Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 7
` Entered: January 27, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01592
`Patent 8,962,059 B1
`____________
`
`
`
`Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
` Paper 7
` Entered: January 27, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`____________
`
`Case IPR2015-01592
`Patent 8,962,059 B1
`____________
`
`
`
`Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2015-01592
`Patent 8,962,059 B1
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`
`Hydrite Chemical Co. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`to institute an inter partes review of claims 1–16 of U.S. Patent No.
`8,962,059 B1 (“the ’059 patent”).1 A Preliminary Response (Paper 6,
`“Prelim. Resp.”) was filed by Solenis Technologies, L.P. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may be authorized only if “the information presented in
`the petition . . . and any [preliminary] response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Petitioner challenges claims 1–16 of the ’059 patent under
`35 U.S.C. § 103(a). Pet. 6. We institute an inter partes review as to claims
`1–16 as discussed below.
`
`
`BACKGROUND
`I.
`Related Proceedings
`A.
`We are informed that the ’059 patent and commonly owned
`U.S. Patent 8,841,469 (the ’469 patent) are the subject of Hydrite Chemical
`Co. v. Solenis Technologies, L.P., 2-15-cv-00856 (E.D. Wis.). Pet. ix–x;2
`
`
`1 The Petition also identifies Hydrite Chemical International Co. and Hydrite
`Advanced Resins LLC as real parties in interest as required by 35 U.S.C.
`§ 312(a)(2). Pet. ix. This and other information on pages ix–xi not
`explicitly excluded by 37 C.F.R. § 42.24(a)(1) should have been included
`within the 60 page limit of the Petition. See 37 C.F.R. § 42.8(a)(1), (b);
`37 C.F.R. § 42.24(a)(1)(i). We waive this requirement in this instance,
`rather than expunge or return the Petition pursuant to 37 C.F.R.
`§ 42.24(a)(2), in view of the Petition being less than 60 pages.
`2 This information also should have been included within the 60 page limit
`of the Petition.
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`Paper 5, 2. The ’059 and ’469 patents were the subject of Superior Oil
`Company, Inc. v. Solenis Technologies L.P., 1:15-cv-00183-GMS (D. Del.),
`which was dismissed with prejudice. Pet. ix–x; Paper 5, 2. The ’469 patent
`is the subject of concurrently-filed inter partes review proceeding IPR2015-
`01586. Pet. x; Paper 5, 3.
`The ’059 Patent (Ex. 1001)
`B.
`The ’059 patent, titled “Bio-Based Oil Composition and Method for
`Producing the Same,” is directed to a method of extracting oil, particularly
`corn oil, from a byproduct stream of an ethanol production process for the
`purpose of improving the value of the byproduct stream. Ex. 1001, Abstr.,
`1:6–10, 2:3–5. The method comprises mixing an oil concentrator with the
`byproduct stream. Id. at Abstr., 2:59–61. The oil concentrator is described
`as “a compound having a hydrophilic group and a lipophilic group” which
`“provide a hydrophile-lipophile balance (HLB) of about 12 to about 18” or
`“about 10 to about 19” or “preferably, around 15.” Id. at 3:1–4, 6:57–64,
`7:53–57. The ’059 patent explains that HLB values are typically calculated
`for a particular compound to make a stable emulsion between a non-polar
`and polar substance. In the case of corn oil in water, the HLB requirement
`to form a stable emulsion is 10. Id. at 6:45–49. That means a surfactant
`having an HLB of 10 is likely to form a stable emulsion of corn oil in water.
`Id. at 6:49–51. The invention, on the other hand, is said to involve “forming
`an emulsion with marked instability so that the oil is easily separable from
`the aqueous phase.” Id. at 6:55–56.
`Examples of surfactants used as the oil concentrator in a sample of
`liquid stillage from an ethanol production facility using corn as the source
`material listed in Table 1 of the ’059 patent (id. at 8:50–67) include
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`polyoxyethylene (20) sorbitan monooleate and polyoxyethelene (20)
`sorbitan trioleate with HLBs of 15 and 11, respectively. These oil
`concentrators are observed to be two of “only four of the listed surfactants
`[that] contribute to an enhancement of oil recovery over the benchmark.” Id.
