Ex Parte Colin et al

Patent Trial and Appeal Board

Oct 31, 2012

12158160 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/158,160 06/19/2008 Philippe Colin 20190 (456 PCT) 6978
31743 7590 10/31/2012
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
10/31/2012 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 PHILIPPE COLIN, PHILIPPE BERINGUET,
XAVIER GILLOT and JEAN-YVES TINEL
______________

Appeal 2011-003548
Application 12/158,160
Technology Center 1700
_______________

Before CHARLES F. WARREN, HUBERT C. LORIN, and
MARK NAGUMO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims
12-34 under 35 U.S.C. § 103(a): claims 12-20, 23-26, 28 and 32-34 over Trä
(US 4,017,033) and Gallagher (US 6,006,554), and claims 21, 22, 27 and
29-31 over Trä, Gallagher and Konecsny (GB 2 161 091 A). App. Br. 4;
Ans. 3, 9. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2010).
We reverse the decision of the Primary Examiner.
Claim 12 illustrates Appellants’ invention of a method (claim 12) and
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Application 12/158,160
2
apparatus (claim 23) for preparing paper pulp from recycled papers
containing contaminants, with reference to Specification Figure 1 (Spec.
8-10), and is representative of the claims on appeal:
12. A method for preparing paper pulp from recycled papers
containing contaminants (1a), comprising the following successive stages:
a) a first stage (2) of mashing the paper (2a) in the presence of water
in order to obtain a mixture of fibers and contaminants in suspension;
b) a second stage (2) of coarse screening of said mixture (2b), in
order to separate said mixture into a pulper rejects stream (4, 14, 15)
comprising coarse contaminants and a pulper accepts stream (5, 6, 8), the
first and second stages being carried out by means of a pulper (2) with a
helical agitator (2a), in which at least one grid pierced with holes (2b) is
positioned under the helical agitator (2a);
c) a third stage (9) of fine screening (9a) for separating the pulper
accepts stream (5, 6, 8) into a secondary rejects stream (10, 14, 15)
comprising fine contaminants from the pulper accepts stream (5, 6, 8)
obtained in stage b) and a secondary accepts stream (11);
d) a fourth stage (16) of washing said pulper rejects stream (4, 14, 15)
comprising said coarse contaminants and said secondary rejects stream (10,
14, 15) comprising said fine contaminants in order to separate recoverable
fibrous materials therefrom, said fourth stage being carried out by means of
a washing drum (16) having at least two successive zones, each zone
provided with holes over at least part of its respective surface;
wherein the fiber content of water (7) from the first zone is greater than that
coming from the second (3) and washing water (7) from the first zone of
said drum washer (16) is sent to an intermediate mixing chest (6) in which
the accepts (5) from said pulper (2) is collected before being finely screened
(8, 9a), and wherein the washing water (3) from the second zone is sent to
the pulper (2).
Opinion
The dispositive issue in this appeal raised by Appellants’ position is
whether the Examiner erred in determining that the combined teachings of
Trä and Gallagher, the basic combination in both grounds of rejection,
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Application 12/158,160
3
would have led one of ordinary skill in the art to modify Trä’s method of
preparing paper pulp from recycled paper containing contaminants, with
reference to Trä’s Figure, by (1) recycling the gross, heavy contaminants
from outlet 6 (through which this material is discarded) via an added conduit
to sieve 25 which receives light contaminants via conduit 16 from fiberizer
13, (2) replacing sieve 25 with Gallagher’s washing drum to wash the
combined gross, heavy contaminants from outlet 6 and the light
contaminants from fiberizer 13, (3) rerouting conduit 26 (which recycles the
suspended fibrous material separated from light contaminants in Gallagher’s
drum washer, which replaces sieve 25) to holding tank 11 (which holds
coarse contaminants received from slusher 1 via conduit 10) instead of
directly to slusher 1, and (4) recycling the light contaminants retained on the
grid of Gallagher’s drum washer, which replaces sieve 25, through an added
conduit to slusher 1, thus arriving at a method encompassed by
representative claim 12. Ans. 3-7, 10-11, 11-12, 12-13; App. Br. 4-8; Reply
Br. 2-5. See Trä col.3 l.36 to col.6 l.24; Gallagher abstract, col.5 l.17 to
col.6 l.6.
We find that Gallagher teaches washing paper fiber in black liquor in
a drum divided into sectors, with the first sector wash water drained off and
the cleaner second sector wash water recirculated as wash water in the first
sector. Gallagher abstract, col.5 ll.17-29.
The Examiner submits that one of ordinary skill in the art would have
been motivated by the teachings of Trä and Gallagher to make the proposed
modifications. Ans. 4-7. The Examiner finds that Trä would have taught “a
