Ex Parte Du et al

Patent Trial and Appeal BoardAug 7, 2018

14005038 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/005,038 01/10/2014 20999 7590 08/09/2018 HAUG PARTNERS LLP 745 FIFTH A VENUE - 10th FLOOR NEW YORK, NY 10151 FIRST NAMED INVENTOR Wei Du 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 326002-2001 5012 EXAMINER CHONG, STEPHEN M ART UNIT PAPER NUMBER 1653 NOTIFICATION DATE DELIVERY MODE 08/09/2018 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): docket@haugpartners.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WEI DU, DEHUA LIU, and LUOLE ZHU1 Appeal2017-008942 Application 14/005,038 Technology Center 1600 Before DONALD E. ADAMS, CHRISTOPHER G. P AULRAJ, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision under 35 U.S.C. Â§ 134(a) involving claims directed to a method for preparing biodiesel. The Examiner's final rejection of claims 1-10 under 35 U.S.C. Â§ 103(a) is appealed. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 2 1 The Real Party in Interest is identified as "Tsinghua University." Br. 1. 2 Herein we have considered and refer to the Specification of Sept. 13, 2013 ("Spec."), the Final Office Action of Feb. 24, 2016 ("Final Action"), the Appeal Brief of Nov. 25, 2016 ("Br."), and the Examiner's Answer of Mar. 30, 2017 ("Answer"). No Reply Brief was filed. Appeal2017-008942 Application 14/005,038 STATEMENT OF THE CASE The Specification states, "[ t ]he present invention belongs to the technical field of biofuel synthesis, in particular, it relates to a method for preparing biodiesel using a liquid lipase in combination with an immobilized lipase." Spec. 1. Relating to this generalization of the invention, the Specification further states: the invention at least has the following advantages and beneficial effects: in the method of the invention for preparing biodiesel using a liquid lipase in combination with an immobilized lipase, no preprocessing is required for the oil and fat feedstock, and the conversion ratio from oil and fat to biodiesel can reach more than 90%; in the later stage of catalysis process by immobilized lipase, by introducing an online dehydration during the whole process or part of the reaction process, the yield ofbiodiesel can exceed 98%, and the acid value of the product can be less than 0.5mg KOH per gram of oil. Id. at 4. Independent claim 1 is representative and is reproduced below: 1. A method for preparing biodiesel, wherein said method comprises steps of: (1) adding oil and fat, short chain alcohol, water, and liquid lipase into a single-stage or multi-stage reactor for conducting a reaction, then separating the reaction liquid into a heavy phase and a light phase; recovering and reusing the liquid lipase in the heavy phase, and using the light phase for subsequent conversion by immobilized lipase; (2) flowing the light phase obtained in step (1) into a single-stage or multi-stage reactor containing immobilized lipase, and adding short chain alcohol for conducting a reaction; wherein an online dehydration is carried out during the whole reaction or part of the reaction. Br. 15 (Claims App'x). 2 Appeal2017-008942 Application 14/005,038 The following rejection is on appeal: Claims 1-10 stand rejected under 35 U.S.C. Â§ 103(a) over CN '316, 3 CN '216, 4 and CN '322. 5 Answer 3. DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid underÂ§ 103." Id. at 419. However, "[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). "Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious." In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). The Examiner determined the rejected claims would have been obvious over the CN '316- CN '216- CN '322 prior art combination. 3 CN 100494316 C (pub. June 3, 2009) (English translation) ("CN '316"). 4 CN 101358216 B (pub. Nov. 9, 2011) (English translation) ("CN '216"). 5 CN 101418322 A (pub. Apr. 29, 2009) (English translation ("CN '322"). 3 Appeal2017-008942 Application 14/005,038 Final Action 6-13 and Answer 3-10 (citing these references, essentially, in their entireties). Appellants argue that CN '316 teaches producing biodiesel from palm oil using low-carbon alcohol and an immobilized lipase, but does not teach using a liquid lipase followed by using an immobilized lipase and also utilizing online dehydration during the reaction with immobilized lipase, as claimed. Br. 10-11. Appellants argue CN '216 teaches producing biodiesel with an enzymatic method involving online dehydration, but does not teach using a liquid lipase followed by an immobilized lipase as claimed and as not taught by CN '316. Id. at 11. Appellants further argue CN '322 teaches producing biodiesel and recovering used liquid lipase for reuse, but does not disclose using liquid lipase followed by immobilized lipase or online dehydration during the immobilized lipase reaction as claimed and as not taught by CN '316. Id. As determined by the Examiner, CN '316 teaches processing palm oil, water, an alcohol, e.g., methanol, with a solid (immobilized) and/or liquid catalyst, e.g., lipase; this is followed by separating light and heavy phases of the oil to produce biodiesel. However, there is no disclosure in this reference of using two lipase catalyst steps, specifically where the first is liquid lipase and the second is solid (immobilized) lipase reacted with a light phase of the oil, nor is there a disclosure of online dehydration at any point in the process. To the contrary, the reference suggests omitting a solid catalyst in subsequent processing. CN '316, 2 ("The solid catalyst in subsequent processing can be omitted in conventional processes, washing ") processes... . . 4 Appeal2017-008942 Application 14/005,038 CN '216 teaches that when processing biodiesel from oil using a solid, immobilized enzyme, e.g., lipase, as a catalyst, it is important to use online dehydration to greatly improve yield. Thus, as determined by the Examiner, CN '216 supports combining such a dehydration step with the process of CN '316 when an immobilized lipase is used (which would be before separation of light and heavy phases). However, like CN '316, this reference does not suggest two catalyst steps, the first one using a liquid and the second one using a solid catalyst. Finally, CN '322, like CN '316, teaches that both solid (immobilized) and liquid (non-immobilized) lipases are used in the biodiesel production industry, but teaches that immobilized lipases are costly to produce, and so it is preferable to use liquid lipases, recover them, and reuse them. Thus, as determined by the Examiner, this reference suggests recovering liquid catalyst used in the process of CN '316 for reuse (but also suggests doing so in lieu of using a solid catalyst at all). However, this reference, like the others, does not teach or suggest a two-lipase-step process, first using a liquid, then using a solid/immobilized lipase. Because we agree with Appellants that the prior art combination does not teach or suggest each element as claimed, as discussed above, we conclude the Examiner has not established a prima facie case for obviousness and, therefore, we reverse the rejection. SUMMARY The obviousness rejection is reversed. REVERSED 5