Ex Parte Hamalainen et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10511382 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte, MATTI HAMALAINEN
and OLLI HYVARINEN

Appellants
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Appeal 2010-001319
Application 10/511,382
Technology Center 1700
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Decided: April 19, 2010
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Before SALLY GARDNER LANE, RICHARD TORCZON, and
MICHEAL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001319
Application 10/511,382

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I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellant’s claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Appellant’s application is directed to a method of recovering gold
during copper production. (Spec. 1).
The Examiner relied on U.S. Patent 5,487,819, which issued
January 30, 1996 (“Everett”). Claims 1, 2, 4, 5, 7, and 9-11 were rejected
under 35 U.S.C. § 102(b) as being anticipated by Everett. The Examiner
also rejected claims 3, 6, and 8 under 35 U.S.C. § 103(a) as being rendered
obvious by Everett. Appellants do not argue separately for the patentability
of any of the claims in these groups. We focus on claims 1 and 3 in our
review. See 37 C.F.R. § 41.37(c)(vii).
II. PRINCIPLES OF LAW
“Anticipation requires a showing that each limitation of a claim is
found in a single reference, either expressly or inherently.” Atofina v. Great
Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006).
“By using the term ‘consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indust. v. Guardian Indust. 156 F.3d
1351, 1354 (Fed. Cir. 1998).
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III. FINDINGS OF FACT
1. Appellant’s claim 11 recites:
A method for the recovery of gold from a leaching residue or
intermediate product containing iron and sulphur, which is generated
in the chloride leaching of a copper sulphide raw material at
atmospheric pressure, comprising
leaching the gold from the residue or intermediate product in an
aqueous solution consisting essentially of copper (II) chloride, sodium
chloride and oxygen-containing gas;
keeping the oxidation-reduction potential of the suspension
formed at a value below 650 mV and the pH at a value of 1-3,
whereby the iron and sulphur remain mainly undissolved;
recovering the dissolved gold, and;
discarding the undissolved residue as waste.

(App. Br., Claims App’x 1).
2. Everett teaches a leaching process for producing metals,
including precious metals from minerals, such as ores. (Everett col. 1,
ll. 9-11).
3. In the process taught by Everett, mineral and an electrolyte are
countercurrently fed into a contacting unit so that the metals leach from the
mineral. (Everett col. 2, ll. 20-41).

1 Claim 1 has been modified by inserting indentations where the punctuation
of the claim indicates a different step of the method. 37 C.F.R. § 1.75(i).
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Application 10/511,382

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4. Figure 1 of Everett is reproduced below:

Figure 1 depicts a schematic diagram of a process for producing one or more
metals. (Everett col. 5, ll. 56-57). Element 50 of Figure 1 is a gold recovery
unit which accepts electrolyte (14P) from a “halide complex leaching zone”
(17) (id. col. 10, ll. 40-44, and col. 6, ll. 19-21) and cupric copper from a
copper electrolytic cell (52) (id. col. 10, ll. 26-32).
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5. Everett teaches that electrolyte (14P) from the “halide complex
leaching zone” (17) is a “halex,” such as BrCl-, which results from two or
more halides present in the electrolyte stream. (Everett col. 8, ll. 16-18 and
ll. 36-46).
6. Everett teaches that the oxidation-reduction potential of the
solution in the gold recovery unit (50) is below +600 mV, which causes the
gold to come out of solution. (Everett col. 10, ll. 44-49).
7. Everett teaches that, in general, the electrolyte (14P) can be
sodium chloride. (Everett col. 6, ll. 11-13).
8. Everett teaches that, in general, the pH of the electrolyte (14P)
is between 0.5 and 3. (Everett col. 6, ll. 27-28).
9. Everett teaches that air or oxygen is fed to assist in the leaching
process. (Everett col. 6, ll. 24-26).
10. Appellants’ claim 3 recites:
The method according to claim 1, wherein the pH of the
suspension is kept at a value of 1.5 - 2.5.

(App. Br., Claims App’x 1).
11. Appellants’ claim 6 recites:
The method according to claim 1, wherein the temperature of
the suspension is kept in the range between 80o C and the boiling
point of the suspension.

(App. Br., Claims App’x 1).
12. Appellants’ claim 8 recites:
The method according to claim 1, wherein the oxygen: [sic]
containing gas is oxygen enriched air.

