Ex Parte Detournay et al

Patent Trial and Appeal Board

May 4, 2016

12811663 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/811,663 07/02/2010
73673 7590 05/06/2016
Solvay America, Inc,
c/o Intellectual Assets Management
3737 Buffalo Speedway Ste. 800
Houston, TX 77098-3701
FIRST NAMED INVENTOR
Jean-Paul Detournay
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.
s 2007/62 9695
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
sandra. andress@solvay.com
iamnafta@solvay.com
s taci.harris@sol vay. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-PAUL DETOURNA Y and FRANCIS M. COUSTRY
Appeal2014-006123
Application 12/811,663 1
Technology Center 1700
Before CHUNG K. PAK, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action2 rejecting
claims 1 through 12. We have jurisdiction pursuant to 35 U.S.C. § 6.
We reverse.
1 Application 12/811,663 (Application'663), filed July 02, 2010, under 35 U.S.C.
§ 371, is the national stage of PCT application PCT/EP2009/050082, filed on
January 06, 2009.
2 Final Action entered March 15, 2013 ("Final Act."). A provisional rejection of
claims 1 through 12 on the ground of nonstatutory obviousness-type double
patenting has been withdrawn. See the Advisory Office Action mailed on July 30,
2013, item 5.
Appeal2014-006123
Application 12/811,663
INTRODUCTION
The appealed subject matter relates to a method for producing sodium
carbonate, "in particular out of mineral ores comprising sodium bicarbonate."
'663 Specification ("Spec.") 3, 11. 12-14. According to the '663 Specification, the
method uses an "electrodialyser" comprising at least two compartments and two
membranes - a bipolar membrane and a cationic membrane. Id. at 4, 11. 9-12. The
bipolar membrane comprises "one cationic face - permeable for the cations and
impermeable for the anions and the other an anionic face - permeable for the
anions and impermeable for the cations." The bipolar membrane can be produced
by the juxtaposition of two monopolar membranes. Id. at 4, 11. 13-16. According
to the '663 Specification, "[ u ]nder a sufficient electric field, and in aqueous
solution, the only possible reaction is the splitting of water at the interface between
the two monopolar membranes into H+ and OH- which then cross respectively the
cationic and anionic monopolar membrane and exit the membrane into the adjacent
compartment." Id. at 4, 11. 16-20.
Details of the appealed subject matter are recited in representative
independent claim 1 of Application '663, which is reproduced below from the
Claim Appendix in the Appeal Brief3 (indentations, bracketed material, and
emphasis added):
1. A process to produce sodium carbonate, comprising:
[A] • introducing a first production solution comprising sodium
carbonate into less basic compartments of
an electrodialyser comprising alternating less basic and more
basic adjacent compartments separated from each other by cationic
membranes, the more basic compartments being delimited by anionic
3 Appeal Brief filed on December 16, 2013 ("App. Br.").
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Appeal2014-006123
Application 12/811,663
faces of bipolar membranes on one side and by the cationic
membranes on the other side;
[BJ • introducing a second production solution comprising
sodium carbonate into the more basic compartments of the
electrodialyser;
[CJ • producing a solution comprising sodium hydroxide into
the more basic compartments, by combination of flux of sodium ions
crossing the cationic membrane and flux of hydroxyl ions crossing the
anionic face of the bipolar membranes;
[DJ • extracting the solution comprising sodium hydroxide
from the more basic compartments of the electrodialyser and using
such solution to constitute a reaction solution; and
[EJ •reacting the reaction solution with sodium bicarbonate in
order to form a produced solution comprising sodium carbonate.
The Examiner maintains the following grounds of rejection in the
Examiner's Answer,4 which are before us on appeal:
1. Claims 1 through 4 and 7 through 9 under 35 U.S.C. § 103(a) as
"1 • • • "1 "1 ,"1 "1"1 ,• • "1 • I""~ • .:::; TT "1 {:. "1 oemg unpatemao1e over me couecnve teacnmgs or tiourge01s~, K.uoe~, ana
Chlanda7.
2. Claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over the collective teachings of Bourgeois, Kube, and Chlanda, as applied to
claim 1, further combined with the teachings of Mani8.
4 Examiner's Answer entered February 25, 2014 ("Ans.") at 2, 3; Final Act. 2
through 9.
5 U.S. Patent 5,308,455, issued to Louis Bourgeois on May 3, 1994.
6 U.S. Patent 3,953,073, issued to Wolfram H. Kube et al. on April 27, 1976.
7 U.S. Patent 4,584,077, issued to Frederick P. Chlanda et al. on April 22, 1986.
8 U.S. Patent 4,636,289, issued to Krishnamurthy N. Mani et al. on January 13,
1987.
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Appeal2014-006123
Application 12/811,663
3. Claims 10 and 11under35 U.S.C. § 103(a) as being unpatentable
over the collective teachings of Bourgeois, Kube, and Chlanda as applied to
claim 7, further combined with the teachings of Gancy'305 9.
4. Claim 12 under 35 U.S.C. § 103(a) as being unpatentable over the
collective teachings of Bourgeois, Kube, Chlanda, and Gancy'305, as
applied to claim 11, further combined with the teachings of Gancy'09710.
DISCUSSION
Rejection 1, Obviousness over the collective teachings of Bourgeois, Kube, and
Chlanda
As evidence of obviousness of the claimed subject matter under 35 U.S.C.
§ 103(a), the Examiner finds that Bourgeois teaches a "process to produce sodium
carbonate" that uses an electrodialyzer, illustrated in its Figure, as recited in claim
1. Final Act. 2, 3, citing Bourgeois, col. 2, 11. 53-64, col. 3, 1. 66, to col. 4, 1. 13,
and the Figure. The Bourgeois Figure is shown below:
13 !3'
12
9 9' .. e a· !I
(+) (-) 17
18 6 _]_ .!: 7• !!..
i
2 3 2' 3' 2"
10 u 10' 11'
9 U.S. Patent 4,238,305, issued to Alan B. Ganey et al. on December 9, 1980.
10 U.S. Patent 4,044,097, issued to Alan B. Ganey et al. on August 23, 1977.
4
Appeal2014-006123
Application 12/811,663
The Bourgeois Figure shows an electrodialysis cell for implementation of the
invention of Bourgeois. In enclosure 1, three cationic membranes 2, 2', 2" and
two bipolar membranes 3, 3' alternating between anode 4 and cathode 5. The
membranes define between them four electrodialysis chambers 6, 7, 6', 7'. The
chambers are arranged such that anionic face 8 of bipolar membrane 3 is situated
in chamber 6 and cationic face 9 of the bipolar member 3 is in chamber 7.
Similarly, anionic face 8' of bipolar member 3' is situated in chamber 6' and
cationic face 9' of the bipolar member 3' is in chamber 7'. Bourgeois, col. 3, 1. 66,
to col. 4, 1. 10.
The Examiner finds that Bourgeois discloses "introducing a ... solution
comprising sodium carbonate into a less basic compartment [7, 7']" of the
electrodialyzer. Ans. 2, 3, citing Bourgeois, col. 2, 11. 53-64. In the words of
Bourgeois, col. 2, 11. 61-63, an "aqueous solution of sodium carbonate [11] is
introduced in the chamber [7] comprising the cationic face [9] of the bipolar
membrane [3]." The Examiner :farther finds that Bourgeois discloses "producing a
solution comprising sodium hydroxide in[] the more basic compartment [6, 6' of
the electrodialyzer] by combination of influx of sodium ions crossing the cationic
membrane [2] and flux of hydroxide ions crossing anionic face [8] of the bipolar
membranes [3, 3'], and extracting the solution comprising sodium hydroxide from
the more basic compartments [6, 6']." Id. at 3, citing Bourgeois, col. 3, 11. 40-46,
col. 4, 11. 14-32, and the Figure. In the words of Bourgeois, col. 4, 11. 14-32
(emphasis added),
[ d]uring the operation of the electrodialysis cell, water or a dilute
aqueous sodium hydroxide solution 10 (10') is introduced into the
chamber 6 (6') [the more basic compartment], an aqueous sodium
carbonate solution 11 (11 ')is introduced into the chamber 7 (7') [the
less basic compartment] and the electrodes 4 and 5 are connected to
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Appeal2014-006123
Application 12/811,663
the terminals of a source of direct current ... Under the effect of the
voltage difference between the electrodes 4 and 5, there is dissociation
of water on the bipolar membranes 3 and 3', giving rise to the
formation of protons in the chambers 7 and 7' and to the formation of
hydroxyl ions in the chambers 6 and 6'. Simultaneously, sodium
cations migrate from the chamber 7 into the chamber 6', passing
through the cationic membrane 2'. In this way, there isformation of
sodium hydroxide in the chambers 6 and 6' and of sodium bicarbonate
in the chambers 7 and 7', to the detriment of the sodium carbonate.
Although the Examiner acknowledges that Bourgeois does not disclose step
B, part of step D (i.e., using the extracted sodium hydroxide solution as a reaction
solution) and step E recited in claim 1, the Examiner relies upon the disclosure of
Chlanda for teaching step B and the disclosure of Kube for teaching such part of
step D and step E. Final Act. 3.