waste cleaning step that recirculates the contaminated pulp material back to
one of a number of different locations” including from sieve 25 through
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Application 12/158,160
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conduit 26 to slusher 1 and cyclone tank 19 through conduit 21 to slusher 1.
Ans. 4-5. The Examiner finds “heavy contaminates are . . . centrifuged
away” from cyclone tank 19 (discards heavy contaminates through bottom
outlet 20). Ans. 5. See Trä col.4 ll.41-68. Thus, the Examiner concludes
that “Trä does not explicitly teach that the final stage includes a multi-zoned
washing apparatus, but provides an alternative process that accomplishes
the same end result,” and that Trä’s teachings to recirculate contaminates
provides the motivation to circulate heavy contaminates from outlet 6 to
sieve 25 to improve efficiency and reduce waste. Ans. 5-6. The Examiner
further concludes that “[o]ne of ordinary skill in the art . . . would have
thought to utilize at least some of the removed fluid from the wash drum in
each section and recycle the fluid back to an earlier point in the process like
a holding tank or filtration unit” and “would have thought of replace [sic] the
vibrating sieve of Trä with the drum washer of Gallagher for the benefit of
wasting” little material. Ans. 6-7.
On this record, we agree with Appellants that the combined teachings
of Trä and Gallagher would not have led one of ordinary skill in the art to
change Trä’s system which is based on separating heavy gross contaminates
from waste paper in slusher 1 and discarding the heavy gross contaminates
through outlet 6, leaving coarse contaminated paper; and separating the
coarse contaminated paper from contaminates in fiberizer 13 by separating
the same into light contaminates, which are separated from suspended fibers
on sieve 25, and heavy contaminates, which are separated from suspended
fibers in cyclone tank 19, the suspended fibers recycled to slusher 1 through
conduits 26 and 21, respectively; and discarding the fine contaminates
retained on sieve 25 and the heavy contaminates collected by cyclone 19
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Application 12/158,160
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through outlet 20. Indeed, Trä’s mode of operation requires discarding the
heavy, gross contaminates retained on sieve 9, the light contaminates
retained on sieve 25, and the heavy contaminates collected in cyclone tank
19, and recycling only the suspended fibers passing through sieve 25 and
cyclone tank 19.
We are of the opinion that, as Appellants point out, the Examiner’s
contention that Trä teaches recycling materials to different parts of the
system does not constitute a scientific explanation establishing that one of
ordinary skill in the art would have recycled the gross, heavy contaminates
from outlet 6 to sieve 25 which is taught to process a stream containing light
contaminates. Reply Br. 2-5. Indeed, the Examiner has further not
established that based on the teachings of Trä, one of ordinary skill in the art
would have recognized that Gallagher’s washing drum, which discards first
section wash water and recycles second section wash water to the first
section, can be substituted for Trä’s sieve 25, which includes a recycle
conduit 26, in accordance with Trä’s teachings with respect to the sieve and
conduit. Thus, the Examiner has not established that the combined teachings
of Trä and Gallagher would have necessarily led one of ordinary skill in the
art to the method encompassed by claim 12 as proposed by the Examiner.
See, e.g., KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can
be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir.
1998) (“hindsight” is inferred when the specific understanding or principal
within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellant’s claimed
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invention has not been explained); In re Fritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992) (“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless
the prior art suggested the desirability of the modification.” (citation
omitted)); cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02 (BPAI 1993)
(“At best, the examiner’s comments regarding obviousness amount to an
assertion that one of ordinary skill in the relevant art would have been able
to arrive at appellant’s invention because he had the necessary skills to carry
out the requisite process steps. This is an inappropriate standard for
obviousness. . . . That which is within the capabilities of one skilled in the
art is not synonymous with obviousness.” (citation omitted)). A discussion
of Konecsny is not necessary to our decision. See App. Br. 8-9.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 12-34 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED
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