G. Whiteman

Patent Trials and Appeals Board

Jun 29, 2021

2020005943 (P.T.A.B. Jun. 29, 2021)

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.
12/640,861 12/17/2009 G. Robert Whiteman 19864.00025 (ABS-7) 9526
112619 7590 06/29/2021
Belvis Law
P.O. Box 11317
Chicago, IL 60611
EXAMINER
XU, QING
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
06/29/2021 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):
docket@belvislaw.com
gbelvis@belvislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte G. ROBERT WHITEMAN
____________

Appeal 2020-005943
Application 12/640,861
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from Examiner’s
decision to reject claims 105–108 and 110. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Dr. G.
Robert Whiteman and Advanced Biological Services, Inc.” (Appellant’s
March 19, 2020, Appeal Brief (Appeal Br.) 2).
2 This Appeal is related to Appeal 2010-001533 (Application 10/395,424,
now US 7,879,593), Appeal 2019-006725 (Application 12/640,913, now US
10,995,024), and Appeal 2020-000188 (Application 12/044,293, now
abandoned).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to apparatus, methods, and
applications for treating wastewater, and more particularly to biological
processes for removing pollutants from wastewater” (Spec.,3 Abstr.).
Appellant’s disclosure “further relates to apparatus and methods for growing
microbes on-site at a wastewater treatment facility, and for economically
inoculating sufficient microbes to solve various treatment problems rapidly”
(id.). Claim 105 is reproduced below:
105. A method of reducing a time to bring an effluent stream
having pollutants from a wastewater treatment plant into
compliance by reducing the pollutants in the effluent stream,
within 1 to 3 days, to an amount within a permit requirement,
the method comprising:
a) determining a first BOD[4] amount in an effluent stream from
a wastewater treatment plant, wherein the effluent stream has a
pollutant, whereby the first BOD amount is in excess of a
permit requirement for the wastewater treatment plant and
wherein the effluent stream has a flow comprising 14 million
gallons per day and the first BOD amount is 7,000 - 15,000
lbs./day BOD;
b) providing an on-site system for growing of microbes at the
wastewater treatment plant;
c) depositing inoculum, nutrient, and water into the on-site
system, wherein the inoculum comprises microbes selected to
degrade the pollutant; wherein the microbes in the inoculum are
not isolated or freeze dried;
d) growing the inoculum in the on-site system to provide a
treatment batch comprising an increased number of the
microbes, the growing comprising heating and mixing the

3 Appellant’s December 17, 2009, Specification.
4 Appellant defines the acronym “BOD” as “biochemical oxygen demand”
(Spec. ¶ 60).
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inoculum in the on-site system; whereby the treatment batch
has a concentration of microbes that is at least 100 times larger
than the concentration of microbes in the inoculum; and,
directly applying at least a portion of the treatment batch to a
waste water in the wastewater treatment plant; thereby
degrading the pollutant; whereby, within 1 to 3 days the first
BOD amount in the effluent stream is reduced to a second BOD
amount, wherein the second BOD amount is within the permit
requirement.
(Claims App.5 2.)

Grounds of rejection before this Panel for review:
Claims 105–108 and 110 stand rejected under 35 U.S.C. § 112,
second paragraph.
Claims 105–108 and 110 stand rejected under the written description
provision of 35 U.S.C. § 112, first paragraph.
Claims 105–108 and 110 stand rejected under the enablement
provision of 35 U.S.C. § 112, first paragraph.
Claims 105 and 110 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–19 of Whiteman ’956.6
Claims 105–108 and 110 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–19 of Whiteman ’956 in view of Mehta.7

5 Appellant’s “APPENDIX OF CLAIMS” filed with Appellant’s March 29,
2020, “Response to Notice of Non-Compliant Appeal Brief.”
6 Whiteman, US 10,322,956 B2, issued June 18, 2019.
7 Mehta, US 5,877,113, issued Mar. 2, 1999.
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Claims 105–108 and 110 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–8 of Whiteman ’0248 in view of Dale.9,10

DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claim 105 is indefinite?
ANALYSIS
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003). Appellant’s claim 105, reproduced above, is drawn
to a method of reducing a time to bring an effluent stream having pollutants
from a wastewater treatment plant into compliance by reducing the
pollutants in the effluent stream, within 1 to 3 days, to an amount within a
permit requirement. Examiner finds that Appellant’s claim 105, when read
in light of Appellant’s Specification, fails to provide a standard against
which a person of ordinary skill in this art would compare the claimed
method to determine whether the time required to bring an effluent stream
into compliance with a permit requirement is reduced (see Ans. 3 (Examiner

8 Whiteman, US 10,995,024 B2, issued May 4, 2021.
9 Dale et al., US 5,879,928, Mar. 9, 1999.
10 Whiteman ’024 issued May 4, 2021, therefore, this rejection is no longer
provisional (cf. Examiner’s June 12, 2020 Answer (Ans.) 18–22).
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finds “no point of comparison for the comparative term ‘reducing a time’”)).
We agree.
Because the foregoing discussion is not based on a hypothetical, we
are not persuaded by Appellant’s contentions regarding hypothetical
interpretations of its claim 105 (see Appeal Br. 22–23; see also Reply Br. 7).
Appellant contends that the phrase at issue is in the preamble of its
claim 105 (see Appeal Br. 21–22; see also Reply Br. 6–7) and, thus, does
not render the claim indefinite. However, the mere fact that a term is in the
preamble is not a sufficient basis for concluding that the term is not a
limitation of the claim. See Storage Tech. Corp. v. Cisco. Sys., Inc., 329
F.3d 823, 831 (Fed. Cir. 2003) (“Whether to treat a preamble as a claim
limitation is determined on the facts of each case in light of the claim as a
whole and the invention described in the patent.”).
On this record, Appellant discloses:
In another aspect of the present invention, there is
provided a method of reducing the time required for coming
into compliance with an environmental discharge regulation
comprising fermenting an inoculum comprising microbes to
provide a treatment batch; and administering at least a portion
of the treatment batch to a wastewater treatment system.
(Spec. ¶ 23 (emphasis added)). In addition, Appellant relies on the
foregoing indefinite language as a limitation in order to distinguish its claim
105 from the claims of both Whiteman ’024 and Whiteman ’956 (see Appeal
Br. 32–33 (Appellant contends that “[t]he claims of . . . [Whiteman ’024 and

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Whiteman ’956] do not relate to . . . reducing the time to come into
compliance”) (emphasis added)).11
Thus, we find that Examiner issued a well-grounded rejection that
identifies the way in which the language of Appellant’s claim 105 is unclear,
and Appellant failed to provide a satisfactory response to Examiner’s
rejection. Therefore, we sustain the indefiniteness rejection of claim 105.
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112[, second paragraph].
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
Appellant’s claim 105 is indefinite. The rejection of claims 105 under 35
U.S.C. § 112, second paragraph is affirmed. Claims 106–108 and 110 are
not separately argued and fall with claim 105.

11 We acknowledge Appellant’s reproduction its claim 105 with bolding to
highlight claim elements that Appellant contends “are not disclosed or
suggested by the claims of [Whiteman ’956]” (see Appeal Br. 34–36).
Appellant later contends, however, that the “highlight[ing of] the preamble
on page 35 of the Appeal Brief” was a “formatting error” and that “[i]t is
clear that given the body of the claim, and in particular, the highlighted
section of the body of the claim . . ., that the preamble is duplicative, and not
necessary, to avoid the double patenting rejection” (Reply Br. 8).
Appellant’s contention, however, fails to account for the statement made on
pages 32–33 of Appellant’s Brief, wherein Appellant explicitly relies on the
limitation at issue, regarding reducing the time to come into compliance, in
distinguishing claim 105 from Whiteman ’024 and Whiteman ’956.
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Claim Interpretation:
In view of the foregoing rejection under 35 U.S.C. § 112, second
paragraph, we apply Examiner’s interpretation of the preamble of
Appellant’s claim 105 to address the remaining rejections on this record.
For clarity, Examiner states that “the preamble is interpreted as: ‘A method
of bringing an effluent stream having pollutants from a wastewater treatment
plant into compliance with an environmental discharge regulation by
reducing the pollutants in the effluent stream, within 1 to 3 days, to an
amount within a permit requirement’” (Ans. 4).

Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Appellant’s Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). A “sufficient description of a genus . . . requires
the disclosure of either a representative number of species falling within the
scope of the genus or structural features common to the members of the
genus so that one of skill in the art can ‘visualize or recognize’ the members
of the genus.” Ariad, 598 F.3d at 1350. “[A]n adequate written description
requires a precise definition, such as by structure, formula, chemical name,
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physical properties, or other properties, of species falling within the genus
sufficient to distinguish the genus from other materials.” Id. Although
“functional claim language can meet the written description requirement
when the art has established a correlation between structure and function,”
“merely drawing a fence around the outer limits of a purported genus is not
an adequate substitute for describing a variety of materials constituting the
genus and showing that one has invented a genus and not just a species.” Id.
In addition, although Appellant’s claim 105 is directed to a method
rather than a product, we note that the same standard applies with regard to
the written description requirement. As the Rochester Court made clear:
Regardless whether a compound is claimed per se or a method
is claimed that entails the use of the compound, the inventor
cannot lay claim to that subject matter unless he can provide a
description of the compound sufficient to distinguish infringing
compounds from non-infringing compounds, or infringing
methods from non-infringing methods.
University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 926 (Fed. Cir.
2004).
For the following reasons, we find that Appellant’s Specification fails
to provide written descriptive support commensurate with the scope of
Appellant’s claimed invention.
The method of Appellant’s claim 105, reproduced above, requires,
inter alia, the application of microbes to waste water in a wastewater
treatment plant to degrade a pollutant, such that within 1 to 3 days a first
BOD amount in an effluent stream is reduced to a second BOD amount that
is within a permit requirement. Examiner finds that Appellant’s
Specification:
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[D]oes not provide[] any guidance for treating the wastewater
by using any amounts of any microbes for complying with
environmental discharge regulations, thereby within 1-3 days,
reducing any pollutants at any high amount to an amount within
a permit requirement and bringing the BOD of discharged
wastewater in compliance with a permit requirement, as the
claims required.
(Ans. 5 (emphasis added).) Examiner acknowledges that Appellant’s
Specification discloses that “[t]he types of microbe or microbes present in
the inoculum depend on the type of wastewater to be treated” (Spec. ¶ 44;
see also id. ¶ 53 (“The type of microbe or microbes, which will be most
effective for a particular application will depend upon the application, the
wastewater characteristics, and the characteristics that are required to solve
the particular problem.”)), but finds that Appellant’s disclosure fails to
identify the “criteria . . . for identifying and selecting microorganisms
necessary to reduce within a period of 1 to 3 days pollutants or BOD from
amounts in excess of a permit requirements to amounts within the permit
requirement” (Ans. 6; see id. (Examiner finds that “[p]aragraph 44 [of
Appellant’s Specification] generally asserts that the appropriate microbes
‘depend on the type of wastewater to be treated,’ but the nature of this
‘dependence’ is not pointed out.”); see also id. (citing Spec. ¶ 54: Table 1)
(Examiner finds that although Appellant’s Specification “generally lists
some example microbes known in the prior art, . . . there is no [disclosure]
that these microbes could work in the claimed method, for bringing the
effluent stream into [compliance] with a permit requirement”)).
Examiner further finds that “the Case Studies submitted by applicant
on 2/26/07 in parent application 10/395424 and listed on the 12/17/09 IDS in
the instant application . . . detail four instances in which some embodiment
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of applicant’s invention was presumably carried out on various wastewater
sites,” but “are wholly silent as to which bacterial species were applied to
the wastewater, and how any microbes introduced into wastewater could
compete with native microbes and . . ., thus be[] active at degrading
pollutants” (Ans. 7). In addition, Examiner finds that these “Case Studies do
not include any relevant details of time reduction and bringing, within 1 to 3
days, an effluent stream into compliance with environmental regulations”
(id.; see also id. at 6 (Examiner finds that “[n]one of the examples in
[Appellant’s] [S]pecification provide guidance regarding how to use any
amount of microbes in bioaugmentation for treating wastewater, thus to
reach the goal within a period of 1 to 3 days as” set forth in Appellant’s
claim 105)).
In addition, Examiner finds that Appellant’s “[S]pecification includes
no specific protocols providing guidance for removing all possible
contaminants from wastewater” (Ans. 6).
There can be no doubt that Appellant’s claim 105 fails to identify a
specific microbe or pollutant. Thus, those of ordinary skill in this art would
reasonably interpret Appellant’s use of the term microbe or pollutant to
represent any microbe or pollutant from a genera of microbes and pollutants
(see, e.g., Ans. 24). Therefore, we are not persuaded by Appellant’s
contention that “[a]t no point does [Examiner’s] rejection specify the claim
elements, or claim terms that form the basis of the rejection,” but instead
“Examiner appears to be basing the rejection on the terms ‘any pollutant’ or
‘any kinds of microbes,’” which are “terms . . . not found in the claims”
(Appeal Br. 10).
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For the foregoing reasons, we are also not persuaded by Appellant’s
contention that
the essence of the invention is providing an on-site system to
grow a treatment batch from an inoculum, wherein the microbes
in the inoculum are not isolated or freeze dried, and then
directly applying that treatment batch to the waste water.
(claim 105, elements b, c, d). It is these steps that provides the
results of the claimed method. It is these steps, as well as the
claimed method as a whole, that have never been done or
suggested by others.
(Appeal Br. 11.)
We do not find, and Appellant does not identify, an evidentiary basis
on this record to support a finding that the full scope of: “pollutants in waste
water treatment plants [are] well known to those of skill in the art” and
“[t]he type of microbes that can be used to treat waste water are well known
to those of skill in the art” (id.). See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
Appellant also fails to identify an evidentiary basis on this record to
support a finding that the amount of microbe present in an inoculum was
known. Thus, Appellant’s contention that “[t]he claims specifically require
that ‘the treatment batch has a concentration of microbes that is at least 100
times larger than the concentration of microbes in the inoculum’” fails to
identify the amount of microbe necessary to achieve the result set forth in
Appellant’s claimed method (see Appeal Br. 13; see also id. at 14). Simply
stated, at least 100 times larger than an unknown amount is still an unknown
amount. As discussed above, Examiner finds that Appellant’s Specification:
[D]oes not provide[] any guidance for treating the wastewater
by using any amounts of any microbes for complying with
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environmental discharge regulations, thereby within 1-3 days,
reducing any pollutants at any high amount to an amount within
a permit requirement and bringing the BOD of discharged
wastewater in compliance with a permit requirement, as the
claims required.
(Ans. 5 (emphasis added).)
Appellant contends that its Specification “provides detailed
[disclosure] regarding the types of microbes that can be used to grow a
treatment batch,” according to Appellant’s claimed invention (Appeal Br.
15–16 (citing Spec. ¶¶ 53–59)). Appellant discloses that microbes within
the scope of its claimed invention include, but are not limited to those
microbes able to degrade pollutants on the list of Federal Priority pollutants
(see Spec. ¶ 53 (Appellant discloses that “[f]or example, microbes may be
selected based on their ability to degrade pollutants on the list of Federal
Priority pollutants, which is incorporated herein by reference”)).
In addition, Appellant’s claim 105, reproduced above, requires
microbes that are “not isolated or freeze dried” (see generally Appeal Br.
20–21; Ans. 36–37).
For the foregoing reasons, we find that although Appellant’s
Specification discloses various techniques for isolating and identifying
bacteria (see Spec. ¶¶ 57–59), these types of bacteria are excluded from
Appellant’s claimed invention. In addition, although Appellant’s
Specification discloses that a microbe may be available from commercial
sources (see Spec. ¶ 56), we find that Appellant’s claimed invention
excludes freeze-dried microbes, including commercially available freeze-
dried microbes.
Appellant discloses: “The type of microbe or microbes, which will be
most effective for a particular application will depend upon the application,
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the wastewater characteristics, and the characteristics that are required to
solve the particular problem” (Spec. ¶ 53). Appellant also discloses
“examples of microbes with particular biodegradation characteristics” (Spec.
54; see also id. ¶¶ 55–56). Appellant fails, however, to identify an
evidentiary basis on this record to support a finding that microbes capable of
degrading the full scope of pollutants encompassed by Appellant’s claimed
invention within the time period required by Appellant’s claims, were
known to those of ordinary skill in this art at the time of Appellant’s claimed
invention. For the foregoing reasons, we are not persuaded by Appellant’s
contentions that “the long establish[ed] rule that the [S]pecification ‘need
not teach and preferably omits, what is well known in the art’,” applies to
the invention claimed on this record (Appeal Br. 10). As the Capon court
explained:
Precedent illustrates that the determination of what is needed to
support generic claims to biological subject matter depends on a
variety of factors, such as the existing knowledge in the
particular field, the extent and content of the prior art, the
maturity of the science or technology, the predictability of the
aspect at issue, and other considerations appropriate to the
subject matter.
Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005).
Appellant contends that its “Specification provides teachings about
testing, evaluating and selecting a suitable, and the best, microbe for any
particular wastewater application” (Appeal Br. 13; see also id. at 13–18; id.
at 16 (citing Spec. ¶¶ 60–62) (Appellant contends that its Specification
discloses “techniques used to determine most effective microbe for a
particular wastewater treatment”)). Stated differently, Appellant contends
that a person of ordinary skill in this art would have found it prima facie
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obvious to identify the appropriate microbe for a particular need through
trial and error testing (see Ans. 6 (Examiner find that Appellant’s
Specification “only implies that a person seeking to carry out the method on
a given wastewater site should conduct trial-and-error with microbes and
combinations of microbes at various amounts until an operative embodiment
is found.”)). We are not persuaded. Although “the description requirement
does not demand any particular form of disclosure, . . . or that the
specification recite the claimed invention in haec verba, a description that
merely renders the invention obvious does not satisfy the requirement.”
Ariad, 598 F.3d at 1352.
In sum, we are not persuaded by Appellant’s contention that its
disclosure provides written descriptive support for the full scope of its
claimed invention (see Ans. 6 (Examiner finds that Appellant’s Specification
“does not permit the skilled artisan to visualize all of the members of the
genus of microbes being administered in the claimed methods.”)).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that the type of pollutants and microbes “do not relate to the
essences of the present invention[]” (Appeal Br. 11).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that its “claims are directed to a method, and do not claim any . . .
new pollutant or a new microbe” (Appeal Br. 12). As discussed above,
although Appellant’s claim 105 is directed to a method rather than a product,
we note that the same standard applies with regard to the written description
requirement. See University of Rochester v. G.D. Searle & Co., 358 F.3d at
926.

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CONCLUSION
The preponderance of evidence on this record supports Examiner’s
finding that Appellant’s Specification fails to provide written descriptive
support for the claimed invention. The rejection of claim 105 under the
written description provision of 35 U.S.C. § 112, first paragraph, is affirmed.
Claims 106–108 and 110 are not separately argued and fall with claim 105.

Enablement:
ISSUE
Does the evidence of record support Examiner’s conclusion that
undue experimentation would be required to practice the claimed invention?
ANALYSIS
Factors to be considered in determining whether a disclosure
would require undue experimentation . . . include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The analytical framework
for determining whether claims fail to satisfy the enablement requirement
balances the Wands factors to determine if undue experimentation would
have been required to perform the reasonable scope of the claimed method at
the time of filing of the Specification.

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Nature and Breadth of Appellant’s Claims:
As Examiner explains, the method of Appellant’s claim 105 requires:
[R]educing within a period of 1 to 3 days pollutants and BOD
from amounts in excess of a permit requirement to amounts
within the permit requirement. The “permit requirement”
recited in the claim is an undefined variable and it can be any
permit requirement including those in the past, at present, and
in the future. The “pollutants” in the wastewater can be any
kinds of pollutants at any high amounts, including those not
biologically degradable. The claimed method comprises a step
of applying any amounts of microbes from the treatment batch
to a wastewater in the wastewater treatment plant, thereby
reducing amounts of BOD/pollutants (7000 - 15000 lbs /day) in
excess of a permit requirement to amounts within the permit
requirement. The “microbes” . . . can be any microbes [that are
not isolated or freeze-dried].
(Ans. 8.)

Direction, Guidance, Working Examples:
Examiner finds that the eleven examples disclosed in Appellant’s
Specification fail to provide “any information, data, results, or evidence to
demonstrate that pollutants and BOD that are in excess of a permit
requirement could be brought into compliance with the permit requirement
within a period of 1 to 3 days, as required by [Appellant’s] claim [105]”
(Ans. 9 (citing Spec. 24–45)).
Examiner further finds that Appellant’s Specification fails “to provide
any data, results, or evidence” to establish that microbes introduced into
wastewater according to Appellant’s claim 105 are capable of competing
“with native microbes” already present in the wastewater (Ans. 9). Thus,
Examiner finds that Appellant’s Specification failed to establish that native
microbes present in wastewater would not outcompete microbes introduced
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into wastewater according to Appellant’s claim 105 and, thus, prevent the
introduced microbes from “bringing the pollutants and BOD of discharged
wastewater [into] . . . compliance [with permit requirements] within 1-3
days” (Ans. 10).
Appellant’s Specification discloses:
A typical example of a selective nutrient supplement for
Pseudomonas putida would be phenol, which assists in
selecting and favoring the growth of the Pseudomonas which
has phenol degradation capability. Thus Pseudomonas putida
could outgrow any background contamination and reversion is
minimized. Reversion being where the plasmid coding for
phenol degradation is lost by the microbe due to a competitive
disadvantage by retaining unnecessary genetic material. A
typical example of a selective inhibitor for Pseudomonas is
Pseudomonas Isolation Broth (PIB), which contains the
chemical called cetrimide that selectively inhibits the growth of
other microbes, and, therefore, favors the growth of
Pseudomonas, hence the term selective inhibitor.
(Spec. ¶ 68.) Examiner acknowledges Appellant’s disclosure that the
Pseudomonas putida could outgrow any background contamination if
phenol is added to wastewater, but finds this disclosure speculative and
unsupported by evidence on this record (see Ans. 10 (citing Spec. ¶ 68)
(Examiner finds that “the assumed ‘could outgrow’ is not supported by any
factual evidence” and Appellant’s Specification “failed to provide any data
to support such an approach could work in the claimed method to bring the
effluent stream into complying with a permit requirement”)).
In addition, Examiner finds that
phenol is a toxic pollutant and cetrimide is ammonium
pollutants, which need to be removed from wastewater. Given
the claims require that the effluent stream has a flow of 14
million gallons per day, addition of significant amounts of
phenol and cetrimide would be needed, which consequently
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conflicts with the intended purpose of the claimed method for
reducing the pollutants in the effluent stream.
(Ans. 10.)

Skill in, and predictability of, the art:
Examiner finds that the state of this art, at the time of Appellant’s
claimed invention, was unpredictable (Ans. 10). Examiner finds that King
“suggests that skilled artisans did not generally expect success in carrying
out bioremediation around the time of the invention” (id. (citing King12 4
(King discloses “‘[e]ven if there is only an even (50-50) chance of success
when using bioremediation, it is usually worth a try. A bioremediation
approach may not be right for every site, but when it's right, it’s
wonderful.’”)). Thus, Examiner finds that “King’s statement clearly
indicates that at the time of the invention, predicting the success of
bioremediation was, at best, a coin toss” (Ans. 10–11). In addition,
Examiner finds:
King goes on to cast further doubt on the success of
bioaugmentation (i.e., addition of non-native microorganisms to
a waste site) in particular, teaching that while biodegradation
may be achieved in the controlled conditions of a laboratory,
“very often there is no realistic correlation between lab findings
and the multitude of parameters that dictate the efficiency and
rates of degradation that may be expected in a field
bioremediation project.” . . . King teaches that added non-
native microorganisms are typically overwhelmed and
eliminated by the needs of the native microbes, which have
adapted to the pollutants in the wastewater and gained a
“competitive edge over introduced species that found the
environment strange” and that “[a]fter addition, these

12 King et al., Practical Environmental Bioremediation, The Field Guide, 4,
7–9 (CRC Press LLC) (1998).
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introduced microbes often rapidly decrease in number and can
become undetectable within a few days”.
(Ans. 11 (citing King 8).) Thus, Examiner finds:
King’s teachings clearly imply that at the time of the invention,
skilled artisans would have viewed applicant’s claimed method
as having limited chance of succeeding in any given
bioremediation project in the field and that the time to comply
with government regulations would increase, not decrease,
under bioaugmentation because the non-native bacteria are
usually quickly removed from the wastewater.
(Ans. 11.)

State of the Prior Art:
Examiner finds that “[w]ater can be contaminated in diverse and
numerous ways, as evidenced by . . . [Drinking Water Contaminants13],
which shows that the Environmental Protection Agency (EPA) recognized
dozens of water contaminants” (Ans. 11). Examiner also finds that “[i]n
addition to the federal regulations set forth by the EPA, states have their own
regulations, and these are constantly changing, as evidenced by . . .
[Radiation14], which describes New York State’s regulations for radioactive
contaminants in discharged wastewater and indicates that these regulations
are currently being updated” (Ans. 11–12; see also id. at 12 (citing
Toshikuni,15 Abstr.) (Examiner finds that Toshikuni discloses “that
wastewater may be contaminated by radioactive isotopes, which can

13 EPA Ground Water & Drinking Water, available at
http://www.epa.gov/ogwdwOOO/hfacts.html, last accessed Feb. 10, 2010.
14 Radiation – NYS Dept. of Environmental Conservation, available at
http://www.dec.ny.gov/chemical/296.htrnl, last accessed Oct. 4, 2010.
15 Toshikuni et al., US 4,693,833, issued Sept. 15, 1987.
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sometimes be removed chemically using complexing agents and the like”)).
Examiner finds “[n]o prior art [that] reveals any protocols for using
microbes to reduce radioactive contaminants from wastewater” (Ans. 12).
Examiner finds that the art, both contemporaneous with, and years
after, Appellant’s claimed invention, established that “numerous organic
chemical contaminants cannot be removed by any known microbes” (id.
(citing Hiraishi,16 Abstract (Examiner finds that Hiraishi discloses “that
years after the instant filing, skilled artisans considered the field of dioxin
bioremediation to be nascent”); Goodell17 ¶ 14 (Examiner finds that Goodell
discloses “that some resistant dyes in textile and paper finishing plant
wastewater cannot be removed by bacteria”); Dale18 1:44–60 (Examiner
finds that Dale discloses that in those “situation[s] where microbes are
capable of degrading [pollutants], each of the[] microbes is directed at only a
specific pollutant, they do not address variety of pollutants”)).
Examiner further finds that “the EPA considers some living organisms
to be water contaminants, including Cryptosporidium parvum, a parasite;
neither the prior art nor the contemporaneous art includes any teachings of
microbes that can remove Cryptosporidium from wastewater” (Ans. 12.)

16 Hiraishi et al., Toward the bioremediation of dioxin-polluted soil:
structural and functional analyses of in situ microbial populations by
quinone profiling and culture-dependent methods, 57 Appl. Microbiol.
Biotechnol. 248–56 (2001). Abstract only.
17 Goodell et al., US 2003/0186036 A1, published Oct. 2, 2003.
18 Dale et al., US 5,879,928, issued Mar. 9, 1999.
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Quantity of Experimentation Necessary:
Examiner finds:
It is not routine in the art to apply any amounts of
microbes for reducing within a period of 1 to 3 days any
pollutants and BOD in excess of a permit requirement to
amounts within the requirement. Neither the prior art no[r] the
disclosure of [Appellant’s] [S]pecification show that the
claimed method can be performed to reaching the goal, as
defined in the claims. Therefore, in absence of some guidance
as to how to use the claimed method for bringing an effluent
stream into compl[iance] with an environmental discharge
regulation, [in 1 to 3 days] one of skill in the art would have to
carry out a large amount of experimentation to find which
additional steps or additional compounds need to be included in
the method of [Appellant’s] [c]laim[] 105.
(Ans. 13.)
For the foregoing reasons, we find that Examiner set forth a
reasonable basis for finding that the scope of the appealed claims is not
enabled by Appellant’s Specification. Thus, the burden was properly shifted
to Appellant to present persuasive evidence or arguments to support the
enablement of Appellant’s claimed invention. See In re Wright, 999 F.2d
1557, 1562 (Fed. Cir. 1993).
For the foregoing reasons, we are not persuaded by Appellant’s
contentions that Examiner’s enablement rejection appears to be nothing
more than a re-argument of the prior written [description] rejection[]”
(Appeal Br. 23). In addition, for the reasons set forth above, we are not
persuaded by Appellant’s “incorporation and reassert[ion]” of its contentions
made with respect to the written description rejection (id.).
Even if Appellant enabled one microbe capable of reducing one
pollutant in an effluent stream to an amount within a permit requirement
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within 1 to 3 days, as required by Appellant’s claimed invention, the
enablement requirement of 35 U.S.C. § 112, first paragraph requires
Appellant’s disclosure to enable “those skilled in the art to make and use the
full scope of the claimed invention without ‘undue experimentation.’”
Genentech, Inc. v. Novo Nordisk. A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)
(quoting In re Wright, 999 F.2d at 1561). As discussed above, Examiner
established that Appellant failed to provide an enabling disclosure of the full
scope of its claimed invention. Thus, we are not persuaded by Appellant’s
intimation that it provided at least one method for making and using its
claimed invention that bears a reasonable correlation to the entire scope of
claim 105 (see Appeal Br. 27; see generally id. at 28).
Appellant discloses that “[t]he terms ‘environmental discharge
regulation’ and ‘discharge permit’ are used to describe such permits and
regulations including, but not limited to, NPDES Permits, other discharge
permit requirements, or other environmental regulations regarding limits on
effluent materials that can be introduced into the environment” (Spec. ¶ 34
(emphasis added)). In addition, Appellant acknowledges that “[s]uch
regulations vary from state to state, and from country to country” (id.). In
sum, although Appellant identifies various types of regulations, Appellant
does not limit the scope of its disclosure, or claims, to any particular
regulation, which may vary from state to state, and from country to country
(see id.). Thus, we are not persuaded by Appellant’s contention that
Examiner’s finding that “the ‘permit requirement’ is an undefined variable”
“ignores the claims as [a] whole and ignores the Specification” (Appeal Br.
29).
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Appellant’s claim 105 requires, inter alia, the addition of microbes to
wastewater that those of ordinary skill in the art would understand to
comprise native microbes. Those of ordinary skill in this art would
understand that these native microbes, present in wastewater, would compete
with non-native microbes added to the wastewater (see, e.g., King 8 (King
discloses that “native [microbial] populations . . . naturally have a
competitive edge over introduced [microbial] species that find the
environment strange and available food resources unwanted”)). Thus, we
are not persuaded by Appellant’s contention that its “claims do not require,
[that its microbes] ‘compete with native microbes’ or [possess] ‘a
competitive edge’” (Appeal Br. 30).
Appellant discloses that “[o]ne aspect of the present invention is the
sufficient, repeated inoculation of the functional microbes (whether an
exogenous or indigenous source) that allows a microbial population to be
established quickly and out-compete an undesirable indigenous population,
such as filamentous or Zoogloeal type microbes, which cause bulking”
(Spec. ¶ 37). Appellant’s Specification fails to disclose the quantity of
microbes necessary to out-compete an undesirable indigenous population
and, thereby, reduce a pollutant in an effluent stream to an amount within a
permit requirement within 1 to 3 days, as required by Appellant’s claimed
invention. Therefore, we are not persuaded by Appellant’s contention that
its claims are enabled because its “Specification specifically and repeatedly
teaches that the microbes that are introduced as a treatment batch out
compete the undesirable indigenous microbes in the waste water” (Appeal
Br. 31 (citing ¶ 37)).
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We recognize Appellant’s contention that Examiner’s discussion of
the addition of “phenol or the PIB broth containing [the] inhibitor cetrimide
to the wastewater . . . are not claim terms,” “are not required by the claims,”
and, thus, “cannot form the basis for an enablement rejection of the claims”
(Appeal Br. 31). We find, however, no requirement in Appellant’s claimed
invention that excludes this subject matter and thus, we find that Appellant’s
claimed invention encompasses this subject matter, as disclosed in
Appellant’s Specification (see generally Spec. ¶ 68).
For the reasons set forth above, we are not persuaded by Appellant’s
contention that the prior art relied upon by Examiner fails to support the
enablement rejection on this record (see Appeal Br. 31; see also Reply Br.
7–8).
In sum, we find that Appellant failed to provide persuasive argument
or evidence that rebuts Examiner’s prima facie case of non-enablement on
this record.
CONCLUSION
The evidence of record supports Examiner’s conclusion that undue
experimentation would be required to practice the claimed invention. The
rejection of claim 105 under the enablement provision of 35 U.S.C. § 112,
first paragraph, is affirmed. Claims 106–108 and 110 are not separately
argued and fall with claim 105.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
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ANALYSIS
In an obviousness-type double patenting rejection, Examiner must
establish, in an analysis comparable to that under 35 U.S.C. § 103, that one
of ordinary skill would have considered the rejected claims obvious over the
conflicting claims. See, e.g., In re Braat, 937 F.2d 589, 592–93 (Fed. Cir.
1991). Because the same analysis applies to all of the obviousness-type
double patenting rejections, on this record, we consider the rejections
together.
Claims 1–2 of Whiteman ’956 are reproduced below:
1. A method of treating wastewater in a wastewater treatment
plant using microbes, while minimizing the growth phase of the
microbes in the wastewater treatment plant, the method
comprising:
a. providing an on-site fermentation system at a wastewater
treatment plant for treating a wastewater, wherein the
wastewater contains pollutants, the wastewater treatment
plant having an influent stream and an effluent stream of
the wastewater; the fermentation system comprising: a
main tank comprising a mixing apparatus and a heater; a
transfer pump and line for transferring a treatment batch
for application to wastewater in the wastewater treatment
plant;
b. adding an inoculum, nutrients and water to the main tank;
wherein the inoculum contains a first concentration of
microbes;
c. growing the microbes in the main tank to provide a
treatment batch; whereby the treatment batch contains a
second concentration of microbes; wherein the first
concentration is at least 100 time smaller than the second
concentration;
d. applying an amount of the treatment batch to the
wastewater; whereby sufficient numbers of microbes are
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introduced into the wastewater to avoid the need for a
growth phase of a biomass in the wastewater;
e. whereby the treatment batch reduces the pollutants in the
wastewater, without the need for a growth phase of a
biomass in the wastewater; wherein the effluent stream
has lower pollutants than the influent stream and,
f. thereby avoiding a need for addition of supplemental
nutrients to the wastewater.
2. The method of claim 1, wherein the level of pollutants is
reduced to at or below the NPDES permit requirements for the
wastewater treatment plant.
(Whiteman ’956, 31:66–32:34.) Whiteman ’956 discloses that “NPDES
permits for wastewater are generally in units of maximum allowed pounds
per day (lbs./day) of BOD and a maximum monthly average” (id. at 17:49–
51; see generally Ans. 15).
Claim 1 of Whiteman ’024 is reproduced below:
1. A method of reducing an amount of treatment chemicals
required to maintain an effluent stream from a wastewater
treatment plant at a predetermined level of a pollutant within
permit requirements, the method comprising:
a) determining an amount of a treatment chemical used to
treat wastewater in a wastewater treatment plant to
remove a pollutant from the wastewater, whereby the
amount of the pollutant is reduced to a predetermined
level of the pollutant in an effluent stream leaving the
wastewater treatment plant;
b) providing an on-site system for growing of microbes at
the wastewater treatment plant;
c) depositing inoculum, nutrient, and water into the onsite
system, wherein the inoculum comprises microbes
selected to degrade the pollutant; wherein the microbes in
the inoculum are not isolated, concentrated or freeze
dried;
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d) growing the inoculum in the on-site system to provide a
treatment batch comprising an increased number of the
microbes, the growing comprising heating and mixing
the inoculum in the on-site system; whereby the
treatment batch has a concentration of microbes that is at
least 100 times larger than a concentration of microbes in
the inoculum; and, directly applying at least a portion of
the treatment batch to the waste water in the wastewater
treatment plant; thereby degrading the pollutant;
e) wherein, the determined amount of the treatment
chemical can be reduced by 25% without increasing the
predetermined level of the pollutant in the effluent stream
leaving the wastewater treatment plant.
(Whiteman ’024.)
Appellant contends that Examiner failed to establish that a number of
claim elements set forth in Appellant’s claim 105 are “disclosed or
suggest[ed] by the claims of” Whiteman ’956 (see Appeal Br. 34–36).
Specifically, Appellant contends that Whiteman ’956 fails to make obvious a
method as set forth in Appellant’s claim 105, which comprises:
a) determining a first BOD amount in an effluent stream from a
wastewater treatment plant, . . . whereby the first BOD amount
is in excess of a permit requirement for the wastewater
treatment plant and wherein the effluent stream has a flow
comprising 14 million gallons per day and wherein the first
BOD amount is 7,000 - 15,000 lbs./day BOD; [and]
d) . . . whereby, within 1 to 3 days the first BOD amount in the
effluent stream is reduced to a second BOD amount, wherein
the second BOD amount is within the permit requirement.
(see Appeal Br. 35–36.)19 We are not persuaded.

19 We recognize that although Appellant’s brief cited the preamble of its
claim 105, Appellant contends that citation of the preamble of its claim 105
was in error (see Reply Br. 8).
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As Examiner explains, “[i]n the absence of evidence to the contrary, it
is presumed that a method having substantially [the] same steps generates or
yield substantially the same outcomes, effects, or functions” and “[a]s
evidenced by the disclosures of [Whiteman ’956’s] [S]pecification[] . . ., the
method of the ’956 patent is capable of yielding all of the effects recited in
the instant claim” (id.). In this regard, we note that Whiteman ’956 discloses
that “NPDES permits for wastewater are generally in units of maximum
allowed pounds per day (lbs./day) of BOD and a maximum monthly
average” (Whiteman ’956, 17:49–52). Whiteman ’956 further discloses:
In a plant with a 14 [million gallons per day] . . . flow, a
single pass lagoon system is inoculated from a 1000 gallon tank
containing a concentration of 1.4x109 cfu/ml
microorganisms. . . . With the single pass lagoon system
currently in place, the plant is releasing wastewater with 7,000-
15,000 lbs./day [first] BOD, and is not in compliance with the
NPDES permit. When treatment is implemented with the
fermentation system of the current invention, the effluent is
down to 3,000 lbs./day [second] BOD in 3 days.
(Whiteman ’956, 17:35–37, 58–64; see also Whiteman ’024, 17:35–37, 49–
52, 58–64 (Whiteman ’024’s Specification contains the same disclosure)).
Examiner concludes that the scope of Whiteman ’956’s claims encompass
the method of Appellant’s claim 105 (see Ans. 15–16). For the foregoing
reasons, we are not persuaded by Appellant’s contention that Examiner
“failed to ‘provide objective evidence or cogent technical reasoning to
support [a] conclusion of inherency’” (Appeal Br. 34 (alteration in
original)).
In the context of an obviousness-type double-patenting rejection, a
patent’s disclosure may be used to determine whether a claim “merely
define[s] an obvious variation of what is earlier disclosed and claimed,” “to
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learn the meaning of [claim] terms,” and to “interpret [] the coverage of [a]
claim.” In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1375 (Fed. Cir.
2008). Therefore, we are not persuaded by Appellant’s contentions
regarding Examiner’s reliance on Whiteman ‘956’s Specification (Appeal
Br. 33).
As discussed above, the Specification of Whiteman ’024 is the same
as Whiteman ’956, thus we find no error in Examiner’s conclusion that the
scope of Whiteman ’956’s claims encompass the method of Appellant’s
claim 105 (see Ans. 15–16). To the extent that Appellant’s contentions
relating to Whiteman ’956 apply to Whiteman ’024, we are not persuaded
for the same reasons as set forth above with respect to Whiteman ’956.
Having found no deficiency in Examiner’s rejection of Appellant’s
claim 105 over Whiteman ’956 and Whiteman ’024, we are not persuaded
by Appellant’s contention regarding Dale (see Appeal Br. 36). To the extent
that Appellant’s contention regarding Dale also applies to Examiner’s
reliance on Mehta, we are not persuaded for the same reason as set forth
above, with respect to Dale.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness-type double patenting.
The rejection of claim 105 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1–19
of Whiteman ’956 is affirmed. Claim 110 is not separately argued and falls
with claim 105.
The rejection of claim 105 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1–19
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of Whiteman ’956 in view of Mehta is affirmed. Claims 106–108 and 110
are not separately argued and fall with claim 105.
The rejection of claim 105 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1–8 of
Whiteman ’024 in view of Dale is affirmed. Claims 106–108 and 110 are
not separately argued and fall with claim 105.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
105–108, 110 112 Definiteness 105–108,
110

105–108, 110 112 Written
Description
105–108,
110

105–108, 110 112 Enablement 105–108,
110

105, 110 Obviousness-type
Double Patenting,
Whiteman ’956
105, 110
105–108, 110 Obviousness-type
Double Patenting,
Whiteman ’956,
Mehta
105–108,
110

105–108, 110 Obviousness-type
Double Patenting,
Whiteman ’024,
Dale
105–108,
110

Overall
Outcome
105–108,
110

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).

AFFIRMED