Butamax Advanced Biofuels LLCv.Gevo, Inc.

Patent Trial and Appeal Board

Mar 13, 2015

13441468 (P.T.A.B. Mar. 13, 2015)

Trials@uspto.gov Paper 29
Tel: 571-272-7822 Entered: March 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

BUTAMAX ADVANCED BIOFUELS LLC,
Petitioner,

v.

GEVO, INC.,
Patent Owner.
_______________

Case IPR2014-00250
Patent 8,546,627 B2
_______________

Before SHERIDAN K. SNEDDEN, CHRISTOPHER L. CRUMBLEY, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Butamax Advanced Biofuels LLC (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) to institute an inter partes review of claims 1–21 of U.S.
Patent No. 8,546,627 B2 (“the ’627 patent”) pursuant to 35 U.S.C. §§ 311–
319. Gevo, Inc. (“Patent Owner”) did not file a Preliminary Response to the
Petition. On May 22, 2014, we instituted an inter partes review of claims 1–
21 on certain grounds of unpatentability alleged in the Petition. Paper 8
(“Dec. to Inst.”). After institution of trial, the Patent Owner filed a Patent
Owner Response (Paper 16, “PO Resp.”), to which Petitioner filed a Reply
(Paper 17, “Reply”). An oral argument was held on January 14, 2015.
1

We have jurisdiction under 35 U.S.C. § 6(c). In this Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
determine Petitioner has shown by a preponderance of the evidence that all
of the challenged claims of the ’627 patent are unpatentable.
B. Related Proceedings
Petitioner informs us of no related litigations. Pet. 2. Concurrent with
the present inter partes review, Petitioner also requested review of, and the
Board instituted trial on, the following claims in patents in the same family
as the ’627 patent: claims 1–23 of U.S. Patent No. 8,193,402, Case
IPR2014-00142 (PTAB May 22, 2014) (Paper 13); claims 1–21 of U.S.
Patent No. 8,378,160, Case IPR2014-00143 (PTAB May 22, 2014) (Paper
9); and claims 1–19 of US Patent No. 8,487,149, Case IPR2014-00144
(PTAB May 22, 2014) (Paper 9). Because of overlapping issues between

1
A transcript (“Tr.”) of the oral hearing is included in the record. Paper 28.
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the four proceedings, we consolidated the oral hearings for IPR2014-00250,
IPR2014-00142, IPR2014-00143, and IPR2014-00144. See Paper 19.
Additionally, Petitioner requested review of, and the Board instituted trial on
claims 1–15 of unrelated U.S. Patent No. 8,373,012 in IPR2014-00402. See
Paper 11.
C. The ’627 Patent
The ’627 patent, titled “Renewable Compositions,” was issued on
October 1, 2013, based on Application No. 13/441,468 (“the ’468
application”), filed on April 6, 2012. The ’468 application is a division of
Application No. 12/327,723, filed on December 3, 2008 (issued as U.S.
Patent No. 8,193,402). The ’627 patent asserts its earliest priority claim to
December 3, 2007, which is the filing date for Provisional Application Nos.
60/991,978 and 60/991,990.
The ’627 patent relates to a method of fermenting a biomass with a
microorganism, dehydrating the resultant alcohol to form biofuel precursors,
and then subjecting the biofuel precursors to processes such as
oligomerization, hydrogenation, and aromatization to form renewable jet
fuel. Ex. 1001, 19:7–26. The Specification discloses several embodiments
that include, for example, hydrolyzing a feedstock comprising a
polysaccharide to produce fermentable hydrolysis products and fermenting
the products in a medium with a microorganism to produce C2–C6 alcohol.
Id. at 44:24–60. The method may include dehydrating the C2–C6 alcohol to
produce C2–C6 olefins. Id. at 44:66–45:19. The olefins can be oligomerized
to make C6–C24 unsaturated oligomers. Id. at 47:55–66. Additionally, the
C6–C24 unsaturated oligomers can be hydrogenated to form C6–C24 saturated
alkanes (id. at 48:2–6), which can be combined with C10–C14 aromatics to
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form jet fuel that meets ASTM international specification D1655. Id. at
59:9–60:10.
Claims 1 and 18 are illustrative of the claimed subject matter in this
trial and are reproduced below:
1. A process for preparing a renewable jet fuel comprising:
(a) treating biomass to form a feedstock;
(b) fermenting the feedstock with one or more species of
microorganism, thereby forming one or more C2–C6 alcohols;
(c) dehydrating at least a portion of the one or more C2–C6 alcohols
obtained in step (b), thereby forming a product comprising one
or more C2–C6 olefins;
(d) isolating the one or more C2–C6 olefins;
(e) oligomerizing at least a portion of the one or more C2–
C6 olefins isolated in step (d), thereby forming a product
comprising one or more C6–C24 unsaturated oligomers;
(f) optionally hydrogenating at least a portion of the product of
step (e) in the presence of hydrogen, thereby forming a product
comprising one or more C6–C24 saturated alkanes; and
(g) combining the product of step (f) with one or more C10–
C14 aromatic hydrocarbons, thereby forming a jet fuel;
whereby the product of step (g) meets the requirements of ASTM
D1655.

18. A renewable jet fuel or jet fuel precursor comprising
a mixture of aromatic hydrocarbons and C11–
C14 aliphatic hydrocarbons.

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D. Prior Art References Alleged to Support Unpatentability
The following prior art references were asserted in the instituted
grounds:
Reference Patent/Printed Publication Date Exhibit
D’Amore US Patent Pub. No. 2008/0132741
A1
June 5, 2008 1002
ASTM
D1655
American Society for Testing and
Measurement, Standard D1655-07:
Standard Specification for Aviation
Turbine Fuels
July 1, 2007 1004
Cottrell US Patent No. 4,861,930 Aug. 29, 1989 1006
Wilke US Patent No. 4,359,533 Nov. 16, 1982 1007
Manzer US Patent Pub. No. 2005/0228203
A1
Oct. 13, 2005 1008
Bradin PCT Patent Pub. No. WO
2007/061903 A1
May 31, 2007 1010
E. Grounds of Unpatentability Instituted for Trial
The following table summarizes the challenges to patentability that
were instituted for inter partes review:
Reference(s) Grounds Claim(s) challenged
D’Amore § 102(e) 1, 7, 11, and 14
D’Amore and ASTM D1655 § 103(a) 1–7,11, 14, and 18–21
D’Amore, ASTM D1655, and Cottrell § 103(a) 8–10, 12, and 13
D’Amore, ASTM D1655, and Wilke § 103(a) 15
Bradin § 102(e) 18
Manzer and D’Amore § 103(a) 16 and 17

