Ex Parte Realff et al

Patent Trial and Appeal Board

Oct 13, 2016

12942906 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/942,906
108046 7590
Andrews Kurth LLP
600 Travis
Suite 4200
Houston, TX 77002
FILING DATE FIRST NAMED INVENTOR
11/09/2010 Matthew James Realff
10/17/2016
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.
665326-998997 2641
EXAMINER
HUTSON, RICHARD G
ART UNIT PAPER NUMBER
1652
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
pat-tmk@andrewskurth.com
nicolemims@chevron.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW JAMES REALFF, RONALD W. SMITH,
PRABUDDHA BANSAL, ANDREAS SEBASTIAN BOMMARIUS,
MELANIE HALL, and JAY HYUNG LEE1
Appeal2014-002406
Application 12/942,906
Technology Center 1600
Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for producing glucose for fermentation. The Examiner has rejected the
claims as not patent eligible and as anticipated. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real parties in interest as Georgia Tech Research
Corporation and Texaco Development Corporation (App. Br. 1 ).
Appeal2014-002406
Application 12/942,906
STATEMENT OF THE CASE
Claims 14, 15, 17, 18, 21, and 22 are on appeal (App. Br. 2). 2 We will
focus on claim 14, which reads as follows:
14. A method for producing glucose for fermentation said method
compnsmg:
(a) measuring the initial hydrolysis rate of a biomass;
(b) correlating the measured initial hydrolysis rate with a crystallinity
index of standard cellulosic materials to project a crystallinity indicative of
overall enzymatic hydrolysis susceptibility wherein the crystallinity index
was determined by applying multivariate statistical analysis to X-ray
diffraction spectra, solid state cross-polarization/magic angle spinning
nuclear magnetic resonance spectra, infrared spectra, differential scanning
calorimetry heat capacity temperature plots, or a combination thereof;
( c) selecting one or more of the reaction conditions of steps ( d)-( f)
based on the projected crystallinity of the biomass;
( d) treating a biomass with acid and heat to produce a composition
mixture comprising cellulose suitable for enzymatic hydrolysis;
( e) enzymatically hydrolyzing at least a portion of the cellulose of
step ( d) to form a composition comprising glucose; and
(f) utilizing glucose in an aerobic or anaerobic fermentation process.
Claims 14, 15, 17, 18, 21, and 22 stand rejected under 35 U.S.C. § 101
as not being directed to patent eligible subject matter (Ans. 2).
Claims 14, 15, 17, 18, 21, and 22 also stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Varanasi et al. (US 8,236,536 B2, Aug. 7, 2012)
(Ans. 3).
ANTICIPATION
The Examiner finds that Varanasi teaches:
methods for the preparation of glucose and one or more alcohols
comprising the steps of: incubating and treating a biomass
2 Claims 1-13 and 20 are also pending but have been withdrawn from
consideration (Final Act. 1 ).
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Appeal2014-002406
Application 12/942,906
cellulose or waste cellulose with an ionic liquid (acid) and heat
(IL) to form a solution; precipitating amorphous cellulose and/or
cellulose of reduced crystallinity by admixture with an anti-
solvent; adding cellulases to the cellulose precipitate under
conditions which promote the hydrolysis of cellulose to sugars;
and converting the sugars to one or more alcohols.
(Ans. 3--4.) The Examiner also finds that Varanasi teaches "the above
methods for the preparation of glucose and alcohols comprising the selection
of the reaction conditions of biomass treatment, enzymatic hydrolysis and
fermentation by first measuring an initial hydrolysis rate of biomass and
selecting the reactions conditions based upon the initial hydrolysis rate and a
crystallinity index" and "wherein the initial hydrolysis and crystallinity
index is measured and determined by x-ray diffraction" (id. at 4).
Analysis
Appellants argue that Varanasi "Does Not Use Acid" (App. Br. 6
(emphasis omitted); see also Reply Br. 1 ). We conclude that the Examiner
has not set forth a prima facie case that Varanasi discloses a method
including, in context, step ( d) of claim 14.
Claim 14 recites: "( d) treating a biomass with acid and heat to
produce a composition mixture comprising cellulose suitable for enzymatic
hydrolysis" and "( e) enzymatically hydrolyzing at least a portion of the
cellulose of step ( d) to form a composition comprising glucose" (App.
Br. 9). Step ( e) clearly recites that the cellulose being treated therein is the
cellulose of step (d). Thus, we do not agree with the Examiner that the order
of these steps "are not currently relevant" (Ans. 13). Instead, we interpret
claim 14 to require that step ( e) follows step ( d).
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Appeal2014-002406
