Ex Parte Detournay et al

Patent Trial and Appeal Board

Mar 12, 2015

12305444 (P.T.A.B. Mar. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN-PAUL DETOURNAY, FRANCIS M. COUSTRY, and
ALESSANDRA PASTACALDI
1

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Appeal 2013-005311
Application 12/305,444
Technology Center 1700
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Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
decision of the Primary Examiner finally rejecting claims 1–12. We have
jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse.
BACKGROUND
Appellants’ claimed invention relates to a process for the joint
production of sodium carbonate and sodium bicarbonate. Abstract.

1
According to the Appeal Brief, the Real Party in Interest is Solvay. App.
Br. 4.
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Application 12/305,444

2
Claim 1 is illustrative and is reproduced below from the Claims
Appendix (App. Br. 34):
1. A process for the joint production of sodium
carbonate and sodium bicarbonate out of
sesquicarbonate, comprising:
 dissolving the sesquicarbonate in water, in order to
form a feed water solution comprising both sodium
carbonate and sodium bicarbonate;
 introducing at least a part of the feed water solution
into an electrodialyser comprising at least one less
basic and one more basic adjacent compartments
separated by a cationic ion exchange membrane,
permeable to sodium ions, the compartments being
placed between a positive electrode and a negative
electrode; and
 extracting a sodium bicarbonate enriched solution
from the less basic compartment; and extracting a
sodium carbonate enriched solution from the more
basic compartment.

The Examiner maintains, and Appellants appeal, the rejection of
claims 1–12 as unpatentable under 35 U.S.C. § 103(a) over Chlanda (US
4,584,077, issued Apr. 22, 1986) in view of Gancy (US 4,238,305, issued
Dec. 9, 1980).

OPINION
The dispositive issue in this appeal is: Did the Examiner err in
determining that Gancy discloses extracting “a sodium bicarbonate enriched
solution from the less basic compartment” or “a solution enriched in the salt
with the lowest pH from the less basic compartment” as required in
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Application 12/305,444

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independent claims 1 and 12, respectively? We answer this question in the
affirmative.
Gancy teaches the addition of a dilute carbonate/bicarbonate stream
into the acid compartment of an electrodialytic cell wherein carbonate is
converted to bicarbonate, bicarbonate is converted to carbonic acid, and
carbonic acid is converted into carbon dioxide. Gancy 7:16–25. One of
Gancy’s stated objectives is the formation of high purity carbon dioxide
from dilute, impure soda feeds. Id. at 2:21–27.
The Examiner finds that the amount of sodium bicarbonate produced
in the acid compartment is dependent on the concentration of sodium
carbonate in the feed stream. Ans. 14. The Examiner points out that Gancy
discloses the potential for precipitation of bicarbonate in the acid
compartment if the amount of carbonate in the feed solution exceeds about
12 weight percent. Id. at 10; Gancy 4:33–38. The Examiner takes the
position that precipitation of bicarbonate would not occur without an
enrichment of bicarbonate in the acid compartment, and, therefore,
concludes that Gancy discloses the production of an enriched sodium
bicarbonate solution within the acid compartment of the electrodialytic cell.
Ans. 10–13.
The Examiner also takes the position that in Example 1 in Gancy, the
acid compartment was charged with an uncalcined trona solution 1.89N in
HCO3
–
and CO3
=
, and, therefore, the solution extracted from the acid
compartment, which was 0.13N in sodium bicarbonate and had no sodium
carbonate, is an enriched bicarbonate solution. Id. at 14; Gancy 8:14–28.
Appellants contend that in the context of the claimed invention, “a
solution enriched in sodium bicarbonate extracted from Gancy’s acid
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Application 12/305,444

4
compartment would be achieved if the final sodium bicarbonate
concentration of the solution exiting the acid compartment is greater than the
initial sodium bicarbonate concentration of the solution charged in this
compartment.” Reply Br. 8. Appellants argue that Gancy does not teach
such an enrichment of bicarbonate in the solution extracted from the acid
compartment. Appellants acknowledge that Gancy does disclose the
conversion of carbonate into bicarbonate in the acid compartment, but argue
that this alone is insufficient to conclude that there is an enrichment of
bicarbonate because the bicarbonate is also consumed in the acid
compartment to form carbonic acid, which is converted into carbon dioxide.
App. Br. 19–21.
In response to the Examiner’s position regarding precipitation,
Appellants argue that bicarbonate precipitation is not necessarily the result
of bicarbonate enrichment, but instead could be due to a change in
temperature or the reduction in the solubility of sodium bicarbonate inside
the acid compartment. Reply Br. 11. Additionally, Appellants argue that “if
there is a precipitation of sodium bicarbonate inside the acid compartment, it
would de facto result in a depletion of the solution in sodium bicarbonate
inside the cell, so that the solution extracted from the acid compartment
would be depleted, and not enriched, in sodium bicarbonate.” Id. at 11–12.
As to Examples 1 and 2 of Gancy, Appellants argue that, according to
their calculations, the concentration of bicarbonate in the solution extracted
from the acid compartment is actually less than the concentration of
bicarbonate in the starting solution, evidencing a depletion, not an
enrichment, of bicarbonate in Gancy. Id. at 13–15.
We are persuaded by Appellants’ arguments.
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5
Although there is no dispute that some sodium bicarbonate is formed
in the acid compartment of Gancy, this alone is insufficient to demonstrate
that the solution extracted from the acid compartment is an enriched
bicarbonate solution. The Examiner does not direct us to any factual
evidence showing a comparison of the sodium bicarbonate concentration in
a solution fed to the acid compartment and a solution extracted from the acid
compartment. Such a comparison is necessary because, as Appellants point
out, at least some of the sodium bicarbonate present (or produced) in the
acid compartment is consumed to form carbonic acid, which is then
converted into carbon dioxide, a stated objective of Gancy. See Gancy
7:16–25; 2:47–50.
Gancy’s Example 1 does not provide an adequate comparison of
bicarbonate concentrations between the solution fed to the acid compartment
and the solution extracted from it because Example 1 does not include the
initial sodium bicarbonate concentration of the uncalcined trona solution.
The Examiner does not explain what the bicarbonate concentration is or
adequately explain how a person of ordinary skill in the art would or could
calculate it. Example 2 of Gancy suffers from the same deficiencies.
Nor does the Examiner offer an adequate technical explanation or
factual basis supporting the determination that precipitation of bicarbonate
could only occur if there is an enrichment of bicarbonate in the acid
compartment. Gancy itself suggests that precipitation of bicarbonate is
temperature dependent. See, e.g., Gancy 4:46–49. Furthermore, we agree
with Appellants that if bicarbonate does precipitate out of the solution in the
acid compartment, the solution extracted from the acid compartment would
likely show a depletion in the concentration of sodium bicarbonate.
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6
Therefore, on this record, we find that the Examiner erred in
determining that Gancy discloses extracting “a sodium bicarbonate enriched
solution from the less basic compartment” or “a solution enriched in the salt
with the lowest pH from the less basic compartment” as required in
independent claims 1 and 12, respectively.
Because the Examiner has failed to set forth a factual basis which is
sufficient to support a prima facie case of obviousness of the Appellants’
claimed invention, we reverse the Examiner’s rejection of claims 1–12 as
unpatentable under 35 U.S.C. § 103(a) over Chlanda in view of Gancy. See
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis.)

CONCLUSION
For the reasons set forth above, we reverse the Primary Examiner’s
final rejection of claims 1–12 under 35 U.S.C. § 103.

REVERSED

jagr