Alexandra Chaumonnot et al.

Patent Trials and Appeals Board

May 28, 2021

2020000379 (P.T.A.B. May. 28, 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.
13/995,531 10/08/2013 Alexandra Chaumonnot PET-2885 7465
23599 7590 05/28/2021
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
FORREST, MICHAEL
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDRA CHAUMONNOT, CLEMENT SANCHEZ,
CEDRIC BOISSIERE, FREDERIC COLBEAU-JUSTIN, and
AUDREY BONDUELLE
____________

Appeal 2020-000379
Application 13/995,531
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–30. 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. Appellant identifies Centre National de la Recherche Scientifique,
Universite Pierre et Marie Curie, and IFP Energies Nouvelles as the real
parties in interest. Appeal Br. 1.
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BACKGROUND
The invention relates to inorganic oxide catalyst materials. Spec. 1.
Sole independent claim 17 is representative:
17. An inorganic material constituted by at least two
elementary spherical particles, each of said spherical particles
comprising metallic nanoparticles having at least one band with
a wave number in the range 750 to 1050 cm-1 in Raman
spectroscopy and containing at least one or more metals
selected from vanadium, niobium, tantalum, molybdenum and
tungsten, said spherical particles being free of the presence of
metallic particles in the form of heteropolyanions, said metallic
nanoparticles being present within a mesostructured matrix
based on an oxide of at least one element Y selected from the
group constituted by silicon, aluminium, titanium, tungsten,
zirconium, gallium, germanium, tin, antimony, lead, vanadium,
iron, manganese, hafnium, niobium, tantalum, yttrium, cerium,
gadolinium, europium and neodymium and a mixture of at least
two of these elements, said matrix having pores with a diameter
in the range 1.5 to 50 nm and having amorphous walls with a
thickness in the range 1 to 30 nm, said elementary spherical
particles having a maximum diameter of 200 microns and said
metallic nanoparticles having a maximum dimension strictly
less than 1 nm such that said metallic nanoparticles are not
detected in transmission electron microscopy (TEM),
wherein the material is prepared by a process comprising
the following steps in succession:
a) mixing:
- at least one surfactant;
- at least one precursor of the at least one element Y;
- at least one first metallic precursor containing at least one
or more metals selected from vanadium, niobium, tantalum,
molybdenum and tungsten present in metallic nanoparticles
having at least one band with a wave number in the range 750
to 1050 cm-1 in Raman spectroscopy;
- optionally, at least one colloidal solution in which
zeolitic nanocrystals with a maximum nanometric dimension
equal to 300 nm are dispersed;
to form a solution wherein at least the precursor of the at least
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one element Y and the at least one first metallic precursor are
dissolved;
b) aerosol atomizing said solution obtained in step a) in order to
result in the formation of spherical liquid droplets;
c) drying said droplets; and
d) eliminating at least said surfactant.
Appeal Br. 15–16 (Claims Appendix).

REJECTIONS
I. Claims 17–30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Chaumonnot.2
II. Claims 17–30 stand alternatively rejected under 35 U.S.C. § 103(a) as
unpatentable over Chaumonnot in combination with AAPA.3

OPINION
Rejection I: obviousness over Chaumonnot
With regard to Rejection I, Appellant argues the rejected claims as a
group, focusing on features recited in independent claim 17. Appeal Br. 3–
13. We select this claim as representative, with which each remaining claim
stands or falls.
Appellant acknowledges the subject matter of this application was
considered in our previous Decision dated December 21, 2017. Appeal Br.
3. Appellant contends, however, that the claims now on appeal have been
amended to recite a product-by-process and, for that reason, present issues

