Didier Bourbon et al.

Patent Trials and Appeals Board

Sep 11, 2019

13696118 - (D) (P.T.A.B. Sep. 11, 2019)

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.
13/696,118 12/04/2012 Didier Bourbon 0771-1023 4566
466 7590 09/11/2019
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
EXAMINER
JOLLY, ONEKKI P
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
DocketingDept@young-thompson.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DIDIER BOURBON and SÉBASTIEN DEVROE
____________________

Appeal 2019-000506
Application 13/696,1181
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 4, 6–9, 17, and 19–21. Final Act. 2–5. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Fives FCB, of Villeneuve D’Ascq, France as the real
party in interest. Appeal Br. 1.
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The Invention
Appellants’ claimed invention relates to “producing hydraulic binders
such as cement, in particular from slag from the metallurgical industry.”
Spec. 1:10–11. Claims 1, 20, and 21 are independent. Appeal Br. 28,
30–34. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for obtaining a fine fraction from a
mineral material containing at least calcium and metal
impurities, said method comprising the following steps:
providing said mineral material containing at least calcium
and metal impurities, said mineral material being slag from the
metallurgical industry or a mixture of slag from the metallurgical
industry and a mineral substance,
obtaining a ground material by grinding said mineral
material by material bed compression with a single grinder,
separating the ground material into a fine fraction and a
coarse fraction by means of a granulometric selection device,
extracting metal impurities from the coarse fraction by
subjecting the coarse fraction to magnetic sorting,
returning the coarse fraction from which metal impurities
have been extracted to the single grinder for a further grinding
step and a further separating step to obtain a fine fraction, and
collecting fine fractions,
wherein the extracting by magnetic sorting is implemented
on the coarse fraction after separating the coarse fraction from
the fine fraction using a granulometric selection device and
before grinding using the grinder, the mineral materials from
which metal impurities have been extracted being returned to the
grinder, the extracted impurities being discharged, and
wherein at least four successive passages through the
magnetic sorting enable satisfactory elimination of the metal
impurities because the coarse fraction represents by weight at
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least 80% of the ground material issuing from the single grinder,
and
wherein the method is implemented in plant comprising
said single grinder and said granulometric selection device.
Appeal Br. 28–29.

REJECTIONS
I. Claims 1, 4, 6–9, 17, and 19 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. Final Act. 2.2
II. Claims 1, 4, 6–9, 17, and 19–21 are rejected under 35 U.S.C.
§ 103(a) over Sanchez, Drage ʼ556, Drage ʼ744, and either Cordonnier ʼ994,
Cordonnier ʼ096, or Devroe.3 Final Act. 3–5.

ANALYSIS
Indefiniteness
Claim 1 recites, in revelant part:
A method for obtaining a fine fraction from a mineral
material containing at least calcium and metal impurities, said
method comprising the following steps:
providing said mineral material containing at least calcium
and metal impurities, said mineral material being slag from the

2 A rejection of claim 20 under 35 U.S.C. § 112, second paragraph, was
withdrawn in the Answer. Final Act. 2; Ans. 3.
3 Sanchez (WO 97/14760 A1, published Apr. 24, 1997); Drage ʼ556 (US
3,905,556, issued Sept. 16, 1975); Drage ʼ744 (US 3,885,744, issued May
27, 1975); Cordonnier ʼ994 (FR 2 642 994 A1; published Aug. 17, 1990);
Cordonnier ʼ096 (FR 2 658 096 A1, published Aug. 16, 1991), and Devroe
(WO 2008/068432 A2, published June 12, 2008).
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metallurgical industry or a mixture of slag from the metallurgical
industry and a mineral substance.
Appeal Br. 28. The Examiner explains that, because the preamble recites “a
mineral material containing at least calcium and metal impurities,” the
mineral material recited in the body of the claim must include calcium and
metal impurities. The Examiner concludes that “[i]t is unclear if the mineral
material is the slag and if the slag is just calcium and metal impurities.”
Ans. 4; see also Final Act. 2.
A claim undergoing prosecution is indefinite if the metes and bounds
of the claimed subject matter are not clear. In re Packard, 751 F.3d 1307,
1310 (Fed. Cir. 2014); see also Ex parte McAward, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (relying on the standard of Packard).
Appellants correctly point out that one of ordinary skill in the art would have
understood what was meant by “slag from the metallurgical industry;” and
that such slag would have contained, not only calcium and metal impurities,
but other components, as well. Appeal Br. 8–9 (citing Sanchez, 7:19–22);
Reply Br. 2. In view of this knowledge, claim 1 is not unclear, and requires
that the mineral material (1) contains at least calcium and metal impurities,
and (2) is slag.