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
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specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
In re Cuozzo Speed Techs., LLC, 2015 WL 448667, at *6 (Fed. Cir. Feb. 4,
2015). Claim terms are given their ordinary and customary meaning as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
1. Optional Language in Claims 1 and 16
Petitioner argues independent claims 1 and 16 should be construed as
encompassing at least two processes because each recites optional steps
(e.g., steps (f) and (g) of claim 1). Pet. 10–13. According to Petitioner,
claim 1 encompasses the following two processes: Process 1 comprising
steps (a)–(e) that culminates in the formation of one or more C6–C24
unsaturated oligomers (i.e., one does not practice optional steps (f) and (g));
and Process 2 comprising steps (a)–(g) and the “whereby” clause that
culminates in the formation of an on-specification jet fuel comprising one or
more C6–C24 saturated alkanes and one or more C10–C14 aromatic
hydrocarbons (i.e., one practices optional steps (f) and (g)). Id. at 10.
Patent Owner does not address the optional language in its Response.
The term “optionally,” recited in step (f) of claim 1, is acceptable
alternative language, which contains no ambiguity as to which alternatives
are covered by the claim. See, e.g., Ex parte Wu, 10 USPQ2d 2031 (BPAI
1989); Ex parte Cordova, 10 USPQ2d 1949 (BPAI 1987). The claim term
“optionally” can be viewed in the same light as the use of “or,” which has
been construed to permit either or both of two alternatives, but not to require
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that both exist. See Brown v. 3M, 265 F.3d 1349, 1352–53 (Fed. Cir. 2001);
Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1330–31
(Fed. Cir. 2001); see also Titanium Metals Corp. v. Banner, 778 F.2d 775,
782 (Fed. Cir. 1985) (“It is also an elementary principle of patent law that
when, as by a recitation of ranges or otherwise, a claim covers several
compositions, the claim is ‘anticipated’ if one of them is in the prior art.”).
Therefore, the broadest reasonable interpretation of the claim
language of claim 1 permits either alternative of the process described by
steps (a)–(e) that culminates in the formation of one or more C6–C24
unsaturated oligomers (i.e., one does not practice optional steps (f) and (g)),
or the process described by steps (a)–(g) and the “whereby” clause that
culminates in the formation of an on-specification jet fuel comprising one or
more C6–C24 saturated alkanes and one or more C10–C14 aromatic
hydrocarbons (i.e., one practices optional steps (f) and (g)).
Petitioner similarly contends that claim 16, which contains an optional
step, encompasses two processes. Pet. 12. Step (v) of claim 16 is an
optional step. The claim, as written, however, indicates that even if optional
step (v) is not performed, step (vi) is required, because step (vi) states that
the product from step (iv) or step (v) is to be aromatized. See Ex. 1001,
64:11–13. Additionally, step (vii) is optional and recites oligomerizing the
product of step (vi) in the presence of the C2–C6 olefins from step (v). Thus,
the language of optional step (vii) indicates that if step (v) is not performed,
then step (vii) cannot be performed. Therefore, claim 16 recites three
possible processes: (1) a process with only non-optional steps (i)–(iv) and
(vi); (2) a process with all non-optional steps plus optional step (v); and (3) a
process with all non-option steps plus both optional steps (v) and (vii).
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Based on the foregoing, we find that the broadest reasonable interpretation
of claim 16, in light of the Specification, encompasses those three alternative
processes.
2. Technical Error in Claim 16
Petitioner contends that claim 16 contains a technical inaccuracy,
because claim 16 recites “aromatizing one or more of the C2–C6 olefins
obtained in step (iv).” Pet. 14. According to Petitioner, a person of ordinary
skill in the relevant art would know that C2–C5 olefins would first have to be
oligomerized to obtain C6 or higher olefins that can be aromatized in step
(vi), and claim 16 should be construed as such. Id. (citing Ex. 1011 ¶ 49).
Patent Owner does not address the Petitioner’s argument regarding an
alleged technical inaccuracy in claim 16 in its Response.
Even if Petitioner’s contention is correct and claim 16, as written
currently, contains a technical error, we will not redraft a claim to make it
operable or to sustain its validity. See, e.g., Chef Am., Inc. v. Lamb-Weston,
Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004); Allen Eng’g Corp. v. Bartell
Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002); Elekta Instrument S.A. v.
O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1308–09 (Fed. Cir.
2000); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357
(Fed. Cir. 1999); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir.
1999); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir.
1995); Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n.6
(Fed. Cir. 1990). We must construe a claim based on the way in which the
claim is drafted. Process Control, 190 F.3d at 1357.
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In any case, we do not find Petitioner’s contention persuasive because
the claims encompass C6 olefins, which can be aromatized. Therefore, we
decline to construe claim 16 so as to change the recited language.
3. Preamble in Claims 1 and 18
Petitioner contends that the preambles to claims 1 and 18, which recite
“[a] renewable jet fuel or jet fuel precursor,” are not limiting. Pet. 15; Reply
2–3. According to Petitioner, the claims’ preambles impart no structure to
the claim and, therefore, do not modify the source (e.g., renewable or non-
renewable) of the aromatic hydrocarbons or C11–C14 aliphatic hydrocarbons.
Id. Patent Owner does not address the preamble in claim 18, but appears to
argue that the preamble in the claim 1 should be construed as an express
limitation. PO Resp. 4.
Preamble language that merely states the purpose or intended use of
an invention generally is not treated as limiting the scope of a claim. See
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
1997). When the limitations in the body of the claim rely upon or derive
essential structure from the preamble, however, then the preamble acts as a
necessary component of the claimed invention and is limiting. See Eaton
Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
In the present case, the preamble in claim 1 states an intended use for
the recited processes. First, the body of each claim recites limitations that
dictate that the processes use a “renewable” source for hydrocarbons,
specifically claiming a step for “treating biomass to form a feedstock” and
“fermenting the feedstock . . . thereby forming one or more C2–C6 alcohols”
(Ex. 1001, 62:47–50). Therefore, there is no reliance upon the preamble to
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define the subject matter of the claimed invention (i.e., the renewable source
for the hydrocarbons), because it is expressed explicitly in the body of the
claims. Second, for claim 1, the body of the claim recites that the process
forms a jet fuel
2
(id. at 62:64–65) and that the jet fuel must meet the required
specification for jet fuels (id. at 62:66–67). Therefore, the preamble
language is redundant of the language recited specifically in the body of the
claims and merely states an intended purpose of the recited
claim. Accordingly, we find the preamble to claim 1 in the ’627 patent not
to be limiting.
The same reasoning and holding does not apply to claim 18. Unlike
claim 1, the preamble of claim 18 does not state merely an intended use for
the invention, but rather recites a specific characteristic of the source
component of the invention. The ’627 patent specifically defines
“renewable” as encompassing compounds such as alcohols or hydrocarbons
prepared from biomass using thermochemical methods (e.g., Fischer-
Tropsch catalysts), biocatalysts (e.g., fermentation), or other processes.
Ex. 1001, 9:8–15. Claim 18 is an example of a claim drafter choosing to use
both the preamble and the body of the claim to define the subject matter of
the claimed invention. See, e.g., Bell Commc’ns Research, Inc. v. Vitalink
Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). Therefore, we find the
preamble to claim 18 is limiting, and the source of the aromatic
hydrocarbons or C11–C14 aliphatic hydrocarbons recited must be
“renewable” as the term is defined by the ’627 patent, and the claimed

