Ex Parte Kozyuk

Patent Trial and Appeal Board

Jan 31, 2018

13916008 (P.T.A.B. Jan. 31, 2018)

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.
13/916,008 06/12/2013 Oleg Kozyuk ARIS -46185US2 7742
116 7590 02/02/2018
PFARNF fr GORDON T T P
EXAMINER
1801 EAST 9TH STREET PATURY, SRIKANTH
SUITE 1200
CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG KOZYUK
Appeal 2017-002567
Application 13/916,00s1
Technology Center 1600
Before TAWEN CHANG, DEVON ZASTROW NEWMAN, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
process of increasing ethanol yield from grain. The Examiner rejected the
claims on appeal under 35 U.S.C. § 102(b) as anticipated, under 35 U.S.C.
§ 103(a) as obvious, and on the ground of non-statutory obviousness-type
double patenting.
We reverse.
1 According to Appellant, the real party in interest is Arisdyne Systems, Inc.
App. Br. 1.
Appeal 2017-002567
Application 13/916,008
STATEMENT OF THE CASE
The Specification discloses that “[production processes currently
used in commercial ethanol plants are not able to achieve maximum
theoretical ethanol yield, thus more com than theoretically needed must be
used to produce a certain amount of ethanol.” Spec. 15. “In an attempt to
increase ethanol yield, cavitation has been used ... to reduc[e] particle size
of the feed material for the purposes of enhancing subsequent treatment and
providing more surface area for enzymatic breakdown of the starches to take
place.” Id. 16. However, “[i]f the cavitational forces apply too aggressive a
shear force in terms of intensity, energy and/or duration, it is possible to
cause damage to the components being treated.” Id. “Also, aggressive
cavitational forces can degrade desirable proteins and inactivate the
enzymes.” Id. 17. “Cavitation can also promote chemical reactions
involving H* and OH* free radicals formed by decomposing water inside the
collapsing hydrodynamic cavitation bubbles.” Id. According to the
Specification, therefore, “there is still a need for a process that can obtain a
closer to theoretical maximum yield.” Id. ^ 8. Further according to the
Specification, the inventor addressed this need by disclosing “[a] process of
increasing ethanol yield in a starch-to-ethanol production process that
includes passing enzymes through a controlled flow cavitation apparatus
prior to distillation.” Id. 19.
Claims 1—5 are on appeal. Claim 1 is illustrative and reads as follows:
1. A process of increasing ethanol yield from grain comprising
passing an enzyme through a controlled flow cavitation
apparatus prior to distillation, wherein the enzyme is selected
from the group consisting of alpha-amylase, glucanase, beta-
glucosidases, pectinases, xylanase, amylases, ligninases,
proteases, [beta]-mannosidase, and mixtures thereof and the
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Application 13/916,008
enzyme is subjected to a cavitation activation energy in the
range of 0.4 to 1.6 kJ per kilogram of liquid medium passed
through the controlled flow cavitation apparatus to increase
the activity of the enzyme.
App. Br. 10.
The claims stand rejected as follows:
Claims 1, 2, 4, and 5 were rejected under pre-AIA 35 U.S.C. § 102(b)
as being anticipated by or, in the alternative under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Kozyuk ’ 131.2
Claims 1—5 were rejected under 35 U.S.C. pre-AIA § 103(a) over the
combination of Kozyuk ’131, Kozyuk ’771,3 and Kozyuk ’774.4
Claims 1,3,4, and 6 were provisionally rejected on the ground of
non-statutory obviousness-type double patenting over claims 1, 7, 8, 12, 25,
27, and 28 of US Patent Application No. 13/964,373 (“the ’373
Application”). Subsequent to the filing of this appeal, the ’373 Application
was abandoned. This rejection is therefore moot.
ANALYSIS
The same issue is dispositive with respect to both obviousness
rejections, as both rely upon the same underlying prior art. Accordingly, we
address both rejections together.
Kozyuk ’131 discloses “[a] method of increasing ethanol yield in a
starch-to-ethanol production process comprising passing a grain-based liquid
medium through a controlled flow cavitation apparatus prior to a distillation
2 Kozyuk, US Patent Publication No. 2008/0281131 Al, published Nov. 13,
2008 (“Kozyuk’131”).
3 Kozyuk, US Patent No. 5,931,771, issued Aug. 3, 1999 (“Kozyuk ’771”).
4 Kozyuk, US Patent No. 6,857,774 B2, issued Feb. 22, 2005 (“Kozyuk
’774”).
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Appeal 2017-002567
Application 13/916,008
phase of the process.” Kozyuk ’13117. In finding the pending methods
anticipated by, or in the alternative, obvious in view of Kozyuk ’131, the
Examiner acknowledged that Kozyuk ’131 did not disclose “the magnitude
of the cavitation energy that needs to be applied.” Final Act. 3.5 The
Examiner found, however, that Kozyuk ’131 inherently disclosed the
claimed cavitation energy, explaining that “since [Example 1 of] Kozyuk
‘131 disclosed very similar values for the parameters in the operation of the
cavitation apparatus [as are disclosed in the Example provided in the
Specification], it [is] concluded [that] Kozyuk ’131 teaches the parameters
that can produce cavitation energy in the range of 0.4-1.6 KJ/kg of liquid
medium.” Ans. 8. Alternatively, the Examiner found that Kozyuk ’131
disclosed “all the ranges for the parameters in the equation to calculate the
cavitation energy described in the specification in this instant application
and describes how a user can control the residence time in the cavitation
zone and the processing pressure etc.” Final Act. 3 (internal citations
omitted). The Examiner thus concluded that “[a] skilled artisan would have
had reasonable expectation of success in substituting the proper parameters
to produce the requisite cavitation energy described in the instant
application.” Id. at 4.
Appellant contends, inter alia, that Kozyuk ’131 does not disclose the
magnitude of the cavitation energy applied. App. Br. 2. Thus, Appellant
argues, Kozyuk cannot anticipate the claimed process. Id. Further, with
respect to obviousness, Appellant argues that the Examiner “failed to
articulate any reasoning” as to why “one skilled in the art would have
modified the process disclosed in Kozyuk ’131 to subject an enzyme to a
5 Office Action mailed September 15, 2015 (“Final Act.”).
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Application 13/916,008
cavitation activation energy in the range of 0.4 to 1.6 kJ per kilogram of
liquid medium.” Id. at 7.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
“[T]he examiner bears the initial burden ... of presenting a prima facie case
of unpatentability.” Here, Appellant has persuaded us that the Examiner has
not carried the burden of establishing that the claimed process was
anticipated by, or obvious in view of, Kozyuk ’131.
The Specification discloses that “cavitation activation energy” can be
calculated using the following equation:
.....
p • Vc
Spec. 140. In the above equation,
8 (kJ/kg) is cavitational energy, Pi (Pa) is the static pressure in
the first chamber, P2 (Pa) is the static pressure in the second
cavitation chamber, Q (rnVsec) is the flow rate of the liquid
medium through the cavitation apparatus, t (sec) is the
residence time in the hydrodynamic cavitation zone, Vc (m3) is
the volume of the downstream cavitation zone, and p (kg/m3) is
the density of the pre-gelatinized grain-based liquid medium or
pre-cavitated liquid enzyme stream.
Id.
The Examiner contends that Kozyuk ’131 inherently anticipates the
claimed process because it discloses an example in which the pressure
differential between the first and second chamber, the orifice diameter, and
the flow rate through the cavitation apparatus are similar to the pressure
differential, orifice diameter, and flow rate disclosed in the Example
provided in the Specification. Ans. 8. We are not persuaded because, even
accepting the Examiner’s contentions as correct, Kozyuk ’131 does not
disclose “Vc” — i.e., the volume of the cavitation zone. Indeed, the
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Examiner concedes that “without the value of Vc of the instant cavitation
apparatus, a reasonable comparison of the instant cavitation energy and/or
the cavitation parameters cannot be made with the teachings of Kozyuk
’131.” Id.
The Examiner attempts to circumvent this issue by arguing that
Kozyuk ’131 is authored by the present inventor who, presumably, would
“be in possession of all the details of the cavitation apparatus” of Kozyuk
’131. Id. But the undisclosed non-public knowledge of an author is not,
itself, part of the disclosure of a prior art reference under 35 U.S.C. § 102(b).
And, absent information about the volume of the cavitation zone, we cannot
fairly say that the Example of Kozyuk is “identical or substantially identical”
to the Example disclosed in the Specification such that the burden of proof
on inherency is transferred to the Appellant. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product”).
With respect to obviousness, the Examiner contends that because the
prior art discloses “all the ranges for the parameters in the equation to
calculate the cavitation energy described in the specification,” a skilled
artisan “would have had reasonable expectation of success in substituting the
proper parameters to produce the requisite cavitation energy described in the
instant application.” Final Act. 3^4 (internal citations omitted). However,
the prior art does not disclose ranges for all of the variables in the equation
to calculate cavitation energy. As discussed above, Kozyuk ’131 does not
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Application 13/916,008
disclose the volume of the cavitation zone (“Vc” in the cavitation energy
equation). In addition, the Examiner does not identity, and we do not find,
any disclosure in Kozyuk ’131 discussing ranges for “the density of the pre­
gelatinized grain-based liquid medium or pre-cavitated liquid enzyme
stream” (“p” in the cavitation energy equation).
It is not clear on what basis the Examiner contends the skilled artisan
would have arrived at the claimed cavitation energy, as the Examiner failed
to articulate any reasoning beyond asserting that the skilled artisan “would
[have been] able to change either the pressure (P2) or the volume (Vc) [to]
achieve the desired cavitation energy.” Final Act. 3^4; see also Ans. 7—10.
As best we can determine, the Examiner assumed that the claimed cavitation
energy would result from routine optimization. But the Examiner has not
established that p and Vc were recognized as result effective variables. In re
Antonie, 559 F.2d 618, 620 (CCPA 1977) (finding exception to “the rule that
the discovery of an optimum value of a variable in a known process is
normally obvious” where “the parameter optimized was not recognized to be
a result-effective variable”). Indeed, as discussed above, the Examiner
concedes that Kozyuk ’131 does not disclose Vc, much less recognize it as a
result effective variable. Moreover, even assuming the variables that are
disclosed in Kozyuk ’131— i.e., Pi, P2, Q, and t — were recognized to be
result effective variables, absent disclosures regarding Vc and p, we can only
speculate as to whether optimization of Pi, P2, Q and t would have resulted
in the claimed cavitation energy.
Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4,
and 5 as anticipated by or obvious over Kozyuk ’131. The Examiner has not
pointed to any disclosure in Kozyuk ’771 or Kozyuk ’774 that remedies the
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deficiencies of Kozyuk ’131 discussed above. We therefore also reverse the
Examiner’s rejection of claims 1—5 as obvious over Kozyuk ’131, Kozyuk
’771, and Kozyuk ’774.
SUMMARY
For the reasons set forth herein, we reverse the Examiner’s rejection
of claims 1, 2, 4, and 5 under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative under pre-AIA 35 U.S.C. § 103(a) as
obvious over, Kozyuk ’131. We also reverse the Examiner’s rejection of
claims 1—5 under 35 U.S.C. § 103(a) over the combination of Kozyuk ’131,
Kozyuk ’771, and Kozyuk ’774.
REVERSED
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