Ex Parte Kiener et al

Patent Trial and Appeal BoardDec 5, 2012

12297666 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/297,666 10/29/2008 Christoph Kiener 13156*205 (PF59045/TE) 1673 23416 7590 12/06/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER JONES, CHRISTOPHER P ART UNIT PAPER NUMBER 1776 MAIL DATE DELIVERY MODE 12/06/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPH KIENER, ULRICH MULLER, and MARKUS SCHUBERT ____________ Appeal 2011-011479 Application 12/297,666 Technology Center 1700 ____________ Before TERRY J. OWENS, LINDA M. GAUDETTE, and JAMES C. HOUSEL, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 17-19, 21, and 32-36 under 35 U.S.C. § 103(a), as obvious over Mueller (US 2006/0210458 A1, published Sep. 21, 2006).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Final Office Action mailed Aug. 11, 2010. 2 Appeal Brief filed Mar. 14, 2011(“Br.”) Appeal 2011-011479 Application 12/297,666 2 Claim 17 is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 17. A porous metal organic framework comprising A1III ions and fumarate ions, wherein the A1III ion and the fumarate ions are coordinated in a framework structure, wherein the framework is present as a powder and has a specific surface area of at least 1000 m2/g, determined according to the Langmuir method by N2 adsorption at 77 K. According to Appellants, they “have surprisingly discovered that the claimed porous metal organic frameworks comprised of aluminum (III) ions and fumarate ions exhibit a one-dimensional channel structure with a surprisingly high surface area particularly useful for storage and separation of gases.” (Br. 3 (citing Spec.3 2:1-7).) The Examiner relies on the following disclosure in Mueller in support of the obviousness determination (Ans.4 3-7), concluding that while Mueller does not explicitly disclose the exact combination of AlIII ions and fumarate ions . . ., it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine AlIII ions and fumarate ions to create a porous metal organic framework since the selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness . . .[, and both] AlIII and fumarate ions are listed in Mueller as ions that can be used to create a porous metal organic framework (id. at 3-4): Mueller discloses a “porous metal-organic framework [(“MOF”)] compris[ing] at least one . . . bidentate organic compound having a coordinate bond to at least one metal ion.” (¶[0020].) “The term ‘at least bidentate organic compound’ refers to an organic compound which comprises at least one 3 Specification filed Oct. 20, 2008 4 Examiner’s Answer mailed Apr. 20, 2011. Appeal 2011-011479 Application 12/297,666 3 functional group which is capable of forming at least two bonds, preferably two coordinate bonds, to a given metal ion and/or one coordinate bond to two or more, preferably two, metal atoms.” (¶[0025].) Preferably, “the organic compounds . . . are derived from a saturated or unsaturated aliphatic compound or an aromatic compound or a compound which is both aliphatic and aromatic.” (¶[0028].) “[T]rans-muconic acid or fumaric acid5 or phenylenebisacrylic acid” are exemplary “aromatic compound[s] or [] aromatic moiet[ies] of [a] compound which is both aromatic and aliphatic.” (¶¶ [0030-0031].)6 The ions of the metal components in the frame work which are “mentioned in particular” include Al3+. (¶ [0024].) “[T]he MOF may be present in powder form.” (¶[0014].) “The specific surface area, calculated using the Langmuir model according to DIN 66135 (DIN 66131, 66134)7 for a[] MOF in powder form, is more than 5 m2/g, . . . even more preferably more than 1000 m2/g.” (¶ [0022].) Appellants contend the Examiner’s obviousness determination is based on “impermissible hindsight reconstruction” (Br. 4), arguing, more specifically: “[t]here is nothing which would motivate one of ordinary skill in the art to make the specific selection of trivalent aluminum and fumarate” (id. at 5); “it would not be clear to one of ordinary skill in the art that fumaric acid is disclosed as a bidentate, but rather merely an aliphatic compound from which a bidentate may be 5 (See Spec. 7:3-4 (“The organic component of the porous metal organic framework of the invention is fumaric acid which can be reacted with an aluminum compound.”).) 6 The Examiner further makes an unrefuted finding that “in order for fumaric acid to become a bidentate, it would necessarily be reduced to a fumarate ion, since Mueller discloses that a bidentate organic compound must be capable of forming at least two bonds . . ., and the way for fumaric acid to be capable of forming at least two bonds is by being reduced to a fumarate ion. (Ans. 5-6 (Response to Argument).) 7 (See Spec. 6:23-24 (referencing DIN 66131, 66134).) Appeal 2011-011479 Application 12/297,666 4 derived” (id.); “[t]here is no suggestion that such a framework be present in powder form” (id. at 4); and “there is no teaching, nor any suggestion . . . that such a combination would have a high surface area” (id.). Appellants also contend that because Mueller fails to teach or suggest a MOF as recited in claim 17, the Examiner reversibly erred in finding Mueller’s MOF would inherently possess (Ans. 4) “an X-ray diffraction pattern” and “orthorhombic one-dimensional channel structure” as recited in dependent claims 18 and 19, respectively. (Br. 6- 7.) Where a skilled artisan merely pursues ‘known options’ from a ‘finite number of identified, predictable solutions,’ obviousness under § 103 arises.” In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)). An obviousness rejection predicated on selection of one or more components from numerous possible choices may be appropriate if the prior art provides direction as to which of many possible choices is likely to be successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed Cir. 2007). The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill, 771 F.2d 1496, 1500 (Fed.Cir.1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands' of compounds”)); see also, In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives”). Appeal 2011-011479 Application 12/297,666 5 Appellants have not persuaded us that the Examiner relied on improper hindsight reasoning in rejecting the claims. We agree with the Examiner that the above-cited disclosure in Mueller (i.e., the disclosure relied upon by the Examiner) would have provided one of ordinary skill in the art with a reasonable expectation of success in selecting a porous metal organic framework comprising AlIII ions and fumarate ions, in the form of a powder having a specific surface area of at least 1000 m2/g. Mueller clearly contemplates an MOF comprising a framework in the form of a powder (¶[0014]), indicates a preference for the claimed specific surface area (¶[0022]), and identifies AlIII ions (¶[0024]) and fumarate ions (¶¶ [0030- 0031] ; see supra note 6) as suitable choices for the MOF. Appellants have also not provided evidence which demonstrates that the resultant MOF would not have possessed the characteristics recited in appealed claims 18 and 19. See In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (“[W]hen the prior art evidence reasonably allows the PTO to conclude that a claimed feature is present in the prior art, the evidence ‘compels such a conclusion if the applicant produces no evidence or argument to rebut it.’” (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990))); In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (wherein the court stated that “[s]ubstantial evidence supports the Board's finding, based upon the specification, which confirms that the claimed 'food effect' is an inherent property of the oxymorphone itself”); Kubin, 561 F.3d at 1357 (“Even if no prior art of record explicitly discusses the . . . [limitation], [Appellants’] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention].”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would Appeal 2011-011479 Application 12/297,666 6 flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”). In sum, for the reasons expressed in the Answer and above, we affirm the Examiner’s decision to reject claims17-19, 21, and 32-36. 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). AFFIRMED cam