Regarding step B, the Examiner finds that Chlanda discloses a process for
recovering sodium carbonate from mineral ores such as trona using electrodialysis.
Id. at 4, citing Chlanda, abstract. The Examiner finds (and Appellants do not
dispute) that Chlanda teaches "that feeding a solution comprising sodium
carbonate to the more basic compartments of the electrodialyzer forms a more
concentrated aqueous sodium carbonate along with sodium hydroxide." Id. citing
Chlanda, col. 9, 1. 56 to col. 10, 1. 7, which describes the Chlanda process using the
electrodialysis unit 40 in Fig. 1 of Chlanda, which is partially shown below.
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Appeal2014-006123
Application 12/811,663
70
DISSOLVER
40
64 '
. OH* H+ OH. . H+ . 46a4 .. 4·7at464b . 4.7t>t,·. 46.:ie . Na• N~ , + . . .. a ~. . . B . A B · A 4&
---r----':T"'---.,..----,....---.,.._----~.....J 56
. 60b 50 {;)j
37a
:37 Sf
35--. ......---"---
VACUUM
CRYSTA LU .. so
ZER
32 30
In Chlanda Fig. 1, the electrolysis unit 40 comprises a plurality of base components
B and acid compartments A. Each of the base compartments B is bounded by a
cationic permselective membrane 46, and an anion face of a bipolar ion exchange
membrane 47. Each of the acid compartments A is bounded by a cation face of the
bipolar ion exchange membrane 47 and a cationic permselective membrane 46.
Chlanda, col. 8, 11. 49-60. According to Chlanda, "[t]he solution from
crystallizer 35 [i.e., a mother liquid containing sodium carbonate and sodium
bicarbonate] is fed via line 37 into base compartments B ... as streams 37a
and 37b. At the same time, a solution containing sodium cations (Na+) is
introduced into the acid compartments A." Id. at col. 8, 11. 2-26. In the words of
Chlanda, col. 9, 1. 56, to col. 10, 1. 7,
[i]n base compartments B hydroxyl ions (OH-) are introduced from
the bipolar members 47a-b [which] react with the sodium (Na+) ions
that migrate from acid compartments 46a-c to form aqueous solution
of sodium hydroxide (NaOH) which, in tum, reacts with the
bicarbonate ions (HC03-) in the base compartments B to form
aqueous sodium carbonate (N a2C03) . . . the net result in base
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Appeal2014-006123
Application 12/811,663
compartments B is ... an increase in the concentration of sodium
carbonate (with the formation of sodium hydroxide).
The Examiner further finds that "Chlanda suggests feeding a solution of sodium
carbonate and bicarbonate which has been debicarbonated [to base B
compartments, i.e., the more basic compartments, of the electrodialysis unit]." Id,
citing Chlanda, col. 11, 11. 64-68.
The Examiner (id.) provides the following statement of obviousness: "[i]t
would have been obvious to a person of ordinary skill in the art ... to modify the
process taught by Bourgeois to include introducing a second production solution
comprising sodium carbonate into the more basic compartments of the
electrodialyzer [of Bourgeois]." The Examiner finds that the reason or motivation
would have been to "yield[] more concentrated aqueous sodium carbonate along
with sodium hydroxide at the output (see Chlanda column 10, lines 3-7 and
column 11, lines 64-68)." Id.
Appellants urge that Bourgeois teaches a "process for the manufacture of
sodium hydroxide via electrodialysis using Na+ source from sodium carbonate to
enrich the content of NaOH of the solution exiting [in] the more basic
compartment" (emphasis added). App. Br. 10, citing Bourgeois, the abstract.
Appellants urge that the process of Bourgeois produces a solution of sodium
bicarbonate from the less basic compartments of the electrodialyzer and a solution
comprising sodium hydroxide in the more basic compartments of the
electrodialyzer. Id. citing Bourgeois, col. 3, 11. 40-63, and col. 4, 11. 14-32. As
noted supra, Bourgeois, col. 4, 11. 29-32, describes the "formation of sodium
hydroxide in the chambers 6 and 6' [the more basic compartments of the
electrodialysis unit] and of sodium bicarbonate in the chambers 7 and 7' [the less
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Application 12/811,663
basic compartments of the electrodialysis unit] to the detriment of the sodium
carbonate" (emphasis added). Put in another way, in Appellants' view, the process
disclosed by Bourgeois does not result in the net production of sodium carbonate;
rather, sodium carbonate is consumed to produce sodium hydroxide.
Appellants urge that Chlanda teaches an "electrodialytic water splitting
process for converting trona and other mixtures of sodium carbonate and sodium
bicarbonate into sodium carbonate in relatively high yields and high purity"
(emphasis added). App. Br. 21, citing Chlanda, col. 3, 11. 9-13, and col. 4,
11. 50-56. Appellants urge that "[i]n reading Chlanda ... the artisan would realize
that the increase in Na2C03 concentration in the more basic compartment [BJ of
Chlanda's electrodialyzer [ 40] is due to the conversion of sodium bicarbonate
(NaHC03) to make sodium carbonate ... [using] Na+ crossing the ... membrane
from the less basic compartment [A] of the electrodialyzer and thus resulting in an
increase in the concentration ofNa2C03 in the more basic compartment." Id.
at 21, 22. Put in another way, in Appellants' view, the process disclosed by
Chlanda does not result in the production of an enriched solution of sodium
hydroxide in the more basic compartment, as taught by Bourgeois; rather, sodium
hydroxide is consumed to convert sodium bicarbonate in the mixed solution of
Chlanda to sodium carbonate in the more basic compartment. Appellants urge that
"it seems farfetched to advance that an artisan, reading Bourgeois and Chlanda,
would be motivated to use a solution comprising sodium carbonate [of Chlanda] to
make NaOH solution with more concentrated Na2C03 in a more basic component
of an electrodialyzer (recited in Appellants' steps (B) and (C)) and then in tum use
this NaOH/Na2C03 solution to convert sodium bicarbonate into sodium carbonate
(as recited in Appellants' step E)." Id. at 22. Appellants urge that "the deficiency
of Bourgeois that the Examiner tried to fill with the disclosure of ... Chlanda does
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Application 12/811,663
not provide the interconnections between ... these steps, and there is insufficient
rationale provided by the Examiner to support such obviousness rejection." App.
Br. 22.
In response to Appellants' arguments, the Examiner finds that "it is clear to
one of ordinary skill in the art that the solution exiting the more basic compartment
of Chlanda [ electrodialyzer] contains sodium, carbonate, and hydroxide ions, and
therefore may be considered a solution comprising sodium hydroxide as well as a
solution comprising sodium carbonate, which could be used in either of these
capabilities." Ans. 7. The Examiner finds that "[b]ased on the art of record, using
the various solutions as claimed was well-known in the art, and while asserting that
they may be 'farfectched,' Appellant has failed to demonstrate that the skilled
artesian lacks either motivation or an expectation of success for following the
teaching suggested by the art." Id. at 7, 8.
On this record, the Examiner has not demonstrated, by a preponderance of
the evidence, that one of ordinary skill in the art would have been led to employ
the solution of sodium carbonate taught by Chlanda in the more basic compartment
of the electrodialysis unit taught by Bourgeois as required in step B recited in
claim 1. As urged by Appellants supra, Bourgeois is drawn to a process for
producing sodium hydroxide to enrich the content of sodium hydroxide of the
solution in the more basic compartment of the electrodialysis unit. Bourgeois
accomplishes this by introducing a solution of sodium carbonate to the less basic
compartments of the electrolysis unit, not the more basic compartments as required
in step B recited in claim 1. Although Chlanda discloses introducing a solution of
sodium carbonate and sodium bicarbonate in the more basic compartments of an
electrodialysis unit, it, unlike Bourgeois, is directed to using such solution of
sodium carbonate and sodium bicarbonate in the more basic compartments to
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Application 12/811,663
produce sodium carbonate in relatively high yields and high purity. The Examiner
simply has not directed our attention to any disclosure in Bourgeois, Chlanda
and/or Kube that would have led a person having ordinary skill in the art to
introduce a solution of sodium carbonate and sodium bicarbonate to the more basic
compartments of the electrodialysis unit taught by Bourgeois for the purpose of
producing enriched solutions of sodium hydroxide.
Accordingly, we find that Appellants have shown reversible error in the
Examiner's determination that the collective teachings of Bourgeois, Kube, and
Chlanda would have prompted a person having ordinary skill in the art to arrive at
the subject matter recited in the claims on appeal within the meaning of 35 U.S.C.
§103(a).
Rejection 1 is reversed.
Rejections 2 through 4, Obviousness
The additional prior art references used in rejecting some of the dependent
claims on appeal in Rejections 2 through 4 were not relied upon by the Examiner
to remedy the deficiencies of Bourgeois, Kube, and Chlanda, discussed supra.
Accordingly, Rejections 2 through 4 are also reversed.
ORDER
In view of the foregoing, we REVERSE the rejections of claims 1 through
12 under 35 U.S.C. § 103(a).
REVERSED
11