Ex Parte Flynn

Patent Trial and Appeal Board

Feb 28, 2017

11234996 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/234,996 09/26/2005 Harry E. Flynn 2089 2743
24919 7590 02/28/2017
MCAFEE & TAFT
TENTH FLOOR, TWO LEADERSHIP SQUARE
211 NORTH ROBINSON
EXAMINER
ABU ALI, SHUANGYI
OKLAHOMA CITY, OK 73102 ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
02/28/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY E. FLYNN1
Appeal 2015-007576
Application 11/234,996
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
AVELYN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3—10, and 12—15. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a method for reducing titanium
dioxide buildup in equipment used for the production of titanium dioxide.
E.g., Claim 1. Claim 1 is reproduced below from page 22 (Appendix I) of
the Appeal Brief:
1 According to the Appellant, the real party in interest is TRONOX LLC.
Br. 1.
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Application 11/234,996
1. A method for reducing titanium dioxide buildup in equipment
used for the production of titanium dioxide, comprising the
steps of:
preparing an initial blend of anatase and rutile titanium dioxide
wherein said blend is at least 10% anatase by weight of said
blend;
calcining said initial blend of anatase and rutile titanium
dioxides at a-temperature [sic] greater than 1050° C to produce
a scour medium; and
introducing said scour medium into the equipment used for the
production of titanium dioxide to produce titanium dioxide and
spent scour medium, wherein said scour medium is from about
2 to about 10 percent of the mass flow through the production
equipment and, wherein the anatase content of the scour
medium is such that the combined produced titanium dioxide
and spent scour medium have an anatase content between about
0. 2.percent to about 1.0 percent by weight.
REJECTIONS ON APPEAL2
1. Claims 1, 5—10, and 12—15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Glaeser (US 4,214,913, issued July 29, 1980)
and GB 566,920 (“GB ’920,” bearing an “application date” of Jan. 26,
1943), further in view of Gonzalez et al. (US 5,372,639, issued Dec. 13,
1994).
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Glaeser, GB ’920, and Gonzalez, further in view of
Krause et al. (US 2004/0187392 Al, published Sept. 30, 2004).
2 In the Examiner’s Answer, the Examiner withdraws a rejection of claims 3
and 4 under 35 U.S.C. § 112,11. Ans. 2.
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ANALYSIS
The Appellant argues the claims as four groups: (1) claims 1 and 5—
10, (2) claims 12 and 13, (3) claims 14 and 15, and (4) claims 3 and 4
(subject to Rejection 2). For reasons set forth below, in the Final Action, in
the Advisory Action dated Sept. 17, 2014, and in the Examiner’s Answer,
we affirm the rejections.
Claims 1 and 5—10.
The Appellant groups claims 1 and 5—10, focusing on limitations
appearing in claim 1. We limit our discussion to claim 1. Claims 5—10 will
stand or fall with claim 1.
The Examiner finds, inter alia, that Glaeser discloses a method of
making rutile3 titanium dioxide in which titanium dioxide buildup in
equipment is reduced through the use of calcined rutile as a scour medium.
Final Act. 3. The Examiner finds that Glaeser is “silent about the scrub
rutile solid is calcined from a blend of anatase and rutile.” Id. However, the
Examiner finds that GB ’920 teaches production of rutile by converting
anatase to rutile using a method that involves the addition of “a small
amount of rutile” to the anatase that is to be converted to rutile. Id. The
Examiner determines that it would have been obvious to use “a blend of
anatase and mtile to make calcined rutile solid,” as described by GB ’920,
for use in the process of Glaeser. Id.
3 Rutile is a polymorphic form of titanium dioxide. Other polymorphic
forms of titanium dioxide include anatase and brookite. E.g., GB ’920 at
1:31-33.
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Concerning the claimed calcining temperature of “greater than
1050° C,” the Examiner finds that GB ’920 “discloses that when the
calcination is conducted at 1025 °C [and] above, rutile is obtained.” Id.
