Ex Parte Mochida et al

Board of Patent Appeals and Interferences

Jul 23, 2008

10081208 (B.P.A.I. Jul. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ISAO MOCHIDA, AKINORI YASUTAKE,
TOSHIHIKO SETOGUCHI, NORIHISA KOBAYASHI,
TAKAHIRO KASUH, and MASAAKI YOSHIKAWA
______________

Appeal 2008-3029
Application 10/081,208
Technology Center 1700
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Decided: July 23, 2008
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Before CHARLES F. WARREN, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 23 through 28 in the Office Action mailed
October 24, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2006).
The appeal was heard July 8, 2008.

Appeal 2008-3029
Application 10/081,208
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a denitration system, and
is representative of the claims on appeal:
23. A denitration system comprising
(A) a first reactor that has an inlet and an outlet and that is packed
with a heat treated active carbon having an atomic surface oxygen/surface
carbon ratio of 0.05 or less;
(B) a second reactor that has an inlet and an outlet and that is packed
with said heat treated active carbon, wherein the outlet of the first reactor is
connected to the inlet of the second reactor;
(C) an ammonia supply line that is connected [sic, to] the inlet of said
first reactor;
(D) a system inlet that is connected to the inlet of said first reactor;
and
(E) a system outlet that is connected to the outlet of said second
reactor.

The Examiner relies upon the evidence in these references (Ans. 3):
Seki 3,961,020 Jun. 1, 1976
Nishino 4,256,728 Mar. 17, 1981
Oikawa 4,831,011 May 16, 1989
Liang 5,462,908 Oct. 31, 1995
Appellants request review of the grounds of rejection of claims 23
through 28 under 35 U.S.C. § 103(a) advanced on appeal: over Seki taken
with Oikawa and in view of Liang; and over Nishino taken with Oikawa and
Liang. App. Br. 8; Ans. 3 and 4.
Appellants argue the claims in each ground of rejection as a group as
well as separately argue independent claims 23, 25, and 27. App. Br. in
entirety. Thus, we decide this appeal based on claims 23, 25, and 27.
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37 C.F.R. § 41.37(c)(1)(vii) (2006).
The threshold issue in each ground of rejection in this appeal is
whether the combined teachings of Seki, Oikawa, and Liang, and of Nishino,
Oikawa, and Liang support the Examiner’s position that, prima facie, one of
ordinary skill in this art would have found therein either the teaching of an
identical or substantial identical active carbon that meets the limitation “a
heat treated active carbon having an atomic surface oxygen/surface carbon
ratio of 0.05 or less” of the appealed claims.
According to the disclosure in the Specification, a heat treated active
carbon having an atomic surface oxygen/surface carbon ratio of 0.05 or less
“can be obtained by heat-treating the raw active carbon at 600 to 1,200º C. in
a non-oxidizing atmosphere . . . to remove oxygen-containing functional
groups (such as COOH and COH) present at the surfaces of the raw active
carbon and thereby reduce the atomic oxygen/carbon ratio of the surfaces to
0.05 or less.” Spec. 13:5-10. Accordingly, on this record, we determine, as
a matter of law, that the appealed claims encompass an activate carbon
product characterized as obtained by a process involving a heat treatment
which results in the removal of oxygen-containing functional groups to the
extent that an atomic surface oxygen/surface carbon ratio of 0.05 or less is
obtained even though such a method is not specified in the claims per se.
See, e.g., In re Thorpe, 777 F.2d 695, 696-97 (Fed. Cir. 1985), and cases
cited therein.
We find Seki would have disclosed to one of ordinary skill in this art
an activated carbon impregnated with, inter alia, bromine capable of being
decomposed by nitrogen oxide, wherein “the activated carbon bears or
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Application 10/081,208
carries bromine” that has been applied thereto by spraying or dipping. Seki
col. 2, ll. 3-32; see also, e.g. col. 4, ll. 3-18. The activated carbon bears or
carries the bromine to the extent that the bromine is available to react with
ammonia to form ammonium bromide, which product “is held or retained by
the packed layer of activated carbon” and reacts with nitrogen oxide. Seki
col. 2, ll. 36-40 and 50-59. Ammonium bromide can also be applied directly
to the activated carbon or prepared in situ from hydrogen bromide and
ammonia. Seki col. 2, ll. 41-49.
We find Nishino would have disclosed to one of ordinary skill in this
art an activated carbon having, inter alia, bromine supported thereon which
is used to contact a gas containing ammonia or an amine. Nishino, e.g., col.
1, ll. 33-41, and col. 3, ll. 19-31.
We find Liang would have disclosed to one of ordinary skill in this art
an organic amine impregnated activated carbon which can be prepared by
“reaction of the acid sites (typically these are oxygen-containing moieties)
[of the activated carbon] by halogenation,” such as bromine, to “effectively
de-activate the surface acid groups on the carbon,” thus stabilizing the
amines absorbed on the carbon surface. Liang col. 1, l. 55 to col. 2, l. 24,
and col. 2, ll. 35-63.
We find Oikawa would have disclosed to one of ordinary skill in this
art “a carbon-based adsorbent comprising active carbon and metallic ions
supported on the surface . . . of the active carbon,” wherein the active carbon
can be in fiber form. Oikawa col. 1, ll. 11-14 and 59-61. The surface of the
active carbon is constructed of graphite which is provided with electron-
donating surface functional groups by treatment with, inter alia, ozone and
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Application 10/081,208
hydrogen peroxide to provide oxygen-containing surface functional groups
“including hydroxy groups (-OH), carboxyl groups
(-COOH), and formyl groups or aldehyde groups (-CHO).” Oikawa col. 2,
ll. 21-37, and col. 2, l. 55 to col. 3, l. 9.
Where a product is described in a claim by the process by which it is
made, the Examiner can establish a prima facie case of obviousness by
establishing that it reasonably appears from the evidence in the applied
references that the so claimed product is identical or substantially identical
to a compound taught by the references. See, e.g., Thorpe, 777 F.2d at 697
(citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)) (“The burden
of presenting a prima facie case of unpatentability resides with the PTO.”).
Only when the prima facie case is established does the burden shift to
Appellants to patentably distinguish the claimed product over the product
reasonably identical or substantially identical taught by the reference. See,
e.g., Thorpe, 777 F.2d at 697 (citing, inter alia, In re Fitzgerald, 619 F.2d
67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977));
cf. In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990) (“The Board held that
the compositions claimed by Spada ‘appear to be identical’ to those
described by Smith. While Spada criticizes the usage of the word ‘appear,’
we think that it was reasonable for the PTO to infer that the polymerization
by both Smith and Spada of identical monomers, employing the same or
similar polymerization techniques, would produce polymers having the
identical composition.”).
The Examiner contends Liang establishes that Seki’s bromine
treatment inherently reduces the surface oxygen of the active carbon to the
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Application 10/081,208
claimed level, or it would have been “an obvious expedient to optimize the
bed activity” to arrive at an active carbon having the claimed surface oxygen
level. Ans. 3. The Examiner submits the same contentions with respect to
Nishino and Liang. Ans. 4. In response to Appellants’ contentions that the
Examiner has not carried the burden of initially establishing a prima facie
case by explaining how one of ordinary skill in the art following the
combinations of references would arrive at an active carbon encompassed by
the claims, the Examiner contends ‘it cannot be determined what the oxygen
content is” but the evidence shows “it is possessed, due to the action of the
bromine,” thus holding that the burden shifted to Appellants to establish
otherwise. App. Br., e.g., 10 and 15-16; Ans. 4-5.
We agree with Appellants that the Examiner has not established a
prima facie case of obviousness in the first instance. Indeed, the applied
references would have taught one of ordinary skill in this art that the oxygen
containing moieties carry bromine or are deactivated with bromine and other
halogens. The Examiner has not provided a scientific explanation or
evidence establishing that such treatments with bromine and other halogens
result in removal of the oxygen containing moieties such that a claimed
active carbon having the requisite “atomic surface oxygen/surface carbon
ratio of 0.05 or less” is obtained, and thus the burden has not shifted to
Appellants to establish otherwise. See, e.g., KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1741 (2007) (“it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does”); In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when
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Application 10/081,208
the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); In re Dow
Chem. Co., 837 F.2d 469, 473 (Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested
to one of ordinary skill in the art that [the claimed process] should be carried
out and would have a reasonable likelihood of success, viewed in light of the
prior art. Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.” (citations
omitted)).
Accordingly, we reverse the grounds of rejection of the appealed
claims under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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