Ex parte Edlund et al.

Board of Patent Appeals and Interferences

Jan 17, 2002

08820490 (B.P.A.I. Jan. 17, 2002)

It is unclear whether nonelected claims 17-19 and 22-271
are cancelled or are pending but withdrawn from further
consideration by the examiner. This lack of clarity should be
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was not written for publication and is not binding precedent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 MARK G. EDLUND,
JAMES R. CORNWELL
and
STEVEN A. RUSH
__________
Appeal No. 1999-1254
Application 08/820,490
__________
ON BRIEF
__________
Before GARRIS, OWENS, and TIMM, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-16, 20-21 and 28-30, which are all of the claims
under consideration in this application.1
Appeal No. 1999-1254
Application No. 08/820,490
rectified upon return of the application to the jurisdiction
of the Examining Corps.
2
The subject matter on appeal is adequately illustrated by
independent claim 1 which is reproduced below:
1. A process for the removal of mercury from materials and
for the recovery of mercury comprising:
heating material which contains mercury to a temperature
of at least 900°F in a heating zone to create a first gaseous
phase which contains mercury,
directing said first gaseous phase at a temperature of at
least 900°F to a first cooling unit which reduces the
temperature of said gaseous phase by at least 100°F to a
temperature which is above the boiling point of mercury,
collecting a first condensate which is condensed from
said gaseous phase which enters into said first cooling unit
and sending a second gaseous phase which contains mercury and
which second gaseous phase is at a temperature above the
boiling point of mercury to a second cooling unit, and
in said second cooling unit, reducing the temperature of
said second gaseous phase to a temperature at least 100°F
below the boiling point of mercury, collecting a condensate
which comprises mercury, and sending a third gaseous phase out
of said second cooling unit at a temperature which is at least
100°F below the boiling point of mercury.
The references relied on by the examiner are:
Sikander et al. (Sikander) 4,606,762 Aug. 19, 1986
Weyand et al. (Weyand) 5,300,137 Apr. 5, 1994
All of the claims on appeal stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Weyand in view of
Appeal No. 1999-1254
Application No. 08/820,490
3
Sikander. On consideration of the record, we cannot sustain
the rejection before us on appeal.
Appeal No. 1999-1254
Application No. 08/820,490
4
BACKGROUND OF THE INVENTION
The subject matter on appeal relates to a process for the
removal of mercury from materials and for the recovery of
mercury.
According to the appellants, mercury is a serious form of
pollution that can be introduced into the environment from
manufactured goods. Mercury can be injurious in small doses
that can be rapidly ingested from breathing contaminated air.
Mercury cannot be deposited in solid waste landfills because
of its known hazardous effects on the environment and current
mercury disposal systems cannot fulfill the volume
requirements of mercury waste treatment needs.
Also according to the appellants, the present mercury
removal process solves the insufficiencies of prior methods
for mercury waste management in an environmentally safe and
economic manner. The claimed process heats mercury containing
waste material (waste) producing a gaseous phase (vapor
stream) and recovers mercury from the gaseous phase through
repeated, controlled cooling of the gaseous phase in order to
selectively collect condensate. See appellants' brief, page
7.
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Application No. 08/820,490
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The gaseous phase is first cooled from a high temperature
down to a temperature above the boiling point of mercury in
order to remove pollutants other than the mercury. The
gaseous phase
is then subsequently cooled to a temperature at least 100°F
below the boiling point of mercury to collect mercury
condensate.
OPINION
For the reasons that follow, we cannot sustain the
examiner's rejection of the appealed claims.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). To make out a case of
obviousness, one must:
a) determine the scope and content of the prior art;
b) ascertain the differences between the prior art and
the claims in issue; and
c) determine the level of skill in the pertinent art.
Graham v. John Deere, 383 U.S. 1, 17 (1966). A prima facie
case of obviousness is established when the teachings from the
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prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art. In
re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993). Patentability of a claim under 35 U.S.C. § 103 must be
premised upon considering the subject matter of a claim "as a
whole." As recently stated in Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629
(Fed. Cir. 1996), "[i]t is well-established that before a
conclusion of obviousness may be made based on a combination
of references, there must have been a reason, suggestion, or
motivation to lead an inventor to combine those references."
With this as background, we analyze the prior art applied by
the examiner in the rejection of the claims on appeal.
Weyand discloses a method of removing mercury from soil
and industrial wastes using a furnace that vaporizes the
mercury and condenses the vapors to thereby collect mercury
condensate. See Weyand Abstract. First, mercury waste is
heated and maintained in the range of 600-1500°F in order to
vaporize the mercury portion of the waste. The vapor is then
condensed to substantially elemental mercury or mercury
compounds and collected in a single condenser.
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The examiner acknowledges that Weyand does not teach the
use of a velocity drop box required by certain of the
dependent claims. In order to supply this deficiency of the
Weyand reference, the examiner relies upon Sikander.
The appellants argue that Weyand differs from the
appealed claims in that Weyand uses only one cooling step at a
temperature below the boiling point of mercury, while the
here-claimed process comprises at least two cooling steps
where the first cooling step is at a temperature above the
boiling point of mercury. The appellants further argue that,
although the Sikander reference does contain two cooling
steps, both cooling steps are intended to collect mercury
condensate from the vapor stream and therefore necessarily
operate at a temperature below the boiling point of mercury.
Finally, the appellants argue that, even if the two references
were combined, the resulting process would not read on the
appealed claims that are directed to at least two cooling
steps, where the first cooling step is at a temperature above
the boiling point of mercury.
We agree with the appellants' basic position that, even
if one of ordinary skill in the art were to combine the
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applied references, the resulting combination would not
correspond to the process defined by the appealed claims.
Specifically, the applied references whether taken
individually or in combination would not have suggested the
here-claimed step of directing the first gaseous phase to a
first cooling unit which reduces the temperature of said
gaseous phase by at least 100°F to a temperature which is
above the boiling point of mercury. See Appellants' claim 1.
The examiner fails to rebut or even acknowledge the
appellants' above-discussed argument. Instead, the examiner
wrongly focuses on the number of process steps in the
references. For example, the examiner states that Weyand
suggests a two and three stage mercury removal/recovery
process. See examiner's answer, page 4. While this may be
true, it is clear that Weyand contains no teaching or
suggestion of a cooling step at a temperature above the
boiling point of mercury in accordance with the appealed
claims. Similarly, the examiner is correct that Sikander
discloses a two stage (step) cooling process, but the examiner
fails to appreciate that the function of each cooling step of
the Sikander process is to collect mercury condensate.
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Because each of the cooling steps of the Sikander reference
collects mercury condensate the temperature of those steps
must be below the boiling point of mercury. Therefore,
Sikander likewise contains no teaching or suggestion of the
appellants' claimed step of cooling to a temperature above the
boiling point of mercury.
Thus, even if combined, the applied references would not
have yielded the here-claimed process having the cooling step
under consideration. It follows that the examiner's rejection
cannot be sustained.
The decision of the examiner is reversed.
REVERSED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No. 1999-1254
Application No. 08/820,490
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)
CATHERINE TIMM )
Administrative Patent Judge )
BRG:svt
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Application No. 08/820,490
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SCHWEGMAN LUNDBERG WOESSNER & KLUTH
P.O. Box 2938
Minneapolis, MN 55402