Ex parte Hartmann

Board of Patent Appeals and Interferences

Feb 12, 1999

08011563 (B.P.A.I. Feb. 12, 1999)

Application for patent filed February 1, 1993. 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journal and (2) is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ACHIM HARTMANN
____________
Appeal No. 95-2245
Application No. 08,011,5631
____________
HEARD: January 11, 1999
____________
Before JOHN D. SMITH, PAK, and WARREN, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Achim Harmann (appellant) appeals from the examiner’s
final rejection of claims 1, 3, 4 and 6 through 12, which are
all of the claims remaining in the application.
Claim 1 is representative of the subject matter on appeal
and reads as follows:
Appeal No. 95-2245
Application No. 08,011,563
2
1. A process for hydrolysis of carbonyl sulfide comprising
the steps of obtaining a catalyst constituting sintered
titanium dioxide particles as a by-product in preparation of
titanium dioxide via a chloride process and contacting a
mixture of carbonyl sulfide and water with the catayst.
The references of record relied upon by the examiner are:
Matijevic et al. (Matijevic) 4,241,042 Dec.
23, 1980
Nozue et al. (Nozue) 4,511,668 Apr. 16,
1985
Hums 4,847,234 Jul.
11, 1989
Quemere 5,171,551 Dec. 15,
1992
(effective filing date April 30, 1987)
The appealed claims stand rejected as follows:
(1) Claims 1, 3, 4 and 6 through 12 under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention;
(2) Claims 1, 3, 4 and 6 through 12 under 35 U.S.C. §
112, first paragraph, as lacking descriptive support for the
Appeal No. 95-2245
Application No. 08,011,563
We note that the examiner has objected to the2
specification for including the content of U.S. Patent No.
4,784,841 which is not supported in the disclosure as
originally filed. However, we decline to comment on the
propriety of the examiner’s objection to the specification
inasmuch as it should be reviewed by way of petition. Compare
MPEP 608.04(c) (Rev. 3, July 1997). Note that the objection
can be overcome by deleting any reference to U.S. Patent No.
4,784,841.
3
invention as is now claimed in the disclosure as originally
filed ;2
(3) Claims 1, 3, 4 and 6 through 12 under 35 U.S.C. 103
as unpatentable over the combined disclosures of Quemere,
Nozue and Matijevic; and
(4) Claims 3 and 7 under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of Quemere, Nozue, Matijevic and
Hums.
We have carefully reviewed the entire record, including
all of the arguments advanced by the examiner and appellant in
support of their respective positions. For the reasons well
articulated by appellant in his Brief, we determine that all
of the examiner’s rejections are not well taken. Accordingly,
we will not sustain the examiner’s rejections for essentially
Appeal No. 95-2245
Application No. 08,011,563
4
those reasons set forth in the Brief. We add the following
primarily for emphasis.
Indefiniteness
The purpose of the second paragraph of Section 112 is to
basically insure, with a reasonable degree of particularity,
an adequate notification of the metes and bounds of what is
being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970). As the court stated in In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), the
determination of whether the claims of an application satisfy
the requirements of the second paragraph of Section 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reasonable degree of precision and particularity.
It is here where the definiteness of language
employed 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
level of skill in the pertinent art. [Emphasis ours;
footnote omitted.]
Here, the examiner argues that the meaning of “a chloride
process that has a by-product of titanium dioxide” is unclear
under 35 U.S.C. § 112, second paragraph. In so arguing, the
examiner ignores the teachings of the application disclosure.
Appeal No. 95-2245
Application No. 08,011,563
5
According to page 1 of the specification, “a chloride process”
means:
An example of a manufacturing process which produces
sulfur as a by-product is the preparation of
titanium dioxide pigments via vapor phase oxidation
of titanium tetrachloride (the so-called chloride
process). In this process titanium-containing ores
or slags are chlorinated in a reducing atmosphere in
a reactor at about 1000 C. Carbonaceous materials,o
such as petrol coke are used as a reducing agent.
The gas mixture leaving the reactor contains besides
the metal chlorides (particularly titanium
tetrachloride and various metal chlorides), coke,
unreacted ore, silicon dixoide, carbon dioxide,
carbon monoxide, nitrogen, hydrogen chloride and,
because of the sulfur content of the coke, carbonyl
sulfide. After further treatment, the exhaust gas
is burned before introduction into the atmoshphere
because of its carbon monoxide content; in this
burning, carbonyl sulfide is converted into sulfur
dioxide and carbon dioxide and carbon dioxide. The
sulfur compound must be removed from the exhaust
gases under existing regulations.
