NIOBEC INC.

Patent Trials and Appeals Board

Nov 30, 2021

2021000347 (P.T.A.B. Nov. 30, 2021)

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.
15/102,234 06/06/2016 Mario BERGERON 87367.22140 1063
30734 7590 11/30/2021
BakerHostetler
Washington Square, Suite 1100
1050 Connecticut Ave. N.W.
Washington, DC 20036-5304
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
11/30/2021 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):
edervis@bakerlaw.com
eofficemonitor@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIO BERGERON,
ALAIN LANGLAIS, MOHAMED OURRIBAN,
and PIERRE PELLETIER

Appeal 2021-000347
Application 15/102,234
Technology Center 1700
____________

Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 7, 9, 13, 16, 17, 26, 31, 37–40,
42, 43, 45, 49, 51, and 53. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Niobec
Inc.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A process for producing at least one anhydrous rare earth
chloride from an ore containing the at least one rare earth, the
process comprising:
contacting the ore containing the at least one rare earth
with reactants comprising a carbonaceous reducing agent,
chlorine, and a boron-containing Lewis acid acting as a
defluorination agent and a catalyst in a chlorination reactor at a
temperature below about 1000°C to produce a gaseous product
and an anhydrous non-volatile chloride mixture comprising the
at least one rare earth chloride,
wherein the boron-containing Lewis acid comprises
gaseous BCb, and a volumetric ratio of chlorine and BCb
introduced in the chlorination reactor ranges between about 1
and about 20, and a total rare earth conversion rate of the at
least one rare earth into the at least one rare earth chloride is
equal to or above 85 wt%.
Claims Appendix (Appeal Br. 21).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wyndham US 4,220,629 Sept. 2, 1980
Faulkner US 6,409,978 Bl June 25, 2002
CN 232 CN 1373232 Oct. 9, 2002

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REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 5, 7, 9, 13, 16, 17, 26,
31, 37–40, 42, 43, 45, 49, 51,
53
112 Indefiniteness
1, 2, 5, 7, 9, 13, 16, 17, 26,
31, 37–40, 42, 43, 45, 49, 51,
53
103 CN 232, Wyndham,
Faulkner
OPINION
Indefiniteness Rejection
The Examiner rejects claim 1 finding that the claim term “conversion
rate” is indefinite. Non-Final Act. 2. The Examiner reasons that “‘rate’
appears to refer to conversion per unit time, not as a percentage as now
required” and that the embodiments in the Specification are based on yield
instead of conversion. Id.
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
In this case, the Examiner failed to carry the burden. “A claim is
indefinite if, when read in light of the specification, it does not reasonably
apprise those skilled in the art of the scope of the invention.” Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). As
Appellant argues, when the claim language is read in light of the
Specification, particularly those cited on pages 5–6 of the Appeal Brief, the
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scope of “conversion rate” is clear. The Examiner does not respond to these
arguments. See Ans. 8. The indefiniteness rejection is reversed.
Obviousness Rejection2
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After considering
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s 35 U.S.C. § 103 rejection for the reasons expressed in the
Non-Final Office Action and the Answer. We add the following primarily
for emphasis.
Appellant acknowledges that CN 232 teaches “the fluorine exchange
agent can be silicon, phosphorus, or boron” but argues that CN 232
fails to provide guidance for which phosphorus and boron
compounds may effectively be used as a defluorination agent
and further act as a catalyst to obtain a total rare earth
conversion rate of the at least one rare earth into the at least one
rare earth chloride equal to or above 85 wt%, as recited.
Appeal Br. 9. Appellant’s argument is unpersuasive because the argument
does not respond to the Examiner’s determinations that CN 232 “fairly

