appellant points out, claim 35 recites the use of
“stabilized chloramine in water” as the stabilized oxidizing biocide, and
specifies the use of stabilized chloramine in water through the fermenting
stage. Id. (citing claim 35, step c). Appellant argues that the Examiner’s
interpretation of claim 35 as encompass solid stabilized chloramine or
microgranular chloramine is not reasonable. Id. at 12–13.
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Appellant’s arguments are persuasive. Paragraph [0057] of
Appellant’s Specification discloses, in relevant part that:
These stabilized oxidizers can be formulated as preparations of
the type that retard the rate of release of oxidizing byproducts of
the material, such as, for example, microgranules or buffered
compounds…. In liquids, the stabilizers may be sulfamic acid-
based or ammonium salt based. As indicated, some oxidizers can
be stabilized in a solid form.

(Emphases added). Appellant’s Specification thus expressly discloses that
the stabilized oxidizer can be a liquid-based ammonium salt, i.e.,
monochloramine in water. Appellant’s Specification further discloses that:
“For purposes of the present invention, the nonoxidizing biocide and/or
stabilized oxidizer can be introduced before and/or during fermentation. The
biocide can be introduced in any manner, as a solid or liquid or even gas.”
Spec. ¶ 45 (emphasis added).
In other words, Appellant’s Specification expressly discloses that the
stabilized oxidizer, i.e., stabilized chloramine, can be introduced into the
fermenting system in liquid form. Indeed, the Specification discloses that
one such liquid can be the claimed ammonium-based salt.
Finally, Appellant argues that it was well-known in the art that
monochloramine is: “an inorganic compound with the formula NH2Cl. It is
an unstable colorless liquid at its melting point of -66 °C, but it is usually
handled as a dilute aqueous solution, in which form it is sometimes used as a
disinfectant.” App. Br. 13 (quoting Wikipedia, Chloramine,
https://en.wikipedia.org/wiki/Chloramine (cited in Appellant’s Response,
filed April 20, 2017)). The Examiner does not attempt to rebut this
argument.
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We conclude that the requirement imposed by the Examiner that
Appellant’s Specification provided written description of “stabilized
chloramine” in a solid form, or a manner or means of making such, is not
supported by the language of the claims or the disclosures of the
Specification, which discloses that (as was well known in the art) the
stabilized ammonium salt (i.e., chloramine) can be in a liquid form. The
disclosure of paragraph [0057] of the Specification that the stabilized
oxidizer “can be formulated as … microgranules” does not require that
stabilized chloramine be formulated as such. Rather, the Specification
explicitly discloses that the stabilized oxidizer can be formulated as a solid,
liquid, or gas. See Spec. ¶ 45.
We therefore agree with Appellant that, given the disclosures of the
Specification and the knowledge available in the art, a person of ordinary
skill would have understood that Appellant had possession of the invention
at the time of filing. We consequently reverse the Examiner’s rejection upon
this ground.

Issue 2: Enablement
The Examiner, citing the various factors prescribed by In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988), relies upon the same findings and
reasoning employed in the written description analysis supra. Final Act. 7–
8. Specifically, the Examiner finds that Appellant’s Specification does not
provide enablement for chloramine in solid form (i.e., as microgranules) and
does not enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to practice the invention commensurate in
scope with these claims. Id. at 7.
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We have explained supra why we do not find the Examiner’s
reasoning persuasive, and we apply the same explanation with respect to the
subject of enablement. We consequently reverse the Examiner’s rejection
upon this ground.

B. Rejection of the claims under 35 U.S.C. § 112, second paragraph
Issue
Appellant argues that the Examiner erred in concluding that the
limitation of claim 35 reciting: “wherein said stabilized chloramine in water
releases oxidizing byproducts at a slower rate than chloramine” is indefinite.
App. Br. 17.

