Ex Parte Dorner et al

Patent Trial and Appeal Board

Sep 15, 2017

13159013 (P.T.A.B. Sep. 15, 2017)

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.
13/159,013 06/13/2011 Robert W. Dorner 716151 (8368US01) 1624
124170 7590 09/19/2017
Leydig, Voit & Mayer, Ltd. (Ecolab/Nalco)
Two Prudential Plaza, Suite 4900
180 N. Stetson Ave.
Chicago, IL 60601-6731
EXAMINER
LAU, JASON
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
chgpatent @ ley dig. com
ecolab_PAIR @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. DORNER, NANDAKUMAR SRINIVASAN,
JITENDRA SHAH, and HUNG-TING CHEN
Appeal 2016-005796
Application 13/159,013
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert W. Domer et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 2—4, 6, 15, 16, 18,
20-22, 25, 27—29, 31, and 33—35, which are all the pending claims. Appeal
Br. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Nalco Company,
which is wholly-owned by Ecolab, Inc. Appeal Br. 1.
Appeal 2016-005796
Application 13/159,013
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “an additive for reducing
slag formation and deposition in energy production processes.” Spec., p. 1,
11. 7—8. Claims 27 and 33 are independent. Claim 27, reproduced below, is
illustrative of the subject matter on appeal.
27. A method of reducing or suppressing slag deposition
and/or cleaning deposited slag from combustion of a solid fuel
in an energy production process, wherein at least one
component of the solid fuel is an added biomass feedstock
consisting of potassium-containing biomass prepared from at
least one biological plant, the method comprising: adding to the
combustion an aluminum-containing compound and a
magnesium-containing compound.
The Examiner relied on the following evidence in rejecting the claims
EVIDENCE
on appeal:
Clayton US 4,953,481 Sept. 4, 1990
June. 8, 2006
Aug. 6, 2009
Aug. 20, 2009
Dec. 31,2009
Meffert
Roppo
Kluko
Hinman
US 2006/0121398 A1
US 2009/0194262 A1
US 2009/0205546 A1
US 2009/0324478 A1
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Application 13/159,013
REJECTIONS
The following rejections are before us for review:
I. Claims 2-4, 6, 15, 16, 21, 22, 25, 27—29, 31, and 33—35 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Clayton, Meffert, and Kluko.2 Final Act. 2—7.
II. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Clayton, Meffert, Kluko, and Roppo.
Id. at 7—8.
ANALYSIS
Rejection I— Claims 2—4, 6, 15, 16, 21, 22, 25, 27—29, 31, and 33—35 as
unpatentable over Clayton, Meffert, and Kluko
Claims 2—4, 6, 15, 16, 21, 22, 27, and 28
Appellants argue against the rejection of independent claim 27 (see
Appeal Br. 4—9), and rely on the same arguments for dependent claims 2-4,
6, 15, 16, 21, 22, and 28 {id. at 9). We select claim 27 as representative of
this group, with claims 2-4, 6, 15, 16, 21, 22, and 28 standing or falling with
claim 27. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 27, the Examiner found that Clayton discloses a
method of reducing slag deposition including a step of “adding to the
combustion an aluminum-containing compound (col. 1, line 68) and a
magnesium-containing compound (col. 1, line 68).” Final Act. 2. The
2 The Examiner’s inclusion of claims 13, 23, 24, 30, and 32 in the
caption of this rejection (see Final Act. 2), as well as in the detailed
explanation of the rejection {id. at 3, 6—7), is presumed to be inadvertent
error, as these claims have been canceled {see Appeal Br. 1; id. at 15—17,
Claims App.), and thus are not involved in this appeal.
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Examiner acknowledged that Clayton does not explicitly disclose “at least
one component of the solid fuel is an added biomass feedstock consisting of
potassium-containing biomass prepared from at least one biological plant.”
Id. However, the Examiner found that “Clayton discloses the use of landfill
waste products (which includes potassium-containing plant biomass) in a
combustion process.” Id. at 3. The Examiner clarifies, in the Answer, that
“[i]t is well-known that ordinary garbage is composed of combustible
biomass (e.g., wood, wheat, com), including potassium-containing biomass
plant matter (e.g., com, banana peels).” Ans. 8. According to the Examiner,
“[bjiomass contains non-combustible-components, including potassium,”
and “non-combustible metals such as magnesium (e.g., spinach), iron (e.g.,
beans), potassium (e.g., bananas), and aluminum (e.g., pickles).” Id. at 9.
Appellants argue that “there is no teaching or suggestion in Clayton
for using a magnesium-containing compound and an aluminum-containing
compound in combination to reduce, suppress, and/or clean slag from
combustion of a solid fuel (i.e., a combustible) that includes an added
biomass feedstock consisting of potassium-containing biomass.” Reply
Br. 2 (emphasis omitted). Appellants assert that “Clayton is directed to
reducing slag formed from low melting non-combustible materials,” and
“[njowhere does Clayton teach or suggest reducing slag formed from metals
(e.g., magnesium, iron, potassium, and aluminum) present in combustible
materials.” Id. at 3 (citing Clayton, Abstract; col. 2,11. 7—9).
Appellants’ argument is not persuasive. Clayton discloses “a method
for controlling the build-up of slag on the interior walls of incinerators
during operation for burning of garbage, medical wastes, sewer disposal
plant sludge, and similar waste materials.” Clayton, col. 1,11. 8—11. The
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Application 13/159,013
method includes a step of “adding to the combustion chamber per ton of
waste fuel from about Vi to 5 pounds of a melting point enhancing material
comprised of high melting point compounds of calcium, magnesium or
aluminum, and mixtures thereof ” Id., col. 1,11. 63—68 (emphasis added).
Although Clayton may not explicitly disclose that the combusted solid fuel
includes “biomass,” Appellants do not contest the Examiner’s finding that
Clayton’s incinerated garbage includes combustible potassium-containing
biomass material. See Ans. 8; Appeal Br. passim. Moreover, to the extent
that Clayton discloses slag build-up from cans and bottles in garbage
incinerators, Clayton only discloses these items as exemplary non­
combustibles. See Clayton, col. 2,1. 8 (disclosing “non-combustibles in
garbage, such as cans and bottles” (emphasis added)). In this regard,
Appellants do not persuasively refute the Examiner’s finding that biomass
contains non-combustible materials such as magnesium, iron, potassium, and
aluminum. See Ans. 9.
Appellants argue that the combination of an aluminum-containing
compound and a magnesium-containing compound added to combustion of
potassium-containing biomass feedstock, as claimed, produces unexpected
results. See Appeal Br. 6—7. In particular, Appellants assert that “[a]
synergistic effect occurs when the combination of two or more things creates
an effect which is greater than the sum of both separately,” but “[n]one of
Clayton discloses or suggests an additive combination (e.g., an aluminum-
containing compound and a magnesium-containing compound) where the
total effect of the combination is greater than the individual effects.” Id. at 7
(emphasis omitted); see Reply Br. 5 (asserting that “[tjhere is no disclosure
or suggestion in Clayton that a mixture of an aluminum compound and a
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Application 13/159,013
magnesium compound is more effective than an aluminum compound and a
magnesium compound alone”). According to Appellants, “the
[Specification shows that Al(OH)3 is a detrimental treatment by itself and
Mg(OH)2 is only a somewhat beneficial treatment, the data in the
[Specification also shows that the combination of Al(OH)3 and Mg(OH)2
significantly decreases the compression strength of ash.” Appeal Br. 7
(citing Spec., p. 10, Table 3).
We are not persuaded by Appellants’ argument. To the extent that
Appellants appear to argue that Clayton must disclose that adding
magnesium and aluminum compounds in combination produces a
synergistic result that is more effective than adding either compound alone,
such an argument is unpersuasive because it is not commensurate with the
scope of claim 27. As stated by our reviewing court in In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.”
It is well established that limitations not appearing in the claim cannot be
relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982). Here, claim 27 recites a single step of “adding to the combustion an
aluminum-containing compound and a magnesium-containing compound.”
