Ex Parte Cronin et al

Patent Trial and Appeal Board

Jan 23, 2017

12192837 (P.T.A.B. Jan. 23, 2017)

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.
12/192,837 08/15/2008 James Timothy Cronin 3552
129406 7590
The Chemours Company
Patent Legal Group
1007 Market Street
7028-1
Wilmington, DE 19801
01/25/2017 EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
patentlegal @ chemours .com
g wen. a. wilson @ chemours .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES TIMOTHY CRONIN and LISA EDITH HELBERG
Appeal 2016-000898
Application 12/192,837
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 102 through 108, 110, 112, 116, and 117.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as E. I. DuPont de Nemours
& Co., Inc. (Appeal Brief filed April 29, 2015 (“App. Br.”), 4.)
2 Claims 109, 111, and 113—115 stand withdrawn from consideration. (Final
Office Action entered September 5, 2014 (“Final Act.”), 2.) Appellants
cancelled claims 118 and 119 in the Appeal Brief (App. Br. 7), and the
Examiner acknowledged their cancellation in the Answer. (Examiner’s
Answer entered October 1, 2015 (“Ans.”), 2.)
Appeal 2016-000898
Application 12/192,837
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to a process for
minimizing the number of bed regenerations during a titanium
manufacturing process. (Spec. 10,11. 23—28.)
Details of the appealed subject matter are recited in representative
claim 102, which is reproduced below from the Claims Appendix to the
Appeal Brief:
102. A process for extending useful carbon bed lifetime and
minimizing the number of bed regenerations during a titanium
manufacturing process, comprising:
(a) providing a titanium chloride-containing feedstock
comprising an impurity not detectable by a direct
analytical technique and at least one tracker species
detectable by the direct analytical technique selected
from the group consisting of phosgene, carbonyl sulfide,
sulfur dioxide, carbon disulfide, thionyl chloride, sulfur
chloride, SO2CI2, carbon dioxide, and hydrochloric acid
and combinations thereof;
(b) feeding the titanium chloride-containing feedstock to
an activated carbon bed;
(c) contacting the titanium chloride-containing feedstock
with the activated carbon by flowing the feedstock
through the activated carbon bed to remove at least a
portion of both the tracker species detectable by the
direct analytical technique and the impurity not
detectable by a direct analytical technique from the
feedstock to form a treated product; and
(d) continuing the flow of the titanium chloride-
containing feedstock at least until the tracker species is
detected by the direct analytical technique in the treated
product as an indicator of the elution of the impurity not
detectable by a direct analytical technique from the
activated carbon bed.
2
Appeal 2016-000898
Application 12/192,837
(App. Br., Appendix 1.)
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:3
Claims 102-108, 110, 112, 116, and 117 under 35 U.S.C. § 112, first
paragraph for failing to comply with the written description requirement;
and
Claims 102-108, 110, 112, 116, and 117 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Efremov et al., Adsorption Purification
of Titanium Tetrachloride, 45 Khim. Prom. 758 (1969) (hereinafter referred
to as “Efremov”)4, U.S. patent 4,025,426, issued in the name of Anderson et
al. on May 24, 1977 (hereinafter referred to as “Anderson”), Starshenko et
al., State of the Analytical Control of Cleaning the Titanium Tetrachloride
(hereinafter referred to as “Starshenko”),5 optionally further in view of U.S.
3 Although Appellants list the Examiner’s withdrawal from consideration of
claims 109, 111, and 113—115 in the “Grounds of Rejection to be Reviewed
on Appeal” in their Appel Brief (App. Br. 12), and request rejoinder of these
claims (App. Br. 17, 30), the propriety of the Examiner’s withdrawal of
these claims from consideration is reviewable by a petition under 37 C.F.R.
§ 1.181, and therefore is not within the jurisdiction of the Board. In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (“There are a host of various
kinds of decisions an examiner makes in the examination proceeding-mostly
matters of a discretionary, procedural or nonsubstantive nature-which have
not been and are not now appealable to the board or to this court when they
are not directly connected with the merits of issues involving rejections of
claims, but traditionally have been settled by petition to the
Commissioner.”): see also Ex Parte Frye, 94 USPQ 2d 1072, 1078 (BPAI
2010) (precedential).
4 The Examiner’s reference to Efremov is to the corresponding English
translation of record.
