Ex Parte Schlotter

Patent Trial and Appeal Board

Mar 14, 2017

12131282 (P.T.A.B. Mar. 14, 2017)

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.
12/131,282 06/02/2008 Peter Schlotter 64309A-US-NP 5540
80834 7590 03/16/2017
Magleby Cataxinos & Greenwood/Dow AgroSciences LLC
170 S. Main Street
Suite 1100
Salt Lake City, UT 84101
EXAMINER
AFREMOVA, VERA
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
ptomail @ mcgiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SCHLOTTER1
Appeal 2016-000588
Application 12/131,282
Technology Center 1600
Before JOHN G. NEW, SHERIDAN K. SNEDDEN, and
RICHARD J. SMITH, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 2, 4—6, 8—12, 20, 23, 24, and 26—29 as
unpatentable under U.S.C. § 103(a) as being obvious over the combination
of Hayes et al. (US 4,722,741, February 2, 1988) (“Hayes”), J.O. Ouda et al.,
The Nutritive Value of Forage Sorghum Genotypes Developed for the Dry
Tropical Highlands of Kenya as Feed Source for Ruminants, 35(1) South
African J. Animal Sci. 55-60 (2005) (“Ouda”), and J.A.Z. Leedle et al.,
appellant states the real party-in-interest is Dow AgroSciences, LLC. App.
Br. 2.
Appeal 2016-000588
Application 12/131,282
Postprandial Changes in Methanogenic and Acidogenic Bacteria in the
Rumens of Steers Fed High- or Low-Forage Diets Once Daily, 54(2)
Applied and Env. Microbiol. 502-06 (1988) (“Leedle”).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellant’s invention is directed to methods and compositions to
produce biogas and fertilizer from plant material that have reduced lignin
content relative to a wild-type plant material. For example, a brown midrib
(BMR) plant. Methane yields from BMR plants including BMR com are
significantly higher, thereby increasing the efficiency of methane
production. Anaerobic digestion of plant material derived from BMR plants
results in an increased methane yield. Abstract.
REPRESENTATIVE CLAIM
Claim 20 is representative of the claims on appeal and recites:
20. A method of producing a biogas comprising methane, the
method comprising:
providing a plant material comprising a silage, wherein the
plant material is obtained from a brown midrib (BMR) hybrid
com variety characterized by a reduced lignin content relative to
a wild-type hybrid com plant of the same species; and
2 The Examiner also rejected claims 1—3, 6, 8—12 as unpatentable under 35
U.S.C. § 102(b) as being anticipated by Ouda. Final Act. 2. The Examiner
has withdrawn this rejection subsequent to Appellant’s cancellation of
claims 1 and 3. Ans. 2.
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Application 12/131,282
anaerobically digesting the plant material in an anaerobic
reactor with a microbial inoculum comprising acid-forming
bacteria and methane-producing bacteria, to produce the biogas,
wherein the biogas comprises about 50% methane by
volume, and
wherein the methane is produced at a concentration of at
least about 340 liters of methane per kilogram of dry organic
matter in the plant material.
App. Br. 15.
ISSUES AND ANALYSES
We agree with the Examiner that the claims are obvious over the
combined cited prior art and adopt the Examiner’s rationale. We address the
arguments raised on appeal by Appellant below.
A Rejection of claim 20
Issue
Appellant argues claim 20 separately. App. Br. 5. Appellant argues
the Examiner erred in finding the combination of references yields a method
having the claimed methane gas production characteristics. Id-
Analysis
Appellant argues Ouda does not disclose a method of producing
biogas from a plant material comprising silage obtained from a reduced
lignin plant variety. App. Br. 6. Appellant asserts, by way of example, that
the silage of the plant material taught by Ouda is from a WMR genotype,
which is not a plant material characterized by a reduced lignin content
relative to a wild type plant material of the same species. Id. (citing Ouda
56). Rather, Appellant contends, the BMR genotype plant material used in
Ouda is chopped whole plant, which is not silage. Id. Appellant takes issue
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Application 12/131,282
with the Examiner’s finding of a “lack of particular definitions in
[Appellant’s] as-filed specification that would distinguish between final
contents of silage plant materials and non-silage plant materials.” Id.
(quoting Final Act. 6).
Appellant contends it is irrelevant whether the Specification explains
the difference between silage and chopped whole plant material. App. Br. 7.
Appellant points out that he is not required to include in their disclosures
that which is known in the art. Id. (citing Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). According to
Appellant, “silage” is a particular kind of plant material that is known in the
art, and is understood to have distinguishing relevant characteristics and that
the Examiner has presented no evidence to the contrary. Id.
Appellant argues further that the Examiner has improperly imported
into claim 20 the Specification’s disclosure that “[sjuitable plant substrate
material includes silage, stover, hay, feed concentrate, and any other plant
part that contains organic matter capable of producing biogas upon treatment
of microbes.” App. Br. 7 (quoting Spec. 110). According to Appellant, the
Specification generally describes methods for producing biogas which
utilize any and all of the foregoing materials. Id. However, Appellant
maintains these general methods are not what is claimed in claim 20, rather,
claim 20 is drawn to a method in which silage is digested, and methane is
produced in a biogas at a concentration of at least approximately 340 liters
of methane per kilogram of dry organic matter in the plant material. Id.