2 US 2008/0072705 A1, published March 27, 2008 (“Chaumonnot”).
3 The Examiner identifies Appellant’s disclosure (Spec. 1) that CoMo,
NiMo, and NiW are common formulations for hydrotreating catalysts as
admitted prior art (“AAPA”). Final Act. 11.
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that are not the same as in the previous appeal. Id. Appellant points to no
difference between claim 17 and that which was considered in our previous
decision other than the recitation in claim 17 of process steps by which the
claimed material is made.
In rejecting claim 17, the Examiner finds Chaumonnot teaches or
renders obvious all of the recited material properties, but does not disclose
the recited process for its preparation. Final Act. 4–7. The Examiner cites
In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985) for the proposition that a
product-by-process type claim is properly rejected where the prior art
teaches or renders obvious the same product even though the prior art
product was made by a different process. Final Act. 4.
Appellant contends Chaumonnot’s disclosed process necessarily
would have yielded a product other than that which is claimed. Appeal Br.
4. Particularly, Appellant argues Chaumonnot discloses forming a material
from a colloid of separately prepared metal nanoparticles, whereas the claim
recites a process involving a metallic precursor dissolved in solution. Id.
Based on that distinction, Appellant argues “the size of the metal
nanoparticles in the resulting Chaumonnot material has to be significantly
greater than the size of the metallic nanoparticles in the claimed materials.”
Id. See also id. at 5 (“With the nanoparticles being prepared in advance and
not dissolved in a solution, the size of the metal nanoparticles in the
resulting Chaumonnot material must necessarily be significantly greater than
the size of the metallic nanoparticles in the claimed materials.”); Reply Br. 1
(stating that the main point made in the Appeal Brief is “that a product made
from a solution having the metallic precursor dissolved in solution (as
claimed) will necessarily have its resulting metallic nanoparticles smaller
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than those in a product made from a colloid having the metallic particles
prepared in advance and suspended in a colloid (Chaumonnot)”).
Appellant’s arguments are not persuasive for the reasons set forth in
the Examiner’s Answer. We add the following for emphasis.
Claim 17 recites, inter alia, “metallic nanoparticles having a
maximum dimension strictly less than 1 nm.” The Examiner finds
Chaumonnot discloses metallic nanoparticles having a diameter less than
300 nm, and finds Chaumonnot’s disclosed range overlaps and, therefore,
renders obvious Appellant’s recited range. Final Act. 5 (citing Chaumonnot
¶ 16).4
Appellant’s argument that Chaumonnot’s disclosed production
method necessarily would have yielded particles that are larger than particles
produced by the recited method does not reveal error in the Examiner’s
obviousness determination. The question raised in this appeal is whether the
prior art relied upon by the Examiner suggests metal nanoparticles smaller
than 1 nm. The Examiner presents sufficient evidence to support a finding
that Chaumonnot would have suggested metal nanoparticles smaller than 1
nm, albeit from a different process. Appellant’s contention that the recited
process produces smaller particles does not refute that finding. That is,
accepting Appellant’s contention that the recited process steps yield particles
smaller than those produced by Chaumonnot’s process does not require a
determination that Chaumonnot’s disclosed range of less than 300 nm would

4 We rejected Appellant’s argument in the previous appeal that Chaumonnot
discloses a range of 1 to 300 nm rather than a broader range of less than 300
nm. Decision on Appeal, dated December 21, 2017, 4. Appellant’s same
argument repeated here, see Appeal Br. 9–13, is rejected for the same
reasons.
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not have included particles smaller than 1 nm. Appellant’s further argument
that Chaumonnot fails to enable producing nanoparticles smaller than 1 nm
is conclusory and not supported by evidence. Appeal Br. 8.
For the foregoing reasons, the Examiner’s rejection of claims 17–30
as obvious over Chaumonnot is sustained.

Rejection II: obviousness over Chaumonnot and AAPA
With regard to Rejection II, Appellant relies on the same arguments
presented in connection with Rejection I. Appeal Br. 14. Accordingly, we
sustain the Examiner’s rejection of claims 17–30 as obvious over
Chaumonnot and AAPA for the reasons given above.
CONCLUSION
The Examiner’s decision rejecting claims 17–30 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–30 103(a) Chaumonnot 17–30
17–30 103(a) Chaumonnot,
AAPA
17–30
Overall
outcome
17–30

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