Ex Parte Redford

Patent Trial and Appeal Board

Mar 28, 2017

12646796 (P.T.A.B. Mar. 28, 2017)

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.
12/646,796 12/23/2009 Steven G. Redford 098797-2005 1769
12706 7590
Poet, LLC
c/o Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN G. REDFORD
Appeal 2016-002325
Application 12/646,7961
Technology Center 1700
Before WESLEY B. DERRICK, JULIA HEANEY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
maintained2 35 U.S.C. § 103(a) rejections of claims 26, 27, 29, and 30 over
1 Appellant identifies the real party in interest as Poet Research, Inc., with an
assignment interest assigned to BOKF, NA d/b/a Bank of Oklahoma.
Appeal Brief filed May 18, 2015 (“Appeal Br.”), 2.
2 A rejection of claim 30 under 35 USC § 112, second paragraph has been
withdrawn and rejection of prior pending claims 1 and 25 under 35 U.S.C.
§ 103(a) has been rendered moot by their cancellation prior to appeal.
Appeal 2016-002325
Application 12/646,796
Lewis3 in view of Dahlstrom4 and of claim 28 in further view of
Winowiski.5 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
The claimed subject matter on appeal relates to the solids component
of an ethanol fermentation process. Spec. Abstract, Claim 30.
Claim 30—the sole independent claim on appeal—is representative.
30. A com meal product which is the solid portion of a non-
distilled fermentation product of a fermentation process, the
process comprising:
(a) forming the fermentation product from milled
com, wherein the fermentation product comprises an
aqueous-ethanolic component and a solids component,
wherein the fermentation process proceeds under a
temperature that does not exceed about 150 °C;
(b) separating the aqueous-ethanolic component from
the solids component to provide a separated solids
component having a reduced amount of the aqueous-
ethanol component, wherein the separating step is
performed prior to distillation;
(c) conducting at least two separate addition-removal
procedures thereto wherein each procedure comprises
adding an ethanol solution to the separated solids
component and further wherein the ethanol content of the
each solution is higher than the ethanol content of the
aqueous-ethanol component remaining in the separated
solids component, and then removing at least a portion of
liquid therefrom such that after each addition-removal
3 Lewis et al., US 2005/0239181 Al, published October 27, 2005.
4 Dahlstrom et al., US 4,309,254, issued January 5, 1982.
5 Winowiski, Pellet Quality in Animal Feeds, American Soybean
Association, MITA (P) No. 195/11/95 (Vol. FT21-1995).
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Application 12/646,796
procedure the water content in the separated solids
component is lower than the prior procedure; and
(e) drying the separated solids component under
azeotropic conditions at a temperature no greater than
80 °C to provide the com meal product.
Appeal Br. (Claims Appendix) 12-13.
Appellant relies on the dependency of claims 26-29 from claim 30
and, as to claim 28, that Winowiski does not overcome the contended
deficiency as to the rejection of claim 30. All claims stand or fall,
accordingly, on the basis of claim 30.
DISCUSSION
We have reviewed Appellant’s arguments for patentability set forth in
the Appeal Brief and the Reply Brief filed December 21, 2015, but are not
persuaded that the Examiner erred reversibly in rejecting the claims.
Accordingly, we sustain the Examiner’s prior art rejections for the reasons
set forth in the Final Office Action mailed October 20, 2014 (“Final Act.”),
and the Examiner’s Answer issued October 23, 2015 (“Ans.”).6 We add the
following.
Claim 30 is drafted in a product-by-process format. Even though such
claims are limited by and defined by the process as to infringement,
determination of patentability is based on the product itself. Amgen Inc. v.
F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n.14 (Fed. Cir. 2009).
6 Appellant cancelled prior pending claim 1 and amended claim 30 after the
Final Office Action. Amendment and Reply under 37 CFR 1.116 dated
January 16, 2015. The amendment to claim 30 incorporated limitations from
prior pending claim 1 and was entered by the Examiner. Advisory Action
dated February 12, 2015.
