Nikola Anastasijevic et al.

Patent Trials and Appeals Board

Jan 24, 2020

10589592 - (D) (P.T.A.B. Jan. 24, 2020)

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.
10/589,592 07/05/2007 Nikola Anastasijevic 811842 8644
95402 7590 01/24/2020
LEYDIG, VOIT AND MAYER
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601
EXAMINER
MENDEZ, ZULMARIAM
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKOLA ANASTASIJEVIC, JEAN-PAUL NEPPER,
MARTIN KOENEKE, DIRK LOHRBERG, TOM MARTTILA, and
HENRI VIRTANEN
Appeal 2018-006758
Application 10/589,592
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1–5, 7, 8, 11–22, and 34–41. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Outotec Oyj.
Appeal Brief (“Appeal Br.”) filed June 21, 2017, p. 1.
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We REVERSE.2
CLAIMED SUBJECT MATTER
The claims are directed to a process for electrodepositing copper.
Spec. 1, Title. The invention relates to a process for electrochemical winning
or refining of copper by electrodepositing copper from an electrolyte
solution containing ionogenic copper. Spec. 1:5–6. The electrolyte is passed
through an electrolysis plant comprising at least one electrolytic cell having
a tank for receiving the electrolyte solution, and at least two electrodes
immersed in the solution by hanger bars and serving as anode and cathode
alternately arranged at a distance from each other. Id. at 1:6–10. According
to Appellant, the invention achieves a sufficiently uniform deposition of
copper on the cathodes at electrode immersion depths of more than 1.2 m,
resulting in greater copper production per cathode and reduced costs per ton
of extracted copper. Id. at 4:1–10.
Claim 34, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter (the limitation at issue is
italicized):
A process for electrodepositing copper from an
electrolyte solution containing the metal in ionogenic form, the
process comprising:
passing an electrolyte through an electrolysis plant
comprising at least one electrolytic cell having an electrolyte
tank for receiving the electrolyte which includes at least one
electrode serving as an anode and at least one electrode serving

2 Our Decision additionally refers to the Specification (“Spec.”) filed August
15, 2006, the Examiner’s Answer (“Ans.”) dated April 19, 2018, and
Appellant’s Reply Brief (“Reply Br.”) filed June 18, 2018.

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as a cathode, the electrodes being alternately arranged at a
distance from each other;
immersing, during operation of the electrolysis, the at
least one cathode into the electrolyte over a length of at least 2
meters; and
obtaining one meter by one meter copper sheets from the
at least one cathode by at least one of a stripping operation, a
bending operation and a mechanical separation.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Morin US 2,443,112 June 8, 1948
Billett US 3,530,047 Sept. 22, 1970
Andersen et al.
(“Andersen”)
US 4,098,668 July 4, 1978
Gensini et al. (“Gensini”) US 5,651,024 July 22, 1997
Anastasijevic et al.
(“Anastasijevic”)
US 5,679,240 Oct. 21, 1997
Hiai et al. (“Hiai”) US 5,865,967 Feb. 2, 1999
Virtanen et al.
(“Virtanen”)
US 6,342,136 B1 Jan. 29, 2002
Juric et al. (“Juric”) US 2003/0173214 A1 Sept. 18, 2003
Anastasijevic et al.
(“Nikola”)3
DE 19940698 A1 Mar. 8, 2001

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1) Claims 1–5 and 7 as unpatentable over Anastasijevic in view of
Virtanen, Morin, and Billett;

3 Without objection, the Examiner refers to this reference as “Nikola,” in
reference to the first name of the first named inventor.
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2) Claim 8 as unpatentable over Anastasijevic in view of Virtanen,
Morin, and Billett, and further in view of Juric;
3) Claims 11 and 12 as unpatentable over Anastasijevic in view of
Virtanen, Morin, and Billett, and further in view of Nikola;
4) Claims 13–17 as unpatentable over Anastasijevic in view of
Virtanen, Morin, and Billett, and further in view of Gensini;
5) Claims 18–21 as unpatentable over Anastasijevic in view of
Virtanen, Morin, Billett, Nikola, and Gensini, and further in view of
Andersen;
6) Claim 22 as unpatentable over Anastasijevic in view of
Virtanen, Morin, and Billett, Nikola, Gensini, and further in view of
Hiai; and
7) Claims 34–41 as unpatentable over Anastasijevic in view of
Billett.
OPINION
The dispositive issue before us in this appeal is whether the record
supports the Examiner’s determination that Anastasijevic teaches or suggests
cathode immersion depths substantially greater than one meter, including the
recited immersion depth of at least two meters. After review of the
Examiner’s and Appellant’s opposing positions and the appeal record before
us, we determine that Appellant’s arguments and evidence are sufficient to
identify reversible error in the Examiner’s obviousness rejections. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). In particular, we hold that the
Examiner failed to properly treat Appellant’s 37 C.F.R. § 1.132 Declaration4
as an expert opinion declaration. Accordingly, we reverse the stated

