CELLULOSE SCIENCES INTERNATIONAL, INC.

Patent Trials and Appeals Board

Feb 1, 2022

2021004632 (P.T.A.B. Feb. 1, 2022)

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. 15/337,302 10/28/2016 Rajai H. Atalla 024470-9008-US01 8653 23510 7590 02/01/2022 MICHAEL BEST & FRIEDRICH LLP (Mad) 790 N WATER ST SUITE 2500 Milwaukee, WI 53202 EXAMINER WHITE, EVERETT ART UNIT PAPER NUMBER 1623 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): madipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAJAI H. ATALLA and ROWAN S. ATALLA Appeal 2021-004632 Application 15/337,302 Technology Center 1600 ____________ Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and TAWEN CHANG, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a request for rehearing under 37 C.F.R. § 41.79 (“Req. Reh’g”) of the Decision on Appeal entered October 1, 2021 (“Dec.”). We have considered Appellant’s arguments, but are not persuaded to change the outcome of the Decision. The request for rehearing is denied. Appeal 2021-004632 Application 15/337,302 2 STATEMENT OF THE CASE The appeal under 35 U.S.C. § 134(a) in this application was decided on October 1, 2021 (“Dec.”). The obviousness rejection of all claims was reversed and new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) were entered, rejecting claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Atalla1 and under § 103 as obvious in view of Atalla. Claim 1, the only independent claim on appeal, is reproduced below: 1. A method of treating and stabilizing a cellulosic material, comprising a) contacting a cellulosic material with a treatment solution of an alkali in an alcohol/water co-solvent to yield (i) a nano-deaggregated cellulose and (ii) a post-treatment solution which contains dissolved phytochemicals; and then b) treating the nano-deaggregated cellulose and the post- treatment solution with an acid to reduce pH to yield a stabilized nano-deaggregated cellulose and a neutralized post- treatment solution, the pH being reduced to a level such that the stabilized nano-deaggregated cellulose is not mercerized upon exposure to water. Request for Rehearing Appellant filed a Request for Rehearing on November 30, 2021 (“Req. Reh’g”) requesting that the proceeding be reheard by the Board under 37 C.F.R. § 41.52. Appellant argues that the term “solvent” was misapprehended and that “the specific use of acid disclosed in Atalla” was overlooked. Req. Reh’g 1. These arguments are addressed below. 1 US Publication No. 2014/0220228 A1, published Aug. 7, 2014 Appeal 2021-004632 Application 15/337,302 3 “Solvent” Claim 1 recites a method of treating and stabilizing a cellulosic material in two steps, (a) and (b). Step (a) recites the initial reaction of contacting a cellulosic material with an alkali in an alcohol/water co-solvent to yield “(i) a nano- deaggregated cellulose and (ii) a post-treatment solution which contains dissolved phytochemicals.” Step (b) treats (i) and (ii) with an acid to reduce the pH and “to yield a stabilized nano-deaggregated cellulose and a neutralized post-treatment solution.” The claim recites that the pH is reduced to a level “such that the stabilized nano-deaggregated cellulose is not mercerized upon exposure to water.” The Decision found that Example 1 of Atalla describes treating corn stover cellulose with an alkali in an alcohol/water co-solvent as recited in step (a) of claim 1. Dec. 7. The Decision found that “the solvent comprising the alkali (KOH) and alcohol (ethanol)” was removed from the corn stover cellulose by decantation. Id. The Decision also found that the cellulose was subsequently washed with water and the water was decanted. Id. The Decision found that “the solvent comprising the alkali (KOH) and alcohol (ethanol)” and subsequent water washes were neutralized with acetic acid, to precipitate the solids in this fraction. Id. at 7-8. This neutralization step was found in the Decision to meet the part of step b) of claim 1 in which (ii) the post-treatment solution with phytochemicals is treated with acid. Id. at 8. Appellant contends that the Decision misinterpreted “solvent,” and in doing so, misunderstood Atalla as washing the treated corn stover cellulose