Ex Parte Dahl et al

Patent Trial and Appeal Board

Oct 15, 2018

13501164 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/501, 164 04/10/2012
27384 7590 10/16/2018
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
FIRST NAMED INVENTOR
Anders Dahl
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
ATTORNEY DOCKET NO.
110963-58
(SWE10965PlUS)
CONFIRMATION NO.
5762
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
10/16/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDERS DAHL and KALLE HANS THOMAS PELIN
Appeal2018-000389
Application 13/501, 164
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1-7,
12, and 13. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as "AkzoNobel Chemicals
International B.V." (Appeal Brief filed March 27, 2017 ("Appeal Br.") at 1).
2 Appeal Br. 3-25; Reply Brief filed October 10, 2017 ("Reply Br.") at 2---6;
Final Office Action entered August 25, 2016 ("Final Act.") at 2-10;
Examiner's Answer entered August 10, 2017 ("Ans.") at 2-19.
Appeal2018-000389
Application 13/501,164
I. BACKGROUND
The subject matter on appeal relates to a process for producing
chlorine dioxide (Specification filed April 10, 2012 ("Spec.") 1, 11. 3---6).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A process for production of chlorine dioxide
compnsmg:
(a) without adding formic acid, reacting (i) an alkali
metal chlorate or chloric acid and (ii) methanol in an aqueous
reaction medium in a reaction vessel to generate chlorine
dioxide;
(b) withdrawing from the reaction vessel a gas
comprising chlorine dioxide and gaseous by-products;
( c) condensing part of the gas withdrawn at a
temperature from about 15 to about 35°C to obtain (i) a
condensate and (ii) non-condensed gas containing chlorine
dioxide; and
( d) removing said condensate from the non-
condensed gas containing chlorine dioxide without re-
circulating said condensate back to step (a), and also
preventing said condensate from being incorporated into a
product containing the chlorine dioxide from said non-
condensed gas; and
( e) bringing said non-condensed gas, after removal of
the condensate, to an absorption tower, where said non-
condensed gas is contacted with a flow of water to form an
aqueous solution containing chlorine dioxide;
wherein the chlorine dioxide produced by the process
exhibits improved stability compared to chlorine dioxide
produced by the same process except that the condensate is not
removed from the non-condensed gas or, if the condensate is
removed from the non-condensed gas, the condensate is re-
circulated back to step (a).
Appeal Br. 27 (Claims Appendix; emphases added).
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Application 13/501,164
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections as follows:
A. Claims 1-7, 12, and 13 under pre-AIA 35 U.S.C. § 112, ,r 1, as
failing to comply with the written description requirement; and
B. Claims 1-7, 12, and 13 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Fuller et al. 3 ("Fuller"), which incorporates
by reference Partridge et al. 4 ("Partridge"), in view ofNorell et
al. 5 ("N orell") and any one of Mingzhong et al. 6
("Mingzhong"), Stringer, 7 or Risley et al. 8 ("Risley").
(Ans. 2-19; Final Act. 2-10.)
III. DISCUSSION
Rejection A. In an Amendment filed August 4, 2016, the Appellants
revised the language in claim 1, step (a), by inserting "without adding formic
acid." The Examiner finds that the Specification, as filed originally, lacks
sufficient support for the now-claimed subject matter defined by this added
negative limitation (Ans. 2).
The Appellants contend that the Examiner's rejection is not well-
founded because the added limitation "without adding formic acid" is
adequately supported in the Specification, as filed originally (Appeal Br. 3).
3 US 3,816,077, issued June 11, 1974.
4 US 3,563,702, issued February 16, 1971.
5 US 4,978,517, issued December 18, 1990.
6 US 6,982,097 B2, issued January 3, 2006.
7 US 3,595,035, issued July 27, 1971.
8 US 3,642,581, issued February 15, 1972.
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Application 13/501,164
Specifically, the Appellants argue that the Specification's "Background of
the Invention" section (Spec. 1, 11. 16-24): (1) describes formic acid as an
"unwanted by-product" that detrimentally affects the chlorine dioxide's
stability; and (2) criticizes Norell's formic acid addition as increasing
evaporative load and, thus, energy consumption (id. at 3--4). The Appellants
urge that adding formic acid, except as described in Norell, would have been
expected to increase formic acid by-product levels in the chlorine dioxide
product and, given the invention's objective is to reduce by-products such as
formic acid, "the instant specification provides ample reasons for excluding
formic acid from the reactor as a general proposition" (id. at 4) (quoting
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)
("The claim limitation that the Phillips formulations contain no sucralfate is
adequately supported by statements in the specification expressly listing the
disadvantages of using sucralfate.")).
In addition, the Appellants refer to their Figure 1 depicting an
embodiment in which formic acid is not added (id. at 4---6). Based on this
embodiment, the Appellants urge that the negative limitation at issue is
adequately supported (id. at 4--6).
The issue arising from these contentions is whether the Specification's
"Background of the Invention" and Drawing Figure 1 provide sufficient
written description for the now-claimed subject matter defined by the
negative limitation "without adding formic acid." For the reasons given by
the Examiner (Ans. 2, 9-12) and below, we hold that these disclosures are
insufficient as written descriptive support.
Consistent with the Examiner's position (Ans. 10), the Specification's
discussion about the formation of formic acid as an undesirable by-product
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Application 13/501,164
affecting chlorine dioxide stability is unrelated to whether step (a) is
performed without adding formic acid. As the Examiner points out (id.), the
formation and presence of formic acid as a by-product is embraced by claim
7 ("wherein said gaseous by-products withdrawn from the reaction vessel
comprise formic acid"), which depends from claim 1 (Appeal Br. 28), and
the Appellants do not direct us to any Specification disclosure correlating
added amounts of formic acid to formic acid by-product levels. On the
contrary, Norell teaches that adding formic acid to the reactor improves
reaction efficiency by providing conditions that favor formation of carbon
dioxide over formic acid by-product (Norell, col. 1, 11. 14--16; col. 2, 11. 21-
23; col. 2, 1. 50-col. 3, 1. 10). In this regard, the Appellants' reliance on the
Specification's criticism ofNorell's recirculation of condensate comprising
formic acid to the reactor is misplaced because Norell alternatively discloses
addition of formic acid as effective (Norell, col. 3, 11. 18-21 ). Given these
facts, we discern no persuasive merit in the Appellants' position that the
"Background of the Invention" section would have reasonably conveyed to
one skilled in the relevant art that adding formic acid to the reaction is
necessarily excluded from the invention.
As for Figure 1, a description of a specific embodiment in which
formic acid addition is not mentioned is insufficient to support a general
concept or process in which step (a) may be performed in the presence of
any unrecited reactant except for formic acid. At most, Figure 1 may
reasonably support a process in which the reactants consist of ( or possibly
consist essentially of) NaC103, methanol, and H2S04 under the specific
conditions used in the disclosed embodiment.
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For these reasons and those well-stated by the Examiner, we uphold
Rejection A.
Rejection B. The Appellants do not argue any claim separately.
Therefore, all claims stand or fall together with claim 1, which we select as
representative. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
The Examiner finds that Fuller describes a process including every
limitation recited in claim 1 except for the condenser temperature
limitations-i.e., the temperature of the gas withdrawn from the condenser
being "about 15 to about 35°C" (Ans. 3---6). To resolve this difference, the
Examiner relies on N orell, which was found to teach a condenser
temperature of 8--40°C, preferably 12-25°C (id. at 7). Based on these
findings, the Examiner concludes that a person having ordinary skill in the
art would have found it obvious to select a condenser temperature in Fuller
that falls within the Appellants' specified range because the selection of a
value within a known range by routine optimization would have been within
the ordinary skill and because an overlap between the prior art range and the
Appellants' specified range gives rise to a prima facie case of obviousness
(id.).
The Appellants do not contest the Examiner's findings and reasoning
in support of a conclusion that a person having ordinary skill in the art
would have combined Fuller and Norell to arrive at a process in which the
condenser temperature falls within the Appellants' specified range (Appeal
Br. 9-25). Rather, the Appellants' arguments focus on the limitations
recited in step (d) (id. at 12). Specifically, the Appellants contend that "[t]he
present invention does not follow the convention of feeding the condensate
to the absorption tower, nor does it follow the variation of [Norell] of
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recycling the condensate to the reactor" (id. at 12). As for Fuller, the
Appellants argue that "Fuller is not inherently preventing the condensate
from being fed to the absorption tower while also precluding the condensate
from being recycled to the reactor, as presently claimed" (id. at 14; see also
id. at 14--23). The Appellants also refer to Tests 1-3 described in the
Specification (Spec. 6, 1. 35-7, 1. 26) as evidence of unexpected results (id.
at 13). According to the Appellants, the results show that "removing the
condensate without feeding it [to] the absorber and without recycling it to
the reactor has clear practical advantages in terms of reducing the chlorine
dioxide product losses" and stability is improved by operating the condenser
at lower temperatures (id.).
The Appellants' arguments are insufficient to reveal any reversible
error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Consistent with the Examiner's position (Ans. 13-14), Fuller plainly
teaches, or would have suggested to a person having ordinary skill in the art,
an embodiment in which "[ c ]ondensate is removed from condenser 62 via
line 64" (Fuller, col. 6, 11. 60-66 ( emphasis added); Fig. 1 ). As shown in
Fuller's Figure 1, condensate at line 64 is not remixed with Cl02 product at
70 conveyed to an inlet into the Cl02 absorber 72 nor recirculated to Cl02
generator-evaporator crystallizer 10. Although the Appellants are correct
that Fuller discloses two different embodiments for condensing vapor
(Appeal Br. 17-18 (quoting Fuller, col. 4, 11. 39---60)), we find nothing in the
first embodiment (Fuller, col. 4, 11. 39-54) requiring the condensate to be fed
into the absorber 72 or recirculated to the Cl02 generator 10. That other
prior art references, such as Jaszka et al. (US 4,216,195, issued Aug. 5,
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Application 13/501,164
1980), disclose other processes in which the condensate is fed into the
absorber or handled differently from the process shown in Fuller's Figure 1
is irrelevant to Fuller's scope and content. Therefore, we discern no
persuasive merit in the Appellants' contention that Fuller does not disclose
or suggest step ( d) as recited in claim 1.
As for N orell, this reference does not require recirculating the
condensate as that embodiment is an alternative way to add formic acid into
the reactor (Norell, col. 3, 11. 18-28). In any event, the Examiner relied on
Norell to establish the obviousness of selecting suitable condenser
temperatures, and the Appellants fail to show operating the process in
condensate recirculation mode affects Norell's specific teachings on suitable
condenser temperatures (Norell, col. 3, 11. 51-55; col. 4, 11. 57-58 (Example
2)). In re Keller, 642 F.2d 413,425 (CCPA 1981) ("[T]he test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.").
Turning to secondary considerations, Tests 1-3 as described in the
Specification (Spec. 6, 1. 35-7, 1. 26) are insufficient to establish unexpected
results. Test 1, which is disclosed as a comparative example because the
condensate was fed into the absorber from a condenser set to 38°C, yielded a
relative loss ofCl02 of 3.09% after 8 hours (id. at 7 (Table 1)). By contrast,
Tests 2 and 3 (invention) removed the condensate and, in the case of Test 3,
the condenser temperature was 25°C (id. at 7, 11. 11-14). Tests 2 and 3
yielded slightly lower relative Cl02 losses of 2.26% and 0.45%, respectively
(id., Table 1). As the Examiner finds (Ans. 12), the tests do not include a
comparison against the closest prior art-i.e., Fuller in which the condensate
is removed, as we found above. For that reason, the tests are not particularly
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germane. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1990)
("[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art .
. . . ").
Moreover, we agree with the Examiner that the showing is not
commensurate in scope with claim 1 (Ans. 12). For example, Test 3, which
is the only example with a condenser temperature (25°C) within the range
specified in claim 1 ("from about 15 to about 35°C"), is ineffective to
establish a criticality for the entire range specified in claim 1. In re Inland
Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001) ("Inland did not offer
comprehensive test results for the magnetic properties of steel produced
under the '574 claims at antimony levels greater than 0.02%.").
Lastly, we have not been directed to any evidence establishing that
modest increases in relative stability obtained by increasing the level of
condensation (of undesirable by-products affecting stability) through a lower
condensation temperature would have been considered unexpected by a
person having ordinary skill in the art. Indeed, common sense would have
suggested that, in general, lower condenser temperatures would result in
higher condensate levels. See, e.g., In re Klosak, 455 F.2d 1077, 1080
( CCP A 1972) ("[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference.").
For these reasons and those given by the Examiner. We uphold
Rejection B.
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IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 1-7, 12, and 13 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).
AFFIRMED
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