(App. Br., Claims App’x 1).
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IV. ISSUE
Does the use of the limitation “consisting essentially of” in
Appellants’ claimed leaching solution exclude the use of the additional
halides as part of the leaching solution of Everett?
V. ANALYSIS
Appellants do not dispute that Everett teaches a method for recovering
gold by leaching the residue or intermediate product in a solution of copper
(II) chloride, sodium chloride and oxygen-containing gas, while keeping2 the
oxidation-reduction potential of the suspension formed at a value below 650
mV and the pH at a value of 1-3, recovering the dissolved gold, and
discarding the undissolved residue as waste. (FFs3 2-9). Appellants dispute
that the language “consisting essentially of copper (II) chloride, sodium
chloride, and oxygen-containing gas” in their claim 1 (FF 1 (emphasis
added)) allows for the additional halide needed to form a “halex” (for
example bromine in BrCl2- ), as taught by Everett (see FF 5; see also Everett
col. 10, ll. 57-58: “FIG. 5 shows the leaching of gold by anodically
generated halex species”), in the aqueous solution. (App. Br. 4-12).
Appellants argue that these additional halides “materially affect the basic
and novel properties of the invention.” See PPG Indust., 156 F.3d at 1354.

2 The punctuation and grammar of Appellants’ claim 1 indicates that
“keeping the oxidation-reduction potential of the suspension formed at value
below 650 mV and the pH at a value of 1-3” is a separate step in the claimed
method. (See Finding of Fact 1). The recited parameters, though, are
characteristics of the leaching step and should be included in the leaching
step.
3 “FFs” indicates Findings of Fact.
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“[I]n construing the phrase ‘consisting essentially of’ in appellants’ claims, it
is necessary and proper to determine whether their specification reasonably
supports a construction that would include [additional elements].” In re
Herz, 537 F.2d 549, 551 (CCPA 1976). Appellants point to the discussion
in their specification of prior gold leaching methods that used a bromine
complex, but were environmentally harmful. (Spec. 2, ll. 17-21). Thus,
Appellants argue that the additional halides, such as bromine, necessary to
form a halex are excluded by the language “consisting essentially of.”
The Examiner disagrees that Everett teaches only using a halex
compound. Instead, the Examiner points to two portions of Everett that he
finds teach metal leaching without bromine. (Ans. 6 and 11). The Examiner
points to the discussion in the Background Art section of Everett of a
different process for leaching metals, called the “Cuprex Process.” This
process is described as using only ferric chloride to produce copper. (See
Everett col. 2, ll. 3-7). The Examiner also points to data in Everett that
compares the oxidation potential of NaCl solution with and without Br-.
(See Everett col. 8, ll. 47-61). The Examiner does not explain how either of
these teachings includes all of the limitations of Appellants’ claimed method
– a method of recovering gold that comprises leaching an aqueous solution
with oxygen-containing gas, wherein the oxidation-reduction potential of the
suspension formed in below 650 mV and the pH is 1-3.
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.

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NetMoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
The Examiner does not explain how those of skill in the art would
understand Everett to teach a method that includes all of the limitations cited
in Appellants’ claim.
Accordingly, we are persuaded us that the Examiner erred in rejecting
the claimed method as anticipated by Everett.
The Examiner rejected claims 3, 6, and 8 under 35 U.S.C. § 103(a).
Claims 3, 6, and 8 depend on claim 1 and further limit the pH range, the
temperature of the suspension, and the type of oxygen-containing gas,
respectively. (FFs 10-12). According to the Examiner, it would have been
obvious to those in the art to modify the method taught in Everett to achieve
these parameters. (Ans. 8-9). The Examiner relied on the anticipation of
the method in Appellants’ claim 1, which we find to be an error, as the
starting point for the obviousness analysis. The rejection does not address
why it would have been obvious to modify Everett to achieve the method of
claim 1. Thus, the Examiner also erred in rejecting claims 3, 6, and 8.
VI. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1, 2, 4, 5, 7, 9, and 11 under 35 U.S.C. § 102(b)
as being anticipated by Everett is REVERSED; and
the rejection of claims 3, 6, and 8 under 35 U.S.C. § 103(a) as being
rendered obvious by Everett is REVERSED.

REVERSED

Appeal 2010-001319
Application 10/511,382

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