2
Alternatively, if optional steps (f) and (g) are not performed, the process
forms a jet fuel precursor.
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product must be a “jet fuel” or “jet fuel precursor” as these terms are defined
by the ’627 patent.
B. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 102 if a prior art reference discloses every
limitation of the claimed invention, either explicitly or inherently. Glaxo
Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.1995); see
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (holding that “[t]o anticipate, a single reference must teach every
limitation of the claimed invention,” and any limitation not taught explicitly
must be taught inherently and would be so understood by a person
experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
would reasonably understand or infer” that a reference teaches or discloses
all of the elements of the claimed invention).
The principle of inherency, in the law of anticipation, requires that
any information missing from the reference would nonetheless be known to
be present in the subject matter of the reference, when viewed by persons
experienced in the field of the invention. However, “anticipation by inherent
disclosure is appropriate only when the reference discloses prior art that
must necessarily include the unstated limitation, [or the reference] cannot
inherently anticipate the claims.” Transclean Corp. v. Bridgewood Servs.,
Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal citation omitted); see
Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) (“consistent with
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the law of inherent anticipation, an inherent property must necessarily be
present in the invention described by the count, and it must be so recognized
by persons of ordinary skill in the art”) (citations omitted); In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999) (that a feature in the prior art reference
“could” operate as claimed does not establish inherency). Thus, when a
claim limitation is not set forth explicitly in a reference, evidence “must
make clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by
persons of ordinary skill.” Continental Can Co., 948 F.2d 1264, 1268–69
(Fed. Cir. 1991) (citations omitted). It is not sufficient if a material element
or limitation is “merely probably or possibly present” in the prior art.
Trintec Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir.
2002) (citations omitted); see W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554 (Fed. Cir. 1983) (anticipation “cannot be predicated on
mere conjecture respecting the characteristics of products that might result
from the practice of processes disclosed in references”) (citation omitted); In
re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (to anticipate, the asserted
inherent function must be present in the prior art).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
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(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to determine the level of
ordinary skill in the pertinent art at the time of the invention. Graham v.
John Deere, 383 U.S. at 17. “The importance of resolving the level of
ordinary skill in the art lies in the necessity of maintaining objectivity in the
obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718
(Fed. Cir. 1991).
Petitioner contends that a person of ordinary skill in the art at the time
of the ’627 patent would have a Ph.D. in Chemistry, Chemical Engineering,
or a similar related discipline and would have experience in organic
chemistry and/or fuel chemistry, as well as transportation fuel production.
Pet. 3–4; Ex. 1011 ¶ 16. Petitioner argues that, in the alternative, a person of
ordinary skill in the art would have a Bachelor's degree in Chemistry,
Chemical Engineering, or a similar related discipline and substantial
experience in an industry involving organic chemistry and/or fuel chemistry,
as well as transportation fuel production. Pet. 3–4; Ex. 1011 ¶ 16. Patent
Owner states that one of ordinary skill in the art at the time of the ’627
patent would have a Ph.D. in Chemistry, Chemical Engineering, or a similar
related discipline and would have experience in fuel chemistry. Tr. 41:3–5.
Based on our review of the ’627 patent and the types of problems and
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solutions described in the ’627 patent and cited prior art, we conclude a
person of ordinary skill in the art at the time of the ’627 patent would have a
Ph.D. degree in Chemistry, Chemical Engineering, or a similar related
discipline and some experience in an industry involving organic chemistry
and/or fuel chemistry. Based on the stated qualifications of Joseph T.
Joseph, Ph.D. (Ex. 1011 ¶¶ 9–14) and his Curriculum Vitae (Ex. 1012),
Petitioner’s declarant meets the requirements of this definition. We further
note that the applied prior art reflects the appropriate level of skill at the time
of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001).
D. Anticipation of Claims 1, 7, 11, and 14 by D’Amore
Petitioner contends D’Amore anticipates, under 35 U.S.C. § 102(e),
claims 1, 7, 11, and 14 of the ’627 patent. Pet. 19–24. For reasons that
follow, we determine Petitioner has shown by a preponderance of the
evidence that claims 1, 7, 11, and 14 are unpatentable under 35 U.S.C.
§ 102(e).
1. Overview of D’Amore
D’Amore discloses producing isobutanol (a C2–C6 alcohol) by
culturing microorganisms in the presence of carbohydrates. Ex. 1002 ¶¶ 23,
56. D’Amore specifically teaches converting isobutanol into butene (a C2–
C6 olefin) in the presence of a catalyst (id. ¶ 56, Fig. 1) and converting
dimerized butene into isooctane (id. ¶¶ 64, 76). D’Amore also teaches
alkylating C6–C9 aromatics with butene to produce C10–C13 aromatic
compounds. Id. ¶¶ 67–71. D’Amore states that butane produced by the
disclosed processes is useful as an intermediate for the production of
transportation fuels, including jet fuel. Id. ¶ 20.
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2. Analysis
a. D’Amore Qualifies as 102(e) Prior Art
D’Amore was filed on June 13, 2007, published on June 5, 2008, and
claims priority to U.S. Provisional Application No. 60/814,137 (“the ’137
application”), filed on June 16, 2006. See Ex. 1003. The disclosure in the
’137 application (Ex. 1003) is the same disclosure found in D’Amore (Ex.
1002). Ex. 1011 ¶ 59. Thus, D’Amore qualifies as prior art to the claims of
the ’627 patent under 35 U.S.C. § 102(e) as of the ’137 application’s filing
date.
b. Independent Claim 1
Petitioner contends D’Amore, as summarized in the overview above,
discloses each limitation of claim 1 of the ’627 patent, except for step (g).
Pet. 19–22. Petitioner also contends that steps (f) and (g) of claim 1 are
optional steps and are not required elements for the claimed process. Id. at
19–20 n.1. According to Petitioner, D’Amore discloses a process to produce
renewable hydrocarbons useful in transportation fuels, such as jet fuels. Id.
at 21 (citing Ex. 1002 ¶¶ 4, 20; Ex. 1003, 1:16–24, 3:12–16). Petitioner
relies on the Declaration of Dr. Joseph (Ex. 1011) to support its contentions
of anticipation. Dr. Joseph testifies that D’Amore discloses a process for
making renewable hydrocarbons. Ex. 1011 ¶ 62.
Patent Owner disagrees with Petitioner’s characterization of D’Amore
and argues that D’Amore does not disclose, directly or inherently, a process
for producing “a renewable jet fuel” as recited in the preamble of claim 1.
PO Resp. 3, 6. According to Patent Owner, the isooctanes described in
D’Amore are not suitable as a jet fuel. Id. at 4, 6. Patent Owner concludes
that process of D’Amore “in fact, produces a fuel which cannot find
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practical application as a jet fuel,” even if not held strictly to the ASTM
standard. Id. at 6.
As discussed above, the preamble for claim 1 is not limiting. See
supra, Section II.A.3. Therefore, we are not persuaded by Patent Owner’s
contention that to anticipate the process of claim 1, a reference must
disclose, directly or inherently, a process for producing “a renewable jet
fuel.”
Additionally, as discussed above, the claim term “optionally” permits
either or both of two alternative processes encompassed by claim 1, but does
not require that both exist. See supra, Section II.A.1 (citing Brown, 265
F.3d at 1352–53; Kustom Signals, 264 F.3d at 1330–31). Claim 1 recites
that at step (f) the claim process can include “optionally hydrogenating at
least a portion of the product of step (e),” while step (g) recites “combining
the product of step (f) with one or more C10–C14 aromatic hydrocarbons,
thereby forming jet fuel.” Thus, to anticipate claim 1 of the ’627 patent, a
reference need only disclose each of steps (a)–(e); a reference need not
disclose the optional steps (f) and (g). Because step (g) requires a product
produced from step (f), if step (f) is not performed, then step (g) cannot be
performed and a product of step (g) will not be formed.
We are persuaded that D’Amore discloses each required step (a)–(e)
of claim 1. First, D’Amore discloses steps (a) and (b) by treating an aqueous
stream of biomass-derived carbohydrates that are fermented with
microorganisms to create a fermentation broth that produces isobutanol
(C4H10O, an alcohol). Ex. 1002 ¶ 56. Second, D’Amore discloses step (c)
by dehydrating of the aqueous stream to isolate the isobutanol, which is
converted by an acid catalyst into butene (C4H8, an alkene olefin). Id.
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¶¶ 56–57. Third, D’Amore discloses step (d) by distilling the butene from
any unconverted isobutanol. Id. ¶ 57. Lastly, D’Amore discloses step (e) by
oligomerizing butene into isooctene (C8H16, an unsaturated oligomer). Id.
¶ 64. D’Amore also discloses step (f) by converting the isooctene to
isooctane (C8H18, a saturated alkane) using a hydrogenation catalyst in the
presence of hydrogen. Id. ¶ 76. D’Amore states that the isooctane can be
used as a fuel additive. Id. ¶ 64. Therefore, we find that D’Amore discloses
the required steps (a)–(e), as well as step (f), of claim 1.
Accordingly, we find that Petitioner has shown by a preponderance of
the evidence that claim 1 is anticipated under 35 U.S.C. § 102(e) by
D’Amore.
c. Dependent Claims 7, 11, and 14
Claims 7, 11, and 14 depend from claim 1, and Petitioner contends
that D’Amore discloses embodiments that teach aspects of each dependent
claim. Pet. 37–41. Patent Owner does not provide contentions regarding
additional limitations recited in the dependent claims. PO Resp. 7. After
careful consideration of the language recited in claims 7, 11, and 14, we are
satisfied D’Amore discloses the steps recited in the claims. See Ex. 1002,
¶¶ 21, 50, 75 (disclosing dehydrating and oligomerizing in the presence of
an acidic catalyst, as recited in claim 7), ¶¶ 56–57, 64 (disclosing a process
for preparing a renewable jet fuel, as recited in claim 11), ¶¶ 5–8 (disclosing
removing C2–C6 alcohols from feedstock prior to dehydration, as recited in
claim 14).
Accordingly, we find that Petitioner has shown by a preponderance of
the evidence that claims 7, 11, and 14 are anticipated under 35 U.S.C.
§ 102(e) by D’Amore.
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E. Obviousness of Claims 1–7, 11, 14, and 18–21 over D’Amore in
view of ASTM D1655
Petitioner argues that the combination of D’Amore and ASTM D1655
renders each of claims 1–7, 11, 14, and 18–21 obvious. Pet. 24–38. In view
of the overview of D’Amore provided above (see supra, Section II.D.1) and
for reasons that follow, we determine Petitioner has shown by a
preponderance of the evidence that claims 1–7, 11, 14, and 18–21 are
unpatentable under 35 U.S.C. § 103(a).
1. Overview of ASTM D1655
ASTM D1655 describes standard specifications for aviation turbine
fuel (i.e., jet fuel). Ex. 1004. Such specifications include the materials and
manufacture of jet fuel, how the jet fuel is tested, and the required
performance characteristics of such fuel. Id.
2. Analysis
a. Independent Claim 1
D’Amore describes an invention useful for the production of
intermediate compounds used in transportation fuels such as jet fuel.
Ex. 1002 ¶ 20. Specifically, D’Amore teaches reacting aromatic compounds
with butene in order to produce a C10–C13 substituted aromatic compound.
Ex. 1002 ¶ 67. D’Amore further discloses recovering C10–C13 substituted
aromatic compounds via distillation and adding such compounds to
transportation fuel. Id. ¶ 71.
D’Amore does not disclose explicitly combining aromatic compounds
with C6–C24 saturated alkanes (i.e, the product of step (f)) in order to
produce a transportation fuel as required in step (g) of claim 1. As discussed
in the preceding sections, steps (f) and (g) of claim 1 are optional, and need
not be disclosed by D’Amore. Even if the steps were not optional, however,
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Petitioner contends that a person of ordinary skill in the art would have had
reason to reach the invention recited in claim 1 based on the combined
teachings of D’Amore and ASTM D1655, which discloses the standards for
jet fuel (Ex. 1004). Pet. 24–25.
First, according to Petitioner, a person of ordinary skill in the art
would have had reason to review and meet the ASTM specifications when
preparing a jet fuel, because Federal Aviation Administration (“FAA”)
regulations require compliance with ASTM standards in order to receive
approval for the use and sale of jet fuel. Pet. 25; Ex. 1011 ¶¶ 17, 69.
Second, Petitioner contends that one of ordinary skill in the art would have
looked to D’Amore for processes for producing isooctane and C10–C13
alkylated aromatics, which are intermediate compounds used in the
production of jet fuel. Pet. 24–26. Lastly, Petitioner reasons that a person of
ordinary skill in the art would have had motivation to modify the products of
D’Amore to meet the ASTM D1655 specification in order to have a
commercially useful fuel. Pet. 25; Ex. 1011 ¶¶ 75–80.
Petitioner contends that one of ordinary skill would have combined
the teachings of D’Amore with the specification of ASTM D1655 to arrive
at the process recited in independent claim 1 with a reasonable expectation
of success. Petitioner’s position is supported by the testimony of Dr. Joseph,
who states “D’Amore further teaches producing other reaction products, e.g.,
C10–C13 alkylated aromatics, from the butenes. The isooctane and C10–C13
alkylated aromatics so produced are used in the production of transportation
fuels, including jet fuel, as well as fuel additives.” Ex. 1011 ¶ 72. Dr.
Joseph further opines that, although D’Amore does not explicitly state that
its isooctanes or alkylated aromatics meet any ASTM standards, a person of
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skill in the art would have had every reason to modify D’Amore’s processes
to meet those standards, because the EPA and FAA use ASTM standards as
part of their approval process to determine whether fuels can be sold in the
United States. Id. ¶ 73.
Patent Owner contests Petitioner’s position, arguing that ASTM
D1655 merely provides a set of metrics to determine whether or not a given
composition meets the limitations of the subject ASTM standard. PO Resp.
7–10. Patent Owner contends ASTM D1655 does not provide any
disclosure or guidance regarding a process to make a renewable jet fuel that
meets the requirements of ASTM D1655. Id. at 7–8. According to Patent
Owner, a person of skill in the art would need a reference detailing the
process steps between D’Amore and ASTM D1655 in order to create a
product that would comply with the specification in ASTM D1655, because
such information is not evidently and indisputably within the common
knowledge of those skilled in the art. Id. at 8; Tr. 42:14–43:8.
Patent Owner contends that the Declaration of Dr. Joseph cannot
support a finding of obviousness based on D’Amore and ASTM D1655,
because: (1) the testimony is conclusory (PO Resp. 8); (2) claim rejections
must be based on prior art (id. at 9); and (3) rather than merely relying on the
opinion of Dr. Joseph, a reference should be provided to establish that
modifying the process of D’Amore as proposed was obvious (id. at 9).
Despite Patent Owner’s contentions, we are persuaded by Petitioner’s
arguments and find that a person of ordinary skill in the art could have
combined the teachings of D’Amore and ASTM D1655 to reach the
invention recited in claim 1, and would have been motivated to do so. As
discussed above, the level of skill in the art is that of a person with a doctoral
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degree in chemistry or related discipline (see supra, Section II.C.), and it is
easier to establish obviousness under a higher level of ordinary skill in the
art. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366
(Fed. Cir. 2012); see also Innovention Toys, LLC v. MGA Entm’t, Inc., 637
F.3d 1314, 1323–24 (Fed. Cir. 2011) (finding that a less sophisticated level
of skill generally favors a determination of nonobviousness, while a higher
level of skill favors the reverse). Given this high level of skill in the art, we
credit the testimony of Dr. Joseph that a person of ordinary skill in the art
would have had reason to modify the isooctanes of D’Amore to meet the
ASTM D1655 specification (Ex. 1011 ¶¶ 73–76), and that such
modifications could have been accomplished using routine optimization
techniques that were common in the art (id. ¶ 76). Dr. Joseph cites to
multiple publications providing several examples of well-known techniques
to produce a mixture of saturated alkanes and aromatic hydrocarbons that
meet ASTM D1655. Id. ¶¶ 26, 27, 29, 31, 76–78 (citing Exs. 1002, 1003,
1006, 1008, 1009, 1013, 1014, 1015, 1019). Thus, we are persuaded that a
Ph.D. chemist would have knowledge of routine techniques as discussed by
Dr. Joseph and would have had a reasonable expectation that such
techniques would be successful. See, e.g., Randall Mfg. v. Rea, 733 F.3d
1355, 1363 (Fed. Cir. 2013) (recognizing that combining familiar elements
with known functions, according to known methods, and yielding
predictable results likely is obvious).
We are unpersuaded by Patent Owner’s contention that “Petitioner
attempts to circumvent the requirement that claims rejections be based on
prior art by relying on Dr. Joseph’s opinions.” PO Resp. 9. Rather, we
conclude that Petitioner relies on the testimony of Dr. Joseph to indicate the
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knowledge of one of ordinary skill in the art in order to demonstrate that the
teachings of D’Amore, in view of the teachings ASTM D1655, as
understood by one of ordinary skill in the art, would have rendered the
challenged claims obvious at the time of the invention. See Ex. 1011 ¶¶ 26,
27, 29, 31, 76–78 (citing Exs. 1002, 1003, 1006, 1008, 1009, 1013, 1014,
1015, 1019).
We also are unpersuaded by Patent Owner’s contentions that:
[I]f the presently claimed process were indeed obvious, and the
knowledge in the art was so readily known and available to one
skilled in the art, petitioner would not rely on the opinions of
Dr. Joseph, but rather, would simply provide a reference to
establish that modifying the process of D’Amore as proposed
was obvious