The language in claim 1 also clearly requires that sintered
titanium dioxide recovered as a by-product from this chloride
process be used as a catalyst. Under this circumstance, we do
not believe that it can seriously be contended that the
artisan would not understand the meaning of “a chloride
process that has a by-product of titanium dioxide”.
Accordingly, we reverse the examiner’s decision rejecting
Appeal No. 95-2245
Application No. 08,011,563
6
claims 1, 3, 4 and 6 through 12 under 35 U.S.C. § 112, second
paragraph.
Description Requirement
The description requirement found in the first paragraph
of 35 U.S.C. § 112 is separate from the enablement requirement
of that provision. See In re Wilder, 736 F.2d 1516, 222 USPQ
369 (Fed. Cir. 1984); In re Barker, 559 F.2d 588, 194 USPQ 470
(CCPA 1977), cert. denied, sub. nom, Barker v. Parker, 434
U.S. 1238 (1978). Moreover, as the court stated in In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983):
The test for determining compliance with the written
description requirement is whether the disclosure of
the application as originally filed reasonably
conveys to the artisan that the inventor had
possession at that time of the later claimed subject
matter, rather than the presence or absence of
literal support in the specification for the claimed
language.
The language in original claims must also be taken into
consideration in determining compliance with the written
description requirement. See In re Smith, 481 F.2d 910, 914,
178 USPQ 620, 624 (CCPA 1973); In re Gardner, 475 F.2d 1389,
1391, 177 USPQ 396, 397 (CCPA 1973). In other words, the
Appeal No. 95-2245
Application No. 08,011,563
7
original application disclosure as a whole must be considered
with the recognition that the claimed subject matter need not
be described in haec verba in the original disclosure to
satisfy the description requirement. See In re Wright, 866
F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989). Precisely how close
the original description must be to the claim language to
comply with the description requirement must be determined on
a case-by-case basis. The inquiry into whether the
description requirement is met is a question of fact. See In
re Wilder, supra.
Here, the examiner asserts that the claim language
“sintered titanium dioxide particles as a by-product” does not
appear in the original application disclosure. Contrary to
the examiner’s assertion, however, the specification as
originally filed describes (page 3) that:
sintered titanium dioxide particles, also known as
scrub solids have been found to be particularly
useful. These particles are used in the preparation
of titanium dioxide according to the chloride
process, if the reaction gases are to be cooled via
indirect heat exchange, in that the cooling area can
be maintained extensively free of unwanted coatings.
The particles, though a by-product in the
preparation of titanium dioxide, are believed
available from other processes and sources as well.
Appeal No. 95-2245
Application No. 08,011,563
8
Their use as inert particulate material is described
in, for example, U.S. Patent No. 4,455,288 and
4,784,841. Such scrub particles consist of titanium
dioxide, which may be subjected to additional
calcining and have a particle size preferable above
0.15 mm.
Consistent with this passage in the specification, original
claims 2 and 5 recite:
2. The process according to Claim 1, wherein the
titanium dioxide catalyst is sintered titanium
dioxide particles.
5. The process according to Claim 1, wherein the
titanium dioxide particles are obtained as a by-
product in preparation of titanium dioxide according
to the chloride process.
From our perspective, the above passage alone, or together
with original claims 2 and 5, clearly conveys to the artisan
that the inventor had possession of the invention now claimed
at the time the application was filed. Accordingly, we
reverse the examiner’s decision rejecting claims 1, 3, 4 and 6
through 12 under 35 U.S.C. § 112, first paragraph.
Obviousness
The obviousness of an invention cannot be established by
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination. See ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
Appeal No. 95-2245
Application No. 08,011,563
9
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). This does not mean
that the cited prior art references must specifically suggest
making the combination. See B.F. Goodrich Co. V. Aircraft
Braking Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401, 1403, 7
USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather, the test for
obviousness is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981).
The claimed subject matter is directed to a process
involving at least two positive steps, with the first step
being drawn to obtaining sintered titanium dioxide as a by-
product in preparation of titanium dioxide via a chloride
process and the second step being drawn to using the resultant
sintered titanium dioxide as a catalyst for promoting
hydrolysis of carbonyl sulfide in the presence of water. See
claim 1. According to page 1 of the specification, “a
chloride process” is defined as:
Appeal No. 95-2245
Application No. 08,011,563
10
An example of a manufacturing process which produces
sulfur as a by-product is the preparation of
titanium dioxide pigments via vapor phase oxidation
of titanium tetrachloride (the so-called chloride
process). In this process titanium-containing ores
or slags are chlorinated in a reducing atmosphere in
a reactor at about 1000 C. Carbonaceous materials,o
such as petrol coke are used as a reducing agent.
The gas mixture leaving the reactor contains besides
the metal chlorides (particularly titanium
tetrachloride and various metal chlorides), coke,
unreacted ore, silicon dioxide, carbon dioxide,
carbon monoxide, nitrogen, hydrogen chloride and,
because of the sulfur content of the coke, carbonyl
sulfide. After further treatment, the exhaust gas
is burned before introduction into the atmosphere
because of its carbon monoxide content; in this
burning, carbonyl sulfide is converted into sulfur
dioxide and carbon dioxide. The sulfur compounds
must be removed from the exhaust gases under
existing regulations.
This chloride process is admittedly known. See Specification,
page 1.
In rejecting claim 1, the broadest claim on appeal, the
examiner relies only on the Quemere reference. According to
the examiner (Answer, page 4), “the Quemere reference
discloses ... hydrolysis of carbonyl sulfide in a gas mixture
using titanium dioxide particles.” The examiner then
concludes (Answer, page 5) that:
it would have been obvious to one of ordinary skill
in the art at the time the invention was made to use
any available source of titanium dioxide in
Appeal No. 95-2245
Application No. 08,011,563
11
Quemere's process because the Quemere reference
requires no specific source from which to obtain the
titanium dioxide and a skilled artisan would be
motivated by economics to depart from the prior art
to reduce costs consistent with the desired product
properties, In re Clinton 188 USPQ 365, In re
Thompson 192 USPQ 275.
It appears to be the examiner’s conclusion that it would have
been obvious to employ by-product sintered titanium dioxide
from an admittedly known chloride process as a catalyst for
promoting hydrolysis of carbonyl sulfide. However, the
examiner’s conclusion is not supported by evidence. We find
that the examiner does not refer to any evidence which
indicates that the existence of sintered titanium dioxide as a
by-product in a chloride process was known to those skilled in
the art at the time the application was filed. We also find
that the examiner has not demonstrated that sintered titanium
dioxide was known to be useful as a catalyst for the
hydrolysis of carbonyl sulfide at the time the application was
filed. Without such knowledge, we cannot find any motivation
or suggestion to employ the sintered titanium dioxide by-
product from a chloride process for hydrolyzing carbonyl
Appeal No. 95-2245
Application No. 08,011,563
It is relied upon to reject only claims 3 and 8 which3
are dependent on claim 1.
12
sulfide in the presence of water, much less obtain sintered
titanium dioxide as a by-product from a chloride process.
The examiner alternatively asserts that a step for
obtaining sintered titanium oxide as a by-product of a
chloride process is not entitled to any patentable weight
because it is tantamount to claiming a catalyst in a product-
by-process format. See Answer, pages 5 and 6. This
assertion, however, is inapposite to the present situation
since the present claims recite a two-step process, rather
than a single step process involving the employment of a
catalyst which is defined by a product-by-process format. See
In re Hirao, 535 F.2d 67, 69, 190 USPQ 15, 17 (CCPA 1976).
Although the examiner does not refer to the Hums
reference in rejecting claim 1 in a statement of rejection3
(Answer, page 4), the examiner states that it teaches at
column 5, lines 9-11, sintering titanium dioxides in order to
attach the resulting titanium dioxide to a support material
(Answer, page 8). However, not only we do not find such a
teaching at column 5, lines 9-11 of the Hum reference, but
Appeal No. 95-2245
Application No. 08,011,563
13
also the resulting sintered titanium dioxide is used to remove
nitrogen oxides in flue or waste gases. See column 2, lines
39-49 and column 3, lines 42-57. Nowhere does the Hum
reference indicate that sintered titanium dioxide would be
useful for hydrolyzing carbonyl sulfide. Nor does the Hum
reference indicate that sintered titanium dioxide is known to
exist as a by-product in a chloride process.
Since the examiner does not rely on the remaining prior
art to remedy the above deficiencies, we conclude that the
examiner has not supplied sufficient evidence to establish a
prima facie case of obviousness. Hence, we reverse the
examiner’s decision rejecting the appealed claims under 35
U.S.C. § 103.
Appeal No. 95-2245
Application No. 08,011,563
14
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
lp
Appeal No. 95-2245
Application No. 08,011,563
15
MICHAEL J. CRONIN
P.O. BOX 700
WYCKOFFS MILL ROAD
HIGHTSTOWN, NJ 08520
Leticia
Appeal No. 95-2245
Application No. 08,011,563
APJ PAK
APJ WARREN
APJ SMITH, JOHN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): 103
Prepared: September 27, 1999
Draft Final
3 MEM. CONF. Y N
HEARD CASE /GAU 1103
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT