Ex Parte Weber et al

Patent Trials and Appeals Board

Jun 3, 2014

11749808 - (D) (P.T.A.B. Jun. 3, 2014)

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.
11/749,808 05/17/2007 Rainer Weber 14069*100 (BMS 06 1 037) 8928
23416 7590 06/04/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
(DE OFFICE)
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
SMITH, NICHOLAS A
ART UNIT PAPER NUMBER
1754
MAIL DATE DELIVERY MODE
06/04/2014 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 RAINER WEBER, JURGEN KINTRUP, ANDREAS BULAN,
and FRIEDHELM KAMPER
______________

Appeal 2012-010658
Application 11/749,808
Technology Center 1700
_______________

Before CHARLES F. WARREN, DONNA M. PRAISS and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-010658
Application 11/749,808

2
Appellants1 appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1-23 under 35
U.S.C. § 103(a). We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention is directed to processes for the production of
chlorine by multi-stage oxidation. Spec., Abs. Appellants represent that the
invention relates to a process for the production of chlorine in which the gas
mixture formed by the reaction of hydrogen chloride with oxygen is cooled
to form an aqueous solution of hydrochloric acid, which is separated from
the gas mixture and subjected to electrochemical oxidation to form chlorine.
Spec, ¶ [00012]. Claim 1, reproduced below, is representative of the claims
on appeal:
1. A process comprising:
a) reacting hydrogen chloride and oxygen to form a gas
mixture comprising chlorine, water, residual hydrogen chloride,
and residual oxygen;
b) cooling the gas mixture to form an aqueous solution of
hydrogen chloride; and
c) separating at least a portion of the aqueous solution of
hydrogen chloride from the gas mixture, wherein at least a
portion of the separated aqueous solution is subjected to
electrochemical oxidation to form additional chlorine.
App. Br. 8 (Claims App’x).

1 Appellants identify the real party in interest as Bayer MaterialScience AG.
Appeal Brief filed February 13, 2012 (“App. Br.”) at 1.
Appeal 2012-010658
Application 11/749,808

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Appellants present a single set of arguments in response to the
Examiner’s rejection. App. Br. 3-6. Thus, we decide this appeal based on
claim 1, which is the sole independent claim. 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the non-obviousness
of the claimed process encompassed by independent claim 1. We are in
agreement with the Examiner’s analysis of the terms of claim 1 and the
evidence, findings of fact and response to Appellants’ arguments stated in
the Answer, to which we add the following for emphasis. Ans. 4-11.
The Examiner rejects claims 1-7 and 10-23 as unpatentable over
Gestermann,2 Walsdorff,3 and Allen.4 Id. at 4-8. The Examiner further
rejects claims 8 and 9 as unpatentable over Gestermann, Walsdorff, Allen,
and Klotz.5 Id. at 9.
Appellants argue, first, that “Walsdorff teaches away from modifying
Gestermann to produce chlorine through electrochemical oxidation.” App.
Br. 5. Appellants state that “Walsdorff unequivocally and consistently
discourages and discredits electrochemical oxidation to form chlorine, and
explicitly states that catalytic hydrogen chloride oxidation (Deacon process)
is better.” Id. at 4.

2 U.S. 6,387,345 B1, issued May 14, 2002.
3 U.S. Pub. No. 2004/0024244 A1, published February 5, 2004.
4 U.S. 6,402,930 B1, issued June 11, 2002.
5 U.S. 5,575,985, issued November 19, 1996.
Appeal 2012-010658
Application 11/749,808

4
The Examiner notes that the sections of Walsdorff cited by Appellants
teach certain advantages of using the Deacon process to obtain the chlorine
used for Walsdorff’s step (b), “making available a second partial amount of
chlorine.” Ans. 10. However, the Examiner finds that, for Walsdorff’s step
(a), “making available a first partial amount of chlorine,” Walsdorff teaches
“chlorine can be obtained from either electrolytic processes or by the
Deacon process.” Ans. 10-11; Walsdorff ¶ [0019] (“it is possible to use
chlorine which has been produced by electrolysis processes or by oxidation
of hydrogen chloride, e.g. by the Deacon process . . . .”). Thus, the
Examiner concludes that “while Walsdorff teaches certain advantages for
using the Deacon process to obtain chlorine for step (b), such teachings do
not teach away from the substitution of either electrolytic production or
Deacon process for producing chlorine in step (a).” Ans. 11.
“We will not read into a reference a teaching away . . . where no such
language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). “The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed . . . .” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We agree with the Examiner
that Walsdorff, as a whole, does not teach away from the use of the
electrolytic process for producing chlorine.
Appellants further argue that Walsdorff does not establish that
chlorine can be obtained equivalently by either electrolytic production or the
Deacon process as asserted by the Examiner. App. Br. 5. The Examiner
responds that Walsdorff discloses the use of electrolysis to form chlorine,
Appeal 2012-010658
Application 11/749,808

5
and concludes that one of ordinary skill in the art would have reasonably
expected that electrolysis can form chlorine with predictable results. Ans.
11 (citing Walsdorff, claim 2). We agree with the Examiner that one of
ordinary skill in the art would have understood from the disclosure of
Walsdorff that either electrolysis or the Deacon process would achieve
substantially similar results with respect to formation of chlorine. Ans. 5.
Accordingly, we uphold the grounds of rejection of claims 1-23 under
35 U.S.C. § 103(a) over Gestermann, Walsdorff, and Allen alone and further
combined with Klotz.
The Examiner’s decision is affirmed.
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)(iv).
AFFIRMED

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