Ex Parte 6808692 et al

Patent Trial and Appeal Board

Dec 17, 2013

95001368 (P.T.A.B. Dec. 17, 2013)

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.
95/001,368 05/28/2010 6808692 ASTM.150967 1061
35614 7590 12/17/2013
Reed Smith, LLP
10 SOUTH WACKER DRIVE
CHICAGO, IL 60606-7507
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/17/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
____________

ALSTOM POWER INC.
Requester and Appellant

v.

HAZELMERE RESEARCH LTD.
Patent Owner and Respondent
____________

Appeal 2013-008262
Reexamination Control 95/001,368
Patent 6,808,692 B2
Technology Center 3900
____________

Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Requester, ALSTOM Power Inc.,1
from the Patent Examiner’s decision not to reject claims 1, 8-19, 22, and 26-
33, which were confirmed patentable by the Examiner during an inter partes

1 See Requester’s Appeal Brief (Req. App. Br.) 1, dated November 21, 2012.
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reexamination of U.S. Patent 6,808,692 B2 (“the ’692 patent”).2 RAN 21.
The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134(c),
and 315(b). We affirm.

I. BACKGROUND
A request for inter partes reexamination under 35 U.S.C. §§ 311-318
and 37 C.F.R. §§ 1.902-1.997 for the ’692 patent was filed by Requester on
May 28, 2010. See Request for Inter Partes Reexamination. The Patent
Owner is the Hazelmere Research Ltd.3 See Patent Owner’s Respondent
Brief (“PO Res. Br.”) 1, dated December 21, 2012.
The ’692 patent is the subject matter of a litigation in U.S. District
Court for the Northern District of Illinois styled Nalco Mobotec, Inc. v.
Alstom Power Inc., Case No. 09 cv 5195. The lawsuit is currently stayed.
See Req. App. Br. 1; PO Res. Br. 1.
The ’692 patent is directed to a method of treating coal combustion
flue gas containing mercury by oxidizing elemental mercury into a mercuric
halide, which is subsequently adsorbed by alkaline solid particles provided
in the flue gas. ’692 patent, col. 3, ll. 55-65.
Claims 1 and 22 are representative and reads as follows (with
underlining showing additions, bracketing showing deletions from the
original claim, and indentation for clarity):

2 The ’692 patent issued from Application 10/073,986 on October 26, 2004,
to Klaus H. Oehr.
3 Assignment Reel/Frame 012586/0978 recorded on February 14, 2002. We
note that Patent Owner also lists Nalco Mobotec, Inc. as a real party in
interest. PO Res. Br. 1.
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1. A method of treating coal combustion flue gas containing
mercury, comprising:
injecting a [member from the group consisting of
molecular halogen and a] bromide compound that is a
thermolabile molecular [halogen] bromine precursor, into said
flue gas to effect oxidation of elemental mercury to a mercuric
[halide] bromide and
providing alkaline solid particles in said flue gas ahead of
a particulate collection device, in order to adsorb at least a
portion of said mercuric [halide] bromide.

22. A method of treating flue gas that contains elemental
mercury, wherein the flue gas is produced during the
combustion of coal, said method comprising the steps of:
(a) injecting into the flue gas a thermolabile molecular
halogen precursor, whereby the elemental mercury is oxidized
to form mercuric halide; and
(b) providing solid alkaline particles in said flue gas
upstream of a particulate collection device, whereby at least a
portion of the mercuric halide produced at Step (a) is adsorbed
by the solid alkaline particles;
wherein the thermolabile molecular halogen precursor of
Step (a) is magnesium bromide.

Requester appeals the Examiner’s decision not to maintain the
following proposed rejections.
1. Claim 22 under 35 U.S.C. § 314(a) as enlarging the scope of the
original claims;
2. Claim 22 under 35 U.S.C. § 101 as lacking utility;
3. Claim 22 under 35 U.S.C. § 112, first paragraph as failing to
comply with the enablement and written description
requirements;
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4. Claims 1, 8-19, and 26-33 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement and written
description requirements;
5. Claims 1, 8, 9, 12-16, and 18 under 35 U.S.C. § 103 as
unpatentable over Mendelsohn in view of Madden;
6. Claim 10 under 35 U.S.C. § 103 as unpatentable over
Mendelsohn in view of Madden and Oehr.