Appeal Br. 16, Claims App. However, the claim does not recite that any
“synergistic effect” must result from the combination of the magnesium and
aluminum compounds that would be greater than the effect of either
compound alone, nor does the claim recite any limitations specifying a
particular quantity or ratio for the combination of compounds. See id.
Additionally, Appellants do not offer any evidence or explanation to
show that the results of the claimed invention are “unexpected” compared
with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388,
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392 (Fed. Cir. 1991) (“when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art”) (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984)). As discussed above, Clayton discloses reducing slag in the
combustion of garbage by adding a combination of magnesium and
aluminum compounds to the combustion chamber. Appellants do not
persuade us of a patentable distinction between Clayton’s adding a
combination of magnesium and aluminum compounds to reduce slag versus
“adding to the combustion an aluminum-containing compound and a
magnesium-containing compound” to reduce slag, as recited in claim 27.
Appellants argue that, “[ajbsent the improper use of hindsight based
on Appellants’ own disclosure, one skilled in the art would not be motivated
to use the metal additives as claimed for controlling slag when combusting
solid fuel in which the solid fuel contains, or is, potassium-containing
biomass feedstock.” Appeal Br. 8. This argument is not persuasive because
it is not responsive to the rejection as presented by the Examiner, which did
not rely on any modification of Clayton’s method. As discussed above, the
Examiner acknowledged that Clayton does not explicitly disclose “biomass,”
but found that Clayton’s garbage includes a component of potassium-
containing plant biomass material. See Final Act. 3; Ans. 8. Appellants do
not contest this finding. Moreover, Appellants do not identity any
knowledge relied upon by the Examiner that was gleaned only from
Appellants’ disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (so long as a conclusion of obviousness is based
on a reconstruction that “takes into account only knowledge which was
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within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from [Appellants’] disclosure,
such a reconstruction is proper”). Thus, Appellants’ assertion of hindsight is
unsupported.
After careful consideration of all the evidence, Appellants’ arguments
do not apprise us of error in the Examiner’s findings or reasoning in support
of the conclusion of obviousness. Accordingly, we sustain the rejection of
claim 27, and claims 2-4, 6, 15, 16, 21, 22, and 28 falling therewith, as
being unpatentable over Clayton, Meffert, and Kluko.
Claim 29
In rejecting dependent claim 29, the Examiner acknowledged that
Clayton fails to disclose that the aluminum and magnesium compounds are
necessarily in the form of Al(OH)3 and Mg(OH)2, respectively, but found
that Meffert discloses adding these compounds to biomass combustion. See
Final Act. 3 (citing Meffert || 36, 53). The Examiner concluded that, given
the teachings of the prior art, it would have been obvious to modify the
method of Clayton to use Al(OH)3 and Mg(OH)2, as taught by Meffert,
“since a simple substitution of one known element for another yielding
predictable results renders the claim obvious.” Id. The Examiner clarifies,
in the Answer, that Clayton discloses “a slag reducing mixture comprising of
an aluminum-containing oxide compound and a magnesium-containing
oxide compound for a garbage (e.g., potassium-containing biomass)
incineration process.” Ans. 11. According to the Examiner, “[a] person
skilled in the art reading Meffert, with an understanding of Clayton’s
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method, would seek out magnesium-containing oxide and aluminum-
containing oxide compounds to combine for use as slag modifiers.” Id.
Appellants argue that “Meffert discloses a laundry list of slag
modifiers . . . without any indication of the critical components, or any
indication that the combination of Al(OH)3 and Mg(OH)2 would provide any
benefit of reducing slag when combusting solid fuel in which the solid fuel
contains, or is, potassium-containing biomass feedstock.” Appeal Br. 10. In
particular, Appellants assert that “Meffert does not point to any additive or
combination of additives, or provide any direction as to which combinations
of slag modifiers might be useful in the claimed method.” Id. According to
Appellants, “absent the benefit of hindsight provided by Appellants’
disclosure, the skilled artisan would not have been motivated to combine
Al(OH)3 and Mg(OH)2 in the combustion of solid fuel in which the solid
fuel contains, or is, potassium-containing biomass feedstock.” Id.
