Ex Parte Fagiolini et al

Board of Patent Appeals and Interferences

Feb 3, 2005

09423746 (B.P.A.I. Feb. 3, 2005)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NILO FAGIOLINI,
GUY DEPELSENAIRE,
and PASCAL BERTEAU
__________
Appeal No. 2004-2028
Application 09/423,746
__________
HEARD: JANUARY 12, 2005
__________
Before PAK, OWENS, and DELMENDO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1, 2, 4 through 10, 12 and 13,
which are all of the claims pending in the above-identified
application.
Appeal No. 2004-2028
Application No. 09/423,746
2
APPEALED SUBJECT MATTER
Claims 1 and 13 are representative of the subject matter on
appeal and read as follows:
1. Solid pulverulent reactive composition for the
purification of a gas, comprising at least 90% by weight of sodium
bicarbonate and a caking inhibitor for sodium bicarbonate and being
devoid of silica, said inhibitor comprising lignite coke and/or a
magnesium compound selected from the group consisting of magnesium
oxide, magnesium hydroxide, mixtures of magnesium oxide and
magnesium hydroxide and magnesium hydroxycarbonate, wherein said
composition exhibiting a mean particle size of less than 50 :m and
a particle size slope of less than 5 and wherein said inhibitor is
present in an amount by weight of greater than 0.5% of the weight
of sodium bicarbonate.
13. The composition of Claim 1 wherein the particle size
slope is defined by F, wherein
F = D90-D10
D50
wherein D90 respresents the diameter at which 90% of the
particles of the reactive composition (expressed by weight) have a
diameter of less than D90;
wherein D50 represents the diameter at which 50% of the
particles of the reactive composition (expressed by weight) have a
diameter of less D50; and
wherein D10 represents the diameter at which 10% of the
particles of the reactive composition (expressed by weight) have a
diameter of less than D10.
Appeal No. 2004-2028
Application No. 09/423,746
1 The examiner has withdrawn the Section 112 rejection of claim 13 at page 4 of the
Answer.
2 Our reference to this published German Patent is to the corresponding English
translation of record.
3 Our reference to this published International Application is to the corresponding
(continued...)
3

REFERENCE
The examiner relies on the following references:
Fagiolini (Fagiolini ‘567) US 6,171,567 B1 Jan. 9, 2001
(Filed Sep. 6, 1996)
Regler et al. (Regler) 4,100,645 A1 Jul. 16, 1992
(Published German Patent)
Fagiolini (Fagiolini ‘835) WO 95/19835 Jul. 27, 1995
(Published International Patent Application)
REJECTION
The claims on appeal are rejected as follows1:
I) Claims 1, 2, 4 through 10, 12 and 13 under the judicially
created doctrine of obviousness-type double patenting as
unpatentable over claims 1 through 14 of Fagiolini ‘567 in
view of Regler2; and
II) Claims 1, 2, 4 through 10, 12 and 13 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Regler and
Fagiolini ‘8353.
Appeal No. 2004-2028
Application No. 09/423,746
3(...continued)
English translation of record.
4 At pages 5 and 6 of the Supplemental Brief, appellants state that “[c]laim 13 is
separately patentable from the remaining claims...” However, the appellants do not separately
argue the limitation of claim 13 in the context of an obviousness-type double patenting rejection
in the Brief. See pages 15-16. Therefore, we select claim 1 from the claims on appeal and
determine the propriety of the examiner’s obviousness-type double patenting rejection based on
this claim alone consistent with 37 CFR § 41.37(c)(vii) (2004). See also In re McDaniel, 293
F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
4
OPINION
We have carefully reviewed the claims, specification and prior
art, including all of the evidence and the arguments advanced by
both the examiner and the appellants in support of their respective
positions. This review has led us to conclude that the examiner’s
obviousness-type double patenting and Section 103 rejections are
well founded. Accordingly, we affirm the examiner’s decision
rejecting all of the claims on appeal for the factual findings and
conclusions set forth in the Answer and below.
Obviousness-Type Double Patenting4
To prevent unjustified extension of a patent right beyond
statutory limit, the doctrine of obviousness-type double patenting
requires rejection of application claims to subject matter
different, but not patentably distinct from the subject matter
claimed in a commonly owned prior patent. In re Braat, 937 F.2d
589, 592, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991). The
Appeal No. 2004-2028
Application No. 09/423,746
5 In certain circumstances, a so-called “two-way” obviousness analysis is required
between the application claims and the commonly owned patent claims (i.e., to sustain an
obviousness-type double patenting rejection, both the application claims and the commonly
owned patent claims must be obvious from each other). In re Goodman, 11 F.3d 1046, 1053, 29
USPQ2d 2010, 2016 (Fed. Cir. 1993). However, the appellants have not argued in the Brief that
the “two-way” obviousness analysis applies in the current situation.
5
fundamental question dispositive of an obviousness-type double
patenting rejection is whether or not any claim in the application
defines merely an obvious variation of an invention claimed in the
commonly owned prior patent. In re Vogel, 422 F.2d 438, 441, 164
USPQ 619, 622 (CCPA 1970). An analysis employed in an obviousness-
type double patenting is analogous to that used in a 35 U.S.C.
§ 103 obviousness determination.5 In re Longi, 759 F.2d 887, 892
n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985).
Here, Fagiolini ‘567 recites in its claim 1 as follows:
1. Process for purification of smoke containing hydrogen
chloride, which comprises the steps of introducing into
the smoke a powdery reactive composition comprising at
least 99% by weight sodium bicarbonate and at most 1% by
weight sodium monocarbonate and exhibiting a particle
size distribution defined by an average particle diameter
of from 0.020 to 0.030 mm and a particle size slope of
from 1 to 3, and subjecting the smoke to dust removal.
Thus, Fagiolini ‘567 recites every limitation recited in claim 1 of
the present application, except for a caking inhibitor “comprising
lignite coke and/or a magnesium compound selected from the group
consisting of magnesium oxide, magnesium hydroxide, mixtures of
magnesium oxides and magnesium hydroxide and magnesium
Appeal No. 2004-2028
Application No. 09/423,746
6
hydroxycarbonate,...wherein said inhibitor is present in amount by
weight of greater than 0.5% of the weight of sodium bicarbonate.”
To remedy these deficiencies in claim 1 of Fagiolini ‘567, the
examiner relies on the disclosure of Regler. We find that Regler
teaches a fine powder mixture useful for removing acidic
components, such as hydrogen chloride and sulfur dioxide, in waste
gases resulting from the burning of wastes. See pages 1 and 4. We
find that Regler teaches forming the powder mixture by adding a
basic alkaline earth compound, such as magnesium oxide and/or
magnesium hydroxide, as well as a surface active substance, such as
brown coal-health furnace coke (lignite coke), to sodium hydrogen
carbonate (sodium bicarbonate). See page 4. The fraction of the
surface active substance in the mixture is preferably 1 to 10 wt%.
See page 5. The fraction of the basic alkaline earth compound
employed, such as magnesium oxide and/or magnesium hydroxide, is
greater than 0.5 wt%. See page 4, together with page 7. According
to Regler (page 4), the use of such mixture provides “substantial
advantage” in the removal of the acid components from the waste
gases.
Given the advantage of adding the claimed amount of magnesium
oxide, magnesium hydroxide and/or lignite coke to sodium
bicarbonate to form a powder mixture useful for removing, inter
alia, hydrogen chloride from burned or smoke waste gases, we concur
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Application No. 09/423,746
7
with the examiner that one of ordinary skill in the art would have
been led to employ the claimed amount of magnesium oxide, magnesium
hydroxide and/or lignite coke in the powdery reactive composition
of the type recited in Fagiolini ‘567, motivated by a reasonable
expectation of obtaining “substantial advantage”.
The appellants do not contest the examiner’s determination
that the claims of Fagiolini ‘567, together with the disclosure of
Regler, would have rendered the claimed subject matter of the
present application obvious. See the Brief, pages 15 and 16.
Rather, the appellants rely on the discussion of a Section 101
double patenting rejection drawn to patent and application claims
involving “the same invention (same claim scope)” in Vogel and
Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784
F.2d 351, 355, 228 USPQ 837, 840 (Fed. Cir. 1986) to argue that the
examiner has applied a wrong analysis in maintaining the
obviousness-type double patenting rejection in question. Id.
However, continued reading of Vogel and Studiengesselschaft Kohle
mbH reveals that the analysis employed in the Section 101 double
patenting determination is not applicable to the present situation.
Vogel, Braat, Longi and Studiengesselschaft Kohle mbH all support
the use of the analysis employed by the examiner in making an
obviousness-type double patenting determination.
Appeal No. 2004-2028
Application No. 09/423,746
6At pages 5 and 6 of the Supplemental Brief, appellants state that “[c]laim 13 is
separately patentable from the remaining claims...” The appellants do not identify any other
groups of “claims” which are to be considered separately in the Supplemental Brief. Therefore,
we select claims 1 and 13 from the claims on appeal and determine the propriety of the
examiner’s Section 103 rejection based on these claims consistent with 37 CFR § 41.37(c)(vii)
(2004). See also In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
8
In view of the foregoing, we affirm the examiner’s decision
rejecting Claims 1, 2, 4 through 10, 12 and 13 under the judicially
created doctrine of obviousness-type double patenting as
unpatentable over claims 1, 2, 4 through 10, 12 and 13 of Fagiolini
‘567 in view of Regler.
35 U.S.C. § 103 (Obviousness)6
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or suggestions
in the prior art and/or knowledge generally available to a person
having ordinary skill in the art that would have led such person to
arrive at the claimed subject matter. See generally in re Oetiker,
977 F.2d 1443, 1447-48, 245 USPQ2d 1443, 1446-47 (Fed. Cir.
1992)(Nies, J., concurring); In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991).
As evidence of obviousness of the subject matter defined by
claims 1, 2, 4 through 10, 12 and 13 under 35 U.S.C. § 103, the
examiner relies on the combined disclosures of Fagiolini ‘835 and
Regler. Fagiolini ‘835, like Fagiolini ‘567 discussed above,
teaches every limitation of claim 1 of the present application,
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Application No. 09/423,746
9
except for a caking inhibitor “comprising lignite coke and/or a
magnesium compound selected from the group consisting of magnesium
oxide, magnesium hydroxide, mixtures of magnesium oxides and
magnesium hydroxide and magnesium hydroxycarbonate,...wherein said
inhibitor is present in amount by weight of greater than 0.5% of
the weight of sodium bicarbonate.”
To remedy these deficiencies, the examiner relies on the
disclosure of Regler. We find that Regler teaches a fine powder
mixture useful for removing acidic components, such as hydrogen
chloride and sulfur dioxide, in waste gases resulting from the
burning of wastes. See pages 1 and 4. We find that Regler teaches
forming the powder mixture by adding a basic alkaline earth
compound, such as magnesium oxide and/or magnesium hydroxide, as
well as a surface active substance, such as brown coal-health
furnace coke (lignite coke), to sodium hydrogen carbonate (sodium
bicarbonate). See page 4. The fraction of the surface active
substance in the mixture is preferably 1 to 10 wt%. See page 5.
The fraction of the basic alkaline earth compound, such as
magnesium oxide and/or magnesium hydroxide employed is greater than
0.5 wt%. See page 4, together with page 7. According to Regler
(page 4), the use of such mixture provides “substantial advantage”
in the removal of the acid components from the waste gases.
Given the advantage of adding the claimed amount of magnesium
Appeal No. 2004-2028
Application No. 09/423,746
10
oxide, magnesium hydroxide and/or lignite coke to sodium bicarbonate
to form a powder mixture useful for removing, inter alia, hydrogen
chloride from burned or smoke waste gases, we concur with the
examiner that one of ordinary skill in the art would have been led
to employ the claimed amount of magnesium oxide, magnesium hydroxide
and/or lignite coke described in Regler in the powdery reactive
composition of the type recited in Fagiolini ‘835, motivated by a
reasonable expectation of obtaining “substantial advantage”. See
Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807, 10
USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989);
In re Susi, 440 F.2d 442, 444, 169 USPQ 423,425 (CCPA 1971).
Contrary to the appellants’ arguments at pages 11-14 of the
Supplemental Brief, Regler allows one of ordinary skill in the art
to select the claimed lignite coke and/or magnesium compounds from
the very limited number of species disclosed therein (i.e, two of
the six specifically named basic alkaline compounds in Regler are
embraced by the claimed caking inhibitor or one of the five
specifically named surface active substances in Regler is included
by the claimed caking inhibitor). See page 4.
The appellants appear to argue that Regler requires employing
Appeal No. 2004-2028
Application No. 09/423,746
11
silica excluded in claim 1 of the present application in the
composition of Fagiolini ‘835. See pages 11-12. We do not agree.
As indicated by the examiner (Answer, page 8), Regler does not
require that silica be employed in its powder mixture or the powder
mixture of the type described in Fagiolini ‘835. Rather, in lieu of
an optional ingredient, silica gel, Regler teaches employing, inter
alia, activated coke, such as brown coal-health furnace coke
(lignite coke), as a surface active substance. See page 4. Thus,
we concur with the examiner that the combined disclosures of
Fagiolini ‘835 and Regler as a whole would have suggested employing
lignite coke as a surface active substance in the powder composition
of the type described in Fagiolini ‘835.
The appellants appear to argue that the reasons for employing
either lignite coke or magnesium compounds in Regler are different
from those set forth by the appellants. See the Supplemental Brief,
pages 11-12. We do not agree.
First, it is well known that a surface active substance, by
definition, is used for promoting dispersion. In other words,
lignite coke employed as a surface active substance is used to
prevent any caking (opposite to dispersion) of the powder mixture of
the type described in Regler or Fagiolini ‘835. Thus, Regler, like
the appellants, would have suggested using lignite coke as a caking
Appeal No. 2004-2028
Application No. 09/423,746
12
inhibitor in the powder mixture of the type described in Fagiolini
‘835.
Second, even were we to agree that Regler employs both lignite
coke and/or magnesium compounds, such as magnesium oxide or
hydroxide, for the reasons different from that offered by the
appellants, our conclusion would not be altered. It is well settled
that the prior art teachings need not be combined for the purposes
or reasons contemplated by the appellants so long as there is some
motivation, or suggestion in the applied prior art references to
arrive at the claimed subject matter. In re Kemps, 97 F.3d 1427,
1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d
1309, 1312, 24 USP2d 1040, 1042 (Fed. Cir. 1992); In re Kronig, 539
F.2d 1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976). As indicated
supra, we determine that the prior art references as a whole provide
ample motivation or suggestion to add lignite coke and/or the
magnesium compounds in the powder composition of the type described
in Fagiolini ‘835.
The appellants appear to argue that one of ordinary skill in
the art would have been led to inject nitrogen compounds and remove
nitrogen oxide in the waste gas purification process suggested by
the combined disclosures of Fagiolini ‘835 and Regler. See the
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Application No. 09/423,746
13
Supplemental Brief, page 11. This argument is unconvincing.
We initially note that Regler does not require nitrogen
compounds to be in its powder composition or the powder composition
of the type described in Fagiolini ‘835. We also note that the
claimed powder composition, like the powder composition suggested by
Fagiolini ‘835 and Regler, can be used to remove nitrogen oxide.
See the specification, page 4. In any event, we note that the
appellants, by virtue of using the transitional term “comprising” in
the claims on appeal, do not preclude the presence of nitrogen
compounds or nitrogen removing properties in their composition.
In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA
1981)(“As long as one of the monomers in the reaction is propylene,
any other monomers may be present, because the term ‘comprise’
permits the inclusion of other steps, elements, or materials.”).
The appellants argue that the limitation of claim 13 is not
taught in the prior art references. This argument, however, ignores
the specific teachings at page 4 of Fagiolini ‘835. Fagiolini ‘835
clearly teaches a powder reactive composition having the claimed
particle size slope and distribution. Id.

Appeal No. 2004-2028
Application No. 09/423,746
14
The appellants appear to rely on a showing of unexpected results
to rebut the prima facie case established by the examiner. See the
Supplemental Brief, page 12. According to the appellants, examples
7 and 8 in the specification evince that the claimed invention
imparts unexpected results. Id. Our evaluation reveals that the
appellants have not carried their burden of showing unexpected
results. In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143
(CCPA 1973). In this regard, we note that these examples show that
the closest prior art composition, i.e., the sodium bicarbonate
composition of Fagiolini ‘835, imparts unexpected advantages over a
composition containing sodium bicarbonate and silica. See the
specification, pages 11-13. Also, the appellants have not
demonstrated that these examples are commensurate in scope with the
claims on appeal. In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289,
296 (CCPA 1980). That is, the improvement applicable to a reactive
composition consisting essentially of sodium bicarbonate, without
additive, is not shown to be applicable to the claimed powder
reactive composition containing multifarious additives. Further,
the appellants have not demonstrated that the claimed composition is
unexpectedly better than that shown in the closest prior art,
Fagiolini ‘835. In re Baxter Travenol Labs., 952 F.2d 388, 392, 21
USPQ2d 1281, 1285 (Fed. Cir. 1991). As indicated supra, the
Appeal No. 2004-2028
Application No. 09/423,746
15
appellants do not compare the closest prior art with the claimed
invention.
Thus, on this record, we determine that the evidence of
obviousness, on balance, outweighs the evidence of nonobviousness
proffered by the appellants. Hence, we concur with the examiner
that the claimed subject matter as a whole would have been obvious
to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103. Accordingly, we affirm the examiner’s decision rejecting
claims 1, 2, 4 through 10, 12 and 13 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Regler and Fagiolini
‘835.
CONCLUSION
In view of the foregoing, the decision of the examiner is
affirmed.
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Application No. 09/423,746
16
TIME PERIOD FOR TAKING ANY SUBSEQUENT ACTION
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

CKP/dal
VENABLE, BAETJER, HOWARD AND CIVILETTI, LLP
Appeal No. 2004-2028
Application No. 09/423,746
17
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