Christian Bischof et al.

Patent Trials and Appeals Board

Jan 28, 2020

13906108 - (D) (P.T.A.B. Jan. 28, 2020)

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.
13/906,108 05/30/2013 Christian Bischof SP13-156 8748
22928 7590 01/28/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
DAVIS, SHENG HAN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN BISCHOF, THORSTEN ROLF BOGER,
GREGORY ALBERT MERKEL, ZHEN SONG,
CAMERON WAYNE TANNER, PATRICK DAVID TEPESCH, and
ELIZABETH MARIE VILENO
____________

Appeal 2019-002949
Application 13/906,108
Technology Center 1700
____________

Before JULIA HEANEY, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–7 and 38–42.2 We have
jurisdiction over this appeal 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 Corning Incorporated as the real party in
interest. Appeal Brief filed October 2, 2017 (“Appeal Br.”) at 2.
2 Claims 8–32 are withdrawn from consideration. Final Office Action
entered May 3, 2017 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal, and is reproduced
below with contested subject matter italicized:
1. A formed ceramic substrate comprising
an aluminum titanate phase comprising at least 75% by
weight Al2TiO5,
wherein said formed ceramic substrate comprises an
elemental sodium content of less than about 1200 ppm,
and has a porosity of at least about 55%.

Appeal Br. 15 (Claims Appendix) (emphasis and spacing added).
REJECTION
The Examiner maintains the rejection of claims 1–7 and 38–42 under
35 U.S.C. § 103 as unpatentable over Beutel3 in view of Merkel4 and
Voskoboynikov5 in the Examiner’s Answer entered February 6, 2018
(“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions,6 we affirm the Examiner’s rejection of
claims 1–7 and 38–42 under 35 U.S.C. § 103, for the reasons set forth in the
Final Action, the Answer, and below.

3 Beutel et al., US 2011/0165051 A1, published July 7, 2011.
4 Merkel et al., US 2010/0237007 A1, published September 23, 2010.
5 Voskoboynikov et al., US 2007/0004953 A1, published January 4, 2007.
6 Although Appellant “requests an Examiner’s amendment” to correct an
asserted error in Appellant’s Specification, we note that this matter is not
within our jurisdiction to review. Appeal Br. 8. Because the Examiner does
not indicate in the Answer that the Examiner entered the requested
amendment to the Specification (Ans. 3–7), we do not reconsider “all of the
rejections taking this into account” as Appellant requests. Appeal Br. 9.
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We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to the subject matter of claim 1
only, to which we accordingly limit our discussion. Appeal Br. 8–13; 37
C.F.R. § 41.37(c)(1)(iv).
Beutel teaches disposing a chabazite (zeolite) catalyst on a substrate.
Beutel ¶¶ 3, 93. Beutel teaches that “[t]he substrate may be any of those
materials typically used for preparing catalysts,” such as a ceramic substrate
having a honeycomb structure. Beutel ¶¶ 94. The Examiner finds that
“Beutel does not teach that the substrate must contain aluminum titanate,”
and relies on Merkel for suggesting use of a substrate comprising an
aluminum titanate phase for Beutel’s catalyst. Final Act. 3.
Merkel discloses that aluminum titanate is one of the few materials
used in catalytic converter substrates and diesel particulate filters that can be
made with low thermal expansion and high volumetric heat capacity.
Merkel ¶ 5. Merkel discloses a composite ceramic body having a
honeycomb structure (substrate) used as a diesel particulate filter comprising
a first crystalline phase comprised predominantly of a solid solution of
aluminum titanate and magnesium dititanate (MgTi2O5–Al2TiO5), and a
second crystalline phase comprising cordierite (Mg2Al4Si5O18). Merkel ¶¶
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11, 14, 20, 32. Merkel discloses that the aluminum titanate and magnesium
dititanate phase preferably exhibits a pseudobrookite crystal structure, and
“in one embodiment, the composition of the pseudobrookite phase
comprises from approximately 20% to 35% MgTi2O5 [magnesium
dititanate] by weight.” Merkel ¶ 21.
The Examiner determines that because Merkel discloses that the first
crystalline phase is comprised predominantly of a solid solution of
aluminum titanate and magnesium dititanate and preferably exhibits a
pseudobrookite crystal structure, and because Merkel does not provide any
disclosure or suggestion of including compounds other than aluminum
titanate and magnesium dititanate in the first crystalline (pseudobrookite)
phase, Merkel’s disclosure that the pseudobrookite phase comprises from
approximately 20% to 35% MgTi2O5 would have suggested that the first
pseudobrookite phase includes 65% to 80% aluminum titanate. Ans. 6.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art before the effective filing date of the present
application to use Merkel’s composite ceramic body including aluminum
titanate as the substrate for Beutel’s catalyst, in view of Merkel’s disclosure
that aluminum titanate is one of the few materials that has low thermal
expansion and high volumetric heat capacity. Final Act. 3.
The Examiner finds that although “[n]either Beutel nor Merkel
teaches that the substrate has a low sodium content,” Beutel discloses that
“sodium contamination is known to degrade the zeolite structure of such
catalysts under hydrothermal aging, and the alkali metal content is
preferably less than 100 ppm.” Final Act. 3 (citing Beutel ¶ 9). The
Examiner also finds that “Voskoboynikov teaches that contaminants such as
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alkali metal in refractory materials such as catalyst supports can poison the
catalyst and should be eliminated.” Final Act. 3 (citing Voskoboynikov ¶¶
6, 8).
In view of these disclosures in Beutel and Voskoboynikov, the
Examiner further concludes that it would have been obvious to one of
ordinary skill in the art before the effective filing date of the present
application “to reduce the sodium content of the substrate as much as
possible, including to values below 100 ppm, in order to avoid poisoning the
catalyst.” Final Act. 4.
Appellant argues that “Voskoboynikov neither teaches nor suggests a
composition comprising aluminum titanate,” and “the skilled artisan would
not turn to Voskoboynikov in order to arrive at the claimed invention”
because Voskoboynikov discloses substrates made of
silicoaluminophosphate (SAPO), and “phosphorus acts as a poison to
catalyst materials.” Appeal Br. 9.
Appellant’s arguments, however, do not address the basis for the
Examiner’s reliance on Voskoboynikov, and are improperly based on
Voskoboynikov alone, without taking into consideration what the combined
disclosures of all of the applied prior art references would have suggested to
one of ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
As discussed above, the Examiner’s reliance on Voskoboynikov is
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limited to Voskoboynikov’s disclosure that contaminants such as alkali
metals in catalyst supports can poison the catalyst and should be eliminated.
As the Examiner finds, and discussed below, Merkel would have suggested
forming a ceramic honeycomb catalyst substrate as disclosed in Beutel from
a composition having a first crystalline phase including 75% by weight
aluminum titanate as recited in claim 1. Beutel’s disclosure that sodium
contamination degrades zeolite catalysts under hydrothermal aging, and
Voskoboynikov’s disclosure that alkali metal contaminants in catalyst
supports can poison the catalyst, would have led one of ordinary skill in the
art to limit, to the greatest extent possible, the amount of sodium present in
Beutel’s catalyst support formed using Merkel’s aluminum titanate
composition, such as limiting the elemental sodium content in the substrate
to less than about 1200 ppm, as recited in claim 1. In re Boesch, 617 F.2d
272, 276 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable . . . is ordinarily within the skill of the art.”); In re Aller,
220 F.2d 454, 456 (CCPA 1955)(“[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
Appellant argues that Merkel’s disclosure that the pseudobrookite
phase is comprised “predominantly of” an Al2TiO5–MgTi2O5 solid solution
indicates that other components may be included in the pseudobrookite
phase, and Merkel’s disclosure of a pseudobrookite phase comprising
approximately 20% to 35% MgTi2O5, therefore, “is not dispositive to
whether or not it contains 65–80% Al2TiO5, as asserted by the Examiner.”
Appeal Br. 10–11. Appellant argues that because Merkel suggests that other
components may be present in the pseudobrookite phase, an aluminum
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titanate phase containing 65–80% Al2TiO5 “does not necessarily flow” from
Merkel’s disclosure that the pseudobrookite phase comprises from
approximately 20% to 35% MgTi2O5. Appeal Br. 11. Appellant argues that,
therefore, “Merkel does not teach or fairly suggest a formed ceramic
substrate comprising an aluminum titanate phase comprising at least 75% by
