Cristal Inorganic Chemicals Switzerland Ltd

Patent Trials and Appeals Board

Oct 7, 2020

14812280 - (D) (P.T.A.B. Oct. 7, 2020)

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.
14/812,280 07/29/2015 Bela Derecskei C68634 1100US.C1
(0045.5)
2136
24919 7590 10/07/2020
MCAFEE & TAFT
TENTH FLOOR, TWO LEADERSHIP SQUARE
211 NORTH ROBINSON
OKLAHOMA CITY, OK 73102
EXAMINER
FORREST, MICHAEL
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/07/2020 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):
ipdocket@mcafeetaft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BELA DERECSKEI, MARK D. POMPONI, and
VENKATA R. SAMA

Appeal 2019-005739
Application 14/812,280
Technology Center 1700
____________

Before MAHSHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–11, 14–16, 19–28, and 31–34.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies TRONOX LLC as the real party based
on its acquisition of Cristal Inorganic Chemicals Switzerland Ltd. Reply
Br. 1; Appeal Br. 2.
2 Claims 5, 12, 13, 17, 18, 29, and 30 were canceled in an Amendment
Under 37 C.F.R. § 1.116 filed Aug. 22, 2017, that was entered for purposes
of this Appeal. Advisory Action dated Sept. 27, 2017. We note pending
claim 31 depends from canceled claim 30. Appeal Br. 10 (Claims
Appendix).
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STATEMENT OF THE CASE
The invention relates to the production of titanium dioxide, and, more
particularly, to controlling particle size during the production of titanium
dioxide. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject
matter on appeal (disputed limitations are italicized).
1. A method for producing titanium dioxide particles
comprising:
a) introducing titanium tetrachloride, oxygen, and an agent to
an oxidizer; wherein the agent comprises ultrafine titanium
dioxide particles; and wherein the ultrafine titanium dioxide
particles are in a form selected from the group consisting of
anatase, rutile, amorphous, and combinations thereof; and
b) oxidizing at least some of the titanium tetrachloride with at
least some of the oxygen in the presence of the agent to form
an oxidizer effluent comprising a titanium dioxide product
having titanium dioxide particles,
wherein the ultrafine titanium dioxide particles are introduced
to the oxidizer in an amount of from about 50 ppmw to about
100 ppmw, based on the total weight of the titanium dioxide
particles produced in step b), and
wherein a Group la metal halide is also introduced as a part of
the agent into the oxidizer in an amount from about 10 ppmw
to about 950 ppmw, based on the total weight of the titanium
dioxide particles produced in step b).
Appeal Br. 6 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
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(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
The Examiner maintains the rejection of claims 1–4, 6–11, 14–16, 19–
28, and 31–34 under 35 U.S.C. § 103(a) over the following prior art
references:
Name Reference Date
Jamison US 2008/0075654 A1 Mar. 27, 2008
Gruber US 2010/0215569 A1 Aug. 26, 2010

Appellant argues claims 1–4, 6–11, 14–16, 19–28, and 31–34 subject
to the rejection as a group. Appeal Br. 4–6. Therefore, claims 2–4, 6–11, 14–
16, 19–28, and 31–34 stand or fall with independent claim 1, which we
select as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends the Examiner erred in rejecting claim 1 because
neither Jamison nor Gruber discloses a step of adding ultrafine titanium
dioxide and Gruber’s “very fine particles” produced in situ have not been
shown to have the required properties of size and function. Appeal Br. 5–6.
Appellant argues it would have been nonsensical for a person having
ordinary skill in the art to add more titanium dioxide particles to Gruber’s
process in view of Gruber’s disclosure that a second reaction pathway in
which titanium chloride can attach to the surface of existing titanium dioxide
particles increases the size of existing particles by surface reaction rather
than form new particles. Id. at 6 (citing Gruber ¶ 12).
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Appellant’s arguments are not persuasive of error. Appellant
acknowledges that Gruber discloses producing “very fine particles.” Appeal
Br. 5. Appellant does not dispute the Examiner’s finding (Final Act. 3) that
Gruber teaches its pigment particles are nanoscale in size and finer than
Jamison’s particles, which Jamison discloses are 300 nm. The record
supports the Examiner’s findings. Gruber ¶ 21 (disclosing “finer” particles
compared to Jamison’s particles); Jamison ¶¶ 14, 15, 17 (Examples).
Therefore, Appellant’s argument that the size of Gruber’s in situ produced
nucleating titanium dioxide particles introduced into the second stage do not
meet the claim requirement of “ultrafine” is not supported by the
preponderance of the evidence cited in this appeal record.
Appellant’s argument that none of the cited references explicitly teach
a step of adding ultrafine titanium dioxide is not persuasive because an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007). Based on Gruber’s teachings for controlling
the size of TiO2 particles, the Examiner reasonably determines (Final Act. 3)
it would have been obvious to a person having ordinary skill in the art to
introduce to a second stage an amount of nucleating agent produced in the
first stage that meets the ultrafine size requirement. Gruber’s method of
controlling the mean particle size of the product, by setting an amount of
TiCl4 introduced as a percentage of the total TiCl4 introduced in all stages,
does not depend on the use of KCl to control the size of the particles. As
such, it would have been obvious to a person having ordinary skill in the art
to control the concentration of very fine TiO2 nucleating agent to any
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workable range including 50 to 100 ppmw, and thereby control the size of
the titanium oxide particles produced.
In the Reply Brief, Appellant presents additional arguments
challenging the Examiner’s finding that Gruber’s very fine particles meet the
required “ultrafine” size and that the claimed concentration range of 50 to
100 ppmw would have been obvious to achieve based on Gruber’s method
of controlling the size of the titanium oxide particles. Reply Br. 6–17. These
arguments were not presented in the Appeal Brief, and Appellant has not
proffered a showing of good cause explaining why the argument could not
have been presented in the Appeal Brief. Therefore, we will not consider
these new and untimely arguments in our assessment of the Examiner’s
rejection. 37 C.F.R. §§ 41.37, 41.41.
Regarding Appellant’s assertion that the term “ultrafine” as it relates
to titanium dioxide is understood by persons skilled in the art to refer to a
particle size in the range 1–20 nm (Reply Br. 14–16), such a limited
interpretation of the claim term is not supported by Appellant’s
Specification. According to Appellant’s Specification, “at least a portion of
the ultrafine titanium dioxide particles can be in the form of agglomerated
ultrafine titanium dioxide particles, and the median size of such
agglomerated ultrafine titanium dioxide particles can range from about 2 nm
to about 150 nm.” Spec. ¶ 13. Appellant’s Specification further describes
“discrete ultrafine titanium dioxide particles can range from about 1 nm to
about 60 nm.” Id. Therefore, the Specification does not support the claimed
“ultrafine” particles being below 20 nm in size as Appellant contends.
Moreover, claim 1 does not specify whether the claimed particle size is for
agglomerated or discrete ultrafine titanium dioxide particles. In addition,
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claim 1 requires the agent “comprises ultrafine titanium dioxide particles”
which does not exclude titanium dioxide particles outside of an “ultrafine”
range in particle size.
Appellant also argues Gruber teaches away from the use of a Group Ia
metal halide such as KCl based on the disclosure that “inhibitors [KCl or
another growth inhibitor] are highly corrosive, resulting in increased
corrosion of the equipment and a greater maintenance effort.” Appeal Br. 6.
(citing Gruber ¶ 13); Reply Br. 17–18. Appellant notes that none of Gruber’s
examples use any growth inhibitor. Id. (citing Gruber ¶ 24).
Appellant’s arguments are not persuasive of error principally because
Gruber explicitly discloses that “at least a smaller quantity” of KCl
compared to conventional methods can be used in Gruber’s process. Gruber
¶ 22. In a determination of obviousness, a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
the art, which in this case includes the use of KCl in an agent to an oxidizer.
See Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.”).
Appellant’s reliance on Gruber’s examples as support for the asserted
teaching away is not persuasive because “a reference is not limited to the
disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972) (citation omitted). Similarly, Appellant’s reliance on Gruber’s
disclosure of KCl’s disadvantages in the context of conventional methods is
not persuasive of error, because Gruber explicitly teaches an alternative
method that includes a smaller quantity of KCl than conventionally used. A
reference “that ‘merely expresses a general preference for an alternative
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invention but does not criticize, discredit, or otherwise discourage
investigation into’ the claimed invention does not teach away.” Meiresonne
v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (quoting Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
In sum, we are not persuaded that a person having ordinary skill in the
art would understand Gruber’s teachings to be limited in a way that excludes
the use of KCl.
The preponderance of the evidence in this appeal record therefore
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Gruber’s method. Accordingly, we affirm the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) for the above
reasons and those provided by the Examiner.
Because we find Appellant’s arguments unpersuasive of error in the
Examiner’s rejection of claim 1 for the reasons discussed above, we likewise
affirm the Examiner’s rejection of claims 2–4, 6–11, 14–16, 19–28, and 31–
34 for the same reasons.

CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–4, 6–11, 14–16, 19–28, and 31–34 under
35 U.S.C. § 103(a) as obvious over the cited prior art references.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–4, 6–11,
14–16, 19–
28, 31–34
103(a) Gruber, Jamison
1–4, 6–11,
14–16, 19–
28, 31–34

TIME PERIOD FOR RESPONSE
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)(iv).

AFFIRMED