Ex Parte Trouve

Patent Trial and Appeal Board

May 24, 2017

12532500 (P.T.A.B. May. 24, 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
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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).
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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
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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.
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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.
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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
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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
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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
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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,
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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
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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
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