Ex parte Cashman

Board of Patent Appeals and Interferences

Sep 28, 2001

08848477 (B.P.A.I. Sep. 28, 2001)

Application for patent filed May 8, 1997. According to
the official records of the United States Patent and
Trademark Office (PTO), said application is a continuation of
Serial Number 08/376,778, filed on January 23, 1995, and now
U.S. Patent Number 5,709,730, issued on January 20, 1998.
1
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and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOSEPH B. CASHMAN
________________
Appeal No. 2000-0002
Application 08/848,4771
________________
ON BRIEF
________________
Before METZ, WALTZ and TIMM, Administrative Patent Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner's refusal to allow claims 1, 21, 22 and 24 through
30, which are all the claims remaining in this application.
Appeal No. 2000-0002
Application 08/848,477
2
THE INVENTION
The appealed claims are directed to an iron-rich residue
prepared from dry electric arc flue dust by a series of
process steps. Broadly, the flue dust is acidified to
solubilize certain metals therein and the iron present is
oxidized to form insoluble iron oxides which precipitate at
certain acidic pHs from the solution and are recovered as an
"iron-rich" residue.
Claims 1, 21 and 29 are believed to be adequately
representative of the appealed subject matter and are
reproduced below for a more facile understanding of the
claimed invention.
Claim 1. An iron-rich residue obtained by

(a) mixing dry electric arc flue dust powder
with a calcium chloride/hydrochloric acid leach mill
solution to produce a slurry having a pH of about
2.6 and a solids content (pulp density) of about 15-
30 wt.%;
(b) oxidizing the base metals in
the slurry to produce a metal-rich solution
containing the base metals and an insoluble hematite
complex by heating the slurry in an oxygen
atmosphere at a temperature of about 90-120 deg C
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Application 08/848,477
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and a pressure of about 50-90 psi; and

(c) filtering the hematite complex from the metal-
rich solution.

Claim 21. An iron-rich solid residue
obtained by the process for the recovery of zinc
from electric arc flue dust while recycling flue
dust iron to the electric arc furnace, comprising
the steps of:
(a) at a pH
of about 2.6, leaching zinc in electric arc flue
dust into an aqueous solution using a calcium
chloride/hydrochloric acid leach mill solution;

(b) separating the aqueous solution from an
iron-rich solid residue remaining after the leach of
step (a); (c) recovering the zinc from the
aqueous solution by adding calcium hydroxide to the
aqueous solution at a pH of about 6-10 to create a
calcium-rich solution;
(d) regenerating the
calcium chloride/hydrochloric acid leach mill
solution by adding sulfuric acid to the calcium-rich
solution to precipitate gypsum; and (e)
separating the gypsum from the leach mill solution.

Claim 29. An iron complex obtained by the
process:
(a) reacting a slurry of the flue
dust and a calcium chloride/hydrochloric acid leach
mill solution to place the base metals in solution
while leaving essentially all of the iron complexed
with the sodium, potassium, and magnesium; and

(b) separating the
base metal solution from the iron complex.
THE REFERENCES
Appeal No. 2000-0002
Application 08/848,477
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The references of record which are being relied on by the
examiner as evidence of lack of novelty and as evidence of
obviousness are:
McElroy 5,336,297 August 9,
1994 Cashman 5,709,730
January 20, 1998
THE REJECTIONS
Claims 1, 21, 22 and 24 through 30 stand rejected under
35 U.S.C. § 102(a) as anticipated by McElroy or, in the
alternative, as being obvious under 35 U.S.C. § 103 from
McElroy. Claims 1, 21, 22 and 24 through 30 stand rejected
under the judicially created doctrine of obviousness-type
double patenting over claims 1 through 22 of appellant's prior
patent U.S. patent Number 5,709,730.
Additionally, the examiner has objected to claims 22, 24,
26, 27, 28 and 30 as being "substantial duplicates" of the
claims from which they depend because, in the words of the
examiner:
the process limitations in these claims do not
further limit the products of Claims 1, 21 and 29
because it has been held that the addition of a
method step in a product claim cannot impart
patentability to an old product, In re Dilnot, 133
USPQ 289 [Examiner’s Answer, page 2].
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Application 08/848,477
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Nevertheless, as appellant properly observes at page 8 of his
brief, we do not have the authority to resolve the examiner's
objection.
Pursuant to 35 U.S.C. § 134 the Board of Patent Appeals
and Interferences has authority to review rejections of the
claims of an applicant for patent. A refusal to grant claims
to an applicant for patent based on a substantive reason under
the statute is a rejection of a claim as contrasted with an
examiner's refusal to grant a claim based on a formal
objection to the claims or application, which is an objection.
As also correctly noted by appellant in his brief, appellant's
recourse to the examiner's objection, was by way of a petition
under 37 C.F.R. 1.181(a)((1) not by an appeal under 35 U.S.C.
§ 134. Accordingly, we do not have authority to reach the
issue of the propriety of the examiner's objection.
OPINION
The claims before us are so-called "product-by-process"
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Application 08/848,477
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claims. That is, appellant's claimed "iron-rich residue", a
hematite complex, is described by the steps necessary for its
manufacture. It is by now well-understood that, even though a
product-by-process is defined by the process steps by which
the product is made, determination of patentability is based
on the product itself. In re Thorpe, 777 F.2d 695, 227 USPQ
964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d
at 697, 227 USPQ at 966:
The patentability of a product does not depend on its
method of production. In re Pilkington, 411 F.2d 1345,
1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.
(citations omitted).
Nevertheless, we are not free to ignore the process by which
appellant's product is made in considering the prior art
because we must consider all appellant's claim limitations in
reaching our final determination of patentability.
We shall first address the rejections over McElroy. While
we recognize that alternative rejections under 35 U.S.C. §§
102/103 have been sanctioned by one of the predecessors to our
reviewing court, the basis for the court's approval of this
practice was based on the PTO's inability to make and test an
Appeal No. 2000-0002
Application 08/848,477
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appellant's invention and compare it to the prior art. The
decision in Fitzgerald, relied on by the examiner, is such a
case. But the court has made it clear that it is only where
the facts establish that appellant is treating the same
materials, or essentially the same materials, to the same
steps, or essentially the same steps, as does the prior art,
that there is a reasonable basis to presume that appellant
only achieves what the prior art achieves, and the alternative
§102/103 rejection is sanctioned. See In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re
Spada, 911 F.2d 705, 708, 709, 15 USPQ2d 1655, 1657, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433, 434 (CCPA 1977).
Here, not only has the examiner failed to read the
disclosure of McElroy on the claimed steps used to prepare
appellant's product-by-process, but the examiner has conceded
that McElroy does not describe appellant's method for
preparing his product. See pages 4 and 6 of the Answer.
Apparently, it is the examiner's position that appellant is
claiming hematite and McElroy discloses preparing hematite.
Hematite is defined in the various literature and chemical
Appeal No. 2000-0002
Application 08/848,477
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dictionaries as red iron ore or iron oxide containing
impurities.
However, the claims are directed to an "iron-rich
residue" which is an "hematite complex" and not hematite, per
se. Thus, the claims are directed to a residue, which is a
complex of iron oxide with other components derived from the
method by which the product is prepared. The examiner
acknowledges at page 6 of his Answer that McElroy does not
"explicitly disclose a product comprised of iron, sodium,
potassium and magnesium." Coupled with the examiner's
admission that McElroy prepares his products using a different
method than claimed we find no basis on which the examiner
could have reasonably presumed that McElroy either describes,
in the sense of 35 U.S.C. § 102, or would have rendered
obvious, in the sense of 35 U.S.C. § 103, the subject matter
claimed by appellant.
OBVIOUSNESS-TYPE DOUBLE PATENTING
The examiner has concluded that the claims of appellant's
earlier issued patent, of which application this application
is a voluntarily filed continuation, are directed to a process
for recovery of metal values from electric arc flue dust,
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Application 08/848,477
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including removing iron from same by converting the iron to an
insoluble form in an iron-rich waste cake which includes a
hematite complex containing other metals and ions. Appellant
does not challenge the examiner's factual determinations.
Rather, appellant has conceded that:
The present claims define a product made by one or
more of the processes in the patent.
But appellant has argued that, based on policy reasons having
to do with the 20-year patent term enacted in 1995, the
examiner's rejection should be reversed.
Specifically, appellant urges that because an applicant
for patent may not extend the term for any subsequently issued
patent beyond the term set by the statute and based on the
filing date of appellant's first filed application, the
requirement for a terminal disclaimer no longer exists.
Recognizing that a terminal disclaimer requires that the first
and subsequently issued patents must be commonly owned
throughout the entire term in order for the patents to remain
enforceable, appellant declares that:
alienation of one claim within a patent is possible,
there is no compelling reason to adhere to
obviousness-type double patenting for the purpose of
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Application 08/848,477
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having Applicant file a terminal disclaimer to
assure that the two patents will remain in common
ownership.
We disagree with each of appellant's arguments.
Appellant's arguments are without merit because: (1) the
judicially created doctrine of obviousness-type double
patenting was not eliminated by either Congress or any Federal
court due to the recent revisions of the patent term
provisions of 35 U.S.C. § 154; and, to the extent policy
considerations have any bearing on our decision making
authority under 35 U.S.C. § 134, (2) the policy rationale for
the judicially created doctrine of obviousness-type double
patenting remains notwithstanding the current patent term
provisions of 35 U.S.C. § 154.
The amendment in 1995 to 35 U.S.C. § 154 changed, in
general, the term of an issued patent from 17 years from the
date of issue to 20 years from the date of filing. The change
took effect on June 8, 1995 and applied to utility and plant
patent applications filed on or after that date. In 1999, §154
was amended again to include limitations on extending the term
of certain patents and included a provision that:
No patent the term of which has been disclaimed
beyond a specified date may be adjusted under this
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Application 08/848,477
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section beyond the expiration date specified in the
disclaimer.
Therefore, Congress has, in the providing for the amended
statute, specifically provided for in the statute the
possibility of a terminal disclaimer being filed in an
application filed on or after June 8, 1995.
More significantly, however, is the fact that
obviousness-type double patenting is a judicially created
doctrine and we should, therefore, look to the courts for any
evidence that the courts have signaled the demise of the
doctrine. In a recently issued decision, Eli Lilly & Co. v.
Barr Laboratories, Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed.
Cir. 2001), the court provided evidence in the strongest
manner imaginable that the doctrine was alive and well: the
court, of its own volition, held certain patent claims invalid
on the grounds of obviousness-type double patenting. In their
opinion, the court repeated its oft repeated rationale for the
doctrine as being "to prevent unjustified timewise extension
of the right to exclude granted by a patent." Lilly at 251
F.3d 967-68, 58 USPQ2d 1878.
There are other compelling reasons for continuing to
require the terminal disclaimer. First, as we have noted
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Application 08/848,477
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above, the patent term extension provisions of §154 do not
ensure that any patent issuing on an application filed on or
after June 8, 1995, will necessarily expire twenty years from
the earliest filing date or from the earliest date for which
benefit is claimed. Additionally, and notwithstanding
appellant's statement to the contrary, the rules (37 C.F.R. §
1.321(c)(3)) still require that a properly filed terminal
disclaimer include a statement that the patent and the
application whose term is being disclaimed are only
enforceable for and during the period that the two are
commonly owned. Thus, not requiring a terminal disclaimer on
the theory that no subsequently issued patent based on the
first issued patent's filing date may be extended beyond
twenty years for applications filed on or after June 8, 1995,
would nullify the very purpose for which the rule was
promulgated.
This leaves us only with appellant's arguments found at
page 10 of his brief where he argues that we should,
apparently, apply the standard for requiring restriction to
the claims in comparing them with the claims of the issued
patent for the purpose of determining whether the claimed
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Application 08/848,477
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subject matter would have been obvious from appellant's
earlier issued patent claims. Nevertheless, in In re Berg, 140
F.3d 1428, 1431, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998) the
court held that a claim is properly rejected under this
doctrine when it is not patentably distinct from subject
matter claimed in a commonly owned patent. The court observed
that the test is generally a one-way test, requiring only a
determination of the obviousness of the application claims
over the earlier issued patent claims. Under certain unusual
circumstances not found here, the court recognized that a two-
way test may sometimes apply. But the two-way test was
characterized as "a narrow exception to the general rule of
the one-way test." Id.
We find that appellant here is entitled to the one-way
test because there are no unusual circumstances which would
trigger the two-way test being applied. Appellant made a
conscious, deliberate prosecutorial decision in the parent
application not to pursue the appeal of the product-by-process
claims but to allow the process claims to issue and to re-file
a continuing application on the subject matter of the product-
by-process. Because appellant has conceded that the products
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herein claimed are, in fact, prepared by the process of his
earlier issued patent, we find that the products would have at
least been prima facie obvious from the claims of appellant's
prior patent. Accordingly, the rejection of the claims on the
grounds of obviousness-type double patenting is affirmed.
SUMMARY
The examiner's rejection of the appealed claims under 35
U.S.C. §§ 102 and 103 is reversed. The examiner's rejection of
the claims on the grounds of obviousness-type double patenting
is affirmed. 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 C.F.R.
§ 1.136(a).
AFFIRMED
ANDREW H. METZ )
Administrative Patent Judge )
)
Appeal No. 2000-0002
Application 08/848,477
15
) BOARD OF PATENT
) APPEALS
) AND
THOMAS A. WALTZ )
INTERFERENCES
Administrative Patent Judge )
)