Obviousness
As an overview, claims 1, 20, and 21 each require further grinding of
a non-magnetic product, namely the coarse fraction from which magnetic
metal impurities have been removed. In contrast, Sanchez further processes
a magnetic product from which non-magnetic reverts are removed, and
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Sanchez does not describe any further processing for the non-magnetic
reverts.
The Examiner relies on Sanchez as disclosing a method as claimed
except that Sanchez does not disclose: returning the course fraction to the
grinder for a further grinding step, at least four successive passages through
magnetic sorting, and the specifics of a gramulometric separator. Final Act.
3–5. The rejection is unclear if the Examiner relies on either Sanchez’s
(1) non-magnetic reverts (step 111) or (2) the refined product passed to step
112, as corresponding to a coarse fraction as claimed (claim 1 - “the coarse
fraction from which metal impurities have been extracted” by magnetic
sorting; claim 20 - the mineral material subjected to magnetic sorting; claim
21 - “said first coarse fraction with reduced metal impurities”). See id. For
the reasons that follow, we disagree with either possibility.
Sanchez teaches converting iron rejects from cement manufacturing
processes into metal particles by means of a vibratory ball mill. Sanchez,
19:4–10, 14–16, 19:30–20:2, Fig. 6 (step 104); see also id. at 7:16–8:7
(explaining that, historically, iron taken from slag was wasted, but such iron
has been found to be a valuable source of raw material). Sanchez discloses
separating out fines by air classifying and mechanical sizing (step 106) to
create two products: a fine revert product that may be recycled (step 108),
and a metallic product. Sanchez, 20:2–6, Fig. 6. The metallic product is
then magnetically classified (step 110) to create two products: non-magnetic
reverts (step 111), and a refined product. Sanchez, 20:7–10, Fig. 6. Sanchez
does not describe any further processing or use of the non-magnetic reverts.
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Sanchez, Fig. 6 (Step 111). Sanchez describes that the refined product is
further processed. Sanchez, 20:10–21:14, Fig. 6 (steps 112 et seq.).
Consequently, the non-magnetic reverts cannot correspond to a coarse
fraction as claimed because the reverts are not subject to further processing.
Sanchez, Fig. 6 (Step 111). The Examiner does not acknowledge this
distinction nor propose to modify Sanchez’s method to further process the
non-magnetic fraction. Nor does the refined product correspond to a coarse
fraction as claimed because it is the fraction that was magnetically sorted
and therefore has not had metal impurities extracted by magnetic sorting
(claims 1 and 20), nor does it have reduced metal impurities (claim 21).
The Examiner does not rely on Drage ʼ556 or Drage ’744 to correct
either alternative.
In the Answer, the Examiner cites Aihara (US 6,719,229 B2, issued
Apr. 13, 2004) as evidence that “material being returned to a grinder to
produce smaller particles . . . [was] well known in the art.” Ans. 7. As
Appellants correctly point out, the teachings of Aihara would not have
suggested modifying Sanchez’s process to subject a coarse fraction from
which metal impurities had been extracted to further grinding and magnetic
separation. Reply Br. 4.
Finally, the Examiner cites Cordonnier ʼ994, Cordonnier ʼ096, and
Devroe as describing granulometric selection devices. Final Act. 5. The
Examiner does not rely on these references to remedy the deficiencies in the
combined teachings Sanchez, Drage ʼ556, and Drage ʼ744 as applied to
independent claims 1, 20, and 21.

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DECISION
We reverse the Examiner’s decision rejecting claims 1, 4, 6–9, 17, and
19 under 35 U.S.C. § 112, second paragraph, as indefinite.
We reverse the Examiner’s decision rejecting claims 1, 4, 6–9, 17, and
19–21 under 35 U.S.C. § 103(a) over Sanchez, Drage ʼ556, Drage ʼ744, and
either Cordonnier ʼ994, Cordonnier ʼ096, or Devroe.

REVERSED