Ex Parte Kobayashi et alDownload PDFPatent Trial and Appeal BoardJun 3, 201612999017 (P.T.A.B. Jun. 3, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/999,017 12/14/2010 Hiroshi Kobayashi 38834 7590 06/07/2016 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 1250 CONNECTICUT A VENUE, NW SUITE 700 WASHINGTON, DC 20036 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 101344 1082 EXAMINER HOSSAIN!, NADER F ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 06/07/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI KOBAYASHI, NORIHISA TOKI, HIROFUMI SHOJI, KEIJI KUDO, and T ATSUY A HIGAKI Appeal2015-000728 Application 12/999,017 Technology Center 1700 Before JEFFREY T. SMITH, MARK NAGUMO, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's April 3, 2014 decision finally rejecting claims 1, 2, and 4--9 ("Final Act"). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Sumitomo Metal Mining Co., Ltd. (Appeal Br. 2). Appeal2015-000728 Application 12/999,017 CLAIMED SUBJECT MATTER Appellants' invention is directed to a method of removing manganese from sulfuric acid waste water containing aluminum, magnesium, and manganese (Abstract). The process involves three sequential steps: (1) removing aluminum from the waste water; (2) adding a neutralizing agent to raise the pH to a value from 8.0 to 9.0 and allowing the pH to equilibrate; and (3) adding highly pure oxygen gas to the waste water under a specific pressure load (Spec. i-fi-19 and 14). The Specification states that allowing pH equilibrium to be reached before adding oxygen has the benefit of reducing the amount of neutralizing agent which must be used (Spec. i-f 14). Details of the claimed method are set forth in sole independent claim 1, which is representative of the claims on appeal and is reproduced below from the Claims Appendix of the Appeal Brief: 1. A method of removing manganese from a sulfuric acid waste water in which manganese is removed by precipitating manganese selectively from the sulfuric acid waste water containing aluminum, magnesium and manganese, comprising: (1) First, removing aluminum from said sulfuric acid waste water so that a concentration of aluminum is 0.1 g/L or less; (2) Subsequently, adding neutralizing agent into the sulfuric acid waste water after removing aluminum and adjusting a pH value of the sulfuric acid waste water to no less than 8.0 and less than 9.0; and (3) adding oxygen gas with a purity of 98 volume % or more into the sulfuric acid waste water, wherein manganese is precipitated in steps (2) and (3), and wherein in step (2), the pH value of the sulfuric acid waste water is adjusted to reach an equilibrium by adding neutralizing agent, prior to step (3) of adding the oxygen gas into the sulfuric acid waste water under a pressure load of 0.10 MPa to 0.20 MPa. 2 Appeal2015-000728 Application 12/999,017 REJECTIONS I. Claims 1, 2, and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Genik-Sas-Berezowsky et al. ("GSB")2 in view Bellone.3 II. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over GSB in view of Bellone, and further in view of Kurabayashi4 or Neel. 5 III. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable GSB in view of Bellone, and further in view of Kobayashi. IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over GSB in view of Bellone, and further in view of Kobayashi, and further in view ofKurabayashi or Neel. DISCUSSION Because our decision is based on a limitation in claim 1 - and, therefore, common to each of the remaining claims, all of which depend from claim 1 - our discussion will be limited to the obviousness rejection of claim 1 over GSB in view of Bellone. The Examiner finds that GSB teaches each step of the claimed process, except for the use of oxygen having a purity of 98 volume % and its use at a pressure load of 0.10 MPa to 0.20 MPa (Final Act. 3--4). The 2 Genik-Sas-Berezowksy et al., U.S. Patent No. 6,656,247 Bl, issued December 2, 2003. 3 Bellone, U.S. Patent 2,122,735, issued July 5, 1938. 4 Kurabayashi et al., U.S. Patent No. 7,258,793 B2, issued August 21, 2007. 5 Neel et al., U.S. Patent No. 3,808, 123, issued April 30, 1974. 3 Appeal2015-000728 Application 12/999,017 Examiner further finds that Bellone teaches elements meeting these limitations, and that it would have been obvious to a person of skill in the art to combine the teachings of Bellone and GSB to arrive at the claimed process (Final Act. 4---6). Appellants argue, inter alia, that GSB does not disclose allowing the pH of the solution in step (2) to equilibrate prior to adding oxygen, as recited in claim 1 (Appeal Br. 5-6). The Examiner finds (Ans. 19-20) that GSB's disclosure of a step which involves "adding a second alkaline reagent [i.e. a neutralizing agent] to the aluminum-depleted solution and aerating [i.e. adding oxygen] for a sufficient retention time to preferentially precipitate a majority of the manganese as manganese-containing solids" (GSB, 5: 12-16, emphasis added), indicates that the steps of neutralizing and adding oxygen "take place sequentially" and that this means that the pH of the system is equilibrated prior to adding oxygen (Ans. 20). However, as explained by Appellants (Appeal Br. 6 and Reply Br. 5), GSB does not state that the aeration step occurs after the neutralization step (much less after pH equilibrium is reached). In fact, as shown in GSB's Example 1 (GSB 8:45-57), the neutralizing and aeration steps in GSB's process occur simultaneously, which means that the oxygen addition step does not occur after pH equilibrium is reached. Thus, based on the evidence of record, we determine that the preponderance of the evidence does not support the Examiner's finding that GSB teaches that pH equilibrium is reached after the neutralization step and before the addition of oxygen. In order to make a rejection under§ 103(a), the Examiner must establish a prima facie case of obviousness, including the presence of each 4 Appeal2015-000728 Application 12/999,017 element of the claim. In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also, In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Because, as discussed above, the Examiner has not established each of the elements of claim 1, we reverse the obviousness rejection.6 CONCLUSION We REVERSE all of the appealed rejections. REVERSED 6 Because we conclude that the Examiner has not established a prima facie case of obviousness, we need not and do not reach or address Appellants' arguments (Appeal Br. 3-5) that they have demonstrated patentability of claim 1 through unexpected benefits resulting from the use of oxygen at a pressure load of 0.10 MPa and 0.20 MPa. 5 Copy with citationCopy as parenthetical citation