AHM/gjh
TIMM, Administrative Patent Judge
concurring-in-part, dissenting-in-part
While I concur in the decision of my colleagues with
regard to the reversal of the rejection under 35 U.S.C. §§ 102
and 103 over McElroy, I dissent from the affirmance of the
rejection made under the judicially created doctrine of
obviousness-type double patenting. For the following reasons,
I would reverse the obviousness-type double patenting
rejection as well.
According to the Examiner, the obviousness-type double
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Application 08/848,477
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patenting rejection is based on the following (Answer, page
5):
Although the conflicting claims are not identical,
they are not patentably distinct from each other
because the process produces an insoluble hematite
complex (col. 11, line 54) which suggests the
claimed residue.
I agree with the Appellant that the Examiner’s reasoning
simply presumes that the product recited in the appealed
claims is obvious (Brief, page 9). It must be remembered that
the Examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). With respect to
obviousness-type double patenting, the Examiner must
specifically point out the differences between the inventions
defined by the patented claims and the appealed claims (the
conflicting claims). The Examiner must then articulate the
reasons why a person of ordinary skill in the art would
conclude that the invention defined in the appealed claims is
an obvious variation of the invention defined in the patented
claims. The Examiner has not pointed out the differences nor
has the Examiner presented reasons supporting a conclusion
that the differences are obvious variations. Simply declaring
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that a product produced in the previously patented process
suggests the now claimed product does not meet the burden.
My colleagues point to a statement made in the Brief at
page 9, lines 19-20 which states that “[t]he present claims
define a product made by one or more of the processes in the
patent” and conclude that Appellants have not challenged the
examiner’s factual determinations. However, my reading of the
entire paragraph in which the statement is contained leads me
to believe that the statement was made to point out the
relationship of the conflicting claims as directed to
different statutory classes of invention (process and
product). While the statement does indicate that the product
can be made by the patented processes, Appellants also point
out that the patented processes do not limit the reactants
loaded into the reactor and, therefore, the patented processes
can be used to make a materially different product (Brief,
page 10, lines 5-6). The Appellants argue that this
difference indicates that the inventions are separate and
distinct. The Examiner must estabish that the conflicting
claims are not “patentably distinct”. In re Berg, 140 F.3d
1428, 1431, 46 USPQ2d 1226, 1229 (Fed. Cir. 1998). Saying that
Appeal No. 2000-0002
Application 08/848,477
18
the claims are not “patentably distinct” is another way of
saying that they define “merely an obvious variation” of an
already patented invention. In re Braat, 937 F.2d 589, 592, 19
USPQ2d 1289, 1291-92 (Fed. Cir. 1991). The Appellants point
to a difference between the conflicting claims for which the
Examiner has provided no convincing explanation as to why the
difference is an obvious variation. I also note that there
are numerous further differences between the conflicting
claims which the Examiner has failed to acknowledge.
As an aside, I agree with my colleagues that the policy
reasons for the judicially created doctrine of obviousness-
type double patenting remain notwithstanding the current
patent term provisions of 35 U.S.C. § 154. Under 35 U.S.C. §
154(b), patent terms may be adjusted based on various delays
occurring due to the actions of the Patent and Trademark
Office. Such an adjustment could very well result in a
difference between expiration dates of copending patents with
the same effective
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filing date. Therefore, an improper timewise extension is
still possible in the absence of a terminal disclaimer.
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 2000-0002
Application 08/848,477
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JOHN C. HAMMAR
20723 32nd PLACE WEST
LYNNWOOD, WA 98036