Analysis
The Examiner finds that chloramine is considered to be a stabilized
form of the oxidizer chlorine. Final Act. 26. Therefore, the Examiner finds,
chloramine is a stabilized oxidizer, and it is unclear what further structure(s)
is/are intended by the recitation “stabilized chloramine.” Id. The Examiner
finds that the language of claim 35 thus requires an undefined “stabilized
chloramine” to release oxidizing byproducts at a slower rate than chloramine
(which, the Examiner reasons, generically includes any type of chloramine).
Id. The Examiner therefore concludes that the claim can be reasonably
construed as requiring chloramine to release oxidizing byproducts at a
slower rate than itself and is, consequently, is indefinite. Id.
We do not find the Examiner’s reasoning persuasive. As we have
explained supra, Appellant has provided evidence that it is well known in
the art that chloramine is an unstable liquid that can be stabilized by dilution
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in water for use as a biocide. Thus, the dilute form of chloramine, i.e.,
“stabilized chloramine in water,” as recited in claim 35, is the stabilized
form of the otherwise highly unstable chloramine. We agree with Appellant
that a person of ordinary skill in the art of biocides would understand this,
and we reverse the Examiner’s rejection.

C. Rejection of the claims under 35 U.S.C. § 103(a)
Issue 1: Rejection over De Sa, Enzien, and Souter
Appellant argues the Examiner erred in concluding that the
combination of De Sa, Enzien, and Souter teach or suggest any form of
chloramine for use as the biocide in the claimed fermentation method. App.
Br. 23.

Analysis
The Examiner finds that De Sa teaches methods of producing a
fermentation-based product, such as ethanol, comprising fermenting a sugar-
containing medium with yeast in the presence of a biocide, e.g.,
isothiazolins, dibromonitrilopropionamide (DBNPA) quaternary ammonium
compounds, dialdehydes (e.g., glutaraldehyde) in an amount sufficient to
reduce or control a bacterial population in the sugar-containing medium.
Final Act. 18–19 (citing De Sa Abstr., ¶¶ 6–7, 20). The Examiner finds De
Sa teaches that the biocides are added to the fermentation tank (i.e., the
water in a fermenter vessel), and control the growth of bacteria without
reducing the yeast population. Id. at 19 (citing De Sa ¶¶ (19, 26, 36, Table
3, claim 19). The Examiner finds that De Sa teaches amounts of the biocide
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falling within the claimed range. Id. (citing De Sa ¶¶ 24, 33, 35, 38, Table
3).
The Examiner further finds that De Sa teaches fermenting the
fermentable substrate (i.e., the mash) with the biocide and yeast in a vessel,
and then separating the alcohol (ethanol) via distillation. Final Act. 19
(citing De Sa ¶¶ 2, 18, 29, Ex. 1; claim 19). The Examiner finds that De Sa
teaches that use of the oxidizing biocides eliminates the need for antibiotics.
Id. (citing De Sa Abstr., ¶¶ 5, 38, claim 20).
The Examiner finds that De Sa does not expressly teach Appellant’s
elected species of chloramine, but also finds that Enzien teaches methods for
monitoring microbiological activity in an aqueous process stream, including
food or beverage processes. Final Act. 19 (citing Enzien Title, Abstr. ¶ 76,
claim 21). The Examiner finds that Enzien teaches the use of chloramine
among a limited set of biocides that significantly overlaps with those taught
by De Sa. Id. (citing Enzien ¶¶ 101, 137, claim 46). The Examiner reasons
that, because Enzien and De Sa teach an overlapping set of biocides (e.g.,
isothiazolins, dibromonitrilopropionamide (DBNPA), quaternary ammonium
compounds, dialdehydes (e.g., glutaraldehyde) the references effectively
establish that these biocides are functional equivalents. Id. (citing In re
Fout, 675 F.2d 297, 301 (C.C.P.A. 1982) (holding that an [e]xpress
suggestion to substitute one equivalent for another is not necessary to render
such substitution obvious); see also MPEP § 2144.06(11)).
The Examiner concludes that a person of ordinary skill in the art
would have found it obvious to use the biocides, including chloramine,
taught by Enzien in an alcohol fermentation process, as taught by De Sa for
the purpose of controlling bacterial growth while eliminating the need for
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antibiotics. Final Act. 20. The Examiner further concludes that a skilled
artisan would have had a reasonable expectation of success in combining the
references because: (1) the biocides disclosed by De Sa and Enzien overlap
substantially; and (2) Enzien is not limited only to papermaking processes,
but teaches applying the disclosed methodology to food or beverage
processes generally. Id. (citing, e.g., Enzien ¶¶ 75–76, 115–116, claims 8,
21, 25).
Appellant argues that De Sa does not disclose any form of chloramine
for use as the biocide. Final Act. 23. According to Appellant, the biocides
listed in paragraphs [0101], [0137], and claim 46 of Enzien are specified for
use in a papermaking process. Id. Appellant asserts that, although Enzien
teaches other types of processes in paragraphs [0076], [0116], and claim 21,
these teaching must be considered in their full context, including the
antecedent descriptions in paragraphs [0073]–[0075], [0113]-[0115] and
claim 8, which explain that these teachings relate only to a method for
monitoring bulk (total) microbiological water activity in a process stream,
and not to the indicated list of biocides for papermaking processes described
elsewhere. Id. at 23–24. Therefore, Appellant argues, Enzien does not
establish that the partially overlapping lists of biocides are functional
equivalents in methods involving treatment of a fermentable mash. Id. at 24.
Appellant argues further that ethanol fermentation involves a
significantly different set of reactants and additives used with fermentable
cellulose-containing material, and different process conditions, from that
used with cellulose-containing material in a papermaking process. App. Br.
24. By way of example, Appellant contends that, in ethanol production,
bacterial control must be provided without harming the yeast organisms
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required to support fermentation process, not a concern in papermaking. Id.
Appellant asserts that the biocidal effects and efficacy of an additive in one
of these kinds of uses thus does not suggest or predict its biocidal effects and
efficacy in the other. Id.
Appellant argues further that Souter teaches away from Appellant’s
claimed invention. App. Br. 25. According to Appellant, Souter shows
controlling, delaying, or slowing release of chloramine as loaded onto a
substrate, wherein the substrate materials are shown to be solid materials,
such as waxes, paraffins, silicas, zeolites, clays, polymeric resins, celluloses,
and cross-linked polymers, and insoluble salts. Id. (citing Souter ¶¶ 44–46,
claim 1). Appellant contends that claim 35 recites the use of “stabilized
chloramine in water” through the claimed fermenting step c). Id. Appellant
contends that Souter teaches that the disinfecting agent is loaded onto a solid
substrate for use as a disinfectant and, therefore, Souter thus does not
remedy the deficiencies of De Sa and Enzien.
We are not persuaded by Appellant’s arguments. As an initial matter,
we do not find persuasive Appellant’s assertion that Souter teaches away
from the claimed invention. A reference may be said to teach away when “a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Souter is directed to: “A
composition for disinfecting contaminated drinking water.” Souter Abstr.
Specifically, Souter teaches that: “The present invention relates to
compositions, methods and kits for use in the purification of contaminated
drinking water for purposes of rendering it potable.” Id. at ¶ 6.
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Souter teaches that:
In the preferred embodiments, the disinfecting agent is a
halogen-based disinfecting agent such as chlorine, or a derivative
thereof, including, but not limited to, chlorine dioxide, calcium
hypochlorite, sodium hypochlorite, organic sources of chlorine
such as isocyanurates or chloramine.
….
The disinfecting agent is preferably used in a controlled, delayed,
sustained or slow release form (herein referred to as “delayed
release”).

