Ex Parte Schultz

Patent Trials and Appeals Board

Jan 22, 2019

13882688 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/882,688 07/31/2013 Michael Anthony Schultz
19135 7590 01/24/2019
LanzaTech New Zealand Limited
8045 Lamon Ave, Suite 400
Skokie, IL 60077
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.
LT57US 2778
EXAMINER
VANBUREN,LAURENK
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
ip@lanzatech.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ANTHONY SCHULTZ 1
Appeal2017-011522
Application 13/882,688
Technology Center 1600
Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method for producing one or more products from a gas
stream comprising methane. Claims 22-26, 28-31, and 37--41 are on appeal
as rejected under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellant identifies the Real Party in Interest as "LanzaTech New Zealand
Limited." Appeal Br. 2.
Appeal2017-011522
Application 13/882,688
STATEMENT OF THE CASE
Claim 22 is representative and is reproduced below:
22. A method for producing one or more products from a gas
stream comprising methane, the method comprising;
a) converting at least a portion of the methane in the gas
stream to a substrate comprising CO and H2 by catalytic
oxidation;
b) passing a portion of the substrate to a methanol
synthesis vessel operated at conditions to convert at least a
portion of the CO and H2 to methanol; and
c) passing a second portion of the substrate of step (a) to a
first bioreactor containing a culture of at least one
carboxydotrophic microorganism and anaerobically fermenting
at least a portion of the substrate comprising CO and H2 to
produce at least one product selected from the group consisting
of alcohols and acids.
Appeal Br. 11.
The following rejections are appealed:
Claims 22-26, 28-31, and 37-39 stand rejected under 35 U.S.C.
§ I03(a) over Schinski2 and Simpson. 3 Answer 3.
Claims 22, 25-26, and 39-41 stand rejected under 35 U.S.C. § I03(a)
over Schinski, Simpson, and Burk. 4 Id. at 7.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
2 US 6,596,781 B 1 (issued July 22, 2003) ("Schinski").
3 US 2009/0203100 Al (published Aug. 13, 2009) ("Simpson").
4 US 2009/0191593 Al (published July 30, 2009) ("Burk").
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Application 13/882,688
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Arguments made by Appellant in the Appeal Brief and properly presented in
the Reply Brief have been considered; arguments not so-presented in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.").
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen a patent
claims a structure [ or method] already known in the prior art that is altered
by the mere substitution of one element [ or step] for another known in the
field, the combination must do more than yield a predictable result." Id.
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). "In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
"[T]he question is whether there is something in the prior art as a
whole to suggest the desirability, and thus the obviousness, of making the
combination, not whether there is something in the prior art as a whole to
suggest that the combination is the most desirable combination available."
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (citation omitted). "[I]fa
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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Appeal2017-011522
Application 13/882,688
same way, using the technique is obvious unless its actual application is
beyond his or her skill." KSR, 550 U.S. at 417. "[F]amiliar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle." Id. at 420.
Findings of Fact (FF)
We adopt the Examiner's findings of fact and rationale on
obviousness as set forth in the Final Action and Answer. Final Action 2-8;
Answer 3-12. The following findings of fact highlight certain evidence:
FF 1. Schinski discloses a process for producing Fischer-
Tropsch products ( e.g., various liquid and solid hydrocarbons, which
are generally upgraded to lubricating oils and transportation fuels) and
acetic acid. Schinski Abstract, 2:42--44.
FF2. Schinski discloses converting methane (CH4) to CO and
H2, which Schinski calls "synthesis gas" or "syngas," using the
following chemical processes:
2CH4 + 02 7 2CO + 4H2
CH4 + H20 7 CO+ 3H2
CH4 + CO2 7 2CO + 2H2
(1)
(2)
(3)
Schinski 1 :48-63. Schinski discloses converting methane to CO/H2-
containing syngas in a syngas reactor. Schinski 4:65-5:2.