`at 10:4–11.
`Figure 2 of the ’059 patent, below, schematically describes a method
`of extracting oil from an ethanol production byproduct stream referred to as
`“whole stillage”:
`
`
`Figure 2 depicts the process steps in dashed boxes and the byproduct streams
`in solid line boxes. Id. at 4:26–29. According to the ’059 patent,
`centrifugation is commonly used to separate a liquid stillage stream from the
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`whole stillage byproduct stream. Id. at 4:29–32. The prior art also discloses
`mechanical means for obtaining oil from a syrup. Id. at 4:50–51. The
`disadvantage of mechanical separation techniques is that additional energy is
`required to generally increase yield, making the removal inefficient as
`“substantial oil is left within the byproduct streams to maximize the cost-
`benefit of the extraction.” Id. at 2:25–53. Embodiments in the ’059 patent
`describe adding an oil concentrator to the syrup to facilitate separation of the
`oil from the liquid (id. at 4:53–57 (referring to Figure 3)) and adding an oil
`concentrator directly to the whole stillage by product stream prior to
`separation into high solids and liquid stillage byproduct streams (id. at 4:65–
`5:2 (referring to Figure 4)).
`
`
`Illustrative Claims
`C.
`Independent claims 1 and 13 are illustrative of the claims at issue:
`1. A method of extracting oil from a byproduct stream of
`a bio-based ethanol production process, comprising:
`mixing an ethoxylated sorbitan ester with the byproduct
`stream;
`centrifuging the mixture of the ethoxylated sorbitan ester
`and the byproduct stream; and
`separating the oil from the mixture.
`Ex. 1001, 13:25–31.
`13. A method of extracting oil from a liquid stillage
`byproduct of a bio-based ethanol production process,
`comprising:
`evaporating water from the liquid stillage to produce a
`syrup;
`processing the syrup to a temperature between 100°F and
`212°F and a pH between 3 and 7;
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`mixing a polyoxyethylene (20) sorbitan ester with the
`syrup;
`centrifuging the mixture; and
`separating the oil from the mixture.
`Id. at 14:28–39.
`
`
`The Asserted Grounds
`D.
`Petitioner challenges claims 1–16 of the ’059 patent under 35 U.S.C.
`§ 103(a) on the following grounds:
`
`Claims Challenged
`
`References
`
`1–5, 9
`
`13–16
`
`6, 7
`
`8
`
`Winsness,3 Alther,4 Martin,5 and ICI6
`
`Winsness, Alther, Martin, ICI, and Buchold7
`
`Winsness, Alther, Martin, ICI, and Scheimann8
`
`Winsness, Alther, Martin, ICI, Scheimann, and
`Mukerjee9
`
`
`3 Winsness, U.S. Patent App. Pub. No. 2008/0110577 A1, published May
`15, 2008 (Ex. 1012).
`4 George Alther, Put the Breaks On Wastewater Emulsions: Removal of
`Fats, Oil and Greases is Necessary to Recycle Water and Meet Discharge
`Limits, 105 CHEM. ENG’G 3, 82–88 (1998) (Ex. 1007).
`5 Martin et al., U.S. Patent No. 5,283,322, issued Feb. 1, 1994 (Ex. 1010).
`6 ICI AMERICAS INC., THE HLB SYSTEM: A TIME-SAVING GUIDE TO
`EMULSIFIER SELECTION (rev. ed. Mar. 1980) (Ex. 1008).
`7 Buchold et al., U.S. Patent No. 5,558,781, issued Sept. 24, 1996
`(Ex. 1011).
`8 Scheimann et al., U.S. Patent App. Pub. No. 2007/0210007 A1, published
`Sept. 13, 2007 (Ex. 1014).
`
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`Claims Challenged
`
`References
`
`10, 12
`
`Winsness, Alther, Martin, ICI, and Bonanno10
`
`11
`
`1, 6
`
`Winsness, Alther, Martin, ICI, Bonanno, and David11
`
`Bonanno and ICI
`
`2, 3, 10
`
`Bonanno, ICI, and Martin
`
`11
`
`Bonanno, ICI, Martin, and David
`
`Petitioner also relies on the Declaration of David A. Rockstraw, Ph.D., P.E.,
`dated July 14, 2015 (Ex. 1005, “Rockstraw Declaration”).
`
`Claim Interpretation
`E.
`As a first step in our analysis, for purposes of this decision, we
`determine the meaning of the claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b). Under that standard, claim terms are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes that the terms “the oil concentrator” and “adding
`the oil concentrator” recited in dependent claim 8 be construed to mean
`“ethoxylated sorbitan ester” and “mixing the ethoxylated sorbitan ester,”
`
`
`9 Pasupati Mukerjee and Karol J. Mysels, “Critical Micelle Concentrations
`of Aqueous Surfactant Systems,” Nat. Stand. Ref. Data Ser., Nat. Bur.
`Stand. (Feb. 1971) (Ex. 1009).
`10 Bonanno, US 4,702,798, issued Oct. 27, 1987 (Ex. 1006).
`11 David, US 7,309,602 B2, issued Dec. 18, 2007 (Ex. 1013).
`
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`respectively. Pet. 7. Patent Owner does not propose an alternate
`construction in the Preliminary Response.
`We adopt Petitioner’s claim construction for claim 8 because there is
`no debate that is what the terms mean and the prosecution history does not
`suggest a different interpretation. See I.T.S. Rubber Co. v. Essex Rubber
`Co., 272 U.S. 429, 441–42 (1926) (holding that claim construction to correct
`an inadvertent omission “is not in any real sense, a re-making of the claim;
`but is merely giving to it the meaning which was intended by the applicant
`and understood by the examiner.”). Claim 8 ultimately depends from
`claim 1, which recites “ethoxylated sorbitan ester” and “mixing the
`ethoxylated sorbitan ester.” Ex. 1001, 13:27–28. One of ordinary skill in
`the art would understand from the Specification and the prosecution history
`that ethoxylated sorbitan ester is an oil concentrator, and that original claim
`1, which recited as the initial step “applying an oil concentrator to the
`byproduct stream,” was replaced with claim 1 as issued, which specifically
`recites mixing with the byproduct stream an ethoxylated sorbitan ester as the
`oil concentrator. Ex. 1001, 7:57–60, 10:4–13; Ex. 1002, 48, 106, 215.
`Accordingly, for purposes of this decision, we determine that “the oil
`concentrator” recited in claim 8 means the ethoxylated sorbitan ester of
`claim 1 and “adding the oil concentrator” recited in claim 8 means the step
`of mixing ethoxylated sorbitan ester recited in claim 1.
`
`II. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability under
`35 U.S.C. § 103(a) to determine whether Petitioner has met the threshold
`standard of 35 U.S.C. § 314(a). Petitioner challenges the patentability of
`claims 1–16 as obvious in view of Winsness and Alther together with other
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`references. Pet. 8–47. Petitioner additionally challenges claims 1–3, 6, 10,
`and 11 as obvious in view of Bonanno together with other references. Id. at
`47–59. Patent Owner asserts that the Petition’s multiple grounds are
`redundant, that the applied art is cumulative of the prosecution proceeding in
`which Winsness, Bonanno, ICI, and Scheimann were considered, and that
`the claims are distinguishable over the prior art. Prelim. Resp. 2–25. We
`address the parties’ contentions below.
`A. Arguments under 35 U.S.C. § 325(d)
`Patent Owner argues that the Petition should be denied under 35
`U.S.C. § 325(d) because Winsness, Bonanno, ICI, and Scheimann were all
`considered by the Office during prosecution of the ’059 patent. Prelim.
