Ex Parte Nisbett

Patent Trial and Appeal Board

Oct 25, 2016

12811285 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/811,285 06/30/2010
23657 7590 10/27/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Andrew Nisbett
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.
CU00000341 US 4823
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
docket@dsiplaw.com
spedersen@dsiplaw.com
jescobar@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW NISBETT
Appeal2015-005998
Application 12/811,285
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5 and 10-21. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A process for recovering desired metal values from
crushed and milled ore solids comprising the steps of:
(a) mixing a first aqueous leach solution with the crushed
and milled ore solids in a first agitated tank leach unit, whereby
at least a portion of the desired metal values in the ore solids is
Appeal2015-005998
Application 12/811,285
dissolved into the first aqueous leach solution to obtain a first
aqueous leach pulp comprising a mixture of leached solids and
first aqueous leach solution;
(b) subjecting the first aqueous leach pulp to a first
solids-liquid separation, without significant water dilution, to
provide a first clarified aqueous leach solution and a second
aqueous leach pulp, wherein the second aqueous leach pulp
comprises leached solids at a per cent solids level that is greater
than that in the first aqueous leach pulp;
( c) subjecting the first clarified aqueous leach solution to
a first solvent extraction, whereby at least a portion of the
desired metal values are extracted into a first organic phase
comprising one or more extraction reagents specific for the
desired metal, and a first aqueous raffinate, depleted of desired
metal values, is obtained;
( d) mixing a second aqueous leach solution with the
second aqueous leach pulp in a final agitated tank leach unit,
whereby at least a portion of the desired metal values formerly
in the second aqueous leach pulp is dissolved into the second
aqueous leach solution to obtain a third aqueous leach pulp,
wherein the third aqueous leach pulp comprises a mixture of
twice-leached solids and a second aqueous leach solution, rich
in desired metal values;
( e) subjecting the third aqueous leach pulp to a second
solids-liquid separation, without significant water dilution, to
provide a second clarified aqueous leach solution and a fourth
aqueous leach pulp, wherein the fourth aqueous leach pulp
comprises leached solids at a per cent solids level that is greater
than that in the third aqueous leach pulp;
(f) subjecting the second clarified aqueous leach solution
to a second solvent extraction, whereby at least a portion of the
desired metal values are extracted into a second organic phase
comprising one or more extraction reagent( s) specific for the
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Application 12/811,285
desired metal, and a second aqueous ratlinate, depleted of
desired metal values, is obtained;
(g) subjecting the fourth aqueous leach pulp to a third
solids-liquid separation, with significant dilution via an aqueous
stream, to provide a third clarified aqueous leach solution and a
fifth aqueous pulp, wherein the concentration of desired metal
values in the third clarified aqueous leach solution is less than
the concentration of desired metal values in the second clarified
aqueous leach solution, and the fifth aqueous pulp comprises a
mixture of leached solids and aqueous leach solution; and
(h) subjecting the third clarified aqueous leach solution to
a third solvent extraction whereby at least a portion of the
desired metal values are extracted into a third organic phase
comprising one or more extraction reagents( s) specific for the
desired metal, and a third aqueous raffinate, depleted of desired
metal values, is obtained.
Appellant requests review of the Examiner's rejection of claims 1-5
and 10-21under35 U.S.C. § 103(a) as unpatentable over Kordosky '512
(US 2005/0031512 Al, published February 10, 2005), Kordosky '458 (US
2006/0088458 Al, published April 27, 2006) and Haavanlammi (US
7,799,114 B2, issued September 21, 2010). App. Br. 7; Final Act. 3-8.
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Application 12/811,285
OPINION
Prior Art Rejection1' 2
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and add the
following for emphasis.
Independent claim 1 is directed to a process for recovering desired
metal values from crushed and milled ore solids through multiple leaching
and solvent extraction steps.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 3-8.
Appellant argues, absent impermissible hindsight, one skilled in the
art would not have combined the teachings of the two Kordosky references
because they relate to disparate types of leaching processes. App. Br. 9.
According to Appellant, Kordosky '512 is directed to metal leaching
operations and methods of improving the recovery of leaching agents from
solvent extraction operations while Kordosky '458 is directed to metal heap
and dump leaching coupled with metal solvent extraction. App. Br. 8;
Kordosky '512 i-f 7; Kordosky '458 i-f 18. Thus, Appellant argues the two
types of leaching processes are fundamentally different such that the
teachings related to one type of leaching do not necessarily translate to the
1 Appellant does not argue any claim separate from the other. Accordingly,
we select claim 1 as representative of the subject matter before us on appeal.
Claims 2-5 and 10-21 stand and fall with claim 1.
2 A discussion of Haavanlammi is unnecessary for disposition of this appeal.
Appellant does not address the Examiner's reliance on this reference. See
Appeal Brief, generally.
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other. App. Br. 9. In support of these arguments, Appellant presents a
Declaration under 37 C.F.R. § 1.132 by the inventor AndrewNisbett. 3 App.
Br. 9; Deel. i-fi-15-7.
We are unpersuaded by these arguments. Appellants' arguments are
premised on bodily incorporation and are not focused on the Examiner's
reason for combining the cited art. It is well established that the obviousness
inquiry does not ask "whether the references could be physically combined
but whether the claimed inventions are rendered obvious by the teachings of
the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
bane); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating "[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference").
The Examiner found Kordosky '512 teaches a method of recovering
desired metal values from crushed and milled ore solids using a split circuit
leaching and solvent system much like the prior art depicted by Appellant in
his Figure 2. Final Act. 3--4; Kordosky '512 Figure 2, i-fi-f 11. The Examiner
recognized that the claimed intervening leaching/extraction steps are
essentially a repetition of the initial ones. Final Act. 3. The Examiner found
Kordosky '512 does not disclose the second set of leaching/extraction steps
following the initial leaching/extraction steps using a separate
leaching/extraction circuit equipment. Id. at 4. The Examiner found
Kordosky '458 discloses repetition of leaching/extraction processes using
separate equipment as a well-known technique to maximize the recovery of
the desired metals. Final Act.4--5; Kordosky '458 Figure 5, i-fi-f 15, 28-31,
3 The Declaration was submitted by Appellant on June 11, 2012 and entered
into the record by the Examiner in the Non-Final Action of May 28, 2014.
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58---61. The Examiner also found Kordosky '458 recognizes that metal left
in leached ore can have significant economic value and, thus, it is desirable
to use multiple leaching/extraction steps and systems to recover the metal
values as well as recycling acid within each leaching/ extraction circuit.
Final Act. 5; Ans. 4; Kordosky Figure 5, i-f 15, 58---61. The Examiner
determined it would have been obvious to one of ordinary skill in the art to
modify the metal recovery process of Kordosky '512 by incorporating a
second sequential leaching/extraction split circuit to maximize the recovery
of the desired metal in view of the teachings of Kordosky '458. Final Act. 4.
Thus, the Examiner provided a reasonable basis for one skilled in the art to
conclude that providing a second split circuit in the process of Kordosky
'512 would predictably result in maximizing the recovery of desired metals
from crushed ore. Appellant has not shown any reversible error in the
Examiner's determination that one of ordinary skill in the art, using no more
than ordinary creativity, would have been capable of adapting the split
circuit solvent extraction process ofKordosky '512 to incorporate additional
sequential split circuit solvent extraction steps/systems in view of the
teachings of Kordosky '458.
Appellant also argues that the modification of the equipment for the
process of Kordosky '512 requires specialized equipment (i.e., mills, leach
tanks, clarifiers, etc.) that would result in much greater capital and
operational cost than the heap/dump leaching process ofKordosky '458.
App. Br. 10; Deel. i-f 8. We find this argument also unavailing because it
does not address the Examiner's reason for combining the cited art as
discussed above.
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Appellant and Declarant argue Table 2 of Example 3 of the
Specification shows the claimed method results in unexpected results in the
form of an economic benefit of over $17 million in savings when compared
with the prior art split circuit method savings of about $8 million. Spec. 22;
App. Br. 11; Deel. i-fi-19-10. According to Appellant and Declarant, such
savings are unexpected because one of ordinary skill in the art would have
expected the claimed method to result in less incremental savings than the
prior art split circuit as much of the metal would have been recovered in the
initial leaching/extraction steps. App. Br. 11; Deel. i-f 10.
We are unpersuaded by this evidence and argument. Kordosky '458
recognizes the use of multiple leaching/extraction units result in cost savings
in terms of recovered metal values that would have otherwise been lost and
in terms of the recycling of leaching solution. Kordosky Figure 5, i-f 15, 58-
61. Thus, the incorporation of an additional sequential split circuit in
Kordosky '512 would be expected to also result in similar cost savings. As
noted by Appellant, Table 2 of Example 3 shows the prior art split circuit
leaching/extraction process results in about $8 million in savings (Spec. 22).
The same table shows Appellant's sequential split circuit leaching/extraction
process results in an additional $8 to $9 million in savings. Given that
Appellant's sequential process is also an economically beneficial split circuit
leaching/extraction process, one skilled in the art would have expected that
this additional unit would result in savings within the order of magnitude of
the savings for the first split circuit leaching/extraction process. Appellants'
evidence in Table 2 shows that the combination of the two sequentially
oriented split circuits results in an expected result; an approximate doubling
of the savings of a single split circuit recovery (Spec. 22). Thus, contrary to
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Appellant's contention, the proffered economic benefit analysis is not
considered unexpected. Accordingly, we sustain the Examiner's prior art
rejection under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 15-25 under 35 U.S.C.
§ 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. § 1.136(a)(l).
AFFIRMED
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