Ex Parte Zhou et alDownload PDFPatent Trial and Appeal BoardNov 24, 201512048907 (P.T.A.B. Nov. 24, 2015) Copy Citation 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. 12/048,907 03/14/2008 Xinliang Zhou G1729-00217 5803 8933 7590 11/24/2015 DUANE MORRIS LLP - Philadelphia IP DEPARTMENT 30 SOUTH 17TH STREET PHILADELPHIA, PA 19103-4196 EXAMINER SWAIN, MELISSA STALDER ART UNIT PAPER NUMBER 1732 MAIL DATE DELIVERY MODE 11/24/2015 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 XINLIANG ZHOU, KEVIN HAMMACK, and DALBIR S. SETHI ____________ Appeal 2013-008056 Application 12/048,9071 Technology Center 1700 ____________ Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the decision2 of the Primary Examiner rejecting claims 1–7, 9–15, 17, 18, and 20–25. Final Act. 2–8. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. OPINION Appellants’ invention “relates to an efficient method for the aqueous liquid-liquid extraction of hydrogen peroxide from H2O2-containing work 1 The Real Party in Interest is PeroxyChem LLC. Statement under 37 C.F.R. § 3.73(b), filed July 3, 2014. Appellants previously identified the Real Party in Interest as FMC Corporation. Br. 3. 2 Final Office Action, mailed June 28, 2012 (“Final Act.”). Appeal 2013-008056 Application 12/048,907 2 solution in a H2O2 anthraquinone auto-oxidation process.” Spec. ¶ 2. Claim 1, reproduced below, is representative of the appealed subject matter: 1. A method for the recovery of hydrogen peroxide produced in an auto-oxidation process comprising contacting a H2O2-containing organic solution in an auto-oxidation process with an aqueous extraction medium in a device with elongated channels having at least one cross sectional dimension within the range of from about 5 microns to about 5 mm, to effect liquid-liquid extraction of hydrogen peroxide from the organic solution into the aqueous medium, and thereafter separating the aqueous medium containing extracted hydrogen peroxide from the H2O2-depleted organic solution to obtain a H2O2-containing aqueous solution, wherein the device further comprises three or more channeled devices connected in a series of stages, in which recovery of H2O2 from the organic solution into the aqueous medium is effected in each stage and the overall relative flow of aqueous medium and organic solution between stages is in a countercurrent direction. Br. 16 (paragraphing added). Rejection Based on Sethi and Fang The Examiner rejected claims 1–5, 13, 14, 21, 24, and 25 under 35 U.S.C. § 103(a) as obvious over the combination of Sethi3 and Fang.4 Appellants present four arguments against this rejection. First, Appellants argue that Sethi teaches the use of a microchannel device only in the production of hydrogen peroxide and fails to teach or suggest the claimed use of a microchannel device in extraction of hydrogen peroxide. Appeal 3 Sethi et al., US 2007/0053829 A1, published Mar. 8, 2007. 4 Zhaolun Fang, Liquid-Liquid Extraction Separation in Microfluidic Chip, in MICROFLUIDIC CHIPS FOR ANALYTIC CHEMISTRY 218, 218–25 (2003) (English translation). Appeal 2013-008056 Application 12/048,907 3 Br. 8. We do not find this argument persuasive of any harmful error by the Examiner, because the Examiner did not rely on Sethi to teach or suggest extraction in a microchannel device. Instead, the Examiner relied on Fang as teaching or suggesting such extraction. Final Act. 3. The evidence of record supports the Examiner’s finding that Fang teaches the use of a microchannel device to carry out liquid-liquid extraction. Fang 1–3.5 Second, Appellants argue that Sethi fails to teach that conventional extraction (i.e., extraction carried out by means other than microchannel devices) requires improvement and that, therefore, the person of ordinary skill in the art would have had no reason to improve Sethi’s production and extraction of hydrogen peroxide by use of Fang’s extraction process. Br. 9. This argument is not persuasive of any harmful error by the Examiner. The failure of the prior-art references themselves to identify a teaching, suggestion, or motivation to combine the prior-art references is not fatal to an obviousness rejection; instead, an obviousness rejection may be supported by “some articulated reasoning with some rational underpinning” to combine known elements in the manner required by the claims. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner provides such articulated reasoning, finding that Fang “teaches that extraction separation in the microchannels requires no mechanical shaking, the extraction reaches equilibrium quickly, has a large specific surface while extraction efficiency is high.” Final Act. 3. Appellants have not identified evidence of record that suggests that the Examiner’s finding is in error. 5 Citations to Fang are to the page numbers of the English translation, rather than to the page numbers of the original Chinese publication. Appeal 2013-008056 Application 12/048,907 4 Third, Appellants argue that Fang teaches only microfluidic chips for laboratory analysis, providing no reason to combine Fang’s extraction process with Sethi’s industrial- or commercial-scale production process. Appeal Br. 9–10. We are not persuaded by this argument. The rejection is not based on a bodily incorporation of Fang’s microchannel device into the production and extraction process taught by Sethi; instead, the rejection is based on what Sethi and Fang would have suggested to a person of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”). Further, Appellants have not asserted that the proposed combination of Sethi and Fang, either by scaling Fang up to industrial capacities or by scaling Sethi down to laboratory scale,6 would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and we find a person of ordinary skill in the art would overcome those difficulties within their level of skill. KSR, 550 U.S. at 418; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Finally, Appellants argue that the results obtained using their claimed method are unexpected, rendering the claims non-obvious. Br. 11–12. 6 We note, as did the Examiner, that Appellants’ claims are not limited to any particular scale, Br. 16–20, so either scaling up of Fang for combination with Sethi or scaling down of Sethi for combination with Fang would be sufficient to render Appellants’ claims obvious. Appeal 2013-008056 Application 12/048,907 5 Specifically, argue Appellants, the claimed three-stage microchannel extraction achieves 97% recovery, which would not have been expected by a person of ordinary skill in the art, given that conventional extraction processes required 24 stages to achieve this level of recovery and that a single microchannel stage can achieve only 60% recovery. Id. We are not persuaded by this argument. Although Appellants argue that the 97% recovery demonstrated by their claimed three-stage microchannel extraction process would have been unexpected, the evidence demonstrates otherwise, as the Examiner found. The evidence submitted by Appellants shows that adding stages to an extraction process improves the level of recovery: the use of 24 stages that each achieve 20% to 50% recovery results in an overall recovery of 96% to 97%. Id. Accordingly, the Examiner found that it would not have been surprising to a person of ordinary skill in the art that three microchannel devices that achieved 60% recovery each would, when placed in series, achieve an overall recovery of 97%. Answer 11. Appellants have not directed us to any evidence that suggests this finding was in error. Rejections Based on Ledon and Fang The Examiner rejected claims 1–3, 5, 7–9, 13, 14, 21, 24, and 25 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon7 and Fang. The Examiner also rejected claim 4 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Brophy;8 claims 6, 17, 18, 20, 22, and 23 under 35 U.S.C. § 103(a) as obvious over the combination 7 Ledon, US 5,827,493, issued Oct. 27, 1998. 8 Brophy et al., US 7,118,920 B2, issued Oct. 10, 2006. Appeal 2013-008056 Application 12/048,907 6 of Ledon, Fang, and Lepoutre;9 claims 10–12 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Goor;10 and claim 15 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Ogasawara.11 Appellants present four arguments against these rejections. First, Appellants argue that Ledon fails to teach or suggest the claimed use of a microchannel device in extraction of hydrogen peroxide. Br. 13. We find this argument unpersuasive for the same reasons discussed above with respect to the same argument against Sethi, namely, that the Examiner did not rely on Ledon to teach or suggest extraction in a microchannel device. Instead, the Examiner relied on Fang as teaching or suggesting such extraction. Final Act. 5. The evidence of record supports the Examiner’s finding that Fang teaches the use of a microchannel device to carry out liquid-liquid extraction. Fang 1–3. Second, Appellants argue that Ledon fails to teach that conventional extraction (i.e., extraction carried out by means other than microchannel devices) requires improvement and that, therefore, the person of ordinary skill in the art would have had no reason to improve Ledon’s production and extraction of hydrogen peroxide by use of Fang’s extraction process. Br. 13. As noted above with respect to the combination of Sethi and Fang, this argument is not persuasive of any harmful error by the Examiner. The failure of the prior-art references themselves to identify a teaching, suggestion, or motivation to combine the prior-art references is not fatal to 9 Lepoutre, US 6,340,410 B1, issued Jan. 22, 2002. 10 Goor et al., US 2005/0069483 A1, published Mar. 31, 2005. 11 Ogasawara et al., US 6,126,914, issued Oct. 3, 2000. Appeal 2013-008056 Application 12/048,907 7 an obviousness rejection; instead, an obviousness rejection may be supported by “some articulated reasoning with some rational underpinning” to combine known elements in the manner required by the claims, KSR, 550 U.S. at 418–19 (citing Kahn, 441 F.3d at 988), which the Examiner provided here. Final Act. 5. Third, Appellants argue that Fang teaches only microfluidic chips for laboratory analysis, providing no reason to combine Fang’s extraction process with Ledon’s industrial- or commercial-scale production process. Br. 13. As discussed above with respect to the combination of Sethi and Fang, we are not persuaded by this argument. The rejection is not based on a bodily incorporation of Fang’s microchannel device into the production and extraction process taught by Ledon; instead, the rejection is based on what Ledon and Fang would have suggested to a person of ordinary skill in the art. Further, Appellants have not asserted that the proposed combination of Ledon and Fang, either by scaling Fang up to industrial capacities or by scaling Ledon down to laboratory scale,12 would have been beyond the capabilities of a person of ordinary skill in the art. Finally, Appellants present the same unexpected-results argument discussed above. For the reasons discussed above, we do not find this argument persuasive of any harmful error by the Examiner. Because Appellants have not persuaded us that the Examiner harmfully erred in rejecting any of Appellants’ claims, we affirm each of the Examiner’s rejections. 12 We note, as did the Examiner, that Appellants’ claims are not limited to any particular scale, Br. 16–20, so either scaling up of Fang for combination with Ledon or scaling down of Ledon for combination with Fang would be sufficient to render Appellants’ claims obvious. Appeal 2013-008056 Application 12/048,907 8 ORDER The Examiner’s rejection of claims 1–5, 13, 14, 21, 24, and 25 under 35 U.S.C. § 103(a) as obvious over the combination of Sethi and Fang is affirmed. The Examiner’s rejections of claims 1–3, 5, 7–9, 13, 14, 21, 24, and 25 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon and Fang; of claim 4 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Brophy; of claims 6, 17, 18, 20, 22, and 23 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Lepoutre; of claims 10–12 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Goor; and of claim 15 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang, and Ogasawara also are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED cdc Copy with citationCopy as parenthetical citation