Ex Parte Schneider et al

Patent Trial and Appeal Board

Feb 23, 2017

12617376 (P.T.A.B. Feb. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/617,376 11/12/2009 Charles A. Schneider IOFI 200004US01 4475
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
02/24/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES A. SCHNEIDER and DAVID J. SCHNEIDER
Appeal 2016-000061
Application 12/617,376
Technology Center 1700
Before JAMES C. HOUSEL, JULIA HEANEY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1—3, 5—8, 11, 13, and 17—22 of
Application 12/617,376. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as Iofma Chemical, Inc. App.
Br. 1.
Appeal 2016-000061
Application 12/617,376
BACKGROUND
The subject matter on appeal relates to a process for recovering iodine
from an aqueous solution, such as brine. App. Br. 1. Claim 1, reproduced
below with italics to indicate limitations further discussed in this Decision, is
illustrative of the claims on appeal:
1. A process for recovering elemental iodine (I2) from an
aqueous solution containing iodine, comprising:
exposing granular activated carbon particles to the
aqueous solution to adsorb the iodine, wherein the pH of the
aqueous solution is maintained at a pH of from about 5.5 to
about 6.5 while the aqueous solution is exposed to the granular
activated carbon particles, wherein the activated carbon
particles are in the form of a fixed bed, and are exposed to the
aqueous solution by feeding the aqueous solution at a top of the
fixed bed;
exposing the iodine containing granular activated carbon
particles to sulfur dioxide gas and water to form a reducing
solution containing hydrogen iodide; and
reacting the hydrogen iodide with an oxidant to obtain
elemental iodine;
and
removing contaminants from the iodine containing
granular activated carbon particles by a backwash step
wherein the aqueous solution is periodically fed at a bottom of
the fixed bed instead of at the top of the fixed bed.
App. Br. 8 (Claims Appx).
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Girvin US 1,774,882 Sept. 2, 1930
Joyce US 3,455,820 July 15, 1969
Behrens US 4,461,711 Jul. 24, 1984
Georges US 4,647,700 Mar. 3, 1987
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Application 12/617,376
Gavalas US 5,503,873 Apr. 2, 1996
Takahashi US 7,442,363 B2 Oct. 28, 2008
REJECTIONS
1. Claims 17—20 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 the applicants regard
as the invention.
2. Claims 1—3, 5—8, 11, 13, 17, 21and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Girvin, Behrens,
Georges, and Joyce.
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Girvin as applied to claim 17 above, and further in view of
Takahashi.
4. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Girvin as applied to claim 17 above, and further
in view of Gavalas.
DISCUSSION
Rejection 1
Claims 17—20 are rejected as indefinite on the ground that there is no
antecedent basis for “the brine” in the last step of independent claim 17.
Final Act. 2. Appellants argue that “the brine” clearly refers to the aqueous
solution from which the iodine ions of claim 17 are recovered, and that it is
well known in the art, as reflected in Appellants’ Abstract and Specification,
that elemental iodine is typically recovered from natural brines. App. Br. 2.
Appellants further argue that the scope of the claim would be reasonably
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Application 12/617,376
ascertainable by those skilled in the art because the level of skill in the art is
relatively high. Reply Br. 2. In the alternative, Appellants offer to amend
claims 17—20 to correct the antecedent basis, should the § 103(a) rejections
be reversed.
In determining whether a claim is unpatentable under § 112, second
paragraph, we look to whether a person of ordinary skill in the art would
understand what is claimed when the claim is read in light of the
specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986); In re Moore, 439 F.2d 1232, 1235 (CCPA
1971) (“[T]he definiteness of the language employed must be analyzed—
not in a vacuum, but always in light of the teachings of the prior art and of
the particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.”). Here, in light of
the description in the Specification, a person of ordinary skill in the art
would understand that “brine” is an example of “an aqueous solution.”
Spec. 11 (“an aqueous solution, such as brine”), The Examiner’s reasoning
that “an aqueous solution” as recited in claim 17 is not necessarily a “brine”
(Ans. 9) is consistent with the Specification. Therefore, because “an
aqueous solution” is not equivalent with a “brine” we are not persuaded by
Appellants’ argument that “an aqueous solution” provides antecedent basis
for “the brine” in claim 17. Accordingly, we affirm the rejection of claim
17 as indefinite.
Rejection 2
Appellants present arguments directed generally to limitations recited
in all of the independent claims and do not separately argue any of the
dependent claims. App. Br. at 4—6. We select claim 1 as representative; all
other claims stand or fall with claim 1.
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Appeal 2016-000061
Application 12/617,376
Appellants argue that the rejection should be reversed for two reasons:
(1) none of the references teach the pH range of “about 5.5 to about 6.5”
recited in the claims, and Behrens teaches away from that range; and (2)
none of the references teach a backwash step as recited in the claims. App.
Br. 5-6.
In response to Appellants’ first argument concerning pH of the
aqueous solution, the Examiner explains that Behrens recognizes pH is a
result-effective variable in a process for removing iodine from a solution; at
a lower pH there is a greater degree of separation, but the larger quantity of
acid required to achieve a lower pH increases the cost of the process. Ans.
10—11, citing Behrens 4:34—55. The Examiner notes that Behrens teaches a
pH of less than 7 (Behrens claim 4), which overlaps with Appellants’
claimed range of “about 5.5 to about 6.5.” Ans. 10. Thus, the Examiner
reasons that it would have been obvious to a person of ordinary skill in the
art to select a pH value within the claimed range in order to optimize results.
Id.
Appellants do not persuade us of reversible error in this analysis.
Appellants also do not point to evidence of record to show that the pH range
is critical or offer evidence of unexpected results. See In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference between the claimed
invention and the prior art is a range or other variable within the claims, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art). Further, Appellants’ argument that a person of ordinary skill in
the art would not have looked to Behrens to modify the acidity of the
solution is attorney argument and unsupported by evidence; paragraph 42 of
the Specification, cited by Appellants, merely refers to adjusting the pH of
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Application 12/617,376
the brine without mentioning any pH value. Reply Br. 3^4. That is not
sufficient evidence to rebut a prima facie case of obviousness.
In response to Appellants’ second argument concerning the backwash
step, the Examiner relies on Girvin’s disclosure of regenerating charcoal in
order to remove adsorbed iodine, combined with the knowledge of a person
of ordinary skill in the art to perform a backwashing step before a
regenerating step (Ans. 11, see also Ans. 4, citing Girvin 2:29-35), and
further relies on Joyce’s teaching of backwashing activated carbon before
regenerating. Ans. 12; see also Ans. 5—6, citing Joyce 3:51—4:18, 4:35—43,
claim 1. The Examiner determines that it would have been obvious to a
person of ordinary skill in the art to carry out a backwashing step in Girvin’s
process, as suggested by Joyce, in order to remove solids from the activated
charcoal that would have been attributable to Girvin’s natural brine starting
material, and as further described in Joyce’s backwashing step. Ans. 6.
Appellants argue against the Examiner’s determination of
obviousness, on the ground that the claimed backwashing step avoids
washing iodine out with the solid contaminants because iodine is still
adsorbed by the non-saturated carbon particles at the bottom of the fixed bed
during the backwashing step. Reply Br. 4, citing Spec. 145. In contrast,
Appellants argue, Joyce’s backwashing step uses serial columns that
alternate on-and-off during the backwashing step to maintain efficiency.
Reply Br. 4. Appellants’ argument, however, does not consider Joyce’s
teaching as a whole. As the Examiner finds, Joyce also describes its process
as including “at least one bed of activated carbon” which is periodically
backwashed and regenerated. Ans. 5, citing Joyce claim 1. Further, Joyce
describes a backwash step where water enters and is discharged from a
column of activated carbon via valves at the bottom of the column. Ans. 5,
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Application 12/617,376
citing Joyce 3:51—4:18 and Figure showing valve 14 at bottom of column 7.
These findings support the Examiner’s determination of obviousness, and
Appellants do not address them. Accordingly, Appellants’ argument is not
persuasive of reversible error.
Rejections 3—4
Claims 18—20 depend from claim 17. Appellants rely on the same
arguments as discussed above and do not present argument against the
additional references at issue in these rejections. Accordingly, we affirm the
rejections for the same reasons as discussed above.
SUMMARY
We reverse the rejection of claims 17—20 under 35 U.S.C. § 112,
second paragraph, for indefmiteness.
We affirm the rejections of claims 1—3, 5—8, 11, 13, and 17—22 under
35 U.S.C. § 103(a) as unpatentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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