Souter ¶¶ 46–47. Souter thus teaches, and the Examiner relies on it as so
teaching, the use of chloramine as a persistent biocide in a water-based
system. See Final Act. 20–21. Appellant points to no teaching or suggestion
of Souter that would discourage or divert a person of ordinary skill in the art
from using chloramine as a biocide in a fermentation system, as claimed by
Appellant.
Appellant acknowledges that De Sa teaches the limitations of claim
35, with the exception being that De Sa does not expressly teach the use of
chloramine, but rather teaches generally the use of organic biocides:
The organic biocide may be any organic compound having a
range of from about 1 to about 20 carbon atoms, in certain non-
limiting embodiments from about 5 to about 15 carbon atoms,
that is known or found to be effective as a biocide in the given
fermentation system, and which does not contain a quaternary
ammonium functionality. In certain non-limiting embodiments
the biocide is selected from the group consisting of aliphatic and
aromatic monoaldehydes and dialdehydes, such as
formaldehyde, glutaraldehyde, orthophthalic aldehyde,
hexanedial, heptanedial, octanedial, hexanal, heptanal, and
octanal. It may be selected from a halogenated or non-
halogenated phenolic, such as o-phenylphenol or one of its
corresponding sodium or potassium salts. It may be a carbamate,
or a compound that releases formaldehyde upon contact with
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water, such as tetrakis(hydroxymethyl) phosphonium sulphate,
an oxazolidine, a triazine, a hydantoin, cis/trans 1-(3-chloro-
allyl)- 3,5,7-triaza-1-azoniaadamantane chloride, or
tris(hydroxymethyl)-nitro-methane. It may be selected from
guanidine-based compounds, such as guanidine, biguanides, and
polyguanides including, for example, polyhexamethylene
biguanide hydrochloride (PHMB). It may be selected from
isothiazolinone compounds, such as 5-chloro-2-methyl-4-
isothiazolin-3-one, 2-methyl-4-isothiazo-lin-3-one, and 2-
benzisothiazolin-3-one. It may be 2-bromo-2-nitro-1,3-
propanediol (“Bronopol”), 2,2-dibromo-3-nitrilo-propionamide
(DBNPA), bromonitrostyrene, or 2,6-dimethyl-m-dioxan-4-ol
acetate.

