Ex Parte Iacopetti et al

Patent Trial and Appeal Board

Jul 19, 2018

14379344 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/379,344 08/18/2014 Luciano Iacopetti
20311 7590 07/23/2018
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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.
267-176 7130
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCIANO IACOPETTI, GIOVANNI MENEGHINI,
GAETANO PORCINO, and GIUSEPPE FAITA
Appeal2017-008618
Application 14/379,344 1
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, INDUSTRIE DE NORA S.P.A., which
according to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
Appeal2017-008618
Application 14/379,344
STATEMENT OF THE CASE2
Appellant describes the invention as relating to treatment and
recycling of a process electrolyte in the industrial synthesis of epoxy
compounds. Spec. 1: 6-7. In particular, the invention relates to recycling
brine ( e.g., sodium chloride brine) used for the epoxy manufacturing. Id. at
3:1-10. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A process of treatment compnsmg the following
sequential steps:
a) providing a plant wherein an epoxy compound and
a depleted brine are obtained by oxidation of an organic raw
material with the products of a chlor-alkali electrolysis unit fed
with fresh brine;
b) extracting a waste stream consisting of the depleted
brine from the plant in step a);
c) vapor stripping by injecting a flow of water into the
waste stream obtained from step b) to obtain a vapor-stripped
stream;
d) pre-oxidating the material from step c) with
hypochlorite at pH 3.5 to 5 and at a temperature of 50 to 60°C;
and
e) finally oxidating the material from step d) by further
adding hypochlorite at pH 3 to 4 and at a temperature of 80 to
95°C until obtaining a fresh brine.
Appeal Br. 12 (Claims App.).
2 In this Decision, we refer to the Non-Final Office Action dated March 18,
2016 ("Final Act."), the Appeal Brief filed August 22, 2016 ("Appeal Br."),
and the Examiner's Answer dated January 13, 2017 ("Ans.").
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Application 14/379,344
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Lefevre
Krafft et al.
("Krafft")
Gilbeau et al.
("Gilbeau '429")
Gilbeau et al.
("Gilbeau '872")
Gilbeau et al.
("Gilbeau '468")
us 4,213,833
WO 2005/054167 Al
WO 2009/095429 Al
WO 2012/016872 Al
WO 2012/025468 Al
REJECTIONS
July 22, 1980
June 16, 2005
Aug. 6,2009
Feb.9,2012
Mar. 1, 2012
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-12 under 35 U.S.C. § 112 as indefinite.
Ans. 2.
Rejection 2. Claims 1, 2, 4--10, and 12 under 35 U.S.C. § 103 as
unpatentable over Gilbeau '468 incorporating Gilbeau '429 and Krafft by
reference. Id. at 3.
Rejection 3. Claim 3 under 35 U.S.C. § 103 as unpatentable over
Gilbeau '468 (in light of Gilbeau '429 and Krafft) and further in view of
Gilbeau '872. Id. at 7.
Rejection 4. Claim 11 under 35 U.S.C. § 103 as unpatentable over
Gilbeau '468 (in light of Gilbeau '429 and Krafft) and further in view of
Lefevre. Id. at 8.
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Application 14/379,344
ANALYSIS
Rejection 1. The Examiner rejects claims 1-12 under 35 U.S.C. § 112
as indefinite. Ans. 2. During prosecution, "'[a] claim is indefinite when it
contains words or phrases whose meaning is unclear."' Ex parte McAward,
Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(quoting In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam)).
Here, the Examiner maintains that claim 1 is unclear because (1) it is not
clear whether the recited "waste stream consisting of a depleted brine"
includes organic materials to be removed and (2) it is not clear whether
claim 1 requires the recited process steps within the recited "plant." Ans. 2-
3.
