Ex Parte Detournay et al

Patent Trial and Appeal BoardMar 23, 2016

12811643 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/811,643 07/02/2010 73673 7590 03/25/2016 Solvay America, Inc, c/o Intellectual Assets Management 3737 Buffalo Speedway Ste. 800 Houston, TX 77098-3701 FIRST NAMED INVENTOR Jean-Paul Detournay 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 ATTORNEY DOCKET NO. CONFIRMATION NO. s 2007/64 9445 EXAMINER FRIDAY, STEVEN A ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 03/25/2016 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): sandra. andress@solvay.com iamnafta@solvay.com s taci.harris@sol vay. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte JEAN-PAUL DETOURNAY and FRANCIS M. COUSTRY Appeal2014-004099 Application 12/811,643 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants (see Appeal Brief, generally) request review of the following rejection from the Examiner's Final Action: i, 2 1 A complete statement of the Examiner's appealed rejections appears in the Final Action 2-8. 2 The Examiner withdrew the obviousness-type double patenting rejections over copending Application No. 12/305,444. Ans. 2. Appeal2014-004099 Application 12/811,643 l. Claims 1, 2, 9 and 10 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bourgeois (US 5,308,455, issued May 3, 1994) in view of Kube (US 3,953,073, issued Apr. 27, 1976) and Mani (US 4,636,289, issued Jan. 13, 1987). II. Claims 3-5 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bourgeois in view of Kube, Mani, and Chlanda (US 4,584,077, issued Apr. 22, 1986). III. Claims 6 and 7 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bourgeois in view of Kube, Mani, and Ganey '305 (US 4,238,305, issued Dec. 9, 1980). IV. Claim 8 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bourgeois in view of Kube, Mani, and Ganey '097 (US 4,044,097, issued Aug. 23, 1977). OPINION After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's prior art rejection of claims 1-10 for the reasons presented by the Examiner. We add the following for emphasis. Appellants' invention is directed to a process to produce sodium carbonate and/ or sodium bicarbonate from an ore mineral comprising 2 Appeal2014-004099 Application 12/811,643 sodium bicarbonate. Spec. 1. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 3 1. A process to produce sodium carbonate and/ or sodium bicarbonate from an ore mineral comprising sodium bicarbonate, comprising: (A) introducing a production solution comprising sodium carbonate into less basic compartments of an electrodialyser comprising alternating less basic and more basic adjacent compartments separated from each other by cationic membranes, the more basic compartments being delimited by anionic faces of bipolar membranes on one side and by the cationic membranes on the other side; (B) optionally extracting a solution comprising sodium bicarbonate from the less basic compartments; (C) producing a solution comprising sodium hydroxide into the more basic compartments, by combination of flux of sodium ions crossing the cationic membrane and flux of hydroxyl ions crossing the anionic face of the bipolar membranes; (D) extracting the solution comprising sodium hydroxide from the more basic compartments of the electrodialyser and using such solution to constitute a reaction solution; (E) putting the reaction solution into contact with the mineral ore comprising sodium bicarbonate in order to form a solution comprising sodium carbonate; and (F) dividing the solution comprising sodium carbonate into a part which is used to constitute said production solution and a remaining part which constitutes a produced solution. 3 When discussing independent claim 1, Appellants have identified the steps using the designation A-F. (App. Br. 13). The reproduced claim includes these designations. 3 Appeal2014-004099 Application 12/811,643 Rejection 14 The Examiner found Bourgeois teaches a process that corresponds to the first four steps (A-D) of the claimed invention. The Examiner found Bourgeois does not teach the last two steps (E and F), i.e., putting the reaction solution into contact with the mineral ore to form a solution comprising sodium carbonate, dividing the solution comprising sodium carbonate into a part which is used to constitute the production solution and a part which constitutes a produced solution. (Final Act 2-3; Bourgeois cols. 3--4.) The Examiner found Kube teaches solution mining of a mineral ore comprising sodium bicarbonate in the presence of a solution comprising sodium hydroxide to form a solution comprising sodium carbonate which corresponds to step (E). (Final Act 3; Kube col. 2, 11. 41---65.) The Examiner found Mani teaches the division of a solution ofNaOH and/or sodium carbonate, one part being recycled to the electrodialyzer and another portion (produced solution) which can be processed to form soda ash as a product which corresponds to step (F). (Final Act 4; Mani col. 14, 11. 46---62.) Bourgeois teaches it was well known to divide the product solution (sodium hydroxide separated from sodium bicarbonate solution) for use in other operations including the decomposition sodium bicarbonate to produce sodium carbonate that is recycled to the chamber containing the cationic face of the bipolar membrane. (Bourgeois col. 3, 11. 51---60.) The Examiner concluded that it would have been obvious to a person of ordinary skill in the art to utilize the sodium hydroxide, produced by such as described by 4 Appellants argue the claims 1, 2, 9, and 10 together as a group. App. Br. 13-21. We select independent claim 1 as representative of the subject matter before us on appeal. 4 Appeal2014-004099 Application 12/811,643 Bourgeois, as a reaction solution for solution mining a mineral ore comprising sodium bicarbonate form sodium carbonate such as described by Kube. The Examiner further concluded that it would have been obvious to a person of ordinary skill in the art to separate sodium carbonate from the remaining portions of a produced solution and to recycle the formed sodium carbonate taught by Kube into a portion which is used to constitute the production solution and a portion which constitutes a produced solution and recycle sodium carbonate for use in the initial process of Bourgeois. (Final Act 4--5). Appellants argue Bourgeois does not disclose that the sodium hydroxide solution exiting the more basic compartment can be contacted with a mineral ore comprising sodium bicarbonate to form a solution comprising sodium carbonate and Kube does not specify that the sodium hydroxide comes from the process such as described by Bourgeois. (App. Br. 14--16.) Appellants argue Mani's statement in column 14 would not suggest sending a portion of this solution removed from the base trona mine to the less basic compartment of the electrodialytic water splitter. (App. Br. 18-19). Appellants' arguments are not persuasive of reversible error in the Examiner's rejection. The dispositive issue presented by Appellants' arguments is whether it would have been obvious to a person of ordinary skill in the art to utilize sodium hydroxide in the solution mining of the mineral ore comprising sodium bicarbonate-thereby forming and extracting sodium carbonate-and the recycling of sodium carbonate to a process for producing sodium hydroxide. 5 Appeal2014-004099 Application 12/811,643 The Examiner correctly found that Bourgeois discloses a process that corresponds to process steps A-D, which results in the production of sodium hydroxide. Kube teaches a process that corresponds to process step E, which utilizes sodium hydroxide for solution mining of a mineral ore comprising sodium bicarbonate that results in the formation a solution comprising sodium carbonate. A person of ordinary skill in the art would have reasonably expected that the sodium hydroxide produced from the process of Bourgeois would have been suitable for utilization in solution mining techniques such as described by Kube. Regarding step F, it is not disputed that sodium carbonate was an initial reaction component in the process of Bourgeois. Bourgeois teaches the byproducts sodium carbonate was available for recycling to the initial process. (Bourgeois col. 3, 11. 51- 60.) A person of ordinary skill in the art would have reasonably expected that a process that results in products including sodium carbonate would have been available for utilization in other processes including recycling to the process of Bourgeois for the formation of sodium hydroxide. Accordingly, we are of the opinion that one of ordinary skill in this art routinely following the combined teachings of the references as combined by the Examiner would have reasonably arrived at the claimed process to produce sodium carbonate and/or sodium bicarbonate from an ore mineral encompassed by independent claim 1 without resort to Appellants' Specification. See, e.g., KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[A ]nalysis [of whether the subject matter of a claim would have been obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would 6 Appeal2014-004099 Application 12/811,643 employ."); Jn re Translogic Tech., Inc., 504 F.3d 1249, 1260 (Fed. Cir. 2007) ("[A] flexible approach to the [teaching, suggestion, or motivation to combine] test prevents hindsight and focuses on evidence before the time of invention without unduly constraining the breadth of knowledge available to one of ordinary skill in the art during the obviousness analysis." (Citations omitted)); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) ("Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'"); see also In re 0 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success." (Citations omitted)). Accordingly, we affirm the Examiner's prior art rejection of claims 1, 2, 9 and 10 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. Rejections II-IV Regarding the rejections of claim 3-5, 6-7, and 8, under 35 U.S.C. Â§ 103(a), we affirm these rejections advanced by the Examiner. Appellants have only presented substantive arguments as to independent claim 1 (rejection discussed above) and have not otherwise presented separate 7 Appeal2014-004099 Application 12/811,643 arguments on the merits for the rejections of claims 3-5, 6-7, and 8. In this regard, Appellants do not assert non-obviousness based on the additional limitations set forth claims 3-5, 6-7, and 8 subject to these rejections by explaining how the additional references applied thereto by the Examiner fail to establish the obviousness of the additional features recited in these separately rejected dependent claims. Because we do not find Appellants' arguments persuasive as to independent claim 1, it follows that these arguments are unpersuasive as to claims 3-5, 6-7, and 8. ORDER The Examiner's prior art rejections of claims 1-10 under 35 U.S.C. Â§ 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 8