Ex parte Pignatello

Board of Patent Appeals and Interferences

Sep 30, 1999

08118128 (B.P.A.I. Sep. 30, 1999)

Application for patent filed September 8, 1993.1
1
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not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH J. PIGNATELLO
__________
Appeal No. 1996-0270
Application 08/118,1281
___________
HEARD: July 13, 1999
___________
Before PAK, OWENS and KRATZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-5, 8-10 and 19-22, which are all of the claims
remaining in the application.
THE INVENTION
Appeal No. 1996-0270
Application 08/118,128
2
Appellant claims a method for decontaminating soil which
contains an organic compound having at least one oxidizable
aliphatic or aromatic functional group, by contacting the soil
with a recited ferric chelate and a peroxide compound in the
presence of water at the pH of the soil. Claim 1 is
illustrative and reads as follows:
1. A method for decontaminating soil containing an
organic compound having at least one oxidizable aliphatic or
aromatic functional group comprising contacting the soil with
an active, soluble ferric chelate selected from the group
consisting of ferric nitrilotriacetate and ferric
hydroxyethyleniminodiacetate and a peroxide compound in
amounts effective to achieve oxidation of the soil
contaminating compound in the presence of water at the pH of
the soil.
THE REFERENCES
Pignatello 5,232,484 Aug. 3,
1993
Yunfu Sun et al. (Sun), “Chemical Treatment of Pesticide
Wastes. Evaluation of Fe(III) Chelates for Catalytic Hydrogen
Peroxide Oxidation of 2,4-D at Circumneutral pH”, 40 J. Agric.
Food Chem. 322-27 (1992).
THE REJECTION
Claims 1-5, 8-10 and 19-22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sun in view of Pignatello.
OPINION
Appeal No. 1996-0270
Application 08/118,128
Pignatello is not prior art because it has the same2
inventive entity as the present application and was not issued
more than one year prior to the filing date of the present
application. Consequently, we do not consider Pignatello.
The examiner relies upon Pignatello merely for a teaching that
2,4-D is a pesticide (final rejection mailed June 7, 1994,
paper no. 8, page 3), which is disclosed by Sun (page 322,
right column, first full paragraph) and acknowledged by
appellant (specification, page 6, lines 18-19). Thus, our
excluding Pignatello from consideration does not cause our
affirmance to involve a new ground of rejection.
3
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with the
examiner that the claimed invention would have been obvious to
one of ordinary skill in the art at the time of appellant’s
invention over the applied prior art. Accordingly, we sustain
the aforementioned rejection.2
Appellant argues that the claims stand or fall in four
groups as follows: 1) claims 1, 5 and 8-10, 2) claims 2-4,
3) claims 19 and 20, and 4) claims 21 and 22 (brief, pages 3-
4). We therefore limit our discussion to one claim in each
group, namely, claims 1, 2, 19 and 21. See In re Ochiai, 71
F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2 (Fed. Cir.
1995); 37 CFR § 1.192(c)(5)(1993).
Rejection of claim 1
Appeal No. 1996-0270
Application 08/118,128
4
For appellant’s claimed method to have been prima facie
obvious, the prior art must have fairly suggested, to one of
ordinary skill in the art, carrying out the claimed method,
and also must have provided such a person with a reasonable
expectation of success in doing so. See In re Vaeck, 947 F.2d
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re
O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir.
1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648
(Fed. Cir. 1985). Sun discloses (pages 322-23) that
contamination of soil by pesticide waste is a problem, and
that a number of ligands for Fe form ferric chelates which3+
are effective, in combination with hydrogen peroxide, for
oxidizing 2,4-dichlorophenoxyacetic acid (2,4-D) which,
appellant acknowledges (specification, page 6, lines 18-19),
was a known pesticide. Appellant also acknowledges that Sun
discloses the ferric chelates used in appellant’s method
(specification, page 6, lines 1-5; page 7, lines 19-21). The
disclosure by Sun, therefore, would have provided one of
ordinary skill in the art with motivation to use appellant’s
ferric chelates to decontaminate soil. As explained as
Appeal No. 1996-0270
Application 08/118,128
5
follows, Sun also would have provided one of ordinary skill in
the art with a reasonable expectation of success in doing so.
Sun’s oxidations are carried out at a pH of 6 (page 322).
As acknowledged by appellant (specification, page 8, lines 29-
30), this pH typically is the pH of soil.
Sun’s oxidations take place in aerated aqueous solution
(page 322). Thus, no soil is present in Sun’s tests.
However, appellant states that appellant’s method can be
carried out using a slurry of soil in water, that the amount
of water in which the soil is slurried is not critical, and
that amounts of water which are much larger than 1 part water
per 0.3 to 0.5 parts of soil can be used (specification, page
8, lines 8-18). Thus, when we give appellant’s claims their
broadest reasonable interpretation consistent with the
specification, see In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983); In re Herz, 537 F.2d 549,
551, 190 USPQ 461, 463 (CCPA 1976); In re Okuzawa, 537 F.2d
545, 548, 190 USPQ 464, 466 (CCPA 1976), we conclude that the
term “decontaminating soil” encompasses carrying out the
Appeal No. 1996-0270
Application 08/118,128
The other disclosed mechanism involves formation of3
high-valent iron-oxo specides originating from either Fe(II)
or FE(III) (page 326).
It is axiomatic that our consideration of the prior art4
must, of necessity, include consideration of the admitted
6
decontamination in a slurry which contains a small amount of
soil and a large amount of water.
As for whether one of ordinary skill in the art would
have reasonably expected Sun’s method to be effective when
applied to a slurry containing soil contaminated with 2,4-D,
rather than to an aqueous solution of 2,4-D as in Sun’s tests,
we note the following.
Sun teaches that a promising method for decomposing 2,4-
D, which was demonstrated using an aqueous solution of 2,4-D,
is oxidation by use of hydrogen peroxide and Fe (page 322). 3+
Sun also teaches that one of the two proposed mechanisms
proposed for the oxidation using hydrogen peroxide and Fe ,3+
i.e., the classical radical mechanism, involves the Fenton
reaction (page 326). Appellant acknowledges that Fenton-type3
systems were known in the art to be effective for oxidizing
soil contaminants in soil suspensions (specification, page 3,
lines 8-20). 4
Appeal No. 1996-0270
Application 08/118,128
prior art. See In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Davis, 305 F.2d 501, 503, 134
USPQ 256, 258 (CCPA 1962).
7
Because Fenton-type systems were known to be effective
for decontaminating soil in a slurry, and because Sun
indicates that his method is considered to be operable through
one of two mechanisms, one of which involves the Fenton
reaction, one of ordinary skill in the art would have had a
reasonable expectation that the Sun method would be effective
for decontaminating soil in a slurry. We note that for a
prima facie case of obviousness to be established, only a
reasonable expectation of success, not absolute certainty, is
required. See O’Farrell, 853 F.2d at 903-04, 7 USPQ2d at
1681.
For the above reasons, we hold that the method recited in
appellant’s claim 1 would have been prima facie obvious to one
of ordinary skill in the art at the time of appellant’s
invention over Sun.
Appellant argues that Sun does not take into account the
potentially interfering substances in soil or the sorption of
Appeal No. 1996-0270
Application 08/118,128
8
ferric chelates into soil (brief, pages 4-5; reply brief, page
3). As explained above, one of ordinary skill in the art
would have had a reasonable expectation that Sun’s method
would be applicable to a slurry of soil in water. Because it
was known in the art that the factors referred to by appellant
do not prevent Fenton-type systems from being effective for
oxidizing soil contaminants in a soil slurry, and because Sun
teaches that one of the two mechanisms postulated for his
method involves the Fenton reaction, one of ordinary skill in
the art would have had a reasonable expectation that the
factors referred to by appellant likewise would not prevent
Sun’s method from being effective for oxidizing soil in a
slurry. Appellant refers to the Pignatello declaration (filed
March 23, 1994, paper no. 7) wherein it is stated (page 3)
that “[s]oil contains substances that sorb the pesticide and
potentially inactivate the chelate catalyst, and substances
that destroy hydrogen peroxide by reacting with it (e.g., with
soil organic matter), consuming it (e.g., with microbes), and
decomposing it (e.g., with metal ions in minerals).”
Appellant, however, provides no explanation as to why one of
Appeal No. 1996-0270
Application 08/118,128
9
ordinary skill in the art who was aware that Fenton systems
are effective for decontaminating soil in a slurry and was
aware of Sun’s teaching regarding the mechanism of his method,
as discussed above, would have considered Sun’s method to be
ineffective for decontaminating soil in a slurry.
Appellant argues that Sun states (page 326, col. 2,
lines 10-11) that nitrilotriacetic acid and hydroxyethylimino-
diacetic acid were relatively unstable, and that this teaching
points away from using these compounds (brief, pages 7-8;
reply brief, pages 7-8). Sun not only teaches that these
compounds were relatively unstable, but also teaches that they
were relatively active (page 326). When determining whether
to use these compounds, one of ordinary skill in the art would
have balanced the greater activity against the relative
instability.
Appellant argues that chelates made using picolinic acid
and rhodizonic acid were among the chelates found by Sun to
have high activity in water, but that appellant has found that
these chelates leave no more than 2% iron in solution after
addition to soil suspensions (brief, page 7). Appellant’s
specification (page 23, lines 9-11) shows that
Appeal No. 1996-0270
Application 08/118,128
10
hydroxyethyleniminodiacetate and nitrilotriacetate, which are
two of appellant’s ligands, form chelates which leave about 9-
34% Fe in solution. Appellant’s argument is not persuasive
because the observed results would have been expected by one
of ordinary skill in the art. Because
hydroxyethyleniminodiacetic acid and nitrilotriacetic acid are
stronger acids than picolinic acid and rhodizonic acid, one of
ordinary skill in the art would have expected the
hydroxyethyleniminodiacetate and nitrilotriacetate to attract
the iron more strongly and thereby compete better with the
soil than picolinic acid and rhodizonic acid with respect to
keeping the iron in solution. It is not enough for appellant
to show that the results for appellant’s process and the
comparative process differ. The difference must be shown to
be an unexpected difference. See In re Freeman, 474 F.2d
1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
Appellant argues (brief, page 6; reply brief, page 6)
that the Pignatello declaration states (page 3) that the
amounts of peroxide and chelate required to obtain degradation
Appeal No. 1996-0270
Application 08/118,128
Appellant acknowledges that Sun is the closest prior art5
(reply brief, page 6).
11
were less than expected. This argument is not persuasive
because appellant has not provided a comparison with the
closest prior art, which is Sun, see In re Baxter Travenol5
Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir.
1991); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984), or provided evidence which is commensurate
in scope with the claims. See In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980).
Rejection of claims 2, 19 and 21
Appellant’s arguments that Sun teaches away from
obtaining the percentage of ferric chelate which does not sorb
to the soil recited in claim 2, and that NTA as recited in
claim 21 is relatively unstable (brief, page 8), are addressed
above in the discussion of the rejection of claim 1.
Regarding claim 19, the chelate in that claim, as in claim 1,
can be ferric nitrilotriacetate or ferric
hydroxyethyleniminodiacetate. Consequently, the method
Appeal No. 1996-0270
Application 08/118,128
12
recited in claim 19 would have been fairly suggested to one of
ordinary skill in the art by Sun for the reasons given above
regarding claim 1.
Conclusion
For the above reasons, we conclude, based on the
preponderance of the evidence, that the methods recited in
appellant’s claims 1, 2, 19 and 21 would have been obvious to
one of ordinary skill in the art within the meaning of 35
U.S.C. § 103.
DECISION
The rejection of claims 1-5, 8-10 and 19-22 under 35
U.S.C. § 103 over Sun in view of Pignatello is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
CHUNG K. PAK )
Appeal No. 1996-0270
Application 08/118,128
13
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
Dale L. Carlson
Intellectual Property Section
Wiggin and Dana
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