Richard Alwyn. Houseman et al.Download PDFPatent Trials and Appeals BoardAug 12, 201914338268 - (D) (P.T.A.B. Aug. 12, 2019) Copy Citation 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. 14/338,268 07/22/2014 Richard Alwyn Houseman 47957-701.301 9076 21971 7590 08/12/2019 WILSON, SONSINI, GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER BAKSHI, PANCHAM ART UNIT PAPER NUMBER 1623 NOTIFICATION DATE DELIVERY MODE 08/12/2019 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): patentdocket@wsgr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte RICHARD ALWYN HOUSEMAN and ABRAHAM CHRISTO VENTER __________ Appeal 2018-001235 Application 14/338,268 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, JOHN G. NEW, and RYAN H. FLAX, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a method of producing a particulate glycerol derived material. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify the Real Party in Interest as Bio-Energy Ingredients Limited (see App. Br. 3). 2 We have considered and refer to the Specification of July 22, 2014 (“Spec.”); Final Office Action of Dec. 1, 2016 (“Final Action”); Appeal Brief of June 12, 2017 (“App. Br.”); Examiner’s Answer of Sept. 19, 2017 (“Ans.”); and Reply Brief of Nov. 17, 2017 (“Reply Br.”). Appeal 2018-001235 Application 14/338,268 2 Statement of the Case Background “Bio-diesel can be produced in a single stage or a two stage reaction process but, in either process, one of the by-products is glycerol which constitutes between about 10–20% of the total mass of the product” (Spec. 1:21–23). “The glycerol is usually separated from the bio-diesel by settling . . . The glycerol which is produced from this process is impure . . . This glycerol is, accordingly, an undesirable byproduct of the production of bio- diesel, but very large quantities of glycerol are nevertheless produced” (Spec. 1:24–29). The Specification describes “produc[ing] in an energy efficient manner a solid glycerol derived material and, preferably, a dry particulate material which can be used as a source of glycerol or as an intermediate for other purposes” (Spec. 4:3–5). The Claims Claims 1–6 and 8–16 are on appeal. Claim 1 is the sole independent claim and reads as follows: 1. A method of producing a particulate glycerol derived material, the method comprising: a step of adding starting material glycerol having a water content between 5 and 50% and a metal oxide as reactants into a single reaction vessel; wherein the molar ratio rate between the metal oxide to water being between 0.1 and 10, and the combination of the glycerol and the metal oxide creating an exothermic reaction between the glycerol and the metal oxide to reduce the water content of the glycerol; and wherein the method directly produces the particulate glycerol derived material. Appeal 2018-001235 Application 14/338,268 3 The Rejections A. The Examiner rejected claims 1, 2, and 4–6 under 35 U.S.C. § 102(b) as anticipated by Walmesley3 (Final Act. 4). B. The Examiner rejected claims 1–6 and 8–16 under 35 U.S.C. § 103(a) as obvious over Strohmaier4 (Final Act. 5–16). A. 35 U.S.C. § 102(b) over Walmesley The Examiner finds Walmesley discloses a process of making granulated/powdery product comprising treating reactant comprising reacting 100 parts of a mixture comprising glycerol (12.5%), water (40% water) (reads on water content of the instant claims) (obtained as a residue stream from distilleries with 47.5% impurities) with 10 parts of calcium oxide (thus the ratio of CaO to water is 10 to 40= 0.25) (reads on the CaO content of the instant claims) and alcohol in a single reaction vessel forming granular/ powdery solid material. (Final Act. 4). The issue with respect to this rejection is: Does a preponderance of the evidence of record support the Examiner’s conclusion that Walmesley anticipates the claims? Findings of Fact 1. Walmesley teaches “recovery of glycerol formed during the fermentation of carbohydrate material” (Walmesley 1, left column at 1–3). 2. Walmesley teaches a “residue consisting of a dealcoholised distillery slop made by a fermentation of molasses in an acid medium, is 3 Walmesley, US 2,389,173, issued Nov. 20, 1945. 4 Strohmaier et al., US 6,229,031 B1, issued May 8, 2001. Appeal 2018-001235 Application 14/338,268 4 concentrated by evaporation until it contains 12.5 per cent. glycerol, 47 .5 per cent. nonvolatile impurities and 40 per cent. water” (Walmesley 2, right column at 54–59). 