Ex Parte De Leij et al

Patent Trial and Appeal Board

Mar 15, 2017

14045347 (P.T.A.B. Mar. 15, 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.
14/045,347 10/03/2013 Franciscus Antonius Anna Maria De Leij 95095-000400US-889800 9769
20350 7590 03/17/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FAN, LYNN Y
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCUS ANTONIUS ANNA MARIA DE LEIJ,
JAMES STRATFORD, and TONY HUTCHINGS
Appeal 2016-003728
Application 14/045,347
Technology Center 1600
Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 1—9, 11, and
13—15 (App. Br. 5).2 Examiner entered rejections under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real parties in interest as “The Forestry Commission
and The University of Surrey” (App. Br. 3).
2 Pending claims 16—23 stand withdrawn from consideration (App. Br. 5).
Appeal 2016-003728
Application 14/045,347
STATEMENT OF THE CASE
Appellants disclosure “relates to oil absorbent compositions, such as
charcoal-based compositions, and to methods of making such oil absorbent
materials” (Spec. 1: 2—3). Claim 1 is representative and reproduced below:
1. A method of preparing an oil absorbent composition, the
method comprising:
heating a precursor plant material under substantially
anaerobic conditions to a temperature between about 280°C and
about 600°C to produce a charcoal, and then
de-mineralising the resulting charcoal by contacting said
charcoal with an acid or buffered solution having a neutral or
acidic pH and then, after the demineralization step,
separating the demineralized charcoal from the acid or
buffered solution to produce an oil absorbent composition.
(App. Br. 17.)
The claims stand rejected as follows:
Claims 1, 5—9, 11, and 13—15 stand rejected under 35 U.S.C. § 102(b)
as anticipated by De Leij.3
Claims 1, 2—9, 11, and 13—15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of De Leij and Akiyama.4
Anticipation'.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that De Leij teaches Appellants’ claimed invention?
3 De Leij et al., WO 2009/016381 A2, published Feb. 5, 2009.
4 Akiyama, US 4,172,039, Oct. 23, 1979.
2
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Application 14/045,347
FACTUAL FINDINGS (FF)
FF 1. De Leij discloses that “[t]he charring process is well known to those
skilled in the art. Essentially, it involves heating [a plant material] to
temperatures considerably above boiling (for instance between 400°C and
700°C), under oxygen starved conditions” (De Leij 13: 26—28; see id. 17: 5—
12 (providing examples of plant materials useful in De Leij’s method); Ans.
4-5).
FF 2. De Leij discloses that:
[AJcidified charred material is preferably obtained by grinding
charred material, most preferably from nettles or other materials
described here, and treating this with an acid. The acid can be a
weak acid or a strong acid, such as hydrochloric or nitric acid,
provided that the acid is at least pH 3 or 4 or lower. The acid is
preferably at least 0.5 molar and more preferably at least 1 M or
more. Preferably, the mixture is left until at least 70% and
more preferably at least 90% of the acid was removed from
solution by the charcoal, such that the pH of the solution has a
pH of 3 or less, more preferably pH 2 or less and most
preferably pH 1 or less. The resulting acidified charred
material is drained and subsequently dried and has a pH of
around 4 when added to water.
(De Leij 21: 12—21; Ans. 4—5.)
FF 3. De Leij discloses that “[i]n general charcoals are porous and their
adsorbing properties are often related to the large specific surface area
within the charcoal” (De Leij 1: 29—30).
ANALYSIS
Appellants claim 1 requires: (1) the production of a charcoal by
heating a precursor plant material under substantially anaerobic conditions to
a temperature between about 280°C and about 600°C, (2) de-mineralising
the resulting charcoal by contacting the charcoal with an acid solution
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Application 14/045,347
having an acidic pH, and then, after the demineralization step, (3) separating
the demineralized charcoal from the acid solution to produce an oil
absorbent composition (see App. Br. 17; see also Reply Br. 5).
De Leij teaches: (1) the production of a charcoal by heating a
precursor plant material under substantially anaerobic conditions to a
temperature between 400°C and 700°C, (2) treating ground charcoal with an
acid solution, and (3) separating the resulting charcoal from the acid solution
by draining and subsequently drying the charcoal (FF 1—2).
We agree with Examiner finding that De Leij anticipates Appellants’
claim 1. (Ans. 6; FF 1—2; cf. App. Br. 17; Reply Br. 5).
Appellants’ claim 1 does not require a washing step (see App. Br. 17).
Therefore, we are not persuaded by Appellants’ contention that “the present
claims (directed to an oil adsorbent charcoal) contemplate that acid is
therefore removed by washing” (App. Br. 11; see also id. at 14).
For the foregoing reasons, we are not persuaded by Appellants’
contention that there are “differences between the present invention and De
Leij,” that “De Leij does not teach a de-mineralisation step followed by a
subsequent step of separating the acid from the demineralized charcoal, as
required by [Appellants’] claim 1,” or that De Leij’s separation step differs
from the separation step required by Appellants’ claim 1 (App. Br. 11—13;
see App. Br. 13 (“Contrary to [] Examiner’s assertion, [De Leij at page 21,
paragraph 3,] actually teaches how the charcoal can be acidified to produce
an acidified charcoal—which, while it may be a useful product for the
reasons explained above, is not a de-mineralisation step as required by
[Appellants’] claim[] [1]”); Reply Br. 5—8; cf. FF 1—2).
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Application 14/045,347
Appellants fail to provide persuasive evidence or argument to support
