Ex parte TSAI

Board of Patent Appeals and Interferences

Apr 27, 2000

07843833 (B.P.A.I. Apr. 27, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TED Y. TSAI
____________
Appeal No. 1996-2350
Application No. 07/843,833
____________
HEARD: April 07, 2000
____________
Before JOHN D. SMITH, PAK and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
refusal to allow claims 1 through 6, which are all of the
claims pending in this application.
Appeal No. 1996-2350
Application 07/843,833
Page 2
BACKGROUND
Appellant's invention relates to a method of
treating unbleached pulp derived from a Kraft digestion
process. In an initial chlorine free bleaching stage, the
pulp is contacted with a pressurized mixture of ozone and
oxygen in a mixer at pH and temperature conditions that allow
for the ozone to react with components of the pulp but not the
oxygen. After essentially all of the ozone is consumed by
reaction with pulp components, the pH and temperature are
altered so that the oxygen from the initially supplied mixture
of ozone and oxygen reacts with the pulp components.
Subsequent to a following water washing step, the washed and
so treated pulp is subjected to another round of contacting
with an ozone and oxygen mixture and the reaction steps as set
forth above. Exemplary claim 1, the sole independent claim on
appeal, is reproduced below.
1. In the treatment of kraft pulp comprising wood
fibers to render the pulp useful in end use applications
requiring a pulp viscosity of at least about 10 cP and a P.
No. of at least about 9 and wherein said pulp has been
digested employing a kraft process, the improvement comprising
a two-phase post-digestion treatment, including contacting, in
Appeal No. 1996-2350
Application 07/843,833
Page 3
a mixer, the digested, unbleached pulp at a low alkaline pH
with a mixture of ozone and oxygen pressurized to between
about 60 psig and about 100 psig in an initial, chlorine free
bleaching stage, said ozone in said mixture being present in
an amount of between about 0.15% and 0.5%, based on the dry
weight of the pulp, and wherein the temperature of said pulp
in said mixer is maintained below the temperature at which
oxygen will react with the components of
said pulp and at or above the temperature at which said ozone
will react with components of said pulp so that essentially
all of said ozone in said mixture is consumed by reaction with
the components of said pulp while a substantial portion of
said oxygen in said mixture remains unreacted in said pulp,
and thereafter altering the pH of said pulp to an alkaline pH
and increasing the temperature of said pulp containing said
oxygen to a temperature at which the oxygen in said pulp will
react with components of said pulp for a period of time
sufficient for said oxygen to react with said pulp components,
thereafter subjecting said pulp to a conventional water
washing step, and after said washing step, subjecting the
washed pulp to a further second phase including repeating the
aforesaid procedure employing the washed pulp and further
ozone/oxygen mixture.
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Phillips et al. (Phillips) 4,372,812 Feb. 08, 1983
Tsai (Tsai '124) 4,959,124 Sep. 25, 1990
Schwarzl 5,133,946 Jul. 28, 1992
Appeal No. 1996-2350
Application 07/843,833
Pages 578-580 were the only pages of the Singh reference1
found of record. The examiner specifically refers to page 579
of Singh in the stated rejection under review (answer, page
4). Accordingly, our consideration of the § 103 rejection
utilizing the Singh reference as part of the evidence of
obviousness is limited to the above-noted pages 578-580 of
Singh in combination with the other evidence relied upon by
the examiner.
We note that the examiner does not separately list this2
patent on a Notice of References Cited (Form PTO-892) of
record.
Page 4
Singh, The Bleaching of Pulp, pages 578-580, Tappi Press,1
Atlanta, 1979.
The examiner additionally relies on the following
listed patent in a rejection based on the judicially created
doctrine of obviousness-type double patenting:
Tsai (Tsai '201) 5,389,201 Feb. 14,2
1995
Claims 1-6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Tsai '124 in view of Singh, Phillips
and Schwarzl. Claims 1-6 stand rejected under the judicially
Appeal No. 1996-2350
Application 07/843,833
Page 5
created doctrine of obviousness-type double patenting as being
unpatentable over all of the claims of Tsai '201.
OPINION
We have given careful consideration to the
appellant's specification and claims, to the applied prior art
references, and to the respective positions articulated by the
appellant and the examiner. In so doing, we find ourselves in
agreement with appellant that the applied prior art fails to
establish prima facie obviousness of the claimed subject
matter. Accordingly, we will not sustain the examiner's § 103
rejection. However, we
shall summarily sustain the examiner's obviousness-type double
patenting rejection. We add the following primarily for
emphasis.
We begin with the examiner's § 103 rejection.
The examiner acknowledges that Tsai '124 includes a
chlorine containing bleaching agent (chlorine dioxide) in the
Appeal No. 1996-2350
Application 07/843,833
Page 6
disclosed bleaching steps disclosed therein, including the
Example 57 sequence that is specifically relied upon for
allegedly teaching the claimed ozone bleaching and oxygen
extraction (answer, pages 3-7). We note that the stated §
103 rejection is founded, at least in part, on the examiner's
opinion that the herein claimed limitation of an ". . .
initial, chlorine free bleaching stage . . ." (claim 1) does
not exclude the use of chlorine dioxide in an initial
bleaching step as disclosed by Tsai '124 (answer, page 7 and
supplemental answer, page 2). Appellant, on the other hand,
is of the opinion that the above-noted claim language does
exclude the use of chlorine dioxide, as taught by Tsai '124,
for use in a first or initial bleaching stage (brief, pages
11-13 and reply brief, pages 1-3).
The initial inquiry into the examiner’s obviousness
analysis is to correctly determine the scope and meaning of
each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed.
Cir. 1997).
Appeal No. 1996-2350
Application 07/843,833
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 10273
(Fed. Cir. 1997).
Specification, page 2, lines 3-5.4
Page 7
Accordingly, we must construe the scope and meaning of the
contested limitation ". . . initial, chlorine free bleaching
stage . . . ." Our reviewing court has stated:3
[T]he PTO applies to the verbiage of the
proposed claims the broadest reasonable
meaning of the words in their ordinary
usage as they would be understood by one
of ordinary skill in the art, taking into
account whatever enlightenment by way of
definitions or otherwise that may be
afforded by the written description
contained in the applicant’s specification.
As noted by appellant on page 2 of the reply brief,
the specification states:4
It is a further object to provide a
post-digestion treatment for kraft
cellulosic pulps in which there is no
chlorine con- taining bleaching agent
employed in the treatment.
In our view, the written description in appellant's
specification (pages 1 and 2) sets forth what is meant by
Appeal No. 1996-2350
Application 07/843,833
We observe that the applied and commonly assigned5
Phillips patent uses terms such as "non-chlorine" (column 2,
lines 59-66 and column 3, lines 29-32) and "chlorine-free"
(column 4, lines 15 and 16) in a manner that is consistent
with appellant's use of the term "chlorine free" as evidenced
by a comparison of columns 1-4 of Phillips and columns 1 and 2
of appellant's specification.
Page 8
chlorine free in a manner that would be understood by one of
ordinary skill in the art as excluding chlorine whether as an5
element, molecule, or part of a compound. Hence, chlorine
dioxide is clearly a bleaching chemical excluded by the claim
language "chlorine free."
In view of this claim construction, we determine
that the applied prior art on this record fails to disclose,
suggest or teach the specific bleaching sequence as recited in
claim 1 on appeal. We note that while the secondary
references relied upon by the examiner are directed to
chlorine free bleaching of pulp, the examiner has not
adequately explained how the collective teachings of these
references would have remedied the deficiency of Tsai '124, as
noted above, and suggested the specific bleaching sequence
claimed herein to one of ordinary skill in the art.
Appeal No. 1996-2350
Application 07/843,833
We note that dependent claims 2-6 include the above-6
discussed limitations of claim 1 by virtue of their dependency
thereon. Accordingly, like the § 103 rejection of claim 1,
the examiner's § 103 rejection of these claims cannot be
sustained.
Page 9
Consequently, for the reasons set forth by appellant
in the briefs and as further explained above, we shall not
sustain the examiner's § 103 rejection of claims 1-6.6
Turning to the examiner's obviousness-type double
patenting rejection of appealed claims 1-6, we observe that
appellant asserts that a terminal disclaimer has been
proffered and that ". . . this rejection is not, in fact, an
issue" (brief, page 17). However, the mere offer to furnish a
terminal disclaimer, as opposed to the actual filing of an
acceptable terminal disclaimer, is not effective to overcome
the stated rejection. Moreover, appellant has not furnished a
substantive argument specifically alleging any errors that
appellant may have considered to be present in the examiner's
obviousness-type double patenting rejection.
Appeal No. 1996-2350
Application 07/843,833
We note that appellant has not furnished separate7
arguments regarding the dependent claims 2-6 with respect to
this rejection. Accordingly, the patentability of these
claims falls with the patentability of claim 1 with respect to
this rejection.
Page 10
On this record, we determine that a summary
affirmance of the obviousness-type double patenting rejection
of claims 1-6 is in order. 7
CONCLUSION
The decision of the examiner to reject claims 1-6
under 35 U.S.C. § 103 as unpatentable over Tsai '124 in view
of Singh, Phillips and Schwarzl is reversed. The decision of
the examiner to reject claims 1-6 under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over all of the claims of Tsai '201 is affirmed.
Appeal No. 1996-2350
Application 07/843,833
Page 11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK:psb
Appeal No. 1996-2350
Application 07/843,833
Page 12
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