Ex Parte Detournay et al

Patent Trial and Appeal Board

Mar 23, 2016

12811643 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/811,643 07/02/2010
73673 7590 03/25/2016
Solvay America, Inc,
c/o Intellectual Assets Management
3737 Buffalo Speedway Ste. 800
Houston, TX 77098-3701
FIRST NAMED INVENTOR
Jean-Paul Detournay
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. CONFIRMATION NO.
s 2007/64 9445
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
sandra. andress@solvay.com
iamnafta@solvay.com
s taci.harris@sol vay. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JEAN-PAUL DETOURNAY
and FRANCIS M. COUSTRY
Appeal2014-004099
Application 12/811,643
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants (see Appeal Brief, generally) request review of the
following rejection from the Examiner's Final Action: i, 2
1 A complete statement of the Examiner's appealed rejections appears in the
Final Action 2-8.
2 The Examiner withdrew the obviousness-type double patenting rejections
over copending Application No. 12/305,444. Ans. 2.
Appeal2014-004099
Application 12/811,643
l. Claims 1, 2, 9 and 10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bourgeois (US 5,308,455, issued May 3,
1994) in view of Kube (US 3,953,073, issued Apr. 27, 1976)
and Mani (US 4,636,289, issued Jan. 13, 1987).
II. Claims 3-5 rejected under 35 U.S.C. § 103(a) as unpatentable
over Bourgeois in view of Kube, Mani, and Chlanda (US
4,584,077, issued Apr. 22, 1986).
III. Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bourgeois in view of Kube, Mani, and Ganey
'305 (US 4,238,305, issued Dec. 9, 1980).
IV. Claim 8 rejected under 35 U.S.C. § 103(a) as unpatentable over
Bourgeois in view of Kube, Mani, and Ganey '097 (US
4,044,097, issued Aug. 23, 1977).
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejection of claims 1-10
for the reasons presented by the Examiner. We add the following for
emphasis.
Appellants' invention is directed to a process to produce sodium
carbonate and/ or sodium bicarbonate from an ore mineral comprising
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Application 12/811,643
sodium bicarbonate. Spec. 1. Claim 1 is illustrative of the subject matter on
appeal and is reproduced below: 3
1. A process to produce sodium carbonate and/ or sodium bicarbonate
from an ore mineral comprising sodium bicarbonate, comprising:
(A) introducing a production solution comprising sodium carbonate
into less basic compartments of an electrodialyser comprising
alternating less basic and more basic adjacent compartments
separated from each other by cationic membranes, the more basic
compartments being delimited by anionic faces of bipolar
membranes on one side and by the cationic membranes on the
other side;
(B) optionally extracting a solution comprising sodium bicarbonate
from the less basic compartments;
(C) producing a solution comprising sodium hydroxide into the
more basic compartments, by combination of flux of sodium ions
crossing the cationic membrane and flux of hydroxyl ions
crossing the anionic face of the bipolar membranes;
(D) extracting the solution comprising sodium hydroxide from the
more basic compartments of the electrodialyser and using such
solution to constitute a reaction solution;
(E) putting the reaction solution into contact with the mineral ore
comprising sodium bicarbonate in order to form a solution
comprising sodium carbonate; and
(F) dividing the solution comprising sodium carbonate into a part
which is used to constitute said production solution and a
remaining part which constitutes a produced solution.
3 When discussing independent claim 1, Appellants have identified the steps
using the designation A-F. (App. Br. 13). The reproduced claim includes
these designations.
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Application 12/811,643
Rejection 14
The Examiner found Bourgeois teaches a process that corresponds to
the first four steps (A-D) of the claimed invention. The Examiner found
Bourgeois does not teach the last two steps (E and F), i.e., putting the
reaction solution into contact with the mineral ore to form a solution
comprising sodium carbonate, dividing the solution comprising sodium
carbonate into a part which is used to constitute the production solution and
a part which constitutes a produced solution. (Final Act 2-3; Bourgeois
cols. 3--4.) The Examiner found Kube teaches solution mining of a mineral
ore comprising sodium bicarbonate in the presence of a solution comprising
sodium hydroxide to form a solution comprising sodium carbonate which
corresponds to step (E). (Final Act 3; Kube col. 2, 11. 41---65.) The Examiner
found Mani teaches the division of a solution ofNaOH and/or sodium
carbonate, one part being recycled to the electrodialyzer and another portion
(produced solution) which can be processed to form soda ash as a product
which corresponds to step (F). (Final Act 4; Mani col. 14, 11. 46---62.)
Bourgeois teaches it was well known to divide the product solution (sodium
hydroxide separated from sodium bicarbonate solution) for use in other
operations including the decomposition sodium bicarbonate to produce
sodium carbonate that is recycled to the chamber containing the cationic face
of the bipolar membrane. (Bourgeois col. 3, 11. 51---60.) The Examiner
concluded that it would have been obvious to a person of ordinary skill in
the art to utilize the sodium hydroxide, produced by such as described by
4 Appellants argue the claims 1, 2, 9, and 10 together as a group. App. Br.
13-21. We select independent claim 1 as representative of the subject
matter before us on appeal.
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Application 12/811,643
Bourgeois, as a reaction solution for solution mining a mineral ore