3. Walmesley teaches “100 parts of this concentrate at 50° C. are mechanically mixed in a mill of the kind used for homogenising emulsions with 10 parts calcium oxide” (Walmesley 2, right column at 59–62). 4. Walmesley teaches the “resulting thick cream is then mechanically mixed with 150 parts of cold concentrated aqueous ethyl alcohol” (Walmesley 2, right column at 62–64). 5. Walmesley teaches the “alcohol is sufficient to precipitate somewhat more than 90 per cent. of the total weight that can be precipitated . . . The precipitated solid matter is allowed to settle and the extract is removed by decantation” (Walmesley 2, right column at 68–73). Principles of Law For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012). Analysis We adopt the Examiner’s findings of fact and conclusion of law (see Final Act. 4, FF 1–5) and agree that Walmesley anticipates the claims. We address Appellants’ arguments below. Appellants contend “[a]n ordinarily skilled artisan would interpret the claims as reciting a ‘starting material glycerol having a water content between 5 and 50%’, and not a water content relative to the entire reaction as the Office has done” (App. Br. 8). Appellants contend “a skilled reader Appeal 2018-001235 Application 14/338,268 5 would realize that the water content in the Walmesley reaction is three times the amount as compared to glycerol. As such, Walmesley fails to teach the presently claimed ‘starting material glycerol having a water content between 5 and 50%’” (App. Br. 9). We find these arguments unpersuasive as Appellants are arguing limitations that are not present in the plain meaning of the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Claim 1 does not distinguish between the situation where the entire reaction contains glycerol and a water content between 5 and 50% and the situation where only the glycerol portion of the reactant has a water content of between 5 and 50%. Claim 1 also includes no requirement for the relative amounts of glycerol and water in the reaction. Nor do Appellants point to any limiting definition or explanation in the Specification that supports their claim interpretation. Finally, the assertion regarding the understanding of a “skilled artisan” is simply attorney argument without evidentiary basis. However, “[a]ttorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants contend “one of ordinary skill in the art would understand that the process described in Walmesley is an extraction method where the glycerol product is recovered in the supernatant (i.e., liquid extract containing dissolved glycerol), and not a method of producing a particulate glycerol derived material” (App. Br. 9). We find this argument unpersuasive because Walmesley teaches a process that produces “precipitated solid matter” (FF 5) that is particulate glycerol derived material and Appellants do not dispute that the process of Appeal 2018-001235 Application 14/338,268 6 Walmesley results in formation of this material. “[I]nherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure.” Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Here, the anticipation case is stronger because the ordinary artisan would have recognized that Walmesley’s “precipitated solid matter” comprises a particulate glycerol derived material as required by claim 1, so the anticipation is immediately apparent from the disclosure of Walmesley (FF 5). We agree with the Examiner that “Walmesley teaches that glycerol is extracted from the particulate product of the reaction by repeated washes with alcohol which again provide evidence that glycerol is in fact in the solid” (Ans. 20). Appellants contend “Walmesley fails to disclose the claimed ‘exothermic reaction between the glycerol and the metal oxide.’ Instead, Walmesley describes a reaction between the metal oxide and impurities that form a precipitate” (App. Br. 9). We find this argument unpersuasive because we agree with the Examiner that, “if reaction of glycerol, water and CaO results an exothermic reaction in the instant claims, it must necessarily to do same in Walmesley’s process” (Ans. 20). As our reviewing court has explained, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Bristol–Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). Once a prima facie case of anticipation has been established, the burden shifts to the Appellants to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the Appeal 2018-001235 Application 14/338,268 7 claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Appellants have provided no such evidence. Appellants contend “[n]ot only does the claimed method not require the addition of an alcoholic solvent