5 The Examiner provides only the title of Starshenko, and no further
information for the reference is available on this record. In addition,
3
Appeal 2016-000898
Application 12/192,837
patent 3,596,438, issued in the name of Beukenkamp et al. on August 3,
1971 (hereinafter referred to as “Beukenkamp”), and U.S. Patent 4,783,324,
issued in the name of Walters et al. on November 8, 1988 (hereinafter
referred to as “Walters”).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejection of claims 102—
108, 110, 112, 116, and 117 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement, and Examiner’s
rejection of claims 102—108, 110, 112, 116, and 117 under 35 U.S.C. §
103(a) for obviousness for the reasons set forth in the Final Action and the
Answer. We add the discussion below primarily for emphasis and
completeness.
Rejection of Claims 102—108, 110, 112, 116, and 117 under $ 112, First
Paragraph for Failing to Comply with the Written Description Requirement
Claim 102 recites a process for extending useful carbon bed lifetime
and minimizing the number of bed regenerations during a titanium
manufacturing process.
The Examiner finds that the Specification does not provide written
description support for a process that extends useful carbon bed lifetime as
recited in claim 102. (Final Act. 2.) Specifically, the Examiner finds that
although the Specification indicates that the process of claim 102 minimizes
the number of carbon bed regenerations, the Specification does not indicate
Appellants do not contest the Examiner’s reliance on the English translation
of record as corresponding to this reference.
4
Appeal 2016-000898
Application 12/192,837
that the process extends the useful carbon bed lifetime, and does not indicate
that a correlation exists between the number of regenerations and the carbon
bed lifetime. (Id.)
Appellants do not dispute the Examiner’s finding that the
Specification does not indicate that the process of claim 102 extends the
useful lifetime of the carbon bed. (App. Br. 13—15.) Instead, Appellants
argue that the preamble phrase at issue—“extending useful carbon bed
lifetime”—is not a limitation of claim 102 because it does not recite
essential structure or steps; is not necessary to give life, meaning, and
vitality to the claim; was not added during prosecution to overcome prior art;
and merely states the intended use or purpose of the claimed process. (App.
Br. 15.)
However, regardless of whether the phrase at issue is in the preamble
of claim 102, it is still recited in the claim, and Appellants do not direct us to
any disclosure in the Specification demonstrating that the inventors were in
possession of a process that extends useful carbon bed lifetime at the time of
filing. (App. Br. 13—15.) Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—
1564 (Fed. Cir. 1991) (To fulfill with written description requirement “the
applicant must. . . convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the ‘written description’
inquiry, whatever is now claimed.”) Appellants’ arguments thus fail to
identify any error in the Examiner’s finding that the Specification, as
originally filed, does not disclose extending useful carbon bed lifetime in the
process of claim 102. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(explaining that even if the examiner had failed to make a prima facie case,
5
Appeal 2016-000898
Application 12/192,837
it has long been the Board’s practice to require an appellant to identify the
alleged error in the examiner’s rejection).
Claim 102 further recites that the process comprises “providing a
titanium chloride-containing feedstock comprising an impurity not
detectable by a direct analytical technique.” The impurity recited in claim
102 includes any impurity that is not detectable by a direct analytical
technique.
The Examiner finds that the Specification does not provide written
description support for “an impurity not detectable by a direct analytical
technique” because the Specification only indicates that arsenic cannot be
directly and rapidly measured, and does not describe any other impurities
cannot be directly and rapidly measured. (Final Act. 3.)
Appellants argue that support for “an impurity not detectable by a
direct analytical technique” is found at page 2, lines 3—5 of their
Specification, which states that “[tjhere are no known methods for directly
measuring, in real-time, low ppm concentrations of the (elemental) arsenic
in a neat commercially available titanium tetrachloride solution.” (App. Br.
15.) Appellants also point to page 2, lines 30—32 of their Specification,
which also indicate that arsenic cannot be directly and rapidly measured.
(Id.)
However, the portions of the Specification cited by Appellants do not
identify any impurities other than arsenic that are not detectable by a direct
analytical technique. (Spec. 2,11. 3—5, 30-32.) Accordingly, the relied-upon
disclosures are insufficient to demonstrate that the inventors were in
possession of any impurity other than arsenic that was not detectable by a
6
Appeal 2016-000898
Application 12/192,837
direct analytical technique at the time of filing. Vas-Cath, 935 F.2d at 1563—
1564.