`Resp. 6. Patent Owner contends the references were substantively
`considered during prosecution because the Examiner based an obviousness
`rejection on Bonanno and Scheimann (Ex. 1002, 135–36) and characterized
`Scheimann as the closest prior art of record (id. at 62). Patent Owner also
`argues that Petitioner’s second set of challenges to claims 1, 2, 3, 6, 10, and
`11 based on Bonanno should be denied as redundant because the Petition
`lacks a discussion of their relative strengths. Id. at 4–5.
`We decline to exercise our discretion to deny the Petition under 35
`U.S.C. § 325(d) because Petitioner has provided additional art, arguments,
`declaration evidence, and other information not previously considered by the
`Patent Office. Moreover, we find the grounds based on Bonanno not to be
`redundant in relation to the grounds based on Winsness and Alther because
`Petitioner argues that Bonanno alone contains all of the teachings necessary
`to arrive at claim 1.
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`
`B. Grounds Based on Winsness and Alther
`1. Claim 1
`Regarding claim 1, Petitioner asserts that Winsness teaches a method
`of extracting oil from a byproduct stream resulting from the production of
`ethanol from corn using a centrifuge, that Winsness recognized both an
`efficiency problem, and “using a centrifuge creates an emulsion phase that
`requires further processing.” Pet. 9–10 (citing Ex. 1012 ¶¶ 7, 13–14, 39, 53,
`78–88). Petitioner contends that one of ordinary skill in the art would have
`combined the teachings of Winsness with Alther to solve the emulsion
`problem because both publications identify the emulsion problem, and
`Alther further discloses that emulsion breakers, specifically Polysorbate 80,
`can be added to a centrifugal separator to separate oil from water. Id. at 10
`(citing Ex. 1007, 82, col. 1 ¶ 4, 83, col. 2 ¶ 5, 86, col. 1 ¶¶ 5–6), 13.
`Petitioner further relies on the teaching of Martin that Polysorbate 80
`is an oxyalkylated sorbitan fatty ester also known as Tween 80, a surfactant
`marketed by ICI. Id. at 11 (citing Ex. 1010, 2:47–66). Petitioner also relies
`on the Rockstraw Declaration to explain that Polysorbate 80 is an
`“ethoxylated sorbitan ester” as recited in claim 1 of the ’059 patent because
`ethoxylate means to chemically add an ethoxy group to a compound and a
`fatty acid oleic acid is described as an oleate in its ester form. Id. at 11–12
`(citing Ex. 1005 ¶¶ 81–82). According to Petitioner, Figure 4 of ICI shows
`that when the HLB number varies from the recommended HLB number for
`forming an emulsion, the emulsion stability decreases significantly. Id. at 12
`(citing Ex. 1008, 13, Fig. 4). Petitioner asserts that one of ordinary skill in
`the art would recognize that polyoxyethylene sorbitan fatty acid esters sold
`under the tradename TWEEN would increase the water/corn oil separation,
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`thus, there was more than a reasonable expectation of success in using the
`Polysorbate 80 listed in Alther for increasing the water/oil separation of a
`byproduct stream in a centrifuge to solve the problem recognized by
`Winsness. Id.
`Patent Owner contends that Petitioner has not identified a reason to
`combine Winsness with Alther because Winsness alone solves the alleged
`problem. Prelim. Resp. 9. According to Patent Owner, Winsness only
`describes a mechanical (centrifugal) means for oil recovery using a disk
`stack centrifuge, which separates oil and water “‘in an efficient and effective
`manner,’” and its process “results in a syrup ‘which is substantially free of
`oil.’” Id. at 10 (quoting Ex. 1012 ¶¶ 40, 45). Patent Owner also contends
`that Alther addresses an entirely different problem than the one solved by
`Winsness because Alther is directed to handling emulsions in wastewater
`treatment facilities rather than separating corn oil from corn stillage. Id.
`Patent Owner further contends that Alther lists many strategies for emulsion
`breaking, but none involve using the chemicals recited in the ’059 patent
`claims. Id. at 12 (citing Ex. 1007, 84, col. 2). Rather, Patent Owner asserts
`that Alther identifies centrifuges as a means for breaking emulsions, which
`would be inconsistent with Winsness’s teaching that spinning thin stillage
`with a centrifuge creates an emulsion phase. Id. at 14 (citing Ex. 1007, 86,
`col. 1). Additionally, Patent Owner contends that Petitioner has not
`established that the emulsion is strongly lipophilic in Winsness to warrant
`the use of the surfactant Polysorbate 80 as taught in Alther. Id. at 16.
