Ex Parte Najim et alDownload PDFPatent Trial and Appeal BoardJul 28, 201612592824 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/592,824 12/03/2009 Joseph Najim 21898 7590 08/01/2016 ROHM AND HAAS COMPANY c/o The Dow Chemical Company P.O. Box 1967 2040 Dow Center Midland, MI 48641 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. A02030 8126 EXAMINER WARTALOWICZ, PAUL A ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH NAJIM and JOHN HIROSHI YAMAMOT0 1 Appeal2015-001695 Application 12/592,824 Technology Center 1700 Before TERRY J. OWENS, WESLEY B. DERRICK, and LILAN REN, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's rejection under§ 103(a) of claims 1, 4, 6, and 11-18 over Zhang2 in view of Salinas3 and also in further view of Bae. 4 We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. 1 Appellants identify Rohm and Haas Company as the Real Party in Interest. Appeal Br. 2. 2 US 2005/0238573 Al, published October 27, 2005. 3 US 7,641,889 Bl, issued January 5, 2010. 4 US 2005/0036941 Al, published February 17, 2005. Appeal2015-001695 Application 12/592,824 BACKGROUND Appellants' claimed invention is directed to methods for generating hydrogen by combining a solid composition containing a borohydride compound and a base with water in the presence of a transition metal catalyst. Spec. Abstract. Reduced foaming during hydrogen generation is set forth as a benefit of the methods. Spec. Abstract, 1 11. 15-17. Claim 1-the sole independent claim-is illustrative. 1. A method for generation of hydrogen, said method compnsmg: adding a liquid comprising water to a solid composition comprising from 5 wt% to 25 wt% of at least one base, 70 wt % to 90 wt % of at least one alkali metal borohydride compound, and from 2 wt% to 15 wt% of at least one transition metal salt from groups 8, 9 and 10; wherein the liquid contains less than 2 wt % acid and no more than 2 wt % of a transition metal salt from groups 8, 9 and 1 O; and wherein said at least one base is sodium, lithium or potassium hydroxide, sodium or potassium methoxide, or a combination thereof. Appeal Br. (Claims Appendix) 16. Dependent claims 6 and 17 further limit the weight percent of acid to less than 1 wt. % and no more than 0.5 wt.%, respectively. DISCUSSION5 Upon consideration of the evidence and opposing contentions of the Appellants and the Examiner, we are unpersuaded of harmful error in the Examiner's decision rejecting the claims as unpatentable. 5 We refer to the Final Office Action mailed March 20, 2014, the Appeal Brief filed June 27, 2014, and the Examiner's Answer mailed September 26, 2014. 2 Appeal2015-001695 Application 12/592,824 Appellants proffer the same arguments as to both rejections (compare Appeal Br. 7-11to11-15), we address the arguments as to both, but do so citing to the first iteration of the arguments solely for clarity. To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner's rejection. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365- 66 (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 Appellant to identify the alleged error in the examiner's rejection). Appellants contend that they "have solved a problem, namely excessive foaming in hydrogen generation from hydrolysis of borohydrides, that had not even been recognized as a problem in the prior art." Appeal Br. 7. Appellants set forth that the "claimed low acid levels unexpectedly produce a lower maximum foam volume, a critical parameter in hydrogen generation systems." Appeal Br. 7 (citing a Declaration by Dr. Yamamoto-an inventor of the instant application-filed December 12, 2011 ("2011 Declaration"), ,-i 4 ). 6 Having considered the cited paragraph, reproduced below, we find no support for Appellants' contention that the problem of excessive foaming was not recognized as a problem in the prior art. 4. Alkali metal borohydrides are used as a hydrogen source in hydrogen generation systems used to power fuel cells. During hydrolysis of the borohydride anion to produce 6 In support of various contentions made in the Appeal Brief, Appellants also rely on additional declarations by Dr. Yamamoto, filed May 2, 2012 (the "May 2012 Declaration"), filed September 12, 2012 (the "September 2012 Declaration"), and filed September 20, 2013 (the "September 2013 Declaration"). Appeal Br. 7. 3 Appeal2015-001695 Application 12/592,824 hydrogen, some foaming inevitably occurs. This foaming is detrimental to operation of the hydrogen generation apparatus and needs to be controlled so that the foam does not exceed the volume of the hydrogen generation apparatus. Therefore, the maximum foam volume at any point during hydrolysis is a critical parameter which can place a lower limit on the size of the hydrogen generation apparatus, while those in the fuel cell field are striving to minimize its size. 2011 Declaration iJ 4. Nor do Appellants direct us to other evidence supporting the contention that the problem of excessive foaming was not recognized as a problem in the prior art. Generally, Appeal Br. Appellants have not, accordingly, set forth any cogent argument supported with evidence that the Examiner has failed to establish a prima facie case of obviousness. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). Turning to Appellants' contention that patentability is supported by unexpected results, we have considered the proffered evidence, but do not find it sufficient to rebut the prima facie case. It is well established that Appellants bear the burden of showing that the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To meet the burden, Appellants must establish that the results actually would have been unexpected, and that the unexpected results are reasonably commensurate with the scope of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. Appellants rely on Dr. Yamamoto' s declarations as attesting to unexpected results (Appeal Br. 7), including the statement that "at 2%, the maximum foam volume is unexpectedly lower than for compositions with 4 Appeal2015-001695 Application 12/592,824 much higher acid levels" (Appeal Br. 8, citing September 2012 Declaration iJ 4). This statement is also repeated in the 2013 Declaration (iJ 4). The relied on statement, however, is not well-supported where we find Appellants fail to explain why this result would have been unexpected and fail to direct us to any corroborating evidence demonstrating that the result actually would have been unexpected. Appeal Br. 7-15. It follows the proffered opinion that the results were unexpected is not sufficient to meet Appellants' burden. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroborations warrants discounting the opinions expressed in the declarations."); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another "unless no reasonable trier of fact could have done so"); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion."). Appellants argue that the Declarant' s opinion must be accorded weight and that "when an applicant demonstrates substantially improved results ... and states that the results were unexpected, this should suffice to establish unexpected results in the absence to the contrary." Appeal Br. 9 (quoting In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995)). On this record, however, we do not find evidence of "substantially improved results" that compels a finding that there are unexpected results in the absence of corroboration that the results were in fact unexpected. In distinguishing In re Soni, our reviewing court explained that "26 percent greater wear resistance at a thickness of 50 Angstroms than at a thickness of 5 Appeal2015-001695 Application 12/592,824 100 Angstroms ... [did] not constitute proof of •substantially improved results' comparable to the 50-fold improvement in tensile strength for the composition that was at issue in Soni." In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). We likewise find the results proffered by Appellants-e.g., May 2012 Declaration ,-i 4, 2013 Declaration ,-i 4, Spec. 7 (Table 1)-are insufficient to constitute proof of "substantially improved results" so compelling that corroboration of the assertion the results were unexpected is not necessary. "The law is replete with 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." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citing Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984)). Also, to establish unexpected results over a claimed range, Appellants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims."); see also In re Hill, 284 F.2d 955, 95859 (CCPA 1960). On this record, we do not find the Appellants adequately explain why the limited, proffered data is sufficient to establish that the range claimed is critical. Zhang teaches generating hydrogen where "regulation of acid concentration, acid feed rate, or a combination of both control the rate of hydrogen generation." See, e.g., Zhang Abstract. It follows, accordingly, 6 Appeal2015-001695 Application 12/592,824 that increasing acid concentration would increase the rate at which hydrogen gas is formed for any of the given solid fuels tested. Cf In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). It is also reasonable to infer that the hydrogen produced gives rise to foam. To demonstrate criticality of the claimed range, therefore, requires establishing that the foam levels obtained by acid levels within the claimed range are different in kind and not merely in degree. Woodruff, 919 F.2d at 1578; Garder, 725 F.2d at 1349. As explained by the Examiner, there are a limited number of data points within the claimed ranges-mostly at zero weight percent acid-and with limited data points until reaching 15 weight percent. Ans. 12-15. Further, there are a number of different solid fuel compositions used to obtain the data that is compared without sufficient explanation why the data from disparate compositions should be relied upon to establish criticality of the amount of acid. See Spec. 6-7, 2013 Declaration ,-i 4, September 2012 Declaration ,-i 4, and May 2012 Declaration ,-i 4. Consequently, while the same solid fuel is used in comparing the result when 1.1 %, 2%, and 3% malic acid is used (e.g., 2013 Declaration ,-i 4) and when water and 4% malic acid is used (e.g., May 2012 Declaration ,-i 4), this data from which fair comparison can be made does not encompass a sufficient range of concentrations to establish the criticality of the concentrations claimed. Appellants argue that the limited data provided is sufficient because "one skilled in the art could 'ascertain a trend in the exemplified data which would allow him to extend the probative value thereof."' Appeal Br. 8-9 7 Appeal2015-001695 Application 12/592,824 (quoting Jn re Kollman, 595 F.2d 48, 56 (CCPA 1979)). It is plainly manifest, however, that many components impact the maximum foam volume obtained. Spec. 7. We note that even use of 2% NaOH instead of water as the liquid activator used with 80% SBH, 14% NaOH, 6% CoCb powder results in a maximum foam volume of 50 mL (Spec. 8 11. 15-17), well above values reported in the lower part of Table 1, although the corresponding result with water is not reported (Spec. 7). Appellants further rely on Dr. Yamamoto' s statements that a chemist "working with hydrogen generation systems, having seen these data, would expect that using less than 2 %, as in claim 1, would produce far lower maximum foam volume than the higher levels mentioned in the cited Zhang reference." Appeal Br. 8 (quoting September 2013 Declaration ,-i 4 ). That this is so, however, is not sufficient alone to establish criticality where there is no evidence the foaming is not simply a difference in degree over the acid range disclosed in Zhang. Moreover, as correctly found by the Examiner, Appellants have not met their burden of establishing that the data provided in the Declarations and in the Specification are reasonably commensurate in scope with the claimed subject matter. See, e.g., Harris, 409 F.3d at 1344 ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."'). The acid used in testing 8 Appeal2015-001695 Application 12/592,824 is limited to malic acid. Spec. 7 (Table 1 ), 2013 Declaration ii 4, September 2012 Declaration ii 4, May 2012 Declaration ii 4. As to inorganic acids, Appellants rely on Dr. Yamamoto' s explanation "that use of mineral acids to generate hydrogen from an alkali metal borohydride is 'not viable in practice' ... [due to] health and safety issues inherent in attempting to use mineral acids" (Appeal Br. 10, citing May 2012 Declaration ii 5) and to the fact that use of water without any acid falls within the recited amounts of less than 2 wt. %, less than 1 wt. %, and no more than 0.5 wt. % (Appeal Br. 10). In the absence of any experimental data or explanation as to why the alleged unexpected results would be obtained over the ranges of acid set forth in the claims, it follows that Appellants have not established any unexpected result reasonably commensurate in scope with the claimed subject matter-which encompasses inorganic acids. Ans. 16. As to organic acids other than malic acid, Appellants rely on Dr. Yamamoto' s explanation "that one skilled in the art would expect other organic acids to produce as much, or in many cases even more foam than malic acid and would understand that 'any acid should be excluded at the claimed levels."' Ans. 10 (citing 2013 Declaration ii 5). Considering the statement and reasoning set forth in the Declaration, we do not find it to be sufficiently well-supported to bear the weight required of it to establish that the relied on results are commensurate even with the organic acids encompassed by the claims. The Declaration is grounded on an assertion of what a chemist would expect of other organic acids after having surmised that malic acid acts as an anionic surfactant. 2013 Declaration ii 5. We find this insufficient support for us to give the 9 Appeal2015-001695 Application 12/592,824 opinion sufficient weight to carry Appellants' burden because there is no explanation as to how malic acid, a hydroxy-, di-carboxylic acid of chemical formula C4H60s, is representative of organic acids of disparate structure, particularly where the proffered reasoning is grounded on further, underlying opinion as to what a chemist would expect or surmise is occurring with malic acid. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368; Yorkey v. Diab, 601 F.3d at 1284. For the reasons set forth above, therefore, Appellants fail to provide that their evidence of unexpected results is sufficient to overcome the prima facie case of obviousness. Grasselli, 713 F.2d at 743. CONCLUSION The Examiner's rejection of claims 1, 4, 6, and 11-18 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 10 Copy with citationCopy as parenthetical citation