a finding that De Leij fails to teach a method that comprises every step, in
order, as is required by Appellants’ claim 1 or that De Leij’s method, which
utilized the same steps in the same order as is required by Appellants’ claim
1, results in a different product than is produced by the method set forth in
Appellants’ claim 1 (see FF 1—2; cf App. Br. 17). In this regard, Appellants
fail to provide persuasive evidence or argument to support a finding that the
charcoal produced by the method of claim 1 will not exhibit the same
properties as that produced by De Leij’s method or “that at least some of the
acid” will remain in Appellants’ charcoal when produced by the method of
Appellants’ claim 1 (see App. Br. 13—15; Reply Br. 6; cf. FF 1—2). In this
regard, we note that Appellants’ claim 1 does not require a washing or
neutralizing step (see App. Br. 17; cf. App. Br. 11 and 14; Reply Br. 6 (“De
Leij [] does not teach or suggest separating the charred material from the
acid and adjusting the pH of the material, thereby neutralizing the acid”); see
also Reply Br. 7 and 8).5
De Leij discloses that “[i]n general charcoals are porous and their
adsorbing properties are often related to the large specific surface area
within the charcoal” (FF 3). Therefore, we are not persuaded by Appellants’
5 We recognize Appellants’ contentions regarding Appellants’ claim 15,
which depends ultimately from and further limits Appellants’ claim 1 to
“further comprise^ adjusting the pH of the composition until the pH
indicates that the majority of the acid has been substantially neutralized”
(see App. Br. 18; Reply Br. 6). To the extent that Appellants consider their
contentions with regard to claim 15 a separate argument of claim 15, we find
Appellants’ new argument belated and decline to treat claim 15 separately.
See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(Appellants fail to “explain what ‘good cause’ there might be to consider the
new argument. On this record, Appellant’s new argument is belated”).
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Application 14/045,347
contention that their invention differs from De Leij because “charcoals
obtained using the method defined by claim 1 are surprisingly effective at
absorbing oil” (Reply Br. 8). Even if, De Leij had not disclosed that
charcoals have adsorbing properties “often related to the large specific
surface area within the charcoal,” De Leij teaches the same method as is
required by Appellants’ claim 1 (see LL 1—3; cf App. Br. 17). It is a general
rule that merely discovering and claiming a new benefit of an old process
cannot render the process again patentable. Verdegaal Bros., Inc. v. Union
Oil Co. of Calif, 814 L.2d 628, 633 (Led. Cir.), cert, denied, 484 U.S. 827
(1987) (“Even assuming Stoller did not recognize that the heel of his process
functioned as a heat sink, that property was inherently possessed by the heel
in his disclosed process, and, thus, his process anticipates the claimed
invention”).
CONCLUSION OL LAW
The preponderance of evidence on this record supports Examiner’s
finding that De Leij teaches Appellants’ claimed invention. The rejection of
claim 1 under 35 U.S.C. § 102(b) as being anticipated by De Leij is
affirmed. Claims 5—9, 11, and 13—15 are not separately argued and fall with
claim 1.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
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Application 14/045,347
FACTUAL FINDINGS (FF)
FF 4. Examiner relies on De Leij as set forth above (FF 1—3; see Ans. 7—
8).
FF 5. Examiner finds that “De Leij does not teach the method wherein the
oil absorbent composition is contacted with a water repellant substance,” and
relies on Akiyama to make up for this deficiency in De Leij (Ans. 8).
FF 6. Akiyama “relates to an improved oleospecific absorber, comprising a
body of porous substance obtained from a vegetable body, and disposed in
an upper part of a container,” wherein the “oleospecific absorber ha[s] an
excellent absorptivity for collecting oily substance[s], in particular for
mineral oil” (Akiyama 1: 34—39; Ans. 9).
FF 7. Akiyama discloses that “the porous material mentioned hereinbefore,
is provided with a water repellent property by impregnating it with a suitable
hydrophobic material in an appropriate quantity,” wherein “as a result of the
impregnation process, the porous material can further be improved with
respect to its absorbing an oily substance co-existent with water” (Akiyama
3: 11-17; Ans. 8).
ANALYSIS
Based on the combination of De Leij and Akiyama, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious:
[T]o contact the charcoals (a porous material) of De Leij with a
hydrophobic material (a water repellent substance)[, because]
Akiyama discloses that by impregnating a porous material with
a hydrophobic material (a water repellent substance), the porous
material possesses a water repellant property and an excellent
absorptivity for collecting oily substance[s]
(Ans. 8-9).
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Application 14/045,347
As discussed above De Leij anticipates Appellants’ claim 1.
Therefore, we are not persuaded by Appellants’ contentions that Akiyama
fails to make up for Appellants’ alleged deficiency in De Leij (App. Br. 15
(“Akiyama is unable to cure the deficiencies of [De Leij]”); Reply Br. 9
(“Akiyama is unable to cure the deficiencies of [De Leij]”)). For the reasons
set forth above, and notwithstanding Appellants’ contention to the contrary,
De Leij teaches the de-mineralisation step required by Appellants’ claim 1
(see App. Br. 15—16; Reply Br. 9).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of De Leij and Akiyama is
affirmed. Claims 2—9, 11, and 13—15 are not separately argued and fall with
claim 1.
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).
AFFIRMED
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