Appellant next disputes the Examiner’s finding that: [T]he use of
brown midrib (BMR) plant variety that has reduced lignin contents relative
to a wild type same plant variety ... [and that] ruminal fluid digestion of
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Application 12/131,282
plant materials of the BMR plant variety provided for higher methane
production than digestion of normal or wild type plant variety.” App. Br. 8
(quoting Final Act. 2—3). According to Appellant, Ouda compares the
nutritive characteristics of five different sorghum genotypes (including three
BMR genotypes) by a gas production technique. Id. Appellant asserts Ouda
explicitly teaches that four of the five genotypes did not have significantly
different total gas productions and that the fifth, (WMR) genotype E6518,
exhibited a lower gas yield. Id. (citing Ouda 57).
Appellant contends the Examiner admits that the biogas production
process of Ouda “does not demonstrate biogas production with 50% content
of methane,” as recited in claim 20. App. Br. 9 (quoting Final Act. 4).
Appellant argues the Examiner relies upon Hayes as teaching this limitation.
Id. However, Appellant alleges, the Examiner makes no effort to describe
exactly what manipulations or conditions from Hayes would be applied to
the low-efficiency production of biogas from chopped BMR plant material
in Ouda to yield the claimed method. Id. Appellant contends that, without
such an explanation, the Examiner has not articulated an adequate prima
facie case that claim 20 would have been obvious over the prior art. Id.
The Examiner responds that Ouda teaches a method for producing
biogas including methane gas by anaerobic digestion of brown midrib
(BMR) plant materials by a mixed ruminal microbial consortium in which
the ruminal microbial consortium contains acid-forming bacteria and
methane-producing bacteria. Ans. 6 (citing Ouda Abstr.; see also Leedle
Abstr.). The Examiner finds the (BMR) genotype plant materials of Ouda
reads directly upon the “plant material obtained from a variety of a plant
species characterized by a reduced lignin content relative to a wild type of
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Application 12/131,282
the same species,” as recited in claim 20. Id. The Examiner finds that
although Ouda does not teach or suggest methane production as high as 340
L/g, or as high 50% methane of the total biogas, Hayes teaches various
methods and conditions producing an increase of up to 90% methane in the
total biogas produced. Id. (citing, e.g., Hayes Abstr.).
More specifically, the Examiner finds that Ouda teaches that the
“silage” plant substrate provides for greater amount of methane per organic
matter degraded compared to the “non-silage” plant substrate, when both
silage and non-silage materials are obtained from the identical plant species
and identical genotype. Ans. 7 (citing Ouda Table 2). The Examiner
therefore finds Ouda would provide a person of ordinary skill in the art a
reasonable expectation of success and motivation to use plant material in a
“silage” form of plant material for methane production. Id.
We are not persuaded by Appellant’s arguments. Although we agree
with Appellant’s contention that Ouda does not teach BMR genotype plant
material in silage form prior to methane production, or that “digestion of
plant materials of the BMR plant variety provided for higher methane
production than digestion of normal or wild type plant variety” (see App. Br.
8), it is not necessary that Ouda teach all of the limitations of claim 20. See
In re Kotzab, 111 F.3d 1365, 1370 (Fed. Cir. 2000) (All elements of each
prior art reference need not read on the claimed invention, rather, the proper
test for obviousness is what the combined teachings would have suggested to
a person of ordinary skill in the art).
Ouda “observed that plants with the natural genetically controlled
brown-midrib (BMR) trait produced less lignin than normal plants, making
their fibres easily digestible by ruminants.” Ouda 55. Ouda also teaches:
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Application 12/131,282
[T]wo WMR genotypes, coded E1291 and E6518, and three
BMR genotypes, coded Lan-5, Lan-6 and Lan-12, and silage
made from El291 were used. The silage was made by chopping
the whole plants with a tractor drawn pulverizer [ ] and ensiling
the chopped material in a trench silo without any additives
and that, for the remaining plant samples of either genotype: “Samples of the
chopped whole plant of the different sorghum genotypes and the silage were
oven dried for 24 h at 55°C and milled through a 1 mm sieve using a
Cyclotec mill.... The milled samples were sealed in plastic bags and stored
pending laboratory study.” Id. at 56. We agree with Appellant that Ouda
does not teach that the BMR samples were treated as silage, but were only
chopped. However, Ouda explicitly teaches a method by which plant
samples of the same species can be treated to make silage, and we agree with
the Examiner that a person of ordinary skill would have a reasonable
expectation of success in treating BMR genotype plant material as silage,
based on the same treatment of WMR genotype material, to produce a
biogas containing methane, as taught by Ouda. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton’).
