Omya International AG

Patent Trials and Appeals Board

Jul 27, 2021

2020004866 (P.T.A.B. Jul. 27, 2021)

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.
14/366,060 06/17/2014 Matthias Buri OMYA 200008US01 1094
163570 7590 07/27/2021
FAY SHARPE LLP/Omya International AG
The Halle Building, 5th Floor
1228 Euclid Avenue
Cleveland, OH 4415
EXAMINER
ZALASKY MCDONALD, KATHERINE MARIE
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/27/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipgroup@omya.com
smccollister@faysharpe.com
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHIAS BURI,
SAMUEL RENTSCH, PATRICK A.C. GANE,
RENÉ VINZENZ BLUM, and MARTINE POFFET
____________

Appeal 2020-004866
Application 14/366,060
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MERRELL C. CASHION JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 30–33, 36, 38–40, 44–56, 59–
62, 64, 65, 67, and 70–85. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as OMYA
INTERNATIONAL AG. Appeal Br. 1.
Appeal 2020-004866
Application 14/366,060

2
The invention relates generally to a process of producing aqueous
solutions of earth alkali hydrogen carbonate, and the use of such solutions.
Spec. 1, 5–6. Claim 30 illustrates the invention and is reproduced below
from the Claims Appendix of the Appeal Brief:
30. A process for the preparation of an aqueous solution
comprising at least one earth alkali hydrogen carbonate, the process
comprising the steps of:

a) providing water,

b) providing at least one substance comprising at least one earth
alkali carbonate, the at least one substance being in a dry form or in an
aqueous form, wherein the at least one substance is selected from the
group consisting of marble, limestone, chalk, dolomite, and
precipitated calcium carbonate, and wherein the at least one substance
has a specific surface area (SSA) in the range of 1.0 to 200 m2/g, and a
weight median particle size (d50) in the range of 0.1 μm to 50 μm,

c) providing CO2,

d) combining the at least one substance of step b) with the CO2
of step c) in the water of step a) at a temperature in a range of 5 to
55°C in order to obtain a resulting suspension S having a pH of
between 6 and 9, a solids content of from 1 to 35 wt.-% based on the
total weight of the resulting suspension S, and containing particles
that represent a total particle surface area (SSAtotal) that is greater than
20,000 m2/tonne of the resulting suspension S, and

e) filtering at least a part of the resulting suspension S that is
obtained in step d) by passing the resulting suspension S through a
filtering device in order to obtain an aqueous solution comprising at
least one earth alkali hydrogen carbonate.

Appeal Br. 15 (Claims App.).

Independent claim 85 recites a method that is substantially identical to
Appeal 2020-004866
Application 14/366,060

3
the method recited in claim 30. Appeal Br. 22–23.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated September 18, 2019:
I. claim 84 rejected under 35 U.S.C. § 112, 1st paragraph as
failing to comply with the written description requirement;

II. claims 83 and 84 rejected under 35 U.S.C. § 112, 2nd paragraph
as being indefinite;

III. claims 30–33, 36, 38–40, 44–56, 59–62, 64, 65, 67, 70, and 74–
85 rejected under 35 U.S.C. § 103(a) as unpatentable over Geerlings (US
2007/0202032 A1, published Aug. 30, 2007), USGS (2009 Minerals
Yearbook, published 2009), Gane (WO 2010/063757 A1, published Jun. 10,
2010), and Schoenlaub (US 2,455,813, issued Dec. 7, 1948); and

IV. claims 71–73 rejected under 35 U.S.C. § 103(a) as unpatentable
over Geerlings, USGS, Gane, Schoenlaub, and Green (Perry’s Chemical
Engineers’ Handbook, published 2008).

