Richard Alwyn. Houseman et al.

Patent Trials and Appeals Board

Aug 12, 2019

14338268 - (D) (P.T.A.B. Aug. 12, 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.
14/338,268 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.”).
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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.
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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.
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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
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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
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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
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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,
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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).
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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).
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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
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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
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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.
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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