Ex Parte Henricson et alDownload PDFBoard of Patent Appeals and InterferencesSep 25, 200108463558 (B.P.A.I. Sep. 25, 2001) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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. Appeal No. 1998-3049 Application No. 08/463,558 10 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). Appeal No. 1998-3049 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 ACTS 2 DISK (FOIA) REPORT BOOK Copy with citationCopy as parenthetical citation