Chandler et al.v.Ariga et al.

Patent Trial and Appeal Board

Oct 5, 2016

13057911 (P.T.A.B. Oct. 5, 2016)

BoxInterferences@uspto.gov Entered: October 5, 2016
Tel: 571-272-7822

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Tosoh Corporation,
Junior Party
(Application 13/139,591,
Inventors: Ko Ariga and Hidekazu Aoyama),

v.

Johnson Matthey PLC,
Senior Party
(Application 13/057,911
Inventors: Guy Richard Chandler, Neil Robert Collins,
Rodney Foo Kok Shin, Alexander Nicholas Michael Green, Paul Richard Phillips,
Raj Rao Rajaram, and Stuart David Reid).

Patent Interference No. 106,028 (RES)
(Technology Center 1700)
_______________

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE and
DEBORAH KATZ, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.
Judgment - Motions - 37 CFR § 41.127
Contingent on the grant of its motion (Paper 38) to designate its Claims 2 1
and 3 as not corresponding to the Count, Tosoh filed a notice abandoning the 2
contest and requesting adverse judgment. Paper 39. We have granted that motion. 3
Paper 58. 4
2

Accordingly, it is 1
ORDERED that judgment on priority as to the subject matter of Count 1 2
(Paper 1, p. 3) is awarded against the junior party, Tosoh Corporation; 3
FURTHER ORDERED that Tosoh Corporation, and named inventors Ko 4
Ariga and Hidekazu Aoyama, are not entitled to a patent on the subject matter of 5
Count 1 and Claim 1 of Application 13/139,591 (see Redeclaration, Paper 59); 6
FURTHER ORDERED that Claim 1 of Application 13/139,591, 7
corresponding to Count 1, is finally refused (35 U.S.C. § 135(a) (2006)); 8
FURTHER ORDERED that a copy of this judgment be made of record in 9
the files of Application 13/139,591 and Application 13/057,911; 10
FURTHER ORDERED that if there is any settlement agreement or related 11
documents which have not been filed, attention is directed to 35 U.S.C. § 135(c) 12
(2006) and 37 CFR § 41.205; and 13
FURTHER ORDERED that if a party seeks judicial review, the party must 14
file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of initiating 15
judicial review. 16
We also direct the parties’ attention to Biogen Idec MA, Inc., v. Japanese 17
Foundation for Cancer Research, 758 F.3d 647 (Fed. Cir. 2015) cert. denied 2016 18
WL 1078942 (March 21, 2016). . 19

3

cc (electronic delivery):

Counsel for Tosoh
Steven B. Kelber, Esq.
Marc R. Labgold, Esq.
LAW OFFICES OF MARC R. LABGOLD, P.C.
12005 Sunrise Valley Dr.
Suite 203
Reston, VA 20191
Tel: (240) 506-6702
Fax: (877) 401-8855
skelber@labgoldlaw.com
mlabgold@labgoldlaw.com

Counsel for Johnson Matthey
Todd R. Walters, Esq.
BUCHANAN INGERSOLL & ROONEY PC
1737 King Street, Suite 500
Alexandria, VA 22314-2727
Telephone (703) 836-6620
Facsimile (703) 836-2021
todd.walters@bipc.com

Travis W. Bliss, Esq.
BUCHANAN INGERSOLL & ROONEY PC
919 North Market Street, Suite 1500
Wilmington, DE 19801
Telephone (302) 552-4200
Facsimile (302) 552-4295
travis.bliss@bipc.com

BoxInterferences@uspto.gov Entered: October 5, 2016
Tel: 571-272-7822

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Tosoh Corporation,
Junior Party
(Application 13/139,591,
Inventors: Ko Ariga and Hidekazu Aoyama),

v.

Johnson Matthey PLC,
Senior Party
(Application 13/057,911
Inventors: Guy Richard Chandler, Neil Robert Collins,
Rodney Foo Kok Shin, Alexander Nicholas Michael Green, Paul Richard Phillips,
Raj Rao Rajaram, and Stuart David Reid).

Patent Interference No. 106,028 (RES)
(Technology Center 1700)
_______________

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE and
DEBORAH KATZ, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.
Decision - Motions - 37 CFR § 41.125(a) 1
This interference is between Tosoh Corporation’s (Tosoh) Application 2
13/139,591 and Johnson Matthey (JM) Application 13/057,911. Tosoh moves to 3
designate its Claims 2 and 3 as not corresponding to the Count. We grant the 4
motion. 5
2

I. 1
The parties’ claimed subject matter relates to zeolites. Zeloites are 2
crystalline aluminosilicate minerals conventionally used as catalysts, absorbents 3
and molecular sieves. Zeolite exists in a number of crystal morphologies. The 4
parties subject matter relates to zeolites of one of the morphologies—chabazite or 5
CHA. Specifically, the parties’ chabazite zeolites have a crystallite size of 1.5 μm 6
or larger. 7
The parties’ subject matter is represented by Count 1: 8
A chabazite-type zeolite characterized by having an SiO2/Al2O3 9
molar ratio of 15-50 and an average crystal particle diameter of 10
1.50 μm – 15.0 μm. 11
Declaration, Paper 1, p. 3. 12
II. 13
Tosoh moves to designate its Claims 2 and 3 as not corresponding to the 14
Count. Tosho Motion 1, Paper 38. The motion is unopposed by JM. Paper 56. 15
Toshoh’s Claims 2 and 3 are dependent and depend from Claim 1. The 16
latter claim states: 17
1. A chabazite-type zeolite characterized by having an 18
SiO2/Al2O3 molar ratio of 15-50 and an average crystal 19
particle diameter of 1.5 μm or more. 20
Tosoh Clean Copy of Claims, Paper 7, p. 3. Tosoh’s Claim 2 provides: 21
2. A process for producing the chabazite-type zeolite as claimed 22
in claim 1, wherein a starting-material composition in which the 23
molar ratios of a structure-directing agent and water to SiO2 24
satisfy 25
0.05≤(structure-directing agent)/SiO2<0.13 and 26
5≤H2O/SiO2<30 27
is crystallized in the presence of at least one alkali metal ion 28
selected from the group consisting of K, Rb, and Cs, and 29
wherein the structure-directing agent comprises at least one 30
member selected from the group consisting of the hydroxides, 31
3