(PO Resp. 9), because the Supreme Court has cautioned against the
overemphasis on publications and the explicit contents of issued patents
during an obviousness analysis. KSR, 550 U.S. at 415–16. In KSR, the
Supreme Court criticized a rigid approach to determining obviousness based
on the disclosures of individual prior art references, with little recourse to
the knowledge, creativity, and common sense that an ordinarily skilled
artisan would have brought to bear when considering combinations or
modifications. Id. at 415–22. Thus, we conclude that a person with a
doctoral degree in chemistry would not need a reference detailing the
process steps between D’Amore and ASTM D1655 in order to create a
product that would comply with the specification in ASTM D1655.
Additionally, we find Patent Owner’s reliance on the Board’s
Decision in IPR2014-00402 regarding an unrelated patent, which “held that
even a reference teaching trimers and tetramers, in combination with
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D’Amore, does not, in fact, teach or suggest a process for preparing fuels
comprising C16 oligomers,” to be misplaced. PO Resp. 9–10. In IPR2014-
00402, the Board denied institution of an obviousness challenge that was
based on the combination of D’Amore and Jhung.
3
According to the Board,
Jhung indicated that trimers and tetramers were impurities, the production of
which should be avoided. See IPR2014-00402, slip op. at 14 (PTAB Aug. 8,
2014) (Paper 11). Thus, the Board concluded that a person of ordinary skill
in the art would have no motivation to combine the teachings in Jhung (to
avoid trimers and tetramers) with the teachings in D’Amore for producing
reaction products, e.g., C10–C13 alkylated aromatics, from the butenes. Id. at
14–15. The Board’s conclusion in IPR2014-00402, premised on a different
combination of references, does not mandate a similar outcome for the
challenged claims in the present case.
Accordingly, we find Dr. Joseph’s testimony persuasive and hold that
Petitioner has shown by a preponderance of the evidence that claim 1 is
unpatentable under 35 U.S.C. § 103(a) for obviousness in view of the
disclosures of D’Amore and ASTM D1655.
b. Independent Claim 18
Claim 18 recites a renewable jet fuel or jet fuel precursor comprising a
mixture of aromatic hydrocarbons and C11–C14 aliphatic hydrocarbons.
Ex. 1001, 63:29–31. Claim 18’s preamble is limiting, so claim 18 requires
that the source of the aromatic hydrocarbons or C11–C14 aliphatic
hydrocarbons recited must be “renewable” as the term is defined by the ’627
patent. See supra, Section II.A.3. The ’627 patent defines “renewable,”