comprising sodium bicarbonate form sodium carbonate such as described by
Kube. The Examiner further concluded that it would have been obvious to a
person of ordinary skill in the art to separate sodium carbonate from the
remaining portions of a produced solution and to recycle the formed sodium
carbonate taught by Kube into a portion which is used to constitute the
production solution and a portion which constitutes a produced solution and
recycle sodium carbonate for use in the initial process of Bourgeois. (Final
Act 4--5).
Appellants argue Bourgeois does not disclose that the sodium
hydroxide solution exiting the more basic compartment can be contacted
with a mineral ore comprising sodium bicarbonate to form a solution
comprising sodium carbonate and Kube does not specify that the sodium
hydroxide comes from the process such as described by Bourgeois. (App.
Br. 14--16.) Appellants argue Mani's statement in column 14 would not
suggest sending a portion of this solution removed from the base trona mine
to the less basic compartment of the electrodialytic water splitter. (App. Br.
18-19).
Appellants' arguments are not persuasive of reversible error in the
Examiner's rejection. The dispositive issue presented by Appellants'
arguments is whether it would have been obvious to a person of ordinary
skill in the art to utilize sodium hydroxide in the solution mining of the
mineral ore comprising sodium bicarbonate-thereby forming and extracting
sodium carbonate-and the recycling of sodium carbonate to a process for
producing sodium hydroxide.
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Application 12/811,643
The Examiner correctly found that Bourgeois discloses a process that
corresponds to process steps A-D, which results in the production of sodium
hydroxide. Kube teaches a process that corresponds to process step E,
which utilizes sodium hydroxide for solution mining of a mineral ore
comprising sodium bicarbonate that results in the formation a solution
comprising sodium carbonate. A person of ordinary skill in the art would
have reasonably expected that the sodium hydroxide produced from the
process of Bourgeois would have been suitable for utilization in solution
mining techniques such as described by Kube. Regarding step F, it is not
disputed that sodium carbonate was an initial reaction component in the
process of Bourgeois. Bourgeois teaches the byproducts sodium carbonate
was available for recycling to the initial process. (Bourgeois col. 3, 11. 51-
60.) A person of ordinary skill in the art would have reasonably expected
that a process that results in products including sodium carbonate would
have been available for utilization in other processes including recycling to
the process of Bourgeois for the formation of sodium hydroxide.
Accordingly, we are of the opinion that one of ordinary skill in this art
routinely following the combined teachings of the references as combined
by the Examiner would have reasonably arrived at the claimed process to
produce sodium carbonate and/or sodium bicarbonate from an ore mineral
encompassed by independent claim 1 without resort to Appellants'
Specification. See, e.g., KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) ("[A ]nalysis [of whether the subject matter of a claim would have
been obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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employ."); Jn re Translogic Tech., Inc., 504 F.3d 1249, 1260 (Fed. Cir.
2007) ("[A] flexible approach to the [teaching, suggestion, or motivation to
combine] test prevents hindsight and focuses on evidence before the time of
invention without unduly constraining the breadth of knowledge available to
one of ordinary skill in the art during the obviousness analysis." (Citations
omitted)); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); 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."); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(skill is presumed on the part of one of ordinary skill in the art); In re Bozek,
416 F.2d 1385, 1390 (CCPA 1969) ("Having established that this knowledge
was in the art, the examiner could then properly rely, as put forth by the
solicitor, on a conclusion of obviousness 'from common knowledge and
common sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.'"); see also In re 0 'Farrell, 853
F.2d 894, 903---04 (Fed. Cir. 1988) ("For obviousness under§ 103, all that is
required is a reasonable expectation of success." (Citations omitted)).
Accordingly, we affirm the Examiner's prior art rejection of claims 1,
2, 9 and 10 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
Rejections II-IV
Regarding the rejections of claim 3-5, 6-7, and 8, under 35 U.S.C.
§ 103(a), we affirm these rejections advanced by the Examiner. Appellants
have only presented substantive arguments as to independent claim 1
(rejection discussed above) and have not otherwise presented separate
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Application 12/811,643
arguments on the merits for the rejections of claims 3-5, 6-7, and 8. In this
regard, Appellants do not assert non-obviousness based on the additional
limitations set forth claims 3-5, 6-7, and 8 subject to these rejections by
explaining how the additional references applied thereto by the Examiner
fail to establish the obviousness of the additional features recited in these
separately rejected dependent claims. Because we do not find Appellants'
arguments persuasive as to independent claim 1, it follows that these
arguments are unpersuasive as to claims 3-5, 6-7, and 8.
ORDER
The Examiner's prior art rejections of claims 1-10 under 35 U.S.C.
§ 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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