De Sa ¶ 20.
Enzien teaches the use of the following organic and inorganic biocides
in its claimed processes:
The biocides can be oxidizing and/or non-oxidizing.… With
respect to a papermaking process, the biocides are selected from
the group consisting of: isothiazolin; glutaraldehyde;
dibromonitrilopropionamide; carbamate; quaternary
ammonium compounds; sodium hypochlorite; chlorine
dioxide; peracetic acid; ozone; chloramines; Stabrex™ (bromo-
sulfamate); bromo-chloro-dimethyl hydantoin; dichloro-
dimethyl hydantoin; monochloramine; sodium hypochlorite used
in combination with ammonium salts and stabilizers including
dimethyl hydantoin, amino acids, cyanuric acid, succinimide,
and urea; and a combination thereof.

Enzien ¶¶ 100–101 (emphasis added); see also ¶ 137. The organic oxidizing
biocides italicized in the passage above are also expressly taught by
paragraph [0020] of De Sa, supra, which also expressly teaches the use of
quaternary ammonium compounds (in boldface supra). See, e.g., De Sa
¶¶ 3, 6. Enzien also teaches that: “In one embodiment, the process stream is
from a process selected from the group consisting of: a paper making
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process; a cooling water process; a food or beverage process; and
recreational based process.” Id. at ¶ 76. Although Enzien teaches using
inorganic oxidizing biocides in the context of a papermaking process, it does
not expressly exclude them from the other process taught, and we agree with
the Examiner that a person of ordinary skill would understand that Enzien
teaches these inorganic biocides as available for use in “food or beverage
processes,” particularly in view of the teachings of Souter that chloramine
can be used in drinking water. See Souter ¶¶ 44–45.
We agree with the Examiner that a person of ordinary skill in the art
would have found it obvious to substitute the inorganic oxidizing biocide
chloramine for the oxidizing organic biocides taught by the method of De
Sa. We further agree with the Examiner that Enzien teaches that organic and
inorganic oxidizing biocides are functional equivalents, and that a person of
ordinary skill in the art would have had a reasonable expectation of success
in substituting chloramine for the organic biocides of De Sa. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (holding that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results”); see also id. at
417 (“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability”). Furthermore, “the expectation of
success need only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007).
We acknowledge Appellant’s point that neither Enzien nor Souter
teach the employment of chloramine in the context of a fermentation system
and, consequently, a person of ordinary skill would have little expectation of
success in combining the references. Nevertheless, Appellant adduces no
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evidence of record in support of the argument that an inorganic oxidizing
biocide that is effective in the systems of those references would not be also
reasonably expected to act effectively as an oxidizing biocide in Appellant’s
claimed fermentation system. Furthermore, De Sa and Enzien suggest that
the inorganic and organic oxidizing biocides are functional equivalents in
that their biocidal activity is similar (i.e., oxidizing). Attorney arguments
and conclusory statements that are unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). We conclude that the Examiner has established that the claims
are prima facie obvious over the prior art.
Appellant next argues that, even if the claims are prima facie obvious
over the combined cited prior art, the results presented in the Second
Declaration of Dr. Thomas E. McNeel2 (the “Second McNeel Declaration”)
are sufficiently unexpected and surprising to overcome the Examiner’s
prima facie conclusion of obviousness. App. Br. 26.
Appellant points to the results of the experimental tests in the Second
McNeel Declaration as demonstrating that, unexpectedly, the use of
stabilized chloramine in water as an additive to fermentation controls growth
of bacteria in the mash, even if the treating agent is short-lived in the mash.
App. Br. 27. Furthermore, contends Appellant, the stabilized chloramine
does not harm the yeast in fermentation mash. Id. Appellant asserts that, as
described by the Second McNeel Declaration, one of the sets of experiments
studied the longevity of monochloramine in corn mash and potable (tap)