Appellants further argue that it was known to those skilled in the art at
the time of the invention that the chemical behavior of arsenic and antimony
are similar, and the disclosure in Walters’ examples of measuring only the
total of arsenic plus antimony provides an example of the similarity of the
chemistry of these two elements. (App. Br. 18.) However, the relied-upon
disclosures in Walters do not demonstrate that antimony is not detectable by
a direct analytical technique. Specifically, Walters’ examples indicate that
samples of commercially available anhydrous titanium tetrachloride were
assayed and found to contain 6.6 ppm, 18 ppm, 11 ppm, and 23.3 ppm of
“antimony and arsenic combined.” (Walters col. 1,11. 62—col. 2,11. 47.) We
find no disclosure in Walters indicating whether the amounts of arsenic and
antimony were determined individually and then combined, or were
determined together due to their similar chemical behavior, as Appellants
assert. Moreover, Walters’ examples indicate that at the very least, the
combined amount of arsenic and antimony can be determined in anhydrous
titanium tetrachloride. The relied-upon disclosures in Walters therefore fail
to demonstrate that antimony cannot be detected by a direct analytical
technique. Nor do the relied-upon disclosures in Walters demonstrate that
the inventors, at the time of the invention, had possession of antimony or any
impurities, other than arsenic, included in the claim as an impurity that
cannot be detected by a direct analytical technique.
Appellants also argue that VOCf can be measured directly by FTIR at
a high concentration in TiCU, but only in a matrix that does not contain
COS. (App. Br. 18.) Appellants contend that in the presence of COS,
7
Appeal 2016-000898
Application 12/192,837
VOCI3 would therefore be a species that is not measurable by rapid, direct
techniques, and would need to be measured off-line. (App. Br. 18—19.) In
support of this argument, Appellants point to Starshenko’s disclosure that
“the sensitivities for the two major peaks for VOC3 in TiCl 4 are given as
0.02% at 1035 cm'1 and 0.004% at 2061 cm'1. The sensitivity for the major
COS peak is given as 0.000015% at 2043 cm'1.” (App. Br. 18.) Appellants
argue that “[f]rom this example, it is obvious to one skilled in the art that the
COS peak at 2043 cm'1 is much larger than the VOCI3 peak at 2061 cm'1.”6
(App. Br. 18—19.) However, claim 102 does not recite particular conditions
under which impurities cannot be detected by a direct analytical technique,
such as in the presence of COS. Accordingly, regardless of whether
Starshenko’s disclosures demonstrate that VOCI3 cannot be measured in the
presence of COS, the relied-upon disclosures in Starshenko do not
demonstrate that VOCI3 is not detectable by a direct analytical technique
under any conditions, without optional COS, as recited in claim 102.
We accordingly sustain the Examiner’s rejection of claims 102—108,
110, 112, 116, and 117 under § 112, first paragraph, for failing to comply
with the written description requirement.
6 It is well established that a “description which renders obvious the invention
for which an earlier filing date is sought is not sufficient” to meet the written
description requirement under § 112, first paragraph. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
8
Appeal 2016-000898
Application 12/192,837
Rejection of Claims 102—108, 110, 112, 116, and 117 under § 103(a)2
Appellants do not dispute the Examiner’s finding that Efremov
discloses a process for removing impurities, from titanium tetrachloride by
contacting the titanium tetrachloride with activated carbon. (Compare Final
Act. 3, with App. Br. 19—29.) Nor do Appellants dispute the Examiner’s
finding that Efremov discloses that impurities present in titanium
tetrachloride include arsenic, chlorides of metals, chlorides, and
oxychlorides of metalloids, and organic chlorine compounds, such as AsCf
(arsenic chloride), CS2 (carbon disulfide), and S2CI2 (sulfur chloride).
{Compare Final Act. 4, with App. Br. 19-29.) Figure 4 of Efremov
illustrates the removal of particular amounts of AsCfr (arsenic chloride), CS2
(carbon disulfide), and S2CI2 (sulfur chloride) contained in TiCfr with
activated carbon. See also Efremov, pp. 3 and 6. The Examiner
acknowledges that Efremov does not disclose the presence of optional COS,
Sb, V, and CO2 impurities in titanium tetrachloride, and the Examiner relies
on Starshenko’s disclosure that titanium tetrachloride usually contains
impurities such as COS, CO2, and VOCI3, whose presence can be detected
with infrared spectroscopy, which Appellants do not dispute. {Compare
Final Act. 4, with App. Br. 19-29.)