Appellants’ argument is unpersuasive for two reasons. First, to the
extent that Appellants appear to urge us to apply a strict teaching,
suggestion, or motivation (“TSM”) test for obviousness, rigid application of
the TSM test was explicitly disavowed by the Supreme Court in KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007). Second,
the argument does not address the Examiner’s articulated reasoning for the
conclusion of obviousness. Here, as discussed above, the Examiner
articulated adequate reasoning based on rational underpinnings for
substituting the specific Al(OH)3 and Mg(OH)2 compounds of Meffert3 for
3 Meffert discloses suitable examples of slag modifiers containing
magnesium and aluminum, including Mg(OH)2 and Al(OH)3, that “may be
injected into various combustion systems, for example, those that bum
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the general combination of aluminum and magnesium compounds disclosed
by Clayton. See Final Act. 3; Ans. 11. In this regard, Appellants do not
persuasively refute the Examiner’s reasoning. Given that Clayton discloses
adding a combination of aluminum and magnesium compounds to
combustion to reduce slag, and Meffert discloses two particular forms of
aluminum and magnesium compounds used to reduce slag in combustion of
solid fuels, including biomass, we agree with the Examiner that the proposed
modification of Clayton to use the particular compounds taught by Meffert
(i.e., Al(OH)3 and Mg(OH)2) amounts to nothing more than the simple
substitution of one known element for another. See KSR, 550 U.S. at 417
(noting that such modifications are obvious where they do no more than
yield a predictable result). Moreover, Appellants do not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellants’ disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See McLaughlin, 443 F.2d
at 1395. Thus, Appellants’ assertion of hindsight is unsupported.
Appellants argue that modifying Clayton’s method to include Al(OH)3
and Mg(OH)2 would not have been obvious “(a) because Clayton teaches
that compounds of calcium, magnesium, and aluminum may be used alone,
and (b) because Clayton teaches reducing slag from non-combustibles, and
does not disclose or suggest any benefit of using a combination of an
aluminum-containing compound and a magnesium-containing compound” to
reduce slag in biomass solid fuel combustion. Reply Br. 6—7. This
argument is not persuasive. Although Clayton discloses that magnesium or
gaseous, liquid and solid fuels such as natural gas, fuel oil, and coal.”
Meffert 153.
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aluminum compounds can be added separately, Clayton also discloses
adding mixtures and combinations of these compounds to combustion. See
Clayton, col. 1,11. 67—68 (disclosing “compounds of calcium, magnesium or
aluminum, and mixtures thereof’); col. 2,11. 14—16 (disclosing “magnesium
oxide, calcium carbonate, calcium oxide, aluminum oxide, and the like, and
combinations thereof’). In this regard, Clayton’s silence regarding any
particular advantage of using a combination of magnesium and aluminum
compounds to reduce slag, relative to using them separately, does not take
away from the fact that the reference discloses using a combination of these
compounds to reduce slag in combustion of solid fuel.
Appellants also argue that one of ordinary skill in the art would have
no reasonable expectation of success in modifying Clayton’s method to use
Meffert’s compounds. See Reply Br. 6. This argument is unpersuasive.
Given that Clayton discloses using a combination of magnesium and
aluminum compounds to reduce slag in combustion, and Meffert discloses
particular slag-modifying compounds in the form of Mg(OH)2 and Al(OH)3,
a person having ordinary skill in the art would have had a reasonable
expectation of success in using Al(OH)3 and Mg(OH)2 in Clayton’s method.
Appellants fail to provide factual evidence or persuasive technical
explanation to establish why a person having ordinary skill in the art using
Clayton’s method would not be able to achieve comparable results of
reducing slag if the combination of magnesium and aluminum compounds
were particularly the Al(OH)3 and Mg(OH)2 compounds of Meffert, which
are simply specific forms of magnesium and aluminum compounds.
