Ex Parte McColl et al

Patent Trial and Appeal Board

Mar 28, 2017

13017084 (P.T.A.B. Mar. 28, 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.
13/017,084 01/31/2011 Philip McColl 32471/22344 5954
4743 7590 03/30/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
KEYWORTH, PETER
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP MCCOLL and STEPHEN SCAMMELL
Appeal 2016-001570
Application 13/017,0841
Technology Center 1700
Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
29-48. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Ciba Specialty Chemicals Water Treatments Limited as
the real party in interest. Appeal Brief 3.
2 In our Opinion, we refer to the Final Action electronically delivered on
April 4, 2014 (“Final Act.”); the Advisory Action electronically delivered on
September 3, 2014 (“Adv. Act.”); the Appeal Brief filed on January 5, 2015
(“Br.”); and the Examiner’s Answer electronically delivered on June 3, 2015
(“Ans.”). Appellants did not file a Reply Brief.
Appeal 2016-001570
Application 13/017,084
The claims are directed to treatment of aqueous suspensions. Claim
29, reproduced below, is illustrative of the claimed subject matter:
29. A process of rigidifying a mineral material whilst
retaining the fluidity of the material during transfer, in which
the material comprises an aqueous liquid with dispersed
particulate solids is transferred as a fluid having a solids content
in the range of 10% to 80% by weight, to a deposition area,
then allowed to stand and rigidify and release aqueous liquid,
by combining with the material an effective rigidifying amount
of an aqueous solution of a water-soluble polymer having an
intrinsic viscosity of at least 5 dl/g (measured in 1M NaCl at 25
°C), wherein the water-soluble polymer is anionic and is
formed from ethylenically unsaturated water-soluble monomer
or blend of monomers, and wherein the water-soluble polymer
is formed from monomer(s) selected from the group consisting
of (meth)acrylic acid, allyl sulphonic acid and 2-acrylamido-2-
methyl propane sulphonic acid as the free acids or salts thereof,
optionally in combination with non-ionic co-monomers,
selected from the group consisting of (meth)acrylamide,
hydroxy alkyl esters of (meth)acrylic acid and N-vinyl
pyrrolidone.
App. Br. 26—27 (Claims App’x).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Luke US 6,077,441 June 20,2000
Gallagher et al. US 6,821,440 B2 Nov. 23, 2004
(“Gallagher”)
Backer and Busch, Fine Coal-Refuse Slurry Dewatering,
Report of Investigations—8581, 1—18 (1981) (“Backer”)
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Appeal 2016-001570
Application 13/017,084
REJECTIONS
The Examiner maintains rejection of the claims under 35 U.S.C. §
103(a) over the prior art as follows: (1) claims 29—35 and 37-48 over Backer
in view of Luke; and (2) claim 36 over Backer in view of Luke and further
in view of Gallagher. Final Act. 2, 4.
OPINION
Consistent with Appellants’ request and 37 C.F.R. § 41.37(c)(i)(iv),
the claims on appeal will stand or fall with independent claim 29. See Br. 6.
The Examiner finds that Backer teaches a process for rigidifying a
mineral material while retaining the fluidity of the material during transfer,
which process comprises transferring the material comprising a fluid having
a solids content of around 20% to a deposition area (dewatering cells) where
the material is allowed to stand and rigidify. Final Act. 2. The material is
combined with a polymer solution (polymer mixed with water); the polymer
is Superfloe 1202. Id. at 2—3. The Examiner acknowledges that Backer
does not disclose the polymer having the claimed properties. Id. at 3.
However, the Examiner finds that Luke teaches a similar process, wherein a
mineral material is treated with a polymer solution comprising (meth)acrylic
acid, an anionic polymer having an intrinsic viscosity of at least 5 dl/g. Id.
(Meth)acrylic acid is one of the polymers recited in claim 29. The Examiner
concludes that it would have been obvious to substitute (meth)acrylic acid
from Luke for Superfloc 1202 in the Backer process because the polymers
have the same flocculating/dewatering properties, are used for the same
purpose, and one of ordinary skill in the art at the time of the invention
would have a reasonable expectation of success. Id.
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Appeal 2016-001570
Application 13/017,084
Appellants make numerous arguments for how their invention differs
from the disclosure of Backer. See Appeal Br. 7—15. Appellants argue that
Backer teaches a process of combining polymer with slurry that has been
pre-conditioned and treated with lime, rather than combining polymer with
slurry alone. Id. at 7, 9 ([N]othing in Backer suggests that additional of
polymer alone . . . would work to achieve the objective of the presently
recited invention.”). Appellants argue that Backer’s process would be
challenging to use on a commercial scale. Id. at 8. Appellants provide a
bullet list of purported differences in the two processes, including those
stated above and that Backer places the mixture in a holding tank, deposits the
slurry into an elaborate and complex filtering system, settles and sediments
solids. Id. at 14—15.
However, as the Examiner points out, claim 29 uses the transitional term
“comprising,” so elements in addition to those claimed are permitted. See Final
Act. 5; Ans. 2. Appellants elected not to exclude preconditioning with lime
from claim 29 or to limit the process by “consisting of’ language. The breadth
of claim 29 permits the additional elements of which Appellants complain. See,
e.g., In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Fimitations not appearing
in the claims cannot be relied upon for patentability).
In addition, Appellants’ arguments read limitations into claim 29 that are
not present. For example, Appellants contend that nothing in Backer would
suggest to one of ordinary skill in the art that the treated material is “rapidly
solidified.” Appeal Br. 9. Appellants further argue that the “the presently
disclosed process allows for recovering more water from the solids very
quickly, while also improving rigidification. Id. at 13. And Appellants argue
that Backer provides that increasing slurry densities to 50-60% solids is
“difficult” and “probably not feasible.” Id. at 9-10. These arguments are
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Appeal 2016-001570
Application 13/017,084
unpersuasive, as they are directed to the disclosure of the Specification, and not
the claims.
Appellants also argue that Backer’s results were “provisional,” and that
Backer’s process is not effective at “higher depths” (i.e., increased thickness of
the deposited slurry). Appeal Br. 8, 11. The Examiner responds that Backer
teaches that, although costs for the process disclosed are expected to be high for
a full-scale operation, they still would be competitive with other methods. Ans.
2. Furthermore, “a reference must be considered for everything that it teaches.”
In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). Again,
Appellants’ argument is not persuasive because the claim are not limited to
transferring the fluid to a deposition area at any particular depth.
Appellants contend that Backer focused on a process of dewatering, not
rigidification, and state that rigidification and dewatering are not the same.
Appeal Br. 8, 11. The Examiner finds that Backer teaches that the slurry
went from fluid with low solids content to “such that the surface could be
walked on and the slurry could be easily excavated.” Ans. 2—3. It is well
settled that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants fail
to rebut the Examiner’s finding.
Appellants point to “unexpected and advantageous results” of the present
invention evidenced in Example 1 of the Specification. Br. 13. As Appellants
acknowledge, the data compares slurry treated with Appellants’ process against
untreated slurry. Id. at 14. Thus, the data does nothing to overcome the slurry
treatment process taught by Backer, as “unexpected results” are probative of
nonobviousness only when compared to the closest prior art. In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991).
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Application 13/017,084
As noted, the Examiner relies on Luke for teaching the claimed polymer.
Final Act. 3; Ans. 4. Appellants contend that the record is unclear on how the
Examiner arrived at the conclusion that one skilled in the art would select a
water-soluble polymer with the specific properties claimed. Appeal Br. 17.
Further, Appellants regard the record as unclear on how the Examiner
concludes that a polymer solution comprising (meth)acrylic acid is an
equivalent polymer to the Superfloe 1202 polymer disclosed in Backer, when
the composition of Superfloe 1202 polymer is not disclosed. Id. at 17—18.
The Examiner responds that Luke teaches a similar process where a
flocculant is added to a mineral-containing slurry for the purpose of
dewatering, and that Luke and Backer contain the same method steps, used on
the same stream for the same purpose (dewatering mineral slurries). Ans. 4—5.
The Examiner concludes that one of ordinary skill in the art at the time of the
invention would therefore recognize the equivalence of the polymers of Backer
and Luke and have a reasonable expectation of success in substituting one
known polymer for another for the same purpose. Id. at 5. A claim is obvious
where it ‘“simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (quotes and citation omitted); In reMayne, 104 F.3d 1339,
1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one
element known in the art for a known equivalent, this court affirms [the
rejection for obviousness].”).
The Examiner supports a prima facie case for obviousness of claim 29
over Backer in view of Luke. Appellants do not adequately rebut the
Examiner’s conclusion. We sustain the Examiner’s rejection of claim 29 as
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Application 13/017,084
obvious. For reasons stated above, we also sustain the Examiner’s rejection
of claims 30-48.
DECISION
For the above reasons, the Examiner’s rejection of claims 29 48 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)(l)(iv).
AFFIRMED
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