Ex Parte YIN et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201513163088 (P.T.A.B. Feb. 9, 2015) Copy Citation 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. 13/163,088 06/17/2011 CAIFANG YIN TEC-027901-N1 8942 1726 7590 02/10/2015 INTERNATIONAL PAPER COMPANY 6283 TRI-RIDGE BOULEVARD LOVELAND, OH 45140 EXAMINER CALANDRA, ANTHONY J ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 02/10/2015 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 CAIFANG YIN and KENT WITHERSPOON ____________ Appeal 2013-003731 Application 13/163,088 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3–7, 12–15, and 17–26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellants’ invention relates to a process for bleaching hardwood pulp in the presence of Mg(OH)2 (“magnesium hydroxide”). Spec. 1:6–7. 1 Appellants identify International Paper Company as the real party in interest. App. Br. 1. Appeal 2013-003731 Application 13/163,088 2 Claim 1 is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 1. An improved bleaching process for bleaching pulp comprising: at least one D1 or D2 acidic bleaching stage which comprises treating a hardwood pulp solely with a bleaching agent which is selected from the group consisting of chlorine dioxide and chlorine dioxide with less than about 1.5 % elemental chlorine in the presence of a weak base comprising Mg(OH)2 at an acidic pH of from about 3.5 to about 6.5. The References Sepall CA 756967 A Apr. 18, 1967 T.J. McDonough, et al., Factors Affecting the Outlook for Utilization of Hardwoods in Pulping and Papermaking, The Institute of Paper Chemistry, IPC Technical Paper Series No. 154, May 1985 (“McDonough”) Environmental Defense Fund, Paper Task Force, Economics of Kraft Pulping and Bleaching, White Paper No. 7, Dec. 19, 1995 (“EDF”) The Rejections 1. Claims 1, 3–7, 12, 13, 15, 17–24, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sepall and, if necessary, in view of McDonough, as evidenced by EDF; and 2. Claims 14 and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sepall and McDonough in view of EDF. Appeal 2013-003731 Application 13/163,088 3 OPINION Rejection 1. The Examiner finally rejected claims 1, 3–7, 12, 13, 15, 17–24, and 26 as obvious over Sepall and, if necessary, McDonough, as evidenced by EDF. Advisory Action 2–6 (April 4, 2012).2 Sepall discloses neutralizing chemicals (i.e., weak bases) suitable for use in the chlorine dioxide bleaching of pulp, including magnesium oxide. Sepall 2:21–31; Advisory Action 2–3. The neutralizing chemicals are “of sufficiently limited solubility that the pH is not increased into an undesirable range, that is, not higher than approximately 7 or 8.” Sepall 2:32–3:1; see also id. at 3:4–5 (“The chemical employed and the quantity thereof is such as to provide a pH of about 4 to 8 in the final pulp mixture.”); Advisory Action 3. Sepall further discloses that the chlorine dioxide bleaching is carried out in stages, including D1 and D2 stages. Sepall 4:1–5, 10:15–20, Tables IV(A), IV(B), and V; Advisory Action 4. Because “chlorine dioxide can frequently contain [elemental] chlorine,” Sepall discloses testing the effect of elemental chlorine during the bleaching process by using 15% (the maximum concentration of chlorine encountered in practice) or 30% chlorine, chlorine dioxide, and calcium carbonate (one of the disclosed neutralizing chemicals) in the D2 stage bleaching. Sepall 8:1–7, Table III; see Advisory Action 4. McDonough discusses the characteristics of hardwood pulps that make them advantageous as raw material for paper making. McDonough 2– 2 As explained in the Examiner’s Answer, the April 4, 2012 Advisory Action modified the body of the Examiner’s rejections in response to an amendment after final rejection that the Examiner entered. Ans. 3. Accordingly, we cite the Advisory Action, in addition to the Answer, when discussing the Examiner’s rejections. Appeal 2013-003731 Application 13/163,088 4 5. McDonough teaches that the primary advantage of softwood pulps over hardwood pulps is strength, but that hardwood pulps possess important advantages over softwood pulps. Id. These advantages include easy lignin removal and short fibers, which result in better smoothness, opacity, sheet formation, and printability and make hardwood pulps particularly suitable raw materials for printing and writing papers. Id.; Advisory Action 3. EDF describes a task force’s work to develop recommendations for purchasing “‘environmentally preferable paper’, paper that reduces environmental impacts while meeting business needs.” EDF 1. As the Examiner found, elemental chlorine causes the formation of dioxins, which pose serious environmental concerns. Advisory Action 4; Ans. 10. EDF explains that these concerns have influenced the pulping industry’s “commitment to eliminate elemental chlorine from bleached kraft pulp mills.” EDF 2. Claims 1, 3–7, 13, 15, 17–20, 22–24, and 26. Appellants argue claims 1, 3–7, 13, 15, 17–20, 22–24, and 26 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Claim 1 recites an improved process for bleaching pulp and requires “at least one D1 or D2 acidic bleaching stage which comprises treating a hardwood pulp” with a bleaching agent “selected from the group consisting of chlorine dioxide and chlorine dioxide with less than about 1.5% elemental chlorine in the presence of a weak based comprising Mg(OH)2 at an acidic pH of from about 3.5 to about 6.5.” App. Br. 16 (Claims App’x). The Examiner found that Sepall discloses or suggests all of the elements of claim 1. Advisory Action 2–4; Ans. 5–12. Alternatively, the Appeal 2013-003731 Application 13/163,088 5 Examiner found that a skilled artisan would have been motivated to use the hardwoods described in McDonough in Sepall’s bleaching process to obtain pulp for use in higher quality printing papers. Advisory Action 3; Ans. 11– 12. The Examiner further found that a person of ordinary skill in the art would have been motivated to minimize the amount of elemental chlorine in Sepall’s bleaching process because, as disclosed in EDF, it is an impurity that should be minimized in pulp bleaching. Advisory Action 4; Ans. 10. Appellants argue that Sepall does not teach or suggest carrying out acidic bleaching of hardwood pulp in the presence of magnesium hydroxide. App. Br. 3–5. In particular, Appellants argue that Sepall teaches “using magnesium oxide (and not ‘magnesium hydroxide’).” Id. at 8 n.20. Appellants also argue that the Examiner’s finding that Sepall’s disclosed pH range overlaps the claimed range is erroneous because Sepall discloses both acidic and basic pHs and, more specifically, discloses only basic pHs (i.e., 8.0 and 7.6) when magnesium oxide is used as a neutralizing chemical in the bleaching process. Id. at 4–5, 7–8 (citing Table VII of Sepall). Appellants’ arguments are not persuasive. First, although Appellants argue that Sepall does not teach using magnesium hydroxide, Appellants’ claims set forth that the bleaching is performed “in the presence of a weak base comprising [magnesium hydroxide,]” App. Br. 16 (Claims App’x), and Appellants “do not dispute that . . . magnesium oxide taught by Sepall may form [magnesium hydroxide] when in contact with water[,]” Ans. 3–4 (quoting Response to Office Action 23 (Nov. 10, 2011)). Moreover, although Sepall exemplifies basic pH values for magnesium oxide as a neutralizing chemical in Table VII, it is well- established that a reference is not limited to its examples or preferred Appeal 2013-003731 Application 13/163,088 6 embodiments. Merck & Co. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Instead, all disclosures therein must be evaluated for what they would have fairly suggested to one of ordinary skill in the art. In re Boe, 355 F.2d 961, 965 (CCPA 1966). As the Examiner found, Sepall teaches the use of a weak base (i.e., neutralizing chemical) during chlorine dioxide bleaching, including magnesium oxide (which forms magnesium hydroxide when exposed to water in the aqueous bleaching process), at a pH range of 4 to 7 or 8. Ans. 5; Sepall 2:32–3:5. Thus, Sepall would have fairly suggested, to one of ordinary skill in the art, bleaching pulp at any pH in the range of 4 to 8 in the presence of magnesium hydroxide (magnesium oxide in water).3 Sepall’s pH range overlaps Appellants’ claimed pH range of “from about 3.5 to about 6.5,” and, therefore, renders it prima facie obvious. In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in ranges establishes a prima facie case of obviousness.”). Accordingly, the burden shifted to Appellants to show that the particular claimed ranges are critical, e.g., achieve unexpected results relative to the prior art ranges. Id. at 1330. Appellants do not argue that the claimed pH range is critical, or point to any evidence of unexpected results to rebut the prima facie case. Rather, Appellants, relying on Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006), argue that the difference between their claimed acidic pH 3 Appellants’ argument that Table VII of Sepall teaches away, App. Br. 5 n.15, is unconvincing for the same reason. That is, Sepall does not discredit, or otherwise discourage investigation into Appellants’ claimed pH range with magnesium oxide. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appeal 2013-003731 Application 13/163,088 7 range and Sepall’s disclosed pH range is “‘considerable,’ and thus patentable.” App. Br. 6. Appellants’ reliance on Atofina is misplaced, because Atofina is distinguishable. In Atofina, the court considered whether the prior art’s disclosure of a broad temperature range inherently disclosed every temperature within the range and, therefore, anticipated a narrower temperature range. 441 F.3d at 998–1000. Thus, Atofina addresses issues relating to anticipation, not obviousness. Here, in contrast, the Examiner’s rejection is based on obviousness and, as discussed previously, our reviewing court consistently has held that an overlap in ranges establishes a prima facie case of obviousness.4 Peterson, 315 F.3d at 1329–30. Appellants argue that Sepall does not teach a range of elemental chlorine that overlaps the claimed range of 1.5% or less. App. Br. 3, 8–9. In particular, Appellants argue that Sepall does not teach a range of 0 to 15% chlorine in chlorine dioxide because Sepall discloses that “chlorine dioxide ‘can frequently contain chlorine,’ that the ‘maximum concentration of chlorine encountered in practice is 15% based on the weight of chlorine dioxide,’ and that ‘concentrations [of chlorine] up to 30% were studied’ in laboratory experiments.” App. Br. 9. We are not persuaded by Appellants’ argument. Appellants recognize that Sepall discloses chlorine dioxide “can frequently contain chlorine.” Id. (citing Sepall 8:1). As the Examiner found, frequently is not always, and 4 Appellants argue that the difference between Sepall’s disclosed pH range of 4 to 8 and dependent claims 4, 20, and 22, which recite a pulp pH of from about 4.5 to about 5.5, is “even more ‘considerable’ [than the difference between Sepall’s range and claim 1’s range] in view of . . . Atofina.” App. Br. 7. This argument is unpersuasive for the same reasons discussed in connection with claim 1. Appeal 2013-003731 Application 13/163,088 8 Sepall includes examples where no elemental chlorine is disclosed with the chlorine dioxide in a bleaching stage. Ans. 8. Thus, Sepall would have suggested to one of ordinary skill in the art bleaching with a bleaching agent consisting of chlorine dioxide containing 0 to 15% elemental chlorine.5 Sepall’s elemental chlorine range overlaps Appellants’ claimed “chlorine dioxide with less than about 1.5% elemental chlorine” and, therefore, renders it prima facie obvious. Peterson, 315 F.3d at 1329–30. Accordingly, the burden shifted to Appellants to show that the particular claimed ranges are critical. Appellants do not argue that the claimed chlorine range is critical, or point to any evidence of unexpected results to rebut the prima facie case. Accordingly, Appellants have failed to meet their burden. Appellants argue the Examiner’s finding that a skilled artisan would have been motivated to modify Sepall’s process to minimize elemental chlorine in light of EDF’s disclosure is speculation given Sepall’s teaching that levels of 15% and 30% elemental chlorine can be tolerated when using calcium carbonate as the neutralizing agent. App. Br. 3, 11. 5 Although we affirm for the reasons given by the Examiner, we note that claim 1 recites a Markush group—“a bleaching agent which is selected from the group consisting of chlorine dioxide and chlorine dioxide with less than about 1.5% elemental chlorine.” App. Br. 16 (Claims App’x). Chlorine dioxide is a member of the bleaching agent group. It is undisputed that Sepall discloses chlorine dioxide. E.g., Sepall 1:1–3. Where a claim element relies on a Markush group and one member of the Markush group would have been obvious, the claim element is obvious. Cf. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009) (“Element (a) is written in Markush form, such that the entire element is disclosed by the prior art if one alternative in the Markush group is in the prior art.”). Appeal 2013-003731 Application 13/163,088 9 We are not persuaded by this argument because “the test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). First, as discussed previously, Sepall discloses that elemental chlorine is frequently, not always, present in chlorine dioxide at levels from 0 to 15% in practice. Thus, Sepall’s disclosure alone renders Appellants’ claimed range prima facie obvious. Even if Sepall did not disclose such a range, however, EDF explicitly teaches the pulping industry’s “commitment to eliminate elemental chlorine from bleached kraft pulp mills.” EDF 2. Therefore, considering the collective teachings of Sepall and EDF, Appellants have failed to persuade us of reversible error in the Examiner’s conclusion that it would have been obvious to a skilled artisan to eliminate elemental chlorine from the chlorine dioxide of Sepall’s process. Ans. 10. Appellants argue that a skilled artisan would not have been motivated by McDonough’s teachings to replace the softwood pulps of Sepall’s process with hardwood pulps. App. Br. 3, 12–13. Appellants’ argument is not persuasive because it does not consider the collective teachings of the prior art. Although Sepall includes an example of a multi-stage bleaching sequence with softwood pulp, Sepall’s disclosure is not so limited. Merck, 874 F.2d at 807. Indeed, Sepall’s disclosure uses the word “pulp.” E.g., Sepall 1:1–6, 1:29–33, Tables A and B. Further, McDonough expressly teaches that hardwood pulps possess important advantages over softwood pulps, including easy lignin removal Appeal 2013-003731 Application 13/163,088 10 and short fibers, which result in better smoothness, opacity, sheet formation, and printability, and make hardwood pulps particularly suitable raw materials for printing and writing papers. McDonough 2–5. Considering the collective teachings of Sepall and McDonough, Appellants fail to show reversible error in the Examiner’s finding that a skilled artisan would have been motivated to use Sepall’s bleaching process on hardwood pulps to obtain pulp that is suitable for higher quality printing papers. Advisory Action 3; Ans. 11. Accordingly we affirm the Examiner’s rejection of claims 1, 3–7, 13, 15, 17–20, 22–24, and 26 under 35 U.S.C. § 103(a). Claims 12 and 21. Appellants present separate arguments for the patentability of dependent claim 12 and independent claim 21. Claim 12 depends from claim 1 and recites the bleaching process of claim 1, “wherein the amount of chlorine dioxide used in the at least one bleaching stage is from about 0.1% to about 0.5%.” App. Br. 16 (Claims App’x). Claim 21 recites an improved bleaching process for bleaching pulp comprising, inter alia, “at least one D1 or D2 acidic bleaching stage . . . wherein the amount of chlorine dioxide used in the at least one bleaching stage is from about 0.1% to about 0.5%.” Id. at 17–18. Appellants argue that Sepall does not teach or suggest “from about 0.1% to about 0.5%” chlorine dioxide as recited in claims 12 and 21 when magnesium hydroxide is the weak base. Id. at 3, 9–10. Thus, argue Appellants, the Examiner’s conclusion that Sepall would have rendered claims 12 and 21 obvious is not supported by an articulated reasoning with a rational underpinning. Id. at 10. Appeal 2013-003731 Application 13/163,088 11 Appellants’ argument is not persuasive because it does not consider the teaching of Sepall as a whole. As the Examiner found, and Appellants do not dispute, Sepall discloses at least one example using 0.5% chlorine dioxide in a D2 bleaching stage. Advisory Action 6; App. Br. 10. Although the example discloses calcium carbonate as the neutralizing chemical, as previously discussed, Sepall teaches various neutralizing chemicals that can be used during chlorine dioxide bleaching, including magnesium oxide. Sepall does not disclose or suggest that the concentration of chlorine dioxide should be different when a neutralizing chemical other than calcium carbonate is used. Advisory Action 6; Ans. 9. In fact, Sepall suggests otherwise—that is, varying the concentration of neutralizing chemical not chlorine dioxide—as Sepall describes the quantity of neutralizing chemical as depending upon, inter alia, “the quantity of chlorine dioxide added to the pulp.” Sepall 3:5–8. Accordingly, we affirm the Examiner’s rejection of claims 12 and 21 under 35 U.S.C. § 103(a). Rejection 2. The Examiner finally rejected claims 14 and 25 as obvious over the combination Sepall, McDonough, and EDF. Advisory Action 6–7. Claim 14 indirectly depends from claim 1 and requires a bleaching sequence selected from a group of sequences consisting of, inter alia, DoEopD1EpD2, ODoEopD1EpD2, DoEopD1, and ODoEopD1, wherein Eop is defined as treating the pulp with oxygen and peroxide in the presence of a base, Ep is defined as treating the pulp with peroxide in the presence of a base, and O is oxygen. See App. Br. 17 (Claims App’x). Claim 25 depends Appeal 2013-003731 Application 13/163,088 12 from claim 14 and requires a bleaching sequence selected from a group of sequences consisting of, inter alia, DoEopD1EpD2 and DoEopD1. Id. at 18. The Examiner found that Sepall discloses a bleaching sequence consisting of D-E-D-E-D but fails to disclose or suggest E stages having peroxide or oxygen in addition to caustic (i.e., base). Advisory Action 6–7. The Examiner, however, relied on EDF’s teaching of hardwood bleaching sequences ODEopD and DEopD and found that a skilled artisan would have substituted one known bleaching sequence for another known bleaching sequence with predictable results. Id. at 7. Appellants argue that EDF does not teach or suggest any of the features of independent claim 1 (from which claims 14 and 25 ultimately depend) that Appellants have argued are missing from Sepall and McDonough. App. Br. 14. Appellants’ argument is not persuasive of reversible error in the Examiner’s rejection for the same reasons expressed in connection with claim 1. Accordingly, we affirm the Examiner’s rejection of claims 14 and 25 under 35 U.S.C. § 103(a). DECISION/ORDER The Examiner’s rejections of claims 1, 3–7, 12–15, and 17–26 under 35 U.S.C. § 103(a) are affirmed. It is ordered that 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). AFFIRMED Appeal 2013-003731 Application 13/163,088 13 cdc Copy with citationCopy as parenthetical citation