Paper 34
`Entered: May 21, 2015
`
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`Trials@uspto.gov
`571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUTAMAX ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00142
`Patent 8,193,402 B2
`
`
`
`Before SHERIDAN K. SNEDDEN, CHRISTOPHER L. CRUMBLEY, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Entered: May 21, 2015
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUTAMAX ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00142
`Patent 8,193,402 B2
`
`
`
`Before SHERIDAN K. SNEDDEN, CHRISTOPHER L. CRUMBLEY, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
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`IPR2014-00142
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`I. INTRODUCTION
`Butamax Advanced Biofuels LLC (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–23 of U.S. Patent No. 8,193,402 B2 (“the ’402
`patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Gevo, Inc. (“Patent
`Owner”) did not file a preliminary response to the Petition. On May 22, 2014, we
`instituted trial for challenged claims 1–17 and 1923 on the following grounds of
`unpatentability asserted by Petitioner:
`Challenged Claim[s]
`Basis
`1–10, 12, 15–17, 1920, 2223 § 102(e) D’Amore1
`1–10, 12, 15–17, 1920, 2223 § 103(a) D’Amore and ASTM D48142
`§ 103(a) D’Amore, Wilke,3 and ASTM D4814
`11
`§ 103(a) D’Amore and ASTM D9754
`13
`§ 103(a) D’Amore and ASTM D16555
`14
`§ 103(a) D’Amore and D9106
`21
`
`Reference[s]
`
`Decision to Institute (Paper 13, “Dec.”).
`After institution of trial, the Patent Owner filed a Patent Owner Response
`
`1 D’Amore, US 2008/0132741 A1, published June 5, 2008. Ex. 1003.
`2 ASTM Standard D4814, “Standard Specification for Automotive Spark-Ignition
`Engine Fuel,” ASTM International, West Conshohocken, PA, Sept. 2007, available
`at http://www.astm.org (“ASTM D4814”). Ex. 1014.
`3 Wilke, US 4,359,533, issued Nov. 16, 1982 . Ex. 1006.
`4 ASTM Standard D975, “Standard Specification for Diesel Fuel Oils,” ASTM
`International, West Conshohocken, PA, Aug. 2007, available at
`http://www.astm.org (“ASTM D975”). Ex. 1015.
`5 ASTM Standard D1655, “Standard Specification for Aviation Turbine Fuels,”
`ASTM International, West Conshohocken, PA, July 2007, available at
`http://www.astm.org (“ASTM D1655”). Ex. 1017.
`6 ASTM Standard D910, “Standard Specification for Aviation Gasolines,” ASTM
`International, West Conshohocken, PA, Aug. 2007, available at
`http://www.astm.org (“ASTM D910”). Ex. 1016.
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`(Paper 20, “PO Resp.”), to which Petitioner filed a Reply (Paper 22, “Reply”).
`Petitioner relies upon the Declarations of Dr. Joseph T. Joseph (Exs. 1030
`and 1040) in support of its Petition.
`Oral argument was conducted on January 14, 2015. A transcript is entered
`as Paper 33 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). In this Final Written Decision,
`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we determine
`Petitioner has shown by a preponderance of the evidence that claims 1–17 and
`1923 of the ’402 patent are unpatentable.
`
`A. Related Proceedings
`Petitioner informs us of no related litigations. Pet. 2. Concurrent with the
`present inter partes review, Petitioner also requested review of, and the Board
`instituted trial on, the following claims in patents in the same family as the ’402
`patent: claims 1–21 of U.S. Patent No. 8,378,160, Case IPR2014-00143 (PTAB
`May 22, 2014) (Paper 9); claims 1–14 and 16–19 of U.S. Patent No. 8,487,149,
`Case IPR2014-00144 (PTAB May 22, 2014) (Paper 9); and claims 1–21 of US
`Patent No. 8,546,627, Case IPR2014-00250 (PTAB May 22, 2014) (Paper 8).
`Additionally, Petitioner requested review of, and the Board instituted trial on,
`claims 1–15 of unrelated U.S. Patent No. 8,373,012 in IPR2014-00402 (PTAB
`August 8, 2014) (Paper 11).