4 Declaration of Nikola Anastasijevic under 37 C.F.R. § 1.132
(“Declaration” or “Decl.”) filed February 19, 2016.
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rejections for substantially the reasons set forth in the Appeal and Reply
Briefs.
The Examiner finds, in relevant part, that Anastasijevic’s cathode is
immersed into the electrolyte over a length of at least one meter during
electrolysis operation. Ans. 2. In support of this finding, the Examiner cites
Anastasijevic’s teachings that the electrodes have a height of at least one
meter (which the Examiner finds includes lengths greater than one meter
such as two meters) and the electrodes are at least partially immersed into
the electrolyte. Id. at 2–3. In addition, the Examiner finds that
Anastasijevic’s electrodes extend at least one half of their surface area into
the electrolytic bath. Id. at 20. Therefore, the Examiner concludes that it
would have been obvious to determine the optimum length of the electrode
to be immersed into the electrolyte by routine experimentation. Id. at 3.
On the other hand, Appellant argues that one of ordinary skill in the
art would not have understood Anastasijevic as disclosing that immersion
lengths greater than one meter would have been possible. Appeal Br. 4, 11.
Instead, Appellant contends that Anastasijevic teaches that electrode lengths
may be greater than one meter, but does not disclose that immersion lengths
may be greater than one meter. Id. Appellant asserts that, “in order to
effectively obtain copper in a stripping operation following electrolysis, it is
necessary to obtain a uniform current distribution along the length of the
cathodes.” Id. at 10–11, citing Spec. 2:12–15. Appellant further asserts that
“[b]ecause it was known that the uniformity of the current distribution is, in
particular, increasing by decreasing immersion length, experts believed, at
the time of the present invention, that the maximally immersed surface area
into the electrolyte should be no greater than 1 meter x 1 meter.” Id. at 11,
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citing Spec. 2:16–24 and 3:29–33. Therefore, Appellant contends that
experts in the art expected cathode immersion lengths greater than one meter
would necessarily result in a non-uniform current distribution at the
electrodes. Id. Appellant urges that this expectation is further supported by
the fact that copper melting furnaces at the time of the invention were
adapted for a maximum 1 m by 1 m copper sheet. Id. Given this expectation,
Appellant argues that it was surprising to find that it was possible to obtain a
uniform deposition of copper on the cathodes with immersion lengths of 1.2
meters or more. Id., citing Spec. 3:29–4:10 and Decl. ¶ 5.
The Examiner determines that the Declaration is insufficient because
it fails to establish, alone or in combination with the results disclosed in the
Specification, unexpected results commensurate in scope with the claims.
Ans. 18–19. In particular, the Examiner explains that Appellant failed to
present a comparison of a sufficient number of tests of immersion lengths
both inside and outside the recited range of at least about 2 meters. Id.
However, Appellant contends that the Examiner failed to consider the
Declaration and accord it appropriate weight in assessing whether there
would have been an expectation of success in providing immersion lengths
greater than one meter. Appeal Br. 4; Reply Br. 2. We agree. The
Declaration does not attempt to establish that the results in the recited range
are unexpectedly better than the results below this range, as the Examiner
treats it. Rather, we find that the Declaration demonstrates that those skilled
in the art did not have a reasonable expectation that immersion lengths
greater than one meter would yield a successful result. As such, Appellant’s
arguments are persuasive of reversible error.
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In this regard, although factual evidence is preferable to opinion
testimony, such testimony is entitled to consideration and some weight so
long as the opinion is not on the ultimate legal conclusion at issue. While an
opinion as to a legal conclusion is not entitled to any weight, the underlying
basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 916,
(CCPA 1962); In re Lindell, 385 F.2d 453, 456 (CCPA 1967) (Although an
affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in
the case, “some weight ought to be given to a persuasively supported
statement of one skilled in the art on what was not obvious to him.”).
