Ex Parte Ahsan et al

Patent Trial and Appeal Board

Dec 18, 2014

12227654 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE
THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SYED NIAZ AHSAN,1
Fazal-Ur-Rehman Awan, Ali Al-Hazemi, and
Fawzi Al-Dulaijan
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Appeal 2013-001891
Application 12/227,654
Technology Center 1700
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Before BEVERLY A. FRANKLIN, MARK NAGUMO, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Syed Niaz Ahsan, Fazal-Ur-Rehman Awan, Ali Al-Hazemi, and
Fawzi Al-Dulaijan (“Ahsan”) timely appeal under 35 U.S.C. § 134(a) from
the final rejection2 of claims 1–6 and 11–16. We have jurisdiction
under 35 U.S.C. § 6. We reverse.

1 The real party in interest is listed as Saudi Basic Industries Corporation.
(Appeal Brief, filed 18 July 2012 (“Br.”), 2.)
2 Office action mailed 13 February 2012 (“Final Rejection”).
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OPINION
A. Introduction3
The subject matter on appeal relates to processes of recycling iron-
bearing by-products from the manufacture of steel. Such by-products are
said to include iron-bearing, non-hazardous materials such as iron oxide
fines and mill scale, as well as hazardous materials such as electric arc
furnace bag house dust. (Spec. 1, ll. 17–20.) The ʼ654 Specification teaches
that a direct reduction (“DR”) process is used by many steel companies to
produce iron from ore, and that steel is then produced via the electric arc
furnace route. (Id. at ll. 28–30.) These processes are said to generate a large
quantity of waste materials, for which satisfactory disposal or re-use options,
especially in DR processes, do not exist. (Id. at l. 31 to 3, l. 29.)
According to the Specification, there are several constraints for
recycling such wastes as feedstocks for DR processes, including the size of
the pellets, which must be between 8 and 18 mm, with little fines. (Id. at 3,
ll. 30–31.) Moreover, the pellets must have a crushing strength, also called
“compression strength,” of at least 280 kg [617 lb] for a 12-mm pellet.
(Id. at 3, l. 32, to 4, l. 1.) Satisfactory pellets from recycled iron-bearing
waste are reportedly not available. (Id. at 4, ll. 9–10.)

3 Application 12/227,654, Process for recycling of steel industry iron
bearing by-products, pellet obtained in that process and use thereof,
filed 12 January 2009 as the national stage of international application
PCT/EP2007/004611, filed 24 May 2007, and claiming the benefit of an
EPO application filed 24 May 2006. We refer to the “’654 Specification,”
which we cite as “Spec.”
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The claimed process is said to provide pellets that can be used in
direct reduction iron processes.
Claim 1 is representative of the dispositive issues and reads:
A process for the recycling of steel industry iron bearing by-
products into a shape suitable for feeding into a direct
reduction furnace, comprising the steps of:
a) mixing and grinding
50 to 99 wt% of ore and pellet fines and
1 to 50 wt% of slurry, mill scale and/or bag house dust
and
adding less than 3 wt% binder to form a mixture;
b) pelletizing the mixture to form pellets; and
c) indurating the pellets obtained by heating these
for 5 to 60 minutes
at a temperature in the range of 1100 to 1350°C.
(Claims App., Br. 12; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 1, 2, and 11–16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Mekler5 and Bodino.6
A1. Claims 3–16 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Mekler, Bodino, and Kim.7

4 Examiner’s Answer mailed 21 August 2012 (“Ans.”).
5 Valentine Mekler et al., Process for forming hard oxide pellets and
product thereof, U.S. Patent No. 3,420,656 (1969).
6 Dario Bodino and Guglielmo Bodino, Method for treating flue gas dust of
iron electric furnaces of steel mills, WO 03/002775 A2 (2003).
7 Hang-Goo Kim et al., An apparatus and method for recycling dust and
sludge containing iron in iron making process using coal and fine ore,
WO 03/056039 A1 (2003).
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Ahsan urges that the Examiner erred harmfully because the pellets
disclosed by Mekler, although characterized as having “a very high crushing
strength and a fine porous structure which is eminently suitable for use in a
blast furnace or other reduction device” (Mekler, col. 4, ll. 5–7), are
nonetheless only about half as strong (about 300 lb) as required for use in a
DR furnace. (Br. 4, last para.) Moreover, in Ahsan’s view, the pellets
resulting from Mekler’s process are partially reduced at levels of 15–40%
(Mekler, col. 8, ll. 18–19), whereas DR processes require pellets having
greater reducibilities. (Br., sentence bridging 4–5; Spec. 4, l. 6 (“the iron
content must be at least 64%”).)
Ahsan argues further that Mekler does not mix and grind slurry, mill
scale, or house dust with ore during grinding (Br. 5, l. 29, to 6, l. 17), and
that Bodino does not cure this deficit (id. at 6, ll. 18–21.) Yet another
difference, in Ahsan’s view, is the absence of a teaching in Bodino that
would have suggested shortening the reduction time described by Mekler
from about 3 hours at 1500–2200°F to the sintering time of 30–45 minutes
suggested by Bodino. (Id. at 7, l. 5–30.) In addition to the failure, in
Ahsan’s view, of Mekler to teach a process that produces pellets suitable for
a direct reduction iron (“DRI”) process, Ahsan points out that
the ʼ654 Specification teaches that Bodino does not teach a process suitable
for making pellets for DRI processes (Br. 4. citing Spec. 4, ll. 15–20). Thus,
Ahsan argues, the references do not provide a reasonable expectation of
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successfully conducting a process within the scope of the appealed claims.
(Id. at 5, 2d full para.)
The Examiner responds, inter alia, that the recited purpose “‘for
feeding into a direct reduction furnace’” is merely an intended use that does
not render the claims patentable. (Ans. 6, 2d para.)
Although the Examiner states the rule of law correctly, the purpose of
the process stated in the claim imposes conditions on the product—and thus
on the claimed process of making that product—that an anticipatory prior art
process must meet, and that a prior art process that renders the claimed
process obvious must suggest and motivate, with a reasonable expectation of
success.
In the present case, the Examiner has not attempted to explain what
teachings in the prior art would have suggested modifications to the
processes taught by Mekler that would have been expected to result in
pellets suitable for use in a DRI process. Moreover, the absence of evidence
supporting the grinding of ore and pellet fines with slurry, mill scale, or bag
house dust is also harmful error.8 The Examiner’s findings regarding Kim
and the limitations of the separately rejected dependent claims do not cure
these deficiencies.
Accordingly we reverse the appealed rejections.

8 We have not relied on Ahsan’s arguments that the high amounts of gangue
mineral (greater than 8 wt% silica) (Br. 5, ll. 1–4) described by Mekler
constitute harmful error because Ahsan has not directed our attention to
supporting evidence in the record on appeal. We shall not search the record
seeking evidence that it was the Appellants’ burden to produce.
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C. Order
We reverse the rejection of claims 1–6 and 11–16.
REVERSED

cdc