Ex Parte Najim et al

Patent Trial and Appeal Board

Jul 28, 2016

12592824 (P.T.A.B. Jul. 28, 2016)

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.
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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.
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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
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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
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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,
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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
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(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
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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
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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
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