Appeal 2021-004632 Application 15/337,302 4 with the alkali in alcohol/water again, after the initial treatment. Req. Reh’g 4-5. Appellant misreads the new ground of rejection. The discussion in the Decision about “solvent” was for the purpose of establishing that Atalla describes “b) treating . . . the post-treatment solution with an acid to reduce pH to yield . . . a neutralized post-treatment solution.” As explained below, there was no misinterpretation or misunderstanding of Atalla. In Example 1, Atalla describes preparing a solution of the alkali KOH in mixture of ethanol and water to form a “KOH treatment solution.” Atalla ¶¶ 91, 93. The corn stover cellulose was treated with the “KOH treatment solution.” Id. ¶ 93. This solution was decanted from the cellulose. Id. Atalla subsequently discloses: In the experiment wherein it was shown that 27% of the sample was removed during the treatment, the biomass matter extracted in the treatment and the wash was isolated. In the first step toward isolating this fraction the solids were precipitated by neutralization of the solutions. Atalla ¶ 99 (emphasis added). The “biomass matter extracted” by the “treatment” corresponds to the biomass extracted by the KOH treatment solution comprising ethanol and water described in paragraphs 91 and 93 of Atalla. This solution is expressly described in paragraph 99 of Atalla (reproduced above) as being neutralized to precipitate the solids (“the solids were precipitated by neutralization of the solutions”). The wash solutions are also neutralized to precipitate the solid from them because the goal of Atalla was to analyze the solids removed by Appeal 2021-004632 Application 15/337,302 5 the alkali/alcohol/water treatment solution and the subsequent washes.2 Atalla concluded that “[t]hese results indicate that a portion of the constituents of corn stover [the cellulose] were solubilized during the alkali/co-solvent treatment.” Id. ¶ 100. From these disclosures, it is evident that Atalla neutralized the “alkali/co-solvent” decanted from the corn stover cellulose in order to precipitate the solids in it. The Decision explained that this neutralization necessarily used acetic acid to neutralize the “alkali/co-solvent” treatment solution because paragraph 100 of Atalla referred to neutralization of the water solutions with acetic acid, indicating that acetic acid neutralization was also used to precipitate the alkali/co-solvent treatment decanted from the corn stover cellulose. Dec. 8. Appellant did not identify a defect in this finding. For the foregoing reasons, we are not persuaded that we misapprehended the meaning of the term “solvent” as used in the Atalla reference. Consequently, we conclude that Atalla describes step b) of claim 1 in which the (ii) post-treatment solution with phytochemicals is treated with acid. 2 Atalla ¶ 99: “The precipitated matter was then placed in a dialysis instrument with membranes permeable with a cut off molecular weight (COW) of 1000. That is the membranes are permeable to any species with a molecular weight less than 1000. It was observed that all of the solvated matter was removed indicating that the fraction solubilized during the treatment, including phytochemicals and low molecular weight lignins and lignans consisted of substances that had molecular weights less than 1000.” Appeal 2021-004632 Application 15/337,302 6 Atalla’s use of acid Appellant contends that the Decision “misapprehended Atalla’s use of acid and overlooked the disclosure of Atalla as a whole which specifically explains that use.” Req. Reh’g 6. Step b) of claim 1 recites: b) treating the nano-deaggregated cellulose and the post- treatment solution with an acid to reduce pH to yield a stabilized nano-deaggregated cellulose and a neutralized post- treatment solution, the pH being reduced to a level such that the stabilized nano-deaggregated cellulose is not mercerized upon exposure to water. We interpret this step to require that “the nano-deaggregated cellulose” produced in step a) as “(i)” is treated with acid “to yield a stabilized nano-deaggregated cellulose,” where the “pH [is] reduced to a level such that the stabilized nano-deaggregated cellulose