Ex Parte Stewart et al

Patent Trial and Appeal BoardSep 28, 2012

11784719 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/784,719 04/09/2007 David Stewart 0106.07 7691 25295 7590 09/28/2012 USDA, ARS, OTT 5601 SUNNYSIDE AVE RM 4-1159 BELTSVILLE, MD 20705-5131 EXAMINER BOWERS, NATHAN ANDREW ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 09/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID STEWART, WILBUR WIDMER, KAREL GROHMANN, and MARK WILKINS ____________ Appeal 2011-008018 Application 11/784,719 Technology Center 1700 ____________ Before FRED E. McKELVEY, ROMULO H. DELMENDO, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL The named inventors (collectively hereinafter “Appellant”) appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1, 3, 5, 7-12, 15-15, and 17-32, which are directed to a method for producing ethanol from solid citrus waste. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-008018 Application 11/784,719 2 STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: . 1. A method of producing ethanol from solid citrus waste, said method comprising (i) optionally reducing the particle size of said solid citrus waste prior to heating, (ii) heating said solid citrus waste by direct steam injection at a temperature of about 80o to about 240oC to form heated citrus waste and a vapor containing water and peel oil components, (iii) separating said heated citrus waste and said vapor containing water and peel oil components to produce separated heated citrus waste and separated vapor containing water and peel oil components by releasing said heated citrus waste and said vapor containing water and peel oil components into a flash tank or flash tube at a pressure lower than (ii), (iv) cooling said separated heated citrus waste to form cooled solid citrus waster, (v) simultaneously or sequentially hydrolyzing and fermenting said cooled solid citrus waste to produce ethanol and residue wherein said hydrolyzing involves adding hydrolytic enzymes to said cooled solid citrus waste, and (vi) separating said alcohol from said residue; wherein water is added in said method only in the form of steam during said heating. The Examiner relies upon the following evidence of unpatentability: King US 4,503,079 Mar. 5, 1985 Neves US 4,564,595 Jan. 14, 1986 Brink US 5,628,830 May 13, 1997 Talluri US 2005/0054064 A1 Mar. 10, 2005 THE REJECTIONS Claims 1, 3, 5, 9, 10, 14, 15, 17-22, and 24-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Talluri in view of King. Claims 7 and 8 stand rejected under § 103(a) as unpatentable over Talluri in view of Appeal 2011-008018 Application 11/784,719 3 King and Neves. Claims 12 and 13 stand rejected under § 103(a) as unpatentable over Talluri in view of King and Brink. ISSUE Does the Examiner err in determining that the applied art suggests the claimed method of producing ethanol from “solid citrus waste”? We answer this question in the affirmative and REVERSE. ANALYSIS This appeal turns on the proper construction of the claim term “solid citrus waste.” We give claims the broadest interpretation that is reasonable in light of the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); accord In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“it would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant’s written description”). The Specification explains why dilution of “solid citrus waste” with water is undesirable in ethanol production. Spec. ¶ [0006] (“energy consumption for recovery of ethanol by distillation rapidly increases with decreasing ethanol concentration,” therefore, “[d]ilution of solid citrus waste with large amounts of water” is not practical). The Specification defines “solid citrus waste” as “wet citrus waste containing primarily peel, membranes, and seeds, which result from the processing of citrus fruit for juice.” Spec. ¶ [0030]. The Specification further defines “solid citrus waste” as a material wherein “there is no continuous liquid phase between waste particles and liquid is soaked into the particles.” Id. Furthermore, the Appeal 2011-008018 Application 11/784,719 4 Specification makes clear that the “solid citrus waste” of the invention “is not a slurry, liquid mixture, or suspension.” Id. The term “solid citrus waste” cannot reasonably be construed in light of the Specification to include fruit pulp that is surrounded by an aqueous liquid such as sweet sorghum juice (Talluri) or a citrus molasses slurry that contains a moisture content of 90% (King). The Examiner’s reasoning on this point, discussed below, conflicts with the Specification. The Examiner finds that Talluri discloses a method of producing ethanol “through the addition of solid fruit pulp to an existing organic waste stream (i.e. sweet sorghum juice).” Ans. 5 (citing Talluri ¶¶ [0029]-[0045]); Ans. 10 (“it is agreed that the fruit pulp is added to a sweet sorghum juice”). The Examiner recognizes that Talluri does not specifically disclose a citrus fruit pulp, and thus turns to King, which discloses “citrus molasses slurry comprising 10% solids.” Ans. 5 (citing King 8:31-39, which further explains that citrus molasses contains “a moisture and volatiles content of 90%”). The Examiner explains that “King is merely relied on as evidence that one of ordinary skill would not only have desired to generate ethanol from mango, banana, pineapple, cantaloupe, etc. solid pulps, but also from citrus wastes.” Ans. 12-13 (citing King 1:6-34). The Examiner thus finds that the combined disclosures of Talluri and King suggest the claimed method of producing ethanol from “solid citrus waste.” Ans. 5-6. However, King has not been shown to disclose or suggest the fermentation of solid citrus waste materials, as that term is defined in the Specification. Rather, as pointed out by Appellant at page 5 of the Appeal Brief, King teaches processing citrus molasses, namely, the expelled juices from citrus waste residue. King 1:16-19. Appeal 2011-008018 Application 11/784,719 5 In response to Appellant’s argument that neither of these references discloses a “solid citrus waste” within the meaning of claim 1, App. Br. 5, the Examiner finds that the “claims only require that solid wastes are processed to generate ethanol, and in no way preclude the processing of solid pulp materials in a liquid juice, which is what is taught by Talluri.” Ans. 10. Regarding Talluri, the Examiner further states that “[t]he fact that the solid pulp is added to a juice does not mean that the solid pulp has somehow become liquefied.” Ans. 12. Adds the Examiner: “Surely Appellant understands that it is possible to process solid fruit pulp to generate ethanol when the solid fruit pulp is surrounded by a liquid.” Id. The Examiner’s reasoning does not properly take into account the meaning given to the disputed claim term in the written description and is, in fact, at odds with the Specification. See, e.g., Spec. 30 (“solid citrus waste” is a material wherein “there is no continuous liquid phase between waste particles” and such material “is not a slurry, liquid mixture, or suspension”); see Reply Br. 4-9 (and citations to Specification therein). In view of the above, we reverse the rejection of claims 1, 3, 5, 7-12, 15-15, and 17-32. CONCLUSION The rejection of claims 1, 3, 5, 7-12, 15-15, and 17-32 is reversed. REVERSED cam