Ex Parte Burba et al

Patent Trial and Appeal BoardApr 26, 2016

11931616 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111931,616 22442 7590 Sheridan Ross PC 1560 Broadway Suite 1200 Denver, CO 80202 FILING DATE FIRST NAMED INVENTOR 10/31/2007 John L. Burba III 04/28/2016 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 6062-27 1413 EXAMINER MENON, KRISHNAN S ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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): e-docket@sheridanross.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN L. BURBA III and TIM L. ORIARD1 Appeal2014-007213 Application 11/931,616 Technology Center 1700 Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 68-77, 79-85, 87-91, 94--98, 101, 103, 104, 106--- 108, 110, 111, and 115-122.2 We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. 1 Molycorp Minerals, LLC is identified as the real party in interest. App. Br. 2. 2 Appellants incorrectly represent claims 78 and 112 as pending by including these claims in the Claims Appendix of the Appeal Brief (Amended Appeal Brief filed 11March2014 (App. Br.) 26, 30). In fact, claims 78 and 112 were canceled via an amendment filed 8 August 2013. Appeal2014-007213 Application 11/931,616 Appellants claim a method of contacting an aqueous solution comprising an active biological contaminant with an aggregate composition comprising cerium oxide (Ce02) and another rare earth compound, wherein the contacting kills the active biological contaminant (independent claims 68, 94, and 103). In more specific embodiments, the method requires that each of the cerium oxide and the other rare earth compound kill the active biological contaminant or that each has a bacteriostatic and/or antimicrobial effect (see, e.g., dependent claims 104 and 108). A copy of representative claims 68, 103, 104, and 108, taken from the Claims Appendix of the Appeal Brief, appears below. 68. A method, comprising: contacting an aqueous solution comprising an active biological contaminant with an aggregate composition comprising cerium (IV) oxide (Ce02) and another rare earth compound, wherein the contacting of the aggregate composition with the aqueous solution kills the active biological contaminant to form a treated aqueous solution substantially depleted of the active biological contaminant, wherein: the biological contaminant is one or more of bacteria, fungi, protozoa, and algae; the aggregate composition [is] in the form of an extruded flowable particulate, granule, bead, pellet, powder, or fiber comprising a polymeric binder and at least about 75% by weight cerium (IV) oxide-containing particles; the extruded aggregated particulates have an average surface area of at least about 70 m2/g; and the extruded aggregated particulates have a mean aggregate size of at least about 25 Âµm. 103. A method, comprising: receiving an aqueous solution comprising an active biological contaminant; and contacting the aqueous solution with an aggregate comprising cerium (IV) oxide (Ce02) and a rare earth- 2 Appeal2014-007213 Application 11/931,616 containing compound other than cerium, the cerium (IV) oxide being insoluble in the aqueous solution and the other rare earth- containing compound being soluble in the aqueous solution, the cerium in the cerium (IV) oxide and the rare earth in the other rare earth-containing compound having differing oxidation states, to kill the active biological contaminant and provide a solution substantially depleted of the active biological contaminant, wherein the biological contaminant is one or more of bacteria, fungi, protozoa, and algae. 104. The method of claim 103, wherein each of the cerium (IV) oxide and the other rare earth-containing compound kill[ s] the active biological contaminant and wherein the other rare earth-containing compound is selected from the group consisting of compounds of lanthanum, praseodymium, neodymium, promethium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, or lutetium, and mixtures thereof. 108. The method of claim 103, wherein each of the cerium (IV) oxide and the other rare earth-containing compound has a bacteriostatic and/or antimicrobial effect. Under 35 U.S.C. Â§ 112, 2nd ,-r, the Examiner rejects independent claim 68 and the claims which depend therefrom (i.e., claims 69-77, 79-85, 87- 91, 115, 118, 121, and 122) as indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as their invention. Under 35 U.S.C. Â§ 103(a), the Examiner rejects all appealed claims as unpatentable over Koper (US 6,653,519 B2, issued Nov. 25, 2003) in view of Johnston (US 6,180,016 Bl, issued Jan. 30, 2001), Witham (US 6,863,825 B2, issued Mar. 8, 2005), and Mills (US 6,146,539, issued Nov. 14, 2000). 3 Appeal2014-007213 Application 11/931,616 The Â§ 112, 2nd iJ, Rejection Paragraph 2 ofÂ§ 112 requires "patent claims, viewed in light of the specification and prosecution history, [to] inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, *2129 (2014). The Examiner determines that the rejected claims are rendered indefinite by the claim 68 recitation "the aggregate composition in the form of an extruded flowable particulate, granule, bead, pellet, powder, or fiber comprising a polymeric binder and at least about 75% by weight cerium (IV) oxide-containing particles" and by the undisputed fact that the claim 68 phrase "the extruded aggregated particulates" lacks antecedent basis (Final Action 2-3). In the Answer, the Examiner explains that the above quoted claim recitation lacks clarity because it differs from the Specification disclosure "[t]he aggregate composition can comprise aggregated particulates in granule, bead, powder, fiber or similar form" (Spec. 18:28- 29) (Ans. 3). According to the Examiner, this difference creates ambiguity as to the relationship between the recited "extruded flowable particulates" of claim 68 and the subsequently recited "granule, bead, pellet, powder, or fiber" as well as the subsequent phrase "the extruded aggregated particulates" (id. at 3--4). The Examiner's above position has merit. The Specification discloses a relationship wherein the aggregated particulates are in the form of a granule, bead, powder, fiber or similar form. However, claim 68 inconsistently defines "the aggregate composition in the form of an extruded flowable particulate" whose relationship to the "granule" and other above mentioned limitations is ambiguous. This ambiguity arises because Appellants have drafted claim 68 in a manner which is not consistent with 4 Appeal2014-007213 Application 11/931,616 their Specification disclosure such that the claim, when read in light of this disclosure, appears to take on an unreasonable degree of uncertainty. See In re Moore, 439 F.2d 1232, 1235 n. 2 (CCPA 1971) ("[C]laims which on first reading ... appear indefinite may upon a reading of the specification disclosure or prior art teachings become quite definite[, and] ... this rule also applies in the reverse, making an otherwise definite claim take on an unreasonable degree of uncertainty."). "Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied toÂ§ 112(b), for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). Appellants' responses to the rejection do not clarify the ambiguity discussed above. For example, in the Appeal Brief, Appellants argue that the claim terms identified by the Examiner "do not cause claim 68 to be insolubly ambiguous" (App. Br. 12). As indicated previously and as seemingly recognized in the Reply Brief (Reply Br. 2), "insolubly ambiguous" is not the test for whether a claim is indefinite. Appellants also argue that "one of ordinary skill in the art would understand that an 'aggregate' can be in any of the associated forms granule, bead, pellet, powder, or fiber" (id. at 4) but do not explain how these forms are related to the claim recitation "an extruded flowable particulate." Similarly, Appellants agree with the Examiner that the claim 68 limitation "the extruded aggregated particulates" lacks antecedent basis (id. at 5) but contend that "[t]his ... does not mean that the claim ... fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention" (id.). The deficiency of this contention is that Appellants do not offer any 5 Appeal2014-007213 Application 11/931,616 explanation of the relationship between this limitation lacking antecedent basis and the earlier recited limitations "an extruded flowable particulate, granule, bead, pellet, powder, or fiber." Under these circumstances, the record of this appeal supports a determination that claim 68 and the claims which depend therefrom, when read in light of the Specification, fail to inform those skilled in the art about the scope of the invention with reasonable certainty. We sustain, therefore, theÂ§ 112, 2nd ,-r, rejection of claims 68-77, 79-85, 87-91, 115, 118, 121, and 122. TheÂ§ 103 Rejection3 We will sustain this rejection for the reasons given by the Examiner and below. The Examiner concludes that it would have been obvious to provide Koper's aggregate composition of cerium (IV) oxide pellets for killing an active biological contaminant such as E. coli in water with another rare earth compound such as lanthanum oxide for removing arsenic from water as taught by Witham or lanthanum chloride for removing algae-growing nutrients from water as taught by Mills (Final Action 4---6, Ans. 6). Appellants present a number of arguments and exhibits for the proposition that the applied references contain no teaching or suggestion of a 3 For the purpose of evaluating theÂ§ 103 rejection, we will consider the aggregate composition of claim 68 to be in the form of flowable extruded aggregated particulates (e.g., in the form of flowable extruded pellets) comprising a polymeric binder, at least about 75% by weight cerium (IV) oxide-containing particles, and another rare earth compound. 6 Appeal2014-007213 Application 11/931,616 non-cerium rare earth compound for killing an active biological contaminant (see, e.g., App. Br. 14--22). These arguments and exhibits are not applicable to the claims, such as the independent claims, that do not require the other non-cerium rare earth compound to be capable of killing an active biological contaminant (cf independent claim 103 which contains no such requirement with its dependent claims 104 and 108 which expressly recite the requirement; see also Spec. 8: 1-5 which explains that killing microorganisms is only one of several mechanisms for removing or deactivating the microorganisms). Moreover, the arguments and exhibits lack persuasive merit even for claims, such as claims 104 and 108, which require the non-cerium rare earth compound to be capable of killing an active biological contaminant, for example, via a bacteriostatic effect. These claims are satisfied by the lanthanum chloride taught by Mills as evinced by Appellants' admission that lanthanum chloride was known in the prior art to possess bacteriostatic activity (Spec. 11: 16-20). Therefore, the Examiner's combination of Koper's cerium oxide and Mills' lanthanum chloride necessarily would have resulted in a composition in which the lanthanum chloride inherently possesses the claimed bacteriostatic effect. See Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014) ("[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis-the limitation at issue necessarily must be present, 7 Appeal2014-007213 Application 11/931,616 or the natural result of the combination of elements explicitly disclosed by the prior art."). 4 In summary, Appellants fail to show error in the Examiner's conclusion that it would have been obvious to combine Koper' s cerium oxide with the lanthanum compounds of Witham or Mills to obtain the established functions of these lanthanum compounds in accordance with the Witham or Mills teachings, thereby resulting in compositions corresponding to those defined by the appealed claims. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (in assessing the obviousness of claims to a combination of prior art elements, the question to be asked is "whether the improvement is more than the predictable use of prior art elements according to their established functions"). Regarding the claim 68 feature of an aggregate composition in an extruded form comprising polymeric binder, the Examiner concludes that it would have been obvious to form Koper's pellets of cerium oxide and binder, as modified by the lanthanum compounds of Witham or iviills, by extruding the cerium and lanthanum compounds with polymeric binder in view of Johnston (Final Action 4). Appellants concede that Johnston's microbiological water filter is formed by extrusion using polymeric binder (App. Br. 23) but argue that Johnston "does not teach extruded pellets, much less extruded pellets comprising cerium (IV) oxide (Ce02)" (id.). 4 This legal authority reveals error in Appellants' apparent view that obviousness and inherency are incompatible (Reply Br. 9-10). 8 Appeal2014-007213 Application 11/931,616 Appellants' argument is not persuasive because it attacks Johnston individually rather than the combination of references applied by the Examiner. See In re Merck & Co., Inc., 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 their Reply Brief, Appellants argue that Johnston teaches away from an aggregate composition in any of the forms recited by claim 68 (Reply Br. 14--15). This argument could have been, but was not, raised in the Appeal Brief. Further, Appellants have not shown good cause for considering this new argument. As a consequence, the argument in question will not be considered by this panel of the Board for purposes of the present appeal. 37 CPRÂ§ 41.41(b)(2). For the reasons expressed above as well as in the Final Action and Answer, we sustain the Examiner Â§ 103 rejection of all appealed claims. Conclusion The decision of the Examiner is affirmed. TIME PERIOD No time period for taking any subsequent action in connect with this appeal may be extended under 35 C.F.R. Â§ 1.136(a). AFFIRMED 9