Ex Parte Hard

Board of Patent Appeals and Interferences

Aug 22, 2002

08623852 (B.P.A.I. Aug. 22, 2002)

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for publication and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT A. HARD
____________
Appeal No. 2000-1019
Application No. 08/623,852
____________
ON BRIEF
____________
Before GARRIS, TIMM and DELMENDO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1 through 17, which are all of the claims pending in the
application.
The subject matter on appeal relates to a process for
recovering metal values from a metal containing material including
metal values being recovered and one or more additional metal
Appeal No. 2000-1019
Application No. 08/623,852
1We note that the term “chlorides” on page 1, line 18 of the subject
specification, appears to be in error. The proper term seems to be
“fluorides.” This is deserving of correction should further prosecution be
pursued.
2
values.1 The appealed subject matter is illustrated by
representative independent claim 1, which is the broadest
independent claim.
1. A process for recovering metal values from a
metal containing material including metal values being
recovered and one or more additional metal values
comprising:
digesting the metal containing material in a
sulfuric acid solution comprising:
sulfuric acid;
a reducing agent to render a metal value
insoluble; and
a carbon source;
for a period of time sufficient to solubilize the metal
values being recovered and render the one or more
additional metal values insoluble;
heating the digestion mixture for a period of time
sufficient to attain 75-95°C; and
separating the resulting solution from the
remaining solids.
The references relied upon by the examiner as evidence of
obviousness are:
Pazdej 4,332,777 Jun. 1, 1982
Bender 5,232,490 Aug. 3, 1993
Appeal No. 2000-1019
Application No. 08/623,852
3
Claims 1 through 17 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellants regard as the invention.
Claims 1 through 13 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor(s),
at the time the application was filed, had possession of the now
claimed invention.
Claims 1 through 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bender in view of Pazdej.
GROUPING OF CLAIMS
The appellants submit that “[c]laims 1-13 stand together with
respect to the §103(a) rejection under Bender taken with Pazdej,
and with respect to the rejections under 35 U.S.C. § 112, first and
second paragraphs. Claims 14-17 stand together with respect to te
rejection under 35 U.S.C. § 112, second paragraph” (Brief, Paper
No. 16, page 6). Thus, “the rejection of claims 1-13 stand or fall
together because appellant’s [sic, appellants’] brief does not
include a statement that this grouping of claims does not stand or
Appeal No. 2000-1019
Application No. 08/623,852
4
fall together and reasons in support thereof” (Answer, Paper No.
19, page 2). Claims 14 through 17 also stand or fall together for
the same reason (id).
For this reason, we limit our discussion to independent claim
1 in addressing the rejections under 35 U.S.C. § 112, first
paragraph, and 35 U.S.C. § 103(a). Accordingly, claims 2 through
13 stand or fall together with independent claim 1 on the
respective issues of new matter and obviousness. In addressing the
rejection under 35 U.S.C. § 112, second paragraph, we will limit
our discussion to independent claims 1 and 14. Accordingly, claims
2 through 13 stand or fall together with independent claim 1, while
claims 15 through 17 stand or fall with independent claim 14, on
this issue of indefiniteness.
OPINION
For the reasons set forth below, we affirm each of the
rejections before us on appeal.
REJECTION OF CLAIMS 1 THROUGH 17
UNDER 35 U.S.C. §112, 2nd PARAGRAPH
One of the purposes of 35 U.S.C. § 112, second paragraph, “is
to provide those who would endeavor, in future enterprise, to
approach the area circumscribed by the claims of a patent, with
Appeal No. 2000-1019
Application No. 08/623,852
5
adequate notice demanded by due process of law, so that they may
more readily and accurately determine the boundaries of protection
involved and evaluate the possibility of infringement and
dominance.” In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970). As set forth in Amgen Inc. v. Chugai Pharmaceutical
Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir.
1991):
The statute requires that “[t]he specification
shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.” A
decision as to whether a claim is invalid under this
provision requires a determination whether those
skilled in the art would understand what is claimed.
See Shatterproof Glass Corp. v. Libbey-Owens Ford Co.,
758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985)
(Claims must “reasonably apprise those skilled in the
art” as to their scope and be “as precise as the
subject matter permits.”).
