Ex Parte Buckley et al

Patent Trial and Appeal Board

Jul 26, 2016

12935663 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/935,663 11/15/2010 David Buckley
65895 7590 07/28/2016
ALBEMARLE CORPORATION
451 FLORIDA STREET
BATON ROUGE, LA 70801-1765
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.
OZ-08096-US 6169
EXAMINER
WANGA, TIMON
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
mariela. stein@albemarle.com
Albemarle.IPDocket@albemarle.com
docket-ip@mcglinchey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BUCKLEY,
J. DAVID GENDERS, DAN ATHERTON, and RAINER AUL
Appeal2015-000886
Application 12/935,663
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 1--4, 6-9,
16-23, 25-32, 34, and 43. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Rockwood Lithium Inc. (formerly Chemetall Foote
Corp.) as the Real Party in Interest. App. Br. 2.
Appeal2015-000886
Application 12/935,663
Tlie Claimed Liivention
Appellants' disclosure relates to a method for recovering lithium as
lithium hydroxide by feeding an aqueous stream containing lithium ions to a
bipolar electrodialysis cell, wherein the cell forms a lithium hydroxide
solution. Abstract; Spec. i-f 1. Claim 1 is representative of the claims on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 11 ):
1. A method for recovering lithium as lithium hydroxide, the
method comprising steps of:
adjusting an aqueous feed stream containing lithium ions
to a pH of 10 to 11 to precipitate an impurity;
removing the precipitated impurity to yield a purified
aqueous stream containing lithium ions;
subsequently adjusting the purified aqueous stream
containing lithium ions to a pH of 1 to 4 to yield an acidic
aqueous stream containing lithium ions; and
sending the acidic aqueous stream containing lithium ions
to a bipolar membrane electrodialysis cell, wherein the cell
forms a lithium hydroxide solution.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Brown us 4,036,713 July 19, 1977
Wilson us 5,129,936 July 14, 1992
Lin et al., US 6,514,311 Bl Feb.4,2003
(hereinafter "Lin")
Armand et al., US 6,514,640 Bl Feb.4,2003
(hereinafter "Armand")
Putter et al., US 6,770,187 Bl Aug. 3, 2004
(hereinafter "Putter")
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Application 12/935,663
Nagghappan et al., US 2005/0051488 Al 1\!far. 10, 2005
(hereinafter "N agghappan")
Jaewon Lee et al., Characteristics of lithium iron phosphate
(LiFeP04) particles synthesized in subcritical and supercritical
water, 35 J. Supercritical Fluids 83-90 (2005) (hereinafter "Jaewon
Lee").
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4 and 6-8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown in view ofNagghappan and Lin.
2. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown in view ofNagghappan and Lin.
3. Claims 16-28 and 34 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Brown in view ofNagghappan and Lin as applied to
claim 1, and further in view of Putter.
4. Claims 29-32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown in view ofNagghappan, Lin, and Putter as applied
to claim 16, and further in view of Wilson and Jaewon Lee.
5. Claim 43 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown in view ofNagghappan and Lin as applied to claim
1, and further in view of Armand.
OPINION
Having considered the respective positions advanced by the
Examiner and Appellants in light of this appeal record, we affirm the
Examiner's rejections for the reasons set forth in the Answer, which
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Application 12/935,663
\Ve adopt as our own. \Ve highlight and address specific findings and
arguments for emphasis as follows.
Rejection 1
Appellants argue claims 1--4 and 6---8 as a group. We, therefore, select
claim 1, the sole independent claim, as representative of this group, and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of Brown, Nagghappan, and Lin
teaches all of claim 1 's limitations and would have rendered claim 1
obvious. Ans. 2, 3.
The Examiner finds that Brown teaches a process for the production
of high purity lithium hydroxide and that the pH of the feed stream of the
process, i.e., brine, is "increased to about 10.5 to about 11.5, preferably
utilizing a product of the process, lithium hydroxide to precipitate
substantially all of any remaining magnesium contaminants" and resulting in
"substantially complete removal" of all cations other than lithium. Ans. 2
(citing Brown, Abstract, Title, col. 3, 11. 20-34). The Examiner finds further
that although Brown teaches initially electrolyzing the brine solution, it does
not teach doing so subsequent to the initial pH modulation of the brine, as
required by claim 1. Id. (citing Brown, Abstract). The Examiner, however,
finds that Nagghappan teaches this missing limitation. Id.
In particular, the Examiner finds that Nagghappan teaches a method
for the treatment of a wastewater feed comprising two separation systems, a
first and a second, which utilize techniques of "electrodialysis,
electrodeionization, microfiltration, and evaporation/condensation," at least
one of which is performed after a modulation of the pH. Ans. 2 (citing
Nagghappan i-fi-15, 28, Abstract). The Examiner finds further that
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Application 12/935,663
Nagghappan teaches the "influent source comprising wastewater to be
treated having a pH less than about 3.5," but that it does not explicitly teach
adjusting the pH of the feed to that level. Id. (citing Nagghappan i-f 6). The
