Xyleco, Inc.

Patent Trials and Appeals Board

May 26, 2020

14299008 - (D) (P.T.A.B. May. 26, 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.
14/299,008 06/09/2014 Marshall MEDOFF X2002-701820 5541
127630 7590 05/26/2020
LANDO & ANASTASI, LLP
XYLECO, Inc.
60 STATE STREET, 23RD FLOOR
BOSTON, MA 02109
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
CKent@LALaw.com
docketing@lalaw.com
patents@xyleco.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARSHALL MEDOFF, THOMAS CRAIG MASTERMAN, and
JOHN J. BAXTER

Appeal 2019-004204
Application 14/299,008
Technology Center 1700
____________

Before KAREN M. HASTINGS, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4, 5, 9–16, and 18–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In this Decision, we refer to the Specification filed June 9, 2014 (“Spec.”),
the Final Office Action dated Feb. 26, 2018 (“Final Act.”), the Appeal Brief
filed Jan. 29, 2019 (“Appeal Br.”), and the Examiner’s Answer dated Feb.
28, 2019 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Xyleco, Inc. as the real party in
interest. Appeal Br. 2.
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Application 14/299,008

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STATEMENT OF THE CASE
The invention relates to methods for producing and purifying products
from saccharified biomass materials. Spec. ¶ 4. Claim 1, reproduced below,
is illustrative of the subject matter on appeal (disputed limitations italicized).
1. A method of upgrading a process stream, the
method comprising:
treating cellulosic or lignocellulosic material with
ionizing radiation to reduce recalcitrance of the cellulosic or
lignocellulosic material;
saccharifying the radiated cellulosic or lignocellulosic
material to obtain saccharified biomass liquids comprising
xylose and glucose;
fermenting the saccharified biomass liquids with an
organism that selectively ferments the glucose to a fermentation
product, but does not ferment xylose to produce a fermentation
composition comprising the xylose, and
removing undesired components from the fermentation
composition, utilizing a simulated moving bed chromatography
system, wherein the undesired components are selected from
the group consisting of colored bodies, soluble lignin
fragments, ionic compounds, and mixtures thereof.
Appeal Br. 14 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
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Application 14/299,008

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argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the appealed rejections.
The Examiner rejects claims 1, 4, 5, 9–16, and 18–28 as follows:
Claims
Rejected 35 U.S.C. § References/Basis
1, 4, 5, 9–16, 18, 21–
26, 28 103(a)
Foody,3 Medoff,4
Mikkelsen5
27 103(a) Foody, Medoff, Mikkelsen, Dow6
19, 20 103(a) Foody, Medoff, Mikkelsen, Rock7

Appellant argues the rejection of independent claim 1 and relies on
arguments presented with respect to claim 1 for the rejections of the
remaining claims, which all depend directly or indirectly on claim 1. Appeal
Br. 11. Therefore, our analysis focuses on claim 1.
Appellant contends the Examiner erred in rejecting claim 1 over
Foody and Medoff as evidenced by Mikkelsen because (1) Foody teaches
away from selective fermentation of glucose, (2) Foody does not disclose the
use of cation exchange or chelation with the fermentation composition to
remove undesired components, and (3) the combination of Medoff with
Foody lacks sufficient reasoning for modifying Foody’s method to utilize
irradiation instead of acid hydrolysis. Appeal Br. 6–11. Although Appellant
does not dispute the Examiner’s finding that Foody discloses organisms that

3 US 2009/0056707 A1, published Mar. 5, 2009.
4 US 2010/0203607 A1, published Aug. 12, 2010.
5 US 2011/0287501 A1, published Nov. 24, 2011.
6 DOWEXTM MONOSPHERE 88 Ion Exchange Resin for Sweetener
Applications Product Information.
7 US 4,049,546, issued Sept. 20, 1977.
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Application 14/299,008