Application 12/942,906
The Examiner initially relies on Varanasi's ionic liquid for being the
acid (Ans. 3). However, the Examiner does not provide any evidence that
ionic liquids generally or that the specific ionic liquids recited in Varanasi
are acids.
Instead, in response to Appellants' argument that Varanasi teaches
away from treating the biomass with acid, the Examiner relies on Varanasi's
"example 3 where Varanasi treats the biomass with acid (i.e. dinitrosalicylic
acid)" (id. at 14). However, even if we assume that the dinitrosalicylic acid
method taught in Varanasi treats a "biomass" and produces a mixture
comprising cellulose, as required by step ( d), the Examiner has not
established that Varanasi then teaches enzymatically hydrolyzing this
cellulose, as required by step ( e ).
Conclusion
The Examiner has not set forth a prima facie case that Varanasi
anticipates claim 14. We therefore reverse the anticipation rejection of
claim 14 and of claims 15, 17, 18, 21, and 22, which depend from claim 14.
ELIGIBILITY
The Examiner finds that, "[b ]ased upon an analysis with respect to the
claim as a whole, [the] claims ... are determined to be directed to a law of
nature/natural principle" (Ans. 2). In particular, the Examiner finds:
The claim is directed to a naturally occurring correlation between
the measured initial hydrolysis rate and the crystallinity index of
standard cellulosic material. The combination of steps recited in
the claim taken as a whole, are not sufficient to qualify as a
patent-eligible practical application as the claim covers every
substantial practical application of the correlation. Steps a) and
d)-f) of claim 14 merely recite prior art, conventional and routine
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Appeal2014-002406
Application 12/942,906
methods of producing glucose for fermentation and thus amount
to nothing more than applying the natural correlation itself.
(Id. at 2-3.)
Principles of Law
Section 101 states that "[ w ]hoever invents or discovers any new and
useful process ... may obtain a patent therefor." However, the "Court has
long held that this provision contains an important implicit exception.
'[L]aws of nature, natural phenomena, and abstract ideas' are not
patentable.' Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1293 (2012). In addition, "to transform an unpatentable law of
nature into a patent-eligible application of such a law, one must do more
than simply state the law of nature while adding the words 'apply it."' Id. at
1294. Furthermore, a "'new combination of steps in a process may be
patentable even though all the constituents of the combination were well
known and in common use before the combination was made."' Id. at 1298
(quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981)).
Analysis
Appellants argue:
the additional steps of "treating a biomass with acid and heat",
"enzymatically hydrolyzing at least a portion of the cellulose to
form a composition comprising glucose", and "utilizing glucose
in an aerobic or anaerobic fermentation process" are more than
sufficient to limit the scope of the claim and do more than
generally describ[ e] the natural principle with generalized
instructions of "applying it."
(App. Br. 5.) We conclude that the Examiner has not adequately explained
why these steps fail to transform claim 14 into a patent-eligible application
of a law of nature.
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Application 12/942,906
The Examiner finds that the "claimed steps do not integrate the
natural principle and are merely appended to it" (Ans. 8). However,
claim 14 clearly requires that "one or more of the reaction conditions of
steps (d)-(t) [are selected] based on the projected crystallinity of the
biomass" (App. Br. 9).
The Examiner also finds:
The combination of steps recited in the claim taken as a whole,
are not sufficient to qualify as a patent-eligible practical
application as the claim covers every substantial practical
application of the correlation. Steps a) and d)-t) of amended
claim 14 merely recite prior art, conventional and routine
methods of producing glucose for fermentation and thus amount
to nothing more than applying the natural correlation itself.
(Ans. 12.) However, as discussed above, the Examiner has not adequately
shown that the combination of steps in claim 14 "recite prior art,
conventional and routine methods of producing glucose for fermentation"
(id.).
Conclusion
The Examiner has not set forth a prima facie case that claim 14 is not
directed to patent eligible subject matter. We therefore reverse the § 101
rejection of claim 14 and of claims 15, 17, 18, 21, and 22, which depend
from claim 14.
REVERSED
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