Examiner, however, relies on Lin for disclosing that limitation. Id. at 3.
Specifically, the Examiner finds that Lin teaches a process for recovering
metals from waste lithium ion batteries and a method of pH modulation for
the membrane electrolysis to be over 1.5. Id. (citing Lin, Abstract, col. 2, 11.
54---63).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have utilized
"the features ofNagghappan ... in light of the purification method of Brown
in order to achieve a further purified stream" and "the pH adjustment
features of Lin ... in light of the purification method of Brown" to arrive at
Appellants' claimed invention. Ans. 3 (citing Nagghappan i-f 5; Lin, col. 2,
11. 54---63).
Appellants argue that the Examiner's rejection should be reversed
because "Nagghappan is nonanalogous art" and "one of skill in the art at the
time the invention was made would not have combined [Brown and
Nagghappan] in the manner suggested by the Examiner." App. Br. 7, 8.
Appellants further argue that "the combination of Brown, N agghappan, and
Lin is based on improper hindsight." Id. at 6.
We are not persuaded by Appellants' arguments. For a prior art
reference to qualify as analogous art to the claimed invention to support an
obviousness rejection, the reference must be either: ( 1) "from the same field
of [the Applicant's] endeavor, regardless of the problem addressed" or (2)
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"reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
In this case, on the record before us and contrary to Appellants'
argument, we are persuaded that N agghappan satisfies both tests recited in
Bigio and thus, is analogous prior art. Regarding the first test, based on the
Examiner's findings regarding Nagghappan's disclosures and the
Specification, the record supports the finding that both Nagghappan and
Appellants' claimed invention are from the same field of endeavor, i.e.,
utilizing electrolysis in purification processes for industrial, aqueous feed
streams. Nagghappan i-fi-13, 28; Spec. i-fi-19, 10, 12, claim 1. Appellants'
argument that Nagghappan is nonanalogous art is unpersuasive in this regard
because it construes the Examiner's findings regarding the scope of
Nagghappan's teachings and defines the applicable field of endeavor too
narrowly.
Regarding the second test, the record supports the finding that
Nagghappan is reasonably pertinent to the problem with which the inventors
are involved. As the Examiner found (Ans. 10), Nagghappan teaches a
feedstream purification process that utilizes several of the same electrolysis
features and techniques, i.e., electrodialysis and electrodeionization, utilized
by and disclosed in the claimed invention for the similar purpose of
purifying an industrial, aqueous feed stream. Nagghappan i-fi-13, 5, 28; Spec.
i-fi-19, 10, 12. Moreover, based on the teachings of the cited references, we
concur with the Examiner's conclusion (Ans. 3, 10) that it would have been
obvious to one of ordinary skill in the art at the time of the invention to have
utilized Nagghappan's features in Brown's purification method in order to
achieve a further purified stream. Nagghappan i-fi-13, 5, 28; Brown, Abstract,
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Title, col. 3, 11. 20-34. \Ve do not find Appellants' argument sufficient to
rebut or otherwise establish reversible error in the Examiner's analysis and
findings in this regard.
We also do not find Appellants' argument that "the combination of
Brown, Nagghappan, and Lin is based on improper hindsight" (App. Br. 6)
persuasive. Rejections based on obviousness must be supported by "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).
As our reviewing court has held:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as
it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellants' disagreement with the Examiner's reason for combining
the references, without more, is insufficient to establish reversible error.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
We have fully considered the Examiner's findings in light of
Appellants' argument and find that the Examiner provides well-supported
and articulate reasoning without resorting to improper hindsight. Indeed, the
Examiner's findings regarding the combined teachings of Brown,
Nagghappan, and Lin and rationale for why one of ordinary skill would have
combined the teachings of these references to arrive at Appellants' claimed
invention (Ans. 2, 3, 9, 10) are supported by a preponderance of the
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evidence and based on sound technical reasoning. Brown, Abstract, Title,
col. 3, 11. 20-34; Nagghappan i-fi-13, 5, 28; Lin, Abstract, col. 2, 11. 54---63.
Accordingly, we affirm the Examiner's rejection of claims 1--4 and 6-
8 under 35 U.S.C. § 103(a) as unpatentable over the combination of Brown,
N agghappan, and Lin.
Rejections 2 through 5
In response to the Examiner's Rejections 2 through 5, Appellants do
not present any new or additional arguments. Instead, Appellants rely on the
same arguments presented in response to Rejection 1 and state that each of
these rejections should be reversed "in light of the remarks contained
herein." App. Br. 9, 10.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner's Rejections 2 through 5.
DECISION/ORDER
The Examiner's rejections of claims 1--4, 6-9, 16-23, 25-32, 34, and
43 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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 )(iv).
AFFIRMED
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