FF3. Further to the preceding finding of fact, Schinski
discloses converting CO, CO2, and H2-containing syngas, as derived
from methane, into methanol, using the following chemical processes:
(4)
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Appeal2017-011522
Application 13/882,688
(5)
Schinski 2: 1-14. Schinski discloses converting the syn gas into
methanol in a methanol reactor using a catalyst, e.g., copper. Schinski
5:4--7.
FF4. Further to the preceding finding of fact, Schinski
discloses converting methanol to acetic acid (in presence of a
catalyst), using the following chemical process:
(6)
Schinski 2: 15-24. Schinski discloses converting methanol into acetic
acid in a carbonylation reactor using a rhodium catalyst and methyl
iodide promoter. Schinski 5:9-14.
FF5. Schinski discloses routing some of the syngas (CO/H2) to
a Fischer-Tropsch reactor, contacting it with a catalyst (e.g., Fe, Ni,
Co, Ru, and Re), and forming Fischer-Tropsch crude products, which
could then be upgraded to commercial products, such as jet fuel or
gasoline. Schinski 5:21-30, 11 :40-12:30.
FF6. Schinski also discloses that tail gases remain after the
Fischer-Tropsch reaction, i.e., CO, CO2, and H2, and that such tail
gasses can be recycled as syngas and converted to methanol by the
reactions discussed in previous findings of fact. Schinski 5:47---6: 10.
FF7. Further to the preceding findings of fact, Schinski
discloses a system of reactors/vessels for performing reactions and
associated plumbing for transporting gasses at its Figure 1, which is
reproduced below:
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Appeal2017-011522
Application 13/882,688
FIG. 1
Tall Gas
JJ
15
Fischer
Tropsch
25
29
23 Fuels
) Upgrading
Plant Lubes Reacfor
" Methane
3..-- Ox en
r'
5 1
Syngas
Reactor
Sy,gos
7
11
Methanol
Reactor
27-...... 19
}
17
,) Carbonyiction Acetic
Reactor Acid
Schinski Figure 1 is a flowchart showing that syngas (CO and H2
derived from methane, see supra FF2) is produced in a syngas reactor
1, then partially diverted 9 to a methanol reactor 11 and partially
diverted 13 to a Fischer-Tropsch reactor 15, where the respective
methanol and Fischer-Tropsch products are produced from the syngas.
Schinski Figure 1 further shows the methanol is passed 17 to a
carbonylation reactor 19 to produce acetic acid 21. Schinski Figure 1
further shows that tail gas (CO, CO2, and H2, see supra FF6) from the
Fischer-Tropsch reactor is recycled 33 as syngas 1. Schinski Figure 1
further shows that "overhead gasses," including H2, CH4, CO2, and
CO, are passed 27 from the carbonylation reactor 19 to support
refining of the Fischer-Tropsch products in some way. See Schinski
5:18-21.
FF8. Simpson discloses a process to increase the efficiency of
anaerobic fermentation, which uses CO to produce acetate (free acetic
acid), and converts the acetate to H2 and CO2 to use in the
fermentation with anaerobic bacteria ( e.g., Clostridium) to produce
ethanol. Simpson Abstract, ,r,r 45-56, 79, 82, 94.
6
31
21
Appeal2017-011522
Application 13/882,688
FF9. Simpson discloses, inter alia, "[ e ]thanol is rapidly
becoming a major hydrogen-rich liquid transport fuel around the
world," for example in the United States, Brazil, and Europe, thus
evidencing the industrial desirability of producing ethanol. Simpson
,r,r 2--4.
FFIO. Simpson states:
It has long been recognised that catalytic processes [ e.g., Fischer-
Tropsch catalyst reactions] may be used to convert gases
consisting primarily of CO and/or CO and hydrogen (H2) into a
variety of fuels and chemicals. However, micro-organisms may
also be used to convert these gases into fuels and chemicals.
These biological processes, although generally slower than
chemical reactions, have several advantages over catalytic
processes, including higher specificity, higher yields, lower
energy costs and greater resistance to poisoning.
Simpson ,r 6.
