Ex Parte Helberg

Patent Trial and Appeal Board

Aug 21, 2018

13980580 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/980,580 07/19/2013
129406 7590
The Chemours Company
Patent Legal Group
1007 Market Street
8072
Wilmington, DE 19801
08/23/2018
FIRST NAMED INVENTOR
Lisa Edith Helberg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TT0126USPCT 6540
EXAMINER
DOYLE, BRANDI M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/23/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentlegal@chemours.com
gwen.a.wilson@chemours.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA EDITH HELBERG
Appeal2017-009950
Application 13/980,580
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 5-11, and 13-16. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
The subject matter of this appeal relates to "a process for purifying
TiCl4 produced via a chloride process" which is a critical step in titanium
metal manufacture. Spec. 1:9-10, 1 :22-24. More specifically, tin metal or
1 This decision makes reference to the Specification filed July 19, 2013
("Spec."), the Final Office Action dated July 14, 2016 ("Final Act."), the
Appeal Brief filed January 10, 2017 ("Br."), and the Examiner's Answer
dated May 19, 2017 ("Ans.").
Appeal2017-009950
Application 13/980,580
SnCb is used to remove vanadium from crude TiC14 produced via the
chloride process. Id. 3:13-15. Claim 1 is illustrative (disputed elements
italicized):
1. A process for the purification of TiC 14 comprising the steps
of:
(a) contacting vanadium-containing crude TiC1 4 with tin to
produce purified TiCl4, SnCl4, and solid vanadium; and
(b) separating the solid vanadium from the purified TiCl4
and SnCl4;
wherein the contacting and separating steps are performed by
a two stage process comprising:
(i) reducing the vanadium content in the vanadium-
containing crude TiC1 4 by contacting the vanadium-
containing crude TiC1 4 with a less than excess amount of
tin to produce partially purified TiCl4, SnCl4, and solid
vanadium;
(ii) separating the solid vanadium from the partially purified
TiCl4 and SnCl4;
(iii) further reducing the vanadium content in the partially
purified TiCJ 4 by contacting the partially purified TiCJ 4
with an excess of tin to produce purified TiCJ4, SnCJ4,
solid vanadium, and excess tin; and
(iv) separating the solid vanadium and excess tin from the
purified TiCl4 and SnCk
Br., Appendix 1, 1. Independent claim 9, the only other independent claim
in this appeal, differs from claim 1 in that claim 9 recites "SnCb" instead of
"tin." Id. at 2.
The Examiner maintains, and Appellant2 appeals, the following
rejections under 35 U.S.C. § 103:
2 The Chemours Company TT, LLC is identified as the real party in interest.
Br. 3.
2
Appeal2017-009950
Application 13/980,580
1. Claims 1, 5, and 8 over Hansley; 3
2. Claims 9, 13, and 16 over Hansley in view ofHudlicky; 4
3. Claims 2, 3, 10, and 11 over Hudlicky and/or Hansley as applied to
claims 1 and 9 in Rejections 1 and 2, further in view of Stoddard5 and
Fahnoe· 6
'
4. Claims 6 and 14 over Hudlicky and/or Hansley as applied to claims
5 and 13 in Rejections 1 and 2, further in view of Pefferman7; and
5. Claims 7 and 15 over Hudlicky and/or Hansley as applied to claims
1 and 9 in Rejections 1 and 2, further in view of Stoddard.
Ans. 2; Br. 8-11.
OPINION
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections for the reasons
provided in the Final Office Action and the Answer. We add the following
primarily for emphasis.
Rejection 1
It is the Examiner's position that claims 1, 5, and 8 are unpatentable
as obvious over Hansley for the reasons stated on pages 3--4 of the Final
Office Action.
3 Hansley et al., US 2,958,574, issued Nov. 1, 1960 ("Hansley").
4 MILOS HUDLICKY, REDUCTIONS IN ORGANIC CHEMISTRY, pp. 29-30, 214
(1984) ("Hudlicky").
5 Stoddard et al., US 2,836,547, issued May 27, 1958 ("Stoddard").
6 Fahnoe et al., US 3,156,630, issued Nov. 10, 1964 ("Fahnoe").
7 Pefferman, US 3,744,978, issued July 10, 1973 ("Pefferman").
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Appeal2017-009950
Application 13/980,580
In the Appeal Brief, Appellant argues the subject matter of claims 1,
5, and 8 as a group. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), claims
5 and 8 will stand or fall together with claim 1, which is representative of the
group.
Appellant contends that the rejection is in error because Hansley
discloses the use of finely divided metals to produce a purified TiC14,
therefore one skilled in the art would "believe that no further purification is
necessary" and "would not be motivated to split the contacting and
separation step from the process of Hansley into two duplicate steps." Br.
8-9. Appellant asserts that the vanadium concentration is only partially
reduced in claim 1 so that the tin metal reaction can be driven to completion.
Id. at 9 ( citing Spec. 7: 13-17). Appellant contends that "the claimed
invention results in improved kinetics not disclosed or suggested by
[Hansley]." Id.
The Examiner responds that Hansley uses the same reactants and
reaction mechanism as Appellant to achieve the same result and that the
steps of claim 1 "merely duplicat[ e] the known process steps of Hansley and
combine[e] these known steps in a known way." Ans. 9. Regarding
Appellant's assertion that the claimed steps result in improved kinetics, the
Examiner finds that neither Appellant's Specification nor Appellant's
Appeal Brief suggests any unexpected results from modifying the known
TiC14 purification process to be performed in two stages rather than one. Id.
at 10.
We are not persuaded of reversible error in the Examiner's rejection
of claim 1 based on the cited record in this appeal.
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Appeal2017-009950
Application 13/980,580
Appellant does not dispute the Examiner's finding (Ans. 9) that
Hansley teaches the same reactants, the same reaction mechanism, and the
same results of claim 1 and differs only in the number of stages used.
Instead, Appellant contends (Br. 9) that improved kinetics result from
partially reducing the vanadium concentration in the first stage in order to
drive the tin metal reaction to completion. Appellant, however, does not
direct us to any evidence that the alleged improvement produces different
results over a one stage process or otherwise would not have been expected
from performing Hansley's process in two stages. See In re Harza, 274 F.2d
669, 671 (CCPA 1960) (noting that merely duplicating parts has no
patentable significance unless a new and unexpected result is produced).
Appellant's Specification discloses that the purification reaction can
be performed in either a single stage or two stage configuration, with the
benefit of the two stage configuration being less excess tin is used. Spec.
5:18-22. This disclosure further supports the Examiner's finding that
Appellant's method would have been expected to produce the same results
as Hansley's method. Accordingly, in the absence of any evidence of a new
and unexpected result, we find the preponderance of the evidence in this
record supports the stated rejection of claim 1 as well as claims 5 and 8
under 35 U.S.C. § 103.
Rejection 2
It is the Examiner's position that claims 9, 13, and 16 are unpatentable
as obvious over Hansley in view of Hudlicky for the reasons stated on pages
4--5 of the Final Action.
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Appeal2017-009950
Application 13/980,580
In the Appeal Brief, Appellant argues the subject matter of claims 9,
13, and 16 as a group. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv),
claims 13 and 16 will stand or fall together with claim 9, which is
representative of the group.
Appellant contends that the rejection is in error because tin and SnCh
are not functionally equivalent on the basis that stannous chloride is not as
efficient as tin. Br. 10. Appellant asserts that the cited prior art would not
motivate one skilled in the art to modify the teachings of Hansley when
Hansley teaches away from using certain metal powders and tin is more
efficient than SnCh. Id. at 10-11.
The Examiner responds that the substitution of one known element for
another to obtain predictable results does not require the substitutable
elements achieve the exact same results. Ans. 10. The Examiner further
finds that Hudlicky teaches that stannous chloride provides other benefits
over tin such as solubility and reduced cost, thus, even if stannous chloride is
not as efficient as tin in its metal form, "[b ]oth Sn Ch and Sn are known
reducing agents which may be used to react with and remove the vanadium
impurities in the TiCl4 purification process." Id.
Appellant's argument distinguishing SnCh and Sn on the basis that
the known reducing agents have different efficiencies is not persuasive of
error by the Examiner. The Examiner's finding that both Sn Ch and Sn are
known reducing agents and interchangeable in reduction reactions is
supported by the record. Hudlicky at 30. The record also supports the
Examiner's finding that both SnCh and Sn have benefits associated with
their use. Id. Therefore, the substitution of SnCh for Sn would have been
motivated by the benefits associated with SnCh. See In re Urbanski, 809
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Appeal2017-009950
Application 13/980,580
F.3d 1243 (Fed. Cir. 2016) ("[T]he Board properly found that one of
ordinary skill would have been motivated to pursue the desirable properties
taught by Wong, even at the expense of foregoing the benefit taught by
Gross.").
Because we are not persuaded of error in the Examiner's rejection of
claim 9 over the combination of Hansley and Hudlicky, we also affirm the
Examiner's decision to reject claims 13 and 16 as well.
Re} ections 3-5
It is the Examiner's position that claims 2, 3, 6, 7, 10, 11, 14, and 15
are unpatentable as obvious over Hudlicky and/or Hansley in combination
with various secondary references for the reasons stated on pages 5-7 of the
Final Action.
In the Appeal Brief, Appellant argues that the Examiner erred for the
same reasons claims 1 and 9 are distinguishable over the cited art and that
the additional cited prior art references do not remedy the asserted
deficiencies of Hansley and Hudlicky. Br. 11.
Appellant's assertion is insufficient to state a separate argument for
claims 2, 3, 6, 7, 10, 11, 14, and 15. In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011 ). Because we are not persuaded of error in the Examiner's
rejection of claims 1 and 9 for the reasons discussed above, we likewise
affirm the Examiner's decision to reject claims 2, 3, 6, 7, 10, 11, 14, and 15
under 35 U.S.C. § 103.
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Appeal2017-009950
Application 13/980,580
DECISION
For the foregoing reasons, we affirm all of the Examiner's rejections
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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