Ex Parte Jemaa et alDownload PDFPatent Trial and Appeal BoardFeb 14, 201713120249 (P.T.A.B. Feb. 14, 2017) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/120,249 03/22/2011 Naceur Jemaa 05202435-124US 8724 20988 7590 02/14/2017 NORTON ROSE FULBRIGHT CANADA LLP 1, Place Ville Marie SUITE 2500 MONTREAL, QC H3B 1R1 CANADA EXAMINER NGUYEN, NGOC YEN M ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 02/14/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NACEUR JEMAA and MICHAEL PALEOLOGOU1 ____________ Appeal 2015-006897 Application 13/120,249 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1‒11 and 13‒21 under 35 U.S.C. § 103 over Engström3 (hereinafter “Engstrom”) in view of applicants’ admitted prior art 1 FPInnovations is identified as the real party in interest. Appeal Br. 2. 2 We refer to the Specification filed March 22, 2011, the Final Office Action mailed September 2, 2014, the Appeal Brief filed December 17, 2014, the Examiner’s Answer mailed May 19, 2015, and the Reply Brief filed July 19, 2015. 3 Engström et al., US 5,093,097, issued March 3, 1992. Appeal 2015-006897 Application 13/120,249 2 (AAPA)4 and Norell.5, 6 We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. BACKGROUND Appellants’ claimed invention relates to a process for chlorine dioxide production using waste glycerol from biodiesel plants as a reducing agent. Spec. Abstract. Each independent claim recites reacting (i) an alkali metal chlorate, (i) a mineral acid, and (iii) a reducing agent provided by a waste liquid recovered intact without purification from biodiesel production that includes up to 90% by weight glycerol, wherein the reacting proceeds without operational problems from impurities included in the waste liquid. Claims 1, 30. Claim 1 is representative of the claims on appeal. 1. In a process for the production of chlorine dioxide by reacting an alkali metal chlorate, mineral acid and a reducing agent the improvement wherein the reducing agent is provided by a waste liquid containing up to 90%, by weight, glycerol derived from biodiesel production, based on the weight of waste liquid, and said waste liquid further comprising impurities including unreacted vegetable oil employed in said biodiesel production, said waste liquid being recovered intact without purification from said biodiesel production, said reacting proceeding without operational problems from said impurities. Appeal Br. (Claims Appendix) 8. 4 Spec. 1, ll. 9‒29 (Section titled “Background Art”). 5 Norell et al., US 4,961,918, issued October 9, 1990. 6 Pending claims 15‒24 stand withdrawn from consideration. Final Act. 1. Appeal 2015-006897 Application 13/120,249 3 DISCUSSION To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner’s rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, it has long been the Board’s practice to require an appellant to identify the alleged error in the examiner’s rejection); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing that the error is harmful normally falls upon the party attacking the agency’s determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))). Appellants contend that the rejection set forth by the Examiner as a single rejection is actually two separate rejections, the first being Engstrom in view of AAPA (Appeal Br. 3) and the second being Engstrom in view of Norell (Appeal Br. 5). Appellants’ contention is neither well founded nor of particular consequence because the Examiner explains in the Answer that Norell is applied “to provide additional motivation to use a waste source [of glycerol] as the reducing agent in the process of producing chlorine dioxide.” Ans. 4. We address Appellants’ arguments as applied to a single ground of rejection7 and focus our discussion on the arguments as to claim 1 in our 7 Even if Appellants’ position was convincing that the single rejection set forth in the Final Office Action was two separate rejections, the Examiner unequivocally sets the rejection forth as a single rejection in the Examiner’s Answer. Having then responded to the substance of the Examiner’s Answer in the Reply Brief rather than seeking relief by petition from what Appellants might have contended was an undesignated new ground of rejection in the Answer, Appellants have waived the right to relief on this basis. See 37 C.F.R. § 41.40(a) Appeal 2015-006897 Application 13/120,249 4 decision as to all claims. 37 C.F.R. § 41.37(c)(1)(iv). On this record, we are not persuaded that the Examiner erred reversibly in rejecting all claims as obvious in light of the teachings of the cited prior art for reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following. Engstrom discloses a process for producing chlorine dioxide by use of reactions of an alkali metal chlorate, mineral acid, and a reducing agent in which the reducing agent can be glycol or glycerol. Final Act. 2. The Examiner relies on Engstrom for, inter alia, its disclosure of these reaction conditions to produce chlorine dioxide as well as its further disclosure that sodium chloride and methanol are also known reducing agents for the process of producing chlorine dioxide. Final Act. 2‒3 (citing Engstrom claims 1, 2, col. 1, ll. 30‒35, 48‒67, col. 3, ll. 31‒36). The Examiner concedes that Engstrom “does not disclose that the glycerol reducing agent is a waste liquid derived from biodiesel production.” Final Act. 3. The Examiner relies on AAPA for disclosing that waste glycerol from biodiesel production “contains mainly glycerol and other impurities such as sodium chloride, methanol, sodium hydroxide and traces of unreacted fatty acids.” Final Act. 3 (citing Spec. 1, ll. 24‒29). The Examiner further relies on AAPA as teaching that finding uses of the waste glycerol that do not require purification would be desired by the skilled artisan. Final Act. 3. Norell discloses a process for producing chlorine dioxide by use of reactions of alkali metal chlorate, sulfuric acid, and partially purified raw methanol stock as the reducing agent. Final Act. 4‒5. Finding the conditions similar to those in Engstrom but for use of methanol rather than Appeal 2015-006897 Application 13/120,249 5 glycol, the Examiner relies on Norell for its disclosure that a waste stream, i.e., methanol rich condensate, can be used as the reducing agent without significant negative effects on the process even though it still contains various contaminants, including various organic impurities. Final Act. 4‒5 (citing Norell, col. 4, l. 45‒col. 5, l. 15 (Example 3)). While some purification to remove at least some amounts of some contaminants was required, the Examiner finds Norell to fairly suggest that not all organic impurities that might be present in a waste stream reducing agent would have negative effects on the process. Final Act. 5. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to determine whether or not impurities in the waste glycerol from biodiesel production needed to be removed before being used as the reducing agent in Engstrom’s process for producing chlorine dioxide because doing so would allow one to avoid the cost and effort of purification steps required to remove the impurities. Final Act. 5. The Examiner determines that identifying what, if any, purification was required before using the waste glycerol from biodiesel production in the process would have required no more than routine experimentation, and that the routineer through that experimentation would have arrived at the claimed method in which the “reacting proceed[s] without operational problems.” Ans. 7, 9‒11; claim 1. The Examiner further determines that certain of the “impurities” taught to be present in waste glycerol from biodiesel production would serve as reducing agents themselves—the sodium chloride and methanol—as taught by Engstrom and that the further contaminant disclosed in the AAPA—unreacted fatty acid—would not be expected to cause difficulties as it is present in trace amounts. Ans. 4. Appeal 2015-006897 Application 13/120,249 6 Appellants contend, inter alia, that there is no teaching or suggestion in the prior art—including the AAPA—to use waste glycerol from biodiesel production as the reducing agent in chlorine dioxide production or that an intact waste stream can be employed without being purified without serious operation disturbances. See generally Appeal Br.; Reply Br. Appellants further contend that it was unexpected and surprising that waste glycerol liquid from biodiesel could be used intact without purification as the reducing agent in chlorine dioxide production. Appeal Br. 5. Appellants rely on the September 12, 2013, Declaration of Michael Paleologou (“Declaration”) as evidence for the contentions that it was surprising that the waste glycerol from biodiesel production could be employed as the reducing agent without purification in the process to obtain chlorine dioxide without serious operation disturbances and in good yield. Generally Appeal Br. Appellants argue that the Examiner has improperly disregarded the content of the Declaration. Appeal Br. 7. Regarding the AAPA, Appellants argue that the Examiner has erred in finding any suggestion to use waste glycerol without purification because “it directly teaches . . . the necessity of purifying the waste liquid if the glycerol content is to be used” and it “does not suggest any use for the waste liquid without prior purification.” Appeal Br. 4. Appellants elaborate in the Reply Brief that the AAPA was “intended only to indicate the prior art recognition of the need to purify the waste glycerol to produce pure glycerol to use in different applications requiring glycerol; and to indicate that the purification is complex and costly.” Reply Br. 2. Appellants further contend that the reference in the AAPA to the “waste stream [having] very limited uses due to the presence of these impurities” means merely that interest in purifying Appeal 2015-006897 Application 13/120,249 7 the waste stream has been limited. Reply Br. 2 (quoting Spec. 1, ll. 28‒29). Appellants further argue that the prior art teaches that “if the waste liquid is not purified . . . it has to be disposed of by combustion or other treatment methods prior to disposal into the environment.” Reply Br. 4. Appellants’ argument has been carefully considered, but is not found persuasive of reversible error because the Examiner relies on the AAPA, as, inter alia, motivation to use the waste glycerol stream in order to minimize the cost of fresh reducing agent (Ans. 3) and the Examiner further relies on Norell for its teaching that waste streams can be used as the reducing agent (Ans. 4) and for its teaching that it is not necessary to use pure reducing agents in the reaction (Ans. 4‒5). “[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Regarding the composition of the waste glycerol from biodiesel plants (AAPA, Spec. 1, ll. 24‒26), the Declaration describes the composition of such waste liquid as including “various impurities and contaminants, including inorganic acids, unreacted vegetable oil, fatty acids, methanol and biodiesel fuel” (Declaration ¶ 2), but does not provide any indication as to the amount in which any of these contaminants are present (generally Declaration). Appellants cite a portion of the Specification that provides some further detail as to the typical composition (Appeal Br. 4; Spec. 3, l. 15‒4, l. 28), but not to persuasive, sufficiently-corroborated evidence that waste glycerol having such a composition must be purified prior to use. In regard to the AAPA teaching the waste glycerol liquid must be purified prior to use, the Declaration sets forth that “it is well documented in Appeal 2015-006897 Application 13/120,249 8 the industry and literature on chlorine dioxide generation that impurities particularly organics (and especially organics that are not soluble in the reaction medium such as oil and grease) may cause problems” (Declaration ¶ 3, emphasis added), but fail to direct us to sufficient corroborating evidence that these would be present in sufficient amounts to be expected to cause any significant decrease in yield and/or to cause problems (generally Declaration). Likewise, we find the proffered opinion that there is an understanding in the industry to use pure reactants or to purify waste streams before use as the reducing agent (Declaration ¶ 5), and that such an understanding is applicable to use of waste glycerol from biodiesel production (Declaration ¶¶ 4‒8), lacking sufficient corroboration where it is not disputed that the contaminants present in the methanol waste stream differ from that of waste glycerol from biodiesel production (Declaration ¶ 7). In particular, as highlighted by the Examiner’s related discussion (Ans. 5, 9‒10, 12‒14), there is insufficient corroboration that any type of organic material that gave rise to operation difficulties in Norell’s use of its methanol condensate would be present in a waste glycerol stream from biodiesel production (generally Declaration).8 Thus, to the extent that the Declaration is relied on as evidence to rebut the Examiner’s reliance on the AAPA as support for the desirability of using waste glycerol from biodiesel production, we do not find the Declaration to bear the necessary evidentiary weight. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to 8 Methanol poses no concern, and the other organic materials particularly emphasized as being of concern in waste glycerol, i.e., vegetable oil, biodiesel, and fatty acids, are admittedly not present in Norell’s methanol condensate. Declaration ¶¶ 2, 7. Appeal 2015-006897 Application 13/120,249 9 weigh the declarations and conclude the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”). Appellants’ contentions as to Norell focus on the observation that impurities present in a methanol condensate—obtained as a by-product from the preparation of sulfate cellulose (Norell col. 2, ll. 16‒32)—include impurities that interfere with the process of producing chlorine dioxide such that it is necessary to subject the methanol condensate to at least some purification, and on Norell teaching more generally that at least some purification to remove impurities in a waste stream is required to overcome negative effects on chlorine dioxide production. Appeal Br. 4‒6; Reply Br. 3 (citing Norell col. 2, ll. 42‒45). Appellants argue that Norell unequivocally demonstrates the need to purify a waste liquid for use in chlorine dioxide production (Appeal Br. 5) and that the Examiner erred in determining that it teaches “that a waste stream such as the described raw methanol can be employed in the chlorine dioxide generator without purification” (Reply Br. 3). Appellants rely on the Declaration to support the arguments. On this record, we do not find Appellants’ argument directed to Norell persuasive of reversible error. The argument is grounded on the fact that a methanol condensate of undisputed differing composition from that of waste Appeal 2015-006897 Application 13/120,249 10 glycerol from biodiesel production is unsuitable for use as the reducing agent in the production of chlorine dioxide absent at least some purification. Generally Appeal Br.; Reply Br. The argument falls short, however, because Appellants fail to establish that one of ordinary skill in the art would have expected the same difficulties when using waste glycerol from biodiesel production such that they would have had no reasonable expectation of success and would not have undertaken to determine what purification, if any, was required as a matter of routine experimentation, thus, arriving at the claimed invention. As manifest from the disclosures of Engstrom and Norell, not all impurities give rise to difficulties in the reaction. Ans. 3, 5. Further, it is not disputed that the particular organic impurities Appellants contend would have been expected to give rise to such difficulties—vegetable oil, biodiesel, and fatty acids (Declaration ¶ 7)—are not, in fact, present in the methanol condensate of Norell. Rather, Appellants rely on Norell’s teaching that “[i]t is well known that chlorine dioxide generators usually are sensitive to impurities of organic materials, which might cause explosive decomposition reactions” (Norell col. 2, ll. 42‒45, emphasis added) and the statements in the Declaration as to the possibility of operational problems (Declaration ¶¶ 2‒3, discussed above). Regarding the likelihood of such problems, the Declaration fails to bear the burden required because it lacks the necessary explanation why the problems in Norell would have been expected to occur and is otherwise grounded on further, underlying opinion as to what would have been expected without substantiating evidence. Am. Acad. of Sci Tech Ctr., 367 F.3d at 1368; Yorkey, 601 F.3d at 1284. Accordingly, we are not persuaded that Norell teaches that purification of the waste glycerol stream Appeal 2015-006897 Application 13/120,249 11 is required such that would forestall one of ordinary skill from attempting to use waste glycerol from biodiesel production without purification. Cf. DyStar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists.”). Further, we are persuaded of no reversible error in that it was possible that impurities present in waste glycerol from biodiesel production would have caused operational problems. In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success. Indeed, for many inventions that seem quite obvious, there is no absolute predictability of success until the invention is reduced to practice. . . all that is required is a reasonable expectation of success.”). On this record, for the reasons set forth above, Appellants fail to establish that the likelihood of success was not reasonable. For these reasons, we are unpersuaded the Examiner erred in finding the claims prima facie obvious. Appellants further contend that it was a surprising result that the waste glycerol from biodiesel production could be employed intact as the reducing agent without purification and that this supports the patentability of the claims. Appeal Br. 3, 5‒6 (citing Declaration ¶¶ 2‒5, 7, 8). Appellants bear the burden of an evidentiary showing that the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1456, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To meet the burden, Appellants must establish that the results actually would have been unexpected, and that the unexpected results are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Grasselli, Appeal 2015-006897 Application 13/120,249 12 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. Appellants again rely heavily on the Declaration. The same shortcomings in the Declaration discussed above similarly apply as to its use as evidence of unexpected results, including that it is grounded on the possibility of operational problems rather than that they would necessarily be expected (see, e.g., Declaration 3) and lacks the necessary explanation why problems in Norell would have been expected to occur when using waste glycerol from biodiesel production. The requisite explanation as to the teachings from additional cited references (Declaration ¶ 5) is also lacking. Other statements of opinion are likewise lacking because they are grounded on further, underlying opinion as to what would have been expected without substantiating evidence, including for example, that the crude waste glycerol being dark in color “would be expected to consume chlorine dioxide and lead to problems in chlorine dioxide generator operation.” (Declaration ¶ 2). In sum, on this record, it is not established that the operational problems would have been expected, particularly over the breadth of the claims. It follows, then, that the opinion that avoiding these operational problems is a surprising or unexpected result (Declaration ¶¶ 4, 7) lacks the requisite substantiation to bear the evidentiary weight required. In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“The affidavit and specification do contain allegations that synergistic results are obtained with all the claimed compositions, but those statements are not supported by any factual evidence other than that limited amount of evidence discussed above.”). Appeal 2015-006897 Application 13/120,249 13 As to the observed higher rates of production of chlorine dioxide when employing waste glycerol than for pure methanol or pure glycerol (Declaration ¶ 4), the Examiner has reasonably explained why the results would not be unexpected and are not commensurate with the scope of the claims (Final Act. 5‒6; Ans. 5‒6).9 As to the assertions within Appellants’ briefs, for example, “[t]hat the waste liquid . . . could be employed intact, without prior purification, as the reducing agent in chlorine dioxide production, was totally unexpected and surprising and contrary to any expectation based on the state of the art” (Appeal Br. 5), they themselves are not persuasive evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument . . . cannot take the place of evidence.”). On this record, accordingly, the preponderance of the evidence does not support that the results obtained were unexpected and the Examiner’s prima facie case stands unrebutted. Further, Appellants have also failed to establish that the results were reasonably commensurate with the scope of the claims. Finally, Appellants’ contend that the Examiner has “chosen to ignore, disregard, or set aside . . . the content of the [] Declaration.” Appeal Br. 7; Reply Br. 3. The Examiner explicitly states that the Declaration was fully considered, but was not found persuasive (see, e.g., Final Act. 6; see also Ans. 9‒11, 14). 9 We note for emphasis the breadth of claim 1 inherent in the lack of operational details as to the reactor used, reaction conditions, and the amounts and concentrations of reactants—save that the waste liquid contains no more than 90% glycerol—and that the reaction proceeds without operational problems from impurities in the waste liquid. Appeal 2015-006897 Application 13/120,249 14 On this record, Appellants’ argument that the Examiner chose to disregard submitted evidence is not persuasive of reversible error. For these reasons, we are not persuaded that the Examiner erred in determining that one of ordinary skill in the art, armed with the cited references, at the time of the invention would have been led to the subject matter of claim 1. As to the remaining claims, we likewise are not persuaded that the Examiner erred reversibly where Appellants rely on their arguments as to claim 1. Accordingly, we sustain the Examiner’s decision. CONCLUSION The Examiner’s rejection of claims 1‒11 and 13‒21 under 35 U.S.C. § 103 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED Copy with citationCopy as parenthetical citation