Proposed rejections of Claim 22
Requester’s proposed rejections of claim 22 are based on two main
premises: (1) that the term “flue gas” is limited to a temperature range of
127°C and 527°C and (2) that magnesium bromide cannot be considered a
“thermolabile molecular halogen precursor” because it does not decompose
to molecular bromine at a “flue gas” temperature.
Thus, according to Requester, limiting the scope of claim 22 to
magnesium bromide (a) enlarges the scope of the claimed invention because
magnesium bromide is not a “thermolabile molecular halogen precursor”
within that temperature range, (b) lacks written descriptive support because
the specification is insufficient to establish possession of magnesium
bromine as a thermolabile molecular halogen precursor within that
temperature range, and (c) lacks utility and enablement because magnesium
bromine is inoperable as a thermolabile molecular halogen precursor within
that temperature range. Req. App. Br. 10-14.
First, we address the issue of whether “flue gas” refers only to a
temperature range of between 127°C and 527°C. Requester argues that the
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examples of the ’692 patent all apply at temperatures of 500 °C or below and
points to Table 2 of the ’692 patent as evidence that “the negative free
energy of formation of mercuric halide decreases significantly as the
temperature increases from 127°C to 527°C.” Req. App. Br. 7 (‘692 Patent,
col. 5, ll. 10-20). Requester also cites Table 3 of the ’692 patent, which
describes only 15% of elemental mercury reacted in the presence of injected
molecular chlorine at 518°C and no mercury reacted at 538°C. Req. App.
Br. 8 (citing col. 7, ll. 1-20). Requester further cites to a dictionary
definition of the term “thermolabile” as being “subject to the loss of
characteristic properties on being heated to or above 55°C” as evidence that
“thermolabile” is limited “moderate in temperature.” Req. App. Br. 6.
During reexamination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Absent claim language carrying a narrow
meaning, we only limit the claim based on the specification when those
sources expressly disclaim the broader definition. In re Bigio, 381 F.3d
1320, 1324-25, 72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004); see also In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
("During reexamination, as with original examination, the PTO must give
claims their broadest reasonable construction consistent with the
specification. Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.").
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We are not persuaded that the term “thermolabile” or “flue gas” limits
the temperature range as suggested by Requester. Neither the claims nor the
Specification of the ’692 patent expressly state any temperature limits for the
method recited in claim 22. Rather, the ’692 patent states that the method is
for “treating coal combustion flue gas, preferably that obtained after the
‘superheater’ section of a coal-fired plant, for example the economizer
inlet.” ’692 patent, col. 3, l. 66-col. 4, l. 5. Even so, “after the ‘superheater’
section” is only a preferred location for the treatment to take place, and thus
does not limit the claims, which are silent as to either temperature or
location of treatment of the flue gas.
The record provides persuasive evidence that it was known in the art
at the time of the invention that “flue gas” can be at temperatures much
higher than 527°C. See PO Res. Br. 4-5 and Exhibit 5, Granite, et al.,
“Sorbents for Mercury Removal from Flue Gas,” DOE (1998) at 3-4 (“The
temperature of flue gas in a typical coal utility system will vary widely along
the process path. The flue gas will exit the furnace at approximate1y 2500°F
[1371°C]. Heat is then extracted from the flue gas. Flue gas will leave the
economizer at around 800°F [427°C]. Flue gas exits the air preheater at
about 450°F [232°C]. Unscrubbed flue gas enters the stack at around 300°F
[148°C] in order to be above the acid dew point. Therefore, a sorbent that
removes mercury from flue gas could operate anywhere between 300
[148°C] to 2500°F [1371 °C], depending upon where the sorbent contacts
the flue gas.”); see also Req. App. Br., Exhibit 10, U.S. Patent No.
6,372,187 to Madden et al., issued April 16, 2002, col. 3, l. 64 to col. 4, l. 1
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(“The temperatures for injection of the sorbent range from those typical at
the coal input to the boiler (3000°F[1649°C]) and in the upper portion 28 of
a furnace (2300°F[1260°C]) to very low temperatures such as at the outlet of
a wet scrubber (150°F[66 °C].)” and Exhibit 6, Galbreath et al., “Mercury
transformations in coal combustion flue gas, 65-66 Fuel Proc. Tech. (1999)
at p. 294 (Figure 2 illustrates hydrogen chloride injection for the treatment of
mercury in the main furnace and describing “flue gas” as having
temperatures as high as 970°C). Thus, the broadest reasonable interpretation
of the term “flue gas” includes gases at temperatures up to 1260°C or higher.
We find this broader interpretation of “flue gas” to be reasonable because
the prior art related to treating flue gas from coal combustion supports the
finding that flue gas treatment materials may be injected in several locations
between the boiler and the stack outlet.
Nor are we persuaded by the examples or Table 3, because the
examples are limited to the injection of molecular chlorine or chloride, while
the ’692 patent includes a broader disclosure of thermolabile molecular
