Ex Parte Pegg et al

Patent Trials and Appeals Board

Apr 3, 2019

15005791 - (D) (P.T.A.B. Apr. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/005,791 01/25/2016
32425 7590 04/05/2019
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Ian L. Pegg
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.
NROR.P0518US/1001050836 4909
EXAMINER
JOHNSON, EDWARD M
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
04/05/2019 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN L. PEGG, HAO GAN, and KEITH S. MATLACK
Appeal2018-003587
Application 15/005,791
Technology Center 1700
Before KAREN M. HASTINGS, BRIAND. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 seeks our review of the
Examiner's decision to reject claims 21--41 under 35 U.S.C. § 103(a) as
unpatentable over Yamazaki (WO 2009/039059 Al, pub. March 26, 2009)
in view of Wagner (US 6,355,857 Bl, issued March 12, 2002). 2
We have jurisdiction. 35 U.S.C. §6.
We reverse.
1 Appellant is the Applicant, P &T Global Solutions, which is also identified
as the real party in interest. App. Br. 1.
2 The obviousness-type double patenting rejection set forth in the Final
Office Action dated December 19, 2016 has been withdrawn. Ans. 5.
Appeal2018---003587
Application 15/005,791
SUBJECT MATTER
The subject matter on appeal relates to methods of vitrifying waste
such as radioactive waste by forming a feed mixture that includes the waste,
a source of vanadium oxide and at least one of a glass frit or glass forming
chemical. Independent claims 21, 37, 41 (App. Br. 8, 9, 10).
Independent claim 21 is illustrative of the claimed subject matter and
is copied below with the key limitation at issue in this appeal italicized:
21. A method for vitrifying waste comprising:
forming a feed mixture that includes the waste, a source
of vanadium oxide, and at least one of glass frit or glass
forming chemicals; and
vitrifying the feed mixture in a melter to produce a glass
product that includes the waste.
App. Br. 8 ( emphasis added).
OPINION
We need only consider claim 21, which, like the other independent
claims 3 7 and 41, recites the dispositive limitation in this appeal - "a source
of vanadium oxide." App. Br. 8.
The Examiner fmds that Yamazaki discloses the recited method but
for the recitation of"a source of vanadium oxide." Final Act. 2. For this
limitation, the Examiner turns to Wagner. Id. The Examiner fmds that
Wagner discloses the use of vanadium as a radiation absorbing material. Id.
The Examiner determines that it would have been obvious to the skilled
artisan "to use the vanadium of Wagner in the radioactive waste treatment
process of WO '0 5 9 [Yamazaki] because Wagner discloses the vanadium as
a radiation absorbing material." Id. ( emphasis added).
2
Appeal2018---003587
Application 15/005,791
The Examiner determines that vanadium oxide would be inherently
present because Wagner discloses that, during its process, "[a]nyremaining
oxygen in the reactor vessel quickly reacts with the metal in the alloy to
produce metal oxides which appear as slag at the surface of the molten
material or sink to the bottom of the reactant alloy container." Id. at 2-3
(citing Wagner 10:45-55).
Appellant contends that the Examiner has failed to establish that
vanadium oxide is inherently produced in the process of Yamazaki. App.
Br. 3-5. Appellant specifically argues that "the disclosure in Wagner that
oxygen reacts with metals to form metal oxides is specific to the reactant
metal alloy mixture used in Wagner. There is no indication that this
disclosure applies to the glass melter feed in [Yamazaki] which is an entirely
different process" than Wagner's. Id. at 4.
Appellant identifies reversible error in the rejection. We note that
"[t]he Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not ... resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies" in the cited references. In re
Warner, 379 F.2d 1011, 1017 (CCP A 1967). Furthermore, "[t]he inherent
result must inevitably result from the disclosed steps; '[i]nherency ... may
not be established by probabilities or possibilities."' In re Montgomery, 677
F.3d 1375, 1380 (Fed. Cir. 2012) (internal citations omitted).
Here, the Examiner's determination that vanadium oxide would
inherently be produced in Yamazaki' s process is speculative because the
inherency determination is premised on processing conditions that occur
3
Appeal2018---003587
Application 15/005,791
within Wagner, not Yamazaki. 3 Final Act. 2-3 ( asserting that vanadium
oxide is inherently produced because "any remaining oxygen in [Wagner's]
reactor vessel quickly reacts with the metal in [Wagner's] alloy to produce
metal oxides"). On this record, the Examiner provides no evidence to
establish that Yamazaki' s process of encapsulating waste products in glass
has sufficient oxygen available such that available oxygen would necessarily
react with Wagner's radiation-absorbing vanadium metal or metal isotope to
form vanadium oxide.
Because the Examiner's rejection lacks sufficient factual support, we
are constrained to reverse it.
DECISION
REVERSED
3 We note that Appellant's Specification describes that "the source of the
vanadium oxide is any convenient vanadium compound that will react and
decompose under the high temperature glass melting conditions to produce
vanadium oxide" (Spec. ,r 19). Appellant also points out that Yamazaki
shares inventors in common with the instant application and discloses
"previous work" regarding vitrification of high level waste (App. Br. 2).
The Board relies on the involved parties to focus the issues and decides
those issues based on facts and arguments presented by the involved parties.
See ExParte Frye, 94 USPQ2d 1072 (BP AI 2010 (precedential)). While the
Board is authorized to enter a new ground of rejection, this authority is
discretionary. See 37 C.F.R. § 4I.50(b). We leave it to the Examiner to
decide whether a new ground of rejection based on these disclosures and the
conditions of Yamazaki' s process should be made.
4