to produce a particulate product, the granulated/powdery product of Walmesley is not a particulate glycerol derived material” (App. Br. 10). Appellants contend “an ordinarily skilled artisan would understand and recognize that the methods disclosed in Walmesley, including the high water content and lack of exothermic reaction, would not result in directly producing a particulate glycerol derived material” (App. Br. 10). We find this argument unpersuasive because the term “direct” does not exclude additional steps in this open, “comprising” claim. We note that Appellants do not identify, and we do not find, any disclosure in the Specification that defines the term “direct” as excluding any further steps. To the extent that Appellants had wanted to exclude other steps, they could have chosen to use the “consisting of” transitional phrase. However, Appellants instead chose to use the term “comprising.” See Georgia-Pacific Corp. v. US. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term “comprising” is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps”). The broadest reasonable interpretation of the claim consistent with the Specification therefore does not exclude the steps recited in Walmesley. See In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, Appeal 2018-001235 Application 14/338,268 8 claims are given their broadest reasonable interpretation consistent with the specification”). Conclusion of Law A preponderance of the evidence of record supports the Examiner’s conclusion that Walmesley anticipates the claims. B. 35 U.S.C. § 103(a) over Strohmaier The Examiner finds Strohmaier “teaches a method for the preparation of free flowing granular fatty acid calcium salts and glycerol calcium salt by reacting high glyceride content fats and greases with calcium oxide and a minimal amount of water” (Final Act. 5). The Examiner finds Strohmaier teaches that heating an admixture of fatty acid glycerides, 10 to 30% calcium oxide and 10 to 100% water “to saponify fatty acid glycerides to form fatty acid calcium salts (forming fatty acids and glycerol with water and CaO)” (Final Act. 6). The Examiner finds Strohmaier teaches the fatty acid calcium salt products “in powdered form may be easily transported and used in feed rations” (Final Act. 7). The Examiner acknowledges that Strohmaier differs from the claims that require “adding starting material wet glycerol” (Final Act. 10). The Examiner finds that Strohmaier teaches “saponification of fatty acid glycerides with CaO and water leading to the formation of glycerol/wet glycerol which further reacts with CaO forming solid glycerol derived material” (Final Act. 11). The Examiner finds the “source from which wet glycerol with water content is produced carry no patentable weightage” (Final Act. 12). Appeal 2018-001235 Application 14/338,268 9 The issue with respect to this rejection is: Does a preponderance of the evidence of record support the Examiner’s conclusion that Strohmaier renders claim 1 obvious? Findings of Fact 6. Strohmaier teaches “a process for the production of rumen bypass feed supplements that are useful as an energy source for ruminants. The process converts fatty acid glycerides or a mixture of fatty acid glycerides and free fatty acids to the respective calcium salts” (Strohmaier 1:13–17). 7. Strohmaier teaches: an admixture is formed of reactive ingredients consisting of (a) a C10-C22 fatty acid mixture, having greater than about 45 weight% of the C10-C22 fatty acid content in the form of fatty acid glycerides; and (b) from about 10 to about 30% by total admixture weight of calcium oxide; adding water to the admixture in an amount between about 10% and about 100% by weight relative to the amount of calcium oxide; and heating the admixture to a temperature at which the fatty acid glycerides saponify to form fatty acid calcium salts. (Strohmaier 2:43–54). 8. Strohmaier teaches “it is believed that the glycerol that is generated complexes with the calcium hydroxide produced by the reaction between the calcium oxide and water, forming compounds such as calcium monoglycerolate” (Strohmaier 2:67 to 3:3). 9. Strohmaier teaches “[i]t is believed that the glycerol that is generated complexes with the calcium hydroxide that is present as the admixture is dehydrated, resulting in a form of glycerol that does not interfere with the solidification and milling of the fatty acid calcium salt product into free-flowing granules” (Strohmaier 3:6–11). Appeal 2018-001235 Application 14/338,268 10 10. Strohmaier teaches “[c]alcium oxide is added to the fatty acid feedstock in the range of from about 10 to about 30% by weight of the total composition . . . Water is then added to hydrate the calcium oxide to its hydroxide form, creating a large amount of exothermic heat” (Strohmaier 4:21–26). 