OPINION
Rejections under 35 U.S.C. 112 first paragraph (Written Description) and
§ 112, second paragraph (Indefiniteness)(Rejections I and II)

The Examiner maintains the rejection of claim 84 under 35 U.S.C.
§ 112, first paragraph, as lacking written description support for the claimed
subject matter and of claims 83 and 84 under 35 U.S.C. § 112, second
paragraph, as indefinite. Ans. 3–4
Appellant does not dispute these rejections. See generally Appeal and
Reply Briefs. We also find no indication in the prosecution record that these
rejections were withdrawn by the Examiner. Therefore, we summarily
affirm the Examiner’s rejection of claim 84 under 35 U.S.C. § 112, first
paragraph (Rejections I) and of claims 83 and 84 under 35 U.S.C. § 112,
Appeal 2020-004866
Application 14/366,060

4
second paragraph (Rejection II). See MPEP § 1205.02 (2017) (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it.”); see also Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (“If an appellant fails to present arguments on a
particular issue—or more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.”).

Rejections under 35 U.S.C. 103(a) (Rejection III and IV)
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we reverse the Examiner’s prior art rejection of claims 1, 3, 6,
8, 9, 12–16, 19, 20, 22, and 25–37 under 35 U.S.C. § 103(a) for essentially
the reasons Appellant presents. We add the following for emphasis.
Claim 302 recites a process of producing aqueous solutions of earth
alkali hydrogen carbonate comprising the step of preparing an aqueous
solution having at least one earth alkali hydrogen carbonate by providing
water and at least one substance comprising at least one earth alkali
carbonate, wherein the at least one substance is selected from the group
consisting of marble, limestone, chalk, dolomite, and precipitated calcium
carbonate.

2 Appellant presents arguments only for the subject matter of independent
claims 30 and 85. See generally Appeal Br. As we note above, the subject
matters of claims 30 and 85 are substantially identical. Therefore, we limit
our discussion to claim 30 with the understanding that this discussion
applies equally to claim 85 as well as to all the dependent claims.
Appeal 2020-004866
Application 14/366,060

5
The premise of the Examiner’s rejection is to modify Geerlings’s
method of making aqueous solution from mixed metal oxide feedstock by
substituting the mixed metal oxide feedstock with an earth alkali carbonate
feedstock. See generally Final Act. Specifically, the Examiner finds
Geerlings discloses a process for the production of a precipitated earth alkali
carbonate using feedstocks from natural mineral sources or industrial
byproducts, such as steel slag, that may include at least calcium oxide (burnt
lime), or a mixture of calcium and magnesium mixed metal oxides. Final
Act. 4; Geerlings ¶¶ 7, 25–30. The Examiner determines that it would have
been obvious to one of ordinary skill in the art to use a broad subset of
starting materials, including the claimed earth alkali carbonate materials, in
Geerlings’s method based on Geerlings’s disclosure on paragraph 29. Final
Act. 4. The Examiner also cites to Gane and Schoenlaub as teaching the use
of synthetic calcium carbonates (PCC) and natural calcium carbonates as
feedstocks. Final Act. 5; Gane ¶¶ 23–25; Schoenlaub col. 1, ll. 5–10, 41–
51.3
Appellant argues Geerlings requires a mixed metal oxide feedstock to
form the aqueous solution from which the desired carbonate material is
precipitated while the claimed invention uses earth alkali carbonates as
feedstocks for the aqueous solution. Appeal Br. 9, 12; Geerlings ¶ 15–20.
According to Appellant, Geerlings’s feedstocks are always mixed metal
oxides because the use of this feedstock provides the technical benefit of

3 A discussion of USGS is unnecessary for disposition of this appeal. The
Examiner relies on USGS primarily to establish that it is known to use the
starting materials in the form of marble, limestone, chalk, dolomite, and
precipitated calcium carbonate. Final Act. 5–6.
Appeal 2020-004866
Application 14/366,060

6
CO2 sequestration. Appeal Br. 10, 11; Geerlings ¶ 21. Appellant contends
that replacing Geerlings’s mixed metal oxide feedstock with the claimed
earth alkali carbonate feedstocks would render Geerlings unsuitable for the
intended purpose of CO2 sequestration. Appeal Br. 11.
Appellant has identified reversible error in the Examiner’s
determination of obviousness. The Examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
As Appellant explains, Geerlings requires a mixed metal oxide in the
feedstock because Geerlings’s process does not only make a carbonate
product, but also sequestrates CO2. Appeal Br. 10, 12. Geerlings discloses
“[t]he present invention relates to a process for producing CaCO3 or MgCO3
from a feedstock containing a Ca- or Mg-comprising mixed metal oxide and
to a process for the production of an aqueous solution of Ca(HCO3)2 or
Mg(HCO3)2.” Geerlings ¶ 1. Geerlings also discloses that “[i]t has now
been found that if mineral feedstocks comprising mixed metal oxides are
used for CO2 sequestration, it is possible to obtain CaCO3 or MgCO3 of a
high purity, whilst sequestrating a relatively large amount of CO2.” Id. ¶ 15;
see also id. ¶ 21. Therefore, we agree with Appellant that Geerlings, when
read as a whole, is directed to the use of mixed metal oxides as feedstocks
for producing the desired carbonate products. Appeal Br. 8–9.
Appeal 2020-004866
Application 14/366,060

7
In response, the Examiner contends Geerlings’s disclosure in
paragraphs 27–29 shows a preference for mixed metal oxide feedstock but
does not discourage broader categories of “a mixture of a Ca-comprising
feedstock and a Mg-comprising feedstock” or “a feedstock comprising both
Ca and Mg.” Ans. 13. However, the feedstocks discussed in paragraphs 27
and 28 of Geerlings fall within Geerlings’s definition of mixed metal oxide,
which notably does not include or exemplify alkali earth carbonates.
Geerlings ¶ 26. The Examiner’s reliance on the disclosure in paragraph 29
as broadening the feedstocks useful for Geerlings’s process is also
unavailing because one skilled in the art, when reading Geerlings as a whole,
would have understood that Ca-comprising feedstock and Mg-comprising
feedstock in this paragraph is within the context of the use of mixed metal
oxide feedstocks. Further, given Geerlings’s definition for mixed metal
oxides, the Examiner does not explain why one skilled in the art would have
considered earth alkali carbonates to be mixed metal oxides. Nor does the
Examiner direct us to other objective evidence that shows earth alkali
carbonates to be mixed metal oxides. The Examiner’s reliance on Gane and
Schoenlaub as teaching carbonate feedstocks is also misplaced because the
Examiner does not explain why such feedstocks are suitable for Geerlings’s
process.
Further, given that Geerlings attributes the use of mixed metal oxides
with the sequestrating of large amounts of CO2 (Geerlings ¶¶ 15, 21), the
Examiner fails to provide a technical explanation why one skilled in the art
would have reasonably expected that the aqueous solutions made from alkali
earth carbonate feedstocks would be suitable for Geerlings’s process of
Appeal 2020-004866
Application 14/366,060

8
precipitating carbonate products as well as sequestrating a relatively large
amount of CO2 as disclosed by Geerlings.
Thus, the Examiner’s reasoning for combining the teachings of the
cited art is no more than speculation that falls short of the requisite
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418.
Accordingly, we reverse the prior art rejections of claims 30–33, 36,
38–40, 44–56, 59–62, 64, 65, 67, and 70–85 under 35 U.S.C. § 103(a) for
the reasons Appellant presents and those we provide above.

DECISION SUMMARY

In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
84 112, 1st
paragraph
Written
Description
84
83, 84 112, 2nd
paragraph
Indefiniteness 83, 84
30–33, 36,
38–40, 44–
56, 59–62,
64, 65, 67,
70, 74–85
103(a) Geerlings, USGS,
Gane, Schoenlaub
30–33, 36,
38–40, 44–
56, 59–62,
64, 65, 67,
70, 74–85
71–73 Geerlings, USGS,
Gane, Schoenlaub,
Green
71–73
Overall
Outcome
83, 84 30–33, 36,
38–40, 44–
56, 59–62,
64, 65, 67,
70–82, 85

Appeal 2020-004866
Application 14/366,060

9
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 IN PART