3
Jhung et al., Int’l Pub. No. WO 2007/091862 A1 (“Jhung”).
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with regard to compounds such as alcohol or hydrocarbons, as compounds
prepared from biomass using thermochemical methods (e.g. Fischer-Tropsch
catalysts), biocatalysts (e.g., fermentation), or other processes. Ex. 1001,
9:8–14.
Petitioner contends that claim 18 would have been obvious over
D’Amore in view of ASTM D1655, because D’Amore teaches processes for
making renewable isooctanes and alkylated aromatics that can be used as
biofuel components in transportation fuels, including jet fuels. Pet. 33–34
(citing Ex. 1011 ¶ 75; Ex. 1002 ¶ 20).
Petitioner’s position is supported by the testimony of Dr. Joseph, who
explains that a person of ordinary skill in the art would have arrived at a
method of preparing a product comprising C12 saturated alkanes (i.e.,
aliphatic hydrocarbons) and aromatic compounds, based on the combination
of D’Amore and ASTM DI655, with a reasonable expectation of success.
Ex. 1011 ¶ 105. According to Dr. Joseph, a skilled practitioner using the
methods taught in D’Amore, armed with only common sense and knowledge
of techniques in the art would have arrived at the product of claim 18 with a
reasonable expectation of success because it would have required no more
than routine optimization to obtain a desirable product with the claimed
composition. Id.
Patent Owner does not address the application of D’Amore and
ASTM D1655 to claim 18, and instead, treats claim 18 as a dependent claim.
PO Resp. 10.
Based on the evidence of record, we find that D’Amore teaches
processes for making renewable isooctanes and alkylated aromatics using
microbial fermentation methods. Ex. 1002 ¶ 34. D’Amore specifically
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states that “[o]ne advantage to the microbial (fermentative) production of
isobutanol is the ability to utilize feedstocks derived from renewable
sources, such as corn stalks, corn cobs, sugar cane, sugar beets or wheat, for
the fermentation process.” Id. ¶ 22. Microbial fermentation of a biomass is
one of the processes specifically identified in the ’627 patent as creating a
renewable hydrocarbons. See Ex. 1001, 9:8–14. We also find that D’Amore
teaches that the compounds produced by its methods can be used as
components in transportation fuels, including jet fuels. Ex. 1002 ¶ 20.
We further find that a person of ordinary skill in the art could have
combined the teachings of D’Amore and ASTM D1655 to reach the
invention recited in claim 18, and would have been motivated to do so.
Specifically, we credit the testimony of Dr. Joseph that a person of ordinary
skill in the art would have had reason to modify the isooctanes of D’Amore
to meet the ASTM D1655 specification (Ex. 1011 ¶¶ 73–76, 105), and that
such modifications could have been accomplished using routine
optimization techniques that were common in the art (id. ¶ 76).
Accordingly, we find Dr. Joseph’s testimony persuasive and hold that
Petitioner has shown by a preponderance of the evidence that claim 18 is
unpatentable under 35 U.S.C. § 103(a) for obviousness in view of the
disclosures of D’Amore and ASTM D1655.
c. Dependent Claims 2–7, 11, 14, and 19–21
Petitioner also argues that claims 2–7, 11, 14, and 19–21 are
unpatentable under 35 U.S.C. § 103(a) for obviousness over D’Amore and
ASTM D1655. Pet. 24–38. For example, claim 2 recites that the
dehydrating, oligomerizing, and hydrogenating steps of the process of claim
1 “are each carried out in the presence of a dehydration catalyst, [an]
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oligomerization catalyst, and a hydrogenation catalyst, respectively.” The
’627 patent teaches that the dehydration catalyst and oligomerizing catalyst
can be acid catalysts. Ex. 1001, 63:18–21. D’Amore meets the claim
limitations, because D’Amore discloses introducing the isobutanol-
containing stream “into [a reaction vessel] containing an acid catalyst . . .
capable of converting the isobutanol into at least one butene,” i.e., a
dehydration catalyst. Ex. 1002 ¶ 56. D’Amore also discloses contacting
“[t]he at least one recovered butene . . . with at least one dimerization
catalyst,” i.e., an oligomerization catalyst. Id. ¶ 75. Finally, D’Amore
discloses contacting “[t]he at least one recovered isooctene produced by the
dimerization reaction . . . with at least one hydrogenation catalyst in the
presence of hydrogen.” Id. ¶ 76.
Another example is claim 11, which recites a “renewable jet fuel
prepared by the process of claim 1.” As discussed above, D’Amore
describes an invention useful for the production of intermediate compounds
used in transportation fuels such as jet fuel (Ex. 1002 ¶ 20), while ASTM
D1655 discloses the standards for jet fuel (Ex. 1004). We are persuaded by
Petitioner’s position (Pet. 32–33) that a person of ordinary skill in the art
would have had motivation to modify the isooctanes of D’Amore to meet the
ASTM D1655 specifications.
Patent Owner does not address the application of D’Amore and
ASTM D1655 to the dependent claims. PO Resp. 7.
We are persuaded by Petitioner’s contentions regarding dependent
claims 2–7, 11, 14, and 19–21. See Ex. 1002 ¶¶ 63, 74–76 (teaching
dehydration, oligomerization, and hydrogenation can occur in different
reaction zones, as recited in claims 3 and 4), ¶ 50 (teaching “at least one acid
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[(dehydration)] catalyst can be a homogeneous or heterogeneous catalyst” as
recited in claims 5 and 6), ¶¶ 21, 50, 75 (teaching dehydrating and
oligomerizing in the presence of an acidic catalyst, as recited in claim 7),
¶¶ 5–8 (teaching removing C2–C6 alcohols from feedstock prior to
dehydration, as recited in claim 14); Ex. 1004, 7, Table 1 (disclosing that a
product to be used in a jet fuel should contain at most 25 vol. % aromatic
compounds and suggesting that it would be desirable to limit the amount of
aromatics because too much results in carbon and soot deposition, thus
teaching claim 19); Ex. 1019, 189–195 (pentamethylheptane isomers and
other branched chain C12 hydrocarbon isomers would be produced naturally
during the oligomerization process as disclosed by D’Amore, thus teaching
claim 20); id. (branched chain C12 hydrocarbon isomers would be produced
naturally during the oligomerization process disclosed by D’Amore, thus
teaching claim 21).
Accordingly, we find that Petitioner has shown by a preponderance of
the evidence that claims 2–7, 11, 14, and 19–21 are unpatentable under
35 U.S.C. § 103(a) for obviousness in view of the disclosures of D’Amore
and ASTM D1655.
F. Obviousness of Claims 8–10, 12, and 13 over D’Amore in view of
ASTM D1655 and Cottrell
Petitioner argues that the combination of D’Amore, ASTM D1655,
and Cottrell renders each of the challenged claims obvious. Pet. 38–44. In
view of the overview of D’Amore and ASTM D1655 provided above (see
supra, Sections II.D.1 and II.E.1) and for reasons that follow, we determine
Petitioner has shown by a preponderance of the evidence that claims 8–10,
12, and 13 are unpatentable under 35 U.S.C. § 103(a).
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1. Overview of Cottrell
Cottrell discloses a process for converting C2–C6 aliphatic
hydrocarbons into aromatic hydrocarbons. Ex. 1006, Abstract. Moreover,
Cottrell specifically teaches the conversion of C2–C6 aliphatic hydrocarbons
(including olefins) into aromatic hydrocarbons via
dehydrocyclodimerizations immediately followed by a hydrogenation
reaction. Id. at 4:42–45, 52–60. Cottrell also discloses oligomerizing C2–C6
olefins, followed by aromatizing the olefin oligomers to form C6 or higher
aromatic compounds. Id. at 3:33–51, 5:38–42.
2. Analysis
Petitioner argues that Cottrell in combination with the disclosures of
D’Amore and ASTM D1655 teaches all the limitations of claims 8–10, 12,
and 13. Pet. 38–44. Petitioner contends that a person of ordinary skill in the
art would have had a reason to combine Cottrell and D’Amore, because they
are both directed to the reaction of olefins to make aromatic hydrocarbon
products. Pet. 39; Ex. 1011 ¶ 117. Petitioner also contends a person of
ordinary skill in the art would have had a reason to combine D’Amore and
ASTM D1655, because D’Amore is directed to the production of
transportation fuels, such as jet fuels, and ASTM D1655 provides industry
specifications for jet fuels. Pet. 39. Furthermore, according to Petitioner, a
person of ordinary skill in the art would have had a reason to combine
ASTM D1655 and Cottrell, because ASTM D1655 teaches that aromatic
hydrocarbons are components of jet fuels and Cottrell teaches how to obtain
aromatic hydrocarbons. Id.
Patent Owner opposes Petitioner’s position, arguing that Cottrell is
silent with respect to any ASTM standard such as ASTM D1655, or a
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process for preparing a renewable jet fuel meeting the specification of
ASTM D1655. PO Resp. 11. According to Patent Owner, Cottrell cannot
remedy any deficiencies found in D’Amore and ASTM D1655. Id.
Therefore, Patent Owner concludes that ASTM D1655 and D’Amore in
combination with Cottrell fail to disclose or suggest a process for preparing
a renewable jet fuel meeting the requirements of ASTM D1655, as recited in
independent claim 1. Id.
a. Claim 8
Claim 8 depends directly from independent claim 1. Ex. 1001, 63:22–
27. Petitioner argues that a person of ordinary skill in the art would have
arrived at the invention of claim 8 in the ’627 patent by oligomerizing
butane based on the process disclosed in D’Amore and then aromatizing the
C2–C6 olefins dimers and trimers based on the processed disclosed in
Cottrell. Pet. 40. According to Petitioner, the oligomerization and
aromatizing process are routine in the art, and a person of ordinary skill in
the art would have a reasonable expectation of success by using the
disclosed processes. Id.; Ex. 1011 ¶ 123. We are persuaded by Petitioner’s
argument and conclude that the claims merely combine known processes
(oligomerizing, aromatizing, and hydrogenation) for their known purpose to
achieve a predictable result (preparing C10–C14 aromatic hydrocarbons). See
KSR, 550 U.S. at 416.
Furthermore, we are persuaded by Dr. Joseph’s testimony that a
person of ordinary skill would have had reason to combine the teachings of
Cottrell, D’Amore, and ASTM D1655 in a manner that yields the process
recited in claim 8. Ex. 1011 ¶ 117. Specifically, D’Amore and Cottrell are
both directed to the reaction of olefins to make aromatic hydrocarbon
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products, while ASTM D1655 teaches that aromatic hydrocarbons are
components used in jet fuels. Id. ¶¶ 117–123.
Accordingly, we find Petitioner has shown by a preponderance of the
evidence that claim 8 is unpatentable over Cottrell, D’Amore, and ASTM
D1655.
b. Claim 9
Claim 9 depends from claim 8 and recites that one or more of the
aromatized C2–C6 olefins are isolated from a dehydration step (claim 1, step
(d)) and one or more of the C2–C6 olefin dimers are obtained from a
oligomerization step (claim 1, step (e)). Ex. 1001, 63:27–29. Petitioner
explains that D’Amore discloses dehydrating isobutanol to form butenes that
can be isolated from a reaction mixture. Pet. 41–42; Ex. 1002 ¶ 21;
Ex. 1011 ¶ 125. According to Petitioner, a person of ordinary skill in the art
would have arrived at the claimed process of isolating C2–C6 olefins from a
dehydration reaction and C2–C6 olefin dimers from an oligomerization
reaction with a reasonable expectation of success. Pet. 42; Ex. 1011 ¶ 125.
We are persuaded by Petitioner’s argument and conclude that the claims
merely combine known processes (dehydration, oligomerization, and
aromatizing) for their known purpose to achieve a predictable result
(obtaining C2–C6 dimers). See KSR, 550 U.S. at 416.
Furthermore, we are persuaded by Dr. Joseph’s testimony that a
person of ordinary skill would have arrived at the process recited in claim 9,
because D’Amore teaches the production of butene (a C4 olefin) from the
dehydration of isobutanol and the dimerization of butene to form isooctene.
Ex. 1011 ¶ 125.
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Accordingly, we find Petitioner has shown by a preponderance of the
evidence that claim 9 is unpatentable over Cottrell, D’Amore, and ASTM
D1655.
c. Claim 10
Claim 10 depends from claim 8 and recites hydrogenating C2–C6
olefin oligomers (claim 1, step (f)) using hydrogen formed from the
aromatization of C2–C6 olefin monomers, dimers, and trimers. Pet. 42;
Ex. 1001, 63:30–32. Petitioner explains that Cottrell discloses that hydrogen
created as a byproduct of the aromatization of C2–C6 olefins is used to
hydrogenate a feed of hydrocarbons. Pet. 42; Ex. 1006, 3:33–35, 3:51–57,
4:40–50, 11:26–33; Ex. 1011 ¶ 127. Petitioner reasons that a person of
ordinary skill in the art would have recognized that the hydrogen byproduct
could be used to hydrogenate olefin oligomers and that such a use of the
hydrogen byproduct of the aromatization reaction would have been a design
choice based on a cost/benefit analysis of where use of the hydrogen
byproduct would be the most advantageous. Pet. 42; Ex. 1011 ¶ 127. We
are persuaded by Petitioner’s argument and conclude that the claims merely
combine known processes (oligomerizing, aromatizing, and hydrogenation)
for their known purpose to achieve a predictable result (obtaining and using
a hydrogen byproduct). See KSR, 550 U.S. at 416.
Furthermore, we are persuaded by Dr. Joseph’s testimony that a
person of ordinary skill would have had reason to combine the teachings of
Cottrell, D’Amore, and ASTM D1655 in a manner that yields the inventions
recited in claim 10. Ex. 1011 ¶ 117. Specifically, Cottrell discloses the
aromatization of C2–C6 olefins to form aromatic compounds (Ex. 1006,
3:33–51), and the hydrogen produced as a byproduct of the reaction is used
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to hydrogenate a feed of hydrocarbons (id. at 3:51–57, 4:40–50, 11:26–33).
Ex. 1011 ¶ 127. Thus, we are persuaded by Dr. Joseph’s testimony that a
person of skill in the art would have a reasonable expectation of using
hydrogen produced as a byproduct of an aromatization reaction to
hydrogenate a feed of hydrocarbons because Cottrell teaches such a process.
See id. ¶ 128.
Accordingly, we find Petitioner has shown by a preponderance of the
evidence that claim 10 is unpatentable over Cottrell, D’Amore, and ASTM
D1655.
d. Claims 12 and 13
Claim 12 depends from claim 8, while claim 13 depends from claim
10. Ex. 1001, 63:36–38. Petitioner contends D’Amore, in combination with
ASTM D1655 and Cottrell, discloses a product produced by performing the
steps of claim 8, resulting in a mixture of C10–C14 aromatic compounds. Pet.
43. Petition specifically explains that D’Amore, in view of ASTM D1655
and Cottrell, teaches a renewable jet fuel produced by performing the
process of D’Amore to obtain C12–C16 saturated alkanes, which are
aromatized by the process of Cottrell, and D’Amore teaches oligomerizing
the resultant aromatics to produce alkylated benzenes, which can be added to
jet fuel. Id. (citing Ex. 1011 ¶ 130). Petitioner concludes that a person of
ordinary skill in the art reading D’Amore, ASTM D1655, and Cottrell,
would have arrived at the claimed renewable jet fuel prepared by the process
of claim 8 and would have had a reasonable expectation of success in doing
so. Id. (citing Ex. 1011 ¶ 131).
Petitioner contends D’Amore, in combination with ASTM D1655 and
Cottrell, discloses a product produced by performing the steps of claim 10,
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resulting in a mixture of C10–C14 aromatic compounds and saturated alkanes.
Pet. 44. Petitioner specifically explains that D’Amore, in combination with
ASTM D1655 and Cottrell, teaches producing one or more of the saturated
alkanes by hydrogenating one or more unsaturated oligomers using the
hydrogen byproduct of an aromatization reaction. Id. Petitioner concludes
that a person of ordinary skill in the art reading D’Amore, ASTM D1655,
and Cottrell, would have arrived at the claimed renewable jet fuel prepared
by the process of claim 10 and would have had a reasonable expectation of
success in doing so. Id. (citing Ex. 1011 ¶ 134).
We have considered fully Petitioner’s arguments and evidence
concerning the obviousness of dependent claims 12 and 13 in view of the
combination of Cottrell, D’Amore, and ASTM D1655 (Pet. 43–44) and are
persuaded Petitioner has shown by a preponderance of the evidence that
claims 12 and 13 are unpatentable over the cited references for the reasons
set forth above.
G. Obviousness of Claim 15 over D’Amore in view of ASTM D1655
and Wilke
Petitioner contends that claim 15 would have been obvious over
D’Amore, ASTM D1655, and Wilke. Pet. 44–45. In view of the overview
of D’Amore and ASTM D1655 provided above (see supra, Sections II.D.1
and II.E.1) and for reasons that follow, we determine Petitioner has shown
by a preponderance of the evidence that claim 15 is unpatentable under
35 U.S.C. § 103(a).
1. Overview of Wilke
Wilke teaches a process for producing and recovering alcohols using a
combination of vacuum fermentation and vacuum distillation. Ex. 1007,
Abstract. Wilke further discloses the fermentative production of alcohols
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below atmospheric pressure, such that a vapor of aqueous alcohol is
removed. Id. at 5:12–17, 7:67–8:1. Wilke specifically discloses that “[t]he
pressure of the fermentation can be subatmospheric on the order of about 50
to 500 mm Hg.” Id. at 5:12–17. Wilke also teaches that removing alcohol
during the fermentative process by fermenting at reduced pressure would
benefit microorganism catalysts by relieving any alcohol toxicity. Id. at
3:25–28.
2. Analysis
Claim 15 depends from claim 14, and further recites that the C2–C6
alcohol is removed from feedstock by a process comprising fermenting the
culture at subatmospheric pressure such that an aqueous vapor of C2–C6
alcohol is removed. Ex. 1001, 63:40–43. Petitioner argues that Wilke
teaches this limitation of claim 15. Pet. 45. According to Petitioner,
determining fermentation pressure is a design choice based on a cost/benefit
analysis, and fermenting at below atmospheric pressure would have been a
matter of common sense and routine optimization based on the knowledge of
techniques that would have yielded nothing more than predictable results.
Id.; Ex. 1001 ¶ 137. Petitioner reasons that a person of ordinary skill in the
art would have had a reason to, and the knowledge to, arrive at the process
of claim 15 with a reasonable expectation of success. Pet. 45.
Patent Owner opposes Petitioner’s position, arguing that Wilke is also
silent with respect to any ASTM standard such as ASTM D1655, or a
process for preparing a renewable jet fuel meeting the specification of
ASTM D1655. PO Resp. 12–13. According to Patent Owner, Wilke cannot
remedy any deficiencies found in D’Amore and ASTM D1655. Id. Patent
Owner contends that ASTM D1655 and D’Amore in combination with
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Wilke fail to disclose or suggest a process for preparing a renewable jet fuel
that meets the requirements of ASTM D1655, as required by claim 1. Id.
We are persuaded by Petitioner’s analysis, as supported by Dr.
Joseph’s testimony, that one of ordinary skill would have arrived at the
process recited in dependent claim 15 with a reasonable expectation of
success given the disclosures of Wilke, D’Amore, and ASTM D1655.
Accordingly, we determine that Petitioner has shown by a
preponderance of the evidence that claim 15 is unpatentable over Wilke,
D’Amore, and ASTM D1655.
H. Obviousness of Claims 16 and 17 over Manzer in view of D’Amore
Petitioner contends claims 16 and 17 would have been obvious over
Manzer and D’Amore. Pet. 56–60. In view of the overview of D’Amore
provided above (see supra, Section II.D.1) and for reasons that follow, we
determine Petitioner has shown by a preponderance of the evidence that
claims 16 and 17 are unpatentable under 35 U.S.C. § 103(a).
1. Overview of Manzer
Manzer is directed to the production of xylene (an aromatic
hydrocarbon) from dimerized isobutylene. Ex. 1008, Abstract. Manzer
specifically teaches dimerizing isobutylene (i.e., isobutene) and then
aromatizing the isobutene dimers to form C7 and C8 aromatic hydrocarbons,
such as toluene and xylene. Id. ¶¶ 12, 27, 30. Manzer also teaches multiple
methods of producing isobutene, including a process of dehydrogenating
isobutanol. Id. ¶ 12.
2. Analysis
Independent claim 16 is directed to a process of preparing aromatic
hydrocarbons and includes steps for dehydrating C2–C6 alcohol to create C2–
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C6 olefins, oligomerizing the olefins, and then aromatizing either the olefins
or the oligomerized olefins to create C6–C14 aromatic hydrocarbons.
Ex. 1001, 63:44–64:19. Steps (v) and (vii) of claim 16 are optional steps.
4