FFI 1. Simpson discloses, "[ a ]naerobic bacteria have been
demonstrated to produce ethanol and acetic acid from CO, CO2 and
H2 via the acetyl CoA biochemical pathway," and
Theoretically, in a fermentation substrate gas containing
CO, H2 and CO2 at a concentration ratio of 1: 1:0.33, two thirds
of the CO can be converted to ethanol according to equations 3
and 4 below:
6CO + 2H20 => CH3CH20H + 4C02
6H2 + 2C02 => CH3CH20H + 3H20
3.
4.
In combination these equations give the equation below:
6H2 + 6CO => CH3CH2 + 2C02
Simpson ,r,r 87-92.
7
5.
Appeal2017-011522
Application 13/882,688
FF12. Moreover, Simpson discloses "a fermentation process
according to the present invention described above will result in a
fermentation broth comprising one or more alcohols, preferably
ethanol, and acetate [acetic acid], as well as bacterial cells, in the
liquid nutrient medium." Simpson ,r 107-113.
FF13. Simpson also discloses "the process of the present
invention involves recycling of the acetate by-product of the CO-to-
ethanol fermentation, by converting it to H2 and CO2 gases and using
the H2," and further that a preferred way of doing so is by microbial
oxidation, e.g., using a Clostridium bacteria, in the same fermentation
reactor in which the ethanol fermentation product is produced or in a
second, separate bioreactor. Simpson ,r,r 116-121.
FF14. Simpson discloses that its substrate gases can be
produced from a variety of sources, including petroleum refining
processes and methanol production, among others. Simpson ,r 84.
Analysis
The Examiner determined that it would have been obvious to combine
the teachings of Schinski and Simpson to add the fermentation process of
Simpson, which utilizes a gas substrate like the syngas components of
Schinski, to the natural gas/methane processing system of Schinski. Final
Action 4--8; Answer 3-12. The Examiner determined that Schinski taught
claim 22 's steps "a)" and "b )" requiring converting methane to CO and H2
(syngas) and converting a portion of the CO/H2 gas substrate to methanol,
respectively. See Final Action 4--5; Answer 3-5; see also FF1-FF7.
Concerning claim 22 's step "c ), " the Examiner noted that "Schinski does not
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Appeal2017-011522
Application 13/882,688
specifically teach that [the] syngas [ used in] the methanol production
process is [also] used as a source of syngas for the fermentation bioreactors."
Final Action 5, 7. Thus, the Examiner looked to Simpson's teachings that
such syngas (a CO, H2, CO2 containing gas stream) is used as a substrate for
fermentation using an anaerobic bacteria ( e.g., Clostridium) to produce
ethanol and acetic acid. Final Action 5-7; Answer 4---6; see also FF8-FF14.
The Examiner determined that Schinski and Simpson would have been
obvious to combine because "[b ]oth the Fischer-Tropsch process [ of
Schinski] and the fermentation process [ of Simpson] are similar because
they are both methods of producing fuel and it would have been obvious to
have substituted one method of fuel production for another especially since
both processes can successfully use syngas as a substrate." Answer 10. We
discern no error in the Examiner's determinations.
The ultimate issue presented here is whether it would have been
obvious to add Simpson's fermentation step to Schinski's methods so that
some of Schinski's syngas (CO/H2) would have been used to produce
ethanol (i.e., CO converts to acetate, which converts to H2 and CO2, which
converts to ethanol). And, if adding Simpson's fermentation to Schinski's
method was obvious, a second question is whether doing so would prevent
Schinski's method from producing Fischer-Tropsch products?
We conclude, in agreement with the Examiner's determinations, that
it would have been obvious to add Simpson's fermentation process to
Schinski's method and that doing so would not render the new system
unsatisfactory for Schinski's purposes-Fischer-Tropsch products could still
be produced. Such a combined system can be illustrated based on Schinski's
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Appeal2017-011522
Application 13/882,688
Figure 1, annotated to show where/how Simpson's fermentation steps could
and would have been added, as shown below:
5
Ethanol+ Acetic Acid
•
15 • ----L ___ i JJ
1 Fermentation 1
.................. / ..
