Ex Parte Becker et al

Patent Trial and Appeal Board

Oct 25, 2018

12617254 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/617,254 11/12/2009
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
10/25/2018
FIRST NAMED INVENTOR
Thomas M. Becker
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.
IOFI 200009US01 4225
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
10/25/2018 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 THOMAS M. BECKER, MARTINS. REINEKE,
and CHARLES A. SCHNEIDER
Appeal2017-009833
Application 12/617,254
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
SHELDON M. McGEE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 2, 5, 7-16, and 21-23. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for generating iodine from an aqueous
solution containing sodium chloride and iodide. Claim 2 is illustrative:
2. A method for generating elemental iodine from an
aqueous solution comprising sodium chloride and iodide, the
method comprising:
reacting a first portion of the aqueous solution in an
electrolytic cell to produce sodium hypochlorite in the first
portion, the first portion being received directly from a source
of the aqueous solution;
Appeal2017-009833
Application 12/617,254
combining the first portion containing sodium
hypochlorite with a second portion of the aqueous solution in a
reactor to reform the aqueous solution and to produce elemental
iodine in the aqueous solution, wherein the pH of the aqueous
solution in the reactor is maintained in a range from 6.0 to 6.8
by the addition of an acid, and wherein the second portion is
received directly from the source of the aqueous solution; and
feeding the aqueous solution containing elemental iodine
to a top of an adsorption unit to adsorb the elemental iodine.
Girvin
Robinson
Nakamura
Joyce
Fletcher
Darmawan
Inayama
(JP '196, as translated)
The References
us 1,774,882
us 2,282,289
us 3,346,331
us 3,455,820
us 3,817,627
US 2004/0251191 Al
JP 51-116196 A
The Rejections
Sept. 2, 1930
May 5, 1942
Oct. 10, 1967
July 15, 1969
June 18, 1974
Dec. 16, 2004
Oct. 13, 1976
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
claims 2, 5, 7, 9--16, 21, and 22 over JP '196 in view ofNakamura,
Robinson, and optionally Fletcher, claim 23 over JP '196 in view of
Nakamura, Robinson, optionally Fletcher, and Darmawan, 1 claims 2, 5, 8-
16, and 21-23 over JP '196 in view of Girvin, Robinson, and optionally
Fletcher, claim 23 over JP '196 in view of Girvin, Robinson, optionally
Fletcher, and Joyce,2 claims 2, 5, 7, 9--16, 21, and 22 over Robinson in view
of JP '196, Nakamura, and optionally Fletcher, claim 23 over Robinson in
1 The Examiner apparently inadvertently omits Nakamura, Robinson, and
Fletcher from the statement of this rejection (Ans. 7).
2 The Examiner apparently inadvertently omits Fletcher from the statement
of this rejection (Ans. 9).
2
Appeal2017-009833
Application 12/617,254
view of JP '196, Nakamura, optionally Fletcher, and Darmawan, 3 claims 2,
5, 8-16, 21, and 22 over Robinson in view of JP '196, Girvin, and optionally
Fletcher, and claim 23 over Robinson in view of JP '196, Girvin, optionally
Fletcher, and Joyce. 4 ,5
OPINION
We affirm the rejections.
The Appellants state that the claims in each rejection of multiple
claims stand or fall together, and the Appellants do not separately argue the
rejections of dependent claim 23 (App. Br. 5---6, 9-11 ). We therefore limit
our discussion to one claim, i.e., claim 2, which is the sole independent
claim. The other claims stand or fall with that claim. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2012).
JP '196 separates iodine from iodide-containing brine by electrolyzing
brine (which preferably is waste brine after recovering iodine6) to form
chlorine at the anode and caustic soda at the anode, reacting the chlorine and
caustic soda at the exit of the electrolytic cell to form sodium hypochlorite,
and mixing the electrolyzed brine with iodide-containing brine such that the
sodium hypochlorite oxidizes the iodide to iodine (p. 4). Because the
sodium hypochlorite does not have oxidation potential for oxidizing iodide
3 The Examiner apparently inadvertently omits Robinson from the statement
of this rejection (Ans. 12).
4 The Examiner apparently inadvertently omits Fletcher from the statement
of this rejection (Ans. 13).
5 The Examiner withdraws a rejection under 35 U.S.C. § 112, first
paragraph, written description requirement (Ans. 13).
6 JP '196 states that "[ t ]he same effect is obtained even in original brine"
(p. 8), but using original brine has "a drawback that iodine ions contained in
the initial electrolytic solution cannot be recovered" (id.).
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Appeal2017-009833
Application 12/617,254
to iodic acid ions (iodate), the sodium hypochlorite/iodide reaction can be
carried out at the pH of ordinary brine, i.e., near-neutral or alkaline, but
"[ t ]here is no difference even when it [ sodium hypochlorite] is used under
acidic conditions" (pp. 4--5).
Robinson recovers iodine from natural brine by acidifying
iodide-containing brine to a pH of about 3 to about 6 and using sodium
hypochlorite to oxidize the iodide to iodine (p. 1, right col., 11. 6-18, 28--44;
p. 2, left col., 11. 8-16).
The Appellants assert that JP '196' s disclosure that use of original
brine has "a drawback that iodine ions contained in the initial electrolytic
solution cannot be recovered" (p. 8) "teaches away from the use of original
brine" (App. Br. 7-8).
JP '196 does not indicate that original brine is unsuitable but, rather,
states that compared to using post-iodine-recovery waste brine, using
original brine has the same effect but has the drawback of not enabling
recovery of iodine ions from the initial electrolytic solution (p. 8). Thus,
JP '196 would have led one of ordinary skill in the art, through no more than
ordinary creativity, to use original brine when recovery of iodine ions from
the initial electrolytic solution is not required. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007) (in making an obviousness determination one
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ").
The Appellants assert that the pH range in Robinson's process
wherein iodine is blown out from the reaction solution (p. 1, right col.,
11. 14--20) is not necessarily suitable in JP '196's process which is not
disclosed as including such a blowout step (App. Br. 8).
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Appeal2017-009833
Application 12/617,254
The Appellants do not explain, and it is not apparent, why the reaction
pH range which is suitable in JP '196' s process depends upon the method for
separating iodine from the reaction solution.
The Appellants assert that JP '196' s disclosure that the pH need not be
controlled teaches away from the combination with Robinson (App. Br. 8).
JP '196 's disclosure that there is no difference between using a
near-neutral or alkaline solution without pH control or using acidic
conditions (pp. 4--5) would have led one of ordinary skill in the art, through
no more than ordinary creativity, to use acidic conditions known in the art to
be suitable for using sodium hypochlorite to oxidize iodide to iodine with
little or no iodate formation, such as Robinson's acidic condition wherein
the pH is 6 (p. 1, left col., 11. 23-29, 46-55; right col., 11. 36-45). See KSR,
550 U.S. at 418.
Thus, we are not persuaded of reversible error in the rejections.
DECISION
The Examiner's decision is affirmed as to all rejections.
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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