`
`B. The ’402 patent (Ex. 1001)
`Transportation fuels are defined as mixtures of typically aliphatic and
`(optionally) aromatic hydrocarbons that meet a collection of physical properties
`and requirements, as defined in standards such as ASTM D4814 (gasoline), ASTM
`D975 (diesel fuel), ASTM D910 (aviation gasoline), and ASTM D1655 (jet fuel).
`Ex. 1001, 12:15–17:25. Gasoline, for example, is defined not by its composition,
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`but by its ability to function in a spark ignition engine according to properties
`defined by ASTM D4814. Id. at 11:36–43. Such properties include vapor
`pressure, energy density, octane number, water solubility, thermal oxidation
`stability, gum content, and drivability. Id. at 15:27–45. The properties of gasoline
`can be adjusted by modifying the amounts and types of organic molecules that
`make up the gasoline. Id. For example, the octane number of a gasoline mixture
`can be raised by adding high octane components. Id.
`The ’402 patent, titled “Renewable Compositions,” describes methods for
`making renewable hydrocarbons. Id. at 3:62–4:59. The methods involve
`preparing a feedstock from a biomass to serve as a carbon source. Id. at 6:47–7:13.
`The feedstock is fermented with microorganisms to form C2–C6 alcohols. Id. at
`3:65–67. The alcohols are dehydrated to form C2–C6 olefins (alkenes). Id. at
`4:1–3. The olefins are reacted with an oligomerization catalyst to form more
`highly alkylated aromatic hydrocarbons, for example, C6–C24 unsaturated
`oligomers. Id. at 4:5–8 and 9:62–10:9. The dehydration step and oligomerization
`step may be carried out separately or combined into a single process. Id. at 20:35–
`41. The olefins are then reduced to heat-stable saturated hydrocarbons in a
`hydrogenation reaction. Id. at 23:53–59. The ’402 patent discloses that the
`compositions produced according to the methods of the patent meet the fuel-
`defining ASTM International specifications. Id. at 18: 26–38.
`
`C. Illustrative Claim
`Claim 1 is the only independent claim of the ’402 patent, and is reproduced
`below:
`1. A process for preparing renewable hydrocarbons comprising:
`
`(a)
`treating biomass to form a feedstock;
`
`(b)
`fermenting the feedstock with one or more species of
`microorganism, thereby forming one or more C2–C6 alcohols;
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`dehydrating at least a portion of the one or more C2–C6
`(c)
`
`alcohols obtained in step (b), thereby forming a product comprising
`one or more C2–C6 olefins;
`
`(d)
`isolating the one or more C2–C6 olefins;
`
`(e)
`oligomerizing at least a portion of the one or more C2–C6
`olefins isolated in step (d), thereby forming a product comprising one
`or more C6-C24 unsaturated oligomers; and
`
`(f)
`hydrogenating at least a portion of the product of step (e)
`in the presence of hydrogen, thereby forming a product comprising
`one or more C6–C24 saturated alkanes;
`whereby the product of step (f) itself meets the requirements of
`at least one of ASTM D4814, ASTM D975, ASTM D910, or ASTM
`D1655, or a blend of at least 10% of the product of step (f) with a
`mixture of hydrocarbons meets the requirements of at least one of
`ASTM D4814, ASTM D975, ASTM D910 or ASTM D1655.
`
`Id. at 62:11–33.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`We interpret 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);
`see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015)
`(“Congress implicitly adopted the broadest reasonable interpretation standard in
`enacting the AIA,” and “the standard was properly adopted by PTO regulation.”).
`Under that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary skill
`in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`We interpret the following claim terms of the challenged claims as part of
`our analysis.
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`1. “whereby the product of step (f) itself meets the requirements of at
`least one of ASTM D4814 . . . .”
`Challenged claims 112, 1517, 1920, and 2223 require products
`produced by the claimed method to meet requirements of certain standards
`developed by ASTM International, such as ASTM D4814, which is the standard
`specification for gasoline. Ex. 1014. Petitioner contends that the Patentee of the
`’402 patent acted as his own lexicographer by expressly disavowing ASTM
`D4814’s distillation curve as a requirement for gasoline produced by the claimed
`process. Pet. 12–14. Petitioner directs our attention to the following portion of the
`’402 patent:
`The distillation curve of a gasoline mixture is measured using ASTM
`method D86, and the specification is calibrated by how the typical
`hydrocarbon mixtures that comprise gasoline behave in an engine.
`When a substantial amount of the hydrocarbon component in a
`gasoline mixture is replaced with a different type of organic
`compound, i.e. an alcohol such as n-butanol or isobutanol, the
`distillation curve will differ from what is specified in ASTM D4814,
`even though the blend has similar, if not identical, engine performance
`compared to unblended gasoline. For this reason, the distillation
`curve specification is not used to describe the gasoline compositions
`of the present invention.
`
`Ex. 1001, 15:62–16:6 (emphasis added).
`
`Patent Owner does not address claim construction or Petitioner’s contention
`regarding the ’402 patent disavowing ASTM D4814’s distillation curve as a
`requirement for gasoline produced by the claimed process.
`We agree with Petitioner that the above disclosure in the ’402 patent
`amounts to an express disavowal of ASTM D4814’s distillation curve as a
`requirement for products produced according to the method of challenged claims
`112, 1517, 1920, and 2223.
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`B. Principles of Law
`To prevail in its challenges to the patentability of the claims, a petitioner
`must establish facts supporting its challenges by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
`§ 102 if a prior art reference discloses every limitation of the claimed invention,
`either explicitly or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047
`(Fed. Cir.1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`(Fed. Cir. 1999) (holding that “[t]o anticipate, a single reference must teach every
`limitation of the claimed invention,” and any limitation not taught explicitly must
`be taught inherently and would be so understood by a person experienced in the
`field); In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (the
`dispositive question is “whether one skilled in the art would reasonably understand
`or infer” that a reference teaches or discloses all of the elements of the claimed
`invention).
`The principle of inherency, in the law of anticipation, requires that any
`information missing from the reference would nonetheless be known to be present
`in the subject matter of the reference, when viewed by persons experienced in the
`field of the invention. We note, however, that “anticipation by inherent disclosure
`is appropriate only when the reference discloses prior art that must necessarily
`include the unstated limitation, [or the reference] cannot inherently anticipate the
`claims.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed.
`Cir. 2002) (internal citation omitted); see Hitzeman v. Rutter, 243 F.3d 1345, 1355
`(Fed. Cir. 2001) (“consistent with the law of inherent anticipation, an inherent
`property must necessarily be present in the invention described by the count, and it
`must be so recognized by persons of ordinary skill in the art”) (citations omitted);
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (that a feature in the prior art
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`reference “could” operate as claimed does not establish inherency). Thus, when a
`claim limitation is not set forth explicitly in a reference, evidence “must make clear
`that the missing descriptive matter is necessarily present in the thing described in
`the reference, and that it would be so recognized by persons of ordinary skill.”
`Continental Can Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (citations omitted).
`It is not sufficient if a material element or limitation is “merely probably or
`possibly present” in the prior art. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295
`F.3d 1292, 1295 (Fed. Cir. 2002) (citations omitted); see W.L. Gore & Assocs., Inc.
`v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (anticipation “cannot be
`predicated on mere conjecture respecting the characteristics of products that might
`result from the practice of processes disclosed in references”) (citation omitted); In
`re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (to anticipate, the asserted inherent
`function must be present in the prior art).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
`the subject matter sought to be patented and the prior art are such that the subject
`matter as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
`resolved on the basis of underlying factual determinations, including: (1) the scope
`and content of the prior art; (2) any differences between the claimed subject matter
`and the prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`We analyze the instituted grounds of unpatentability in accordance with the
`above-stated principles.
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`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the time, it
`was made; we consider the level of ordinary skill in the pertinent art at the time of
`the invention. Graham v. John Deere, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of maintaining
`objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d
`714, 718 (Fed. Cir. 1991).
`Petitioner contends that a person of ordinary skill in the art at the time of the
`’402 patent would have a Ph.D. in Chemistry, Chemical Engineering, or a similar
`related discipline and would have experience in organic chemistry and/or fuel
`chemistry, as well as transportation fuel production. Pet. 4 (citing Ex. 1030 ¶ 16).
`Petitioner argues, in the alternative, that a person of ordinary skill in the art would
`have a Bachelor’s degree in Chemistry, Chemical Engineering, or a similar related
`discipline and substantial experience in an industry involving organic chemistry
`and/or fuel chemistry, as well as transportation fuel production. Id. Patent Owner
`states that one of ordinary skill in the art at the time of the ’402 patent would have
`a Ph.D. in Chemistry, Chemical Engineering, or a similar related discipline and
`would have experience in fuel chemistry. Tr. 42:21–43:12.
