Chandler et al.v.Ariga et al.Download PDFPatent Trial and Appeal BoardOct 5, 201613057911 (P.T.A.B. Oct. 5, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation