Omya International AG

Patent Trials and Appeals Board

Jul 27, 2021

2020004846 (P.T.A.B. Jul. 27, 2021)

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.
15/281,935 09/30/2016 Matthias Buri OMYA 200008US03 9866
163570 7590 07/27/2021
FAY SHARPE LLP/Omya International AG
The Halle Building, 5th Floor
1228 Euclid Avenue
Cleveland, OH 4415
EXAMINER
ZALASKY MCDONALD, KATHERINE MARIE
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/27/2021 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):
ipgroup@omya.com
smccollister@faysharpe.com
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHIAS BURI,
SAMUEL RENTSCH, PATRICK A.C. GANE,
RENÉ VINCENZ BLUM, and MARTINE POFFET
____________

Appeal 2020-004846
Application 15/281,935
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1, 3, 6, 8, 9, 12–16, 19, 20, 22,
and 25–38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as OMYA
INTERNATIONAL AG. Appeal Br. 1.
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The invention generally relates to a process of producing aqueous
earth alkali hydrogen carbonate solutions, and the use of such solutions for
the remineralization of water. Spec. 1, 3, 8. The Specification discloses the
aqueous solution is prepared by mixing water and at least one substance
comprising at least one earth alkali carbonate and providing CO2 to form a
suspension containing particles and having a pH of between 6 and 9. Id. at
7. The suspension is then filtered to arrive at the aqueous earth alkali
hydrogen carbonate solution from which the desired earth alkali carbonate is
precipitated. Id. at 8. This solution is then used to mineralize water. Id.
Claim 1 illustrates the invention and is reproduced below from the Claims
Appendix of the Appeal Brief:
1. A process for the mineralization of water comprising the
following steps:

(I) providing feed water,

(II) providing an aqueous solution comprising at least
one earth alkali hydrogen carbonate, and

(III) combining the feed water of step I) and the aqueous
solution comprising at least one earth alkali hydrogen carbonate
of step II) in order to obtain mineralized water,

wherein the aqueous solution comprising at least one
earth alkali hydrogen carbonate in step (II) is obtained by the
process comprising the steps of:

a) providing water,

b) providing at least one substance comprising at least
one earth alkali carbonate, the at least one substance being in a
dry form or in an aqueous form, wherein the at least one
substance is selected from the group consisting of marble,
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limestone, chalk, dolomite, and precipitated calcium carbonate,
and wherein the at least one substance has a specific surface
area (SSA) in the range of 0.01 to 200 m2/g, and a weight
median particle size (d50) in the range of 1.0 μm to 50 μm,

c) providing CO2,

d) combining the at least one substance of step b) with
the CO2 of step c) in the water of step a) at a temperature in a
range of 5 to 55°C in order to obtain a resulting suspension S
having a pH of between 6 and 9, a solids content in the range of
1 to 35 wt.-% based on the total weight of the resulting
suspension S, and containing particles that represent a total
particle surface area (SSAtotal) that is greater than 20,000
m2/tonne of the resulting suspension S, and

e) filtering at least a part of the resulting suspension S
that is obtained in step d) by passing the resulting suspension S
through a filtering device in order to obtain an aqueous solution
comprising at least one earth alkali hydrogen carbonate.

Appeal Br. 13–14 (Claims App.).
Independent claim 38 recites a method that is substantially identical to
the method recited in claim 1. Appeal Br. 18–19.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated September 18, 2019:
I. claim 37 rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement;

II. claim 37 rejected under 35 U.S.C. § 112, second paragraph as
being indefinite; and

III. claims 1, 3, 6, 8, 9, 12–16, 19, 20, 22, and 25–38 rejected under
35 U.S.C. § 103(a) as unpatentable over Geerlings (US 2007/0202032 A1,
published Aug. 30, 2007), Choi (US 2011/0132840 A1, published June 9,
2011), USGS (2009 Minerals Yearbook, published 2009), Gane (WO
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Application 15/281,935

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2010/063757 A1, published June 10, 2010), and Schoenlaub (US 2,455,813,
issued Dec. 7, 1948).

OPINION
Rejections under 35 U.S.C. § 112 first paragraph (Written Description) and
§ 112, second paragraph (Indefiniteness)(Rejections I and II)

The Examiner maintains the rejections of claim 37 under 35 U.S.C.
§ 112, first paragraph, as lacking written description support for the claimed
subject matter and under 35 U.S.C. § 112, second paragraph, as indefinite.
Ans. 3–4.
Appellant does not dispute these rejections. See generally Appeal and
Reply Briefs. We also find no indication in the prosecution record that these
rejections were withdrawn by the Examiner. Therefore, we summarily
affirm the Examiner’s rejections of claim 37 under 35 U.S.C. § 112, first and
second paragraphs (Rejections I and II). See MPEP § 1205.02 (2017) (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it.”); see also Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present
arguments on a particular issue—or more broadly, on a particular
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).

Rejection under 35 U.S.C. 103(a) (Rejection III)
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we reverse the Examiner’s prior art rejection of claims 1, 3, 6,
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Application 15/281,935

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8, 9, 12–16, 19, 20, 22, and 25–38 under 35 U.S.C. § 103(a) for essentially
the reasons Appellant presents. We add the following for emphasis.
Claim 12 recites a process for the mineralization of water with the
steps of combining feed water with an aqueous solution comprising at least
one earth alkali hydrogen carbonate. Additionally, the claimed process
requires the aqueous solution to be produced by combining at least one
substance comprising an earth alkali carbonate in the form of marble,
limestone, chalk, dolomite, or precipitated calcium carbonate, with CO2 and
water, to form a suspension, and subsequently filtering the suspension to
form the aqueous solution that is used for the mineralization of water.
The premise of the Examiner’s rejection is to modify Geerlings’s
method of making aqueous solution from mixed metal oxides feedstock by
substituting the mixed oxide feedstock with an earth alkali carbonate
feedstock and then use the solution from the modified method to mineralize
water. See generally Final Act. Specifically, the Examiner finds Geerlings
discloses a process for the production of a precipitated earth alkali carbonate
using feedstocks from natural mineral sources or industrial byproducts, such
as steel slag, that may include at least calcium oxide (burnt lime), or a
mixture of calcium and magnesium mixed metal oxides. Final Act. 4;
Geerlings ¶¶ 7, 25–30. The Examiner determines that it would have been
obvious to one of ordinary skill in the art to use a broad subset of starting
materials, including the claimed earth alkali carbonate materials, in

2 Appellant presents arguments only for the subject matter of independent
claims 1 and 38. See generally Appeal Br. As we note above, the subject
matters of claims 1 and 38 are substantially identical. Therefore, we limit
our discussion to claim 1 with the understanding that this discussion applies
equally to claim 38 as well as to all the dependent claims.
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Geerlings’s method based on Geerlings’s disclosure on paragraph 29. Final
Act. 4. The Examiner also relies on Gane and Schoenlaub as teaching the
use of synthetic calcium carbonates (PCC) and natural calcium carbonates as
feedstocks. Final Act. 5; Gane ¶¶ 23–25; Schoenlaub col. 1, ll. 5–10, 41–
51.3 Citing to Choi,4 the Examiner then concludes that it would have been
obvious to mix the aqueous solution of calcium and magnesium bicarbonate
of Geerlings with a desalinated feed water to arrive at a water suitable for
human consumption and to increase the alkalinity of the water to be less
corrosive to distribution systems. Final Act. 10.
Appellant argues Geerlings requires a mixed metal oxide feedstock to
form the aqueous solution from which the desired carbonate material is
precipitated while the claimed invention uses earth alkali carbonates as
feedstocks for the aqueous solution. Appeal Br. 8, 10–11; Geerlings ¶¶ 15–
20. According to Appellant, Geerlings’s feedstocks are always mixed metal
oxides because the use of this feedstock provides the technical benefit of
CO2 sequestration. Appeal Br. 8, 9; Geerlings ¶ 21. Appellant contends that
replacing Geerlings’s mixed metal oxide feedstock with the claimed earth
alkali carbonate feedstocks would render Geerlings unsuitable for the
intended purpose of CO2 sequestration. Appeal Br. 9.

3 A discussion of USGS is unnecessary for disposition of this appeal. The
Examiner relies on USGS primarily to establish that it is known to use the
starting materials in the form of marble, limestone, chalk, dolomite, and
precipitated calcium carbonate. Final Act. 5–6.
4 A substantive discussion of Choi is also unnecessary for disposition of this
appeal. The Examiner relies on Choi to establish that it is known to mix
calcium or magnesium bicarbonate with purified water to re-mineralize the
water. Final Act. 9.
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Appellant has identified reversible error in the Examiner’s
determination of obviousness. The Examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
As Appellant explains, Geerlings requires a mixed metal oxide
feedstock because Geerlings’s process does not only make a carbonate
product, but also sequestrates CO2. Appeal Br. 8. Geerlings discloses “[t]he
present invention relates to a process for producing CaCO3 or MgCO3 from
a feedstock containing a Ca- or Mg-comprising mixed metal oxide and to a
process for the production of an aqueous solution of Ca(HCO3)2 or
Mg(HCO3)2.” Geerlings ¶ 1. Geerlings also discloses that “[i]t has now
been found that if mineral feedstocks comprising mixed metal oxides are
used for CO2 sequestration, it is possible to obtain CaCO3 or MgCO3 of a
high purity, whilst sequestrating a relatively large amount of CO2.” Id. ¶ 15;
see also id. ¶ 21. Therefore, we agree with Appellant that Geerlings, when
read as a whole, is directed to the use of mixed metal oxides as feedstocks
for producing the desired carbonate products. Appeal Br. 8–9.
In response, the Examiner contends Geerlings’s disclosure in
paragraphs 27–29 shows a preference for mixed metal oxide feedstock but
does not discourage broader categories of “a mixture of a Ca-comprising
feedstock and a Mg-comprising feedstock” or “a feedstock comprising both
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Application 15/281,935

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Ca and Mg.” Ans. 12. However, the feedstocks discussed in paragraphs 27
and 28 of Geerlings fall within Geerlings’s definition of mixed metal oxide,
which notably does not include or exemplify alkali earth carbonates.
Geerlings ¶ 26. The Examiner’s reliance on the disclosure in paragraph 29
as broadening the feedstocks useful for Geerlings’s process is also
unavailing because one skilled in the art, when reading Geerlings as a whole,
would have understood that Ca-comprising feedstock and Mg-comprising
feedstock in this paragraph is within the context of the use of mixed metal
oxide feedstocks. Further, given Geerlings’s definition for mixed metal
oxides, the Examiner does not explain why one skilled in the art would have
considered earth alkali carbonates to be mixed metal oxides. Nor does the
Examiner direct us to other objective evidence that shows earth alkali
carbonates to be mixed metal oxides. The Examiner’s reliance on Gane and
Schoenlaub as teaching carbonate feedstocks (Ans. 13) is also misplaced
because the Examiner does not explain why such feedstocks are suitable for
Geerlings’s process.
Further, given that Geerlings attributes the use of mixed metal oxides
with the sequestrating of large amounts of CO2 (Geerlings ¶¶ 15, 21), the
Examiner fails to provide a technical explanation why one skilled in the art
would have reasonably expected that the aqueous solutions made from alkali
earth carbonate feedstocks would be suitable for Geerlings’s process of
precipitating carbonate products as well as sequestrating a relatively large
amount of CO2 as disclosed by Geerlings.
Furthermore, the Examiner does not direct us to any portion of
Geerlings that discloses using the aqueous solution before the precipitation
step as suitable for the mineralization of water. Nor does the Examiner
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provide an adequate technical explanation of why Geerlings’s modified
aqueous solution would be suitable for the mineralization of water given that
Geerlings’s focus is to produce precipitated carbonates.
Thus, the Examiner’s reasoning for combining the teachings of the
cited art is no more than speculation that falls short of the requisite
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418.
Accordingly, we reverse the prior art rejection of claims 1, 3, 6, 8, 9,
12–16, 19, 20, 22, and 25–38 under 35 U.S.C. § 103(a) for the reasons
Appellant presents and those we provide above.

DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
37 112, 1st
paragraph
Written Description 37
37 112, 2nd
paragraph
Indefiniteness 37
1, 3, 6, 8, 9,
12–16, 19, 20,
22,
25–38
103(a) Geerlings, Choi,
USGS, Gane,
Schoenlaub
1, 3, 6, 8, 9,
12–16, 19, 20,
22,
25–38
Overall
Outcome
37 1, 3, 6, 8, 9,
12–16, 19, 20,
22,
25–36, 38

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 IN PART