2 Dr. McNeel is one of the named inventors of the application at issue in this
appeal. Second McNeel Decl. ¶ 1.
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water, which are described in subparagraphs A), B), and C) of paragraph 10
of the Declaration. Id. According to Appellant, the results of this
experiment show that although the chloramine has been completely
degraded, there were also no by-products detected in the samples. Id.
Appellant asserts that the results described in the Second McNeel
Declaration show that even up to 400 ppm of monochloramine is completely
destroyed in the fermentation mash. App. Br. 27. Appellant argues that,
based upon the results described in the Second McNeel Declaration, one of
skill would conclude from these experimental results that monochloramine
would be an effective bactericide in potable (tap) water, because it is not
destroyed by contaminants in the water: however, a skilled artisan would
conclude that monochloramine is ineffective in controlling bacteria in a
fermentation mash since it is rapidly and completely destroyed by the
organic substances in the mash. Id.
Appellant next points to paragraph 11 of the Second McNeel
Declaration, which describes additional experiments studying the biocidal
effectiveness of monochloramine to control bacteria in fermentation mash.
App. Br. 27. Appellant argues that the results of the experiments depicted in
Table 2 of the Declaration demonstrate that the use of monochloramine in
the fermentation mash can achieve ≥ 99% reduction in the bacterial
population when used at ≥ 25 ppm (measured as Cl2). Id. at 27–28.
Furthermore, Appellant states, when applied at 100 ppm, the use of
monochloramine resulted in a >5000-fold reduction in bacteria. Id. at 28.
Appellant contends that this unexpected effectiveness of the
monochloramine as a biocidal agent in the fermentation mash was observed
in spite of the fact that no residual monochloramine could be detected in the
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mash. App. Br. 28. Appellant contends that these results are surprising in
that even though monochloramine is rapidly reduced to ammonium chloride
in the fermentation mash, it is still able to kill a significant portion of the
bacterial population before the monochloramine it is degraded. Id.
Appellant points to Dr. McNeel’s statement that similar effects in
fermentation mash are not achievable using potable (tap) water alone, even
if the tap water had been treated with chloramine at a municipal water
treatment plant. Id. (citing Second McNeel Decl. ¶¶ 7, 10(C)).
We do not find persuasive Appellant’s argument that the results
presented in the Second McNeel Declaration are sufficiently unexpected that
they are able to overcome the Examiner’s prima facie conclusion of
obviousness. “[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991). The Second McNeel Declaration describes studies that
demonstrate that chloramine, an oxidizing inorganic biocide, is capable of
greatly reducing the bacterial count in a fermentation system prior to being
degraded by the fermentation mash. The closest prior art cited in the record
is De Sa, which teaches the use of oxidizing organic biocides in a
fermentation system, such as Appellant’s, to reduce the bacterial count. See
De Sa Abstr. Appellant adduces no evidence to demonstrate that the
oxidizing organic biocides taught by De Sa do not behave similarly, i.e.,
they are also capable of reducing the bacterial count in a fermentation
system prior to being degraded by the mash.
Moreover, the results presented in the Second McNeel Declaration
demonstrate that the inorganic oxidizing biocide chloramine is capable of
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reducing the bacterial count of the fermentation medium while not
significantly reducing the yeast count. We have explained why a person of
ordinary skill in the art would have concluded that would have been obvious
over the teachings of the combined cited prior art. The studies cited in the
Second McNeel Declaration also demonstrate that the chloramine is rapidly
degraded in the closed fermentation system, but not before its biocidal action
has significantly reduced the bacterial count. Appellant has not
demonstrated that this is significantly advantageous over the biocides taught
by De Sa, because none of the latter’s biocides were tested in the studies of
the Second McNeel Declaration. At best, Appellant has demonstrated a
hitherto unknown and unappreciated property of chloramine as an oxidizing
biocide in fermentation systems. That, in itself, is insufficient to overcome
the Examiner’s prima facie conclusion of obviousness. See Baxter, 952 F.2d
at 392 (holding that: “[m]ere recognition of latent properties in the prior art
does not render nonobvious an otherwise known invention”).
We consequently conclude that the Appellant’s allegedly unexpected
results are not sufficient to overcome the Examiner’s conclusion that the
claims are prima facie obvious over the combined cited prior art, and we
affirm the Examiner’s rejection of the claims.
Appellant argues claim 40 separately, but relies upon essentially the
same arguments presented supra. App. Br. 29–31. We consequently affirm
the Examiner’s rejection.