Concerning the claimed “mass flow,” the Examiner finds that
Gonzalez discloses “that the amount of scrubs used is variable and will
depend upon the particular needs,” and that a typical “amount of scrubbing
solids rang[es] from about 0.5 to 20 wt %.” Id. at 4. Citing In re Aller, 220
F.2d 454 (CCPA 1955), the Examiner further finds that mass flow is a
result-effective variable, and that a person of ordinary skill would have been
motivated to optimize it to achieve desired results. Final Act. 4.
Concerning the anatase content of the “combined produced titanium
dioxide and spent scour medium,” the Examiner determines that “the
claimed limitation [is] deemed to naturally flow from the process of the prior
art combination, since the prior art combination teaches an invention with a
substantially similar process.” Id.
The Appellant first argues that the references do not teach or suggest a
calcining temperature of greater than 1050°C. App. Br. 10-15. We do not
find that argument to be persuasive.
In describing prior art methods of producing anatase and rutile,
GB ’920 teaches that hydrous titanium oxide may be calcined at
temperatures of 950-1000°C to produce anatase, and that hydrous titanium
oxide may be calcined at temperatures at temperatures of “1025° C. to 1050°
C. or above” to produce rutile. GB ’920 at 1:75—85. We recognize that
GB ’920 subsequently states that rutile produced at those high temperatures
possesses “objectionable sintering, undesired growth in pigment particle
size, and grit and aggregate formation,” resulting in “relatively poor color,
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brightness, texture, tinting strength and hiding power of the ultimate
pigment,” which renders rutile produced in that manner “wholly unfit” for
many pigment uses. Id. at 1:94—2:5; see also App. Br. 15. However, a
person of ordinary skill in the art would have understood that the very
properties (coarseness, grit, etc.) that render such rutile less desirable for the
pigment uses contemplated by GB ’920 would have suggested to a person of
ordinary skill in the art that such rutile would have been effective for use as
a scrub solid, such as the rutile scrub solid of Glaeser. See, e.g., Krause 120
(higher calcining temperatures “enhance scour efficiency but at the sacrifice
of reactor tube wear”). Thus, the fact that GB ’920 suggests that lower
calcining temperatures are preferred for producing rutile to be used as a
pigment does not suggest that a person of ordinary skill in the art would
have considered rutile produced using higher calcining temperatures to be
unsuitable for use as a scrub solid, as proposed by the Examiner.
We also recognize that the “hydrous titanium oxide”4 disclosed by GB
’920, see GB ’920 at 1:75, may not constitute an anatase/rutile blend, such
as that required by claim 1. However, the Examiner finds that “it is known
in the art that during the sulfate process of Ti02 pigment production,
hydrated titanium dioxide is calcined,” and that “there is anatase/rutile blend
4 GB ’920 uses the term “titanium oxide” rather than “titanium dioxide.”
See App. Br. 13 n.15. The Appellant does not meaningfully assert that
GB ’920 concerns a different compound than Glaeser and/or claim 1.
Moreover, we note that the Appellant states that “rutile and anatase are
forms of titanium dioxide,” id. (emphasis in original), and that GB ’920
expressly describes “titanium oxide” as, for example, “rutile,” see, e.g., GB
’920 at 10:38—39, suggesting that GB ’920 is, in fact, referring to titanium
dioxide.
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before the blend is transformed to completer rutile, which [ultimately] has a
rutile content of 98—100% rutile.” Ans. 3. The Appellant does not file a
Reply Brief to dispute the Examiner’s determination.
Moreover, following its discussion of prior art methods of producing
rutile, see GB ’920 at 1:75—2:5, GB ’920 discloses the preparation of rutile
by adding rutile to anatase (i.e., making a rutile/anatase blend) and then
calcining to convert the anatase to rutile, e.g., id. at 2:36—37, 2:109-119,
3:36—54, 4:103—5:55. The Examiner’s rejection, which cites pages 4—5 of
GB ’920, appears to rely on this process as well as the prior art process
involving hydrous titanium oxide discussed above. See Final Act. 3. While
GB ’920 teaches the use of “low calcination temperatures” for its process,
e.g., GB ’920 at 2:115, it also reasonably suggests to a person of ordinary
skill in the art that higher temperatures may be used. Id. at 1:75—100, pp. 6—
7 (Example 5), 10:36—50. A person of ordinary skill in the art reasonably
would have expected that higher calcining temperatures would result in the
“sinter[ed],” “coarse and gritty” rutile described above. See id.
For example, GB ’920 provides at least two examples in which
calcination occurs at 1050°C. See id. at 6—7 (Example 5), 7—8 (Example 7).
GB ’920 expressly teaches:
[TJhough it is preferred to utilize calcination temperatures
ranging from substantially 850 to 975° C., and not in excess of
1000° C. . . . the invention is not limited to the indicated lower
limit of specific temperature. The use of any particular
calcination temperature will obviously depend upon the nature
of the TiC>2 precipitate under treatment and the particular
properties and extent of rutile crystallinity which is desired that
the final product shall exhibit.
Id. at 9:25^42 (emphasis added).
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A person of ordinary skill in the art reasonably would have understood from
the teachings of GB ’920 as a whole that sintered, coarse, and gritty rutile
could be obtained by calcining either hydrous titanium oxide or an
anatase/rutile blend at temperatures above 1050°C.
In view of the teachings of the prior art discussed above, we
understand the Examiner’s rejection to be suggesting the use of rutile
produced from a process at higher calcining temperatures according to the
disclosure of GB ’920, i.e., a known form of rutile, as the scrub solid rutile
taught by Glaeser.5 While a person of ordinary skill in the art may not have
considered that rutile to be suitable for use as the primary pigment
ingredient, for example, in a paint, see GB ’920 at 1:104, the Appellant
presents no persuasive argument that a person of ordinary skill in the art
would not have considered it suitable for use as Glaeser’s scrub solid, as
proposed by the Examiner. Accordingly, the Appellant’s arguments
focusing on calcining temperature do not persuade us of reversible error in
the rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416—21
(2007) (use of a known element according to its established function
typically does not result in nonobvious subject matter; “in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.”).
The Appellant also argues that the prior art does “not provide any
motivation or incentive to use a calcined anatase/rutile for a scour medium,”
5 Additionally, we note that claim 1 does not require using the anatase/rutile
blend itself as a scouring medium. See App. Br. 14. It requires calcining the
anatase/rutile blend at temperatures of greater than 1050°C, and using the
resulting product as a scouring medium. See Claim 1.
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and that “[t]he Examiner has not addressed why one skilled in the art would
turn away from the rutile scour medium of Glaeser, which introduces no
anatase, to a product having a potential anatase component when the product
of GB ’920 does not even disclose that its product has properties useful for a
scour medium,. . . and in fact, discloses that its product is soft and smooth
thus unsuitable for a scour medium.” See App. Br. 16—17.
That argument is not persuasive of reversible error. As set forth
above, the Examiner’s rejection proposes the use of a known source of rutile
(i.e., that taught by GB ’920) in Glaeser’s process that expressly calls for
rutile to be used as a scrub solid. We do not understand the Examiner’s
rejection to suggest the use of GB ’920’s soft and smooth rutile produced at
lower calcining temperatures, see id.', rather, we understand the rejection to
suggest the use of the sintered, coarse, and gritty rutile disclosed by GB ’920
(produced at calcining temperatures of “1050° C. or above,” GB ’920 at
1:81—82). The use of a known element (rutile produced according to
methods disclosed by GB ’920) to serve an established function (rutile scrub
solid as disclosed by Glaeser) typically does not result in nonobvious subject
matter. See KSR, 550 U.S. at 416—21. The Appellant provides no
persuasive argument that the sintered, coarse, and gritty rutile disclosed by
GB ’920 would not have been suitable for use as a scrub solid in
combination with Glaeser, even if small amounts of anatase may have
remained in the rutile of GB ’920. Obviousness does not require absolute
certainty of success; it requires only a reasonable expectation of success. In
re O'Farrell, 853 F.2d 894, 903—04 (Fed. Cir. 1988). The Appellant’s
arguments do not persuade us that a person of ordinary skill in the art would
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not have had a reasonable expectation of success in using rutile disclosed by
GB ’920 as the rutile scouring medium in Glaeser.
We have carefully considered the Appellant’s arguments, and they do
not persuade us of reversible error in the Examiner’s rejection of claim 1.
Claims 12 and 13.
Claims 12 and 13 depend from claim 1 and further recite that the
anatase content of the produced titanium dioxide and spent scour medium is
maintained “at about 0.5 percent by weight” (claim 12) or “at about 0.2
percent by weight” (claim 13).6
As the Appellant notes, see App. Br. 18, in the Final Action, the
Examiner does not specifically address claims 12 and 13. However,
addressing a similar limitation in claim 1, the Examiner states that “the
claimed limitation [is] deemed to naturally flow from the process of the prior
art combination, since the prior art combination teaches an invention with a
substantially similar process. Similar process produces similar product.”
Final Act. 4. In the Answer, the Examiner states that the rutile content of the
composition produced by GB ’920 (and suggested for use by the Examiner
as the scouring medium) is 98—100% rutile (i.e., 0-2% anatase). Ans. 6.
6 Claim 1 recites that “the anatase content of the scour medium is such that
the combined produced titanium dioxide and spent scour medium have an
anatase content between 0.2 percent to about 1.0 percent by weight.” In
their arguments concerning claim 1, the Appellant does not challenge the
Examiner’s findings and conclusions concerning that limitation. See App.
Br. 10-18.
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The Appellant argues that, “[wjithout some support that the process of
the prior art produces the claimed anatase content, the Examiner’s rejection
is baseless and should be withdrawn.” App. Br. 18.
We affirm the Examiner’s rejection of claims 12 and 13. As
explained above, the Examiner relies on Gonzalez as disclosing a typical
amount of scrubbing solids (scouring medium) of 0.5 to 20% weight percent.
Final Act. 4. The Appellant does not dispute the Examiner’s determination
that Gonzalez teaches or suggests the claimed “wherein said scour medium
is from about 2 to about 10 percent of the mass flow through the production
equipment,” as claimed. Nor does the Appellant dispute the Examiner’s
findings (1) that the amount of scour medium (scrub solids) used is a result-
effective variable, see Final Act. 4, and (2) that the process of GB ’920
results in 98—100% pure rutile (0-2% anatase). See Ans. 6; see also Final
Act. 3 (same).
The Examiner’s rejection appears to suggest, for example, that use of
10% scour medium, which is taught or suggested by Gonzalez, comprising
2% anatase (i.e., 98% rutile) would result in a combined produced titanium
dioxide and spent scour medium having an anatase content of approximately
0.2% and perhaps somewhat more, including up to about 0.5%, when
accounting for the anatase content in the produced titanium dioxide. The
Appellant’s argument does not meaningfully address the concentrations
taught by the references and relied upon by the Examiner, or otherwise
provide any persuasive basis to conclude that the anatase concentrations
recited by claims 12 and 13 would not have been obvious to a person of
ordinary skill in view of the prior art. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (explaining that, even if the examiner had failed to make a
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prima facie case, the Board would not have erred in framing the issue as one
of reversible error because “it has long been the Board’s practice to require
an applicant to identify the alleged error in the examiner’s rejections”); cf
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“naked assertions”
that claim limitations are not taught by the prior art are unpersuasive); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims . . . [and] in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.” (citations omitted)).
Accordingly, on this record, we are not persuaded of reversible error
in the Examiner’s rejection of claims 12 and 13. See Jung, 637 F.3d at 1365.
Claims 14 and 15.
Claims 14 and 15 depend from claim 1 and recite calcining
temperatures of “1075° C or higher” (claim 14) and “1100° C or higher”
(claim 15).
The Examiner finds that GB ’920’s disclosure of calcination
temperatures above 1025°C render teach or suggest the limitations of claims
14 and 15. Final Act. 10; GB ’920 at 1:82-83.
The Appellant argues that GB ’920’s disclosure of temperatures above
1025°C pertains only to “hydrous titanium oxide and not a blend of anatase
and rutile titanium dioxide,” and that GB ’920 does not teach or suggest a
calcination temperature above 1000°C for a blend. See App. Br. 19.
We are not persuaded by that argument. As noted above, the
Examiner finds that “it is known in the art that during the sulfate process of
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Ti02 pigment production, hydrated titanium dioxide is calcined,” and that
“there is anatase/rutile blend before the blend is transformed to completer
rutile.” Ans. 3. Thus, the Examiner finds that GB ’920’s teachings
concerning hydrous titanium oxide do concern an anatase/rutile blend. The
Appellant does not file a Reply Brief to dispute that finding.
Moreover, and as explained above, see supra pages 6—7, GB ’920
reasonably suggests to a person of ordinary skill in the art that temperatures
higher than 1050°C may be used in its method that expressly requires an
anatase/rutile blend. A person of ordinary skill in the art reasonably would
have understood from the teachings of GB ’920 as a whole that sintered,
coarse, and gritty rutile could be obtained by calcining either hydrous
titanium oxide or an anatase/rutile blend at temperatures of “1050° C. or
above.” See GB ’920 at 1:82—83; see also supra pages 6—7. The Appellant
does not argue that it would have been beyond the level or ordinary skill to
determine a desired calcining temperature, including temperatures of
1075°C or 1100°C. Cf. GB ’920 at 9:25—42 (suggesting that person of
ordinary skill may determine “[t]he use of any particular calcination
temperature”); Krause 120 (increasing sintering temperatures results in
“harder more dense pellets [that] enhance scour efficiency but at the
sacrifice of reactor tube wear”); Winner Int 7 Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit. . . should not nullity its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”).
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The Appellant’s argument does not persuade us of reversible error in
the Examiner’s rejection of claims 14 and 15.
Claims 3 and 4 (Rejection 2).
Claims 3 and 4 depend from claim 1 and further recite that the initial
anatase/rutile blend is calcined to a particular crush strength (claim 3) and
density (claim 4).
The Examiner finds it would have been obvious to use the claimed
crush strengths and densities in the proposed method because Krause, “also
drawn to titanium oxide production, disclose[s] that scrub solid having a
density of about 1.38g/cc to about 2.46 g/cc and a crush strength of less than
about 40% is effective to scrub the walls of reactors.” Final Act. 5. The
Examiner also finds that “the claimed properties are deemed to naturally
flow from the structure in the prior art combination, since the prior art
combination teaches an invention with a substantially similar process.” Id.
at 4—5, 12.
Apparently relying on Krause’s teaching that “[a]s sintering
temperatures approach 1050° C. the harder more dense pellets enhance scour
efficiency but at the sacrifice of reactor tube wear,” see Krause 120, the
Appellant first argues that “Krause teaches away from using a calcining
temperature above 1050° C.” See App. Br. 19; see also App. Br. 14 & n.17.
That argument is not persuasive. “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The portion of Krause cited by
the Appellant does not teach away from calcining temperatures greater than
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1050°C; rather, it identifies both advantages (enhanced scouring efficiency)
and disadvantages (increased reactor tube wear) to higher calcining
temperatures. Cf. Winner, 202 F.3d at 1349 n.8.
The Appellant also argues that “Krause’s disclosures on density and
crush strength are limited to its rutile scour medium. Krause says nothing
about a scour medium produced from an anatase/rutile blend.” App. Br. 20.
That argument is not persuasive. The Examiner relies on Krause for
the disclosure that the recited densities and crush strengths are known
desirable densities/crush strengths for use in titanium dioxide scouring
media. As the Appellant recognizes, the Examiner finds that “the claimed
properties are deemed to naturally flow from the structure in the prior art
combination, since the prior art combination teaches an invention with
substantially similar process.” See App. Br. 20. The Appellant concedes
that the Examiner’s position “might hold weight if GB ’920 disclosed a
process of producing a rutile product from an anatase/rutile blend that could
have the claimed properties.” See id. at 20.
As set forth above, the Appellant has not persuasively shown error in
the Examiner’s determination that GB ’920 does reasonably teach or suggest
such a process to a person of ordinary skill in the art, and that a person of
ordinary skill in the art would have been motivated to use the rutile produced
according to that process as the scrub solid in Glaeser. The Appellant’s
argument fails to explain why the sintered, coarse, and gritty rutile produced
by the high-calcining-temperature processes disclosed by GB ’920, which
appear to be the same as or similar to the scouring medium of claim 1,
would not have possessed the properties recited by claims 3 and 4. Cf. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and
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prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”).
On this record, we affirm the Examiner’s rejection of claims 3 and 4.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1, 3—10, and 12—15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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