2 Appellant argues for claims 1, 2, 5, 7, 9, 13, 16, 17, 26, 31, 37–40, 42, 43,
45, 49, 51, and 53 as a group with claim 1 as representative. Appeal Br. 6–
19. All pending claims stand or fall together. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).
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suggests to one skilled in the art the use of phosphorus chloride or boron
chloride as the fluorine exchange agent” and that a skilled artisan would
have arrived at the process recited in claim 1 through routine
experimentation. Non-Final Act. 7.
Appellant argues that the art is unpredictable because “it is known that
several phosphorus and boron compounds cannot be used as a defluorination
agent.” Appeal Br. 9. Appellant’s argument is unpersuasive. “Obviousness
does not require absolute predictability of success. . . . For obviousness
under § 103, all that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). In any event, Appellant’s
argument that it is within the prior art knowledge that some phosphorus and
boron compounds are not suitable defluorination agents shows that a skilled
artisan would know to avoid them when choosing a defluorination agent.
Moreover, Mario Bergeron, the first listed inventor, acknowledges in
declarations submitted under 37 C.F.R. § 1.132 that “boron compounds are
known defluorination agents” and “[s]imilarly, phosphorus is a known
defluorination agent.” Appeal Br. 9 (citing declarations). The fact that “their
efficiency, as defluorination agents, depends on the reactants and reaction
conditions” (id.) does not support Appellant’s argument that the art is
unpredictable. We further note that Appellant’s reference to the declarations
is without pinpoint citation. See id. Our rules require that an Appeal Brief
include “arguments” that “shall explain why the examiner erred.” 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, Appellant’s argument without citation to
these declarations totaling approximately 20 pages is not supported by
sufficient evidence under our rules, and, therefore, it does not persuade us of
any reversible error by the Examiner.
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Appellant’s argument that phosphorus does not act as a defluorination
agent when contained in certain monazite and hematite-magnetite
concentrates (Appeal Br. 10) is unpersuasive because it is incommensurate
in scope with the claim which does not require phosphorus.
Appellant’s argument that a skilled artisan would have required undue
experimentation to arrive at the process recited in claim 1 from the teachings
of CN 232 (Appeal Br. 10) is unpersuasive. “[D]isclos[ing] a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose taught by the prior art.” Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Appellant does not support the
argument with adequate evidence showing why the Examiner reversibly
erred in finding that routine experimentation is all a skilled artisan would
need to arrive at the process recited in claim 1 from the teachings of CN 232.
“Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Appellant’s argument that “in all examples of CN '232, the sole
defluorination agent that is tested is SiCl4” (Appeal Br. 11) is unpersuasive
because the prior art teachings are not limited to the specific and/or preferred
embodiments. Merck, 874 F.2d at 807 (“But in a section 103 inquiry, ‘the
fact that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered.’”); see also In re Mills, 470 F.2d 649, 651 (CCPA
1972) (“[A] reference is not limited to the disclosure of specific working
examples.”). Appellant’s argument that CN 232 has “no specific disclosure
of the selected BCl3” (Appeal Br. 11) is unpersuasive for this reason as well
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as for the reason that the argument is incommensurate in scope with the
claim language which is not limited to BCl3. Appellant’s argument is
unpersuasive also because an obviousness analysis, unlike anticipation, is
based on what the prior art “would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995).
Appellant next argues that CN 232 “fails to specify that the selected
defluorination agent should also be a Lewis acid, as recited in . . . claim 1.”
Appeal Br. 11–12. Appellant argues that Mr. Bergeron states in the
declaration that CN 232 “is silent about using a Lewis acid in a dry
chlorination process with an ore containing rare earth chlorides.” Id (citing
point 18 of the Bergeron Declaration dated August 2, 2017 (“Decl.” or
“Declaration”)). Point 18 of the Declaration does not discuss the teachings
of CN 232 otherwise. See Decl. ¶ 18. We are unpersuaded because neither
Appellant nor Mr. Bergeron address the Examiner’s findings regarding what
CN 232 would have suggested to the ordinary artisan. We further note that
the Examiner points out that the silicon tetrachloride taught in CN 232 is a
Lewis acid “because of the vacant 3D [sic, 3d] orbital.” Ans. 12. Appellant
does not dispute this finding (see, e.g., Reply Br. 1–10) and no reversible
error has been identified.
Moreover, “the discovery of a previously unappreciated property of a
prior art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the
discoverer. . . . This same reasoning holds true when it is not a property, but