Issue 2: Rejection over De Sa, Enzien, Souter, and Dailey
Appellant relies upon essentially the same arguments presented supra,
arguing further that Dailey does not overcome the alleged deficiencies of the
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20
combined teachings of De Sa, Enzien, or Souter, particularly in view of the
studies presented in the Second McNeel Declaration. App. Br. 29–32. We
have explained why we do not find Appellant’s argument persuasive, and we
affirm the Examiner’s rejection. Furthermore, although Appellant argues
claim 37 separately, Appellant relies upon essentially the same arguments
presented supra.
Appellant also argues dependent claim 40 separately. Claim 40
recites: “The method of claim 35, wherein the stabilized chloramine is added
to the fermentable mash in step c) in a concentration of from 50 ppm to 500
ppm, based on fermentable material, on a dry solids weight/weight basis.”
App. Br. 44. In addition to repeating the arguments with respect to the other
claims, Appellant contends that the addition of the stabilized chloramine to
the fermentable mash in a concentration of from 50 ppm to 500 ppm, based
on fermentable material, on a dry solids weight/weight basis, is much greater
than any chloramine that may be present in tap water.
The Examiner finds that De Sa teaches amounts of biocide falling
within the claimed range. Final Act. 21 (citing De Sa ¶¶ 24, 33, 35, 38).
We do not find Appellant’s argument persuasive. De Sa teaches:
In general, the combination of both the organic biocide and the
quaternary ammonium compound may range, in certain non-
limiting embodiments, from about 10,000 parts per billion (ppb)
to about 100 parts per million (ppm), and in other nonlimiting
embodiments may range from about 1 ppm to about 100 ppm,
based on the total amount of fermentation substrate by weight. In
still other non-limiting embodiments the combined amount may
range from about 5 ppm to about 50 ppm, and in yet other non-
limiting embodiments it may range from about 10 ppm to about
40 ppm.

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De Sa ¶ 24. These values for oxidizing organic biocides overlap Appellant’s
claimed range. We acknowledge that De Sa does not expressly teach
chloramine, or other inorganic oxidizing biocides, but we find that the
ranges taught by De Sa would inform a person of ordinary skill in the art of
the ranges required for oxidizing biocides in general, and would provide a
skilled artisan with a starting range from which to optimize the concentration
of chloramine. See In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980)
(holding that “discovery of an optimum value of a result effective variable
… is ordinarily within the skill of the art”).
We consequently affirm the Examiner’s rejection of the claims on this
ground.

Issue 3: Rejection over De Sa, Enzien, Souter, Edwards, and Dailey
Appellant again relies upon essentially the same arguments presented
supra, arguing further that Edwards does not overcome the alleged
deficiencies of the combined teachings of De Sa, Enzien, Dailey, or Souter,
particularly in view of the studies presented in the Second McNeel
Declaration. App. Br. 29–32.
We have explained why we do not find Appellant’s argument
persuasive, and we affirm the Examiner’s rejection.

DECISION
The Examiner’s rejection of claims 35–41 under 35 U.S.C.
§ 112, first paragraph, for lack of written descriptive support is reversed.
The Examiner’s rejection of claims 35–41 under 35 U.S.C.
§ 112, first paragraph, for lack of enablement is reversed.
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The Examiner’s rejection of claims 35–41 under 35 U.S.C.
§ 112, second paragraph, as being indefinite is reversed.
The Examiner’s rejection of claims 35–41 under 35 U.S.C.
§ 103(a) is affirmed.
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

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
35–41 112, first
paragraph
written
description
35–41
35–41 112, first
paragraph
enablement 35–41
35–41 112, second
paragraph
indefiniteness 35–41
35, 37–41 103 De Sa, Enzien,
Souter
35, 37–41
35–41 103 De Sa, Enzien,
Souter, Dailey
35–41
35–41 103 De Sa, Enzien,
Souter, Dailey,
Edwards
35–41
Overall
Outcome
35–41