! Reactor """• ----i
, ________ J 13
'
Syngas 1-S~-
Reac:tor
Fischer
Tropsch
Reactor
11
Methanol
Reactor
25
23 j
.) Upgrading
Plant
29
Fuels J
Lubes ""'""' t:"
....___.,...___,.,..# 31
27 19
17 ,.....---~ ....
) Carbooyatlon Ace~1t
Reactor Ac10
21
r ;~,::nt~:: j Ethanol+ Acetic Acid r;~,:e~~t::1 Ethanol+ Acetic Acid
I
1 Reactor 1
I
1 Reactor 1
l-------- I l ________ J
The illustration above is based on Schinski's Figure 1, but adds a (or
several) fermentation reactor(s) (dashed-line boxes), as disclosed by
Simpson, fed either by syngas directly from the Schinski syngas reactor, as
are Schinski's methanol reactor and Fischer-Tropsch reactor, or by gas
remaining after Schinski's Fischer-Tropsch reaction is completed, or by gas
remaining after Schinski' s carbonylation reaction is completed, as is
otherwise disclosed in Schinski as recycled syngas to be reused in other
reactions (or in a combination of these). FF5-FF7. In any such location, the
fermentation reactor would produce ethanol and acetic acid from CO and H2
gas. FF8, FF11-FF13. Schinski explains that ethanol is a valuable product
and Schinski discloses acetic acid is also a valued product. FFl, FF7-Fl 1.
It is apparent from Simpson's disclosure that ethanol is a desirable industrial
product and that it can be produced from the same resources and substrates
as the products produced by Schinski's system. FF8-Fl 1, FF14. Adding
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Appeal2017-011522
Application 13/882,688
Simpson's fermentation processing to Schinski's system would add a
valuable product without needing additional resources. The process based
on Schinski and Simpson would use the CO, CO2, and H2, already used for,
or even already in, the Schinski system, even using recycled gas from the
Fischer-Tropsch tail gas, which was already a fraction of the original syngas
split-off from the gas used to produce the Schinski methanol and acetic acid.
Furthermore, the skilled artisan would still produce the Schinski Fischer-
Tropsch products because Schinski discloses splitting and gas diversion, or
recycling, systems.
"[T]he test of obviousness is not express suggestion of the claimed
invention in any or all of the references but rather what the references taken
collectively would suggest to those of ordinary skill in the art presumed to
be familiar with them." In re Rosselet, 34 7 F .2d 84 7, 851 ( CCP A 1965)
( emphasis in original). "The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR, 550 U.S. at 416. "[W]hen the question is whether
a patent claiming the combination of elements of prior art is obvious," the
answer depends on "whether the improvement is more than the predictable
use of prior art elements according to their established functions," and,
further, "if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." Id. at 417. "[I]n many cases a person
of ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle." Id. at 420.
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Application 13/882,688
Because the desire to enhance commercial opportumtles by
improving a product or process is universal-and even common-
sensical- . . . there exists in these situations a motivation to
combine prior art references even absent any hint of suggestion
in the references themselves. In such situations, the proper
question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art
references.
Dystar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
Here, there would have been a universal desire to enhance the
commercial opportunities presented by the Schinski systems and methods by
producing more/additional commercially desirable products. Further, adding
Simpson's fermentation to such a system to produce ethanol would have
been merely combining familiar elements ( and using existing and present
gas substrates) using known methods, and would have been a predictable use
of prior art elements according to their established functions. As shown in
Schinski, the artisan routinely diverted and recycled gases to achieve
efficiency and to make more than one product at the same time. See
Schinski, Fig. 1 splitting syngas into two streams to make products in the
Fischer-Tropsch reactor and the Methanol reactor.
Appellant argues repeatedly that, according to Simpson, acetate is "an
unwanted by-product which must be disposed of or converted to some other
product." Appeal Br. 6, 8 ("Simpson is teaching away" for this reason), 9;
see also Reply Br. 3. This is not persuasive. Even if acetate can ultimately
be used to produce more ethanol, this does not mean acetate (acetic acid) is
not a desired product or desired by-product of Simpson's methods. See, e.g.,
FF12. Rather, the acetate is further employed by Simpson in a fermentation
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Appeal2017-011522
Application 13/882,688
process. FF13. The record on appeal does not support Appellant's
contention.