We therefore agree with the Examiner that the teachings of Ouda
would cause a person of ordinary skill to understand:
[PJlant material comprising a silage, wherein the plant material
is obtained from a brown midrib (BMR) hybrid com variety
characterized by a reduced lignin content relative to a wild-type
hybrid com plant of the same species [and] anaerobically
digesting the plant material in an anaerobic reactor with a
microbial inoculum comprising acid-forming bacteria and
methane-producing bacteria, to produce the biogas
as recited in claim 20.
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Application 12/131,282
Ouda does not teach the limitations of claim 20 reciting: “wherein the
biogas comprises about 50% methane by volume, and wherein the methane
is produced at a concentration of at least about 340 liters of methane per
kilogram of dry organic matter in the plant material.” The Examiner relies,
rather, upon Hayes as teaching these requirements. See Ans. 6. Hayes
teaches that “a combined phase recycling anaerobic filter for aqueous
organic wastes and adjustment of chemical oxygen demand to result in 80 to
90 percent methane,” were already well known in the prior art. Hayes col. 2,
11. 32—35. Hayes is directed to: “enhanc[ing] the methane content of product
gas derived from two phase anaerobic digestion of organic solids. The
methane content of product gas is enhanced by adjustment of the absorption
and desorption of carbon dioxide in the liquid stream passed through the two
phase digestion process.” Id. at 11. 42-48.
Furthermore, Hayes teaches:
Any organic carbonaceous material which is susceptible to
anaerobic biodegradation may be used as feed. The feedstock
preferably comprises greater than weight percent total solids.
The organic carbonaceous feed is continuously or intermittently
introduced into an acid phase digester, where a biologically
active mixed microbial population converts the organic substrate
to principally fatty acids such as acetic acid, propionic acid and
butyric acid.
Id. at col. 3,11. 5—13.
Finally, Hayes teaches that:
The process of this invention provides an energy-efficient
anaerobic biodegradation process to convert organic
hydrocarbonaceous material to high methane content gas, over
about 90 volume percent methane. The process does not require
elevated temperatures, and uses relatively low pressure in only
one of the digesters. As a result, process costs remain low, the
process requires little or no specialized equipment, and it is
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Application 12/131,282
adaptable to many different anaerobic digestion systems
presently in use. The ease of operation and the high value of the
product gas make the process of this invention economically
feasible.
Id. at col. 4,11. 47—58.
We consequently find that Hayes teaches a method for achieving at
least the concentrations of methane required by the limitations of claim 20,
and that, furthermore, Hayes provides a motivation for a person of ordinary
skill in the art to combine the teachings of Hayes and Ouda, i.e., to greatly
increase, at low cost, the methane yield taught by Ouda for BMR genotype
plant material, using little or no elevated temperatures of specialized
equipment. Id. We consequently affirm the Examiner’s rejection of claim
20. Furthermore, because Appellant relies upon the same arguments with
respect to claims 23, 24, and 26—29, which depend from claim 20, we
similarly affirm the rejection of those claims.
B. Rejection of claim 4
Appellant argues claim 4 separately. App. Br. 9—10. However,
Appellant relies upon essentially the same arguments presented with respect
to claim 20 supra, viz., Ouda does not teach enhanced methane production
for BMR genotype plant materials and Hayes does not offer sufficient
guidance to cure the alleged remedies of Ouda. Id. at 10.
We have explained our reasoning supra as to why we are not
persuaded by Appellant’s arguments and incorporate them here by reference.
We consequently affirm the Examiner’s rejection of claim 4, as well as of
dependent claims 2, 6, and 8—12, for which Appellant advances the same
arguments as with respect to claim 4. App. Br. 11.
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C. Rejection of claim 5
Appellant argues claim 5 separately. App. Br. 11. Appellant argues
the Examiner erred in “fail[ing] to correctly consider whether the
combination of references yields a method having the claimed methane gas
production characteristics; i.e., ‘wherein the biogas comprises about 50%
methane by volume.’” Appellant attacks the teachings of Ouda which,
Appellant contends, do “not show that chopped BMR plant material was
more efficiently converted into methane, the person of ordinary skill in the
art would not have reasonably expected that the more efficient methane
production methods of claim 20 [sic] could be achieved using BRM plant
silage.” Id. at 12.
Appellant also contends that Hayes does not cure the alleged
deficiencies of Ouda because the Examiner failed to explain “exactly what
manipulations or conditions from Hayes would be applied to the low-
efficiency production of biogas from chopped BMR plant material in Ouda
to yield the claimed methods.” App. Br. 12.
However, we have explained supra our reasoning as to why Hayes
would have provided both teaching and motivation to a person of ordinary
skill to combine the teachings of Ouda and Hayes to achieve claim 5’s
requirement of “wherein the biogas comprises about 50% methane by
volume.” Consequently, we affirm the Examiner’s rejection of claim 5.
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Application 12/131,282
DECISION
The Examiner’s rejection of claims 2, 4—6, 8—12, 20, 23, 24, and 26—
29 as unpatentable under 35 U.S.C. § 103(a) is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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