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selectively ferment glucose, Appellant asserts that a person having ordinary
skill in the art would understand Foody ferments all of the sugars to increase
the yield of fermentation products in view of Foody’s failure to disclose
xylose as a component of the fermentation composition. Id. at 6.
Appellant argues Foody’s cation exchange operation treats a sugar
solution to remove calcium and obtain sulfate salts and has nothing to do
with processing the fermentation composition resulting from fermentation of
glucose. Id. at 7 (citing Foody ¶ 21). According to Appellant, Foody’s
Figure 1 shows sugar stream 130 is processed to remove acids and then is
subjected to fermentation to produce ethanol or other fermentation products.
Id. (citing Foody ¶¶ 172, 192). Appellant contends the cited prior art,
therefore, does not disclose removing undesired components from the
fermentation composition resulting from the selective fermentation of
glucose as required by claim 1. Id. at 8. Appellant additionally argues
modifying Foody’s process with Medoff’s irradiation step lacks reasoning
because a person having ordinary skill in the art would not consider
replacing sulfuric acid pretreatment with irradiation in the Foody process
because Foody’s focus is to obtain sulfate salts. Id. at 10–11.
In response, the Examiner provides a broad definition for the recited
“fermentation composition” to encompass “a composition which has been
subject to a decomposition process.” Ans. 11. The Examiner finds Foody
teaches removing calcium and other cations from the sugar stream, which
reads on this interpretation of the claim language. Id. (citing Foody ¶¶ 24,
25). The Examiner responds that Foody does not teach away from selective
fermentation of glucose because Foody discloses fermenting glucose with
saccharomyces cerevisiae and zymomonas, which do not ferment pentose
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sugars such as xylose as evidenced by Mikkelsen. Id. at 12–13 (citing Foody
¶¶ 192, 193; Mikkelsen ¶¶ 2, 66).
Appellant’s arguments persuade us that the Examiner reversibly erred
in rejecting claim 1 as obvious over the teachings of Foody as modified by
Medoff and evidenced by Mikkelsen.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404–05 (CCPA 1969); In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Even if the Examiner’s
construction of the claim term “fermentation composition” to read on
Foody’s sugar stream is correct, the Examiner does not adequately explain
how Foody’s step of removing calcium and other cations from the sugar
stream would follow the selectively fermenting step as required by claim 1.
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (“The
correct inquiry in giving a claim term its broadest reasonable interpretation
in light of the specification is not whether the specification proscribes or
precludes some broad reading of the claim term adopted by the examiner.
And it is not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” (citation omitted)).
The Examiner finds the fermenting step required by claim 1 is taught
by Foody’s use of microorganisms to ferment the sugar streams. Final
Act. 3; Ans. 12 (citing Foody ¶¶ 192, 193). The Examiner also finds that
Foody discloses removing calcium and other cations from a sugar stream.
Ans. 15 (citing Foody ¶¶ 24, 25). The Examiner does not adequately explain
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how these findings teach or suggest removing undesired components from
the product resulting from the step of fermenting saccharified biomass
liquids with an organism that selectively ferments the glucose as required by
claim 1. Therefore, we agree with Appellant (Appeal Br. 9) that the order of
the processing steps required by claim 1 has not been shown to be disclosed
by Foody because Foody does not disclose any further processing resulting
after fermenting with an organism.
The preponderance of the evidence in this appeal record therefore
supports Appellant’s position that the Examiner erred in finding claim 1’s
process disclosed or suggested by the cited prior art references. Accordingly,
we reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) for
the above reasons.
Because we find Appellant’s arguments persuasive of error in the
Examiner’s rejection of claim 1 for the reasons discussed above, we likewise
reverse the Examiner’s rejection of claims 4, 5, 9–16, and 18–28 for the
same reasons.
CONCLUSION
For these reasons, we reverse the Examiner’s rejection of claims 1, 4,
5, 9–16, and 18–28 under 35 U.S.C. § 103(a) as obvious over the cited prior
art.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 4, 5, 9–16,
18, 21–26, 28 103(a)
Foody, Medoff,
Mikkelsen
1, 4, 5, 9–16,
18, 21–26, 28
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Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
27 103(a) Foody, Medoff, Mikkelsen, Dow 27
19, 20 103(a) Foody, Medoff, Mikkelsen, Rock 19, 20
Overall
Outcome
1, 4, 5, 9–16,
18–28

REVERSED