Ex parte Delmas

Board of Patent Appeals and Interferences

Dec 18, 2001

08288433 (B.P.A.I. Dec. 18, 2001)

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not written for publication and is not binding precedent of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. 47
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FRANCOIS DELMAS
__________
Appeal No. 1999-1810
Application 08/288,433
___________
HEARD: NOVEMBER 27, 2001
___________
Before KIMLIN, OWENS and DELMENDO, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 1-5, 7-14 and 16-20 as amended after final rejection.
Claim 15 stands objected to but allowable if rewritten in
independent form, and claim 21, which was added after final
rejection, stands allowable.
Appeal No. 1999-1810
Application 08/288,433
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Application 08/288,433
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THE INVENTION
The appellant’s claimed invention is directed toward a
process for purifying an aqueous alkali metal chloride
solution containing contaminating amounts of iodide and
ammonium, and toward the solution produced by this process.
Claim 1, directed toward the process, is illustrative:
1. A process for the purification of an aqueous alkali
metal chloride solution containing a contaminating amount of
iodine in other than the periodate state, comprising (a)
oxidizing the iodine therein to the periodate oxidation state
of +7 and (b) then separating the periodate therefrom, said
aqueous alkali metal chloride starting solution further
comprising a contaminating amount of ammonium.
THE REFERENCES
Bissot 4,584,071 Apr. 22,
1986
Filippone et al. (Filippone) 5,069,884 Dec. 3,
1991
J.T. Keating et al. (Keating), “Treatment of Iodide-Containing
Brines for Use in Membrane Choroalkali Electrolysis Cells”,
307 Res. Discl. 795 (1989).
THE REJECTIONS
The claims stand rejected as follows: claims 18 and 20
under 35 U.S.C. § 112, fourth paragraph, as being of improper
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Application 08/288,433
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form for failing to further limit the subject matter of a
previous claim; claims 16 and 17 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103
as obvious over Bissot; claims 1, 4 and 5 under 35 U.S.C.
§ 103 as obvious over Keating in view of Filippone; and claims
1-5, 7-14 and 16-20 under 35 U.S.C. § 103 as obvious over
Bissot in view of Keating and Filippone and over Keating in
view of Bissot and Filippone.
OPINION
We reverse the rejection under 35 U.S.C. § 112, fourth
paragraph, and affirm the other rejections.
The appellant indicates that the claims stand or fall
together as to each rejection (brief, page 4). We therefore
limit our discussion of each affirmed rejection to one claim,
i.e., claim 16 for the rejections over Bissot and claim 1 for
the rejections over Keating in view of Filippone and over the
combined teachings of Bissot, Keating and Filippone.
Rejection of claims 18 and 20
under 35 U.S.C. § 112, fourth paragraph
Claim 20 depends from claim 18 which depends from
independent claim 1. The examiner’s rationale for rejecting
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Application 08/288,433
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claims 18 and 20 under 35 U.S.C. § 112, fourth paragraph, is
that the preamble of claim 1 states that the claimed process
is a process for purifying an aqueous alkali metal chloride
solution, and claims 18 and 20 recite processes for
electrolyzing the solution produced by the process of claim 1
rather than further limiting the process for purifying the
aqueous alkali metal chloride solution (answer, page 4). The
fourth paragraph of § 112, however, does not require that a
dependent claim must fall within the scope of the recited
subject matter in the claim from which it depends but, rather,
requires that the dependent claim must specify a further
limitation of the subject matter of the claim from which it
depends. Because the electrolysis step in claims 18 and 20 is
a further limitation of the subject matter of claim 1, claims
18 and 20 are in compliance with 35 U.S.C. § 112, fourth
paragraph. Consequently, we reverse the rejection of claims
18 and 20 under § 112, fourth paragraph.
Rejections of claim 16 over Bissot
The appellant discloses that the aqueous alkali metal
chloride solutions which can be used in the process of their
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claim 1 include brine (specification, page 4, lines 5-8;
examples 1-4). Bissot indicates that very pure brine free
from soluble iodine-containing salts is available (col. 2,
lines 9-10) and, in example 1, discloses use of purified,
saturated brine containing no detectable iodide (col. 9, lines
16-17 and 24-25). The teaching by Bissot that seawater
contains 0.05 ppm iodine (col. 1, lines 17-18) indicates such
a concentration of iodine is detectable and that, therefore,
nondetectable levels of iodine are below 0.05 ppm.
The appellant argues that Bissot’s disclosure of iodide-
free brine is merely speculative because Bissot does not
disclose how to make such a solution (brief, page 4). Bissot,
however, does not speculate that iodide-free brine may be
produced but, rather, indicates that it is available and uses
it in an example. There is no indication in the reference
that one of ordinary skill in the art could not make the
iodide-free brine used by Bissot, and the appellant has
provided no evidence to that effect. Accordingly, we are not
persuaded by the appellant’s argument.
The appellant argues that claim 16 is patentable over
Bissot because Bissot fails to teach or suggest the
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appellant’s process (brief, page 7). This argument is not
well taken because the patentability of the solution recited
in product-by-process claim 16 is determined based on the
product itself, not on the process for making it. See In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)
(“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 art product was made by a
different process.”).
The appellant argues that the solution recited in claim
16, because it is the product of an oxidation process, differs
from seawater (brief, page 7; reply brief, page 1). The
process recited in claim 19, which is used to make the
solution recited in claim 16, and the process recited in claim
1, from which claim 19 depends, have the transition term
“comprising”, which opens the claims to non-recited steps.
See In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA
1981). The appellant’s specification (page 5, lines 14-31)
indicates that the processes encompassed by claim 19 include
processes in which the ammonium is oxidized and products of
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the oxidation of the iodine and the ammonium are destroyed or
consumed. A brine solution prepared by the process of claim
19 including oxidation of the ammonium and removal of the
oxidation products reasonably appears to be the same or
substantially the same as Bissot’s purified, saturated brine
containing no detectable iodide. In such a case, whether the
rejection is under 35 U.S.C. § 102 or § 103, the burden shifts
to the appellant to provide evidence that the prior art
product does not necessarily or inherently possess the relied-
upon characteristics of the appellant’s claimed product. See
In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324,
326 (CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See
Best, 562 F.2d at 1255, 195 USPQ at 434; In re Brown, 459 F.2d
531, 535, 173 USPQ 685, 688 (CCPA 1972). Because the burden
of providing such evidence has shifted to the appellant and
the appellant has not carried this burden, we affirm the
rejection of claim 16 under 35 U.S.C. § 102(b) over Bissot.
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Also, because anticipation is the epitome of obviousness, see
In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 83 (CCPA 1975);
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974), we affirm the rejection of this claim under 35 U.S.C.
§ 103 over Bissot.
Rejections of claim 1 under 35 U.S.C. § 103
over Keating in view of Filippone and over the
combined teachings of Bissot, Keating and Filippone
Keating discloses that iodide is converted to periodate
during electrolysis of a salt solution or brine, and that when
the iodide concentration in the salt solution or brine is
greater than 0.5-1 ppm, enough periodate is formed and passes
into the membrane to precipitate as the sodium salt near the
cathode surface, thereby damaging the membrane. When barium
is present in the brine, however, Keating teaches, iodide does
little or no damage to the membrane because a barium-iodide
product deposits harmlessly in the membrane as a very fine,
highly insoluble precipitate which Keating believes to be
barium periodate.
Keating is silent as to whether the salt solution or
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Application 08/288,433
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brine contains ammonium. However, Filippone teaches that
brine obtained from seawater or rock salt contains both iodide
and ammonium (col. 1, lines 13-19; col. 1, line 67 - col. 2,
line 4). Thus, it reasonably appears that Keating’s salt
solution and brine necessarily contain ammonium. If ammonium
is not necessarily present in Keating’s salt solution or
brine, then the general disclosure by Keating that a salt
solution or brine is used would have led one of ordinary skill
in the art to use any common salt solution or brine including
one obtained from ammonium-containing rock salt or sea water.
The examiner argues that when Keating’s barium periodate
deposits in the membrane, it is separated from the salt
solution or brine (answer, page 5). The appellant’s
specification does not limit the term “separating” in the
appellant’s claim 1. Thus, when we give this term its
broadest reasonable interpretation in view of the
specification, see In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983), we conclude that it
encompasses separation by deposition in a membrane as
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Application 08/288,433
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disclosed by Keating. The appellant does not address this
argument by the examiner but, rather, focus only on the
examiner’s alternative argument (answer, page 6) regarding
removing barium periodate prior to electrolysis (reply brief,
pages 2-3).
The appellant argues that Keating is speculative in that
Keating merely states that he believes that the barium-iodine
product is barium periodate (answer, pages 10 and 17). We are
not convinced by this argument because establishing a prima
facie case of obviousness requires only a reasonable
expectation of success, see In re O’Farrell, 853 F.2d 894,
903-4, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988), and Keating’s
belief that the precipitate is barium periodate would have
provided one of ordinary skill in the art with a reasonable
expectation of success in using Keating’s process to remove
iodine as barium periodate.
The appellant argues that Keating’s process is not a
purification process (brief, pages 10 and 17). We are not
convinced by this argument because Keating’s removal of
periodate from the solution as a precipitate in the membrane
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is a purification of the solution.
The appellant argues that one of ordinary skill in the
art would not have been motivated to combine Filippone’s
purification process with Keating’s electrolysis process
(brief, pages 11-12). Because Filippone is directed toward
purifying an aqueous alkali metal chloride solution prior to
electrolysis, one of ordinary skill in the art would have
considered Filippone’s disclosure in conjunction with
Keating’s disclosure directed toward electrolysis.
The appellant argues that given Filippone’s teaching that
excessive oxidation leading to the formation of IO is to be3-
avoided (col. 2, lines 9-12), one of ordinary skill in the art
would not have oxidized the iodine to periodate (brief,
pages 12 and 19). As discussed above, however, one of
ordinary skill in the art would have been led by Keating to
use Keating’s process to form barium periodate.
For the above reasons we conclude that the process
recited in the appellant’s claim 1 would have been obvious to
one of ordinary skill in the art within the meaning of 35
U.S.C. § 103 over the applied prior art. Accordingly, we
affirm the rejections of claim 1 over Keating in view of
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Filippone and over the combined teachings of Bissot, Keating
and Filippone.
DECISION
The rejection of claims 18 and 20 under 35 U.S.C. § 112,
fourth paragraph, is reversed. The rejections of claims 16
and 17 under 35 U.S.C. §§ 102(b) and 103 over Bissot, and the
rejections under 35 U.S.C. § 103 of claims 1, 4 and 5 over
Keating in view of Filippone, and claims 1-5, 7-14 and 16-20
over Bissot in view of Keating and Filippone and over Keating
in view of Bissot and Filippone, are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136a).
AFFIRMED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1999-1810
Application 08/288,433
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TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 1999-1810
Application 08/288,433
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ORMAN H. STEPNO
BURNS, DOANE, SWECKER & MATHIS
P. O. BOX 1404
ALEXANDRIA, VA 22313-1404
TJO:caw