Ex Parte Byers et al

Patent Trial and Appeal Board

Jul 25, 2018

15090654 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/090,654 04/05/2016
66767 7590 07/27/2018
MERCHANT & GOULD CHEVRON PHILLIPS
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
JimD. Byers
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.
60293.0156US02 5802
EXAMINER
LITHGOW, THOMAS M
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
USPT066767@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM D. BYERS, MICHAELS. MATSON, JASON L. KREIDER,
and KENNETH M. LASSEN
Appeal2018-003208
Application 15/090,654
Technology Center 1700
Before LINDA M. GAUDETTE, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-9, 13-19, and 21-26, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed April 5, 2016 ("Spec.");
Final Office Action dated June 26, 2017 ("Final Act."); Appeal Brief filed
October 19, 2017 ("Appeal Br."); Examiner's Answer dated December 15,
2017 ("Ans."); and Reply Brief filed January 31, 2018 ("Reply Brief').
2 Appellant is the Applicant, Chevron Phillips Chemical Company LP,
which is also identified as the real party in interest. Appeal Br. 2.
Appeal2018-003208
Application 15/090,654
The Claimed Invention
Appellant's disclosure relates to thiol compositions containing
monothiotricyclodecenes, dithiotricyclodecanes, and intermolecular sulfide
compounds, and to methods for producing such thiol compositions. Spec. 1,
56 (Abstract). According to the Specification, the claimed thiol
compositions can be used in mining chemical collector compositions, and
the collector compositions can be used in flotation processes for recovering
metals from ores. Id. at 1, 11. 8-10.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Appeal
Br. 27) (key disputed claim language italicized and bolded):
1. A flotation process for the recovery of
molybdenum from an ore, the process comprising:
contacting the ore with a collector composition,
wherein the collector composition comprises a thiol
composition comprising sulfur-containing compounds,
the sulfur-containing compounds comprising:
(i) at least 80 wt. % monothiotricyclodecene
compounds;
(ii) less than 10 wt. % dithiotricyclodecane
compounds; and
(iii) less than 10 wt.% of a heavy fraction
comprising intermolecular sulfide compounds having at
least one intermolecular sulfide group (-S-), at least two
groups independently selected from a tricyclodecenyl
group and a tricyclodecanyl group, and optionally at least
one thiol sulfur group (-SH); wherein:
the ore comprises chalcopyrite and/or chalcocite;
and
a percent recovery of molybdenum from the ore is
at least about 70 wt. %.
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Application 15/090,654
The Reference
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Kimble et al., US 4,857,179 Aug. 15, 1989
(hereinafter "Kimble")
The Rejection
On appeal, the Examiner maintains the following rejection 3:
Claims 1-9, 13-19, and 21-264 rejected under 35 U.S.C. § 103 as
obvious over Kimble. Ans. 3; Final Act. 1, 2.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We highlight and
address specific findings and arguments below for emphasis.
3 The Examiner's rejection of claims 1-9, 13-19, and 21-26 under
35 U.S.C. § 102(a)(l) as anticipated by Kimble (Final Act. 2) is withdrawn
at page 7 of the Answer.
4 The statement of rejection has been corrected to include claim 26, which
appears to have been inadvertently omitted from the listing of rejected
claims provided at page 3 of Answer and page 2 of Final Office Action.
Appellant acknowledges and includes claim 26 among the claims subject to
the Examiner's rejection (Appeal Br. 19).
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Application 15/090,654
Claims 1-7. 9. 13-16. 18. and 19
Appellant argues claims 1-7, 9, 13-16, 18, and 19 as a group. Appeal
Br. 11, 14. We select claim 1 as representative and claims 2-7, 9, 13-16,
18, and 19 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that Kimble teaches or suggests a flotation
process satisfying all of the steps of claim 1 and, thus, concludes the
reference would have rendered the claim obvious. Ans. 3---6 ( citing Kimble,
col. 3, 11. 1-5, 25--40, col. 4, 11. 20-27).
Appellant argues that the Examiner's rejection should be reversed
because Kimble does not teach or suggest all of the elements of claim 1.
Appeal Br. 19-21; see also Reply Br. 2-3. In particular, Appellant argues
that Kimble does not teach or suggest (a) recovering molybdenum from any
ore, (b) recovering molybdenum from an ore comprising chalcopyrite and/or
chalcocite, and ( c) molybdenum recoveries from any ore being "at least
about 70 wt. %," as required by the claim. Appeal Br. 21.
We do not find Appellant's arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination that Kimble teaches or suggests a
process satisfying all of the steps of claim 1, and the Examiner's conclusion
that the reference would have rendered the claimed process obvious.
Kimble, Abstract, col. 3, 11. 1-5, 25--40, col. 4, 11. 20-27, col. 4, 1. 65---col. 5,
1. 5.
As the Examiner finds (Ans. 3-6, 8-9) and contrary to what Appellant
argues, Kimble does teach or suggest a process for the recovery of
molybdenum from an ore, including suggesting an ore comprising
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Application 15/090,654
chalcopyrite and/or chalcocite. In particular, as the Examiner finds (Ans. 3,
8), Kimble discloses a flotation process for the recovery of molybdenite
(molybdenum disulfide) by employing as a collector a
monothiotricyclodecene compound, as recited in claim 1. Kimble, Abstract,
col. 2, 1. 64---col. 3, 1. 5 (disclosing structures for "tricyclodecenyl
monomercaptans"), col. 3, 11. 6-18, 25--40, col. 4, 11. 20-21 (disclosing
recovery of "Molybdenite" as a "Molybdenum-bearing" ore).
As the Examiner further finds (Ans. 3, 9), Kimble also discloses
employing the monothiotricyclodecene collector compound in the flotation
process for the recovery of copper in the form of chalcopyrite and/or
chalcocite. Kimble, col. 4, 11. 23-27 ( disclosing recovery of "Chalcocite"
and "Chalcopyrite" as "Copper-bearing ores").
Appellant's argument does not reveal any reversible error in the
Examiner's factual findings in this regard.
Moreover, on the record before us, we concur with the Examiner's
conclusion (Ans. 4) that it would have been obvious to one of ordinary skill
in the art at the time of the invention to use Kimble's collector compound for
the recovery of molybdenum from an ore containing molybdenum and
copper because Kimble teaches beneficiating both molybdenum-bearing and
copper-bearing ores via the disclosed collector compound and flotation
process. See Kimble, col. 4, 11. 3-8 ( disclosing that the collector compound
"can be used to separate a mixture of metals containing a particular mining
deposit or ore" and is "useful for separating any mineral from other
minerals"). See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007)
("The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.").
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We do not find Appellant's argument that Kimble does not teach or
suggest "molybdenum recoveries from any ore being at least about 70 wt.
%" (Appeal Br. 21; Reply Br. 2) persuasive of reversible error based on the
fact finding and reasoning provided by the Examiner at pages 5---6 and 10 of
the Answer.
In particular, we concur with the Examiner's determination (Ans. 5---6)
that it would have been obvious to one of ordinary skill in the art to obtain a
percent recovery of molybdenum from the ore of at least about 70 wt. % by
subjecting the tailings to repeated treatments/scavenger flotation steps in
order to increase/optimize the recovery percentage and achieve as high a
recovery rate as possible. See Kimble, col. 4, 11. 8-10 ( disclosing "the
mixture being further separated by subsequent froth flotations"); see also id.
at col. 3, 11. 63---65 (disclosing that "as will be understood by those skilled in
the art, many additional flotation and frothing steps can be utilized to
ultimately obtain the minerals desired").
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning lacks a rational underpinning or is otherwise based on some other
reversible error. KSR, 550 U.S. at 420 (explaining that any need or problem
known in the art can provide a reason for combining the elements in the
manner claimed).
Appellant further argues that the claimed process yields unexpected
results. Appeal Br. 21-22; see also Reply Br. 3. In particular, Appellant
contends that
both the amount of the recovery of molybdenum being at least
about 70 wt.%, and the selectivity of the molybdenum recovery
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Application 15/090,654
from a "copper-bearing ore" containing a relatively large
amount of copper, are completely unexpected.
Appeal Br. 22.
Relying on Table V of the Specification, Appellant contends that
"molybdenum recoveries from 'copper-bearing ores' in the range of7I.7-
96.1 wt. % ... are unexpected results that could not have been predicted or
ascertained in any way based on a fair reading of Kimble." Reply Br. 3.
Appellant argues that the ability to recover molybdenum (selective
extraction) in the presence of a large excess of copper is a "completely
unexpected result." Id. at 3.
We do not find Appellant's unexpected results argument persuasive.
In attempting to overcome a prima facie case of obviousness by showing
unexpected results, the burden rests with Appellant to establish: (1) that
there actually is a difference between the results obtained through the
claimed invention and those of the prior art and (2) that the difference
actually obtained would not have been expected by one skilled in the art at
the time of the invention. See In re Freeman, 4 7 4 F .2d 1318, 13 24 ( CCP A
1973) (citations omitted); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972)
("the burden of showing unexpected results rests on he who asserts them").
Appellant has failed to satisfy the requisite burden. Appellant does
not identify sufficient evidence to show that there actually is a difference
between the results obtained through the claimed invention and those of the
closest prior art, i.e., Kimble's "tricyclodecenyl monomercaptans" (Kimble,
col. 3, 11. 1-5). In particular, Appellant does not adequately explain or
provide data sufficient to show how Kimble's prior art collector compound
would have performed or been expected to perform by one skilled in the art
if subject to the same testing set forth in Table V of the Specification.
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Appellant also does not identify sufficient evidence that the alleged
difference actually obtained would not have been expected by one skilled in
the art at the time of the invention. As the Examiner finds (Ans. 3, 8-9),
Kimble teaches the use of tricyclodecenyl monomercaptans as collector
compounds and that they are useful for "separating any mineral from other
minerals" from ores containing a mixture of metals (Kimble, col. 4, 11. 5---6),
including both molybdenum-bearing and copper-bearing ores (id. at col. 4,
11. 15-27), and thus, would have been reasonably expected to result in
relatively high recovery rates depending on the grade/composition of the ore
and amount of mineral recovery desired (id. at col. 3, 11. 63-65).
Appellant's assertions that the recited molybdenum recovery is
"completely unexpected" (Appeal Br. 21) and "could not have been
predicted or ascertained in any way based on a fair reading of Kimble"
(Reply Br. 3), without more, are not persuasive of reversible error and do not
overcome the Examiner's conclusion and findings regarding Kimble's
teachings and what the teachings would have suggested to one of ordinary
skill in the art (Ans. 3, 8-10), which we find are supported by a
preponderance of the evidence in the record. In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) ("It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements ...
does not suffice.").
We, therefore, affirm the Examiner's rejection of claims 1-7, 9, 13-
16, 18, and 19 under 35 U.S.C. § 103 as obvious over Kimble.
Claims 8 and 17
Appellant argues claims 8 and 17 as a group. Appeal Br. 11, 22. We
select claim 8 as representative and claim 17 stands or falls with claim 8.
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Application 15/090,654
37 C.F.R. § 4I.37(c)(l)(iv). Claim 8 depends from claim 1 and further
recites "wherein a percent recovery of molybdenum from the ore is at least
about 85 wt.%." Appeal Br. 29 (Claims App'x).
In response to the Examiner's rejection of claim 8, Appellant repeats
and relies on principally the same arguments previously presented above in
response to the Examiner's rejection of claim 1. Appeal Br. 22 (arguing that
"Kimble is silent on a molybdenum recovery of at least about 85 wt.%" and
"a molybdenum recovery of at least about 85 wt. % is completely
unexpected").
Accordingly, based on the findings and technical reasoning provided
by the Examiner, and for principally the same reasons discussed above for
affirming the Examiner's rejection of claim 1, we affirm the Examiner's
rejection of claims 8 and 17.
Claims 21-24
Appellant argues claims 21-24 as a group. Appeal Br. 11, 23. We
select claim 21 as representative and claims 22-24 stand or fall with claim
21. 37 C.F.R. § 41.37( c )(1 )(iv). Claim 21 is directed to a "flotation process
for the recovery of molybdenum from an ore" and recites limitations similar
to claim 1. Compare claim 1 (Appeal Br. 27) with claim 21 (Appeal Br. 31-
32).
Appellant argues that the Examiner's rejection of claim 21 should be
reversed for principally the same reasons as claim 1. Appeal Br. 23. We do
not find this argument persuasive of reversible error for the same reasons
previously discussed above in affirming the Examiner's rejection of claim 1.
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Appellant further argues that because "Kimble is silent on a
molybdenum recovery relative to n-dodecyl mercaptan," the reference does
not teach or suggest each and every element of claim 21. Appeal Br. 23.
We do not find Appellant's argument persuasive of reversible error in
the Examiner's rejection because it is conclusory. Attorney argument is not
evidence. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner's rejection of claims 21-24.
Claims 2 5 and 2 6
Although Appellant argues claims 25 and 26 under separate headings
(Appeal Br. 24--25), Appellant repeats and relies on principally the same
arguments previously presented above in response to the Examiner's
rejection of claims 1 and 21.
For example, with respect to claim 25, Appellant argues that the
Examiner's rejection should be reversed because "Kimble is silent on a
molybdenum recovery of at least about 90 wt. %" and "a molybdenum
recovery of at least about 85 wt. % is completely unexpected." Appeal Br.
24. Similarly, with respect to claim 26, Appellant contends that "Kimble is
silent on ... recovering molybdenum from an ore in an amount greater than
about 75 wt.%" and a molybdenum recovery of greater than about 75 wt.%
is "completely unexpected." Id. at 24--25.
Accordingly, based on the findings and technical reasoning provided
by the Examiner, and for principally the same reasons discussed above for
affirming the Examiner's rejection of claims 1 and 21, we affirm the
Examiner's rejection of claims 25 and 26.
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Application 15/090,654
DECISION/ORDER
The Examiner's rejection of claims 1-9, 13-19, and 21-26 is
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).
AFFIRMED
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