Ex Parte Xu

Board of Patent Appeals and Interferences

Jan 28, 2010

10677545 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC CHAO XU
____________

Appeal 2009-010847
Application 10/677,545
Technology Center 1700
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Decided: January 28, 2010
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Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-16, 18-23, 28-34, 36-38, and 42-52 (Final
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Office Action, mailed February 20, 2008), the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).1
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal and is
reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”):
1. An alkaline peroxide mechanical pulping process comprising the
steps of:

feeding a lignocellulosic material into a first press;

pressing the lignocellulosic materials;

discharging the lignocellulosic material from the first press;

impregnating the lignocellulosic material discharged from the
first press with a first sodium hydroxide alkaline peroxide
pretreatment solution and maintaining the impregnation for a first
reaction time;

feeding the impregnated lignocellulosic material to a refiner
having an inlet and a rotating disc within a superatmosphere casing;

refining the impregnated lignocellulose material to form a
primary pulp having a temperature of at least about 80C;

delivering a stream of primary pulp from the superatmospheric
casing to a blow line while the primary pulp temperature is at least
about 80C;

1 In rendering this decision, we have considered Appellant's Brief dated
October 24, 2008 and the Reply Brief dated April 2, 2009. An oral hearing
was held on January 13, 2010.

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adding a sodium hydroxide alkaline peroxide blow line solution
to the stream of primary pulp in the blow line while the primary pulp
temperature is at least about 80C;

mixing the blow line solution and the stream of primary pulp to
form a reaction mixture in the blow line;

discharging the reaction mixture having a temperature of it least
about 80C into a retention vessel;

retaining the reaction mixture in the retention vessel to produce
a bleached material.

Appellant appeals the following rejections:

Claims 1-11, 18-23, 28, 29, 36-38, and 42-52 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Haynes, U.S. 6,743,332 B2, issued
June 1, 2004, Cannell (“The Future of BCTMP”, Pulp and Paper, May 2000)
and Prusas, U.S. 4,486,267, issued December 4, 1984.
Claims 12-16 and 30-34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Haynes, Cannell, Prusas, and Textor, U.S. 3,023,140,
issued February 27, 1962, Sandstrom, U.S. 4,270,976, issued June 2, 1981,
and Xu2.
Appellant has not presented separate arguments for claims 3, 4, 5,
7-16, 19, 23, 29, 30-34, 36, 37, 38, and 43-52. (See App. Br. generally).
Thus, in deciding this appeal, we will initially limit our discussion to
independent claims 1, 18, 21, 36, and 42.

2 “Chemical Treatment in Mechanical Pulping-Part 3; Paul Yield and
Chemical Pretreatment”, 1998 Pulping Conference, TAPPI Proceedings,
pp. 391-402.
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ISSUE
The following issue is presented for our review:
Has Appellant shown reversible error in the Examiner’s
determination that it would have been obvious to one having ordinary
skill in the art to perform a chemi-thermomechanical pulping process
employing a two-stage chemical treatment wherein lignocellulosic
materials are first pretreated with alkaline peroxide and then alkaline
peroxide is subsequently added immediately before or at the refiner as
described in independent claims 1, 18, 21, 36, and 42? We answer
this question in the negative.
FINDINGS OF FACT (“FF”)
1. Appellant acknowledges that it was known by persons of
ordinary skill in the art to apply alkaline peroxide to lignocellulosic material
prior to or during refining. Appellant specifically states in the Specification:
In a very broad sense, alkaline peroxide refiner
mechanical pulping is a type of pulping process where
hydrogen peroxide and alkali in various forms, together
with various amounts of different peroxide stabilizers,
are applied to the lignocellulosic materials before or
during defiberization and fibrillation in a refiner. In the
early stage of development of this type of pulping
process, two basic concepts were tried. One was to
apply alkaline peroxide treatment on chips, to allow the
bleaching reactions to complete or to approach
completion before refining. The other basic concept
was to apply all the alkaline peroxide at the refiner,
either with no pretreatment or with stabilizers or other
alkaline pretreatment prior to the alkaline peroxide
application at the refiner. (Spec. 2).

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2. The Examiner found that Prusas describes the pretreatment
steps of the presently claimed invention. The Examiner found that Prusas
differs from the claimed invention by not describing adding alkaline
peroxide (AP) to the refiner. (Ans. 3). Prusas discloses the chemi-
thermomechanical process (CTMP) is a two-stage chemical treatment
performed prior to refining. (Col. 4, ll. 63-68).
3. The Examiner found that Cannell describes the use of alkali
peroxide (AP) pretreatment steps in CTMP and post-refining bleaching
steps. (Ans. 6; Cannell, Fig. 2).
4. The Examiner found that Haynes teaches AP introduction of an
AP solution to a lignocellulosic material in a refiner pretreatment step and in
a post refiner blow line injection step. (Ans. 4). Haynes discloses it is
known in CTMP that the lignocellulosic material (wood chips) are first
pretreated with sodium hydroxide and with hydrogen peroxide under
elevated temperature and pressure prior to refining. (Haynes, 1, ll. 51-58).
Haynes discloses in brightening processes it is conventional to utilize an
oxidizing agent, such as hydrogen peroxide, with an alkali such as sodium
hydroxide. (Haynes, 2, ll. 51-58). Haynes discloses alkali buffer solution
suitable for peroxide bleaching at high temperatures can include a suitable
quantity of sodium hydroxide. (Haynes, paragraph bridging 4 and 5).
5. Haynes teaches in the refining process AP solution is
introduced at various points in the process. (Haynes, 12, ll. 45-53).
Specifically Haynes states:
Referring again to FIG. 2, a plurality of chemical
addition points 260, 261, 262, and 263 are shown. A
first chemical addition point 260, 261, and 263 can be
before or at the primary refiner and a second chemical
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addition point 262 can be at a location which is
interstage of the first 216 and second 222 refiners
including blocks 218, 258, 226, 230, and all lines
connected to such blocks. As used herein, when
referring to "chemical addition at or in the primary
refiner" means any block prior to or including the
primary refiner 216 in FIG. 2 and prior to or including
the blocks 324 and 326 in FIG. 3. According to the
invention of providing methods for bleaching
mechanical pulps, the bleaching liquor can be
introduced in the first stage refiner 216 at 260 or at the
interstage section between the first refiner 216 and the
second refiner 222 at 262. Alternatively, one or a
plurality of components of the bleaching liquor can be
introduced at the first stage refiner 216 or preceding
blocks and one or a plurality of components of the
bleaching liquor can be introduced at the interstage
section 224 or in any combination thereof. It should be
pointed out that the interstage addition point can be at
any vessel or line from the exit of the first stage refiner
216 to the entrance to the second stage refiner 222,
including the units 218, 258, 226, 230 and the lines 224,
246, 262, 238, 240 and 266.

Haynes, 12, ll. 40-63.

6. Appellant has not disputed that Prusas discloses pretreatment
steps that correspond to the claimed invention. (See Briefs generally).
Appellant also has not disputed that Haynes teaches that it was known to
introduce an AP solution to a lignocellulosic material at varying points in the
refining process. (See Briefs generally). In fact, Appellant acknowledges
that Haynes discloses the bleaching liquor can be introduced at various
points in the refining process. (App. Br. 15)

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PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant's Brief to show error in the
proffered prima facie case. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). The question to be asked is “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Altering a position of a component in a device does not render the
device patentable. See In re Japikse, 181 F.2d 1019, 1022-23 (CCPA 1950)
(specific positioning of a starting switch of a hydraulic power press held
unpatentable because shifting the position of the starting switch would not
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have modified the operation of the device); In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (particular placement of a contact in a conductivity measuring
device is an obvious matter of design choice).
ANALYSIS
Appellant has not shown reversible error in the Examiner’s
determination that it would have been obvious to one having ordinary
skill in the art to perform a chemi-thermomechanical pulping process
comprising adding alkali peroxide solution during pretreatment and
immediately before and during the refining process. The Examiner
cited Cannell and Prusas for describing it was known to add AP
during pretreatment processes in CMTP. The Examiner cited Prusas
for describing the specific pretreatment steps of the claimed invention.
Appellant has not specifically identified the pretreatment steps that are
not disclosed by Prusas. The Examiner cited Haynes for describing
the introduction of an AP solution at various points during the refining
process. Appellant has not disputed that it was known by persons of
ordinary skill in the art to introduce an AP at various points during the
refining process. (FF 6). A person of ordinary skill in the art would
have reasonably expected that alkali peroxide could have been added
during pretreatment and during the refining process. Appellant's
invention of claim 1 is merely a predictable variation (of the location
of the addition of alkaline peroxide) which yields predictable results
and would have been obvious to one of ordinary skill. See KSR,
supra. Appellant acknowledges that the field of the invention is
crowded with many practitioners attempting to improve upon the
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pretreatment, refining, and post refining stages of an AP mechanical
pulping processes. (App. Br. 12).
Appellant's arguments regarding the absence of a nexus among
the references (App. Br.13-14) are not persuasive. As set forth above,
(FF 1-5), the person of ordinary skill in the art would have reasonably
expected that AP could have been added during the lignocellulose
material pre-treatment process or during the refining process for
achieving optimal refining (softening and bleaching) of lignocellulose
material.
Appellant's arguments regarding claims 2 and 22 (App. Br. 17 and
19) are not persuasive. Appellant has not specifically identified the error in
the Examiner's reliance on the Prusas reference for rendering the subject
matter unpatentable. A person of ordinary skill in the art would have
reasonably expected that the pretreatment steps described by Prusas would
have been suitable for use as the pretreatment in the Haynes process.
Appellant has not provided an explanation as to why the pretreatment stages
of Prusas would have been incompatible with the process of Haynes.
Appellant's arguments regarding claims 6, 20, and 21 (App. Br.
18-19) are not persuasive for the reasons set forth with respect to claim 1
above. Appellant's arguments pertain to the location of a blow valve for
injection of the AP solution to the refiner. Appellant has not asserted that
the use of a blow valve for the claimed purpose was unknown to persons of
ordinary skill in the art. A person of ordinary skill in the art would have
sufficient skill to select the appropriate location for the addition of
components to our refiner.
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Appellant's arguments regarding claims 18, 28, and 36 (App. Br.
18-20) are not persuasive. Appellant's arguments are not directed to the
Haynes reference. The Examiner relies upon Haynes for describing the use
of elevated temperature and pressure in the refining process. A person of
ordinary skill in the art would have sufficient skill to select the appropriate
temperature and pressure for the refining process.
Appellant's argument regarding claim 42 (App. Br. 20) are not
persuasive for the reasons set forth with respect to claim 1 above.
Appellant's arguments pertain to the location of a blow valve for transferring
pulp in various stages of the refining process. Appellant has not disputed
that the use of a blow valve for the claimed purpose was known to persons
of ordinary skill in the art. A person of ordinary skill in the art would have
recognized the suitable conditions for transferring pulp from the various
stages during a refining process.
In addition to the Haynes, Cannell, and Prusas references, in rejecting
the subject matter of claims 12-16 and 30-34, the Examiner relies upon the
teachings of Textor, Sandstrom, and Xu. Appellant has not specifically
addressed the Examiner's reliance upon the Textor, Sandstrom, and Xu
references. Rather, Appellant contends that these claims are allowable for
the reasons presented in response the rejection of claims 2 and 22. (App. Br.
22-23). Consequently, these rejections are maintained for the reasons set
forth above.
Appellant has not directed us to evidence of secondary considerations
such as unexpected results to support a conclusion of nonobviousness.
Under these circumstance, we cannot conclude that the Appellant has
established error in the Examiner's determination that the appealed subject
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matter is obvious under 35 U.S.C. § 103. Therefore, the rejections of claims
1-16, 18-23, 28-34, 36-38, and 42-52 under § 103 are affirmed.
Accordingly, we affirm the rejections under 35 U.S.C. § 103(a) of
claims 1-11, 18-23, 28, 29, 36-38, and 42-52 over Haynes, Cannell, and
Prusas; claims 12-16 and 30-34 over Haynes, Cannell, Prusas, Textor,
Sandstrom, Xu, and Sabourin.
CONCLUSION
The decision of the Examiner rejecting claims 1-16, 18-23, 28-34,
36-38, and 42-52 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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