Ex Parte Runyon

Board of Patent Appeals and Interferences

Mar 21, 2008

10459640 (B.P.A.I. Mar. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DALE LEROY RUNYON
__________

Appeal 2008-1941
Application 10/459,640
Technology Center 1700
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Decided: March 21, 2008
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Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
9-24. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
INTRODUCTION
Appellant claims a method of processing source material using
functionally electrolyzed water (FEW) (claim 1). Appellant discloses that
Appeal 2008-1941
Application 10/459,640

using FEW to process the source material (i.e., coal combustion products) is
safer than the current chemicals used to process coal combustion products
(i.e, hydrochloric acid, sulfuric acid, or nitric acid) (Original Spec. 2)1.
Claim 9 is illustrative:
A method for processing a source material using functionally
electrolyzed water comprising:

generating functionally electrolyzed water;

contacting said functionally electrolyzed water with the
source material to define a mixture with products from
chemical reactions between said functionally electrolyzed
water and the source material; and

removing the products from the functionally electrolyzed
water and source material mixture.

The Examiner relies on the following prior art references as evidence
of unpatentability:

1 Appellant filed a Substitute Specification with a Substitute figure on
December 2, 2005. However, Appellant did not include a statement that the
Substitute Specification includes no new matter as required by 37 C.F.R.
§ 1.125(b) (2003). We note that the substitute figure and the description
thereof differ substantially from the original figure and its description.
Furthermore, the Examiner has not made an affirmative indication of
whether the Substitute Specification has been entered in accordance with the
Manuel of Patent Examining Procedure (MPEP) § 608.01(q) (8th Ed.
Revised September 2007). In light of these circumstances, we cannot
determine whether the Substitute Specification has been entered by the
Examiner. Accordingly, we refer in the decision to the original
Specification filed June 5, 2003.
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Application 10/459,640

Dvalishvili (as translated)2, 3 SU 1031507 A Jul. 30, 1983
Hewlett 5,529,606 Jun. 25, 1996

The rejection as presented by the Examiner is as follows:
1. Claims 9-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hewlett in view of Dvalishvili.
Appellant only argues independent claim 9.
The Examiner finds that Hewlett discloses all the features of claim 9,
except the use of functionally electrolyzed water (FEW) (Ans. 3). The
Examiner finds that Dvalishvili discloses using electrolyzed water to treat
ore materials (Ans. 3). The Examiner concludes that it would have been
obvious to substitute Dvalishvili’s electrolyzed water for the water of
Hewlett because improved mineral recovery as taught by Dvalishvili would
also be desirable in Hewlett’s process (Ans. 3 and 4). The Examiner
determines that once Hewlett’s water with NaCl is electrolyzed per
Dvalishvili’s disclosure to electrolyze the water, FEW would have been
formed (Ans. 4).

2 Both Appellant and the Examiner refer to SU 1031507 A as “Avramov.”
However, the Examiner’s translation mailed to Appellant on January 17,
2008 indicates the first named inventor as “V. Sh. Dvalishvili.”
Accordingly, we use the first named inventor to reference SU 1031507 A in
this decision.
3 There appear to be two translations of the Dvalishvili reference. Appellant
submitted a translation on March 31, 2006 and the Examiner mailed a
translation to Appellant on January 17, 2008. We have considered both and
find them to contain the same subject matter. Therefore, we refer in the
decision to the translation mailed on January 17, 2008 to Appellant.

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Appeal 2008-1941
Application 10/459,640

OPINION
Appellant argues that neither Hewlett nor Dvalishvili discloses the
FEW claim feature (Br. 3-4). Appellant argues that Dvalishvili fails to
disclose whether chemical reactions occur between the electrolyzed water
and source material and the Examiner has not established that such reactions
inherently occur (Br. 4-5). Appellant contends that there is no motivation to
substitute Dvalishvili’s electrolyzed water with Hewlett’s method of treating
metal ore (Br. 6).
We have considered Appellant’s arguments and are unpersuaded for
the reasons below.
We begin our analysis by construing the claim phrase “functionally
electrolyzed water.” In our analysis we use the original Specification filed
June 5, 2003 for the reasons noted above. See, n. 1 supra. The originally
filed Specification indicates that “functionally electrolyzed water” is “made
from water and electrolytes such as various salts (NaCl, NaBr, NaSO4)”
(Spec. 3). This FEW definition does not require that the water with the salts
be electrolyzed. Accordingly, we construe the claim phrase “functionally
electrolyzed water” as water with salts added to it.
Hewlett discloses an oxidation process for separating various metals
from ores (Hewlett, col. 1, ll. 4-6). Hewlett uses water with NaCl in the
method to oxidize and aid in removing metal from ore (Hewlett, col. 7, ll. 5-
41). Hewlett discloses that it is known to use electrooxidation (i.e., the
electrolysis of brine to produce sodium hypochlorite as the oxidant) to treat
metal ores (Hewlett, col. 2, ll. 27-30).
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Application 10/459,640

Using our claim construction of “functionally electrolyzed water,” we
determine that Hewlett’s water with NaCl satisfies the functionally
electrolyzed water claim feature. Because it is undisputed that Hewlett
discloses the other features of claim 9 and in view of our construction of
“functionally electrolyzed water,” we find that Hewlett anticipates
Appellant’s claim 9. In other words, in the Examiner’s § 103 rejection over
Hewlett alone would have rendered obvious Appellant’s claims. In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (Anticipation is the epitome of
obviousness).
Notwithstanding the above finding, even if we construe the claim
phrase “functionally electrolyzed water” as including electrolysis of the
water and electrolytes, the Examiner’s combination of Hewlett in view of
Dvalishvili would have rendered the claims obvious.
Specifically, Hewlett discloses that water and NaCl (i.e., an
electrolyte) are combined to assist with leaching metal and minerals from
ore (Hewlett, col. 7, ll. 5-7 and 30-32). Hewlett also discloses that it is
known in the metal extraction art to use electrooxidation to assist in the
recovery of metal from ore (Hewlett, col. 2, ll. 28-30). Hewlett discloses
that electrooxidation includes the electrolysis of brine to form sodium
hypochlorite to be used as an oxidant in the separation process for gold from
ore (Hewlett, col. 2, ll. 29-30).
Dvalishvili discloses that using electrolyzed water “activated” the
surface of the mineral grains and permitted the timely removal of the
mineralized foam with the useful components (Dvalishvili, 4).

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Appeal 2008-1941
Application 10/459,640

From the above disclosures and contrary to Appellant’s argument,
Hewlett provides motivation (i.e., a suggestion) to use functionally
electrolyzed water to aid in separating metals, such as gold, from ore.
Further undermining Appellant’s argument, Hewlett discloses that it is
known to use functionally electrolyzed water (i.e., electrolyzed brine) to
oxidize (i.e., chemically react) the sulfides in a metal separation process.
Moreover, Dvalishvili discloses that the electrolyzed mine water activates
the surface of the mineral grains further indicating some level of interaction
(e.g., a chemical reaction) between the electrolyzed water and the ore being
treated.
From the above disclosures, we conclude that the combination of
Dvalishvili’s disclosure to use electrolyzed water with Hewlett’s method of
oxidation and separation of metals from ore would have been obvious
because Hewlett discloses that using electrolyzed brine is known to aid in
separating metals from the ore and Dvalishvili discloses that electrolyzed
water activates the mineral surface. We add that Hewlett alone would have
suggested using the functionally electrolyzed water (i.e., brine that has been
electrolyzed) with Hewlett’s disclosed metal separation process to aid in
separating metal, such as gold, from the ore.
Additionally, the use of functionally electrolyzed water with
Hewlett’s method of separating metals from ore is merely the predictable use
of a prior art element (i.e., functionally electrolyzed water (electrolyzed
brine)) according to its established function (i.e., aiding in the separation
process by oxidizing the sulfur in the ore) (Hewlett, col. 2, ll. 28-30). KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).
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Appeal 2008-1941
Application 10/459,640

For the above reasons, we sustain the Examiner’s § 103 rejection of
claims 9-24 over Hewlett in view of Dvalishvili.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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