Ex Parte Matzger et al

Patent Trial and Appeal BoardApr 6, 2016

12681175 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/681,175 09/16/2010 27572 7590 04/08/2016 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 FIRST NAMED INVENTOR Adam J. Matzger 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. 2115-003686/US/NP 2446 EXAMINER STEIN, MICHELLE ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 04/08/2016 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): troydocketing@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM J. MATZGER, ANTEK G. WONG-FOY, and KATIE CYCHOSZ Appeal2014-007625 Application 12/681,175 Technology Center 1700 Before JEFFREY T. SMITH, N. WHITNEY WILSON, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 1-11. 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify Regents of the University of Michigan as the real party in interest. App. Br. 1. Appeal2014-007625 Application 12/681,175 The Claimed Invention Appellants' disclosure relates to a method for removing organosulfur compounds from a liquid which comprises contacting the liquid with a microporous coordination polymer (i.e., "MCP") to form an MCP- organosulfur inclusion compound. Abstract; App. Br. 2. Claims 1, 4, and 9 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (Claims App' x 1, 2): 1. A method for separating organosulfur compounds from a liquid, the method comprising: contacting the liquid with a microporous coordination polymer to form a MCP-organosulfur inclusion compound. 4. The method of claim 3 wherein the organosulfur compound is selected from the group consisting of benzothiophene (BT), dibenzothiophene (DBT), or 4,6- dimethyldibenzothiophene (DMDBT). 9. The method of claim 5 wherein the sorbent bed is a mixed bed and/or a bed having more than one microporous coordination polymer. The References The Examiner relies on the following prior art in rejecting the claims on appeal: Khare US 2003/0047489 Al Mar. 13, 2003 Jacobson et al., WO 2008/021194 A2 Feb.28,2008 (hereinafter "Jacobson") 2 Appeal2014-007625 Application 12/681,175 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1-3 and 5-8 stand rejected under 35 U.S.C. Â§ 102(e) as unpatentable over Jacobson. 2. Claim 4 stands rejected under 35 U.S.C. Â§ 102(e) and alternatively under 35 U.S.C. Â§ 103(a) as unpatentable over Jacobson as evidenced by Khare. 3. Claims 9-11 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Jacobson. OPINION2 Rejection 1 Appellants argue claims 1-3 and 5-8 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). The Examiner finds that Jacobson teaches the claimed invention, including all the limitations of claim 1. Ans. 2, 3 (citing Jacobson i-fi-1 7-10, 45). Appellants do not contest the Examiner's finding that Jacobson teaches each element of the claimed invention. Rather, the issue on appeal is whether Appellants' Rule 131 declarations are sufficient to antedate the Jacobson reference and establish generic conception of the claimed invention prior to the effective date of the reference. 2 We affirm the Examiner's rejections for the reasons set forth in the Answer, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. 3 Appeal2014-007625 Application 12/681,175 Appellants argue that the Examiner's rejection should be reversed because the "evidence proves the inventors conceived the invention generically and reduced several species to practice" prior to the August 10, 2006 effective date of the Jacobson reference. App. Br. 3, 4, 8. In particular, Appellants argue that the "June declaration ... shows reduction to practice of species within the scope of the generic claims" and that the "October declaration ... establishes generic conception of the invention prior to the effective date. "3 Id. at 3. Appellants also argue that: (1) the decision inin re DaFano, 392 F.2d 280 283-84 (CCPA 1968) "is on all fours" with the facts of this case; (2) "the evidence offered in the Rule 131 Declarations is sufficient to show possession of the invention earlier than the reference"; and that (3) the "preponderance of evidence suggests that the inventors considered that their invention had generic applicability." Reply. Br. 3, 4. We are not persuaded by Appellants' arguments. The law in this area is well-settled. In cases such as this where predictability 1s m question, "a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference." In re Shokal, 242 F.2d 771, 773 (CCPA 1957) ("It appears to be well settled that a single species can rarely, if ever, afford sufficient support for a generic claim."); MPEP Â§ 715.03(II). As noted by Appellants, the test is "whether the species completed [by applicant] prior to the reference date ... provided an 3 The "June declaration" refers to the Declaration Under 37 C.F.R. Â§ 1.131 of Dr. Antek G. Wong-Foy filed June 10, 2013 and the "October declaration" refers to the Second Declaration the Under 37 C.F.R. Â§ 1.131 of Dr. Antek G. Wong-Foy filed October 10, 2013. App. Br. (Evid. App'x 3). 4 Appeal2014-007625 Application 12/681,175 adequate basis for inferring that the invention has generic applicability." App. Br. 3 (quoting MPEP Â§ 715.03(II) and citing In re DaFano, 392 F.2d 280 (CCP A 1968)). Indeed, "[i]t is necessary that the species which were reduced to practice provide an adequate basis for inferring that the invention has generic applicability." In re Mantell, 454 F.2d 1398, 1402 (CCPA 1972). Moreover, "in the case of a small genus such as the halogens, which consists of four species, a reduction to practice of three, or perhaps even two, species might show possession of the generic invention, while in the case of a genus comprising hundreds of species, reduction to practice of a considerably larger number of species would be necessary." In re Shokal, 242 F.2d at 773. Based on the record before us, we are not persuaded Appellants have identified evidence sufficient to provide an adequate basis for inferring that the invention reduced to practice prior to the effective date of Jacobson had generic applicability. The three species disclosed in the June declaration, without more, are insufficient to support an inference of generic applicability. As noted by the Examiner (Ans. 9), according to the June declaration, Appellants reduced to practice only three species (i.e., MOF-5, MOF-177, and HKUST-1). June Deel. i-fi-18, 9. Claim 1, however, is not limited to these three species. Instead, claim 1 recites the broad genus of microporous coordination polymers. Indeed, as the Examiner points out (Ans. 9), the genus of microporous coordination polymers, as claimed, would comprise a vast number of species. See Spec. i-fi-135-38 (identifying thousands of microporous coordination polymer combinations). We are not persuaded that Appellants' reduction to practice of three species in a genus comprising thousands of species constitutes an adequate basis for finding 5 Appeal2014-007625 Application 12/681,175 that the invention reduced to practice prior to the effective date of Jacobson had generic applicability. In re Shokal, 242 F.2d at 773 (noting that "in the case of a genus comprising hundreds of species, reduction to practice of a considerably larger number of species would be necessary"). The passages from the October declaration Appellants rely upon for showing generic conception are equally unpersuasive. October Deel. i-fi-1 6-10. Moreover, Appellants have failed to direct us to sufficient evidence that the claimed microporous coordination polymers would have similarities in properties. In re Plumb, 470 F.2d 1403, 1406-07 (CCPA 1973) (finding Rule 131 affidavit lacking evidence of similarities between compounds insufficient to establish adequate basis for inferring that the invention had generic applicability). As the Examiner notes (Ans. 9), paragraph 2 of the Specification states that: "[b ]y changing the metal or organic linker, pore size, shape, and functionality can be altered." As further noted by the Examiner (Ans. 9), "different species containing different metals or [different] organic linkers would not behave the same." In fact, as demonstrated in the June declaration at paragraphs 10 and 11, each species actually behaved differently and provided different results. Accordingly, based on the findings and technical reasoning provided by the Examiner (Ans. 2, 3, 9), and for the reasons discussed above, we affirm the Examiner's rejection of claims 1-3 and 5-8 under 35 U.S.C. Â§ 102( e) as unpatentable over Jacobson. Rejections 2 and 3 Appellants do not present any separate or additional arguments for the patentability of claims 4 and 9-11. Instead, Appellants rely on the same arguments presented above for Rejection 1. App. Br. 9. Based on the findings and technical reasoning provided by the Examiner and for the 6 Appeal2014-007625 Application 12/681,175 reasons discussed above for Rejection 1, we find that Appellants fail to establish reversible error in the Examiner's factual findings and legal conclusions with respect to claims 4 and 9-11. Accordingly, we affirm the Examiner's Rejections 2 and 3. DECISION/ORDER The Examiner's rejections of claims 1-11 are affirmed. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7