The claim language must define the scope of the claimed
subject matter with a reasonable degree of precision and
particularity. Furthermore, claim language must be analyzed “not
in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary skill in the pertinent
art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
Appeal No. 2000-1019
Application No. 08/623,852
2Regarding claim 14, the examiner suggested inserting “--a digesting
mixture comprising-- between ‘form an’ in line 9" (Answer, Paper No. 19, page
4). The examiner also suggested inserting “--a temperature of-- after
‘attain’” in line 11 (id).
6
The examiner rejected claim 1 as indefinite, because the
language “‘being recovered and one or more additional metal
values’ is awkward and confusing as to exactly what is being
claimed” (Answer, Paper No. 19, page 4). The examiner also takes
the position that the language “‘to render a metal value
insoluble’ is indefinite as to which metal value is referred to”
and “indefinite as to what it is rendered insoluble in” (id).
The examiner rejected claim 14 as indefinite, because the
language “‘the digestion mixture’ lacks proper antecedent basis
in the claim” (id).2
In response to the examiner’s rejection of claim 1 based on
the language “being recovered and one or more additional metal
values,” the appellants maintain the position that
the original language of claim 1, as noted above, was
not indefinite because “metal values being recovered”
and “one or more additional metal values” are definite
phrases which clearly recited the claimed invention, in
view of the language of claim 1 as pending and
Appellant’s [sic, Appellants’] specification. . . .
[T]he rejection of claim 1 on this basis was in error
. . . (Brief, Paper No. 16, page 9).
Appeal No. 2000-1019
Application No. 08/623,852
7
In response to the examiner’s rejection of claim 1 based on
the language “to render a metal value insoluble,” the appellants
state that
In the accompanying amendment sought, Appellant [sic,
Appellants] has clarified this phrase by substituting
the phrase “to render the one of more additional metal
values insoluble in the digestion mixture.” Appellant
[sic, Appellants] asserts that the clarifying language
is not indefinite, and request that the amendment be
entered and the rejection withdrawn (Brief, Paper No.
page 9).
We note that the “accompanying amendment” filed by the appellants
on May 20, 1999 was not entered by the examiner (Answer, Paper
No. 19, page 2). We also note that the appellants did not
present additional arguments in response to this particular
aspect of the rejection.
In response to the examiner’s rejection of claim 14 based on
the language “the digestion mixture,” the appellants state that
In the accompanying amendment sought, Appellant [sic,
Appellants] has incorporated the changes suggested by
the Examiner. Accordingly, Appellant [sic, Appellants]
requests that the amendment be entered and the
rejection withdrawn (Brief, Paper No. 16, page 9).
Again, we note that the “accompanying amendment” filed by the
appellants on May 20, 1999 was not entered by the examiner
(Answer, Paper No. 19, page 2). We also note that the appellants
Appeal No. 2000-1019
Application No. 08/623,852
8
did not present additional arguments in response to this
particular aspect of the rejection.
After careful review of the examiner’s and the appellants’
arguments, we will sustain the examiner’s rejection. The
definiteness of the claim 1 language “to render a metal value
insoluble” and the claim 14 language “the digestion mixture”
have not been argued by the appellants. For this reason, the
rejection of claims 1 and 14 may be properly sustained on this
ground alone. Therefore, we summarily affirm the rejection of
independent claims 1 and 14 under 35 U.S.C. § 112, 2nd paragraph,
and correspondingly, of dependent claims 2 through 13 and 15
through 17, respectively.
REJECTION OF CLAIMS 1 THROUGH 13
UNDER 35 U.S.C. § 112, 1st PARAGRAPH
The adequate written description requirement of 35 U.S.C.
§ 112, 1st paragraph, provides that
the specification shall contain a written description
of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.
Appeal No. 2000-1019
Application No. 08/623,852
9
“The function of the [written] description requirement is to
ensure that the inventor had possession, as of the filing date of
the application relied on, of the specific subject matter later
claimed by him; how the specification accomplishes this is not
material.” In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976).
To satisfy the written description requirement, the
disclosure of the application as originally filed must reasonably
convey to the artisan that the inventor had possession at that
time of the later claimed subject matter. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). It is not
necessary that the application describe the claim limitations
exactly, but only so clearly that persons of ordinary skill in
the art will recognize from the disclosure that applicants
invented the claimed subject matter. In re Wertheim, 541 F.2d
at 262, 191 USPQ at 96.
“[P]recisely how close the original description must come to
comply with the written description requirement of § 112 must be
determined on a case-by-case basis.” Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1561, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). The
examiner bears the initial burden of presenting a prima facie
case of unpatentability. In re Alton, 76 F.3d 1168, 1175,
Appeal No. 2000-1019
Application No. 08/623,852
10
37 USPQ2d 1578, 1583 (Fed. Cir. 1996). With regard to the
written description requirement, the burden is met with evidence
or reasons as to why persons skilled in the art would not
recognize in the disclosure a description of the invention
defined by the claims. Id. Once the examiner carries the
initial burden of making out a prima facie case of
unpatentability, the burden shifts to the applicant to overcome
the examiner’s case. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). To overcome a prima facie
case, an applicant must show that the invention as claimed is
adequately described to one skilled in the art. In re Alton,
76 F.3d at 1175, 37 USPQ2d at 1583. After evidence or argument
is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of
the evidence with due consideration to persuasiveness of
argument. In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
The examiner rejected claim 1, because the language “‘to
render a metal value insoluble’ and ‘being recovered and render
the one or more additional values insoluble’ are new matter”
(Answer, Paper No. 19, page 3). The examiner states that
in none of these locations [of the specification cited
by the appellants] is there support for the use of the
reducing agent “to render a metal value insoluble” nor
Appeal No. 2000-1019
Application No. 08/623,852
11
for the use of the sulfuric acid solution to “render
the one or more additional metal values insoluble” as
is now instantly claimed. The phrase “to render . . .
metal value(s) insoluble” is taken to mean to
precipitate metal values, and nowhere is there support
for this in the sections pointed to in the
specification above. Instant pg. 3, lines 29-34
supports precipitating UF4 but that only occurs when
fluoride ion and uranium are present in the process,
however the instant claims do not require either”
(Answer, Paper No. 19, pages 5 through 6).
We note that the language “to render a metal value insoluble”
and “being recovered and render the one or more additional values
insoluble” were added by amendment on February 26, 1998 (Paper
No. 9, page 1).
In response to the examiner’s rejection, the appellants
argue that the
language of claim 1, is supported throughout
Appellant’s [sic, Appellants’] specification, e.g. at
page 2, lines 16-28; at page 3, lines 13-28; and in the
Examples. Accordingly, the Examiner’s final rejection
of claims 1-13 as allegedly containing new matter was
in error (Brief, Paper No. 16, page 8).
After careful review of the examiner’s and the appellants’
arguments, we will sustain the examiner’s rejection. The
language “being recovered and render the one or more additional
metal values insoluble” suggests that more than one metal value
may be precipitated. However, the specification only discloses
the precipitation of one metal, uranium. Thus, the specification
Appeal No. 2000-1019
Application No. 08/623,852
12
fails to show that, as of the application filing date, the
appellants had possession of the now claimed process of rendering
“one or more additional metal values insoluble.” For this
reason, we will affirm the rejection of independent claim 1 under
35 U.S.C. §112, 1st paragraph, and correspondingly, of dependent
claims 2 through 13.
REJECTION OF CLAIMS 1 THROUGH 13
UNDER 35 U.S.C. §103(a) OVER BENDER IN VIEW OF PAZDEJ
The non-obviousness requirement of 35 U.S.C. § 103(a)
provides that
[a] patent may not be obtained though the invention is
not identically disclosed or described as set forth in
section 102 of this title, if the differences between
the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would
have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said
subject matter pertains.
The examiner bears the initial burden of factually
supporting a prima facie case of obviousness. In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). The
teachings of a prior art reference that discloses a range that
touches the range recited in the claim renders the claimed
invention prima facie obvious. In re Malagari, 499 F.2d 1297,
1303, 182 USPQ 549, 553 (CCPA 1974). Even though an applicant’s
Appeal No. 2000-1019
Application No. 08/623,852
13
modification results in great improvement over the prior art, it
may still not be patentable if the modification was within the
capabilities of one skilled in the art. In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). More particularly,
where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. Id. However, the
applicant can rebut the prima facie case of obviousness by
establishing the existence of unexpected properties in the range
claimed, or by showing that the prior art, in any material
respect, taught away from the claimed invention. In re Geisler,
116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997).
These ranges, which produce new and unexpected results, are
termed “critical” ranges, and the applicant has the burden of
proving such criticality. In re Aller, et al., 220 F.2d at 456,
105 USPQ at 235. To satisfy this burden, the new and unexpected
results must differ in kind, and not merely in degree. Id.
The examiner rejected claims 1 through 13 as being
“unpatentable over Bender ‘490 taken with Pazdej ‘777" (Answer,
Paper No. 19, page 4). The examiner argues that
Appeal No. 2000-1019
Application No. 08/623,852
14
Bender teaches the process of solubilizing metals
from metal containing material by contacting with
sulfuric acid containing a reducing agent and a carbon
source (see claims 1, 29, 36 and the examples) (id).
Bender differs in that the sulfuric acid
containing hydrofluoric acid is not stated (id).
Pazdej teaches the use of sulfuric acid and
hydrofluoric acid to solubilize metals (see the figures
and claims) (id at page 5).
It would have been obvious to one of ordinary
skill in the art at the time the invention was made to
use sulfuric acid containing hydrofluoric acid to
dissolve metals in the process of Bender because that
is what is taught by Pazdej as desirable (id).
The subject matter as a whole would have been
obvious to one having ordinary skill in the art at the
time the invention was made to select the portion of
the prior art’s range which is within the range of
applicant’s claims because it has been held to be
obvious to select a value in a known range by
optimization for the best results, see In re Aller, 105
USPQ 233 (id).
The subject matter as a whole would have been
obvious to one having ordinary skill in the art at the
time the invention was made to have selected the
overlapping portion of the range disclosed by the
reference because overlapping ranges have been held to
be a prima facie case of obviousness, In re Malagari,
182 USPQ 549 (id).
In response to the examiner’s rejection, the appellants
begin by arguing that
Bender contains no disclosure relating to a process for
recovering metal values which utilizes a reducing agent
and a carbon source which differs from the reducing
agent. The Examiner noted that the claims of the
present invention do not require that the reducing
agent and the carbon source be different materials.
See Office Action, May 6, 1998, p. 4. However,
Appellant has requested that its claims be amended to
more specifically claim this aspect of the present
Appeal No. 2000-1019
Application No. 08/623,852
15
invention pursuant to 37 C.F.R. 1.116. See Attached
Copy of 37 C.F.R. 1.116 Amendment (Brief, Paper No. 16,
pages 11 through 12).
Next, the appellants, in essence, argue that even if a
reductant (e.g. carbonaceous material) can also be a carbon
source, “Bender does not teach or disclose the use of more than
one reductant source at any point in the specification, including
the examples (id, page 16). The appellants state that
the term “mixtures thereof” as used in claim 36 likely
refers to a raw mineral, such as an ore, a mining
waste, or a milling waste, that contains both sulfide
materials and carbonaceous materials (Brief, Paper No.
16, page 12).
Third, the appellants attempt to distinguish their carbon
source from the one in Bender by arguing that
[t]he present invention also differs from Bender in its
use of carbon. Carbonaceous materials are used as a
reductant in Bender when the ore containing precious
metals is an MnO2 ore. See Bender, 5:28-31. In
contrast, the carbon source in the present invention is
used as a catalyst in the reduction of uranium
initiated by a separate reductant, such as iron. . . .
Since different materials are being reduced, uranium in
the present invention and manganese in Bender, the role
of carbon in the respective processes is also different
(Brief, Paper No. 16, page 12).
Fourth, the appellants attempt to distinguish from Bender
the operation of their reducing agent. The appellants argue
[t]he present invention also differs from Bender in
relation to the operation of the reducing agent. The
reducing agent in the present invention renders a metal
Appeal No. 2000-1019
Application No. 08/623,852
16
value insoluble. See Claim 1. . . . Conversely, the
reducing agent in Bender reduces manganese from Mn4+ to
Mn2+ enabling it to form MnCl2 or MnSO4, depending on
the solution, which is soluble in the leach. See
Bender, 5:60-64 (Brief, Paper No. 16, page 13).
Fifth, the appellants argue that neither Bender nor Pazdej
teaches the desirability of using a sulfuric acid solution
containing hydrofluoric acid. The appellants state that
Bender does not teach or suggest the use of a
sulfuric acid solution containing hydrofluoric acid. .
. . However, the Examiner cited Pazdej as teaching the
use of sulfuric acid and hydrofluoric acid to
solubilize metals. . . .
[T]he claims of Pazdej never even mention
hydrofluoric acid. . . .
The only disclosure in Pazdej that suggests the
use of sulfuric acid and hydrofluoric acid is found in
the figures. See Pazdej, Figures 1-2. . . . [T]he
Pazdej specification does not indicate the function of
the hydrofluoric acid stream.
The disclosure of Pazdej would not suggest to a
person of ordinary skill in the art that hydrofluoric
acid may be added to a sulfuric acid solution to place
fluoride ions into solution in order to precipitate
undesirable metal values (Brief, Paper No. 16, pages 13
through 14).
After careful review of the examiner’s and the appellants’
arguments, we will sustain the examiner’s rejection. Regarding
the appellants’ first argument, a plain reading of claim 1 does
not require that the reducing agent and the carbon source be
different materials. Thus, the carbonaceous material in Bender
can be both a reductant and a carbon source within the meaning of
Appeal No. 2000-1019
Application No. 08/623,852
17
appellants’ claim 1. Also, claim 36 of Bender teaches the use of
a mixture of reductants, which includes sulfide materials and
carbonaceous materials (Bender, column 55, lines 8 through 10).
Examples of carbonaceous materials include coal (id, column 9,
line 7). Accordingly, the sulfide material meets the reducing
agent limitation of claim 1, while the carbonaceous material
meets the carbon source limitation of that claim.
Regarding the appellants’ second argument, the appellants’
position that the mixture of sulfide and carbonaceous materials
appear to come from a single source, rather than more than one
source, and thus, cannot be a reducing agent and carbon source
within the meaning of claim 1, is not well taken. It is a
general proposition that, during examination, claims are given
their broadest reasonable interpretation consistent with the
specification. In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1667 (Fed. Cir. 2000). There is no claim limitation that the
reducing agent and the carbon source originate from different
sources. Nor does the specification constrain us to adopt the
narrower interpretation urged by the appellants. Claim 1 only
requires the presence of a reducing agent and a carbon source
(Brief, Paper No. 16, Appendix, claim 1). Therefore, we are not
persuaded by the appellants’ second argument.
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Application No. 08/623,852
18
Regarding the appellants’ third argument, claim 1 does not
limit the use of carbon as a catalyst. It merely requires its
presence (id). The discussion pertaining to “broadest reasonable
interpretation” in the previous paragraph applies equally here.
Therefore, we are not persuaded by the appellants’ argued
distinction in the role of their carbon source.
Regarding the appellants’ fourth argument, claim 1 requires
“a reducing agent to render a metal value insoluble” (Brief,
Paper No. 16, Appendix, claim 1). The appellants’ specification
teaches that the reducing agent (iron) does not directly make a
metal value (uranium) insoluble as the claim language suggests.
Rather, the presence of the reducing agent (iron) plays an
indirect role in the precipitation of uranium. The uranium is
reduced from U6+ to U4+ in the presence of iron so that it can
react with fluoride ions to form UF4, which is insoluble
(Specification, page 3, lines 29 through 36, page 4, lines 1
through 2).
Bender teaches the precipitation of metals, including iron,
manganese, zinc, and lead (Bender, column 13, line 49, column 17,
Appeal No. 2000-1019
Application No. 08/623,852
3Iron can be precipitated in the presence of a monovalent cation, such
as H+, Na+, K+, or NH4+ (id, column 13, lines 49 through 52). Manganese and
zinc can be precipitated with lime (id, column 17, lines 23 through 25, column
19, lines 30 through 39). Lead can be precipitated in the presence of a
sulfidizing reagent (id, column 19, lines 40 through 42).
19
lines 23 through 24, column 19, lines 30 through 45).3 While the
precipitation of such metals occurs downstream, we note that
Bender’s process is continuous (id, column 19, line 5). Thus,
reducing agents from the leaching zone would be present during
the precipitation of the above mentioned metals. Additionally,
Bender teaches that lead can be precipitated in the presence of a
sulfidizing reagent (id, column 19, lines 40 through 42).
Furthermore, Bender discloses that a sulfidic material may be a
reductant (id, column 8, lines 42 through 43). Therefore, we are
of the opinion that Bender satisfies the claim 1 requirement of
“a reducing agent to render a metal value insoluble,” because
Bender discloses the use of a reducing agent wherein, ultimately,
a metal is being precipitated.
For example, the manganese in Bender is initially reduced
from Mn4+ to Mn2+ by a reducing agent, enabling it to form a
soluble compound (Bender, column 5, lines 60 through 62).
Subsequently, the manganese is precipitated with lime (id, column
15, lines 23 through 25). As addressed two paragraphs prior, a
reducing agent need only have an indirect involvement with the
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Application No. 08/623,852
20
precipitation of a metal to satisfy the claim 1 language of “a
reducing agent to render a metal value insoluble.” The reducing
agent in Bender plays such an indirect role by initially reducing
the manganese, enabling it to form a soluble compound, and then
allowing it to be indirectly rendered insoluble with lime.
Analogously, the appellants’ reducing agent reduces uranium,
allowing it to be indirectly rendered insoluble with fluoride
ions (Specification, page 3, lines 29 through 36, page 4, lines 1
through 2).
Regarding the appellant’s fifth argument, the figures of
Pazdej show the use of sulfuric and hydrofluoric acid in its
leaching process (Pazdej, Figures 1 and 2). The appellants’
position that the disclosure of Pazdej would not suggest to one
of ordinary skill in the chemical arts to use fluoride ions from
hydrofluoric acid to precipitate metal-fluoride compounds is not
well-taken. But more importantly, the hydrofluoric acid
limitation is found in claim 2, but not claim 1 (Brief, Paper No.
16, Appendix, claim 1 and 2). As stated in the Grouping of
Claims section, our discussion addressing the rejection under
35 U.S.C. § 103(a) will be limited to independent claim 1.
Therefore, the obviousness of using hydrofluoric acid to
Appeal No. 2000-1019
Application No. 08/623,852
21
precipitate undesirable metal values has no bearing on our
discussion of this rejection.
In sum, Bender discloses a process of solubilizing metals
from a metal containing material by contacting it with sulfuric
acid, a reducing agent, and a carbon source (Bender, column 4,
lines 57 through 63, column 8, lines 42 through 44, column 9,
lines 5 through 7). Bender also discloses heating the mixture to
temperatures ranging from 85 to 91°C, with specific examples at
85, 89, 90 and 91°C (Bender, column 34, lines 34 through 41,
column 35, lines 52 through 60, column 42, lines 33 through 41,
column 43, lines 25 through 33). The court in In re Wertheim
teaches that “the disclosure in the prior art of any value within
a claimed range is an anticipation of the claimed range.” 541
F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976). Bender clearly
discloses four values within the appellants’ claimed range of 75-
95°C. Furthermore, Bender discloses the separation of the
resulting solution from the remaining solids (Bender, Figures 1
through 10).
Although claim 1 stands rejected under 35 U.S.C. § 103(a)
over Bender in view of Pazdej, it appears that Bender, alone,
discloses every limitation of claim 1. The court in In re
Fracalossi has stated that a claimed invention “cannot have been
Appeal No. 2000-1019
Application No. 08/623,852
22
anticipated and not have been obvious. [E]vidence establishing
lack of all novelty in the claimed invention necessarily
evidences obviousness.” 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982). Therefore, we will sustain the examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a) over Bender in
view of Pazdej, and correspondingly, of dependent claims 2
through 13.
Appeal No. 2000-1019
Application No. 08/623,852
23
SUMMARY
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO DELMENDO )
Administrative Patent Judge )
BRG/jrg
Appeal No. 2000-1019
Application No. 08/623,852
24
THOMAS E. KELLEY
CABOT CORPORATION
157 CONCORD ROAD
BILLERICA, MA 01821