is not mercerized upon exposure to water.” We do not interpret the claim to require that the pH of the “(ii) post-treatment solution which contains dissolved phytochemicals” to be “reduced to a level such that the stabilized nano- deaggregated cellulose is not mercerized upon exposure to water,” because the (ii) post-treatment solution is not characterized in the claim as comprising “stabilized nano-deaggregated cellulose.” The Decision found that in paragraph 94 of Example 1, Atalla describes “adding phosphoric acid to the cellulose after the alkali/alcohol solvent treatment and water wash.” Dec. 8. The Decision concluded that this disclosure meets step b) of claim 1 of “treating the nano-deaggregated cellulose . . . with an acid to reduce pH to yield a stabilized nano- deaggregated cellulose . . . , the pH being reduced to a level such that the Appeal 2021-004632 Application 15/337,302 7 stabilized nano-deaggregated cellulose is not mercerized upon exposure to water.” Id. In response to the statement in the Decision that Dr. Atalla did not address the disclosure about the phosphoric acid in his declarations (Dec. 8), Appellant states: To the contrary, Dr. Atalla in his Declaration of August 2019 specifically states that “the acetic acid was not used to treat the nano-deaggregated cellulose in any way, but used to precipitate hydroxycinnamic acid, related phytochemicals and low weight lignin.” Atalla Declaration of August 2019 p. 4, ¶17. Req. Reh’g 7. Paragraph 17 of the Atalla August 2019 Declaration refers to the addition of acetic acid to the extract of the water wash described by Dr. Atalla in paragraph 16 of his declaration. Specifically, paragraph 16 of the Atalla declaration discloses: Paragraph [0100] [of the Atalla reference] states that some constituents of corn stover were likely solubilized during the multiple washing stages. Then, in a separate experiment, the extract during the water wash alone is to be identified. Any extract is precipitated by addition of acetic acid. Dr. Atalla’s statements refer to the addition of acetic acid to the extract from the water wash. The Decision, however, referenced the addition of phosphoric acid to the corn stover cellulose. Dec. 8. In paragraph 17 of his declaration, Dr. Atalla explained: The key point with regard to the present comparasion [sic, comparison] of methods is that acetic acid was used because its acidity can reduce the pH to a level between 3 and 4, which is low enough to cause precipitation of the hydroxycinnamic acid. Appeal 2021-004632 Application 15/337,302 8 The precipitation of “the hydroxycinnamic acid” is from the treatment solution and wash solution decanted from the corn stover cellulose as described in paragraph 100 of the Atalla reference and paragraph 16 of the Atalla Declaration. Dr. Atalla concludes that “the acetic acid was not used to treat the [nano-deaggregated] cellulose in any way, but used to precipitate hydroxycinnamic acid, related phytochemicals and low weight lignin.” Atalla August 2019 Decl. ¶ 17. But this statement about precipitation of the hydroxycinnamic acid relates to the precipitation of it from the decanted solutions. It has nothing to do with the corn stove cellulose treated with the alkali in paragraph 93 of Atalla and phosphoric in paragraph 94. Dr. Atalla’s statement that the acetic acid was not used to treat the nano-deaggregated cellulose is true because the acetic acid is applied to the decanted solutions and not to the alkali-treated corn stover cellulose. Contrary to Appellant’s argument, Dr. Atalla in his declaration did not address the addition of the phosphoric acid to the sample comprising the corn stover cellulose. Accordingly, we are not persuaded by Appellant’s argument that disclosures in the Atalla reference and Atalla declaration were overlooked. Appeal 2021-004632 Application 15/337,302 9 Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference/ Basis Denied Granted 1 102(a)(1) Atalla 1 1 103 Atalla 1 Overall Outcome 1 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1-3, 5-11, 12, 27, 28 103 Atalla, Schneider 1-3, 5- 11, 12, 27, 28 1 102(a)(1) Atalla 1 1 103 Atalla 1 Overall Outcome 1-3, 5- 11, 12, 27, 28 1 DENIED