Ex parte DUPIN et al.

Board of Patent Appeals and Interferences

Oct 28, 1999

08082107 (B.P.A.I. Oct. 28, 1999)

Application for patent filed June 28, 1993. According to appellants, this application is a1
divisional of application serial no. 07/863,140, now U.S. Patent No. 5,244,648, issued September 14, 1993;
which is a continuation of application serial no. 07/737,902, filed July 26, 1991, now abandoned, which is
a continuation of application serial no. 07/169,121, filed March 9, 1988, now abandoned, which is a
continuation of application serial no. 06/876,826, filed June 20, 1986, now abandoned, which is a
continuation of application serial no. 06/508,575, filed June 28, 1983, now abandoned, which is a
continuation-in-part of application serial no. 06/330,000, filed December 11, 1981, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THIERRY DUPIN, JEAN LAVINA and REGIS POISSON
_____________
Appeal No. 1996-0167
Application 08/082,1071
______________
HEARD: September 14, 1999
_______________
Before KIMLIN, OWENS and SPIEGEL, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 33-45, all of the claims remaining
Appeal No. 1996-0167
Application No. 08/082,107
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in the present application. Claim 33 is illustrative:
33. A process for the preparation of alumina agglomerates comprising
(I) preparing a ground or unground powder of active alumina having a
poorly crystalline structure, an amorphous structure or an admixture of
said structures;
(ii) agglomerating said active alumina powder to form alumina
agglomerates;
(iii) combining at least one acid capable of dissolving a portion of
said alumina agglomerates with a different compound from said acid
capable of providing an anion which will combine with aluminum ions
in solution to form an aqueous treatment medium having less than
50% by weight of said compound providing an anion, and subjecting
said agglomerates to an aqueous medium treatment by contacting
said agglomerates with said aqueous treatment medium;
(iv) subjecting the combined agglomerates and the aqueous
treatment medium to a hydrothermal treatment by heating wherein the
combination of said aqueous medium treatment and hydrothermal
treatment increases the porosity of the agglomerates by expansion;
and then
(v) thermally activating the agglomerates with essentially no loss of
alumina agglomerates treated as a result of the combination of steps
(iii)-(v).
The examiner relies upon the following reference as evidence of obviousness:
Schmerling 2,651,617 Sep. 08, 1953
Appellants' claimed invention is directed to a process for preparing alumina
agglomerates. The process involves, inter alia, treating the alumina agglomerates with
Appeal No. 1996-0167
Application No. 08/082,107
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an aqueous medium comprising an acid, such as nitric acid, that is capable of
dissolving a portion of the agglomerates, and a different compound, such as acetic acid,
that is capable of providing an anion which combines with aluminum ions in solution. The
aqueous treatment medium comprises less than 50 percent by weight of the compound
providing the anion. According to appellants, the claimed treatment increases the porosity
of the agglomerates without any essential loss of alumina.
Appealed claims 33-45 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schmerling.
Upon careful consideration of the opposing arguments presented on appeal, we
find that the examiner has failed to establish a prima facie case of obviousness for the
claimed subject matter. Accordingly, we will not sustain the examiner's rejection.
Although Schmerling discloses treating alumina agglomerates with an aqueous
medium comprising a mineral acid and an organic acid, such as acetic acid, we agree
with appellants that Schmerling fails to teach or suggest utilizing a treating solution wherein
the compound (acetic acid) that combines with aluminum ions is present in an amount of
less than 50 per cent by weight, as required by the appealed claims. Schmerling expressly
teaches treating the alumina agglomerates "with an aqueous organic acid containing at
least 60% by weight of acid." (column 2, lines 25 and 26). Also, Schmerling discloses a
treatment mixture "containing a major proportion of acetic
Appeal No. 1996-0167
Application No. 08/082,107
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acid and a minor proportion of hydrochloric acid" (column 2, lines 39-41), and
claim 1 of Schmerling recites "an acidic reagent containing a major proportion of an
organic acid." According to the examiner, Schmerling's major proportion of organic acid
"would overlap the instantly claimed less than 50 percent." (page 4 of answer). However,
while it can be argued that a major proportion of an organic acid can be literally interpreted
as some amount less than 50 percent, we find that this is an unreasonable interpretation
when the entirety of the Schmerling disclosure is considered as a whole. In our view, when
claim 1 of Schmerling is read in light of the specification, which clearly teaches and
exemplifies an aqueous treatment media containing at least 60 percent by weight of
organic acid, one of ordinary skill in the art would not understand that the treatment solution
may contain less than 50 percent by weight of organic acid. We note that EXAMPLE III of
Schmerling, which employs "a predominant proportion of glacial acetic acid and a minor
proportion of concentrated hydrochloric acid", uses "150 grams of glacial acetic acid and
5 grams of concentrated hydrochloric acid", which is considerably greater than 60 percent
of acetic acid. Consequently, we disagree with the examiner that Schmerling provides a
teaching of utilizing an aqueous treatment solution comprising less than 50 percent by
weight of organic acid.
Since we find that the applied prior art fails to establish a prima facie case of
obviousness, it is unnecessary to assess the probative value of the Poisson declaration.
Appeal No. 1996-0167
Application No. 08/082,107
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In conclusion, based on the foregoing, the examiner's decision rejecting the
appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
vsh
Appeal No. 1996-0167
Application No. 08/082,107
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Norman H. Stepno
Burns, Doane, Swecker & Mathis
The George Mason Building
Washington & Prince Streets
P.O. Box 1404
Alexandria, VA 22313-1404