Ex parte Pagani et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

07987127 (B.P.A.I. Jun. 29, 1998)

Application for patent filed December 8, 1992.1
1
Paper No. 22
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GIORGIO PAGANI
and UMBERTO ZARDI
______________
Appeal No. 95-2535
Application 07/987,1271
_______________
HEARD: JUNE 8, 1998
_______________
Before WINTERS, GRON and WEIMAR, Administrative Patent Judges.
WEIMAR, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the examiner's decision finally
rejecting claims 9-14. Pending claims 15-18 were withdrawn
Appeal No. 95-2535
Application 07/987,127
We note that a Divisional Application 08/458,123 was2
filed on June 2, 1995, presenting claims to a urea plant.
This application issued on August 26, 1997, as U.S. Patent No.
5,660,801 with claims very similar to pending claims 15-18.
Upon further prosecution, we presume claims 15-18 will be
canceled from this application.
2
from consideration in Paper No. 7, the Final Rejection. 2
Appealed claim 9 was amended by appellants in Paper No. 14,
filed on July 14, 1994. This amendment was entered, as
indicated in Paper #19. An additional amendment to claim 9
was proposed by appellants as an attachment to Paper No. 18, a
Reply Brief, received December 2, 1994. As indicated in Paper
No. 19, a letter from the examiner mailed December 15, 1994,
neither the Reply Brief nor the attached amendment has been
entered.
Claim 9, as amended on July 14, 1994, is illustrative of
the subject matter of the claims on appeal and reads as
follows:
9. A method of revamping a pre-existing urea production
plant having a first urea synthesis reactor in fluid
communication with an ammonia stripping section for separating
free ammonia and carbamate from an aqueous urea solution
discharged from said first reactor, said method comprising the
steps of:
a) providing, upstream of said ammonia stripping section,
a second urea synthesis reactor of the once-through type
having a higher efficiency yield than said first urea
Appeal No. 95-2535
Application 07/987,127
3
synthesis reactor;
b) distributing an overall production capacity that
exceeds that of said pre-existing plant to apportion from 60
to 95% of said overall capacity to said first urea synthesis
reactor and from 5 to 40% of said capacity to said second urea
synthesis reactor.
The reference relied upon by the examiner is:
Pagani
(European Patent Application) 0 479 103 Apr. 8,
1992
Claims 9-14 stand rejected under 35 U.S.C. § 103 in view
of the teachings of Pagani.
We vacate the examiner's rejections with respect to
claims 9-14, and enter new grounds of rejection with respect
to these claims under the provisions of 37 CFR § 1.196(b).
BACKGROUND
The invention involves urea production on an industrial
scale and the upgrading of a pre-existing urea synthesis
plant. As disclosed in the specification on page 2, in the
last paragraph, the resultant urea production scheme includes
an ammonia stripping step following urea synthesis. As
indicated on pages 2 and 3 of the specification, the invention
Appeal No. 95-2535
Application 07/987,127
4
is a variation on a process described in Pagani. In this
specification Pagani is referred to as European Patent
Application No. 91116297.2. The application was published as
Publication No. 0479103 on April 8, 1992 and constitutes the
single reference applied by the examiner.
Discussion
Having considered the entire record in this appeal, we
have determined that the claims presented are indefinite under
35 U.S.C. § 112, second paragraph. Accordingly, we institute
a new ground of rejection of claims 9-14 under this statute
infra. Since the metes and bounds of claims 9-14 cannot be
readily ascertained, consideration of the issues raised with
respect to obviousness under 35 U.S.C. § 103 would be
premature with respect to these claims. See In re Geerdes,
491 F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974)(Before
considering rejections under 35 U.S.C. 103 and 112, we must
first decide the scope of the claims.); In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971)(One is not in
position to determine whether a claim is enabled under the
Appeal No. 95-2535
Application 07/987,127
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first paragraph of 35 U.S.C. § 112 until the metes and bounds
of that claim are determined under the second paragraph of
this section of the statute.); and, In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962)(Analyzing claims based
on "speculation as to meaning of the terms employed and
assumptions as to the scope of such claims" is legal error.).
New Ground of Rejection Under 37 CFR § 1.196(b)
Claims 9-14 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicants regard as their invention.
The preamble of claim 9 reads, "a method of revamping a
pre-existing urea production plant . . . comprising the steps
of." Subsequent to the preamble, claim 9 recites two process
steps
a) and b), which read:
a) providing, upstream of said ammonia stripping section,
a second urea synthesis reactor of the once-through type
Appeal No. 95-2535
Application 07/987,127
6
having a higher efficiency yield than said first urea
synthesis reactor;
b) distributing an overall production capacity that
exceeds that of said pre-existing plant to apportion from 60
to 95% of said overall capacity to said first urea synthesis
reactor and from 5 to 40% of said capacity to said second urea
synthesis reactor.
The manipulative step recited in a) of claim 9 is
"providing . . . a second urea synthesis reactor", which is
consistent with the preamble indication that the claim is
drawn to a method of "revamping an existing urea production
plant." This part of the claim includes a construction step
that results in a modified urea plant.
The manipulative step recited in b) of claim 9 is
"distri-buting an overall production capacity" between the
"first urea synthesis reactor", i.e., the pre-existing
reactor, and the "second urea synthesis reactor", i.e., the
reactor added in step a) of claim 9. The step of
"distributing capacity" presumes that reactants are being
distributed between and transported to the two reactors.
Thus, step b) presumes that urea is being synthesized and the
plant is operating. Step b) appears to be inconsistent with
the preamble. If the plant is operating, then a method of
Appeal No. 95-2535
Application 07/987,127
7
producing urea is being claimed, not a method of re-
constructing an existing production plant.
Claims 10-14 are all dependent upon claim 9 and are
similarly confusing and indefinite. Claims 10, 11, 12 and 14
each modify claim 9 by adding a "wherein" clause which reads
"wherein urea synthesis . . . is carried out . . . ." Claim
13 is dependent on claim 12. These dependent claims do not
further limit a method of "revamping a pre-existing urea
production plant," rather they limit a method of producing
urea.
This panel is unable to ascertain whether the claims are
drawn to a method of making urea, or to a method of modifying
a production plant. Given this ambiguity, this panel cannot
determine whether method step b) further limits the subject
matter claimed if the method is merely one of revamping a pre-
existing plant by providing a second reactor.
Consequently, we vacate the examiner's rejection of
claims 9-14 under 35 U.S.C. § 103. In doing so, we emphasize
that we have not decided and cannot decide the merits of the
issues raised by the examiner. If prosecution is continued on
this subject matter, and claims are presented which satisfy
Appeal No. 95-2535
Application 07/987,127
8
the requirements of 35 U.S.C. § 112, second paragraph, the
examiner should again compare the scope of the claimed subject
matter to the subject matter described and/or reasonably
suggested by the prior art.
Conclusion
We vacate the rejection of claims 9-14 under 35 U.S.C.
§ 103.
We newly reject claims 9-14 under 35 U.S.C. § 112, second
paragraph, in accordance with 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
Appeal No. 95-2535
Application 07/987,127
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(§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED; 37 CFR § 1.196(b)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
TEDDY S. GRON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )

Appeal No. 95-2535
Application 07/987,127
10
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