`According to Patent Owner, Alther teaches that surfactants such as
`Polysorbate 80 are undesirable, and should be used only in specific
`circumstances. Id. at 15 (citing Ex. 1007, 84, col. 1, 86, col. 3, 88, col. 3).
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`
`Patent Owner also contends that Martin and ICI do not cure the
`argued deficiencies of Winsness and Alther. Id. at 17. According to Patent
`Owner, Martin is simply directed to dewatering gluten, and does not disclose
`an emulsion or an organic liquid phase to be separated from an aqueous
`liquid phase. Id. at 17–18. Regarding ICI, Patent Owner asserts that it
`teaches how to form emulsions using HLB information, not how to break
`emulsions. Id. at 19. Patent Owner further asserts that ICI teaches making
`an emulsion is not simple, not dependent on HLB alone, and oil recovery
`actually decreased at the highest HLB values according to Table 1 of the
`’059 patent; therefore, one of ordinary skill in the art would not have
`focused only on surfactants that have an HLB value higher than the
`recommended HLB for an emulsion based on corn oil. Id. at 19–21 (citing
`Ex. 1008, 3, col. 1, 9, col. 1; Ex. 1001, Table 1).
`On this record, we find reasonable Petitioner’s asserted rationale that
`a person of ordinary skill in the art would have combined Winsness’s
`process for recovering oil from a corn to ethanol byproduct stream with
`Alther’s teachings regarding adding an emulsion breaker to a centrifugal
`separator in view of Winsness’s observation that centrifuging creates an
`emulsion and the need for further processing. See Pet. 10. At this stage of
`the proceeding, we credit Dr. Rockstraw’s testimony that Winsness
`recognizes that an emulsion phase is created in a centrifuge used to recover
`oil from the byproducts of a corn to ethanol production. Ex. 1005 ¶ 78
`(citing Ex. 1012 ¶ 7). We are not persuaded that the centrifuge process of
`Winsness “solved the problem” as asserted by Patent Owner based on its
`resulting in a syrup “which is substantially free of oil” (Ex. 1012 ¶ 45). See
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`Prelim. Resp. 9. “Substantially free of oil” alone does not reflect the
`absence of an emulsion state or the absence of oil.
`We also credit Dr. Rockstraw’s testimony, on this record, that Alther
`discloses that unwanted emulsions can be avoided if emulsions are broken
`and, specifically, that emulsion breakers such as Polysorbate 80 can be
`added to a centrifugal separator. Ex. 1005 ¶ 79 (citing Ex. 1007, 82 col. 1
`¶ 4, 86 col. 1 ¶¶ 6, 7). We are not persuaded that Alther addresses a
`different problem than that identified by Winsness and the ’059 patent,
`namely the handling of emulsions in order to remove oil. See Prelim. Resp.
`10. Although Alther is not directed to separating corn oil from corn stillage
`explicitly, it is directed to the removal of emulsions and oils in waste from
`production operations that use surfactants. Ex. 1007, 82 col 1 ¶ 1 (“The
`removal of emulsions, a major constituent of which are fats, oils and greases
`(FOGs), is necessary to prevent them from depositing on pipes and fouling
`filtration media.”), 84 col. 1 ¶ 2 (“Surfactants are essential components of
`formulations for processing textiles, pulp and paper, and detergents.”). We
`also are not persuaded at this stage of the proceeding that one of ordinary
`skill in the art would not understand the disclosures in Alther of adding a
`chemical to a centrifugal separator, and Polysorbate 80 specifically for
`breaking an emulsion, as identifying a strategy for emulsion breaking using
`chemicals recited in the ’059 patent claims. See Prelim. Resp. 12–17.