halogen precursors including bromide and iodide constituents. See Col. 4, ll.
25-28. These examples do not evince reactivity temperatures for any
materials other than molecular chlorine or chlorides. Our reviewing court
has counseled against limiting broad claim terms solely on the basis of
specification passages and has held that, absent claim language carrying a
narrow meaning, claims should only be limited based on the specification
when those sources expressly disclaim the broader definition. In re Bigio,
381 F.3d 1320, 1324-25 (Fed. Cir. 2004); see also Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[A]lthough the specification often
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describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”). We find no
such express disclaimer as to flue gas temperatures in these examples.
Further, we are not persuaded by the negative free energy of
formation for mercuric bromide over the temperature range of 127°C to
527°C reported in Table 2 of the ‘692 Patent. The ’692 patent states that
“[t]he larger the negative free energy of formation, the more likely the
reaction is to proceed.” Col. 5, ll. 20-21. The ’692 patent does not state that
the reaction will not proceed at any temperature greater than 527°C, nor do
we read claim 22 as requiring any particular amount of elemental mercury
be reacted. Accordingly, as long as some reaction of elemental mercury in
the flue gas with elemental bromide decomposed from magnesium bromide
occurs at any flue gas temperature, the method of claim 22 is met. Table 2
does not evince the complete failure of elemental mercury to react with
bromine at temperatures higher than 527°C, but merely that the reaction is
more favorable at lower temperatures.
We are also not persuaded that the definition provided by Requester
for “thermolabile” that describes “being heated to or above 55°C” is
evidence that “flue gas” temperatures must be moderate. See Req. App. Br.
6. The specific portion of the definition relied on by Requester states that
the “being heated to or above 55°C” relates especially to “immune bodies,
enzymes, and vitamins.” See Req. App. Br., Exhibit 4, Webster’s Third
New International Dictionary 2373 (1993). Requester has not shown that
the skilled artisan would have considered the temperature discussed in the
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definition of “thermolabile” to have any particular application to coal-
combustion flue gases.
Next, we address the issue of whether magnesium bromide is a
“thermolabile molecular halogen precursor” at a flue gas temperature and
capable of oxidizing elemental mercury.
The terms “thermolabile,” “molecular halogen,” and “precursor” have
not been expressly defined in the ’692 patent. While we do not agree with
Requester that the definition provided for “thermolabile” includes any
applicable temperature restriction, Requester’s definition provides a general
meaning for the term “thermolabile,” which is “unstable when heated.” See
Req. App. Br., Exhibit 4, Webster’s Third New International Dictionary
2373 (1993). Patent Owner has provided no alternative definition.
Accordingly, we adopt this general definition for the term “thermolabile.”
The ’692 patent describes the injection of “a source of molecular
halogen.” Col. 4, ll. 4-5. Further, the ’692 patent describes the injection of
“[e]ither molecular halogen such as chlorine gas, and/or bromine gas and/or
iodine can be injected, or a molecular halogen precursor such as calcium
hypochlorite can be injected into the flue gas.” Col. 4, ll. 12-15. The ’692
patent states that “[n]on-limiting examples of thermolabile halogen species,
able to decompose thermally at flue gas temperatures, typical of coal-fired
power plants, are shown in table 1 below” and include calcium hypochlorite,
magnesium bromide, and potassium tri-iodide. Col. 4, ll. 29-40.
Accordingly, we interpret the term “molecular halogen precursor” to
mean a source for an elemental halogen and the phrase “thermolabile
molecular halogen precursor” to mean a material that provides a source for
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an elemental halogen when decomposed upon heating. With respect to
claim 22, the “thermolabile molecular halogen precursor” is specifically
recited to be magnesium bromide. Accordingly, the magnesium bromide
must provide a source for elemental bromine upon heating. However, we
note that claim 22 does not require the complete decomposition of
magnesium bromide to elemental bromine and thus, the presence of some
elemental bromine to oxidize the elemental mercury in the flue gas is all that
is required by claim 22.
Requester contends that the express description in the ’692 patent that
magnesium bromide decomposes at 165°C is incorrect. See ’692 patent, col.
4, l. 38.4
Nonetheless, Requester admits that, in fact, magnesium bromide
decomposes to elemental bromine at temperatures of 650°C. See Req. App.
Br. 12 and Exhibit 7, Cao, “Impacts of Halogen Additions on Mercury
Oxidation, in a Slipstream Selective Catalyst Reduction (SCR), Reaction
when Burning Sub-Bituminous Coal,” 42 Environ. Sci. Technol. (2008), 260
(“Under higher temperature (generally higher than 650°C (27)), HBr and HI
will be converted to Br2 and I2.”); see also PO Res. Br., Exhibit 19, U.S.
Patent Application Publication 2011/0015458 to Waycuillis, published
January 20, 2011, paragraph [0091] (disclosing that the thermal oxidation
reaction is initiated and allowed to become self-sustaining at “about 650°C.

