Ex Parte Henricson et al

Board of Patent Appeals and Interferences

Sep 25, 2001

08463558 (B.P.A.I. Sep. 25, 2001)

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for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAJ HENRICSON, TOROLF LAXEN
and JUHANI PELTONEN
____________
Appeal No. 1998-3049
Application No. 08/463,558
____________
HEARD: August 15, 2001
____________
Before KIMLIN, PAK, and JEFFREY T. SMITH, Administrative Patent
Judges.
PAK, 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 18 through 23, 25 through 30
and 32 through 41, which are all of the claims pending in the
above-identified application.
Appeal No. 1998-3049
Application No. 08/463,558
2
APPEALED SUBJECT MATTER
Claims 18 and 35 are representative of the subject matter on
appeal and read as follows:
Claim 18. A process for the chlorine free bleaching of cellulose
pulp in an aqueous suspension at a consistency of 5-25%, using a
pressurized fluidizing mixer and a reaction vessel, comprising the
steps of:
(a) forming a suspension of cellulose pulp having a
consistency of 5-25%;
(b) introducing in a substantially non-consumable carrier gas,
and as the only bleaching agent, ozone into the cellulose pulp
having a consistency of 5-25%, and intimately mixing the ozone and
pulp together in the pressurized fluidizing mixer, to produce a
reaction mixture;
(c) transferring the reaction mixture from the pressurized
fluidizing mixer to a pressurized reaction vessel, and continuing
ozone bleaching of the pulp in the pressurized reaction vessel; and
(d) discharging ozone-bleached pulp from the pressurized
reaction vessel.
Claim 35. A method of bleaching cellulose pulp having a
consistency of 5-25% with ozone, comprising the steps of:
pumping the cellulose pulp at a consistency of 5-25% to a
pressurized fluidizing mixer;
introducing a mixture of oxygen and ozone gas into the
cellulose pulp having a consistency of 5-25%;
mixing the gas mixture with pulp in the pressurized fluidizing
mixer to form a foam-like mixture composed of fibers, liquid,
oxygen and ozone, and to provide contact between the fibers and the
ozone acting as the bleaching chemical;
ozone bleaching the pulp while in said foam-like mixture;
Appeal No. 1998-3049
Application No. 08/463,558
1 Our reference to the published Japanese Kokai patent
application and French patent is to the corresponding English
translations of record.
3
discharging the pulp from said pressurized mixer into a
bleaching reactor;
and
separating from the pulp, after bleaching, oxygen as the main
residual gas.
REFERENCE
In support of his rejections, the examiner relies on the
following prior art references1:
Phillips et al. (Phillips) 4,372,812 Feb. 8, 1983
Meredith 4,902,381 Feb. 20, 1990
(Filed Dec. 9, 1988)
Sundman et al. (Sundman) 1065105 Oct. 30, 1979
(Published Canadian Patent)
Kimura et al. (Kimura) 54-30902 Mar. 7, 1979
(Published Japanese Kokai Patent Application)
Coste et al. (Coste) 2,620,744 A1 Mar. 24, 1989
(Published French Patent)
Soteland et al. (Soteland), “The Effect of Ozone on Mechanical
Pulps,” Norsk Skogindustri, pp. 165-169 (June 1974).
Appellants’ admission at page 11 of the specification (hereinafter
referred to as “admitted prior art”).
Appellants rely on the following references:
Mjoberg et al. (Mjoberg), “Ozone for Pulp Bleaching,” Jaakko Poyry
AB (Sep. 1992).
Grace et al. (Grace), “Alkaline Pulping,” Pulp and Paper
Manufacture, 3rd Ed., Vol. 5, pp 425-460 (1989).
Appeal No. 1998-3049
Application No. 08/463,558
4
Dahllof, “Medium Consistency Ozone Bleaching,” Kvaerner, Karlstd,
Sweden (unknown publication date).
