Ex Parte Hua et al

Board of Patent Appeals and Interferences

Mar 14, 2005

09994075 (B.P.A.I. Mar. 14, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte XUJUN HUA
and
MAKHLOUF LALEG
__________

Appeal No. 2005-0440
Application No. 09/994,075
___________

ON BRIEF
___________

Before GARRIS, PAK, and DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2004) from the examiner’s final rejection of claims 1 through
10, 12, and 20 through 25 in the above-identified application.
(Final Office action mailed Feb. 4, 2003.) Claim 11, the only
other pending claim, was also finally rejected but subsequently
allowed. (Examiner’s answer mailed Oct. 9, 2003 at 1.)
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Application No. 09/994,075

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The subject matter on appeal relates to a method of
inhibiting alkaline darkening of a mechanical pulp in the
presence of a calcium carbonate filler. Further details of this
appealed subject matter are recited in representative claim 1
reproduced below:
1. A method of inhibiting alkaline darkening of
a mechanical pulp in the presence of a calcium
carbonate filler comprising:
providing an aqueous suspension of a mechanical
pulp for producing paper, and
incorporating in said suspension a calcium
carbonate filler for producing paper with the pulp,
and a sulphite to inhibit alkaline darkening of said
pulp in said suspension arising from the calcium
carbonate filler in the suspension.

In addition to the appellants’ admitted prior art
(specification at page 2, lines 13-21), the examiner relies on
the following prior art references as evidence of
unpatentability:
Hovey 2,173,167 Sep. 19, 1939

Tsukamoto et al. 4,183,146 Jan. 15, 1980
(Tsukamoto)

Eckert 4,427,490 Jan. 24, 1984

Evans et al. 5,882,476 Mar. 16, 1999
(Evans) (filed May 5, 1995)

Nye H1690 Nov. 04, 1997
(published US Statutory Invention
Registration)

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Application No. 09/994,075

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Schumacher et al. 0 608 687 A1 Aug. 03, 1994
(EP ’687)(published EP
application)

Drummond WO 96/20308 Jul. 04, 1996
(WO ’308)(published PCT
application)

The appealed claims stand rejected under 35 U.S.C. § 103(a)
as follows:
I. claims 1 through 7, 10, and 20 through 25 as
unpatentable over WO ’308 in view of Eckert or Evans
(answer at 3-4);
II. claim 8 as unpatentable over WO ’308 in view of Eckert
or Evans and further in view of Tsukamoto (id. at 4);
III. claim 9 as unpatentable over WO ’308 in view of Eckert
or Evans and further in view of Nye or EP ’687 (id.);
IV. claim 12 as unpatentable over WO ’308 in view of
Eckert or Evans and further in view of the appellants’
admitted prior art (id. at 5);
V. claims 1 through 8, 10, and 20 through 25 as
unpatentable over Hovey in view of Tsukamoto (id. at
5-6);
VI. claim 9 as unpatentable over Hovey in view of
Tsukamoto and further in view of Nye or EP ’687 (id.
at 6);
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Application No. 09/994,075

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VII. claim 12 as unpatentable over Hovey in view of
Tsukamoto and further in view of the appellants’
admitted prior art (id.)
We affirm all seven rejections. Because we are in complete
agreement with the examiner’s factual findings and legal
conclusions, we adopt them as our own and add the following
comments primarily for emphasis.1
The examiner’s rejections are based on two alternative
principal prior art references, namely WO ’308 and Hovey. Each
of these principal prior art references is combined with various
other prior art references as evidence in support of a
determination of obviousness.
WO ’308 discloses that “paper from mechanical pulps lose
brightness due to alkaline darkening of the pulp when fillers
such as calcium carbonate are used in the papermaking process.”
(Page 2, lines 6-10.) Thus, WO ’308 is concerned with solving

1 The appellants submit that “[t]he claims...are separately
patentable.” (Appeal brief filed Jun. 23, 2003 at 5.) We note,
however, that the appellants rely on the same argument for all
the appealed claims. While the appellants summarize the
limitations set forth in appealed claims 1-10 and 20-25 (id. at
16-19), “[m]erely pointing out differences in what the claims
cover is not an argument as to why the claims are separately
patentable.” See 37 CFR § 1.192(c)(7)(2004)(effective Apr. 21,
1995). Thus, consistent with this regulation, we hold that all
Appeal No. 2005-0440
Application No. 09/994,075

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the same problem as the appellants’ claimed invention.
(Specification at 1-2.) To solve the problem of alkaline
darkening associated with the presence of calcium carbonate
filler in the pulp, WO ’308 teaches the use of an aqueous
solution of “any type of bleaching agent” such as sodium
hydrosulfite, e.g. by application of an aqueous solution of the
sodium hydrosulfite on the paper produced from the pulp. (Page
3, lines 3-6; page 4, line 29 to page 5, line 9; Examples 1 and
3; Tables 1 and 3.)
Eckert discloses (column 1, lines 58-65):
More usually, unbleached lignocellulosic pulps
are bleached or brightened to a brightness consistent
with the planned utilization of the pulp, brightness
being a measure of pulp reflectivity under
standardized conditions. Pulp bleaching is most often
a multi-stage process employing various chemicals to
remove or alter the lignin of the lignocellulosic pulp
such that the resultant pulp is no longer light
absorbing or dark in color. [Emphasis added.]

Eckert further teaches that reducing agents (e.g., sulfurous
acids, hydrosulphites, borohydrides, amineboranes, and
bisulfites) or oxidizing agents (e.g., chlorine based compounds,
peroxides, ozone, oxygen, peracids, permanganates, and
chromates) are commonly used as bleaching agents. (Column 1,

claims stand or fall together and confine our discussion to
representative claim 1.
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line 66 to column 2, line 4.) While Eckert’s disclosure focuses
on “a peroxide-based delignifying and bleaching solution” at a
pH between about 1 and about 7 (column 1, lines 16-19; column 3,
lines 56-58), the reference teaches that the bleaching agent is
added to a slurry of the pulp.
Evans discloses a method of deinking recycled fibers by
disintegrating waste paper in an alkaline aqueous solution
containing sodium sulfite and sodium carbonate to produce a
fibrous slurry having a pH of at least about 7.5, separating the
ink from the fibers, and removing the ink from the slurry.
(Column 1, lines 47-52.) According to Evans, the disclosed
process “advantageously provides the alkalinity needed to
separate the ink without embrittling or darkening the fibers.”
(Column 1, lines 52-54.) Evans further states that the addition
of a combination of the sodium sulfite and sodium carbonate into
the pulp slurry eliminates or greatly reduces the need for
“additional bleaching.” (Column 2, lines 47-50; column 3, lines
34-51.)
We agree with the examiner that the teachings of WO ’308
and Eckert or Evans, taken together, would have led one of
ordinary skill in the art to add sodium sulfite or a combination
of sodium sulfite and sodium carbonate into the pulp slurry of
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Application No. 09/994,075

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WO ’308 with the reasonable expectation of brightening the pulp,
thus arriving at a method encompassed by appealed claim 1. Both
the motivation to combine the references and the requisite
reasonable expectation of success are founded in the prior art,
not in the appellants’ own disclosure. In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991)(citing In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988)).
Hovey, the other principal prior art reference, teaches a
method for making pulp in which approximately 3 to 9% of calcium
carbonate filler is used to offset discoloration attributable to
alkalinity. (Page 2, column 1, lines 60-65.) Thus, as admitted
by the appellants (appeal brief at 6), Hovey “recognizes the
problem of alkaline darkening caused by the alkalinity of the
calcium carbonate.”
Tsukamoto teaches that a sulfonating compound such as a
sulfite, hydrogensulfite, or pyrosulfite improves mechanical
strength and brightness of the pulp. (Column 3, lines 25-36 and
48-52; column 4, lines 7-11.)
Thus, we also agree with the examiner that one of ordinary
skill in the art would have combined the teachings of Hovey and
Tsukamoto, thus arriving at a method encompassed by appealed
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Application No. 09/994,075

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claim 1. Specifically, it is our judgment that one of ordinary
skill in the art would have found it prima facie obvious to
treat Hovey’s slurry with a sulfonating compound such as a
sulfite in order to improve the mechanical strength and
brightness of the paper as suggested in Tsukamoto.
The appellants argue that the hydrosulfite described in WO
’308 removes the chromophores already produced by alkaline
darkening, whereas the inhibition or prevention of darkening in
the claimed invention stops or reduces the production of new
chromophores. (Appeal brief at 5.) In support of this
argument, the appellants rely on Example V (and the accompanying
data summarized in Table 3) of the specification as well as
Examples VII and VIII (and the accompanying data summarized in
Tables 4 and 5) appended to the brief.2 (Id. at 5-6 and 11-12.)

2 It appears from the image file wrapper (IFW) history that
Examples VII and VIII were submitted as part of an appendix to
the amendment filed on Oct. 17, 2002. Because these experiments
do not appear to have been submitted in affidavit or declaration
form as required under 37 CFR § 1.132 (2004)(effective Sep. 20,
2000)(“any evidence submitted to traverse the rejection or
objection on a basis not otherwise provided for must be by way
of an oath or declaration...”), we consider them to be mere
lawyer’s arguments unsupported by factual evidence. Cf. In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642, 199 USPQ 137,
140 (CCPA 1978); In re Lindner, 457 F.2d 506, 508-09, 173 USPQ
356, 358 (CCPA 1972).
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Application No. 09/994,075

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We, like the examiner (answer at 6-7), find the appellants’
argument unconvincing. At best, Table 3 of the present
specification indicates that the use of two, rather than one,
bleaching treatment steps (i.e., pre-treatment with sodium
sulfite followed by treatment with hydrosulfite) provided
slightly higher brightness than a single bleaching treatment
(treatment with hydrosulfite) at a slurry pH of 7.0. As pointed
out by the examiner (answer at 6-7), such a result is entirely
expected. In view of the teachings of the prior art references,
one of ordinary skill in the art would have reasonably expected
that carrying out multiple bleaching steps would provide pulp
with higher brightness than a single bleaching step. (See,
e.g., Eckert at column 1, lines 62-65; Evans at column 1, lines
31-33 and 36-40; Tsukamoto at column 3, lines 25-36 and column
4, lines 7-11.)
Additionally, we also agree with the examiner’s claim
construction (answer at 7) that appealed claim 1 does not limit
when the sulfite is to be added to the slurry. In other words,
appealed claim 1 reads on a process in which the slurry is
subjected to a single bleaching step. While appealed claim 1
recites “inhibiting alkaline darkening,” no evidence
substantiates the appellants’ allegation that the prior art
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bleaching treatments would not result in some inhibition of
darkening. On this point, we note that the paper produced in WO
’308 exhibited brightness values significantly higher (59.3)
than those reported for the claimed invention in Table 3 of the
specification (56.8 and 57.5).
Moreover, the relied upon evidence is far from being
commensurate with the appealed claims. Specifically, Example V
of the specification is limited to pre-treatment with 0.5 and 1%
sodium sulfite (4% cs., 85°C, 2 hours) followed by treatment with
7.0% hydrosulfite (3.7% cs., 60°C for 40 minutes) at a pH of 7.0.
By contrast, appealed claim 1, is considerably broader in scope
in terms of the sulfite compound, additional bleaching agent,
the treatment conditions and duration, and the nature of the
pulp slurry. In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)(“‘[O]bjective evidence of
nonobviousness must be commensurate in scope with the
claims.’”)(quoting In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972)); In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979) (“The evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with the
claims to which it pertains.”).
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Application No. 09/994,075

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The appellants urge that Hovey uses high calcium carbonate
loadings and that, therefore, “[t]he brightening achieved by
Hovey results not from inhibition of the alkaline darkening but
by masking the darkened pulp with the higher loading...”
(Appeal brief at 6.) We first note that appealed claim 1
encompasses any calcium carbonate loading. As to “inhibition of
the alkaline darkening,” Tsukamoto provides the requisite
motivation, suggestion, or teaching to carry out sulfite
treatment for the purpose of improving mechanical strength and
brightness. Inhibition of alkaline darkening would follow from
combining the two prior art references as a necessary incident
to improving mechanical strength and brightness because the
sulfite treatment in Tsukamoto is identical to that recited in
appealed claim 1. In this regard, we point out that the
motivation to combine the prior art references need not be
identical to that of the applicants in order to establish
obviousness under 35 U.S.C. § 103(a). In re Kemps, 97 F.3d
1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en
banc).
The appellants argue that Eckert, Evans, and Tsukamoto do
not teach alkaline darkening caused by calcium carbonate.
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Application No. 09/994,075

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(Appeal brief at 7-8 and 14.) This argument is unpersuasive,
because our obviousness analysis is based on what the collective
teachings of the prior art would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 426, 208
USPQ 871, 882 (CCPA 1981)(“[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections
are based on combinations of references.”).
The appellants contend that Tsukamoto is not concerned with
pulp suspensions but rather wet wood pulp mass having a higher
solids content. (Appeal brief at 14.) We note, however, that
Tsukamoto teaches that the sulfonating agent may be mixed with
the pulp before dewatering. (Column 3, lines 40-52.)
The remaining references (namely Nye, EP ’687, and the
admitted prior art) are applied against appealed claims 9 and
12. Because the appellants’ arguments against these claims are
the same as that against appealed claim 1, we determine that the
teachings of these references would be cumulative to WO ’308,
Eckert, Evans, Hovey, and Tsukamoto.
For these reasons and those set forth in the answer, we
affirm the examiner’s rejections under 35 U.S.C. § 103(a) of:
(i) claims 1 through 7, 10, and 20 through 25 as unpatentable
over WO ’308 in view of Eckert or Evans; (ii) claim 8 as
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Application No. 09/994,075

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unpatentable over WO ’308 in view of Eckert or Evans and further
in view of Tsukamoto; (iii) claim 9 as unpatentable over WO ’308
in view of Eckert or Evans and further in view of Nye or EP
’687; (iv) claim 12 as unpatentable over WO ’308 in view of
Eckert or Evans and further in view of the appellants’ admitted
prior art; (v) claims 1 through 8, 10, and 20 through 25 as
unpatentable over Hovey in view of Tsukamoto; (vi) claim 9 as
unpatentable over Hovey in view of Tsukamoto and further in view
of Nye or EP ’687; and (vii) claim 12 as unpatentable over Hovey
in view of Tsukamoto and further in view of the appellants’
admitted prior art.
The decision of the examiner is affirmed.

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Application No. 09/994,075

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Chung K. Pak )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis
Appeal No. 2005-0440
Application No. 09/994,075

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