Appellant also argues that the claim limitation, "anaerobically
fermenting at least a portion of the substrate comprising CO and H2 to
produce at least one product selected from the group consisting of alcohols
and acids," is a Markush group and, therefore, requires that only the recited
alcohols and acids be products produced by this step. Appeal Br. 6-8; see
also Reply Br. 2. This argument is not persuasive. As discussed by the
Examiner, this limitation recites "produce at least one product." This
language leaves open the possibility that more things could be produced.
This interpretation is supported by Appellant's Specification, which
describes that, when either ethanol (C2H50H) or acetic acid (CH3COOH) is
produced in the claimed fermentation process, water (H20) is also
necessarily produced ( e.g., 5% water when producing ethanol), as are
microbial cells. Spec. 15, 19--20, 26. Furthermore, even were this limitation
interpreted, as Appellant argues, to require only alcohol and/or acid to be
produced ( as products), such a restriction is limited to the claimed
fermentation step (methanol is also a product of the claimed method) and
Simpson discloses such a fermentation step. FF8. Whether Schinski's
Fischer-Tropsch process produces other products, as argued by Appellant, is
not determinative.
Regarding claim 23, Appellant argues the claims require using an exit
stream from the also-claimed methanol synthesis vessel, rather than syngas.
Appeal Br. 9; see also Reply Br. 3. Whether given the name "syngas" or
called exit gas or tail gas, the gas mixture claimed and disclosed by Simpson
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Application 13/882,688
to be used for a fermentation substrate includes CO and H2. Simpson
discloses that such a gas substrate can come from a variety of sources,
including petroleum refining processes and methanol production, like that
disclosed by Schinski. FF14. Schinski discloses that gasses (CO, CO2, and
H2) not consumed in its methanol production can be used in subsequent
production processes. Schinski 6:7-16; FF7. The very gasses that exit
Schinski's methanol reactor are those disclosed by Simpson to be a
fermentation substrate, thus, it would have been obvious to use them for
such a purpose for the reasons discussed above.
Appellant states, "[ r ]egarding claims 29-31, the exit stream from the
carbonylation reactor is passed to the fermentation reactor which produces
alcohols and acids and not hydrocarbons and waxes." Appeal Br. 9. This
statement is not persuasive for the same reasons Appellant's argument over
claim 23 was not persuasive.
Regarding claims 25 and 26, Appellant argues that his
process takes the hydrogen rich stream from the fermentation
reactor to a second bioreactor where the hydrogen and CO2 is
converted to acetate. In contrast to this, Schinski takes the tail
gas from the Fischer-Tropsch zone to the catalytic oxidation
reactor. Merely saying that Schinski teaches recycling various
exit stream is not sufficient to render obvious Applicants'
specific recycling steps. There must be some suggestion in the
art to do the specific recycling step.
Appeal Br. 9; see also Reply Br. 3. This argument is not persuasive.
Schinski does not merely teach recycling gas, generally; it discloses
recycling the same or substantially similar gas mixture Simpson discloses
using as a substrate for fermentation. Schinski discloses producing
acetate/acetic acid from its methanol production and subsequent
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carbonylation, and then recycling the by-product CO and H2, which Simpson
discloses to be an intermediate product in its fermentation process. FF7,
FF8. As discussed above, Simpson suggests using gases from other
industrial production processes for its own fermentation substrate. FF14.
Therefore, using the exit stream from Schinski's methanol production vessel
in a carbonylation vessel would have been obvious, as in Appellant's claim
29, as would Appellant's claim 30's use of an exit gas of such a
carbonylation vessel for a fermentation substrate in a bioreactor, as
suggested by Simpson.
Regarding the obviousness rejection over Schinski, Simpson, and
Burke, Appellant merely incorporates the same arguments addressed above.
Appeal Br. 10. We are, therefore, unpersuaded for the same reasons.
SUMMARY
The obviousness rejections are each 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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