`Patent Owner is correct that Alther discloses many emulsion-breaking
`options including physical separation methods, however, a prior art
`reference may be relied upon for all that it would have reasonably suggested
`to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874
`F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
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`multitude of effective combinations does not render any particular
`formulation less obvious.”).
`Patent Owner contends that Petitioner’s arguments based on Alther
`rely on impermissible hindsight because the portion of Alther which
`discusses the hydrophile vs. lipophile balance (“HLB”) of emulsifiers is not
`in the portion of the article with the subheading “emulsion breaking.” See
`Prelim. Resp. 14. As a whole, Alther is about emulsion breaking strategies
`and considerations as reflected in the title of the article, “Put the Breaks On
`Wastewater Emulsions: Removal of Fats, Oil and Greases is Necessary to
`Recycle Water and Meet Discharge Limits,” and the first sentence beginning
`“[e]mulsions in wastewater pose a vexing problem for facilities . . . .”
`Moreover, in the HLB section of Alther, HLB is expressly identified as a
`factor in breaking emulsions. Ex. 1007, 83 col. 2 ¶ 1 (“A key consideration
`in the formulation of emulsions and, therefore, a factor in determining how
`they can be broken –– is the hydrophile vs. lipophile balance (HLB) of
`emulsifiers.”) Therefore, in view of the current record, we are not persuaded
`that Petitioner’s obviousness grounds based on the combination of Winsness
`and Alther are flawed due to impermissible hindsight.
`Patent Owner is correct that Martin is directed to dewatering corn
`gluten in grain processing and that ICI is about forming emulsions.
`However, distinguishing the references individually does not persuade us
`that the teachings of Martin and ICI are improperly relied upon in the
`Petition to identify the Polysorbate 80 disclosed in Alther as an ethoxylated
`sorbitan ester, as recited in independent claim 1, and its properties and use in
`grain processing prior to centrifuging as a means to reduce fouling of the
`centrifuge nozzles and bowl. At this stage in the proceeding, we credit
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`Dr. Rockstraw’s testimony that, based on its properties and prior use, one of
`ordinary skill in the art would have reasonably expected that the use of
`Polysorbate 80 would have significantly decreased the emulsion stability of
`corn oil and thereby promoted the water/corn oil separation of corn stillage
`in a centrifuge. See Ex. 1005, 68–72, 84–87.
`Accordingly, we are persuaded that, on this record, Petitioner
`demonstrates a reasonable likelihood of succeeding in demonstrating that
`claim 1 of the ’059 patent would have been obvious in view of the
`combination of Winsness, Alther, Martin, and ICI.
`2. Claims 2–16
`Petitioner relies on Martin’s further disclosure that the Tween label
`surfactants are polyoxyethylene 20 sorbitan R surfactants with R being a
`fatty acid moiety to show that claim 2 would have been obvious over the
`same combination set forth with respect to claim 1. Pet. 13–15. Similarly,
`Petitioner relies on the disclosure in Martin that when R is a monooleate, the
`material is Tween 80 to show that claim 3, which recites “the ethoxylated
`sorbitan ester is polyoxyethylene (20) sorbitan monooleate,” also would
`have been obvious over the same combination. Id. at 16–17. Claims 4 and 5
`recite “polyoxyethylene (20) sorbitan trioleate” and “polyoxyethylene (20)
`sorbitan tristearate,” which Petitioner shows are known as Tween 85 and
`Tween 60, respectively. Id. at 17–22 (citing Ex. 1010, 2:49–3:4). Petitioner
`contends that the substitution of Tween 85 or Tween 60 for Tween 80 would
`have been obvious in view of the disclosure of Tween 80 in Alther, the
`disclosure in Martin of Tween label surfactants being polyoxyethylene 20
`sorbitan R surfactants (with R being a fatty acid moiety), and the disclosure
`in ICI of decreased stability with varying the HLB number away from the
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`recommended HLB number for stability, with Tween 85 having an HLB of
`11 and Tween 60 having an HLB of 10.5, compared to the recommended
`HLB of 10 for corn oil. Id. (citing Ex. 1005 ¶¶ 61, 68–72, 84–86, 93–107,
`Ex. 1010, 2:49–3:4; Ex. 1008, 2, 3, 6, Table 2A).
`Petitioner asserts that Winsness discloses drying the byproduct stream
`after the oil separating step to produce a distillers dried grains product
`suitable for animal feed as required by claim 9. Id. at 22–23 (citing Ex.
`1012 ¶¶ 10, 58).
`Regarding independent claim 13, Petitioner contends that evaporating
`water from liquid stillage to produce a syrup and processing the syrup to a
`temperature between 100ºF and 212ºF and a pH between 3 and 7 before
`centrifuging and separating the oil as required by the claim, is disclosed by
`Winsness. Id. at 25 (citing Ex. 1012 ¶¶ 39, 40). Petitioner further contends
`it would have been obvious to one of ordinary skill in the art to modify the
`process of Winsness with the disclosure in Alther to add Polysorbate 80 to
`break an emulsion because Winsness recognizes emulsions formed in the
`centrifuge is a problem. Id. (citing Ex. 1012 ¶ 7). In view of Martin,
`Polysorbate 80 is a polyoxyethylene (20) sorbitan ester as recited in claim
`13. Id. at 27 (citing Ex. 1010, 2:47–66; Ex. 1005 ¶¶ 81–82). Because Alther
`discloses adding that chemical to the centrifuge to break an emulsion, ICI
`discloses the HLB of Polysorbate 80 (15) compared to the recommended
`value for corn oil (10) would decrease the emulsion stability of corn oil and
`water, and Buchold teaches adding polyethylene-sugar-fatty acid–esters (and
`particularly Tween 20 to Tween 85) before or during separation in a
`centrifuge, Petitioner asserts it would have been obvious to combine the
`teachings to promote the water/corn oil separation of corn stillage in the
`
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`method of Winsness. Id. at 27–28. According to Petitioner, ICI
`demonstrates “there was a more than reasonable expectation of success” at
`the time of the ’059 patent in using Alther’s Polysorbate 80 for increasing
`the water/oil separation of syrup in a centrifuge to solve the problem
`identified by Winsness. Id. at 28 (citing Ex. 1008, 3, 6, Table 2A, 13, Fig. 4;
`Ex. 1005 ¶¶ 68–72, 119).
`Claims 14, 15, and 16 each depend from claim 13 and further require
`that the sorbitan ester includes polyoxyethylene (20) sorbitan monooleate,
`polyoxyethylene (20) sorbitan trioleate, and polyoxyethylene (20) sorbitan
`tristearate, respectively. Ex. 1001, 14:40–46. Petitioner proffers the same
`arguments made with respect to dependent claims 3, 4, and 5 that the recited
`sorbitan esters are known from the disclosures of Alther and Martin as
`Tween 80, Tween 85, and Tween 60, and would have predictably
`demulsified an emulsion of corn oil and water in view of their relative HLB
`values, compared to corn oil and water and the disclosures of ICI. Pet. 30–
`36.
`
`Regarding claim 6, which requires that the byproduct stream includes
`an “aqueous liquid byproduct stream with dissolved solids,” Petitioner
`asserts that “one skilled in the art would understand that the thin stillage
`process in Winsness includes ‘dissolved solids’” because Scheimann
`confirms that thin stillage has dissolved solids. Id. at 37 (citing Ex. 1014,
`Abstr., ¶ 5). Regarding claim 7, Petitioner contends that Winsness identifies
`the processing of thin stillage and concentrating it to syrup as recited in the
`claim. Id. at 38 (citing Ex. 1012 ¶¶ 7, 44). Regarding the concentration of
`ethoxylated sorbitan ester required by claim 8 as construed above, Petitioner
`contends that Mukerjee explains the concept of a critical micelle
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`concentration (CMC) of a surfactant as a point at which thermodynamic
`activity levels off. Id. at 39–40 (citing Ex. 1018, 5, col. 1 ¶ 2). Petitioner
`asserts that one of ordinary skill in the art would have sought to use only as
`much chemical as necessary to avoid waste, and therefore it would have
`been within their level of skill to apply this concept. Id. at 39–41.
`Regarding claims 10, 11, and 12, which claim the organic
`composition produced by the method of claim 1, Petitioner asserts that
`Bonanno teaches the advantages of residual surfactant in the organic
`composition as required by claim 10. Id. at 44 (citing Ex. 1006, 4:44–50
`(“The small amount of surfactant that is left on the dry product solids will
`tend to improve their reconstitutability when added to water.”)). Petitioner
`also asserts that Winsness teaches using whole stillage leftover from
`deriving ethanol and David teaches where to obtain the whole stillage ––
`that is whole stillage remaining from a distillation bottom as required by
`claim 11. Id. at 46–47 (citing Ex. 1012 ¶¶ 39, 43; Ex. 1013, 9:30–31
`(“whole stillage can be withdrawn from the bottom of the distillation unit.”))
`Regarding claim 12, Petitioner asserts that Winsness discloses concentrating
`thin stillage to syrup and centrifuging the syrup to recover oil as required by
`claim 12, and “[o]ne skilled in the art would have been motivated to mix the
`polysorbate emulsion breaker of Alther into the thin stillage or syrup of
`Winsness to solve the problem of forming an emulsion phase in the
`centrifuge,” as discussed in connection with claim 1. Id. at 45 (citing
`Ex. 1012 ¶ 44; Ex. 1007, 86, col. 1 ¶¶ 5–6; Ex. 1005 ¶¶ 53–59, 144–147).
`We are persuaded that, on this record, Petitioner establishes a
`reasonable likelihood of succeeding in demonstrating that claims 2–16 of the
`’059 patent would have been obvious in view of the combination of
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`Winsness, Alther, Martin, and ICI alone or together with Buchold,
`Scheimann, Mukerjee, Bonanno, and/or David.
`
`
`C. Grounds Based on Bonanno
`Claims 1 and 6
`1.
`Petitioner contends that claims 1 and 6 would have been obvious over
`the combination of Bonanno and ICI, because “Bonanno itself contains all of
`the teachings necessary to lead one skilled in the art to arrive at Claim 1,” as
`well as, “an aqueous liquid byproduct stream with dissolved solids” as
`recited by dependent claim 6, while ICI supports “a finding that there was
`more than a reasonable expectation of success in applying the teachings of
`Bonanno to arrive at the [claimed method].” Pet. 48, 52–53.12 According to
`Petitioner, Bonanno discloses a method of oil extraction from a byproduct
`stream of a corn to ethanol process. Id. at 48 (citing Ex. 1006, 2:29–30,
`Fig. 3 (564)). Petitioner asserts that both Examples I and II of Bonanno
`describe adding a surfactant to corn stillage, and Bonanno also discloses
`using in the process as surfactants polyoxyethylene sorbitan fatty acid esters
`sold under the tradename Tween by ICI. Id. at 49 (citing Ex.1006, 2:22–26,
`5:8–10, 8:55–60, 16:49–60, Fig. 3). Petitioner contends that Bonanno
`teaches centrifuging the byproduct stream and surfactant (id. at 49–50 (citing
`Ex. 1006, 12:22–26, 14:8–14, Figs. 3, 6)) and separating out oil (id. at 50
`(citing Ex. 1006, 15:29–32)). Petitioner also asserts that Bonanno’s
`disclosure of “a stream of aqueous solids in solution or dispersion containing
`
`
`12 We understand the reference to claim 10 on page 53 of the Petition to be a
`typographical error because the heading, claim chart, and paragraph that
`precede it all refer to claim 6, not claim 10.
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`a natural oil” meets the claim 6 requirement of “an aqueous liquid byproduct
`stream with dissolved solids.” Id. at 52–53 (citing Ex. 1006, 12:22–24).
`Petitioner further contends that ICI shows there was a reasonable
`expectation of success at the time of the invention in using the Tween
`surfactants to extract oil from corn stillage becaus
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