4 We note that the Merck Index cited for this statement states that
magnesium bromide has a melting point of “about 165° with decompn.” PO
Res. Br., Exhibit 11, The Merck Index, 12th Ed. 969 (1996) at 5695.
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to about 800°C.”).5 This evidence supports the statement in the ’692 patent
that “[m]olecular bromine can be generated by thermal decomposition of a
dehydrated bromide salt solution in the presence of oxygen, for example
magnesium bromide solution.” Col. 4, ll. 60-62.
Based on the discussion of “flue gas” temperatures supra, we find that
650°C is within the range of flue gas temperatures. Requester has not
persuasively demonstrated that, at a flue gas temperature of 650°C, no
oxidation reaction of elemental mercury would have occurred.
Accordingly, we find both of the premises on which Requester bases
its arguments to be unsupported by the record. Based on a preponderance of
the evidence, the disclosure of molecular bromide as a thermolabile
molecular halogen precursor supports the written description requirement of
35 U.S.C. § 112, first paragraph. Requester has not established a lack of
enablement under 35 U.S.C. § 112, first paragraph, or utility under 35
U.S.C. § 101 because the Requester has not persuasively shown that
magnesium bromide does not form elemental bromine and react with
elemental mercury at a temperature as high as 650°C. Further, Requester
has not persuasively shown that the recitation of magnesium bromide
enlarges the scope of the original claims in violation of 35 U.S.C. § 314. We
affirm the Examiner’s decision not to adopt the rejection of claim 22.

5 Patent Owner also relies on a Wikipedia page describing that hydrogen
bromide will react with H2SO4 to form elemental bromine and evidence that
H2SO4 is present in flue gas. PO App. Br. 5. However, the Wikipedia page
does not explain the reaction conditions, namely the temperature, and thus is
not probative that of the decomposition of magnesium bromide to elemental
bromine at flue gas temperatures.
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Proposed rejection of claims 1, 8-19, and 26-33 under 35 U.S.C. § 112, first
paragraph
Initially, Requester argues that these claims are not enabled and lack
written description under 35 U.S.C. § 112, first paragraph, for the same
reasons discussed above, namely that the ’692 Specification does not
identify a “thermolabile molecular bromine precursor” because magnesium
bromine does not decompose to molecular bromine at a “flue gas”
temperature range of 127°C and 527°C. Req. App. Br. 15 and 20. For the
reasons discussed supra, we disagree with Requester’s narrow temperature
range for the flue gas and find no persuasive evidence that magnesium
bromide would not decompose into molecular bromine and react with
molecular mercury within recognized flue gas temperatures.
Requester next argues that the ’692 patent lacks written descriptive
support and is not enabled for any thermolabile bromide compound. Req.
App. Br. 15-21. In particular, Requester argues that “[t]he specification
provides absolutely no blaze marks that would direct one skilled in the art to
select the sub-genus bromide compounds that are thermolabile molecular
bromine precursors now claimed” (Id. at 17) and that, due to a lack of
working examples and an unpredictability in the art, it would take undue
experimentation to determine which bromide compounds are a thermolabile
molecular bromine precursor. Id. at 22. With respect to claims 19 and 26-
33, Requester particularly argues that “the specification provides absolutely
no example of a bromide compound that is a thermolabile molecular
bromine precursor that includes calcium.” Id. at 19.
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Based on the description of the invention of the ’692 patent, we
disagree that the invention either lacks written description or is not enabled
for a class of bromide compounds that decompose to elemental bromine at
flue gas temperatures.
The ’692 patent states that the invention is “a method of treating coal
combustion flue gas . . . with a source of molecular halogen.” ’692 patent,
col. 3, l. 66 to col. 4, l. 5. The ’692 patent states that
Either molecular halogen such as chlorine gas, and/or
bromine gas and/or iodine can be injected, or a molecular
halogen precursor such as calcium hypochlorite can be injected
into the flue gas. Molecular halogen precursors such as calcium
hypochlorite can be used as a whole or partial source of the
alkaline solids desirable for oxidized mercury adsorption, e.g.
mercuric halide such as mercuric chloride. Molecular halogen
precursors containing calcium are particularly desirable in cases
where the fly ash or alkali fused fly ash is intended to be used
for cementitious applications e.g. in concrete or blended
cements.
Id. at col. 4, ll. 12-22. The ’692 patent states that “Molecular bromine can
be generated by thermal decomposition of a dehydrated bromide salt
solution in the presence of oxygen, for example magnesium bromide
solution.” Id. at col. 4, ll. 60-62. While the patent lists calcium
hypochlorite, magnesium bromide and potassium tri-iodide as “examples of
thermolabile halogen species, able to decompose thermally at flue gas
temperatures, typical of coal-fired power plants,” the patent describes these
examples as “[n]on-limiting.” Id. col. 4, ll. 29-40.
Written descriptive support
The ’692 patent describes the use of sources of molecular bromine,
including the “thermal decomposition of a dehydrated bromide salt solution
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in the presence of oxygen” for the reaction of elemental mercury from coal-
combustion flue gas. We are not persuaded that calcium bromide, as recited
in claims 19 and 26-33, is not described because the claimed subject matter
need not be described in haec verba in the original specification in order to
satisfy the written description requirement. In re Wright, 866 F.2d 422, 425
(Fed. Cir. 1989). The ’692 patent specifically describes “magnesium
bromide” but also describes “molecular halogen precursors containing
calcium are particularly desirable.” Thus, the ’692 patent provides
descriptive support for the class of bromide salts that thermally decompose,
or “a bromide compound that is a thermolabile molecular bromine
precursor,” as claimed, and written descriptive support for magnesium
bromide and calcium bromide salts in particular.
When the original written description describes something within the
scope of the claim, lack of written description must be demonstrated by
more than pointing out the difference in scope. This is so because “that a
claim may be broader than the specific embodiment disclosed in a
specification is in itself of no moment.” In re Rasmussen, 650 F.2d 1212,
1215 (CCPA 1981). There are instances in which a narrower disclosure can
support broader claims. Id. (finding “adheringly applied” supported by
specification only discussing adhesive application because “one skilled in
the art who read Rasmussen’s specification would understand that it is
unimportant how the layers are adhered, so long as they are adhered.”); see
also In re Smythe, 480 F.2d 1376, 1382 (CCPA 1973) (Claims reciting “inert
fluid” supported by specification disclosing only air or other gas because it
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was the characteristics of a fluid that made the segmentizing medium work
in the invention).
In arguing that a species does not constitutes a description of the
genus of which it is part, there must be some analysis that either: (1)
considers factors such as the knowledge of one skilled in the art and the
level of predictability in the field, Bilstad v. Wakalopulos, 386 F.3d 1116,
1124 (Fed. Cir. 2004), or (2) demonstrates that the specification reflects that
the invention is, in fact, no broader than what is disclosed in the
specification. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.
1998) (specification, by distinguishing prior art cup implant shapes as
inferior and touting the advantage of a conical shape, made clear that the
invention was limited to conical shaped cups and nothing broader); Gentry
Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998)
(original disclosure that clearly identified the console as the only possible
location for controls did not provide support for claims that did not limit the
location).
The ’692 patent describes that it is the decomposition to the elemental
halogen, namely to bromine, that allows for the reaction with elemental
mercury in the coal-combustion flue gas, and thus provides for the injection
of either the elemental halogen or the molecular halogen precursor to arrive
at the same result. Although only particular bromide compounds are named,
the inventors of the ’692 patent had possession of the characteristic of
bromide compounds that decompose to elemental bromine as the basis of
their invention and, thus, possessed the scope of all bromide salt compounds
that decompose to elemental bromine. We agree with the Examiner that one
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of ordinary skill in the art would have been able to readily determine which
bromide compounds decompose to elemental bromine at flue gas
temperatures. In fact, Requester admits that calcium bromide decomposes to
elemental bromide at temperatures of 752°C and above. Req. App. Br. 18;
see also Paulik et al., “Examination of the Decomposition of CaBr2 with the
Method of Simultaneous TG, DTG, DTA and EGA,” 15 J. Thermal Analysis
(1979) (“Paulik”) at 276 (stating that “slow decomposition of CaBr2 began
even in the solid state at about 500°,” “decomposition was complete at
1000°,” and “no HBr, but only Br2 was formed”). Although the reaction
may be somewhat less favorable at higher temperatures, Requester has
provided no persuasive evidence that the skilled artisan would expect no
mercury conversion in the presence of elemental bromine at flue gas
temperatures higher than 527°C.
Enablement
The enablement requirement is met where one skilled in the art,
having read the specification, could practice the invention without “undue
experimentation.” In re Wands, 858 F.2d 731, 736-37 [(Fed. Cir. 1988)
(“Enablement is not precluded by the necessity for some experimentation
such as routine screening.”). Requester does not persuasively demonstrated
that one of ordinary skill in the art would have had to engage in undue
experimentation to perform the claimed invention, given the level of skill in
the art, state of the prior art, level of predictability in the art, nature of the
invention, or quantity of experimentation needed, for example. See id. at
737. In fact, Requester does not persuasively assess any of these factors.
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Requester has not persuasively demonstrated unpredictability in the
art in determining which bromide compounds decompose to elemental
bromine at flue gas temperatures without undue experimentation. To the
contrary, Requester presents evidence that at least some such decomposition
information for bromide compounds, namely calcium bromide, was
available as early as 1978. Req. App. Br. 18; See Paulik. Accordingly,
Requester has not adequately demonstrated that the skilled artisan would not
have been able to reasonably predict the bromide compounds that would
have decomposed to elemental bromine at flue gas temperatures.
While Requester has pointed to a lack of working examples for the
bromide compounds, Requester has not demonstrated that such a lack of
examples would be detrimental considering the method step includes only
injecting material into a flue gas stream, which appears to be a common
practice in the art. See PO Res. Br., Exhibit 5, Granite, at 3-4 and Exhibit
17, Madden, col. 3, l. 64 to col. 4, l. 1; Req. App. Br., Exhibit 6, Galbreath,
at p. 294. We are not persuaded that that the skilled artisan would have been
unable to practice the claimed invention without working examples of a
bromide compound that is a thermolabile molecular bromine precursor.
Requester provides no meaningful discussion of the remaining Wands
factors or how the evidence of record would support a conclusion that the
claimed invention would require undue experimentation.
Accordingly, we affirm the Examiner’s decision not to adopt the
rejection of claims 1, 8-19, and 26-33 under 35 U.S.C. § 112, first
paragraph.

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Proposed rejection of claims 1, 8, 9, 12-16, and 18 as obvious over
Mendelsohn in view of Madden
Requester contends that Mendelsohn’s disclosure of applying an
oxidizing aqueous bromine solution to a gas stream containing elemental
mercury renders obvious injecting into a mercury-containing flue gas a
bromide compound that is a thermolabile molecular bromine precursor to
effect oxidation of elemental mercury to mercuric bromide. Req. App. Br.
22-23. Requester has not adequately explained why a bromine solution
would render obvious a “bromide compound,” as recited in the claims.
While some arguments on this issue were presented earlier in the
reexamination proceeding, Requester puts forth no persuasive evidence or
reasoning on appeal as to why a molecular bromine solution would be
reasonably considered a “bromide compound” or why the skilled artisan
would use a “bromide compound” for treating mercury in a coal-combustion
flue gas given the disclosure of using an aqueous bromine solution in a
mercury gas stream. See Req. App. Br. 22-23 and Req. Reb. Br. 21-22. We
will not consider previous arguments that Requester declines to raise on
appeal. 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or authorities not
included in the brief . . . will be refused consideration by the Board, unless
good cause is shown.”).
Requester argues that “both the claimed bromide compounds and
Mendelsohn’s bromine solution effect oxidation of elemental mercury.”
Req. App. Br. 25; see also Req. Reb. Br. 21-22. Although the chemistry of
using elemental bromine to convert mercury to mercuric bromide may have
Appeal 2013-008262
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Patent 6,808,692 B2

19

been known in the art, there is insufficient evidence of record and/or
reasoning to provide support for Requester’s position that the skilled artisan
would have used a bromide compound that is a thermolabile molecular
bromine precursor as the source of the elemental bromine without the
hindsight gleaned from the ’692 patent.
Madden also does not teach injecting a bromide compound as it is
directed to “calcium-based sorbents such as limestone and lime” for mercury
removal. Req. App. Br. 23; Madden, col. 3, ll. 44-50.
Accordingly, we affirm the Examiner’s decision not to adopt the
rejection of claims 1, 8, 9, 12-16, and 18 under 35 U.S.C. § 103 as obvious
over Mendelsohn in view of Madden.

Proposed rejection of claim 10 as obvious over Mendelsohn in view of
Madden and Oehr
Requester’s proposed rejection of claim 10 fails for the same reasons
discussed above with respect to claims 1, 8, 9, 12-16, and 18. Requester
does not argue that Oehr cures the deficiencies of Mendelsohn and Madden
by disclosing using a bromide compound that is a thermolabile molecular
bromine precursor as the source of elemental bromine for removing mercury
from a flue gas. Req. App. Br. 24-27.
Accordingly, we affirm the Examiner’s decision not to adopt the
rejection of claim 10 under 35 U.S.C. § 103 as obvious over Mendelsohn in
view of Madden and Oehr.

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Patent 6,808,692 B2

20

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

Appeal 2013-008262
Reexamination Control 95/001,368
Patent 6,808,692 B2

21

PATENT OWNER:
REED SMITH, LLP
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Chicago, IL 60606-7507

THIRD-PARTY REQUESTER:
SHOOK, HARDY & BACON LLP
Intellectual property Department
2555 Grand Boulevard
Kansas City, MO 64108-2613