Ex Parte Zhou et al

Patent Trial and Appeal Board

Nov 24, 2015

12048907 (P.T.A.B. Nov. 24, 2015)

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.
12/048,907 03/14/2008 Xinliang Zhou G1729-00217 5803
8933 7590 11/24/2015
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
SWAIN, MELISSA STALDER
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
11/24/2015 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 XINLIANG ZHOU, KEVIN HAMMACK, and DALBIR S. SETHI
____________

Appeal 2013-008056
Application 12/048,9071
Technology Center 1700
____________
Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision2 of the
Primary Examiner rejecting claims 1–7, 9–15, 17, 18, and 20–25. Final Act.
2–8. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
OPINION
Appellants’ invention “relates to an efficient method for the aqueous
liquid-liquid extraction of hydrogen peroxide from H2O2-containing work

1 The Real Party in Interest is PeroxyChem LLC. Statement under 37 C.F.R.
§ 3.73(b), filed July 3, 2014. Appellants previously identified the Real Party
in Interest as FMC Corporation. Br. 3.
2 Final Office Action, mailed June 28, 2012 (“Final Act.”).
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solution in a H2O2 anthraquinone auto-oxidation process.” Spec. ¶ 2. Claim
1, reproduced below, is representative of the appealed subject matter:
1. A method for the recovery of hydrogen peroxide
produced in an auto-oxidation process comprising contacting a
H2O2-containing organic solution in an auto-oxidation process
with an aqueous extraction medium in a device with elongated
channels having at least one cross sectional dimension within
the range of from about 5 microns to about 5 mm, to effect
liquid-liquid extraction of hydrogen peroxide from the organic
solution into the aqueous medium, and
thereafter separating the aqueous medium containing
extracted hydrogen peroxide from the H2O2-depleted organic
solution to obtain a H2O2-containing aqueous solution,
wherein the device further comprises three or more
channeled devices connected in a series of stages, in which
recovery of H2O2 from the organic solution into the aqueous
medium is effected in each stage and the overall relative flow of
aqueous medium and organic solution between stages is in a
countercurrent direction.
Br. 16 (paragraphing added).
Rejection Based on Sethi and Fang
The Examiner rejected claims 1–5, 13, 14, 21, 24, and 25 under
35 U.S.C. § 103(a) as obvious over the combination of Sethi3 and Fang.4
Appellants present four arguments against this rejection. First, Appellants
argue that Sethi teaches the use of a microchannel device only in the
production of hydrogen peroxide and fails to teach or suggest the claimed
use of a microchannel device in extraction of hydrogen peroxide. Appeal

3 Sethi et al., US 2007/0053829 A1, published Mar. 8, 2007.
4 Zhaolun Fang, Liquid-Liquid Extraction Separation in Microfluidic Chip,
in MICROFLUIDIC CHIPS FOR ANALYTIC CHEMISTRY 218, 218–25 (2003)
(English translation).
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Br. 8. We do not find this argument persuasive of any harmful error by the
Examiner, because the Examiner did not rely on Sethi to teach or suggest
extraction in a microchannel device. Instead, the Examiner relied on Fang
as teaching or suggesting such extraction. Final Act. 3. The evidence of
record supports the Examiner’s finding that Fang teaches the use of a
microchannel device to carry out liquid-liquid extraction. Fang 1–3.5
Second, Appellants argue that Sethi fails to teach that conventional
extraction (i.e., extraction carried out by means other than microchannel
devices) requires improvement and that, therefore, the person of ordinary
skill in the art would have had no reason to improve Sethi’s production and
extraction of hydrogen peroxide by use of Fang’s extraction process. Br. 9.
This argument is not persuasive of any harmful error by the Examiner. The
failure of the prior-art references themselves to identify a teaching,
suggestion, or motivation to combine the prior-art references is not fatal to
an obviousness rejection; instead, an obviousness rejection may be
supported by “some articulated reasoning with some rational underpinning”
to combine known elements in the manner required by the claims. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner provides such
articulated reasoning, finding that Fang “teaches that extraction separation in
the microchannels requires no mechanical shaking, the extraction reaches
equilibrium quickly, has a large specific surface while extraction efficiency
is high.” Final Act. 3. Appellants have not identified evidence of record
that suggests that the Examiner’s finding is in error.

5 Citations to Fang are to the page numbers of the English translation, rather
than to the page numbers of the original Chinese publication.
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Third, Appellants argue that Fang teaches only microfluidic chips for
laboratory analysis, providing no reason to combine Fang’s extraction
process with Sethi’s industrial- or commercial-scale production process.
Appeal Br. 9–10. We are not persuaded by this argument. The rejection is
not based on a bodily incorporation of Fang’s microchannel device into the
production and extraction process taught by Sethi; instead, the rejection is
based on what Sethi and Fang would have suggested to a person of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.”). Further, Appellants have
not asserted that the proposed combination of Sethi and Fang, either by
scaling Fang up to industrial capacities or by scaling Sethi down to
laboratory scale,6 would have been beyond the capabilities of a person of
ordinary skill in the art. Absent such an assertion, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and we find a person of ordinary skill in the art would overcome
those difficulties within their level of skill. KSR, 550 U.S. at 418; see also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
Finally, Appellants argue that the results obtained using their claimed
method are unexpected, rendering the claims non-obvious. Br. 11–12.