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Thus, if the product of the product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior art product is made by a different process. In re Thorpe,
111 F.2d 695, 698 (Fed. Cir. 1985) (citations omitted).
The Examiner “bears a lesser burden of proof in making out a case of
prima facie obviousness for product-by-process claims because of their
peculiar nature than would be the case when a product is claimed in the
more conventional fashion.” In re Fessmann, 489 F.2d 742, 744 (CCPA
1974) (Reasoning that a prior art rejection is “eminently fair and acceptable”
“when the prior art discloses a product which reasonably appears to be either
identical with or only slightly different than a product claimed in a product-
by-process claim.”). Once the Examiner provides a rationale tending to
show that the claimed product appears to be the same or similar to that of the
prior art, although produced by a different process, the burden shifts to
applicant to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product. In re
Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983); see also Thorpe, 111 F.2d at
698.
The Examiner relies on Lewis for, inter alia, its disclosure of a com
meal product obtained by fermentation processes that proceed under
temperatures not exceeding about 150°C or 100°C, forming a wet cake from
the solids from the beer produced by the fermentation process, and low
temperature drying of the wet cake. Ans. 3 (citing Lewis 10, 23, 52, 72,
77-79, 101-103, 109, 110, 136). Citing 101-103, the Examiner finds
Lewis “discloses removing the solids from the ‘beer’ to form the wet cake
by centrifugation and/or distillation prior to ethanol recovery.” Final Act. 4;
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Ans. 4. Citing the abstract, col. 2,11. 12-15, col. 3,11. 6, 7, and 18-21, the
Examiner relies on Dahlstrom for its “disclos[ure] of removing solids by
centrifugation prior to distillation in order to improve the operability of the
distillation equipment by reducing defouling of the distillation equipment.”
Final Act. 4-5; Ans. 4.
The Examiner concludes it would have been obvious to one of
ordinary skill in the art to have removed the solids and form the wet cake
prior to distillation of the beer in order to improve the operability of the
distillation equipment. Final Act. 5; Ans. 4.
The Examiner further finds that the com meal product of Lewis as
modified by Dahlstrom is of the same or similar composition and is exposed
to the same or similar low temperatures as the com meal product claimed in
the current application (Final Act. 5-7; Ans. 4-6), especially where Lewis
(11109-110) discloses low temperature drying of the wet cake to form the
com meal product (Final Act. 6; Ans. 4).
The Examiner determines that the product of the product-by-process
claim is obvious in light of the cited prior art. Ans. 4-5 (citing, inter alia,
Thorpe, 111 F.2d 695); see also Final Act. 6-8.
On this record, the Examiner’s determination that the product of the
product-by-process claim would have been obvious in light of the cited prior
art is well-founded.
Appellant proffers two general contentions.
First, Appellant contends that the combined references fail to teach or
suggest all of the claimed elements. Appellant recites the process steps set
forth in claim 30, contends that the prior art uses higher temperatures for
drying, and contends that “Lewis does not teach or suggest. . . drying the
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com meal under azeotropic conditions at a temperature no greater than
80 °C.” Appeal Br. 9-10.
Appellant’s argument that the prior art fails to teach or suggest all of
the claimed elements is without persuasive merit because there is no
evidence that Lewis does not reasonably teach or suggest drying at low
temperatures sufficiently similar to obtain the same resulting product. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument
. . . cannot take the place of evidence.”). To the extent Appellant relies on
the Examiner’s admission that “Lewis fails to disclose a process of drying
the com meal product under azeotropic conditions at a temperature no
greater than 80 °C” (Final Act. 6), it is of no import where there is no
evidence as to the difference in temperature, if any, or that the difference
would have an effect on the product obtained (Appeal Br. 10).
Second, Appellant contends that the com meal is improved in respect
to its use as animal feed due to the reduced exposure to heat. Appeal Br. 10;
Reply Br. 5.
To support this contention, Appellant relies on Miller,7 identified as
being “first presented in the Response to Final Office Action” (Appeal Br.
10), and identified as Exhibit A (Appeal Br. (Evidence App’x) 14).
Appellant cites Miller as support for mild heating causing a loss in available
lysine in animal feed and for mild to moderate heating causing loss of
sulfhydryl groups, formation of disulfide cross links, racemization of
aspartic acid, and reduced digestibility of all amino acids. Appeal Br. 10.
Appellant argues that the claimed com meal “is thus more beneficial than
7 Miller, Protein Nutrition Requirements of Farmed Livestock and Dietary
Supply, Protein Sources for the Animal Feed Industry (2002).
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Application 12/646,796
com meal made by a process that uses a higher temperature and/or longer
heating time.” Appeal Br. 10.
We note that it is not apparent that Miller was properly entered into
the record as it was filed with the Amendment and Reply under 37 CFR
1.116 dated January 16, 2015. Nonetheless, because its entry is a matter of
examination procedure and the Examiner fails to affirmatively set forth its
status in the record, we fully consider Miller as relied on by Appellant.8
In the Reply Brief, Appellant further contends that the Specification
provides evidence that the claimed com meal is different from that of the
prior art in that it is an improved com meal product, stating:
As taught in the instant specification, maintaining the
temperature below 150 °C reduces degradation of the meal,
including reduction of color transformation and oxidation of
starches, and maintenance of the temperatures below 100 °C
further reduces degradation. Specification, para. [0068],
[0119]. A lower drying temperature allows for improved
nutritional value and/or digestibility of the meal as animal feed.
For example, mild heating of protein-containing feed causes a
loss in available lysine. Further, the com meal may include
elevated protein levels, as well as elevated levels of B vitamins,
vitamin C, vitamin E, folic acid, amino acids (e.g., lysine),
and/or vitamin A. Specification, para. [0111].
Reply Br. 5. The portions of the Specification cited in the Reply Brief as
evidence of an improved product—68, 111, 119—were not similarly cited
in the Appeal Brief. Compare Appeal Br. to Reply Br. Such arguments are
8 “A brief shall not include . . . any new or non-admitted affidavit or other
Evidence.” 37 C.F.R. § 41.37(c)(2). And “evidence submitted after a final
rejection . . . but before or on the same date of filing an appeal. . . may be
admitted upon a showing of good and sufficient reasons why the affidavit or
other evidence is necessary and was not earlier presented.” 37 C.F.R.
§ 1.116(e).
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untimely under 37 C.F.R. § 41.41(b)(2); nonetheless, we exercise our
discretion to fully consider the arguments grounded on these portions of the
Specification.
In sum, Appellant’s argument as to the superiority of the claimed
product is grounded on heating at a lower temperature and/or for a lesser
amount of time than the prior art process. Appellant fails, however, to
establish that the cited prior art process differs in any meaningful manner as
to either the temperature or length of time used to dry the com meal product
in regard to its impact on the products made by the different processes. See
generally Appeal Br.; Reply Br.
On this record, there is insufficient evidence that the instant product
differs from that of Lewis as relied on by the Examiner, particularly where
Lewis is disclosed as an improvement over the conventional process. Many
of the particular properties cited by Appellant as being provided by its
process are, in fact, likewise identified in Lewis as being a benefit of its
disclosed process using a lower drying temperature than the conventional
process. See, e.g., Lewis 1108 (avoiding browned or denatured distiller’s
dried grains), 1136 (improved levels of protein and starches), 1137
(“elevated levels of B vitamins, vitamin C, vitamin E, folic acid, and/or
vitamin A” and “richer gold color” compared to “conventional distiller’s
dried grain products”).
Further, the absence of any affirmative teaching in Lewis as to the
level of available lysine obtained or as to other characteristics is not
persuasive evidence of an unobvious difference. Cf. In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a
previously known composition, even when that property and use are
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unobvious from the prior art, can not impart patentability to claims to the
known composition.”).
On this record, accordingly, we are not persuaded that the Examiner
erred in determining that the claimed product appears to the same or similar
to that of the prior art such that the burden shifted to Appellant and, finding
Appellant has failed to meet the burden that there is an unobvious difference,
are likewise not persuaded the Examiner erred reversibly in rejecting the
claims.
DECISION
The Examiner’s decision rejecting claims 26-30 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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