Ex parte Hartmann

Board of Patent Appeals and Interferences

Aug 22, 2001

08552407 (B.P.A.I. Aug. 22, 2001)

The amendment dated May 5, 1997, Paper No. 5, was1
refused entry by the examiner in the Advisory Action dated May
8, 1997, Paper No. 6. The response and Declaration under 37
CFR § 1.132 dated July 21, 1997, Paper Nos. 9 and 10,
respectively, was considered by the examiner as per the
Advisory Action dated July 31, 1997, Paper No. 11.
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publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ACHIM HARTMANN
____________
Appeal No. 1998-2248
Application No. 08/552,407
____________
HEARD: April 26, 2001
____________
Before WARREN, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1 through 16,
which are the only claims pending in this application.1
According to appellant, the invention is directed to the
manufacture of titanium dioxide by the chloride process where a
Appeal No. 1998-2248
Application No. 08/552,407
All citations to the Brief refer to the substitute Brief2
dated Dec. 22, 1997, Paper No. 16.
In the interest of judicial economy, we have grouped the3
rejections of claim 2 and claims 9 and 11-16 together since
these claims were rejected under section 103 over the same
combination of references. We do likewise for the rejections
of claims 3 and 10 infra.
2
single stage separation is accomplished on the output from the
fluidized bed chlorinator with the underflow from a
hydrocyclone recycled to the chlorination process (Brief, pages
2-3). A copy of illustrative claims 1 and 9 is attached as an2
Appendix to this decision.
The examiner has relied upon the following references as
evidence of obviousness:
Oppegaard et al. (Oppegaard) 3,050,362 Aug. 21, 1962
Hildreth 3,227,545 Jan. 4, 1996
Paige et al. (Paige), “Physical Beneficiation of Titanium Plant
Solid Wastes: Recovery of Titanium Minerals and Coke,” Bureau
of Mines Report of Investigations, pp. 1-23 (1982).
Claims 1 and 4-8 stand rejected under 35 U.S.C. § 103 as
unpatentable over Paige (Answer, page 4). Claims 2, 9 and 11-
16 stand rejected under 35 U.S.C. § 103 as unpatentable over
Paige in view of Hildreth (Answer, pages 8 and 10). Claims 33
and 10 stand rejected under 35 U.S.C. § 103 as unpatentable
Appeal No. 1998-2248
Application No. 08/552,407
3
over Paige in view of Hildreth and Oppegaard (Answer, pages 9
and 11). We reverse all of the examiner’s rejections
essentially for the reasons stated in the Brief and the reasons
below.
OPINION
Appellant and the examiner do not contest the findings of
the examiner regarding Paige (see the Answer, pages 4-6; Brief,
page 12). However, appellant and the examiner disagree as to
the scope of the claims, e.g., claim 1, with the examiner
stating that the “comprising” language of the claim does not
exclude the gravity concentration steps of Paige while
appellant argues that his invention requires only a single
separation and need not undergo additional processes (Answer,
pages 6 and 12; Brief, page 16). The examiner’s further
position is that, regardless of the claim construction, it
would have been obvious to one of ordinary skill in the art to
eliminate a process step in Paige along with its function
(Answer, pages 6 and 12).
Implicit in our review of the examiner’s obviousness
analysis is that the claim must first have been correctly
Appeal No. 1998-2248
Application No. 08/552,407
4
construed to define the scope and meaning of each contested
limitation. See Gechter v. Davidson, 116 F.3d 1454, 1460 n.3,
43 USPQ2d 1030, 1035 n.3 (Fed. Cir. 1997). Accordingly, we
must construe claim 1 on appeal to define its scope and
meaning.
The examiner is correct in stating that use of the
transitional language “comprising” is “open-ended” and means
that the named elements are essential, but other elements may
be added and still be within the scope of the claim. See
Vehicular Technologies Corp. v. Titan Wheel International Inc.,
212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000);
Genentech Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d
1608, 1613 (Fed. Cir. 1997). However, in claim 1 on appeal,
the “named elements” that are listed as essential include steps
(c) and (d), where step (c) produces a titanium dioxide-rich
fraction from the hydrocyclone classification and step (d)
requires that this recovered titanium dioxide-rich fraction be
returned to the chlorination reactor. Accordingly, we
determine that the claimed transitional language “comprising”
is restricted by the named steps requiring that the recovered
Appeal No. 1998-2248
Application No. 08/552,407
5
titanium dioxide-rich fraction is returned to the chlorination
reactor.
In view of the claim construction supra, we determine that
the examiner’s findings from Paige do not establish a prima
facie case of obviousness. As recognized by the examiner,
Paige teaches recycle of a titanium dioxide-rich fraction from
the hydrocyclone that has been treated by gravity concentration
(i.e., tabling; see the Answer, page 6, and Paige, page 23,
left column). The examiner has failed to present any
convincing evidence or reasoning to support a conclusion that
it would have been obvious to recycle the untreated underflow
fraction from the hydrocyclone (i.e., Sample C). The
examiner’s position that omission of a step (i.e., gravity
concentration) with its attendant loss of function would have
been obvious is not supported by the teachings of Paige that
gravity concentration is essential to the recycle process. See
Paige, paragraph bridging pages 8-9, where it is taught that
Sample C (hydrocyclone waste) is subjected to gravity
concentration and a sizing step to remove silica gangue “since
all of the commercial producers expressed concern about the
Appeal No. 1998-2248
Application No. 08/552,407
Claims 2 and 9, and dependent claims 3 and 10-16,4
respectively, recite an additional step of grinding the
recovered titanium dioxide-rich fraction so that at least 50%
of the particles of the fraction are smaller than 0.1 mm.
6
silica content of potential recycle concentrates.” The gravity
separation scheme results in a much higher concentration of
titanium dioxide and a much lower amount of silica (see Sample
C, page 11, right column, compared with Sample C, page 4, Table
1). Paige also teaches the benefits of installing a
hydrocyclone in the waste stream circuit before gravity
concentration to recover a high-grade titanium ore and that
only the recovered concentrate could be recycled (page 22, left
column, first paragraph, and right column, first two
paragraphs). Finally, Paige teaches waste materials “treated
by gravity concentration to produce a recyclable titanium
concentrate” where the amount of titanium dioxide in the
gravity concentrate ranges from 69 to 90.7 weight % and “should
be recyclable” (page 23).
With regard to the examiner’s rejections applying Paige in
combination with Hildreth against claims reciting the
additional process step of grinding before recycling, our4
comments above about Paige equally apply. Additionally, we
Appeal No. 1998-2248
Application No. 08/552,407
7
agree with appellant that Paige teaches away from grinding and
suggests agglomeration is necessary before recycling (Brief,
pages 13-14). Paige teaches that the fine particle size of the
recovered concentrate and coke flotation product would require
agglomeration to the size of the virgin feedstock before they
could be recycled or these particles would be entrained in the
gas stream and lost (page 22, right column; “pelletization” is
taught on page 23, left column). The examiner’s application of
Hildreth fails to remedy this deficiency in Paige. The
examiner applies Hildreth to show an “analogous process” where
the feedstock is crushed and ground to a desired particle size
of 100% minus 200 mesh (i.e., less than 74 microns or 0.074 mm;
Answer, pages 8-9).
Evidence of a suggestion, teaching, or motivation to
combine references may flow from the references themselves, the
knowledge of one of ordinary skill in this art, or from the
nature of the problem to be solved. See Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1630 (Fed. Cir. 1996). “The showing must be clear and
particular.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
Appeal No. 1998-2248
Application No. 08/552,407
8
1614, 1617 (Fed. Cir. 1999). The examiner has not presented
any convincing evidence or reasoning why the combined prior art
references suggest the desirability of making the proposed
modification. The examiner has only found that Paige teaches
that the recycled material must be of the size range of the
virgin feedstock (Answer, page 8, citing Paige, page 22, right
column, second full paragraph). The examiner has not presented
any convincing evidence or reasoning why one of ordinary skill
in the art would desire the particle size range taught by
Hildreth in the process of Paige. See Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
Hildreth teaches that “[f]or extraction of vanadium with
gaseous chlorine, it has been established that the material
should be crushed to at least -10 mesh and crushing to -200
mesh is sometimes desirable.” See col. 2, ll. 38-41. Since
Paige is not specific to the extraction of vanadium by
chlorination and the examiner has not presented any convincing
reasons for the combination of references, we determine that
the examiner has failed to meet the initial burden of
Appeal No. 1998-2248
Application No. 08/552,407
9
establishing a prima facie case of obviousness. Accordingly,
the Fiand Declaration under
37 CFR § 1.132 (Exhibit G attached to the Brief) need not be
considered. See In re Geiger, 815 F.2d 686, 688, 2 USPQ2d
1276, 1278 (Fed. Cir. 1987).
The Oppegaard reference was applied by the examiner to
show that drying of leached material before recycling was known
in an “analogous process” (Answer, pages 9-10). Therefore
Oppegaard does not remedy the deficiencies noted above with
respect to Paige and Hildreth.
For the foregoing reasons and those set forth in the
Brief, we determine that the examiner has not established a
prima facie case of obviousness in view of the reference
evidence. Accordingly, the rejection of claims 1 and 4-8 under
35 U.S.C.
§ 103 over Paige is reversed. Similarly, the rejections of
claims 2, 9 and 11-16 under 35 U.S.C. § 103 over Paige in view
of Hildreth are reversed. The rejections of claims 3 and 10
under 35 U.S.C. § 103 over Paige in view of Hildreth and
Oppegaard are also reversed.
Appeal No. 1998-2248
Application No. 08/552,407
10
The decision of the examiner is reversed.
REVERSED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
jg
Appeal No. 1998-2248
Application No. 08/552,407
11
MICHAEL J. CRONIN
RHEOX INC KRONOS INC.
WYCKOFFS MILL ROAD
HIGHTSTOWN, NJ 08520
Appeal No. 1998-2248
Application No. 08/552,407
12
APPENDIX
1. In a process for the production of titanium dioxide
by chlorination of titanium-containing ore in a fluidized bed
chlorination reactor which includes discharging from the
reactor a mixture comprising metal chlorides and other material
including unreacted titanium dioxide (Ti0 ) and silica (Si0 )2 2
from the ore, and coke, the improvement comprising;
(a) cooling the mixture to form a solid mixture
containing solid particles of
condensed metal chlorides and
titanium dioxide, coke and silica,
(b) suspending the solid mixture in an aqueous
suspension,
(c) classifying the solids particles of the aqueous
suspension in a hydrocyclone or hydrocyclones
connected in parallel to create two recovered
fractions one of which is titanium dioxide-rich but
which still contains some quantity of silica and coke;
(d) and then without any further classification step
returning the recovered titanium dioxide-rich
fraction to the chlorination reactor in a stream
with chlorine-containing gas.
9. In a process for the production of titanium dioxide
by chlorination of titanium-containing ore in a fluidized bed
chlorination reactor which includes discharging from the
reactor a mixture comprising metal chlorides and other
material including unreacted titanium dioxide (Ti0 ) and2
silica (Si0 ) from the ore, and coke, the improvement2
comprising;
(a) cooling the mixture to form a solid mixture
containing solid particles of condensed metal
chlorides and titanium dioxide, coke and
silica,
Appeal No. 1998-2248
Application No. 08/552,407
13
(b) suspending the solid mixture in an aqueous
suspension,
(c) classifying the solids particles of the aqueous
suspension in a hydrocyclone or hydrocyclones
connected in parallel to create two recovered
fractions one of which is titanium dioxide-rich but
which still contains some quantity of silica and coke;
(d) grinding the recovered titanium dioxide-rich
fraction so that at least about SO % of the
particles of the fraction are smaller than 0.1 mm, and
(e) and then without any farther classification step
returning the ground recovered titanium dioxide-
rich fraction to the chlorination reactor.
Jenine Gillis
Appeal No. 1998-2248
Application No. 08/552,407
Copies:
______ APJ WALTZ
______ APJ TIMM

______ APJ WARREN
DECISION: REVERSED
Panel Change: Yes No
Prepared: July 16, 2002
3 MEM. CONF. Y N
OB/HD
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