6 We note, as did the Examiner, that Appellants’ claims are not limited to
any particular scale, Br. 16–20, so either scaling up of Fang for combination
with Sethi or scaling down of Sethi for combination with Fang would be
sufficient to render Appellants’ claims obvious.
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Specifically, argue Appellants, the claimed three-stage microchannel
extraction achieves 97% recovery, which would not have been expected by a
person of ordinary skill in the art, given that conventional extraction
processes required 24 stages to achieve this level of recovery and that a
single microchannel stage can achieve only 60% recovery. Id. We are not
persuaded by this argument. Although Appellants argue that the 97%
recovery demonstrated by their claimed three-stage microchannel extraction
process would have been unexpected, the evidence demonstrates otherwise,
as the Examiner found. The evidence submitted by Appellants shows that
adding stages to an extraction process improves the level of recovery: the
use of 24 stages that each achieve 20% to 50% recovery results in an overall
recovery of 96% to 97%. Id. Accordingly, the Examiner found that it would
not have been surprising to a person of ordinary skill in the art that three
microchannel devices that achieved 60% recovery each would, when placed
in series, achieve an overall recovery of 97%. Answer 11. Appellants have
not directed us to any evidence that suggests this finding was in error.
Rejections Based on Ledon and Fang
The Examiner rejected claims 1–3, 5, 7–9, 13, 14, 21, 24, and 25
under 35 U.S.C. § 103(a) as obvious over the combination of Ledon7 and
Fang. The Examiner also rejected claim 4 under 35 U.S.C. § 103(a) as
obvious over the combination of Ledon, Fang, and Brophy;8 claims 6, 17,
18, 20, 22, and 23 under 35 U.S.C. § 103(a) as obvious over the combination

7 Ledon, US 5,827,493, issued Oct. 27, 1998.
8 Brophy et al., US 7,118,920 B2, issued Oct. 10, 2006.
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of Ledon, Fang, and Lepoutre;9 claims 10–12 under 35 U.S.C. § 103(a) as
obvious over the combination of Ledon, Fang, and Goor;10 and claim 15
under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang,
and Ogasawara.11
Appellants present four arguments against these rejections. First,
Appellants argue that Ledon fails to teach or suggest the claimed use of a
microchannel device in extraction of hydrogen peroxide. Br. 13. We find
this argument unpersuasive for the same reasons discussed above with
respect to the same argument against Sethi, namely, that the Examiner did
not rely on Ledon to teach or suggest extraction in a microchannel device.
Instead, the Examiner relied on Fang as teaching or suggesting such
extraction. Final Act. 5. The evidence of record supports the Examiner’s
finding that Fang teaches the use of a microchannel device to carry out
liquid-liquid extraction. Fang 1–3.
Second, Appellants argue that Ledon fails to teach that conventional
extraction (i.e., extraction carried out by means other than microchannel
devices) requires improvement and that, therefore, the person of ordinary
skill in the art would have had no reason to improve Ledon’s production and
extraction of hydrogen peroxide by use of Fang’s extraction process. Br. 13.
As noted above with respect to the combination of Sethi and Fang, this
argument is not persuasive of any harmful error by the Examiner. The
failure of the prior-art references themselves to identify a teaching,
suggestion, or motivation to combine the prior-art references is not fatal to

9 Lepoutre, US 6,340,410 B1, issued Jan. 22, 2002.
10 Goor et al., US 2005/0069483 A1, published Mar. 31, 2005.
11 Ogasawara et al., US 6,126,914, issued Oct. 3, 2000.
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an obviousness rejection; instead, an obviousness rejection may be
supported by “some articulated reasoning with some rational underpinning”
to combine known elements in the manner required by the claims, KSR, 550
U.S. at 418–19 (citing Kahn, 441 F.3d at 988), which the Examiner provided
here. Final Act. 5.
Third, Appellants argue that Fang teaches only microfluidic chips for
laboratory analysis, providing no reason to combine Fang’s extraction
process with Ledon’s industrial- or commercial-scale production process.
Br. 13. As discussed above with respect to the combination of Sethi and
Fang, we are not persuaded by this argument. The rejection is not based on
a bodily incorporation of Fang’s microchannel device into the production
and extraction process taught by Ledon; instead, the rejection is based on
what Ledon and Fang would have suggested to a person of ordinary skill in
the art. Further, Appellants have not asserted that the proposed combination
of Ledon and Fang, either by scaling Fang up to industrial capacities or by
scaling Ledon down to laboratory scale,12 would have been beyond the
capabilities of a person of ordinary skill in the art.
Finally, Appellants present the same unexpected-results argument
discussed above. For the reasons discussed above, we do not find this
argument persuasive of any harmful error by the Examiner.
Because Appellants have not persuaded us that the Examiner
harmfully erred in rejecting any of Appellants’ claims, we affirm each of the
Examiner’s rejections.

12 We note, as did the Examiner, that Appellants’ claims are not limited to
any particular scale, Br. 16–20, so either scaling up of Fang for combination
with Ledon or scaling down of Ledon for combination with Fang would be
sufficient to render Appellants’ claims obvious.
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ORDER
The Examiner’s rejection of claims 1–5, 13, 14, 21, 24, and 25 under
35 U.S.C. § 103(a) as obvious over the combination of Sethi and Fang is
affirmed. The Examiner’s rejections of claims 1–3, 5, 7–9, 13, 14, 21, 24,
and 25 under 35 U.S.C. § 103(a) as obvious over the combination of Ledon
and Fang; of claim 4 under 35 U.S.C. § 103(a) as obvious over the
combination of Ledon, Fang, and Brophy; of claims 6, 17, 18, 20, 22, and 23
under 35 U.S.C. § 103(a) as obvious over the combination of Ledon, Fang,
and Lepoutre; of claims 10–12 under 35 U.S.C. § 103(a) as obvious over the
combination of Ledon, Fang, and Goor; and of claim 15 under 35 U.S.C.
§ 103(a) as obvious over the combination of Ledon, Fang, and Ogasawara
also are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED

cdc