Ex parte RAHM et al.

Board of Patent Appeals and Interferences

Feb 15, 2000

08235542 - (D) (B.P.A.I. Feb. 15, 2000)

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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RANDALL L. RAHM, KEVIN B. AVERY,
and MARK H. BERGGREN
__________
Appeal No. 1997-1464
Application 08/235,542
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and WALTZ, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1 through 9 and 19 through 27 as
amended subsequent to the final rejection. These are all of
the claims remaining in the application.
Appeal No. 1997-1464
Application No. 08/235,542
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The subject matter on appeal relates to a method for
producing a coal product from raw coal which comprises
treating dried coal with a liquid mixture of oil and molasses.
The appealed subject matter also relates to a liquid for
treating a coal product which comprises a mixture of molasses
and a hydrocarbon-based solution. Further details of this
appealed subject matter are readily apparent from a review of
representative independent claims 1 and 19, a copy of which
taken from the appellants’ brief is appended to this decision.
The following reference is relied upon by the examiner as
evidence of obviousness:
Paersch et al. 4,501,593 Feb. 26, 1985
(Paersch)
All of the claims on appeal are rejected under 35 U.S.C.
§ 103 as being unpatentable over Paersch.
We refer to the brief and reply brief and to the answer
and supplemental answer for an exposition of the opposing
viewpoints expressed by the appellants and the examiner
concerning the above noted rejection.
OPINION
Paersch teaches a process for pelletizing particles of
coal by adding thereto a first and second binder which the
Appeal No. 1997-1464
Application No. 08/235,542
3
examiner explicitly equates to the here claimed liquid
ingredients, namely, molasses and oil (appealed claim 1) or
hydrocarbon-based solution (appealed claim 19). While the
examiner acknowledges that Paersch teaches adding his first
and second binders separately, the examiner urges that
patentee also teaches at lines 3 through 20 in column 3 adding
these binders “in combination” (answer, page 3). More
specifically, the examiner considers the Paersch reference to
teach adding the first and second binders in combination by
virtue of the disclosure “[t]he first and second binders are
conveniently added by spraying” at lines 3 and 4 of column 3
(see the paragraph bridging pages 5 and 6 of the answer).
We cannot agree with the examiner’s position that
patentee teaches adding his first and second binders in
combination. The above quoted disclosure at lines 3 and 4 of
column 3 does not recite and would not have suggested anything
about the two binders being in combination. Moreover, as
explained by the appellants in their brief and reply brief,
the disclosure of the Paersch reference unambiguously requires
that the first and second binders be added to coal particles
separately in order to obtain specified desiderata including a
Appeal No. 1997-1464
Application No. 08/235,542
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particular distribution and concentration gradient (e.g., see
the first paragraph in column 2, the last paragraph in column
4, the paragraph bridging columns 5 and 6 and independent
claim 1 of the patent).
In short, the rejection advanced by the examiner on this
appeal is fatally premised upon the examiner’s erroneous
position that the above quoted disclosure of Paersch teaches
adding patentee’s first and second binders in combination. It
follows that we cannot sustain the examiner’s section 103
rejection of the claims on appeal as being unpatentable over
Paersch.
Other issues
As explained earlier, the invention disclosed and claimed
by Paersch clearly adds the first and second binders to coal
particles separately rather than in the form of a mixture as
required by the appealed claims. Nevertheless, it is
significant that Paersch compares his invention of adding the
first and second binders separately (see the example in column
5) to a comparative experiment in which the first and second
binders are added as a mixture (see Comparative Experiment B
in column 6). Thus, an issue is raised as to whether the
Appeal No. 1997-1464
Application No. 08/235,542
This last mentioned point raises the issue of whether the1
“about 40%” recitation in the last clause of appealed claim 19
concerns the recited “hydrocarbon-based solution” (which
corresponds to the above mentioned bitumen emulsion of
Comparative Experiment B) or the recited “hydrocarbon
portion”. The examiner and the appellants should address and
resolve this issue in any further prosecution that may occur.
5
liquid mixture defined by, for example, independent claim 19
distinguishes over the liquid mixture described in Comparative
Experiment B of the Paersch patent. In this regard, we point
out that the liquid mixture of Comparative Experiment B
contains 25 grams of molasses which equals about 43% of the
total mixture and 33 grams of bitumen emulsion which equals
about 57% of the total mixture. In light of the foregoing,1
the examiner and the appellants should consider whether the
disclosure of Comparative Experiment B in the Paersch
reference satisfies all of the requirements of at least
appealed claim 19.
Summary
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
Appeal No. 1997-1464
Application No. 08/235,542
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)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )

tdl
James L. Johnson
Suite 3500
1700 Lincoln Street
Denver, CO 80203
Appeal No. 1997-1464
Application No. 08/235,542
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APPENDIX
1. A method for producing a coal product from raw coal,
comprising the steps of:
heating the raw coal in a coal dryer;
reducing a moisture content of the raw coal using said
heating step to produce dried coal;
cooling the dried coal after said reducing step; and
treating the dried coal after said reducing step and all
heating steps involved in producing the coal product from the
raw coal with a liquid comprising oil and molasses to produce
the coal product, wherein said oil and molasses are mixed
together before said treating step to provide said liquid used
by said treating step.
19. A liquid for treating a coal product, comprising:
a mixture of molasses and a hydrocarbon-based solution,
wherein:
said molasses is present in the amount of at least about
40% of said liquid by weight; and
said hydrocarbon-based solution comprises a hydrocarbon
portion which comprises at least about 40% of said liquid by
weight, wherein said molasses and said hydrocarbon-based
solution are mixed before being used in the treatment of the
coal product.