PARTON, Rudy Francois Maria Jozef. et al.

Patent Trials and Appeals Board

Sep 9, 2019

14648389 - (D) (P.T.A.B. Sep. 9, 2019)

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.
14/648,389 05/29/2015 Rudy Francois Maria Jozef PARTON 30701-USA 2918
31743 7590 09/09/2019
Georgia-Pacific LLC
133 Peachtree Street NE
GA030-23
ATLANTA, GA 30303
EXAMINER
DIAZ, MATTHEW R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
gplawpatents@gapac.com
koch_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUDY FRANCOIS MARIA JOZEF PARTON,
JOHANNES AUGUSTINUS KROON, and
PIERRE LOUIS WOESTENBORGHS
____________

Appeal 2019-000896
Application 14/648,389
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MONTÉ T. SQUIRE and
MICHAEL G. MCMANUS, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–5, 7, and 10–20. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed May 29, 2015 (“Spec.”); Final Office Action mailed
October 31, 2017 (“Final Act.”); Appeal Brief filed June 22, 2018 (“Appeal
Br.”); Examiner’s Answer mailed September 11, 2018 (“Ans.”); and Reply
Brief filed November 12, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
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Application 14/648,389

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We AFFIRM.
THE INVENTION
Appellant states the invention relates to a process for the production
of a biomass hydrolysate suitable for the production of levulinic and formic
acid. (Spec. 1, ll. 7–11.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A process for producing a biomass hydrolysate, comprising a
single hydrolysis step, said single hydrolysis step comprising:
heating a slurry comprising 40 wt% to 50 wt% of a
biomass, based on a total weight of the slurry, to a temperature
of 160°C to 190°C, for a residence time period of 20 minutes
to 140 minutes, at a mineral acid concentration of 2 wt% to
5 wt%, wherein the biomass hydrolysate comprises levulinic
acid and formic acid.
(Appeal Br. (Claims Appendix) 12.)

REJECTIONS3
1. The Examiner rejected claims 1, 3, 7, and 10–20 under pre-AIA 35
U.S.C. § 103(a) as obvious over Von Hebel et al. (US 2011/0302824
A1, published December 15, 2011, hereinafter “Von Hebel”).
2. The Examiner rejected claim 4 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Von Hebel and Mullen et al. (US 2014/0128634 A1,
published May 8, 2014, hereinafter “Mullen”).

Georgia-Pacific LLC, a wholly owned subsidiary of Koch Industries, Inc.
(Appeal Br. 3.)
3 At page 2 of the Advisory Action mailed January 25, 2018, the Examiner
withdrew all rejections under 35 U.S.C. §§ 101 and 112 previously set forth
in the Final Action at pages 4–6.
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3. The Examiner rejected claim 5 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Von Hebel and Weingarten et al. (“Kinetics and reaction
engineering of levulinic acid production from aqueous glucose
solutions” ChemSusChem, 5, pp1280-1290, 2012, hereinafter
“Weingarten”).
(Final Act. 6–12; Ans. 3–8.)
We select independent claim 1 for disposition of this appeal, which is
representative of the claimed subject matter argued by Appellant (See
Appeal Br. 11–12). 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1
ISSUE
The Examiner found Von Hebel discloses, inter alia, a process for
producing a biomass hydrolysate including hydrolysis step including heating
a slurry of a biomass at a raised temperature where the biomass hydrolysate
comprises levulinic acid and formic acid. (Ans. 3–4.) The Examiner found
that Von Hebel does not disclose explicitly the concentration of slurried
biomass is in the range of 40–50% by weight on the total weight of the
slurried biomass. (Id. at 4.) The Examiner determined it would have been
obvious to one of ordinary skill in the art to have arrived at the claimed
biomass concentrations “by optimizing and raising the initial biomass
concentration taught by Von Hebel et al. (para. 0037 and the examples in
table 1 on page 5) in order to sufficiently liquefy 60% or more and/or 80%
or more of the cellulosic and lignocellulosic material and obtain materials
suitable for preparing a biofuel (para. 0012, 0016, and 0043–0045).” (Id.)
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Appellant argues that Von Hebel discloses a maximum concentration
of cellulosic material of 33.33 wt% based on the combined weight of
biomass and the solvent mixture. (Appeal Br. 8, citing Von Hebel, ¶ 38.)
Appellant argues also that Von Hebel requires addition of a catalyst to the
slurry of biomass and solvent, which would further reduce the concentration
of biomass in the slurry. (Id., citing Von Hebel, ¶¶ 39–43.) Appellant
argues the Examiner’s reasoning is contradictory to the results shown in
Von Hebel, which show that the maximum “liquefaction” of 80 wt% of
biomass was achieved at the lowest concentration of biomass. (Id. at 9–10,
citing Von Hebel, Table 1, Exs. 3 and 8.)
Accordingly, the dispositive issue with respect to this rejection is:
Considering the record as a whole, has Appellant identified a
reversible error in the Examiner’s determination that it would have been
obvious to have performed the method of Von Hebel with a slurry
comprising 40 wt% to 50 wt % biomass?

DISCUSSION
We are not persuaded by Appellant’s arguments. In particular, as the
Examiner points out, the amount of cellulosic material present in the solvent
mixture is expressed as a preference: “[t]he cellulosic material and the
solvent mixture containing water and co-solvent, are preferably mixed in a
solvent mixture-to cellulosic material ratio of 2:1 to 20:1.” (Von Hebel ¶ 38,
emphasis added; see Ans. 11.) Von Hebel, similar to Appellant’s
Specification, does not express any particular criticality to the cellulosic
material/solvent mixture concentration disclosed therein. (Id.; compare
Spec. 5, ll. 24–27.) Thus, we agree with the Examiner that increasing the
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concentration of cellulosic material in the slurry to discover optimum ranges
including the ranges recited in claims 1 and 10, would have been obvious.
In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”).
In this regard, we are not persuaded by Appellant’s argument that the
examples in Von Hebel establish that by increasing biomass concentration,
the maximum “liquefaction” decreases. Initially, we are not persuaded that
the two isolated examples relied on by Appellant establish the trend argued
and we point out that Appellant must rely on more than attorney argument to
support any such interpretation. In re Schulze, 346 F.2d 600, 602, (CCPA
1965). Indeed, arguments of counsel cannot take the place of factually
supported objective evidence. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996).
In addition, as the Examiner points out, the working examples
disclosed in Von Hebel merely provide results with respect to particular
co-solvent blends. (Ans. 14.) Examples 3 and 8 relied on by Appellant,
were performed using different co-solvents, acetic acid, and gamma-
valerolactone, respectively. (Von Hebel, ¶¶ 74, 80, Table 1.) Thus, it does
not follow from the results disclosed in Von Hebel that increasing the
concentration of biomass reduces “liquefaction.” If anything, Von Hebel
appears to disclose that at the same concentration of biomass, the particular
solvent has an effect on “liquefaction,” where gamma-valerolactone
produced less “liquefaction” than acetic acid co-solvent. (See Examples 3
and 5.)
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Accordingly, we affirm the Examiner’s rejection of claim 1, and
claims 3–11, 13–21, and 23–28.

Rejections 2 and 3
Appellant does not present separate arguments for dependent claims 4
and 5, the subject of Rejections 2 and 3, respectively, but rather relies on the
dependency of those claims from claim 1 as the basis for patentability.
(Appeal Br. 1.) As a result, we affirm the Examiner’s rejections of these
claims as well for similar reasons as discussed above with respect to
Rejection 1.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–5, 7, and 10–
20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED