Ex Parte TrouveDownload PDFPatent Trial and Appeal BoardMay 24, 201712532500 (P.T.A.B. May. 24, 2017) Copy Citation 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. 12/532,500 03/12/2010 Claude Trouve 3000027-122000 8207 84331 7590 05/26/2017 MMWV TP T T C EXAMINER 7900 Westpark Drive, Suite A100 McLean, VA 22102 TUROCY, DAVID P ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 05/26/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @ mm w vlaw .com cgmoore @ mmwvlaw. com dwoodward @ mmwvlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLAUDE TROUVE1 Appeal 2015-006437 Application 12/532,500 Technology Center 1700 Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and BRIAN D. RANGE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1, 4—11, 13—16, 18, 19, and 22—25 under 35 U.S.C. § 103(a). The Examiner rejects claims 1, 4—11, 13—16, 18, 19, and 22—25 over either Stewart3 alone or Stewart in view of Bell.4 The 1 The real party in interest is ARCHROMA MANAGEMENT LLC. Br. 4. 2 In explaining our Decision, we cite to the Specification dated September 22, 2009 (Spec.), Non-Final Office Action dated February 10, 2014, Final Office Action dated July 25, 2014 (Final), the Appeal Brief dated February 6, 2015 (Br.), and the Examiner’s Answer dated April 23, 2015 (Ans.). 3 Stewart et al., US 3,741,782, issued June 26, 1973 (“Stewart”). 4 Bell, US 3,510,254, issued May 5, 1970. Appeal 2015-006437 Application 12/532,500 Examiner adds further prior art to reject dependent claims 11, 16, and 23. See Ans. 2—9; Final 9—11; Non-Final 6—12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a process of preparing an aqueous composition of zirconium carbonate and an alkaline metal salt (see, e.g., claim 1), and a process for treating a cellulose-based product using the zirconium carbonate and alkaline metal salt composition (see, e.g., claims 7, 13, and 14). The process involves reacting, in an aqueous phase, an alkali metal bicarbonate with either basic zirconium sulphate or basic zirconium carbonate in a 4:1 bicarbonate to zirconium molar ratio. According to the Specification, the obtained aqueous composition has a pH between 8 and 10. Spec. 3:21-26. We reproduce claim 1 from the claims appendix of the Brief to illustrate the process of preparing the composition: 1. A process for the preparation of an aqueous composition of zirconium carbonate and an alkali metal salt comprising the step of reacting, in an aqueous phase, a zirconium compound and an alkali metal bicarbonate, wherein the bicarbonate to zirconium molar ratio is equal to or greater than 4:1, wherein the zirconium compound comprises basic zirconium sulphate or basic zirconium carbonate, and wherein the aqueous composition has a pH of greater than 8 and less than 10. Br. 25 (formatting added). 2 Appeal 2015-006437 Application 12/532,500 OPINION The Rejection over Stewart In addressing the Examiner’s rejection of claims 1, 4—11, 13—16, 18, 19, and 22—25 as obvious over Stewart, Appellant argues claims 1, 7, and 13 under a single heading, and argues claims 4, 5, 11, 16, 18, and 19 under separate headings. We select claim 1 as representative to resolve the issues arising for the rejection of claims 1, 7, and 13. We have considered the issues for each of the claims argued under separate headings, but the issues are sufficiently similar to enable us to discuss the issues for those claims together. Claims 1, 7, and 13 There is no dispute that Stewart discloses a process of making an aqueous composition of zirconium carbonate and an alkali metal salt by reacting, in an aqueous phase, a zirconium compound and an alkali metal salt or that Stewart discloses examples that use various combinations of zirconium basic carbonate with ammonium or alkali metal salts, including alkali metal (sodium or potassium) carbonate or alkali metal bicarbonate at various concentrations. Compare Ans. 2, with Br. 11. Like Appellant, Stewart seeks to produce a composition useful for treating cellulose-based products such as paper. Stewart, Abstract. The Examiner finds that Stewart teaches different combinations of zirconium compounds and alkali or ammonium salts to provide the zirconium carbonate and the salt of the end product composition, and those of ordinary skill in the art would have reasonably expected those combinations to be interchangeable. Ans. 2-4. The Examiner further determines that the selection of the appropriate molar ratio of bicarbonate to zirconium would 3 Appeal 2015-006437 Application 12/532,500 have been obvious based upon the various ratios disclosed in Stewart’s examples and based upon optimization through routine experimentation for achieving a stable paper coating composition for use on cellulosic materials as desired by Stewart. Ans. 3. The Examiner further finds that based upon Stewart’s use of the same components at the same proportions and the teaching of using the composition at a pH of 7.5 to 11 for paper treatment, Stewart either inherently teaches a pH within the range of the claim or renders it obvious as a matter of routine optimization. Ans. 4. Appellant contends that the person of ordinary skill would have had no motivation to substitute alkali metal carbonates with alkali metal bicarbonates in reactions with basic zirconium carbonate and basic zirconium sulphate, and further would have had no motivation to choose a bicarbonate to zirconium molar ratio equal to or greater than 4:1. Br. 10—11, 19. Appellant further contends that the solution produced by Stewart would not have a pH between 8 and 10. Br. 13, 20-22. Appellant relies upon the Anquetil Declaration5 as well as a graph from a German Wikipedia article (Exhibit A) to support their arguments. After considering the totality of the evidence, we determine a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness. Stewart, as well as Appellant’s own Specification, provides evidence that it was known in the art to prepare aqueous compositions of zirconium carbonate and alkali metal salts using various different compounds. Stewart 5 Declaration by Jean-Yves Anquetil filed July 8, 2014. 4 Appeal 2015-006437 Application 12/532,500 col. 1,11. 28—56; Spec. 1:22—29. Stewart calls these compositions zirconium salts. Stewart states that it was known that various carbonate salts including tetrachloride, oxychloride, acetate, and ammonium zirconyl carbonate salts are able to convert aqueous solutions of various polymers into insoluble films for use in treating paper and paper board. Stewart col. 1,11. 28—39. Some of these known zirconium salt solutions, including the oxychloride salt solution, have a pH below 7, but most paper coating systems operate at a pH greater than 7. Stewart col. 1,11. 40-52. Stewart explains that the use of alkali metal salts and ammonium salts are more practical because these salt solutions are stable at 7.5—11.0 pH and have other desirable properties. Stewart col. 1,11. 53—64. However, according to Stewart, there are problems with the alkali metal and ammonium salt solutions, namely, alkali metal zirconium carbonate solutions are not stable at elevated temperatures and during long periods of storage. Stewart col. 1,11. 53—72. Stewart seeks to solve the instability problem by adding a stabilizer to these known zirconium salt solutions. Stewart col. 2,11. 1—9. Appellant’s Specification verifies that it was known to use various combinations of zirconium compounds with various alkali metal salts to form the zirconium salts. For instance, according to the Specification, it was known in the art to produce the zirconium salts from an aqueous solution of basic zirconium carbonate (BZC) with potassium carbonate at a carbonate to zirconium molar ratio of 2 or less. Spec. 1:22—25. It was further known to replace BZC with zirconium oxychloride (ZrOCF) and it was also known to use a solution of potassium bicarbonate in the presence of potassium hydroxide. Spec. 1:27—29. 5 Appeal 2015-006437 Application 12/532,500 Stewart discloses the preparation of a number of different stabilized zirconium salts. Stewart discloses producing ammonium zirconyl carbonate solution containing 10 wt% zirconia by treating zirconium basic sulphate with sodium carbonate to form solid zirconium basic carbonate. Stewart col. 3,11. 1—7. Stewart then dissolves 1 mole of the basic zirconium carbonate in an aqueous solution containing 3 moles ammonium carbonate. Id. Then Stewart adds various stabilizing agents. Stewart col. 3,11. 8—14. After describing the above process of forming ammonium zirconium carbonate solution, Stewart discloses six examples of forming zirconium salt solutions. In those examples, Stewart provides guidance on substitutions and the concentrations of the components to be used. Under the heading of Example I, Stewart discloses preparing a 10% zirconia-containing solution of ammonium zirconium carbonate by stirring 500 grams of zirconium basic carbonate into a solution of 180 grams ammonia and 260 grams ammonium bicarbonate. Stewart col. 3,11. 16—25. Stewart then states that after the zirconium basic carbonate has been formed from zirconium basic sulphate, it may be treated with ammonia and ammonium bicarbonate in various proportions, e.g. ratios of zirconia (ZrCU):ammonium bicarbonate:ammonia of 1:2:0.25; 1:3:0.5 and higher. Stewart col. 3,11. 50-60. Stewart also states that ammonium bicarbonate and ammonia can be replaced by ammonium carbonate in various proportions. Id. In Example II, Stewart describes another well-known method of producing an ammonium zirconium carbonate solution and acceptable substitutions. Specifically, Example II describes adding 1 mole of zirconium oxychloride solution to a solution containing 3 moles of 6 Appeal 2015-006437 Application 12/532,500 ammonium carbonate to obtain a zirconium carbonate solution and then states that ammonium carbonate can be replaced by ammonium bicarbonate in ratios of oxychloride :bicarbonate similar to those of oxychloride:carbonate, e.g., 1:3; 1:4 and higher. Stewart col. 3,1. 61—col. 4, 1.38. Examples III and IV describe preparing sodium zirconyl carbonate using either zirconium oxychloride (Ex. Ill) or zirconium basic carbonate (Ex. IV) with sodium carbonate. Stewart col. 4,11. 40—70. Examples V and VI describe preparing potassium zirconyl carbonate using parallel feedstocks to those previously described, but with potassium instead of sodium. Stewart col. 4,1. 71—col. 5,1. 52. Example VI states that potassium zirconyl carbonate can be prepared from heating zirconium basic carbonate solution with either potassium carbonate solution or with potassium bicarbonate solution and potassium hydroxide solution in various mole ratios, e.g., ZrC^potassium bicarbonate:potassium hydroxide 1:2:1. Stewart col. 5,11. 16—23. Stewart’s disclosure supports the Examiner’s finding that it was understood by those of ordinary skill in the art that carbonates and bicarbonates of alkali metals were known feedstocks that were used in combination with zirconium basic carbonate for preparing alkali metal zirconium carbonate. As the carbonates and bicarbonates were known to be used, use of either would have been reasonably expected to result in predictable properties in the resulting alkali metal zirconium carbonate. Stewart’s disclosure further supports the Examiner’s finding that molar ratios within the 4:1 or greater range of claim 1 would have been reasonably expected to provide adequate results and that these 7 Appeal 2015-006437 Application 12/532,500 concentrations would have been routinely optimized for use in paper treatment to concentrations within the range of the claim. This is so given Stewart teaches overlapping concentrations and formulates the composition for the same use as Appellant. We are cognizant of the fact that Stewart teaches adding ammonia when using ammonium bicarbonate solution in Example I and adds potassium hydroxide solution when using potassium bicarbonate solution in Example VI. Appellant contends that the alkaline compounds are used because they are needed to produce a carbonate and it is the carbonate that reacts with the zirconium basic carbonate, thus producing a different zirconium carbonate. Br. 11—12; Anquetil Deck 16—18. First, claim 1 does not exclude the use of additional compounds such as the alkaline compounds of Stewart unless they result in a composition with a pH outside the range of greater than 8 and less than 10. Second, although Anquetil attempts to show that the pH of Stewart’s Examples I and VI are outside the range of the claim based on theoretical calculations, Anquetil’s calculations are based on assumptions about the water concentration not supported by Stewart and the calculated pH conflicts with Stewart’s teaching that solutions of pH 7.5—11 are desired and alkali metal zirconium carbonate solutions have such pHs. Stewart col. 1,11. 53—57. Third, although claim 1 recites “reacting, in an aqueous phase, a zirconium compound and an alkali metal bicarbonate,” we find insufficient evidence in the Specification or Declaration to indicate that the mechanisms are different than those of Stewart. Stewart teaches mixing substantially the same feedstock compounds by similar methods to achieve a composition of the same name 8 Appeal 2015-006437 Application 12/532,500 for the same purpose as Appellant. Compare, for example, Stewart Examples I and IV, with Spec. 2:34—3:26; 5:31—6:6. Appellant states that Stewart does not suggest the advantage achieved by the invention, i.e., an improvement in wet abrasion resistance in treated cellulose products, a result that Appellant states in the Brief was unexpected. Br. 10 (citing Spec. 2:4—7; 8:7); see also Anquetil Decl. 14 (stating that the resulting compositions “are more effective than prior commercial solutions”). However, Appellant offers no objective proof of an unexpected result. In re Heyna, 360 F.2d 222, 228 (CCPA 1966)(“It is incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property”). A showing of unexpected results may be sufficient to overcome a prima facie case of obviousness, In re Dillon, 919 F.2d 688, 692—93 (Fed. Cir. 1990) (internal citations omitted), but such a showing must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343^14 (Fed. Cir. 1997); In re Schulze, 346 F.2d 600, 602 (CCPA 1965) see also In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (arguments of counsel cannot take the place of evidence). After reviewing the totality of the evidence, we determine a preponderance of the evidence supports the Examiner’s conclusion of obviousness. Claim 4, 5, 11, 16, 18, and 19 Appellant contends that “[t]he data shown in at least Example 1 of the Specification demonstrate results achieved when using a process of reacting an alkali metal bicarbonate and basic zirconium carbonate or basic zirconium sulphate with the claimed molar ratio,” and that these claims are, 9 Appeal 2015-006437 Application 12/532,500 thus, “further commensurate in scope with the data in the specification.” Br. 14—16. Appellant does not offer any further explanation of the data. Id. It appears Appellant is arguing they have shown unexpected results commensurate in scope with the breath of claims 4, 5, 11, 16, 18, and 19. “[Objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In re Greenfield, 571 F.2d at 1189 (internal citation omitted). We agree with the Examiner that the one example does not provide data commensurate in scope with the breath of claim 1. Ans. 16—18. Example 1 describes a process of preparing a potassium zirconium carbonate solution from potassium bicarbonate and basic zirconium carbonate with a zirconium:bicarbonate ratio of 4:1, which includes tartaric acid as a stabilizer, to obtain a solution with a pH of approximately 9.3. None of the claims are so narrowly limited. Moreover, the data merely shows that the specific solution tested provides a different result. The burden of analyzing and explaining data to support nonobviousness rests with the Appellant, and it is not enough to show that the result differs from those obtained in the prior art: that difference must be shown to be an unexpected difference. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Thus, Appellant’s statement that the results were “surprising” for the single example is not enough to support a showing of unexpected results for the genus of processes encompassed by the claims. The Rejection over Stewart in view of Bell The Examiner relies upon Bell as further showing that it was known in the art to substitute a bicarbonate for carbonate or to substitute a potassium bicarbonate for ammonium bicarbonate, these all being known 10 Appeal 2015-006437 Application 12/532,500 carbonate donors. Ans. 7. Thus, Bell merely adds further evidence over and above the evidence already present in Stewart and Appellant’s own Specification with regard to the conventional nature of these substitutions. Appellant’s arguments (Br. 16), therefore, do not persuade us of a reversible error in the Examiner’s rejection over Stewart in view of Bell. The Rejections Adding Further Prior Art With regard to the rejections adding further prior art to show the obviousness of the processes with the further limitations of claims 11, 16, and 23, Appellant merely contends that these prior art references do not cure the deficiencies of the rejections based on Stewart and Bell. Br. 16—18. Thus, Appellant has not identified a reversible error in these rejections. CONCLUSION We sustain the Examiner’s rejections. DECISION The Examiner’s decision is affirmed. TIME PERIOD FOR RESPONSE 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). AFFIRMED 11 Copy with citationCopy as parenthetical citation