7 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the separately argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants argue claims 102—108, 110, 112, 116, and 117
as a group. {See generally App. Br. 19-29.) Therefore, for the purposes of
this appeal, we select claim 102 as representative, and decide the propriety
of the rejection of claims 102—108, 110, 112, 116, and 117 based on claim
102 alone.
9
Appeal 2016-000898
Application 12/192,837
The Examiner also acknowledges that Efremov does not disclose
monitoring the level of impurities in the purified titanium tetrachloride after
contact with the activated carbon to determine when to regenerate the
activated carbon. (Final Act. 4.) To address this feature missing from
Efremov’s disclosures, the Examiner relies on Anderson’s disclosure of a
process for removing impurities from a liquid with activated carbon that
involves controlling the timing of reactivation (regeneration) of the activated
carbon by monitoring the level of impurities in both the liquid fed to the
activated carbon, and the liquid output from the activated carbon, to
determine the total amount of impurities removed, and reactivating the
carbon when the value in the output exceeds a predetermined value, which
Appellants do not dispute. (Compare Final Act. 5, with App. Br. 19-29.)
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art to regenerate the
activated carbon used in the process of purifying titanium tetrachloride
disclosed in Efremov when the output of an impurity, “such as COS
[disclosed in Starshenko or carbon disulfide or sulfur chloride disclosed in
Efremov],” exceeds a predetermined value as suggested by Anderson, to
prevent premature regeneration of the activated carbon. (Final Act. 5.) The
Examiner finds that the activated carbon would remove other impurities
present in titanium tetrachloride, such as those suggested by Efremov and/or
Starshenko. (Final Act. 4—5; Ans. 11.)
Appellants argue that the applied prior art does not disclose the use of
a tracker species, such as COS, carbon disulfide, and/or sulfur chloride, in
the manufacture of titanium products. (App. Br. 28—29.) Appellants further
argue that one of ordinary skill in the art would not have known at the time
10
Appeal 2016-000898
Application 12/192,837
of the invention that it was possible to identify tracker species that are able
to predict the release of an impurity such as arsenic during a titanium
product manufacturing process, so as to accurately choose when to
regenerate a carbon bed. (App. Br. 23—24.)
However, we agree with the Examiner that Anderson’s disclosure of
regenerating activated carbon when an impurity output from the activated
carbon exceeds a predetermined value would have led one of ordinary skill
in the art to incorporate such a procedure for monitoring the output of an
impurity, such as COS disclosed in Starshenko or carbon disulfide and/or
sulfur chloride disclosed in Efremov (corresponding to the recited tracker
species), during the process of purifying titanium tetrachloride with the
activated carbon disclosed in Efremov to prevent premature regeneration of
Efremov’s activated carbon (i.e., maximize the use of Efremov’s activated
carbon before it is regenerated). (Anderson col. 6,1. 21—col. 7,1. 2; cl. 5—6;
Starshenko 1,14; 2, Table 1; Efremov 1.) Furthermore, Anderson, by
teaching the use of the level of an impurity, e.g., COS, sulfur chloride,
and/or carbon disulfide, in the effluent of Efremov’s activated carbon as an
indicator that the activated carbon is spent (used up) and requires
regeneration implies that the spent carbon cannot adsorb not only a sufficient
amount of the monitored impurity, but also other impurities, such as arsenic
disclosed in Efremov and/or VOCf disclosed in Starshenko, which are
normally adsorbed by unspent activated carbon. Appellants’ arguments are
therefore unpersuasive of reversible error.
Appellants also argue that unlike their invention “Anderson is
teaching to start the regeneration cycle based directly from a measurement of
the impurity of interest.” (App. Br. 25.) Appellants contend that Anderson
11
Appeal 2016-000898
Application 12/192,837
does not teach one skilled in the art to monitor a measurable impurity such
as a tracker, as a way of determining a moment prior to breakthrough of at
least one non-measurable impurity. (App. Br. 27.)
However, as discussed above, the collective teachings of Efremov,
Starshenko, and Anderson indicate or suggest that when the level of the
monitored impurity that corresponds to the recited tracker species exceeds a
predetermined value, the carbon is incapable of adsorbing not only the
monitored impurity, but also other impurities that would also be present in
the titanium tetrachloride feed because the activated carbon is simply spent
and requires regeneration before it can adsorb sufficient amounts of
impurities, including those identified by Appellants as tracker species.
Appellants’ arguments are therefore unpersuasive of reversible error.
In response to the Examiner’s finding that Starshenko discloses that
analysis of the molecular forms of titanium tetrachloride impurities
(admixtures) has important significance for developing means to remove the
impurities from titanium tetrachloride (Final Act. 4), Appellants argue that
these statements in Starshenko do not suggest ways to solve this problem.
(App. Br. 24—25.) However, these arguments are unpersuasive of reversible
error because they are improperly based only Starshenko alone, and do not
take into account what the combined disclosures of Efremov, Starshenko,
and Anderson would have suggested to one of ordinary skill in the art at the
time of the invention. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
12
Appeal 2016-000898
Application 12/192,837
would have suggested to those of ordinary skill in the art.”) As discussed
above, the combined disclosures of the applied prior art would have led one
of ordinary skill in the art to regenerate the activated carbon used in the
process of purifying titanium tetrachloride disclosed in Efremov when the
output of an impurity, such as COS disclosed in Starshenko or carbon
disulfide, and/or sulfur chloride disclosed in Efremov, exceeds a
predetermined value as suggested by Anderson, to show that the activated
carbon bed is essentially spent and is no longer useful for removing
sufficient amounts of any impurities, including arsenic in Efremov, in the
absence of regeneration of such spent carbon bed.
Appellants further argue that Efremov’s disclosure of adding
synthesized radioactive contaminants to a sample before purification and
monitoring the radioactive contaminates after purification teaches away
from the process of claim 102 in which one or more tracker species found
naturally in a titanium chloride containing feedstock is measured by a direct
analytical technique. (App. Br. 27-28.) However, Efremov’s disclosure of
monitoring added radioactive contaminates during purification of titanium
tetrachloride would not have discouraged one of ordinary skill in the art
from following Anderson’s suggestion of regenerating the activated carbon
used in Efremov’s process when the output of an impurity exceeds a
predetermined value, because Efremov’s disclosures do not criticize or
disparage such a process. In re Fulton, 391 F.3d at 1201; In re Gurley, 27
F.3d at 552-53.
Appellants also argue that Anderson teaches away from a process of
monitoring a measurable impurity as a way of determining a moment prior
to breakthrough of at least one non-measurable impurity because Anderson
13
Appeal 2016-000898
Application 12/192,837
teaches a standard control system in which the amount of a particular
impurity in an effluent is measured, and when a predetermined amount of
the impurity is reached, a regeneration cycle is started. (App. Br. 26—27.)
However, as discussed above, Anderson’s disclosure of regenerating
activated carbon when an impurity (e.g., the recited tracker species) output
from the activated carbon exceeds a predetermined value implies that at that
point the carbon would also be incapable of absorbing other impurities
present in the feed, such as arsenic disclosed in Efremov. Anderson, by
teaching that the activated carbon bed is spent upon exceeding a
predetermined impurity (the recited tracker species) level in the effluent also
indicates that the carbon bed is no longer capable of adsorbing not only the
impurity of interest (the recited tracker species), but also other impurities,
such as arsenic, normally adsorbed by the activated carbon if it is not spent.
This is particularly true because Efremov teaches that “[ajrsenic and sulfur
impurities are best adsorbed by BAU activated carbon” and illustrates
similar adsorption curves for S2CI2 (sulfur chloride), CS2 (carbon disulfide),
and AsCE (arsenic chloride) in TiCE when exposed to BAU carbon
adsorbent in Figure 4. See Effemove, pp. 3 and 6. Therefore, Anderson
does not teach away from the process of claim 102 inasmuch as it does not
criticize or disparage a process employing an impurity that corresponds to
the recited tracker species as an indicator of the elution of other impurities,
including an impurity that is not detectable by a direct analytical technique,
for the spent carbon bed can no longer adsorb sufficient amounts of
impurities and requires regeneration..
Appellants also argue that the Declaration of an inventor, James
Cronin, submitted to the Patent Office on November 13, 2013 (“the Cronin
14
Appeal 2016-000898
Application 12/192,837
Declaration”), demonstrates the unexpected nature and commercial success
of the process of claim 102. (App. Br. 24.)
However, Appellants do not meet their burden of demonstrating that
the claimed invention imparts unexpected results that are reasonably
commensurate with the scope of protection sought by the claims on appeal.
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”); In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims.”); In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” (quotingIn re Tiffin, 448 F.2d 791, 792 (CCPA 1971))).
The Cronin Declaration states that a practical means of monitoring the
concentration of AsCf in real time in a commercial chemical plant
environment does not exist. (Cronin Dec. 13.) The Declaration further
states that Dr. Cronin and the co-inventor surprisingly discovered that they
could predict when AsCf? would pass through a carbon bed (break through)
used in the production of ultra-pure titanium tetrachloride based on the order
of elution of common chloride process byproducts after evaluating numerous
batches of plant TiCf samples and various kinds of activated carbon. (Id.)
However, Appellants and the Declarant do not identify the specific
conditions, specific TiCE samples, specific impurities, specific tracker
species and specific kinds of activated carbon used in the above
15
Appeal 2016-000898
Application 12/192,837
experimental evaluation. (App. Br. 24; Cronin Dec. 13.) Nor do Appellants
and the Declarant explain why the limited showing of a single compound
whose concentration cannot be determined in real time in a commercial
chemical plant environment—AsCf—is reasonably commensurate in scope
with any and all impurities not detectable by a direct analytical technique
encompassed by claim 102 or the limited showing of unknown tracker
species is reasonably commensurate in scope with all the tracker species
encompassed by claim 102. (App. Br. 24; Cronin Dec. 13.) Moreover, as
correctly found by the Examiner, Efremov teaches that both arsenic, AsCf,
and sulfur impurities (e.g., carbon disulfide (CS2) and sulfur chloride
(S2CI2)—which Appellants designate as tracker species) are best adsorbed
by activated carbon, with its Figure 4 illustrating similar adsorption curves
for AsCf and sulfur impurities, thus implying that the activated carbon
adsorbs arsenic impurity and sulfur impurities (tracker species) at similar
rates. Final Act. 4; Efremov pp. 3 and 6 and Fig. 4. Thus, there is nothing
surprising or unexpected about the inventors’ prediction that when the
activated carbon is spent and is no longer capable of adsorbing sulfur
impurities, it also is incapable of adsorbing arsenic impurity. Therefore, on
this record, Appellants fail to carry their burden of demonstrating
unexpected results sufficient to overcome the Examiner’s prima facie case of
obviousness.
In addition, Appellants do not provide any evidence whatsoever
demonstrating that the process of claim 102 was commercially successful.
(See generally App. Br. and Cronin Dec.) The Cronin Declaration does not
discuss what percentage of the industry employed or bought the process
encompassed by claim 102 or whether such employment or sale is a direct
16
Appeal 2016-000898
Application 12/192,837
result of the unique characteristics of the process encompassed by claim 101.
Id.; In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (Appellants must offer
proof that the asserted commercial success occurred in the relevant market
and “that the sales were a direct result of the unique characteristics of the
claimed invention—as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.”).
Appellants also argue that the Cronin Declaration demonstrates “long
felt need” because “Dr. Cronin clearly indicates the field of titanium
manufacturing was aware of problems associated with timely replacement of
carbon beds and that these problems existed for a long time without
solutions.” (App. Br. 24.)
However, we do not find the proffered opinion of long-felt need to be
supported by the evidence of record. As discussed supra, Anderson teaches
that the timely replacement and regeneration of the spent carbon bed was
known through monitoring impurities, including those Appellants defined as
a tracker species, at the time of the invention. Therefore, we find the
opinion insufficient to meet the evidentiary burden required to establish a
long-felt need that was allegedly solved by Appellants’ invention. (See
generally App. Br. and Cronin Dec.; In re Gershon, 372 F.2d 535, 538—39
(CCPA 1967) (Establishing long-felt need requires objective evidence
showing existence of a persistent problem recognized by those of ordinary
skill in the art for which a solution was not known.)). Specifically, the
Cronin Declaration lacks adequate factual corroboration of the opinion that
minimizing the number of carbon bed regenerations was a long-unsolved
problem in the art. (Cronin Dec. 13.) It follows that we decline to give the
Cronin Declaration full evidentiary weight. In re Am. Acad, of Sci. Tech
17
Appeal 2016-000898
Application 12/192,837
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.”); Velander
v. Gamer, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279,
1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one
item of evidence over another “unless no reasonable trier of fact could have
done so”).
Accordingly, on this record, the evidence of obviousness discussed
above outweighs the proffered evidence of non-obviousness.
We accordingly sustain the Examiner’s rejection of claims 102—108,
110, 112, 116, and 117 under 35 U.S.C. § 103(a).
ORDER
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s decision rejecting claims 102—108, 110,
112, 116, and 117 under § 112, first paragraph for failing to comply with the
written description requirement, and the Examiner’s decision rejecting
claims 102—108, 110, 112, 116, and 117 under § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
18