With respect to the Examiner's first point, we agree with Appellant
that the purpose of claim 1 's method is to recycle depleted brine by abating
organic content. Appeal Br. 4; see also e.g., Spec. 3:5-7 ("The recycling of
depleted brine is feasible however only provided the content of residual
organic compounds ... is previously abated."), 6:29-34 (explaining that
depleted bring contains "sensible amounts of organic substances"). Claim 1
is not unclear because it recites "depleted brine" from "a plant" and, given
the context of the Specification, a person of ordinary skill in the art would
understand that the depleted brine may include some organic material ( at
least prior to the bulk of the organic material being removed as a result of
the recited processing).
The Examiner also states that the Specification appears to refer to
sodium chloride alone as being depleted brine. Ans. 10 ( citing Spec. 1: 14--
22 ("the end product ... and sodium chloride ( depleted brine)"). Reading
the Specification as a whole (including the passages referenced above), the
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Application 14/379,344
cited parenthetical does not appear to define depleted brine as being
equivalent to "sodium chloride." Rather, the parenthetical indicates that the
sodium chloride is a component of the depleted brine.
With respect to the Examiner's second point, Appellant argues that the
first step of the claimed process "provides for the oxidation of organic
material with products of chlor-alkali electrolysis unit fed with fresh brine to
obtain a plant with an epoxy compound and a depleted brine." Appeal Br. 4.
We agree with Appellant's interpretation in this regard. Thus, we determine
that claim 1 does require "providing a plant" having the recited
characteristics. The recitation narrows the claim but does not render it
unclear.
For the reasons above, we do not sustain the Examiner's rejection
based upon 35 U.S.C. § 112 indefiniteness.
Rejections 2--4. The Examiner rejects claims 1, 2, 4--10, and 12 under
35 U.S.C. § 103 as unpatentable over Gilbeau '468 incorporating Gilbeau
'429 and Krafft by reference. Ans. 3. The Examiner additionally cites
Gilbeau '872 in rejecting claim 3 and cites Lefevre in rejecting claim 11. Id.
at 7-8.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error with regard to the
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Examiner's obviousness rejections. Thus, we affirm these rejections for the
reasons expressed in the Final Office Action and the Answer. We add the
following primarily for emphasis.
Appellant argues rejections 2--4 together and argues all claims as a
group. See Appeal Br. 5-10. Therefore, consistent with the provisions of
37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and
all other claims on appeal stand or fall together with claim 1.
The Examiner finds that Gilbeau '468 teaches a treatment for reducing
organic content in a depleted brine waste stream from an epoxy plant. Ans.
3--4 ( citing Gilbeau '468). The Examiner finds that Gilbeau '468 teaches
vapor stripping to remove a substantial fraction of residual organic
compounds. Id. at 4. Steam is a preferred stripping agent. Gilbeau '468
7 :7-11. The Examiner finds that Gilbeau '468 teaches further treatment
according to the process of Gilbeau '429 and finds that Gilbeau '468
incorporates Gilbeau '429 by reference. Ans. 4 ( citing Gilbeau '468 20:9-
26).
The Examiner finds that Gilbeau '429 teaches a pre-oxidation step
that uses hypochlorite. Ans. 4--5 (citing Gilbeau '429). In particular, step
(a) of Gilbeau '429 makes use ofhypochlorite to degrade and oxidize
organic substances. Gilbeau '429 1 :24--29. The Examiner finds that
Gilbeau '429 teaches carrying out step (a) at a pH and temperature that
overlaps the pH and temperature recited by claim 1. Ans. 4; see also
Gilbeau '429 8:34--9:4 (explaining that step (a) is preferably carried out at
higher than 30QC and most preferably lower than 135QC). In particular, the
third embodiment of Gilbeau '429 uses includes both step (a) and step (b2)
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(Gilbeau '429 17:22-27), and both of these steps occur "preferably at a
value higher than or equal to 3 and lower than or equal to 5" (id. at 20: 1-3).
The Examiner finds that the Gilbeau references also teach an
oxidation step that uses hypochlorite. Ans. 5 ( citing both Gilbeau
references). This step also has temperatures and pH that overlap those
recited by claim 1. For example, Step (b2) of the third embodiment of
Gilbeau '429 is most preferably at a temperature higher than 80QC and may
be at a temperature lower than 1 lOQC. Gilbeau '429 18:15-24; see also id.
at 20: 1-3 (teaching that step (b2) preferably occurs at pH between 3 and 5).
Appellant argues that none of the cited references teach "a process of
treatment "where the step of pre-oxidation is carried [out] with hypochlorite
at pH 3 .5 to 5 and at a temperature of 50 to 60°C, followed by oxidation by
further adding hypochlorite at pH 3 and 4 and at a temperature of 80 to 95°C
until obtaining a fresh brine." Appeal Br. 6. Similarly, Appellant argues
that Gilbeau teaches pH and temperature ranges broader than those of claim
1. Appeal Br. 7-8. As explained above, however, the third embodiment of
Gilbeau '429, for example, teaches two steps making use of hypochlorite
where each step may occur within overlapping pH and temperature
conditions. Cf In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (holding
that a prima facie case of obviousness typically exists when ranges of
claimed composition overlap the ranges disclosed in prior art).
Appellant also argues that there is a surprising advantage to pre-
oxidation at slightly higher pH and low temperature followed by thorough
oxidation at lower pH and higher temperature. Appeal Br. 6. Claim 1,
however, does not require pre-oxidation at a higher pH. Rather, both step
( d) and step ( e) of claim 1 may occur at a constant pH anywhere between 3. 5
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and 4. Appellant's argument is therefore not commensurate with the scope
of claim 1. Ans. 12-13.
Appellant argues that the references do not teach claim 1 's recited
vapor stripping by injecting a flow of water. Appeal Br. 7. Appellant argues
that, instead, Gilbeau '468 teaches many different possible stripping agents.
Id. Appellant admits, however, that Gilbeau teaches that steam (i.e., the
vapor form of water) may be the stripping agent. Ans. 13. The fact that
Gilbeau also teaches other possibilities does not diminish its teaching of
steam as a stripping agent. See In re Lamberti, 545 F .2d 7 4 7, 7 50 ( CCP A
197 6) ("all disclosures of the prior art, including unpreferred embodiments,
must be considered").
Similarly, Appellant argues that Gilbeau teaches a variety of different
treatments that may follow stripping. Appeal Br. 7. Appellant does not
persuasively dispute, however, that oxidation is among the treatments that
the Gilbeau references teach as potentially following the vapor stripping.
Ans. 14--15. This argument therefore does not identify reversible error. See
Lamberti, 545 F.2d at 750.
Appellant also argues that its invention solves a long-felt need to
solve the problem of minimizing chlorates and chlorinated by-products from
depleted brines. Appeal Br. 9. Appellant's argument is unpersuasive
because Appellant presents no supporting evidence. Ans. 17; see also
MPEP 716.04(!) ("Establishing long-felt need requires objective evidence
that an art recognized problem existed in the art for a long period of time
without solution."); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) ("our
precedent requires that the applicant submit actual evidence of long-felt
need, as opposed to argument.").
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Because Appellant's arguments do not identify reversible error, we
sustain the Examiner's obviousness rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1, 2, 4--10, and 12 under 35 U.S.C. § 103 as unpatentable over Gilbeau '468
incorporating Gilbeau '429 and Krafft by reference, of claim 3 under
35 U.S.C. § 103 as unpatentable over Gilbeau '468 (in light of Gilbeau '429
and Krafft) and further in view of Gilbeau '872, and of claim 11 under
35 U.S.C. § 103 as unpatentable over Gilbeau '468 (in light of Gilbeau '429
and Krafft) and further in view of Lefevre. We reverse the Examiner's
rejection of claims 1-12 under 35 U.S.C. § 112 as indefinite.
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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