Ex parte WOLD

Board of Patent Appeals and Interferences

Feb 28, 2001

08586874 (B.P.A.I. Feb. 28, 2001)

1
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not written for publication and is not binding precedent of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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RAGNAR WOLD
__________
Appeal No. 1998-2349
Application 08/586,874
___________
ON BRIEF
___________
Before OWENS, WALTZ and TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 8-13, which are all of the claims remaining in the
application.
THE INVENTION
Appellant’s claimed invention is directed toward a method
for removing iron and halogens from hydrochloric acid. Claim
8 is illustrative:
Appeal No. 1998-2349
Application 08/586,874
Citations herein to this reference are to the English1
translation thereof which is of record.
2
8. A method for removing iron and halogens from
hydrochloric acid containing iron and halogens, which
comprises removing iron from the hydrochloric acid and
thereafter adding a nitrogen containing reducing agent to the
acid.
THE REFERENCES
Wilson 2,787,523 Apr. 2,
1957

Takatomi 2-233503 Sep. 17,1
1990
(Japanese Kokai)
THE REJECTIONS
Claims 8-13 stand rejected under 35 U.S.C. § 103 over
Takatomi and over Wilson in view of Takatomi.
Appellant states that the claims stand or fall separately
(brief, page 3). However, appellant provides a substantive
argument as to the separate patentability of only the sole
independent claim (claim 8) and dependent claims 11 and 13.
Dependent claims 9, 10 and 12, therefore, stand or fall with
claim 8, and we limit our discussion to claims 8, 11 and 13.
See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129
n.2 (Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1997).
Appeal No. 1998-2349
Application 08/586,874
3
Claim 8
Takatomi discloses a method for removing iron and
chlorine from hydrochloric acid containing free chlorine and
iron (page 1). The chlorine is first removed by contacting
the hydrochloric acid with either a reductant alone or a
reductant followed by low-activated carbon, and then the iron
is removed by contacting the hydrochloric acid with a strong
basic anion exchange resin (pages 1 and 4-5). The reductant
preferably is at least one of hydrazine, hydroxylamine
chlorate, urea and hydrogen peroxide (pages 1 and 4).
Takatomi removes the free chlorine to prevent the
hydrochloric acid from being colored and to prevent the anion
exchange resin from partially losing its exchange capacity due
to being oxidized by free chlorine (page 2). Takatomi must
use low-activated carbon to remove the chlorine, because high-
activated carbon would reduce the iron such that it cannot be
thoroughly removed by the anion exchange resin (pages 2-3).
Thus, Takatomi would have fairly suggested two approaches
to one of ordinary skill in the art. One is Takatomi’s
approach, which is to carry out the chlorine removal upstream
Appeal No. 1998-2349
Application 08/586,874
4
of the anion exchange resin. This approach has the advantage
of preventing loss of anion exchange capacity, but has the
disadvantage of requiring the use of low-activated carbon to
remove the chlorine. The second approach is to place the
anion exchange resin upstream of the chlorine removal. This
approach has the advantage of permitting use of high-activated
carbon for chlorine removal and avoiding, due to the iron
being removed upstream of the high-activated carbon, any
reduction of the iron by the high-activated carbon, but has
the disadvantage of some loss of anion exchange resin
capacity. The fair suggestion, to one of ordinary skill in
the art, of this second approach would have rendered the
method recited in appellant’s claim 8 prima facie obvious to
such a person.
Appellant argues that one of ordinary skill in the art
would not have been motivated to remove the iron in Takatomi’s
method before the chlorine because such a person would have
expected that doing so would have the disadvantage of partial
loss of anion exchange resin capacity and would not have any
advantage (reply brief, page 2). The advantage, as discussed
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Application 08/586,874
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above, would be prevention of reduction of the iron by high-
activated carbon, so that iron could be removed effectively by
the anion exchange resin and high-activated carbon could be
used to remove the chlorine.
Appellant argues that one of ordinary skill in the art,
when carrying out appellant’s method, would not use a strong
basic anion exchange resin which is known to be susceptible to
damage by chlorine but, rather, would use an ion exchange
resin which would remove the iron without being damaged by
chlorine (brief, pages 5-6; reply brief, page 3). Appellant
does not disclose what ion exchange resin is used in his
method, but, rather, merely states that the iron is removed,
preferably by filtration and ion exchange (specification,
page 2). If those of ordinary skill in the art knew, as
appellant argues, of resins which effectively remove iron
without being damaged by chlorine, then the disclosure of
partial loss of exchange capacity by Takatomi would have led
them to use such a resin instead of Takatomi’s strong basis
anion exchange resin. See In re Nomiya, 509 F.2d 566, 572,
184 USPQ 607, 613 (CCPA 1975). Appellant’s claimed invention,
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Application 08/586,874
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therefore, would have been prima facie obvious to one of
ordinary skill in the art for this additional reason.
Regarding the rejection over Wilson in view of Takatomi,
appellant’s claimed invention would have been prima facie
obvious to one of ordinary skill in the art over Takatomi as
discussed above. Wilson provides an additional disclosure of
removing chlorine from hydrochloric acid by use of
hydroxylamine (col. 1, lines 33-35).
Because appellant has not effectively rebutted the prima
facie case of obviousness of the method recited in claim 8
over the applied references, we affirm the rejections of that
claim.
Claim 11
Appellant’s claim 11 requires that the reducing agent is
supplied in excess compared to a stoichiometric quantity.
Takatomi discloses that “[t]he amount of the reductant to
be added is a stoichiometric amount or less for the amount of
the free chlorine, and the amount of the reductant should not
be excessive” (page 4).
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Application 08/586,874
7
The amount of excess in appellant’s claim 11 can exceed
the stoichiometric quantity by an amount as small as an
infinitesimal amount. In our view, the disclosure that the
amount can be stoichiometric or less additionally would have
fairly suggested, to one of ordinary skill in the art, use of
an amount which exceeds the stoichiometric amount by only an
infinitesimal degree. The reason is that one of ordinary
skill in the art would have reasonably expected the
performance of the reducing agent, whether added in the
stoichiometric amount or an amount which differs from it by
only an infinitesimal degree, to be essentially the same. See
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ
773, 779 (Fed. Cir. 1985).
Appellant argues that the amount of excess reducing agent
would have to be significantly above stoichiometric if one
wanted to remove chlorine and additional halogen (brief, page
7). Appellant’s claim 11, however, does not require that a
halogen other than chlorine be removed. Moreover, regarding
the rejection over Wilson in view of Takatomi, the examiner
argues that Wilson discloses use of excess reducing agent
Appeal No. 1998-2349
Application 08/586,874
8
(answer, pages 7-8), and appellant does not challenge this
argument. The record, therefore, indicates that the applied
references would have fairly suggested, to one of ordinary
skill in the art, use of excess reducing agent to remove
chlorine after a step wherein an anion exchange resin is used
to remove iron.
For the above reasons, we affirm the rejections of claim
11.
Claim 13
Appellant’s claim 13 requires the presence of coloring
amounts of each of chlorine and bromine.
The examiner argues that there is no minimum amount of
bromine required by claim 13, and that the amount can be at
the impurity level (answer, page 6). The examiner is correct
only if an impurity level is a coloring amount as required by
the claim, and the examiner has not established that an
impurity level is a coloring amount.
The examiner argues that any bromine present inherently
would be removed by Takatomi’s hydroxylamine chlorate (answer,
page 6). That may be correct, but for a prima facie case of
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Application 08/586,874
9
obviousness to be established, the applied prior art must have
provided one of ordinary skill in the art with a motivation to
remove bromine and a reasonable expectation of success in
doing so. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988). Appellant acknowledges
that it was known in the art that free bromine causes
hydrochloric acid to have a yellow color (specification, page
1). Thus, one of ordinary skill in the art would have been
motivated to remove the bromine. The examiner, however, has
not established that one of ordinary skill in the art would
have had a reasonable expectation of success in doing so.
That is, the examiner has not established that one of ordinary
skill in the art would have reasonably expected 1) Takatomi’s
strong anion exchange resin to function effectively in the
presence of bromine, and 2) the reductants of Takatomi and
Wilson to be effective for removing bromine. Hence, the
examiner has not established that it would have been prima
facie obviousness to one of ordinary skill in the art to apply
the processes of the applied references to hydrochloric acid
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Application 08/586,874
10
containing bromine. Consequently, we reverse the rejections
of claim 13.
DECISION
The rejections of claims 8-12 under 35 U.S.C. § 103 over
Takatomi and over Wilson in view of Takatomi are affirmed.
The rejections of claim 13 under 35 U.S.C. § 103 over Takatomi
and over Wilson in view of Takatomi are reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
TERRY J. OWENS )
Administrative Patent Judge ) BOARD OF PATENT
)
) APPEALS AND
)
THOMAS A. WALTZ ) INTERFERENCES
Administrative Patent Judge )
Appeal No. 1998-2349
Application 08/586,874
11

TIMM, Administrative Patent Judge, dissenting-in-part.
I respectfully dissent-in-part from the majority's
disposition of this case. I do so because I believe the
examiner has not produced a sufficient amount of evidence to
establish a prima facie case of obviousness with respect to
the subject matter of any of the claims on appeal.
Accordingly, I would reverse all the rejections.
In order to establish a prima facie case of obviousness,
there must be a suggestion to do what the appellant has done
and that suggestion must come from the prior art and not from
the appellant’s own disclosure. “A critical step in analyzing
the patentability of claims pursuant to section 103(a) is
casting the mind back to the time of invention, to consider
the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in
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Application 08/586,874
12
the field.” In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000). “The invention must be viewed
not with the blueprint drawn by the inventor, but in the state
of the art that existed at the time.” In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(quoting
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227
USPQ 543, 547 (Fed. Cir. 1985). To establish a prima facie
case of obviousness, “there must be some teaching, suggestion
or motivation in the prior art to make the specific
combination that was made by the applicant.” In re Dance, 160
F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
The majority opinion, after careful consideration of the
facts as apparent from their opinion, arrives at the
conclusion that the claims define only obvious subject matter
based on the finding that:
Takatomi would have fairly suggested two
approaches to one of ordinary skill in the art. One
is Takatomi’s approach, which is to carry out the
chloride removal upstream of the anion exchange resin.
This approach has the advantage of preventing loss of
anion exchange capacity, but has the disadvantage of
requiring the use of low-activated carbon to remove
the chloride. The second approach is to place the
anion exchange resin upstream of the chlorine removal.
This approach has the advantage of permitting use of
Appeal No. 1998-2349
Application 08/586,874
13
high-activated carbon for chlorine removal and
avoiding, due to the iron being removed upstream of
the high-activated carbon, any reduction of the iron
by the high-activated carbon, but has the disadvantage
of some loss of anion exchange resin capacity. The
fair suggestion, to one of ordinary skill in the art,
of this second approach would have rendered the method
recited in appellant’s claim 8 prima facie obvious to
such a person.
My point of disagreement lies here: I do not believe that
Takatomi fairly suggests the second approach nor the advantage
of the second approach expressed by my colleagues. Takatomi
teaches only processes in which chlorine is removed upstream
from the iron removing anion exchange resin. Takatomi
expresses a specific reason for performing the chlorine
removal before iron removal, i.e. removing the free chlorine
prevents oxidation and partial loss of the exchange capacity
of the anion exchange resin (Takatomi, page 2). There is no
mention of reversing the steps of chlorine and iron removal in
the reference and the examiner has pointed to no specific
evidence that performing iron removal first was known in any
process of purifying hydrochloric acid. Nor has the examiner
presented any evidence or convincing technical reasoning that
those of ordinary skill in the art would have found it
permissible in this type of process to allow oxidation and
Appeal No. 1998-2349
Application 08/586,874
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partial loss of exchange capacity of the anion exchange resin.
Furthermore, there is no evidence or technical reasoning
advanced by the examiner tending to show that using high-
activated carbon after iron removal would have been reasonably
expected to offer enough of a benefit to sufficiently mitigate
the disadvantage created by the loss of anion exchange resin
capacity. In my view, there is no factual basis to support
the finding that the second approach, as the majority calls
it, was known in the art at the time of invention or that
there was a reason, suggestion or motivation, understood by
those of ordinary skill in the art, for reversing the order of
the steps.
“In proceedings before the Patent and Trademark Office,
the examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art.” In re
Fritsch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a
prima facie case. See Fritsch, 972 F.2d at 1266, 23 USPQ2d at
1783-84. “[A] determination of obviousness must be based on
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Application 08/586,874
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facts and not on unsupported generalities.” In re Freed, 425
F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970). In my opinion,
based on the current record, there is an insufficient factual
basis to support a prima facie case of obviousness over
Takatomi. Furthermore, Wilson does not remedy the deficiency.
Accordingly, I would not sustain any of the examiner’s
rejections.

) BOARD OF PATENT
)
CATHERINE TIMM ) APPEALS AND
Administrative Patent Judge )
)
INTERFERENCES

WENDEROTH, LIND & PONACK
2033 K STREET, N.W., SUITE 800
WASHINGTON, DC 20006
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Application 08/586,874
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