Here, we find that the Declaration sets forth an expert opinion as to
the expectations of those skilled in the art regarding electrode immersion
lengths in copper electrolysis, in particular that immersion lengths greater
than one meter would not have been expected to produce a successful result.
The Examiner erred in treating the Declaration, not as an expert opinion of
the expectations of those skilled in the art, but as an attempt to demonstrate
unexpected results for the recited range as compared to shorter immersion
lengths.
Moreover, when properly weighed with the Specification and
Anastasijevic, we are persuaded that there is insufficient evidence in the
record before us to rationally underpin the conclusion that one of ordinary
skill in the art would have found it obvious to modify Anastasijevic’s
process by immersing the cathodes to an immersion length of at least two
meters as recited in both independent claims 1 and 34. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness.”), quoted with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
There is no dispute that Anastasijevic discloses that electrode lengths
may be over one meter, that at least half the surface area of the electrodes
may be immersed, and that the electrodes are at least partially immersed.
Were this the only evidence regarding immersion lengths, we might
reasonably conclude that immersion lengths greater than one meter would
have been obvious to those skilled in the art. However, the Declaration sets
forth that experts expected that cathode immersion lengths greater than one
meter would necessarily result in a non-uniform current distribution at the
electrodes. Decl. ¶ 3. Appellant discloses that the state of the art expected
that the uniformity of the current distribution increases with decreasing
width and, particularly, length of the immersed electrode. Spec. 2:15–19.
Due to this expectation, the standard practice was to maximally immerse one
meter square cathodes. Id. at 2:21–23; Decl. ¶ 4. Thus, the declarant was
surprised that it was possible to obtain uniform copper deposition on the
cathodes with immersion lengths of 1.2 meters or more. Decl. ¶ 5; see also
Spec. 3:29–4:5. Indeed, Appellant found that copper quality achieved was
independent of cathode size. Spec. 13:30–32.
Thus, Appellant’s Specification and the Declaration establish, by a
preponderance of the evidence, that there was an expectation in the art that
electrode immersion lengths greater than one meter would not have been
successful. A reasonable expectation of success is required to establish a
prima facie case of obviousness. In re Droge, 695 F.3d 1334, 1338 (Fed. Cir.
2012) (“Obviousness does not require absolute predictability of success . . .
all that is required is a reasonable expectation of success.”) (citing In re
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Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)); see also In re O’Farrell, 853
F.2d 894, 903–04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.”). The Examiner has not
directed our attention to any evidence either rebutting Appellant’s evidence
of a lack of an expectation of success or otherwise establishing that electrode
immersion lengths greater than one meter were known. Absent a reasonable
expectation of success, we cannot say that the Examiner has carried the
burden of establishing that the claimed processes would have been prima
facie obvious to those of ordinary skill in this art. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (During examination, the Examiner bears the
initial burden of presenting a prima facie case of obviousness.)
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1–5, 7, 8, 11–22, and 34–41 under 35 U.S.C. § 103(a) as unpatentable
over Anastasijevic in combination with Billett alone, or further combined
with Morin, Virtanen, Juric, Nikola, Gensini, Andersen, and Hiai, is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–5, 7 103(a) Anastasijevic,
Morin, Virtanen,
Billett
1–5, 7
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8 103(a) Anastasijevic,
Morin, Virtanen,
Billett, Juric,
8
11, 12 103(a) Anastasijevic,
Morin, Virtanen,
Billett, Nikola
11, 12
13–17 103(a) Anastasijevic,
Morin, Virtanen,
Billett, Gensini
13–17
18–21 103(a) Anastasijevic,
Morin, Virtanen,
Billett, Nikola,
Gensini,
Andersen
18–21
22 103(a) Anastasijevic,
Morin, Virtanen,
Billett, Nikola,
Gensini, Hiai
22
34–41 103(a) Anastasijevic,
Billett
34–41
Overall
Outcome
1–5, 7, 8,
11–22,
34–41

REVERSED