halides, carbonates, methyl carbonates, and sulfates which each 1
include an N,N,N-trialkyladamantylammonium as a cation and 2
of the hydroxides, halides, carbonates, methyl carbonate salts, 3
and sulfates which each include an N,N,N-4
trimethylbenzylammonium ion, an N-alkyl-3-quinuclidinol ion, 5
or an N,N,N-trialkyl-exo-aminonorbornane as a cation. 6
Tosoh Clean Copy of Claims, Paper 7, p. 3. Claim 3 depends from Claim 2 and 7
further limits the class of N,N,N-trimalkyladamantylammonium structure directing 8
agents. 9
III. 10
Tosoh argues that the crystal particle diameter is a critical performance 11
characteristic of the chabazite. Tosoh Motion 1, Paper 38, p. 8. Obtaining this 12
critical performance characteristic is said to be an unpredictable and unexpected 13
result of the process of claims 2 and 3. Tosoh Motion 1, Paper 38, pp. 11-12. 14
Adherence to the specific starting materials recited in Claims 2 and 3 is said to be 15
critical to achieving these characteristics: “The non-obviousness of Claim 2 is 16
reflected in the process limitations that must be observed to achieve the SiO2/Al2O3 17
molar ratio of 15-50 and the average crystal particle diameter of 1.5 μm or more . . 18
. .” Tosoh Motion 1, Paper 38, p. 7. The specified ratio of the structure-directing 19
agent to SiO2, the specified ratio of H2O to SiO2 and the particular alkali metal ion 20
of Claims 2 and 3 are said to work together and are necessary to obtain the critical 21
crystal particle size of 1.5 µm or larger. Tosoh Motion 1, Paper 38, p. 9. 22
For support, Tosoh directs us to the testimony of one of its inventors, Ko 23
Ariga, and Examples 1-8 and Comparative Examples 1-6 from its specification. 24
Tosoh Motion 1, Paper 38, pp. 7-8. Ariga testifies that these examples report 25
actual preparations of chabazite crystals. Ex. 2015, ¶ 6. He also testifies that as 26
shown by the examples, the starting materials specified in the claims are important 27
in obtaining a chazbazite having the critical particle size and the required 28
4

SiO2/Al2O3 ratio. Ex. 2015, ¶ 6. Ariga further testifies that based upon the 1
comparative examples in Tosoh’s specification, “varying one or more of the 2
specific requirements of Claim 2” results in a chabazite that does not have the 3
required SiO2/Al2O3 molar ratio of 15-50 and an average crystal particle diameter 4
of 1.5mu or more. Ex. 2015, ¶¶ 6-7. Ariga also refers to other references that 5
demonstrate that deviating from the starting materials of Claims 2 and 3 results in a 6
chabazite that does not meet the required SiO2/Al2O3 ratio and crystal particle 7
diameter. Ex. 2015, ¶¶ 8-11. In Ariga’s view, the invention represented by Claims 8
2 and 3 was unpredictable and could not be arrived at by one having ordinary skill 9
in the art from the subject matter of Count 1. Ex. 2015, ¶ 12. . 10
Based on the evidence presented in this case, we are convinced that the 11
process of Tosoh’s Claims 2 and 3 unexpectedly provides a chabazite having the 12
required average crystal particle diameter of 1.5 µm or greater and an SiO2/Al2O3 13
molar ratio of 15-50. The process of Claims 2 and 3 would not be obvious to a 14
person having ordinary skill in the art. 15
We grant Tosoh’s Substantive Motion 1. 16
ORDER 17
Tosoh’s Substantive Motion 1 (Paper 38) is Granted. 18
This interference will be redeclared in a separate paper. 19
20
5

cc (electronic delivery):

Counsel for Tosoh
Steven B. Kelber, Esq.
Marc R. Labgold, Esq.
Law Offices of Marc R. Labgold, P.C.
12005 Sunrise Valley Dr.
Suite 203
Reston, VA 20191
Tel: (240) 506-6702
Fax: (877) 401-8855
skelber@labgoldlaw.com
mlabgold@labgoldlaw.com

Counsel for Johnson Matthey
Todd R. Walters, Esq.
Buchanan Ingersoll & Rooney Pc
1737 King Street, Suite 500
Alexandria, VA 22314-2727
Telephone (703) 836-6620
Facsimile (703) 836-2021
todd.walters@bipc.com

Travis W. Bliss, Esq.
Buchanan Ingersoll & Rooney PC
919 North Market Street, Suite 1500
Wilmington, DE 19801
Telephone (302) 552-4200
Facsimile (302) 552-4295
travis.bliss@bipc.com