REJECTION
The appealed claims stand rejected as follows:
1) Claims 18 through 23, 25 through 30 and 32 through 41 under 35
U.S.C. § 112, first paragraph, as lacking written descriptive
support for the subject matter presently claimed
2) Claims 18 through 21, 23, 25 through 28, 30 and 32 through 41
under 35 U.S.C. § 103 as unpatentable over the combined disclosures
of Sundman, Phillips and either Soteland or the admitted prior art;
3) Claims 18 through 21, 23, 25 through 28, 30 and 32 through 41
under 35 U.S.C. § 103 as unpatentable over the combined disclosures
of Meredith, Sundman, Phillips, and either Soteland or the admitted
prior art;
4) Claims 22 and 29 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Meredith, Sundman, Phillips, either
Soteland or the admitted prior art and either Kimura or Coste; and
5) Claims 18 through 23, 25 through 30 and 32 through 41 under
the judicially created doctrine of obviousness-type double
patenting as unpatentable over claims 18 through 35 of copending
Application 08/462,691.
Appeal No. 1998-3049
Application No. 08/463,558
5
OPINION
We have carefully reviewed the claims, specification and prior
art, including all of the evidence and arguments advanced by both
the examiner and appellants in support of their respective
positions. This review leads us to conclude that only the
examiner’s obviousness-type double patenting rejection is well
founded. Accordingly, we will sustain only that rejection. Our
reasons follow.
WRITTEN DESCRIPTION REJECTION
The examiner has rejected claims 18 through 23, 25 through 30
and 32 through 41 under 35 U.S.C. § 112, first paragraph, as being
based upon a disclosure which fails to satisfy the written
description requirement of that paragraph. See Answer, page 6.
According to the examiner (Id.), the phrase “as the only bleaching
agent, ozone” is not literally described in the application
disclosure as originally filed.
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 content of
Appeal No. 1998-3049
Application No. 08/463,558
6
the drawings may also be considered in determining
compliance with the written description requirement.
(citations omitted)
Although the application as originally filed does not describe the
phrase in question in ipsis verbus, we agree with appellants that
it reasonably conveys to the artisan that the inventors had
possession of such subject matter for the reasons set forth at
pages 5 through 8 of the Brief. Thus, we reverse the examiner’s
§ 112 rejection of claims 18 through 23, 25 through 30 and 32
through 41.
OBVIOUSNESS REJECTION
Claims 18 through 21, 23, 25 through 28, 30 and 32 through 41
are rejected under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Sundman, Phillips and either Soteland or
the admitted prior art. The same claims are rejected under 35
U.S.C. § 103 as unpatentable over, in addition to the above-
mentioned references, Meredith. Claims 22 and 29 are rejected
under 35 U.S.C. § 103 as unpatentable over the combined disclosures
of Meredith, Sundman, Phillips, either Soteland or the admitted
prior art and either Kimura or Coste.
The presently claimed subject matter is related to the subject
matter previously considered in Appeal No. 94-3492 (Application
07/808,986). The presently claimed subject matter, however,
Appeal No. 1998-3049
Application No. 08/463,558
7
differs from the subject matter previously considered in that the
presently claimed subject matter is limited to using ozone as the
only bleaching agent in bleaching cellulose pulp in an aqueous
suspension at a medium consistency of 5-25%. See claim 18 relating
to the phrase “the only bleaching agent, ozone” and claim 35
relating to the phrase “the ozone acting as the bleaching
chemical”. In other words, the claims on appeal expressly preclude
any bleaching action by any and all agents (including oxygen)
except for ozone. The Lindholm declaration, which was not
considered in the previous Appeal, states (page 2, paragraph 2)
that:
In 1989-1991 (and even today) one of ordinary skill
in the art of ozone bleaching would know that ozone
bleaching takes place at acidic conditions, typically a
pH of about 2-3.5. At the acidic conditions that ozone
bleaching typically takes place, oxygen is not a
bleaching agent. It is merely a carrier gas for ozone.
Particularly at perhaps the most common pH for ozone
bleaching, about three, oxygen does not act as a
bleaching agent but rather only as a carrier gas for
ozone.
Thus, the record before us is substantially different from the
record that was before the previous merits panel.
Having interpreted the claims on appeal in the above manner,
we have carefully reviewed all of the evidence proffered by both
the examiner and appellants. This review leads us to conclude that
Appeal No. 1998-3049
Application No. 08/463,558
8
the evidence of nonobviousness, on balance, outweighs the evidence
of obviousness. Our reasons for this determination follow.
Sundman states (page 1) that:
The present invention relates to a method of bleaching
cellulosic containing material with an oxidizing gas,
particularly oxygen gas, in an alkaline environment...
To “eliminate the drawbacks of the prior art processes,” Sundman
teaches adding a foaming agent added to the pulp suspension and
then utilizing the oxygen gas to effectuate foaming. See page 3.
According to Sundman (pages 3 and 4):
Thus, in accordance with the present teachings, an
improvement is provided in a method of bleaching
cellulosic material with an oxidizing gas in an alkaline
enviroment [sic. environment] in which a pulp suspension
which has a maximum consistency of 15% is treated with an
alkali solution and the oxidizing gas for effecting
removal of lignin from the cellulosic material such
treatment being effected at elevated temperature and
pressure, wherein the improvement comprises transforming
the pulp suspension into a stable foam in the presence of
a foaming agent.
Although Sundman states that oxygen may be substituted with, inter
alia, ozone, it does not teach or suggest a reaction condition in
which ozone can act as the only bleaching agent in its bleaching
process. Nor does Sundman teach or suggest that its desired stable
foam can be maintained at a condition other than an alkaline
condition. Indeed, the Lindholm declaration avers (page 3,
paragraph 4) that:
Appeal No. 1998-3049
Application No. 08/463,558
9
The general disclosure of bleaching chemical on page
5, lines 4 through 6, of the Canadian patent would not
tell me in 1989 or 1990 any way in which I could bleach
pulp having a consistency of 5-25% with ozone alone. The
method that is described in the paragraph before Example
1 on page 5 of the Canadian patent, and in Example 1,
does not use ozone at all, and in fact the Example
suggests the use of an alkali charge, which would result
in a pH outside the range that ozone bleaching would be
effective.
Meredith does not remedy Sundman as it teaches away from using
ozone as the only bleaching agent for bleaching the pulp at medium
consistency. See Figures 2 and 3, Table 1, column 2, lines 14-17
and column 3, lines 56-68. Moreover, the Lowe declaration
unequivocally states (page 1, paragraphs 2 and 3) that:
2. IN JUNE OF 1988, AT THE REQUEST OF MICHAEL D.
MEREDITH, ECONOTECH CONDUCTED THE TESTS REPORTED IN
TABLES 1-III of MEREDITH U.S. PATENT 4,902,381, A COPY OF
THE PAGES OF THAT PATENT HAVING THE TESTS ATTACHED HERETO
AS EXHIBIT A. IN ALL OF THESE TEST, THE CONSISTENCY OF
THE PULP WAS ONE PERCENT 1% SOLIDS, INCLUDING FOR THE
“OZONE ONLY” TESTS.
3. AT THE TIME THE TESTS WERE CONDUCTED IN JUNE
1988, WE HAD NO CAPABILITY OF CONDUCTING THE TESTS FOR
“OZONE ONLY” AT 5%-20% PULP CONSISTENCY BECAUSE WE KNEW
OF NO WAY TO PROVIDE ADEQUATE MASS TRANSFER BETWEEN THE
PULP AND OZONE GAS AT THAT CONSISTENCY RANGE, NOR ANY WAY
TO EFFECTIVELY ADD THE AMOUNT OF TOTAL GAS THAT WOULD BE
NECESSARY IN ORDER TO EFFECT OZONE BLEACHING BECAUSE OF
THE LOW PERCENTAGE OF OZONE THAT CAN BE PROVIDED IN
CARRIER GAS.
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Application No. 08/463,558
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This view is further galvanized by the expert opinions in the
Lindholm declaration and the Mjoberg reference as explained by
appellants in their Brief.
The remaining references do not indicate whether the stable
foam required by Sundman can be formed at a condition in which
ozone acts as the only bleaching agent.
Recognizing the need to remedy the deficiency of Sundman, the
examiner states (Answer, page 10) that:
Although the bleaching with oxygen and ozone are [sic,
is] different, one of ordinary skill would recognize
these differences and proceed accordingly.
However, the Greenwood declaration states (page 3, paragraph 5)
that:
5. The situations with oxygen and chlorine are starkly
different from the situation with medium consistency
ozonation. Kamyr, Inc. has an actual pilot plant for
medium consistency ozonation operating in Canada, with
which I am very familiar. In the pilot plant, and in
medium consistency ozonation in general, it is difficult
to maintain the foam created by mixing because of the
large amounts of gas and because of the acidic pH under
which the ozone bleaching reaction occurs. Also there
are no presently known acid foaming agents which are
resistant to ozone attack that can be used to stabilize
the foam.
This sentiment is echoed by the Reeve declaration by stating (pages
8 and 9, paragraph 18) that:
18. The Canadian patent relates to oxygen bleaching at
high pH. Ozone and oxygen are very different bleaching
Appeal No. 1998-3049
Application No. 08/463,558
11
chemicals. What is true for one is not true for the
other. Their bleaching conditions, effects, and many
other aspects are very different. Ozone would not work
as a bleaching agent under the bleaching conditions in
the Canadian patent, particularly the high pH. The pH is
such a radically different condition that one could not
with confidence extrapolate from the Canadian patent
about what would occur if one agitated pulp with ozone.
The examiner, however, has not provided any evidence contrary to
the expert opinions in the Reeve and Greenwood declarations. In
fact, the examiner states (Answer, page 5) that:
Oxygen could provide bleaching in acidic ranges, e.g.[,]
see the abstract of the cited SAMUELSON ET AL reference
of oxygen bleaching at pH 6.0...This would overlap the
ranges used for ozone bleaching, e.g.[,] pH 1.0-7.0......
It appears to be the examiner’s position that ozone is not the only
bleaching agent in the ozonation bleaching processes described in
the prior art. It then follows that the prior art ozonation
bleaching processes relied upon by the examiner do not teach or
suggest using ozone as the only bleaching agent.
In view of the foregoing, we cannot agree with the examiner
that the evidence as a whole provides a suggestion sufficient to
arrive at the claimed subject matter within the meaning of 35
U.S.C. § 103. Hence, we reverse the examiner’s decision rejecting
all of the appealed claims under 35 U.S.C. § 103.
Appeal No. 1998-3049
Application No. 08/463,558
12
OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Claims 18 through 23, 25 through 30 and 32 through 41 are
rejected under the judicially created doctrine of obviousness-type
double patenting as unpatentable over claims 18 through 35 of
copending Application 08/462,691. Contrary to appellants’
argument, the subject matter defined by claims 18 through 35 of
copending Application 08/462,691 would have rendered the presently
claimed subject matter obvious to one of ordinary skill in the art.
Claim 18 of the copending Application reads as follows:
18. A method of bleaching cellulose pulp having a
consistency between 5-25% in a stage wherein ozone is the
only bleaching agent in the stage, comprising the steps
of:
(a) introducing the pulp with a consistency between 5-25%
into a fluidizing mixer;
(b) introducing a mixture of ozone, serving as the only
bleaching agent in the stage, and oxygen gas into the
fluidizing mixer;
(c) intensely mixing the pulp and the gas in the
fluidizing mixer for approximately one second so as to
form a foam, the ozone, as the only bleaching agent in
the stage, reacting with the pulp while in foam
configuration to effect bleaching; and
(d) removing residual gas from the pulp after the
reaction in step (c).
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Application No. 08/463,558
13
Claims 19-21 of the copending Application indicate that the
fluidized mixer is pressurized as required by claims 18 and 35 of
the present application. Compare claims 18-20 and 35-38 in this
application with claims 18-21 of the copending Application. The
carrier gas of claim 18 of the present application includes oxygen
in the copending Application. See claim 27 of the present
application. Although claim 18 of the copending application does
not mention using a reactor vessel subsequent to a fluidized mixer,
claims 28 and 33 of the copending Application indicate that the
resulting pulp from the first fluidized mixer recited in claim 18
of the copending application can be further reacted in a second
fluidized mixer. The presently claimed reactor vessel embraces the
second fluidized mixer recited in claims 28 and 38 of the copending
Application. Claim 18 of the copending Application also requires
the removal of the residual gas. The residual gas is necessarily
oxygen since only ozone in a mixture (containing oxygen and ozone)
acts as the bleaching agent.
Appellants argue that claim 18 of the copending Application
recites a mixing time of about one second. The claims in the
present application do not preclude using the mixing time recited
in claim 18 of the copending Application.
Appeal No. 1998-3049
Application No. 08/463,558
14
Appellants also argue that the claims of the copending
application do not teach pumping the pulp into a mixer. However,
we are not convinced by this argument since one of ordinary skill
in the art would have been led to employ a pump to transport the
pulp from an earlier reactor to a mixer.
In view of the foregoing, we agree with the examiner that the
subject matter of claims 18 through 23, 25 through 30 and 32
through 41 would have been obvious over claims 18 through 35 of
copending Application 08/462,691. Accordingly, we affirm the
examiner’s provisional obviousness-type double patenting rejection
of claims 18 through 23, 25 through 30 and 32 through 41.
OTHER ISSUES
As a final point, we note that the phrase “substantially non-
consumable carrier gas” is not described in the application as
originally filed. While the phrase includes various carrier gases,
the application as originally filed appears to be limited to using
oxygen.
Also, claim 27 appears to be inconsistent with the subject
matter recited in claim 18. While oxygen being a substantially
non-consumable carrier gas connotes that at least small part of
oxygen acts as a bleaching agent, parent claim 18 clearly is
limited to using ozone as the only bleaching agent.
Appeal No. 1998-3049
Application No. 08/463,558
15
Further, we observe that Phillip at column 5, lines 29-38
refers to a Tappi article, Canadian Patent 966,604 and U.S. Patent
4,080,869. These patents and article are said to show ozone
bleaching stages for a pulp consistency of 1-40%, which are carried
out at a pH of 2-7.
Finally, Dahllof describes what appears to be the claimed
process. However, as recognized by the examiner, the publication
date of Dahllof is unknown.
Upon return of this application, the examiner is to determine:
1) Whether claim 18 and its dependent claims violate the written
description requirement under 35 U.S.C. § 112, first paragraph;
2) Whether the subject matter of claim 27 is indefinite and/or is
not further limiting in violation of 35 U.S.C. § 112, second and
fourth paragraphs, respectively;
3) Whether the patentability of the presently claimed subject
matter is affected by the teachings of the Tappi article, Canadian
Patent 966,604 and/or U.S. Patent 4,080,869, with or without
appellants’ admission in the specification and the declarations of
record and any other prior art references; and
4) Whether Dahllof is “prior art” and if it is “prior art”, what
claims are affected by its prior art status.
Appeal No. 1998-3049
Application No. 08/463,558
16
CONCLUSION
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
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
CKP/lp
Appeal No. 1998-3049
Application No. 08/463,558
17
ROBERT A VANDERHYE
NIXON AND VANDERHYE
1100 NORTH GLEBE ROAD
8TH FLOOR
ARLINGTON, VA 22201
Lettie
JUDGE PAK
APPEAL NO. 1998-3049
APPLICATION NO. 08/463,558
APJ PAK
APJ KIMLIN
APJ JEFFREY T. SMITH
DECISION: AFFIRMED
PREPARED: Aug 15, 2003
OB/HD
PALM
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