After careful consideration of all the evidence, Appellants’ arguments
do not apprise us of error in the Examiner’s findings or reasoning in support
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of the conclusion of obviousness. Accordingly, we sustain the rejection of
claim 29 as being unpatentable over Clayton, Meffert, and Kluko.
Claims 25, 31, and 33—35
Independent claim 33 recites, in relevant part, a method of reducing
slag in combustion of solid fuel including adding a combination of
aluminum-containing and magnesium-containing compounds to solid fuel
combustion in which “the solid fuel is a potassium-containing biomass
feedstock consisting of at least one biological plant.” Appeal Br. 17, Claims
App. (emphasis added). In rejecting this claim, the Examiner relied on the
same findings and reasoning discussed above with respect to the rejection of
claim 27. See Final Act. 7. In the Answer, the Examiner takes the position
that “[cjlaim 33 is written in a way where the solid fuel is open ended, and
not limited to a potassium-containing biological plant.” Ans. 11. According
to the Examiner, “[t]he language does not [exclude] other solid fuels.” Id.
Appellants argue, and we agree, that “the solid fuel of claim 33 is
limited to a potassium-containing biomass feedstock that is one or more
biological plants.” Reply Br. 7 (emphasis added). In particular, the
language of claim 33 specifies that “the solid fuel is a potassium-containing
biomass feedstock” biomass (Appeal Br. 17, Claims App. (emphasis
added)), which limits the combustion to a singular solid fuel in the form of
biomass, and excludes other solid fuels in addition to the biomass.4 Clayton
4 We note that, in contrast, independent claim 27 recites that “at least
one component of the solid fuel is an added biomass feedstock,” and, thus,
does not exclude other solid fuel in addition to the biomass. See Appeal
Br. 16, Claims App. (emphasis added).
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discloses “burning [of] garbage, medical wastes, sewer disposal plant
sludge, and similar waste materials.” Clayton, col. 1,11. 8—11. In this
regard, we agree with Appellants that “garbage, medical waste, and sludge
are well-known to comprise a plurality of objects, including man-made (i.e.,
non-biological) substances such as plastics (e.g., containers, bandages, and
syringes), glass (e.g., bottles), and metallic objects (e.g., cans and surgical
equipment).” Appeal Br. 12. In other words, Clayton does not disclose that
the solid fuel is biomass exclusively, as required by claim 33.
Thus, the Examiner has not sufficiently established a finding
supported by a preponderance of the evidence that Clayton, as relied upon in
the rejection presented, teaches the disputed limitation as claimed. We note
that the Examiner made additional findings with respect to the disclosures of
Meffert and Kluko, but did not articulate any findings or reasoning that
would cure the aforementioned deficiency of Clayton. See Final Act. 3;
Ans. 11. Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case of obviousness of the subject matter
of independent claim 33. On this basis, we do not sustain the rejection of
independent claim 33, and of associated dependent claims 25, 31, 34, and
35, as unpatentable over Clayton, Meffert, and Kluko.
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Rejection II— Claims 18 and 20 as
unpatentable over Clayton, Meffert, Kluko, and Roppo
With respect to Rejection II of claims 18 and 20, Appellants rely on
the arguments set forth with respect to independent claim 27, discussed
above, and add only that “Roppo does not cure the deficiencies of the
combination of Clayton, Meffert, and Kluko.” Appeal Br. 13. Accordingly,
for the same reasons that Appellants’ arguments do not apprise us of error in
the rejection of claim 27, these arguments also do not apprise us of error in
the rejection of claims 18 and 20, which we likewise sustain.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 2—4, 6, 15, 16,
21, 22, and 27—29 under 35 U.S.C. § 103(a) as being unpatentable over
Clayton, Meffert, and Kluko.
We REVERSE the Examiner’s decision rejecting claims 25, 31, and
33—35 under 35 U.S.C. § 103(a) as being unpatentable over Clayton,
Meffert, and Kluko.
We AFFIRM the Examiner’s decision rejecting claims 18 and 20
under 35 U.S.C. § 103(a) as being unpatentable over Clayton, Meffert,
Kluko, and Roppo.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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