Ex parte Brierley et al.

Board of Patent Appeals and Interferences

Sep 13, 2001

08459537 (B.P.A.I. Sep. 13, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES A. BRIERLEY
and
DAVID L. HILL
____________
Appeal No. 1998-1855
Application No. 08/459,537
___________
ON BRIEF
____________
Before OWENS, LIEBERMAN, and PAWLIKOWSKI, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1
through 17, 27 through 31, 33 through 35, 37, 38, 40 through 42, 44, 45, 47
through 49, 51 and 52 and the decision of the examiner refusing to allow claims 32,
36, 39, 43, 46 and 50 as amended subsequent to the final rejection. See the
amendment received April 16, 1997, and the Advisory action dated May 2, 1997.
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Application No. 08/459,537
THE INVENTION
The invention is directed to a process for the recovery of metal values from an
ore containing the metal values. The ore additionally contains sulfur having an oxidation
state of zero or less. The process requires forming particulates from particles of the ore
and a bacterial inoculate. The ore present contains at least 0.2% by weight sulfide and
less than 12% moisture. Additional features of the claimed subject matter are set forth
in the following illustrative claims.
THE CLAIMS
Claims 1, 27, and 33 are illustrative of appellants’ invention and are reproduced
below:
1. A process for the recovery of one or more metal values from a metal
ore material comprising those one or more values and a matrix material having a
sulfur content wherein the sulfur is present in an oxidation-reduction state of zero
or less consisting essentially of the following steps:
a. forming particulates from particles of said metal ore material
and an inoculate comprising bacteria capable of at least
partially oxidizing the sulfur content;
b. forming a heap of said particulates;
c. biooxidizing the sulfur content and
d. recovering said one or more values, wherein
said ore contains at least 0.2% by weight sulfide and said particulates
comprise less than 12% by weight moisture.
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27. A process for the recovery of one or more metal values from a metal
ore material containing said one or more values and a matrix material having a
sulfur content wherein the sulfur is present in an oxidation-reduction state of zero
or less comprising:
a. forming particulates from particles of said metal ore material and
an inoculate comprising bacteria capable of at least partially
oxidizing the sulfur content;
b. forming a heap of said particulates;
c. biooxidizing the sulfur content and
d. recovering said one or more values, wherein said heap is
essentially free of manganese or manganese-containing compounds,
said ore contains at least 0.2% by weight sulfide and said particulates
comprise less than 12% by weight moisture.
33. The process as claimed in claim 1, wherein the metal ore material
comprises less than 0.08 oz/ton of said one or more metal values.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Krebs-Yuill et al. (Krebs-Yuill) 4,740,243 Apr. 26, 1988
Clough et al. (Clough) 4,765,827 Aug. 23, 1988
Hackl et al. (Hackl) 4,888,293 Dec. 19, 1989
Gross 4,898,611 Feb. 06, 1990
Brierley et al. (Brierley ‘942) 5,127,942 Jul. 07, 1992
Brierley et al. (Brierley ‘486) 5,246,486 Sep. 21, 1993
Brierley et al. (Brierley ‘559) 5,332,559 Jul. 26, 1994
THE REJECTIONS

Claims 1 through 17 and 27 through 52 stand rejected under 35 U.S.C. § 112,
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first paragraph as containing subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the inventor(s),
at the time the application was filed, had possession of the claimed invention.
Claims 1 through 17 and 32 through 45 stand rejected under 35 U.S.C. § 112,
first and second paragraphs, as the claimed invention is not described in such full, clear,
concise and exact terms as to enable any person skilled in the art to make and use the
same, and/or for failing to particularly point out and distinctly claim the subject matter
which appellants regard as the invention.
Claims 37, 44 and 51 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim the subject
matter which appellants regard as the invention.
Claims 1 through 3, 6 through 17, and 27 through 52 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hackl taken with Krebs-Yuill.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Hackl taken with Krebs-Yuill and further in view of Gross.
Claims 1 through 17 and 27 through 52 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 37 of U. S. Patent No. 5,246,486 (Brierley ‘486).
Claims 1 through 17 and 27 through 52 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
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1 through 19 of U. S. Patent No. 5,127,942 (Brierley ‘942) in view of Clough and
Gross.

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Application No. 08/459,537
Claims 1 through 17 and 27 through 52 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 29 of U. S. Patent No. 5,332,559 (Brierley ‘559).
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the appellants that the rejections of claims 1 through 17
and 27 through 52 under §§ 103 and 112 are not well founded. Accordingly, we
reverse these rejections. We also reverse the rejections under the judicially created
doctrine of obviousness-type double patenting over Brierley ‘559, or Brierley ‘942. We
sustain the rejection under the judicially created doctrine of obviousness-type double
patenting over Brierley ‘486.
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability,” whether on the
grounds of anticipation or obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
The New Matter Rejections
In a rejection under the first paragraph of 35 U.S.C. § 112, “written description
requirement,” it is sufficient if the originally filed disclosure would have conveyed to one
of ordinary skill in the art that an appellant had possession of the concept of what is
claimed.
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In re Anderson, 471 F.2d 1237, 1240-41, 176 USPQ 331, 333 (CCPA 1973).
There is no requirement that the language of the claimed subject matter be present in the
specification in ipsissima verba.
It is the examiner’s position that there is no basis for the terms, “said particulates
comprise less than 12% by weight moisture,” “less than 0.08 oz/ton,” and “said heap is
essentially free of manganese or manganese-containing compounds.”
We however, find adequate basis for each of the above terms. The phrase, “that
the added liquid forms a total moisture content in the ore of about 8% to 12% at
maximum,” is found in the specification, page 28, lines 19-20, and discloses that the
maximum amount of moisture is 8% to 12% which encompasses amounts of moisture
that is less than the stated amounts. We conclude accordingly that adequate support
exists for the term, “said particulates comprise less than 12% by weight moisture.”
As to the term, “less than 0.08 oz/ton,” the specification page 15, lines 12-13,
provides for, “a gold-containing ore of less than about 0.07 oz/ton of ore.”
Furthermore, the specification, page 17, lines 2-3 provides for “a gold content as low as
0.07 oz/ton.”
When taken together with the disclosure of Example 7 on page 52 of the specification of
an ore having a gold content of “about 0.083 oz. per ton,” we find adequate basis for
the aforesaid claim limitation.
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With respect to the term, “said heap is essentially free of manganese or
manganese-containing compounds,” at least the embodiment directed to the Genesis
Mine ore accounts for all of the minerals present in the ore and is free of manganese.
Accordingly, that single embodiment provides for an ore substantially free of manganese
or manganese-containing compounds.
The Indefiniteness Rejection
“The legal standard for definiteness [under the second paragraph of 35 U.S.C.
§ 112] is whether a claim reasonably apprises those of [ordinary] skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The inquiry is to determine whether the claim sets out and circumscribes a
particular area with a reasonable degree of precision and particularity. The definiteness
of
the language employed in a claim must be analyzed not in a vacuum, but in light of the
teachings of the particular application. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
It is the examiner’s position that the claimed subject matter is indefinite in
utilization of the transitional phrases, “consisting essentially of the following steps,” and
“critical bacterial population size.” As to the transitional language, it is well settled
that, “[a]lthough ‘consisting essentially of’ is typically used and defined in the context of
compositions of matter, we find nothing intrinsically wrong with the use of such language
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as a modifier of method steps as here. Accordingly, we consider the language ‘consisting
essentially of,’ when used as a modifier of method steps to render the claim[s] open only
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for the inclusion of steps which do not materially affect the basic and novel characteristics
of the claimed method.” See Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat.
App. & Int. 1989).
As to the phrase, “critical bacterial population size,” we find the disclosure in the
specification, page 48 together with the data in Table 2 sufficient to understand that the
rate of oxidation occurs in less time as compared with bacteria used in an alternative
manner. On this record, we accordingly conclude that the specification provides a
reasonable standard for understanding the metes and bounds of the terms, supra when
the claim is read in light of the specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984).
Accordingly, we reverse the rejection of the examiner.
The Rejection under § 103
On the record before us, the examiner relies upon a combination of at least two
references to reject the claimed subject matter and establish a prima facie case of
obviousness. The examiner’s rejection is predicated on the conclusion that, “[t]he
particulates would appear to contain less than 12% by weight moisture.” See Answer,
page 5. We disagree.
We find that Hackl is directed to the utilization of bacterial cultures including T.
ferrooxidans for oxidizing sulfur in multi-metallic sulfide ores. See Abstract, column 1,
lines 6-9, and column 3, lines 52-59. We find that the finely ground ore is leached in
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agitated, air sparged tanks with the bacteria present. See column 3, lines 52-59.
Typically, the finely ground ore is slurried with water and fed to a series of bioleach
reactors. See column 5, lines 1-8. We find however that Hackl discloses that, “[i]n a
variation of the process, the material can be treated by conventional heap leach methods,
in which case the oxidation step would require 1-12 months to complete.” See column
5, lines 31-35. We find that Example 3 is directed to a conventional heap leach method.
In that example however, the sample of ore is placed in a column, initially saturated with
water and following acidification thereafter inoculated with a mixed bacterial culture. We
conclude that there is no suggestion or motivation to utilize particulates which comprise
less than 12% by weight moisture.
Krebs-Yuill likewise discloses a process for recovering at least one first metal from
a metal sulfide containing ore utilizing T. ferrooxidans in an amount effective to increase
the rate of liberating the first metal. See Abstract and column 4, lines 1-3 and column 5,
lines 24-31. We find that the process may be performed in a heap. See column 8, lines
58-60. We further find that, “[t]he ore and material particles are mixed with sufficient
aqueous acid (H SO ), and if desired, bacteria.” See column 9, lines 40-42. There is2 4
however no guidance that the particulates comprise less than 12% by weight moisture.
Accordingly, there is no support for the examiner’s statement that the particles would
appear to contain less than 12% by weight moisture.
Based upon the above considerations, even if the examiner was correct in
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combining Hackl with Krebs-Yuill in the manner described in the Answer, the omission
of the requisite limitation with regard to the moisture content from the disclosure of each
of the prior art references, as required by the claimed subject matter would result in a
process created that would, in any event, fall short of the invention defined by the
claimed subject matter, as the aforesaid claimed subject matter requires features that
cannot be achieved by
combining the references. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Accordingly, the examiner has not established a prima facie case of obviousness.
The Obviousness-type Double Patenting Rejections
As an initial matter, the appellants have argued that, “[t]he presently pending
claims are not believed to stand or fall together.” See Brief, page 9. Throughout the
discussion of the rejection on the grounds of obviousness, separate arguments are
presented with respect to limitations present in claims argued separately. With respect to
the rejections on the grounds of obviousness-type double patenting however, no such
separate arguments are present by the appellants. Accordingly, we select claim 1 as
representative of the claimed subject matter and limit our consideration of the
obviousness-type double patenting rejection thereto. See 37 § CFR 1.192 (c)(7)
(1997).
All proper double patenting rejections rest on the fact that a patent has been
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issued and a later issuance of a second patent will continue protection beyond the date of
expiration of the first patent of the very same invention claimed therein or of a mere
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variation of that invention which would have been obvious to those of ordinary skill in
the relevant art. See In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683
(Fed. Cir. 1986).
Our analysis of the examiner's rejection of claims 1 and 3 through 5 under the
doctrine of judicially created double patenting parallels that for a section 103 rejection.
While the double patenting rejection is analogous to a failure to meet the non-
obviousness requirement of 35 U.S.C. § 103, that section is not itself involved in
double patenting rejections because the patent principally underlying the rejection is not
usually prior art. In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1291-92
(Fed. Cir. 1991); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir.
1985); In re Braithwaite, 379 F.2d 594, 600 n. 4, 154 USPQ 29, 34 n. 4 (CCPA
1967). When considering whether the claimed subject matter is an obvious variation of
the invention defined in the claims of the Brierley patents, the disclosure of the patent
may not be used as prior art. The specification however can always be used as a
dictionary to learn the meaning of a term in the patent claim. In re Boylan, 392 F.2d
1017, 1018 n.1, 157 USPQ 370, 371 n.1 (CCPA 1968).
We find that the claims of the Brierley ‘559 and Brierley ‘942 patents fail to
provide for particulates comprising less than 12% by weight moisture as required by the
claimed subject matter. Furthermore, the oxidative bioleaching of Brierley ‘942 does not
disclose the limitation of “forming particulates from particles and an inoculate comprising
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bacteria capable of at least partially oxidizing the sulfur content,” as required by the
claimed subject matter. Accordingly, we reverse the obviousness-type double patenting
rejections over the claims of Brierley ‘559 or Brierley ‘942.
With respect to Brierley ‘486, the appellants state that, “[t]he present claims do
not teach or suggest (a) the use of a bacteria capable of attacking, by biooxidation,
sulfides and/or elemental sulfur and ferrous iron in the ore particles; (b) the use of
nutrients in an acidic medium recirculated within a static heap; (c) or biooxidation aided
by ferric iron in a solution.” See Brief, page 32. We find, however, that independent
claim 4 of Brierley ‘486 is directed to a process for biooxidation of sulfur values having
an aqueous content of from 4% to 12% by weight as required by the claimed subject
matter. Furthermore claim 4 is free of requirements for the presence of ferrous and
ferric iron and nutrients in an acidic medium recirculated within a static heap. We further
find that claim 4 provides for particulates that are formed from particles of the ore and
an inoculant. We find that a heap is thereafter formed, the sulfur content in the
particulates are biooxidized and metal values are recovered.
The meaning of the term, “sulfide values” is gleaned from the specification that
discloses that reference is directed to a “low sulfide and low-concentration metal values in
an ore.” See Brierley ‘486, column 5, lines 25-26. It is further stated that, “[b]y low
sulfur content it is meant ores of less than about 0.2 to 0.3% sulfide by weight.” See
Brierley ‘486, column 5, lines 52-53. As further stated at column 12, lines 56-59 of
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Brierley ‘486, we find that the candidate ores, “should have at least 0.2% sulfide
present.” Accordingly, we conclude that the definition of the term “sulfide values”
constitutes an ore having a low sulfur content generally of at least about 0.2 to 0.3% by
weight as required by the claimed subject matter.
Based upon our interpretation of the term, “sulfide values,” supra, we conclude
that the claimed subject matter substantially overlaps the claims of Brierley ‘486 and
would continue protection beyond the expiration date of the Brierley ‘486 patent.
Accordingly, we sustain the rejection of the examiner.
DECISION
The rejection of claims 1 through 17 and 27 through 52 under 35 U.S.C. §
112, first paragraph, as containing subject matter which was not described in the
specification in such a way as to reasonably convey to one skilled in the relevant art that
the inventor(s), at the time the application was filed, had possession of the claimed
invention is reversed.
The rejection of claims 1 through 17 and 32 through 45 under 35 U.S.C. §
112, first and second paragraphs, as the claimed invention is not described in such full,
clear, concise, and exact terms as to enable any person skilled in the art to make and use
the same, and/or for failing to particularly point out and distinctly claim the subject
matter which appellants regard as the invention is reversed.
The rejection of claims 37, 44, and 51 under 35 U.S.C. § 112, second
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paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which appellants regard as the invention is reversed.
The rejection of claims 1 through 3, 6 through 17, and 27 through 52 under 35
U.S.C. § 103 as being unpatentable over Hackl taken with Krebs-Yuill is reversed.
The rejection of claims 4 and 5 under 35 U.S.C. § 103 as being unpatentable
over Hackl taken with Krebs-Yuill and further in view of Gross is reversed.
The rejection of claims 1 through 17 and 27 through 52 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 19 of U. S. Patent No. 5,127,942 (Brierley ‘942) in view of Clough and
Gross is reversed.
The rejection of claims 1 through 17 and 27 through 52 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 29 of U. S. Patent No. 5,332,559 (Brierley ‘559) is reversed.
The rejection of claims 1 through 17 and 27 through 52 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 37 of U. S. Patent No. 5,246,486 (Brierley ‘486) is affirmed.

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Application No. 08/459,537
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN
) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge
)
PL:hh
Appeal No. 1998-1855 19
Application No. 08/459,537
WILLIAM J. SPATZ, ESQ.
WHITMAN, BREED, ABBOTT & MORGAN, LLP
200 PARK AVENUE
NEW YORK, NY 10166