an ingredient, which is inherently contained in the prior art.” Atlas Powder
Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). The issue of
whether CN 232 teaches or suggests “a boron-containing Lewis acid” as
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recited in claim 1 is not solely based on whether the reference specifically
recognizes that a particular compound is used as a Lewis acid.
Appellant next argues that “the number of possible silicon,
phosphorus, and boron defluorination agents, which are also catalysts and
Lewis-acid, [sic] is important.” Appeal Br. 12 (citing a Bergeron declaration
without pinpoint cite). Appellant, however, acknowledges that BCl3 “has a
catalytic effect in Wyndham’s chlorination reaction” and only argues,
without evidentiary support, that there is “no straightforward reasoning can
be made . . . [that] it would have a catalytic effect in the claimed rare earth
chlorination reaction.” Id. at 13. Appellant’s argument is unpersuasive again
because “all that is required is a reasonable expectation of success” in a
proper obviousness analysis. In re O’Farrell, 853 F.2d at 903–04. Appellant
does not cite to a particular portion of Mr. Bergeron’s declaration showing
that the Examiner reversibly erred in finding what CN 232 would have
suggested to the ordinary artisan with regard to this claim limitation and we
are accordingly unpersuaded. We further note that the issue of whether CN
232 teaches or suggests “a boron-containing Lewis acid acting as . . . a
catalyst” as recited in claim 1 is not solely based on whether the reference
specifically recognizes a particular compound is used as a catalyst. See Atlas
Powder, 190 F.3d at 1347.
Appellant’s argument that “BCl3 acts as a catalyst in the chlorination
reaction because it is regenerated in situ during the chlorination reaction at
the reaction temperature, as recited in claim 1” (Appeal Br. 13) is
unpersuasive because it is incommensurate in scope with claim 1 which does
not require in situ regeneration. Appellant’s argument that BCl3 “is easily
available in comparison with SiCl4” (id.) is unpersuasive as unsupported by
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sufficient evidence to show secondary indicia of unobviousness such as
commercial success. See In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(“[O]bjective evidence of nonobviousness includes copying, long felt but
unsolved need, failure of others, commercial success, unexpected results
created by the claimed invention, unexpected properties of the claimed
invention, licenses showing industry respect for the invention, and
skepticism of skilled artisans before the invention.”).
Appellant’s remaining arguments focus on “the regeneration of SiC14
is not conceivable within the claimed experimental parameters (i.e.,
temperature below 1000°C) and the catalytic role of SiCl4 is improbable at
the claimed reaction temperature,” Appeal Br. 15, and that there is a “a
difficulty to obtain SiCl4, the defluorination agent taught in CN’232, at
temperatures below 1000°C, which is the claimed reaction temperature,” id.
at 18. These arguments are unpersuasive first and foremost because it is
incommensurate in scope with the claim language which requires “a
temperature below about 1000°C” which the Examiner interprets
inclusively. Non-Final Act. 11. Appellant does not argue otherwise (see id.)
and the Examiner’s construction is reasonable under the broadest reasonable
interpretation standard that applies during prosecution. The claim language
also does not require SiCl4 and Appellant’s arguments focused on a reaction
using SiCl4 are therefore also unpersuasive.
There is no dispute that CN 232 teaches a reaction temperature
between 400°C and 700°C which overlaps the recited “below about 1000°C”
reaction temperature. Compare Non-Final Act. 5, with Appeal Br. 17.
“[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption
of obviousness. But the presumption will be rebutted if it can be
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shown: (1) That the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997);
or (2) that there are new and unexpected results relative to the
prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004). Appellant does not persuasively argue either that CN 232 teaches
away or that there are new and unexpected results. We therefore have no
reason to disturb the Examiner’s obviousness rejection.
CONCLUSION
The Examiner’s indefiniteness rejection of claims 1, 2, 5, 7, 9, 13, 16,
17, 26, 31, 37–40, 42, 43, 45, 49, 51, and 53 is reversed.
The Examiner’s obviousness rejection of claims 1, 2, 5, 7, 9, 13, 16,
17, 26, 31, 37–40, 42, 43, 45, 49, 51, and 53 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7, 9,
13, 16, 17,
26, 31, 37–
40, 42, 43,
45, 49, 51,
53
112 Indefiniteness 1, 2, 5, 7,
9, 13, 16,
17, 26,
31, 37–
40, 42,
43, 45,
49, 51, 53
1, 2, 5, 7, 9,
13, 16, 17,
26, 31, 37–
40, 42, 43,
45, 49, 51,
53
103 CN 232,
Wyndham,
Faulkner
1, 2, 5, 7, 9,
13, 16, 17,
26, 31, 37–
40, 42, 43,
45, 49, 51,
53

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1, 2, 5, 7, 9,
13, 16, 17,
26, 31, 37–
40, 42, 43,
45, 49, 51,
53

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED