Ex Parte Medoff

Patent Trial and Appeal BoardOct 29, 2018

15141734 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/141,734 04/28/2016 89174 7590 10/31/2018 Xyleco, Inc. 360 Audubon Road Wakefield, MA 01880 FIRST NAMED INVENTOR Marshall Medoff 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. 08895-0059013 1687 EXAMINER HILL, NICHOLAS E ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 10/31/2018 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): patents@xyleco.com admin@leberiplaw.com celia@leberiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARSHALL MEDOFF Appeal2018-007256 Application 15/141, 734 Technology Center 1700 Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and AVEL YN M. ROSS, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-5 and 7-9. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 In explaining our Decision, we refer to the Specification filed April 28, 2016 ("Spec."); Final Office Action dated September 19, 2017 ("Final Act."); Advisory Action dated January 18, 2018 ("Adv. Act."); Appeal Brief filed April 16, 2018 ("Appeal Br."); Examiner's Answer dated June 5, 2018 ("Ans."); and Reply Brief filed July 9, 2018 ("Reply Br."). 2 Appellant is Applicant Xyleco, Inc., which, according to the Appeal Brief, is also identified as the real party in interest. Appeal Br. 1. 3 Claim 6 has been cancelled and is not before us on appeal. Appeal Br. 7. Appeal2018-007256 Application 15/141, 734 The Claimed Invention Appellant's disclosure relates to biomass materials (e.g., plant biomass, animal biomass, and municipal waste biomass) and methods of making and processing such materials to change their structure. Spec. 2; Abstract. For example, Appellant's Specification discloses biomass feedstock materials, such as cellulosic and/or lignocellulosic materials that have a lower molecular weight and/or crystallinity relative to a native material, and can be used to produce other products, such as ethanol and/or butanol. Id. Claim 1, the sole independent claim, is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (Appeal Br. 7) (key disputed claim language italicized and bolded): 1. A composition comprising: a lignocellulosic material comprising corn cobs, the lignocellulosic material having been treated to have a peak maximum molecular weight, as determined by gel permeation chromatography, of less than 25,000, and a crystallinity of less than 55 percent as determined by X-ray diffraction, wherein the treated material has a bulk density of less than 0.5 g/cm3, wherein the bulk density is determined using ASTM 018958. The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Fan et al., Mechanism of the Enzymatic Hydrolysis of Cellulose: Effects of Major Structural Features of Cellulose on Enzymatic Hydrolysis, Biotechnology and Bioengineering, Vol. XXII, 177-199 (1980) (hereinafter "Fan"). 2 Appeal2018-007256 Application 15/141, 734 Kumakura et al., Effect of Radiation Pretreatment of Bagasse on Enzymatic and Acid Hydrolysis, Biomass, 2, 199-208 (1982) (hereinafter "Kumakura"). Hurter, Utilization of Annual Plants and Agricultural Residues for the Production of Pulp and Paper, Nonwood Plant Fiber Pulping, 1988 Pulping Conference, TAPPI Proceedings, 49-70 (1988) (hereinafter "Hurter"). The Re} ection On appeal, the Examiner maintains the following rejection4: claims 1- 5 and 7-9 rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Fan in view of Kumakura and Hurter. Ans. 3-6. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we reverse the Examiner's rejection for principally the same reasons provided by Appellant at pages 2- 4 of the Appeal Brief and pages 1-2 of the Reply Brief. We add the following. The Examiner determines that the combination of Fan, Kumakura, and Hurter suggests a cellulosic material satisfying all of the limitations of claim 1 and thus, concludes that the combination would have rendered the claim obvious. Ans. 3-5 (citing Fan, Abstract, 177, 180, 181, 184, 185; Kumakura, Abstract, 300; Hurter, 49, 53, and 58 (Table I)). Regarding the recitation "a lignocellulosic material comprising com cobs," the Examiner relies on Hurter for suggesting this missing claim element. Id. at 4. In 4 The Examiner'sÂ§ 112 rejections (Final Act. 2-3) are withdrawn by the Examiner at page 6 of the Answer. 3 Appeal2018-007256 Application 15/141, 734 particular, the Examiner finds that although Hurter does not explicitly teach the use of com cobs, Table I of Hurter does teach that "Com" can be used to prepare pulps for papermaking. Id. (citing Hurter 53, 58). The Examiner finds that one of ordinary skill in the art would have reasonably expected that Hurter's teachings regarding "Com" in Table I would extend to the various agricultural products associated with com, including com leaves, com stalks, and com cobs. Id. ( citing Hurter 58). Appellant argues that the Examiner's rejection of claim 1 should be reversed because Hurter does not teach or suggest "com cobs," as recited in the claim. Appeal Br. 2--4; see also Reply Br. 1-3. In particular, Appellant contends that although Hurter lists "Com" in Table I (Hurter 58), the disclosure actually refers and is directed to the use of com "Stalk fibers" and not to com cobs, as claimed. Appeal Br. 3--4. Appellant argues that because Hurter makes no mention of com cobs and, instead, repeatedly refers to the use of "stalk fibers" or "plant stalks" (see, e.g., Hurter 49, 50, 53, 55, 56, 58-61), and Table I of Hurter lists "Com" under the heading "STALK FIBERS" (id. at 58), one of ordinary skill in the art would have understood Hurter's disclosure as referring to com stalk fibers, i.e., fibers coming from the stem/stalk of the com plant, and not to "com cobs," as required by the claim. Appeal Br. 3 ( citing Wikipedia for the definition of "Com Stalk"). The weight of the evidence supports Appellant's argument. We agree with Appellant that the portions of Hurter upon which the Examiner relies do not teach or suggest "com cobs," as recited in claim 1. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness). As Appellant correctly points out (Appeal Br. 3), although Table I of Hurter includes 4 Appeal2018-007256 Application 15/141, 734 "Com" (Hurter 58) among a listing of materials used to prepare pulps in papermaking, reading the reference as a whole, it is clear that the disclosure is actually referring to the use of com stalk fibers and not to com cobs. As Appellant notes (Appeal Br. 3--4), com stalks and com cobs are distinct and derive from different portions of the com plant. Indeed, Hurter describes the specific characteristics of stalk fibers and their suitability for papermaking. See, e.g., Hurter 50 ( disclosing that "stalk fibers are short" and "tend to be more heterogeneous), 53 (disclosing that "plant stalks have a very open structure and are very reactive"). There is no teaching, suggestion, or even mention of com cobs or the suitability of com cobs for papermaking. Moreover, on the record before us, we are not persuaded that the Examiner identifies evidence or provides reasoning sufficient to support a finding that one of ordinary skill would have been led to a composition comprising com cobs based on Hurter's disclosure regarding com stalk fibers or had reason to modify Fan's pulp composition to include com cobs, as would be required to arrive at the claimed invention. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring "reasoning with some rational underpinning to support the legal conclusion of obviousness") (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, the Examiner does not persuasively respond to Appellant's principal argument regarding Hurter's disclosure being directed to com stalk fibers or direct us to any teaching or suggestion in the prior art regarding the technical feasibility of using com cobs for papermaking; the impact the use of com cobs would have on Fan's papermaking process; or why one of ordinary skill in the art would have had a reasonable expectation of success in modifying Fan's pulp composition to include com cobs. 5 Appeal2018-007256 Application 15/141, 734 The Examiner's statement that "one of ordinary skill would be motivated to use a com cob pulp in the process of Fan because a com cob pulp is a waste cellulose" (Ans. 9), without more, is insufficient to sustain the Examiner's rejection. Kahn, 441 F.3d at 988 (holding "rejections on obviousness grounds cannot be sustained by mere conclusory statements"). We, therefore, cannot sustain the Examiner's rejection of claim 1. Because claims 2-5 and 7-9 depend from claim 1, we also cannot sustain the Examiner's rejection of these claims. Accordingly, we reverse the Examiner's rejection of claims 1-5 and 7-9 under 35 U.S.C. Â§ 103(a) as obvious over the combination of Fan, Kumakura, and Hurter. DECISION The Examiner's rejection of claims 1-5 and 7-9 is reversed. It is ordered that the Examiner's decision is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a). REVERSED 6