Ex parte Karner et al.

Board of Patent Appeals and Interferences

Sep 12, 2000

08280945 (B.P.A.I. Sep. 12, 2000)

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publication and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILHELM KARNER and
DIETFRIED GAMSRIEGLER
____________
Appeal No. 1997-0664
Application No. 08/280,945
____________
ON BRIEF
____________
Before JOHN D. SMITH, WARREN, 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
from the examiner’s refusal to allow claims 1, 3 through 11,
and 13 through 35, as amended subsequent to the final
Appeal No. 1997-0664
Application No. 08/280,945
See the amendments filed September 29, 1995 and1
December 29, 1995 (Paper No. 9 and Paper No. 12), which the
examiner indicated in two separate advisory actions as being
approved for entry upon the filing of an appeal (Paper No. 10
and Paper No. 13).
2
rejection. These are the only claims remaining in the1
application.
Claims 1, 14, and 25 are illustrative of the claims on
appeal and are reproduced below:
1. In a process for the regeneration of
hydrochloric acid used as a pickling acid in a
pickling bath, wherein iron chloride is produced in
said pickling bath and wherein said regeneration
process includes the thermal decomposition of said
iron chloride in the spent pickling acid from said
pickling bath into iron oxide and gaseous
hydrochloric acid and molecular chlorine, the
improvement comprising admixing with the spent
pickling acid from said pickling bath at least one
compound which contains nitrogen having a low
oxidation number whereby said at least one compound
reacts with said molecular chlorine to regenerate
said hydrochloric acid and produce molecular
nitrogen.
14. In a process for the regeneration of
hydrochloric acid used as a pickling acid in a
pickling bath, wherein iron chloride is produced in
said pickling bath and wherein said regeneration
process includes the thermal decomposition of said
iron chloride in the spent pickling acid from said
pickling bath into iron oxide and gaseous
hydrochloric acid and molecular chlorine and further
including the formation of nitrogen oxides, the
improvement comprising admixing with the spent
Appeal No. 1997-0664
Application No. 08/280,945
3
pickling acid from said pickling bath at least one
compound which contains nitrogen which will react
with said molecular chlorine and said nitrogen
oxides to regenerate said hydrochloric acid and
produce molecular nitrogen.
25. In a process for the regeneration of
hydrochloric acid used as a pickling acid in a
pickling bath, wherein iron chloride is produced in
said pickling bath and wherein said regeneration
process includes the thermal decomposition of said
iron chloride in the spent pickling acid from said
pickling bath into iron oxide and gaseous
hydrochloric acid and molecular chlorine and further
including the formation of nitrogen oxides, the
improvement comprising admixing with the spent
pickling acid from said pickling bath at least one
compound which contains nitrogen having a low
oxidation number and selected from the group
consisting of ammonium compounds, ammonia, urea, and
amides.
The subject matter on appeal generally relates to a
process for regenerating hydrochloric acid from pickling
plants, in which iron chloride in the spent pickling acid is
thermally decomposed into iron oxide and gaseous hydrochloric
acid (brief, page 3). According to the appellants, the
process of pickling steel products with hydrochloric acid (or
mixtures containing hydrochloric acid) dissolves mill scale
layers that are formed on the steel surface by preceding
processes such as rolling or annealing, according to the
following reaction:
Appeal No. 1997-0664
Application No. 08/280,945
4
FeO + 2HCl 6 FeCl + H O (brief, pages 3-4).2 2
The appellants further explain that the consumed or spent
pickling acid and the iron chloride contained therein can be
decomposed by a thermal decomposition process (usually spray
roasting or the fluidized bed process) according to the
following reaction:
2FeCl + 2H O 0.5O 6 Fe O + 4HCl (brief, page 4).2 2 2 2 3
However, the appellants also state that undesirable
pollutants, namely oxides of nitrogen (NO ) and chlorine, mayx
be formed during the thermal decomposition process (id.).
Thus, the present invention is directed to a process which
avoids the formation of pollutants, such as chlorine and NO ,x
during the thermal decomposition by mixing the spent pickling
acid with at least one compound containing nitrogen having a
low oxidation number, for example ammonium compounds such as
ammonium chloride, ammonia, ureas, or amides (id.).
The prior art references relied upon by the examiner as
evidence of obviousness are:
Michels et al. (Michels) 3,399,964 Sep.
03, 1968
Jackson et al. (Jackson) 3,755,090 Aug.
28, 1973
Appeal No. 1997-0664
Application No. 08/280,945
The statement of rejection on page 3 of the answer2
includes claims 2 and 12. However, these claims were canceled
in the amendment filed March 31, 1995 (Paper No. 6).
5
Holley et al. (Holley) 4,086,321 Apr. 25,
1978
Burton 4,842,834 Jun. 27,
1989
Fellows et al. (Fellows) 5,098,680 Mar.
24, 1992
The grounds of rejection presented for our review in this
appeal are as follows:
Claims 1, 3, 4, 9 through 11, 13 through 16, 21 through
27, and 32 through 35 stand rejected under 35 U.S.C. § 103 as
unpatentable over Holley in view of Burton and Jackson.2
Claims 5, 6, 17, 18, 28, and 29 stand rejected under
35 U.S.C. § 103 as unpatentable over Holley in view of Burton
and Jackson, and further in view of Michels.
Claims 7, 8, 19, 20, 30, and 31 stand rejected under
35 U.S.C. § 103 as unpatentable over Holley in view of Burton,
Jackson, and Michels, and further in view of Fellows.
We have carefully reviewed the entire record, including
the specification, the claims, and all of the arguments
advanced by the examiner and the appellants, for which we
refer to the examiner’s answer and the appeal brief,
respectively. Notwithstanding the examiner’s exceptionally
Appeal No. 1997-0664
Application No. 08/280,945
6
thorough treatment of all the issues, we find ourselves in
agreement with the appellants that the subject matter of the
appealed claims would not have been prima facie obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C. §
103 over the applied prior art references. Accordingly, we
reverse.
The examiner correctly summarizes the teachings of
Holley, the principal prior art reference, as follows:
Holley et al disclose a method for producing pre
metallic oxides by dissolving the metal or oxide in
heated dilute hydrochloric acid to form metallic
chloride in a water solution (which solution may
instead, be a waste product from a steel strip
pickling line) (note abstract). The solution is
passed to a throat venturi scrubber. The venturi
acts as a heat exchanger to extract heat from the
hot off gas stream coming from the reaction zone
(note column 3, lines
3-10). The gas leaves the venturi scrubber and goes
to the adiabatic absorber. The concentrated
solution is sprayed into the reaction zone by using
the bi-fluid nozzles 23. The thermal decomposition
of ferrous and ferric chloride is accomplished by
atomizing the concentrated metallic solution into
small droplets, in the presence of oxygen and water
vapor. The heat required to vaporize the water and
thermally decompose the metal chloride can be
provided directly by introducing the products of
combustion into the reaction chamber or roaster
(i.e. spray roasting reactor as required in the
instant claim 4) at a temperature of about 2500EF
(1371EC). The combustion gas is generated by burning
a gaseous oil or fuel (note column 3, lines 17-42).
[Answer, pp. 3-4.]
The examiner also correctly determines that Holley’s
process differs from the process of the appealed claims in the
Appeal No. 1997-0664
Application No. 08/280,945
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use of the recited “at least one compound which contains
nitrogen” (appealed claims 1, 14, and 25) (answer, page 4).
To remedy this deficiency in Holley, the examiner relies
upon the teachings of Burton and Jackson. According to the
examiner, Burton teaches that NO pollutants are formed duringx
the high temperature combustion of carbonaceous fuel, that
such pollutants are undesirable, and that the pollutants can
be reduced by spraying a solution of urea and water to the
effluent of the combustion gas (answer, pages 4-5). The
examiner also relies upon Jackson for the teaching that the
pickling bath may contain nitric acid and, in addition, urea,
which is described in the reference as inhibiting the
accumulation of nitrous acid and NO (answer, page 5). x
Further, the examiner adds that “Jackson et al fairly suggest
the feasibility of having a mixture of urea/acid solution and
the urea is still capable of removing the NO compounds”x
(answer, page 6) but explains that “Jackson et al is only
applied to teach that the presence of urea in a pickling bath
would not have any negative effect on the pickling process and
in [the] pickling art, the artisan recognizes that NO isx
[are] undesirable by-products” (answer, page 13).
Based on these prior art teachings, the examiner
concludes that it would have been obvious to one of ordinary
Appeal No. 1997-0664
Application No. 08/280,945
8
skill in the art to add urea to Holley’s spent pickling acid
before it is sprayed into reaction chamber, as suggested by
Burton, in order to remove undesirable NO compounds (answer,x
pages 5-6). The examiner further reasons that one of ordinary
skill the art would have added urea to the spent pickling acid
before it is sprayed into the reaction chamber in order to
require the use of only one spray nozzle, thereby minimizing
capital costs (answer, page 6). We disagree.
Under 35 U.S.C. § 103, the examiner carries the initial
burden of establishing a prima facie case of obviousness.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). As part of meeting this initial burden, the
examiner must determine whether the differences between the
subject matter of the claims and the prior art “are such that
the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill
in the art” (emphasis added). 35 U.S.C. § 103(a)(1999);
Graham v. John Deere Co., 383 U.S. 1, 14, 148 USPQ 459, 465
(1966).
When multiple prior art references are combined to
support an obviousness rejection, there must be some teaching,
suggestion, or motivation in the prior art that would have led
one of ordinary skill in the art to combine the references.
Appeal No. 1997-0664
Application No. 08/280,945
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In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998)(citing In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987)). The suggestion or
motivation may come from the prior art references themselves,
from knowledge by those skilled in the art that certain
references are of special interest in a field, or from the
nature of the problem to be solved. Rouffet, 149 F.3d at
1355-56, 47 USPQ2d at 1456.
In the case before us, the examiner submits that one of
ordinary skill would have found it obvious to add urea to
Holley’s spent pickling acid before it is sprayed into
reaction chamber, as suggested by Burton, in order to remove
undesirable NO compounds (answer, pages 5-6). As pointed outx
by the appellants (brief, page 9), however, Burton relates to
a conventional combustion process, not to a process of
regenerating hydrochloric acid in which the thermal
decomposition of iron chloride is carried out. In fact, none
of the relied upon prior art references identify the same
problems with which the appellants are concerned (i.e., the
problems of chlorine and NO formation in the types ofx
processes contemplated by the appellants). In re Sponnoble,
405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969) (“[A]
patentable invention may lie in the discovery of the source of
Appeal No. 1997-0664
Application No. 08/280,945
Jackson teaches the use of urea in combination with3
nitric acid (column 4, lines 3-14). Further, Jackson
describes the use of nitric acid as an alternative to using
hydrochloric or sulfuric acid (column 5, lines 40-52).
10
a problem even though the remedy may be obvious once the
source of the problem is identified. This is part of the
'subject matter as a whole’ which should always be considered
in determining the obviousness of an invention under 35 U.S.C.
103.”).
Moreover, it is our view that the prior art does not
establish the requisite reasonable expectation of success in
modifying Holley’s process in the manner as suggested by the
examiner. Specifically, we note that Burton uses urea in the
context of a conventional combustion flue gas. By contrast,
in Holley, the environments in the Venturi scrubber 17 and
reaction chamber 18 contain chemicals not normally present in
plain combustion flue gas, including highly acidic compounds
such as hydrochloric acid. Although the examiner relies on
Jackson for suggesting “the feasibility of having a mixture of
urea/acid solution” (answer, page 6), we agree with the
appellants (brief, page 10) that Jackson does not teach urea
in combination with hydrochloric acid. Nor does Jackson3
teach or suggest that urea would work in a gas-liquid type
environment of the type described in Holley. Thus, nothing in
Appeal No. 1997-0664
Application No. 08/280,945
11
the applied prior art references suggests that Burton’s urea
would function in Holley’s environments as it would in a
conventional combustion flue gas. In this regard, "[b]oth the
suggestion and reasonable expectation of success must be
founded in the prior art, not in the applicant's 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)).
For these reasons, we hold that the applied prior art
references do not establish a prima facie case of obviousness
against appealed independent claims 1, 14, and 25 within the
meaning of 35 U.S.C. § 103. Since appealed claims 3 through
11, 13, 15 through 24, and 26 through 35 all directly or
indirectly depend from one of these independent claims, it
follows that the subject matter of these dependent claims
would also not have been obvious over the applied prior art
references. In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596,
1600 (Fed. Cir. 1988).
The examiner’s 35 U.S.C. § 103 rejections of (i) claims
1, 3, 4, 9 through 11, 13 through 16, 21 through 27, and 32
through 35 as unpatentable over Holley in view of Burton and
Jackson, (ii) claims 5, 6, 17, 18, 28, and 29 as unpatentable
over Holley in view of Burton, Jackson, and Michels, and (iii)
Appeal No. 1997-0664
Application No. 08/280,945
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claims 7, 8, 19, 20, 30, and 31 as unpatentable over Holley in
view of Burton, Jackson, Michels, and Fellows are reversed.
The decision of the examiner is reversed.
Appeal No. 1997-0664
Application No. 08/280,945
13
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 1997-0664
Application No. 08/280,945
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