`Based on our review of the ’402 patent and the types of problems and
`solutions described in the ’402 patent and cited prior art, we conclude a person of
`ordinary skill in the art at the time of the ’402 patent would have a Ph.D. in
`Chemistry, Chemical Engineering, or a similar related discipline and some
`experience in an industry involving organic chemistry and/or fuel chemistry.
`Based on the stated qualifications of Joseph T. Joseph, Ph.D. (Ex. 1030 ¶¶ 9–14)
`and his Curriculum Vitae (Ex. 1035), Petitioner’s declarant meets the requirements
`of this definition. We further note that the applied prior art reflects the appropriate
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`level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`
`D. Alleged Anticipation of Claims 1–10, 12, 15–17, 1920, 22, and 23 by
`D’Amore
`Petitioner contends D’Amore anticipates, under 35 U.S.C. § 102(e), claims
`1–10, 12, 15–17, 1920, 22, and 23 of the ’402 patent. Pet. 19–42. For the
`following reasons, we determine Petitioner has not shown by a preponderance of
`the evidence that claims 1–10, 12, 15–17, 1920, 22, and 23 are unpatentable
`under 35 U.S.C. § 102(e).
`1. Overview of D’Amore
`D’Amore describes an invention useful for the production of intermediate
`compounds used in transportation fuels such as gasoline. Ex. 1002 ¶ 20.
`Specifically, D’Amore discloses producing isobutanol (a C2–C6 alcohol) by
`culturing microorganisms in the presence of carbohydrates. Ex. 1003 ¶¶ 23, 56.
`D’Amore specifically teaches converting isobutanol into butene (a C2–C6 olefin) in
`the presence of a catalyst (id. ¶ 56, Fig. 1) and converting dimerized butene into
`isooctene (id. ¶¶ 64, 76). Recovered isooctene can be reacted with a hydrogenation
`catalyst to produce isooctane. Id. ¶¶ 57, 64, 76. D’Amore discloses that isooctane
`produced by the disclosed processes is useful as an additive to transportation fuels,
`such as gasoline. Id. at Abstract and ¶¶ 20, 64, 76.
`2. Analysis
`a. D’Amore Qualifies as 102(e) Prior Art
`D’Amore was filed on June 13, 2007, published on June 5, 2008, and claims
`priority to U.S. Provisional Application No. 60/814,137 (“the ’137 application”),
`filed on June 16, 2006. See Ex. 1004. The disclosure in the ’137 application
`(Ex. 1004) is the same disclosure found in D’Amore (Ex. 1003). Ex. 1030 ¶ 46.
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`Thus, we conclude that D’Amore qualifies as prior art to the claims of the ’402
`patent under 35 U.S.C. § 102(e) as of the ’137 application’s filing date of June 16,
`2006.
`
`b. Independent Claim 1
`Petitioner contends D’Amore, as summarized in the overview above,
`discloses each limitation of independent claim 1 of the ’402 patent, except that
`D’Amore does not disclose explicitly that its products (e.g., isooctane) meet the
`requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or
`ASTM D1655, as recited in claim 1. Pet. 1725. Petitioner contends, however,
`that the isooctane of D’Amore necessarily meets the requirements of, for example,
`ASTM D4814, without blending. Id. at 2425; see Tr. 9:1–10:3. According to
`Petitioner, the product of D’Amore’s process could contain up to 30%
`contamination with isobutene and the mixture would still meet the standards in
`ASTM D4814. Tr. 9:1–18; Ex. 1040 ¶¶ 17–18.
`Petitioner relies on two Declarations from Dr. Joseph to support its position.
`See Exs. 1030, 1040. Dr. Joseph testifies that isooctane, a product of D’Amore’s
`disclosed processes, meets the following criteria set forth in ASTM D4814: (i) the
`maximum vapor pressure of ASTM D4814 Table 1 (Ex. 1030 ¶¶ 50–51); (ii) the
`lead content maximum, copper strip corrosion maximum, silver strip corrosion
`maximum, solvent-washed gum content maximum, sulfur % mass maximum,
`oxidation stability minimum, and water tolerance of ASTM D4814 (id. ¶¶ 53–56);
`(iii) the vapor/liquid maximum ratio of ASTM D4814 Table 3 (id. ¶¶ 57–60); (iv)
`the “Workmanship” requirements of ASTM D4814 (id. ¶ 61); and (v) the
`antiknock requirements of ASTM D4814 (id. ¶ 62). Dr. Joseph also testifies that
`D’Amore’s process necessarily would result in the production of isooctane free of
`lower molecular weight hydrocarbons, such as isobutene, and the recovered
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`isooctane would meet the requirements of ASTM D4814 on its own. Ex. 1040
`¶¶ 11–12. Dr. Joseph opines that a person of skill in the art would not be
`concerned by the presence of “contaminating” isobutene and that the isooctane
`produced by D’Amore’s process still necessarily would meet the requirements of
`ASTM D4814 on its own or when blended, even if contaminating amounts
`isobutene were present. Id. ¶ 14.
`Patent Owner disagrees with Petitioner’s characterization of D’Amore and
`argues that D’Amore does not disclose, directly or inherently, a process for
`producing (1) “renewable hydrocarbons” which meet the requirements of at least
`one of ASTM D975, ASTM D910, or ASTM D1655, or (2) a blend of at least 10%
`of the product renewable hydrocarbons produced by the claimed process which
`meet the requirements of at least one of ASTM D975, ASTM D910, or ASTM
`D1655. PO Resp. 4–7. Additionally, Patent Owner argues that the isooctane
`produced by D’Amore may not be of sufficient purity to meet the standards of
`ASTM D4814, in particular. Id. at 5. According to Patent Owner,
`the process of D’Amore may just as readily produce isooctene having
`sufficiently high, e.g., isobutene or other low molecular weight alkene
`content, whereby after hydrogenation the isooctane produced contains
`enough lower molecular weight hydrocarbons such that it fails to
`meet, e.g., (i) the maximum vapor pressure standard of ASTM D4814
`Table 1. For example, a fuel meeting the requirements of ASTM
`D4814 (distillation class AA) can have a maximum vapor pressure of
`54 kPa. Isobutane has a vapor pressure of 760 mm Hg (101.325 kPa)
`at –11.7ºC. Thus, even the presence of a small amount of, e.g.,
`isobutane in the isooctane allegedly provided by the process of
`D’Amore could result in a product that itself fails to meet the
`requirements of, e.g., ASTM D4814 . . . .
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`Id. at 56 (citing Ex. 1003, 74–76; Ex. 1004, Table 1). Patent Owner concludes
`that D’Amore’s failure necessarily and inevitably to produce a product that meets
`claim 1 prohibits a finding that D’Amore inherently anticipates claim 1. Id. at 6–7.
`We are unpersuaded by Petitioner’s argument that isooctane produced by the
`process disclosed in D’Amore necessarily and inherently meets the specifications
`in ASTM D4814 as required in the “whereby” clause of claim 1. Pet. 24; Ex.
`1001, 59:52–57. Although we credit the testimony of Dr. Joseph regarding the
`characteristics of pure isooctane and the impact of certain impurities on whether
`isooctane would meet the criteria set forth in ASTM D4814, we find insufficient
`support for Dr. Joseph’s statement that “D’Amore’s process would necessarily
`result in the production of isooctane free of lower molecular weight hydrocarbons,
`such as isobutane.” Ex. 1040 ¶ 11. Dr. Joseph’s testimony appears to be directed
`to the characteristics of pure isooctane (Tr. 7:16–20), however, D’Amore does not
`disclose the purity level of the isooctane produced by its process. Ex. 1003 ¶ 76.
`Despite the testimony provided by Dr. Joseph, we have insufficient information to
`determine how much isooctene is converted in D’Amore to isooctane. Ex. 1030
`¶¶ 42–47; Ex. 1040 ¶¶ 10–11. Furthermore, we have insufficient evidence to
`determine (1) what low molecular weight hydrocarbons may result from
`D’Amore’s process or (2) the level of other low molecular weight hydrocarbons
`that may be present. The missing crucial link in Petitioner’s analysis is the
`difference between pure isooctane as discussed by Dr. Joseph and the products
`possibly produced in D’Amore. Thus, we conclude that Petitioner has not carried
`its burden to show that D’Amore’s product is pure isooctane, that the only possible
`contaminant is isobutene, that the isobutene is less than 30%, or that D’Amore’s
`product has the exact properties as discussed by Dr. Joseph.
