Ex Parte Realff et alDownload PDFPatent Trial and Appeal BoardOct 13, 201612942906 (P.T.A.B. Oct. 13, 2016) Copy Citation 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 ). 2 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). 3 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 4 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. 5 Appeal2014-002406 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 6 Copy with citationCopy as parenthetical citation