Ex Parte Bakke

Board of Patent Appeals and Interferences

Mar 19, 2010

11110268 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BART BAKKE
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Appeal 2009-013837
Application 11/110,268
Technology Center 1700
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Decided: March 19, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3 and 8-31 which are the only claims pending in this
application. An oral hearing was held on March 9, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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I. BACKGROUND
Claim 1, the sole independent claim, is illustrative of the invention
and reads as follows:
1. A method of forming an alkali metal salt comprising:

a) introducing at least one alkali metal formate and at least one acid
and reacting the at least one alkali metal formate with the at least one acid to
form an alkali metal salt in the presence of formate ions, and

b) substantially removing said formate ions from said alkali metal salt
formed in step a).

The Examiner relied upon the following prior art:
Bakke US 6,652,820 Nov. 25, 2003
Vuong US 2004/0045908 A1 Mar. 11, 2004

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
a) claims 1, 10-22, and 27-31 as unpatentable over Bakke;
b) claims 2, 3, 8, 9, and 23-26 as unpatentable over Bakke in view of
Vuong.
The Examiner also rejected claims 1-3 and 8-31 as unpatentable on
the grounds of non-statutory obviousness-type double patenting over claims
1-8 and 12-43 of Bakke.
ISSUE
Has Appellant shown reversible error in the Examiner's initial
showing of obviousness for independent claim 1?
We answer this question in the affirmative.

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OPINION
Principles of Law
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the Examiner must
show that each limitation of the claim is described or suggested by the prior
art or would have been obvious based on the knowledge of those of ordinary
skill in the art. See, e.g., In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Furthermore, “rejections 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 conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007)).
Analysis with Factual Findings
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art with respect to
independent claim 1.
With respect to claim 1, it is undisputed that Bakke does not explicitly
teach the method as recited in claim 1 (see generally Ans. 3, 4; App. Br. 10-
11). The Examiner’s position is that even though Bakke “does not disclose
the conversion of cesium formate to cesium sulfate, Bakke does disclose the
conversion of cesium sulfate to cesium hydroxide, cesium formate, or even
purified cesium sulfate” (Ans. 3) such that “the skilled artisan would find it
obvious to convert one to the other depending on the desired use of the
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compound and whether it is desired to have cesium formate or cesium
sulfate” (id.). In the “Response to Argument” section of the Answer, the
Examiner states that Bakke in combination with “knowledge generally
available to one of ordinary skill in the art at the time of the invention, make
the instant invention obvious.” (Ans. 8).
The Appellant summarized his position in the Reply Br.:
[N]o examples in the prior art literature have been shown
where an alkali metal formate is used as a starting raw material
to make an alkali metal salt. The Examiner's entire reasoning is
based on his opinion of what chemistry would be obvious, even
if this is not shown in the prior art. This is not a proper reason
to reject the claims.
The Examiner . . . attempts to take the position that the
claimed invention provides the "simplest possible way to
achieve" the reaction of cesium formate. However, with no
cited reference and not through any cited chemical journal or
textbook, the Examiner simply asserts this by typing out a
chemical equation using, improperly, the present invention's
teachings.
(Reply Br. 2).
We agree with Appellant that the Examiner’s reasoning is
conclusory, and fails to articulate any persuasive reason why an artisan
would seek to modify Bakke to start with an alkali metal formate, e.g.,
cesium formate, to make an alkali metal salt whereas all the embodiments
of Bakke use only an alkali metal sulfate as the raw starting material, and
do not react an alkali metal formate with an acid to form an alkali metal
salt (see, e.g. App. Br. 11-12). While we may speculate as to different
and/or reverse reaction methods, the Examiner has not identified any
teaching or suggestion in Bakke that would support any reasoned finding
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concerning how Bakke would have been modified so as to render claim 1
obvious. We decline to rely upon speculation, and/or unsupported
allegations of “knowledge generally available to one of ordinary skill in the
art” (e.g., Ans. 8), to decide this appeal.
Under the circumstances recounted above, it is apparent that the only
teaching or suggestion for modifying Bakke in such a manner as to achieve
the claimed invention is derived from Appellant’s own Specification rather
than the applied prior art. Therefore, we conclude that the Examiner’s
rejection is improperly based upon improper hindsight reasoning. KSR, 550
U.S. at 421 (The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a “temptation to read into the prior art the teachings of the
invention in issue”)). See also, W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Accordingly, for the reasons set forth above and in the Briefs (App. Br.
10-16; Reply Br. 2-17), we cannot sustain the Examiner's rejection of
independent claim 1, and its respective dependent claims 10-22 and 27-31.
Since the additional reference to Vuong does not cure the deficiencies
of the Examiner’s rejection based on Bakke, we cannot sustain the rejection
of dependent claims 2, 3, 8, 9, and 23-26 for substantially the same reasons
as set out above.
The Examiner’s obviousness-type double patenting rejection relies
upon the same reference (Bakke) and merely concludes that the claims are
not patentably distinct because “they are just reverse processes of each other
and the skilled artisan would have found it obvious to carry out the reaction
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in either the forward or backward direction depending on the material
present and the material desired” (Ans. 7). The Examiner also states in the
Response to Argument section that Appellant’s arguments are not persuasive
“for the same reasons given above” with respect to the obviousness rejection
under 35 U.S.C. § 103(a) (Ans. 18). Accordingly, we can not sustain that
rejection for the same reasons we cannot sustain the obviousness rejection
under 35 U.S.C. § 103(a).
For these reasons and those set out in the Briefs, we reverse the
Examiner’s § 103 rejections, as well as the obviousness-type double
patenting rejection, before us on appeal.
CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED

PL Initial:
sld

Martha Ann Finnegan, Esquire
CABOT CORPORATION
Billerica Technical Center
157 Concord Road
Billerica MA 01821-7001