11. Strohmaier teaches “Producing fatty acid calcium salt products that are free-flowing granular powders is desirable, so that the product can be easily transported and used in feed rations” (Strohmaier 1:65–67). Principles of Law A prima facie case for obviousness “requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Analysis Appellants contend “Strohmaier never teaches or suggests such an addition of ‘starting material glycerol’, much less ‘starting material glycerol’ with the claimed characteristics. Instead, Strohmaier teaches the formation of glycerol as a byproduct in the fatty acid glyceride reactions disclosed” (App. Br. 11). Appellants also contend “Strohmaier clearly does not teach the first step of the claimed method of ‘adding starting glycerol having a water content between 5 and 50%’” (App. Br. 12). The Examiner responds Strohmaier teaches two steps process leading to formation of solid particulate product -(1) saponification of fatty acids forming fatty acids and glycerol comprising water and CaO Appeal 2018-001235 Application 14/338,268 11 followed by step (2) reaction of glycerol, fatty acids, water (10% to about 100% by weight relative to the amount of calcium oxide (preferably 15 to about 40% by weight) (equivalent to water content of the mixture comprising glycerol and encompass the range about 5 and 50% and 9-18%) and CaO (from about 10 to about 30% of the total admixture weight of calcium oxide) forming solid product comprising calcium monoglycerolate, calcium diglycerolate, tricalcium octaglycerolate, calcium hexaglycerolate, as well as hydrated diglycerol salts. (Ans. 23). We agree with Appellants for two reasons. First, while the Examiner calculates the amount of reagents present at the beginning of Strohmaier’s two-step process, the Examiner fails to establish that the amount of these reagents remains the same after the saponification reaction that generates glycerol (see FF 8–9; discussing “glycerol that is generated”). Even if the amount of water and calcium oxide present at the beginning of Strohmaier’s process falls within the scope of claim 1, it is not necessarily inherent that these amounts remain the same during the course of the reaction that generates glycerol. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). Second, we agree with Appellants that some weight is due the phrase “a step of adding starting material glycerol” with water and metal oxide as recited in claim 1. In particular, we agree that the Examiner has not established that it would have been obvious to modify Strohmaier’s two-step process to begin with the glycerol by-product formed as Strohmaier converts fatty acid glycerides to their respective calcium salts (see FF 6). That is, the Appeal 2018-001235 Application 14/338,268 12 Examiner finds it obvious “that the wet glycerol obtained as a byproduct from any reaction stream may react with CaO exothermally forming particulate glycerol material” (Ans. 16). However, the Examiner provides no evidence in Strohmaier that the reacted glycerol would form a particulate material, rather teaching milling of “fatty acid calcium salt product into free- flowing granules” (FF 9). The Examiner also provides no evidence that the reacted glycerol would inherently result in a particulate material. Nor does the Examiner provide any persuasive reason to begin with glycerol as the starting material, rather than fatty acid glycerides that are disclosed as a starting material by Strohmaier. The Examiner asserts a “need to obtain free-flowing powder like material from wet glycerol admixture which is easy to transport and ration” (Ans. 16), an argument rooted in Strohmaier’s teaching regarding fatty acid calcium slats (FF 11), but the Examiner does not demonstrate that the same need is present for calcium- glycerol products of the reaction between glycerol and calcium oxide. Conclusion of Law A preponderance of the evidence of record does not support the Examiner’s conclusion that Strohmaier renders claim 1 obvious. SUMMARY We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Walmesley. Claims 2 and 4–6 fall with claim 1. We reverse the rejection of claims 1–6 and 8–16 under 35 U.S.C. § 103(a) as obvious over Strohmaier. Appeal 2018-001235 Application 14/338,268 13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation