Ex Parte Jemaa et al

Patent Trial and Appeal Board

Feb 14, 2017

13120249 (P.T.A.B. Feb. 14, 2017)

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.
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(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.
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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)
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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
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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.
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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
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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
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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.
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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
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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
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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,
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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.”).
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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.
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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