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`Accordingly, we find that Petitioner has not shown by a preponderance of
`the evidence that claim 1 is anticipated under 35 U.S.C. § 102(e) by D’Amore.
`c. Dependent Claims
`
`Claims 2–10, 12, 15–17, 19–20, 22, 23 depend from claim 1, and Petitioner
`contends that D’Amore discloses embodiments that teach aspects of each
`dependent claim. Pet. 25–38; Ex. 1030 ¶¶ 67–87. Patent Owner does not provide
`separate contentions regarding additional limitations recited in the dependent
`claims. After careful consideration of the language recited in claims 2–10, 12, 15–
`17, 19–20, 22, and 23, and the testimony of Dr. Joseph, we are unpersuaded that
`D’Amore anticipates these dependent claims for the same reasons discussed with
`respect to claim 1.
`Accordingly, we find that Petitioner has not shown by a preponderance of
`the evidence that claims 2–10, 12, 15–17, 19–20, 22, and 23 are anticipated under
`35 U.S.C. § 102(e) by D’Amore.
`
`E. Obviousness of Claims 1–10, 12, 15–17, 19–20, 22, and 23 over the
`Combination of D’Amore and ASTM D4814
`Petitioner argues that the combination of D’Amore, as summarized in the
`overview in Section II.D.1 above, and ASTM D4814 renders each of claims 1–10,
`12, 15–17, 1920, 22, and 23 obvious. Pet. 39–48. For reasons that follow, we
`determine Petitioner has shown by a preponderance of the evidence that claims 1–
`10, 12, 15–17, 1920, 22, and 23 are unpatentable under 35 U.S.C. § 103(a).
`1. Overview of ASTM D4814
`ASTM D4814 describes standard specifications for automotive spark-
`ignition engine fuel (i.e., automotive fuel or gasoline). Ex. 1014 ¶ 1.3. Such
`specifications include the materials and manufacture of automotive fuel, how the
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`automotive fuel is tested, and the required performance characteristics of such fuel.
`Id.
`
`2. Analysis
`a. Independent Claim 1
`Petitioner contends D’Amore, as summarized in the overview above,
`discloses each limitation of claim 1 of the ’402 patent, except that D’Amore does
`not disclose explicitly that its products (e.g., isooctane) meet the requirements of at
`least one of ASTM D4814, ASTM D975, ASTM D910, or ASTM D1655, as
`recited in claim 1. Pet. 1725. Petitioner further contends that a person of
`ordinary skill in the art would have had reason to reach the invention recited in
`claim 1 based on the combined teachings of D’Amore and ASTM D4814 (Ex.
`1014), which discloses the standards for automotive fuel (i.e., gasoline) within the
`fuel industry. Id. at 45–47. According to Petitioner, although D’Amore does not
`disclose explicitly renewable isooctane meeting the standards set forth in ASTM
`D4184, a person of ordinary skill in the art would have had reason to review and
`meet the ASTM specifications when preparing automotive fuel, because the ASTM
`standards are used by governmental agencies to regulate the transportation fuel
`industry. Pet. 47 (citing Ex. 1030 ¶¶ 100–107). Petitioner reasons that a person of
`ordinary skill in the art would have had reason to modify the products of D’Amore
`to meet the ASTM D4814 specification in order to have a commercially useful
`fuel. Id.
`Petitioner asserts that producing a renewable isooctane that meets the
`specifications of ASTM D4184 using D’Amore’s process would have been
`obvious to a person of ordinary skill in the art and would have required no more
`than routine optimization. Id. at 46 (citing Ex. 1030 ¶¶ 100–107). Petitioner
`supports this assertion with the first Declaration of Dr. Joseph, who testifies that
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`the transportation fuel additives discussed in D’Amore are regulated by the
`Environmental Protection Agency (“EPA”) and/or Federal Aviation
`Administration (“FAA”), which have incorporated ASTM standards into their
`regulations governing approval of transportation fuel. Ex. 1030 ¶¶ 48–49. Dr.
`Joseph further testifies that a person of ordinary skill in the art would understand
`that in order to be approved for commercial use as a transportation fuel, a
`hydrocarbon product would have to meet the ASTM standards. Id. ¶ 48.
`Dr. Joseph reasons that any alternative mechanism for bringing the product to
`market for the fuel industry would require “going through the lengthy,
`burdensome, and expensive testing process,” and such process would render the
`fuel commercially unviable. Id. Dr. Joseph specifically states a person of skill in
`the art “reading D’Amore’s disclosure of methods of making renewable isooctanes
`for use as a transportation fuel, including gasoline, would have had a reason to
`ensure that isooctane met the ASTM D4814 industry standard” because “meeting
`the requirements of ASTM D4814 is one step in the process of obtaining EPA
`approval to sell a gasoline.” Id. ¶ 96. Moreover, Dr. Joseph testifies that
`isooctane, a product of D’Amore’s disclosed processes, would meet the standards
`set forth in ASTM D4814. Id. ¶¶ 48–66.
`Patent Owner contests Petitioner’s position, arguing that ASTM D4814
`merely provides a set of metrics to determine whether or not a given composition
`meets the limitations of the subject ASTM standard. PO Resp. 7–11. Patent
`Owner contends ASTM D4814 does not provide any disclosure or guidance
`regarding a process to make a fuel that meets the requirements of ASTM D4814.
`Id. at 9. According to Patent Owner, a person of skill in the art would need a
`reference detailing the process steps between D’Amore and ASTM D4814 in order
`to create a product that would comply with the specification in ASTM D4814,
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`because such information is not evidently and indisputably within the common
`knowledge of those skilled in the art. Id. at 9–10; Tr. 39:1–40:18. Patent Owner
`argues that the Declaration of Dr. Joseph (Ex. 1030) cannot support a finding of
`obviousness based on D’Amore and ASTM D4814, because: (1) the testimony is
`conclusory; (2) claim rejections must be based on prior art; and (3) rather than
`merely relying on the opinion of Dr. Joseph, a reference should be provided to
`establish that modifying the process of D’Amore as proposed was obvious. PO
`Resp. 910.
`We find that D’Amore discloses each of required steps (a)–(f) of claim 1.
`First, D’Amore discloses steps (a) and (b) by treating an aqueous stream of
`biomass-derived carbohydrates that are fermented with microorganisms to create a
`fermentation broth that produces isobutanol (C4H10O, an alcohol). Ex. 1003 ¶¶ 56,
`57. Second, D’Amore discloses step (c) by separating the isobutanol-rich phase
`dehydrating isobutanol (id. ¶¶ 3, 21) and using an acid catalyst to convert the dry
`isobutanol into isolated butene (C4H8, an alkene olefin) (id. ¶¶ 56–57). Lastly,
`D’Amore discloses steps (e) and (f) by oligomerizing butene into isooctene (C8H16,
`an unsaturated oligomer) (id. ¶¶ 64, 74) and hydrogenating the isooctene to form
`isooctane (C8H18, an saturated alkane)(id. ¶ 76). Therefore, we find that D’Amore
`discloses the required steps (a)–(f).
`Claim 1 further recites “whereby the product of step (f) itself meets the
`requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or
`ASTM D1655, or a blend of at least 10% of the product of step (f) with a mixture
`of hydrocarbons meets the requirements of at least one of ASTM D4814, ASTM
`D975, ASTM D910 or ASTM D1655.” Despite Patent Owner’s contentions, we
`are persuaded by Petitioner’s arguments and find that a person of ordinary skill in
`the art could have combined the teachings of D’Amore and ASTM D4814 to reach
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`the invention recited in the whereby clause of claim 1, and would have had reason
`to do so.
`As discussed above, the level of skill in the art is that of a person with a
`doctoral degree in chemistry or related discipline (see supra, Section II.C.), and it
`is easier to establish obviousness under a higher level of ordinary skill in the art.
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir.
`2012); see also Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323–
`24 (Fed. Cir. 2011) (finding that a less sophisticated level of skill generally favors
`a determination of nonobviousness, while a higher level of skill favors the reverse).
`Given this high level of skill in the art, we credit the testimony of Dr. Joseph that a
`person of ordinary skill in the art would have had reason to modify the isooctanes
`of D’Amore to meet the ASTM D4814 specification (Ex. 1030 ¶¶ 90–99), and that
`such modifications could have been accomplished using routine optimization
`techniques that were common in the art (id. ¶ 98). Dr. Joseph cites to multiple
`publications providing several examples of well-known properties of isooctane and
`techniques to produce a mixture of saturated alkanes and aromatic hydrocar
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