Therefore, as discussed above, we find that claim 16 encompasses at least
three processes: (a) process 1, with steps (i)–(vi); (b) process 2, with steps
(i)–(vii); or (c) process 3, with steps (i)–(iv) plus step (vi).
As discussed previously, the claim term “optionally” permits any or
all of multiple alternative elements, but does not require that all exist. See
Section II.A.1 (citing Kustom Signals, 264 F.3d at 1330–31). Thus, to
anticipate claim 16 of the ’627 patent, a reference need only disclose each of
these steps (i)–(iv) plus step (vi); a reference need not disclose the optional
steps (v) and/or (vii).
Petitioner contends that D’Amore discloses steps (i)–(iv) because it
teaches fermenting a feedstock and dehydrating the resulting renewable
isobutanol to form renewable isobutene dimers. Pet. 57 (citing Ex. 1002
¶¶ 21, 56, 64; Ex. 1011 ¶ 165). Petitioner also contends that Manzer, as
summarized in the overview above, discloses steps (v) and (vi) of claim 16
of the ’627 patent. Id. (citing Ex. 1008 ¶¶ 12, 27, 28, 31; Ex. 1011 ¶ 165).
According to Petitioner, a person of ordinary skill in the art would have had
a reason to combine Manzer and D’Amore, because they are both directed to
reacting butenes to form aromatic compounds that are alkyl-substituted
benzenes. Pet. 56 (citing Ex. 1011 ¶ 164). Petitioner reasons that a person
of ordinary skill in the art would have had a reason to use the renewable

4
Step (v) of claim 16 calls for oligomerizing olefins, while step (vii) calls
for oligomerizing the C6–C14 aromatic hydrocarbons produced from step (vi)
with olefins to form C8–C16 aromatic hydrocarbons.
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isobutanol and isobutene of D’Amore in the process of Manzer, because
renewable isobutanol and isobutene are appealing for multiple reasons. Pet.
57. Petitioner then concludes that claim 16 would have been obvious over
the combined disclosures of Manzer and D’Amore. Id.
Patent Owner opposes Petitioner’s position, arguing that Petitioner
improperly relies on hindsight in asserting obviousness of the challenged
claims based on Manzer. PO Resp. 13–14. Manzer discloses that “[t]he
source of isobutylene can be any that is convenient, including but not limited
to processes such as [1] the cracking of methyl tertiary butyl ether (MTBE),
[2] the dehydration of isobutanol, [3] butane skeletal isomerization, and
[4] the dehydrogenation of isobutane. Ex. 1008 ¶ 22. Patent Owner argues
that Petitioner’s selection of isobutanol dehydration from D’Amore as the
source of isobutylene in Manzer’s process is arbitrary and based on the
hindsight knowledge of the claimed invention. PO Resp. 14. We disagree.
On this issue, the Federal Circuit’s opinion in In re Thomas is
informative. See 151 F. App’x 930 (Fed. Cir. 2005). In that case, one of the
claims on appeal was directed to a computer implemented method for
performing a survey, requiring email notification of registered participants
as to research studies. Id. at 932. The Board affirmed an examiner’s
rejection of the claim for obviousness based on the combination of two prior
art references. Id. at 934. On appeal to the Federal Circuit, the appellant
argued that the Board erred in finding a motivation to combine because one
of the references “suggests eight different methods of computer-based data
collection, any one of which could be used to notify respondents, and that it
does not suggest the particular desirability of email notification.” Id.
Rejecting this argument, the Federal Circuit pointed out: “for an
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obviousness analysis, even the fact that ‘a specific embodiment is taught to
be preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.’” Id. (quoting Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)).
Similarly in the present case, we must consider all disclosures of
Manzer, which explicitly teaches dehydration of isobutanol as a source for
isobutylene. Ex. 1008 ¶ 22. Manzer’s teaching of other methods for
creating isobutylene does not render the combination of this method with the
teaching of D’Amore non-obvious.
We also disagree with Patent Owner’s argument that claim 16 is not
obvious as challenged because Manzer does not teach that isobutanol can be
produced from a fermentation reaction that uses a biomass feedstock. PO
Resp. 15. Petitioner specifically relies on D’Amore, which explicitly
teaches distillation to recover isobutanol from fermentation broth, for this
claim element. Pet. 57 (citing Ex. 1002 ¶¶ 21, 56, 64). The arguments
presented by Patent Owner appear to attack the references individually,
rather than in combination. PO Resp. 13–16. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, in attacking the
references individually, Patent Owner fails to address Petitioner’s actual
challenges to establish an insufficiency in the combined teachings of the
references and show Petitioner has failed to carry its burden to demonstrate
obviousness of claim 16.
In sum, we determine Petitioner has shown that the combination of
Manzer and D’Amore teaches or suggests all the limitations of claim 16. In
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addition, we are persuaded by the testimony of Dr. Joseph that one skilled in
the art would have had a reason to combine these references and would have
had a reasonable expectation that the modified method be successful in
producing isobutanol. Ex. 1011 ¶¶ 164, 166, 168. We conclude similarly
regarding dependent claim 17, because Manzer and D’Amore teach the
further limitations of this claim. Pet. 59–60; Ex. 1011 ¶¶ 169, 170.
Accordingly, we determine that Petitioner has shown by a
preponderance of the evidence that claims 16 and 17 are unpatentable over
Manzer and D’Amore.
I. Anticipation of Claim 18 by Bradin
Petitioner contends claim 18 is anticipated by Bradin. Pet. 50–52.
1. Overview of Bradin
Bradin discloses jet fuels comprising components, such as alcohols
and glycerol ethers, produced from renewable resources. Ex. 1010,
Abstract; 1:12–13, 3:20–22, 8:1–2. Bradin specifically discloses that fuel
can be derived from a renewable source such as farm crops (biodiesel) or
from Fischer-Tropsch synthesis (syntroleum). Id. at 1:12–13. According to
the Bradin Specification, “[s]ignificant efforts have been undertaken to
provide renewable compositions that can replace all or part of jet fuel.” Id.
at 2:1–2. Bradin discloses that jet fuels are mixtures of compounds,
including hydrocarbons, typically in the C5–C15 range, as well as aromatics,
typically in the C5–C20 range. Id. at 1:29–2:2. Bradin further discloses that
examples of hydrocarbons used in the production of jet fuels are
cycloparaffins, n-paraffins, and isoparaffins, all of which are aliphatic
hydrocarbons. Id.
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2. Analysis
Claim 18 recites a “renewable” jet fuel or jet fuel precursor
comprising a mixture of aromatic hydrocarbons and C11–C14 aliphatic
hydrocarbons. Pet. 51; Ex. 1001, 64:29–31. As discussed above, we find
that the preamble of claim 18 is limiting, because it recites a specific
characteristic of the source component of the invention as being
“renewable.”
Petitioner contends that Bradin discloses all the recited elements of
claim 18. Pet. 51. According to Petitioner, Bradin discloses that jet fuels,
comprising components such as alcohols and glycerol ethers, are produced
from renewable resources such as farm crops (biodiesel) or from Fischer-
Tropsch synthesis (syntroleum). Id. (citing Ex. 1010, 3:20–22, 8:1–2;
Ex. 1011 ¶ 151). Petitioner explains that Bradin discloses jet fuels
comprised of a mixture of aliphatic hydrocarbons (cycloparaffins, n-
paraffins, and isoparaffins) and aromatic hydrocarbons. Id. (citing Ex. 1010,
1:29–2:2; Ex. 1011 ¶ 151). Such compounds are considered “renewable,”
according to the ’627 patent Specification. Ex. 1001, 9:8–15.
Patent Owner contends Bradin does not anticipate claim 18, because
Bradin discloses fuel additives, which may be renewable, rather than
renewable jet fuels or jet fuel precursors as required by claim 18. PO Resp.
17. Patent Owner further argues that Bradin’s statement that “[s]ignificant
efforts have been undertaken to provide renewable compositions that can
replace all or part of jet fuel” (Ex. 1010, 2:1–2) merely discloses that efforts
are underway but fails to disclose the existence of renewable fuels or fuel
precursors resulting from such efforts, beyond that of fuel additives. PO
Resp. 17–18.
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Contrary to Patent Owner’s contentions, we are persuaded by
Petitioner’s position. Bradin specifically discloses:
Hydrocarbons derived from Fischer-Tropsch synthesis have
also been used as jet fuel, or incorporated into jet fuel. Such jet
fuel or jet fuel blends are known in the art. The use of Fischer-
Tropsch synthesis to form syntroleum is well known, as is the
use of Fischer-Tropsch synthesis to form relatively low
molecular weight olefins.
Ex. 1010, 12:15–18.
Bradin also discloses jet fuels comprised of a mixture of aliphatic
hydrocarbons and aromatic hydrocarbons. Ex. 1010, 1:29–2:2. Given that
the ’627 patent defines “renewable” as including compounds such as
alcohols or hydrocarbons prepared from biomass using thermochemical
methods such as by Fischer-Tropsch catalysts (Ex. 1001, 9:8–15), we find
that Bradin’s disclosure of hydrocarbons derived from Fischer-Tropsch
synthesis reads on the limitations recited in claim 18.
We, therefore, conclude, that Bradin discloses each recited element of
the composition of claim 18 of the ’627 patent. Accordingly, we determine
that Petitioner has shown by a preponderance of the evidence that claim 18
is unpatentable over Bradin.

III. CONCLUSION
We conclude Petitioner has shown the following by a preponderance
of the evidence:
1. Unpatentability of claims 1, 7, 11, and 14 under 35 U.S.C. § 102(e)
for anticipation by D’Amore;
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2. Unpatentability of claims 1–7, 11, 14, and 18–21 under
35 U.S.C. § 103(a) for obviousness over D’Amore and ASTM
D1655;
3. Unpatentability of claims 8–10, 12, and 13 under 35 U.S.C.
§ 103(a) for obviousness over D’Amore, ASTM D1655, and
Cottrell;
4. Unpatentability of claim 15 under 35 U.S.C. § 103(a) for
obviousness over D’Amore, ASTM D1655, and Wilke;
5. Unpatentability of claims 16 and 17 under 35 U.S.C. § 103(a) for
obviousness over Manzer and D’Amore; and
6. Unpatentability of claim 18 under 35 U.S.C. § 102(e) for
anticipation by Bradin.

IV. ORDER
For the reasons given, it is
ORDERED that claims 1–21 of the ’627 patent are unpatentable;
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:

Deborah Sterling
dsterlin-PTAB@skgf.com

Peter Jackman
pjackman-PTAB@skgf.com

FOR PATENT OWNER:

Thomas Blinka
William Brow
IPR2014-00250@cooley.com