weight Al2TiO5.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for the following reasons.
As the Examiner finds and discussed above, Merkel discloses a
composite ceramic body comprising a first crystalline phase comprised
predominantly of aluminum titanate and magnesium dititanate (MgTi2O5–
Al2TiO5), and a second crystalline phase comprising cordierite
(Mg2Al4Si5O18). As the Examiner finds in the Answer (Ans. 6–7), Merkel
discloses that the weight fraction of aluminum titanate (Al2TiO5) in the
ceramic body may be from 0.3 to 0.75 (30% to 75% by weight), the weight
fraction of magnesium dititanate (MgTi2O5) in the ceramic body may be
from 0.075 to 0.3 (7.5% to 30% by weight), the weight fraction of cordierite
(Mg2Al4Si5O18) in the ceramic body may be from 0.02 to 0.5 (2% to 50% by
weight), and the weight fraction of certain other additional oxides in the
ceramic body may be zero—indicating that inclusion of the additional
oxides is optional. Merkel ¶ 20 (disclosing embodiments in which “the
compositions of the ceramic bodies of the invention are expressed in terms
of weight fractions of oxides and oxide combinations to comprise, on an
oxide basis, a(Al2TiO5)+b(MgTi2O5)+c(2MgO.2Al2O3.5SiO2)[or
(Mg2Al4Si5O18)]
+d(3Al2O3.2SiO2)+e(MgO.Al2O3)+f(2MgO.TiO2)+g(Y2O3)+h(La2O3)+i(Fe2
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O3.TiO2)+j(TiO2), wherein a, b, c, d, e, f, g, h, i, and j are weight fractions of
each component such that (a+b+d+e+f+g+h+i+j)=l.00. To that end, the
weight fraction of each component can be in the respective ranges as
follows: 0.3≤a≤0.75, 0.075≤b≤0.3, 0.02≤c≤0.5,” and d, e, f, g, h, i, and j may
each be zero).
Thus, although Merkel does disclose that the first crystalline phase is
comprised predominantly of a solid solution of aluminum titanate and
magnesium dititanate, Merkel nonetheless also explicitly discloses a ceramic
body that includes only aluminum titanate, magnesium dititanate, and
cordierite, by disclosing that the inclusion of additional oxide components in
the ceramic body is optional.
Contrary to Appellant’s arguments, when considered together, the
above disclosures in Merkel reasonably would have suggested a ceramic
body including a first crystalline phase comprised of 30% to 75% by weight
aluminum titanate and 7.5% to 30% by weight magnesium dititanate, and a
second crystalline phase comprising 2% to 50% by weight cordierite. The
overlap between the weight percentage of aluminum titanate in the first
crystalline phase suggested by Merkel (30% to 75%) and the weight
percentage of aluminum titanate in the aluminum titanate phase recited in
claim 1 (“at least 75% by weight Al2TiO5”) renders the recited range prima
facie obvious. In re Peterson, 315 F.3d 1325, 1329–330 (Fed. Cir. 2003)
(“In cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness . . . .”).
The burden, therefore, shifts to Appellant to show the criticality of the
aluminum titanate weight percentage range recited in claim 1. In re
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Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in
which the difference between the claimed invention and the prior art is some
range or other variable within the claims, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.).
On the record before us, Appellant does not meet this burden because
Appellant does not direct us to any persuasive reasoning or evidence
demonstrating that the aluminum titanate weight percentage range recited in
claim 1 is critical. Nor does Appellant direct us to any showing—such as
experimental data—establishing that the recited aluminum titanate weight
percentage rang achieves results that would have been unexpected by one of
ordinary skill in the art at the time of Appellant’s invention relative to the
closest prior art.
Appellant argues that “Merkel actually teaches away from the use of
at least 75% by weight Al2TiO5 as recited in claim 1” because Merkel
discloses that “‘[a]luminum titanate (AT) and composites containing large
fractions of aluminum titanate have several disadvantages’ including, among
other things, metastability below about 1200°C, the relationship between the
thermal stability and grain size, the formation of microcracks, and high
thermal cycling growth.” Appeal Br. 12 (quoting Merkel ¶ 6). Appellant
argues that because Merkel teaches away from using “large fractions of
aluminum titanate,” one of ordinary skill in the art would not have been led
to use an aluminum titanate phase including at least 75% by weight Al2TiO5
to arrive at the claimed invention. Appeal Br. 12.
Appellant’s arguments, again, do not identify reversible error in the
Examiner’s rejection.
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The paragraph of Merkel cited by Appellant as disclosing “several
disadvantages” of aluminum titanate, and composites containing large
fractions of aluminum titanate (paragraph 6), is part of the “Technical
Background” of Merkel, and must be considered together with the entirety
of the remaining disclosures in the reference. The preceding paragraph of
the reference describes advantages of aluminum titantate, indicating that
“[a]luminum titanate is one of the few materials that can be made with low
thermal expansion and also has higher volumetric heat capacity than
cordierite.” Merkel ¶ 5. In the following paragraph, quoted by Appellant,
Merkel explains that “pure aluminum titanate” and composites containing
“large fractions” of aluminum titanate “have several disadvantages.” Merkel
¶ 6. The reference, however, does not provide any indication, numerical or
otherwise, of what constitutes a “large” fraction of aluminum titanate. Id.
The following two paragraphs of Merkel explain that including
additives—such as MgTi2O5—with aluminum titanate, and including a
second phase, in addition to the aluminum titanate phase, addresses many of
the described disadvantages of “pure aluminum titanate,” and composites
containing “large fractions” of aluminum titanate. Merkel ¶¶ 7, 8. Merkel
then describes the composite ceramic composition of Merkel’s invention,
which, as discussed above, Merkel discloses may include 30% to 75% by
weight aluminum titanate. Merkel ¶¶ 10, 20.
Thus, rather than teaching away from “the use of at least 75% by
weight Al2TiO5 as recited in claim 1” as Appellant argues, Merkel explicitly
teaches using 75% by weight aluminum titanate in a first phase of a
composition used to form a composite ceramic body, to address the
disadvantages of pure aluminum titanate, and composites containing large
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fractions of aluminum titanate. One of ordinary skill in the art seeking to
produce a ceramic honeycomb substrate as disclosed in Beutel, therefore,
reasonably would have been led to use Merkel’s composition including 75%
by weight aluminum titanate to form the substrate, in view of Merkel’s
disclosure of forming a ceramic body having a honeycomb structure from
the composition, and disclosure that aluminum titanate advantageously
provides low thermal expansion and high volumetric heat capacity. Merkel
¶¶ 5, 32.
We, accordingly, sustain the Examiner’s rejection of claims 1–7 and
38–42 under 35 U.S.C. § 103.

CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 38–42 103 Beutel, Merkel,
Voskoboynikov
1–7,
38–42

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