Omya International AGDownload PDFPatent Trials and Appeals BoardJul 27, 20212020004846 (P.T.A.B. Jul. 27, 2021) 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. 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. Appeal 2020-004846 Application 15/281,935 2 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, Appeal 2020-004846 Application 15/281,935 3 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 Appeal 2020-004846 Application 15/281,935 4 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, Appeal 2020-004846 Application 15/281,935 5 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. Appeal 2020-004846 Application 15/281,935 6 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. Appeal 2020-004846 Application 15/281,935 7 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 Appeal 2020-004846 Application 15/281,935 8 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 Appeal 2020-004846 Application 15/281,935 9 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 Copy with citationCopy as parenthetical citation