Ex parte Schuster et al.

Board of Patent Appeals and Interferences

Aug 24, 2000

08603197 (B.P.A.I. Aug. 24, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board.
Paper No. 56
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LUDWIG SCHUSTER, HANNS-HELGE STECHL
and DIETRICH WOLFF
____________
Appeal No. 1997-4202
Application No. 08/603,197
____________
ON BRIEF
____________
Before PAK, WALTZ, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s refusal to allow
claims 1 through 5 which are all the claims remaining in the application.

THE INVENTION
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The invention is directed to a process for degrading aromatic nitro compounds by
reaction with a sufficient amount of ozone to virtually completely destroy the
aromatic nitro compounds. Two specific embodiments appear in the claims set forth
infra. In the first embodiment the aromatic nitro compounds are virtually completely
destroyed down to inorganic components. In the second embodiment the aromatic nitro
compounds are virtually completely destroyed while the reaction with ozone is initiated
at a pH of 12.
THE CLAIMS
Claims 1 and 3 are illustrative of appellants’ invention and are reproduced
below.
1. A process for degrading aromatic nitro compounds in wastewaters from
nitrobenzene production plants which consists essentially of treating said wastewaters
containing aromatic nitro compounds with ozone, in an amount sufficient to virtually
completely destroy said aromatic nitro compounds down to inorganic components, at
20 to 100°C, 1.5 to 10 bar and pH 7 to 9.
3. A process for degrading aromatic nitro compounds in wastewaters from
nitrobenzene production plants by reaction with ozone, in an amount sufficient to
virtually completely destroy said aromatic nitro compounds, wherein the degradation
reaction, at a temperature of from 20 to 100°C and a pressure of from 1.5 to 10
bar absolute, is started at pH 12 and the pH level is maintained above pH 4.5 until the
reaction is completed.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references.
V. Caprio et al., Chemical Abstract 102:172028f (Chemical Abstract
102:172028f) "Ozonation of aqueous solutions of nitrobenzene,” Vol. 102 Number
20, p. 341, (May 20, 1985).
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M. A. Shevchenko et al., (Shevchenko), "The Use of Oxidizing Agents to Detoxify Nitro-
Derivatives of Phenols in Water ," Khimiya I Tekhnologiya Vody, 8, No. 6, pages 1-7
(translation), 1986.

THE REJECTIONS
Claims 1 through 5 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Chemical Abstracts 102:172028f or Shevchenko.
OPINION
We have carefully considered all of the arguments advanced by appellants and
the examiner and agree with the appellants that the aforementioned rejections under
35 U.S.C. § 103 are not well founded. Accordingly, we do not sustain these
rejections.
As an initial matter appellants state that the claims do not all stand or fall
together. Appellants argue for the separate patentability of claims 1 through 2 as a
first group, and claims 3 through 5 as a second group. See Brief, page 2.
Accordingly, we select claims 1 and 3, the sole independent claims as representative
of the claimed subject matter and limit our consideration thereto. 37 C.F.R. § 1.92
(c)(7)(1995).
The Rejections under 35 U.S.C. § 103
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Application No. 08/603,197
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Initially, we consider the rejection of claim 1 through 5 over Chemical Abstracts
102:172028f. We reverse this rejection. “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie case
of unpatentability,” whether on the grounds of anticipation or obviousness. See In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). On
the record before us, the examiner relies upon an abstract to reject the claimed
subject matter and establish a prima facie case of obviousness.
We find that Chemical Abstracts 102:172028f discloses wastewater treatment
by ozonization to completely remove nitrobenzene with no appreciable accumulation of
unsaturated intermediate products. The initial products are nitric acid, and maleic acid
or anhydride. The organic components may be subsequently oxidized to oxalic acid and
carbon dioxide. In our view, the disclosure of Chemical Abstracts 102:172028f is
sufficient to teach the virtual destruction of the aromatic nitro compounds as
required by claims by the claimed subject matter, but not “down to inorganic
components.”
The basic premise of the rejection is that Chemical Abstracts 102:172028f
teaches a process for degrading aromatic nitro compounds substantially as claimed.
See Answer, page 5. The examiner submits that the temperature range includes room
temperature, the pH range includes a neutral pH and an increase in pressure
increases the rate of oxidation. See Answer, pages 5 and 7. Moreover, the examiner
takes Official Notice that, “[i]t is well known in the art of water treatment that an
increase in temperature or pressure during the oxidation of organic contaminants in
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V. F. Vakulenko et al., (Vakulenko), “Intensification of the Process of Ozonation of Nitro Derivatives of Phenol in Aqueous Solutions,” Khimiya I Tekhnologiya Vody, 9, No. 5, pages 414-6 (translation), 1987.
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wastewater would increase the rate of oxidation.” See Answer, page 7. Appellants
have neither traversed the examiner’s assertion nor challenged the correctness of
such assertion. Accordingly, we accept the examiner’s statement as a fact.
Notwithstanding these findings, the Chemical Abstracts 102:172028f reference
however, does not disclose a pH of 7 to 9 as required by claim 1 or a starting pH of
12 as required by claim 3. The examiner instead relies on the disclosure of
Vakulenko which suggests the use of neutral or basic media for the decomposition of1
nitrophenol by ozone, since the process slows in acid media. See Answer, page 9.
However, the Vakulenko reference is not included in the examiner’s rejection. It is
well settled that, “[w]here a reference is relied on to support a rejection, whether
or not in a ‘minor capacity,’ there would appear to be no excuse for not positively
including the reference in the statement of rejection.” In re Hoch , 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407, n.3 (CCPA 1970). Furthermore, it is
unclear whether the omission from the rejection is inadvertent, or constitutes a new
ground of rejection by the examiner. In either event, the examiner has not complied
with the requirements of MPEP §1208(A)(9)(10), 7th ed., Revision 1, Feb. 2000.
Moreover, the requirement of claim 1 that the amount of ozone is sufficient to
virtually completely destroy said aromatic nitro compounds “down to inorganic
components” is not adequately addressed by either the examiner or appellants. The
examiner has not explained why the use of additional ozone in the process of Chemical
Abstracts 102:172028f would result in complete destruction of the nitro
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compounds down to inorganic components, based on the Chemical Abstracts
102:172028f disclosure that the ultimate products are carbon dioxide and oxalic
acid.
As to the subject matter of claim 3 there is additionally no suggestion or teaching
for a starting pH of 12 or of maintaining the pH above 4.5 until the reaction is
completed.
Finally, with respect to the first rejection, the examiner has relied upon a single
abstract in rejecting each of the claims without citing (or apparently obtaining copies
of) the underlying scientific article itself. Citation of an abstract without citation and
reliance on the underlying scientific article itself is unacceptable. Abstracts may not
be written by the author of the underlying article and often are erroneous. Hence,
the preferred practice would be for the examiner to cite and rely on the underlying
article. Further, when the examiner cites and relies on an abstract, it would appear
prudent for the applicants to obtain a copy of the underlying article and submit a
copy to the examiner when responding to the rejection. Neither action has thus far
been taken. Moreover, it is likely that the underlying article would provide at least
some of the process parameters such as pH, temperature or pressure.
Based upon the above considerations, the examiner has not established a prima
facie case of obviousness and the examiner's rejection of claims 1 through 5 as
unpatentable over Chemical Abstracts 102:172028f is not sustained. In view of the
above analysis, we have determined that the examiner’s legal conclusion of
obviousness is not supported by the facts. “Where the legal conclusion [of
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Application No. 08/603,197
We refer to the English language translation of Shevchenko relied upon in the record before us.
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obviousness] is not supported by the facts it cannot stand.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
We turn next to the rejection of claims 1 through 5 over Shevchenko. We find2
that Shevchenko discloses the use of oxidizing agents to detoxify nitro derivatives of
phenol in water. Low doses of ozone are capable of providing a deep breakdown of
nitrophenols within 10 minutes. See page 4. Shevchenko discloses that the
concentration of certain materials (i.e., pesticides containing nitrophenols) is reduced
by 100% or 87% respectively. See page 5. The table on page 6 indicates a starting
pH of 10.9 to 11.0 followed by ozonization. However, neither a starting pH of 12
nor a pH of 7 to 9 is taught as required by the claimed subject matter of claims 3 and
1 respectively. As with the above rejection the examiner again relies on the
disclosure of Vakulenko to disclose the requisite neutral to basic pH range for the
ozonation reaction and the Official Notice discussed supra.
As to the virtual destruction of the aromatic nitro compounds, Table 3 of
Shevchenko contain process steps of settling, filtration, ozonation, and sorption on
an activated carbon. These steps are not excluded by claim 3 and may not be excluded
from claim 1. However, neither the examiner nor appellants have adequately
addressed the limitations of either claims 1 or 3 directed to the virtually complete
destruction of said aromatic nitro compounds and that of claim 1 additionally requiring
that the destruction be “down to inorganic components” in view of the additional steps
of coagulation, settling, and sorption on activated carbons.
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Based upon the above considerations, the examiner has not established a prima
facie case of obviousness and the examiner's rejection of claims 1 through 5 as
unpatentable over Shevchenko is not sustained. In view of the above analysis, we have
determined that the examiner’s legal conclusion of obviousness is not supported by
the facts. “Where the legal conclusion [of obviousness] is not supported by the
facts it cannot stand.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967).
In summary, on this record, we reverse each of the rejections under 35 U.S.C.
§ 103.
Remand to the Examiner
Accordingly, on consideration of the record, we remand the application to the
jurisdiction of the examiner for appropriate action in accordance with our decision
supra. Upon return of this application to the examiner, the examiner and applicants
should reconsider the patentability of the claimed subject matter over the Chemical
Abstracts 102:172028f underlying reference, if readily available, and any possible
combination of references including Vakulenko. In considering the patentability of the
claimed subject matter the examiner must fully address the limitation directed to the
virtual complete destruction of the aromatic nitro compound "down to inorganic
omponents."
With respect to each rejection, if any are to be entered, the examiner shall state
the ground of rejection and point out where each of the specific limitations recited in
the rejected claims is found in the prior art relied upon in the rejection, shall
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identify any difference between the rejected claims and the prior art relied upon and
shall explain how the claimed subject matter is rendered unpatentable over the prior
art. If the rejection is based upon a combination of references, the examiner shall
explain the rationale for making the combination.
DECISION
The rejection of claims 1 through 5 under 35 U.S.C. § 103 as being
unpatentable over Chemical Abstracts 102: 172028f or Shevchenko is reversed.

REVERSED AND REMANDED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
lp
Appeal No. 1997-4202
Application No. 08/603,197
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KEIL & WEINKAUF
1101 CONNECTICUT AVENUE NW
WASHINGTON DC 20036
Leticia
Appeal No. 1997-4202
Application No. 08/603,197
APJ LIEBERMAN
APJ PAK
APJ WALTZ
DECISION: REVERSED AND REMANDED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: July 16, 2001
Draft Final
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