Ex Parte Oganov et al

Patent Trials and Appeals Board

Feb 21, 2019

14670535 - (D) (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/670,535 03/27/2015 Artem Oganov
31554 7590 02/25/2019
Carter, DeLuca & Farrell LLP
576 Broad Hollow Road
MELVILLE, NY 11747
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.
1339-39 (R-8591) 3853
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
02/25/2019 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):
docket@carterdeluca.com
bpuchaczewska@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTEM OGANOV and QIANG ZHU
Appeal2018-004539
Application 14/670,535
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
JEFFREY R. SNAY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (The Research Foundation for the State University of
New York) appeals under 35 U.S.C. § 134(a) from the Examiner's rejection
of claims 2 and 3. We have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The claims are to a method for storing and recovering fluorine.
Claim 2 is illustrative:
2. A method comprising:
providing a source of CsFn, wherein n is an integer
selected from the group consisting of 2, 3, and 5[;]
heating the CsFn to a temperature from about 250° K to
about 400° K;
recovering F as the CsF n is heated;
Appeal2018-004539
Application 14/670,535
collecting CsF remaining after heating; and
forming CsFn by adding additional F to the collected CsF.
The References
Seseke-Koyro US 2011/0110844 Al May 12, 2011
Mao-sheng Miao, Caesium in high oxidation states and as a p-block
element, 5 Nature Chemistry 846-52 (2013).
The Rejection
Claims 2 and 3 stand rejected under 35 U.S.C. § I03(a) over the
combined disclosures of Miao and Seseke-Koyro.
OPINION
We affirm the rejection.
The Appellant addresses dependent claim 3 under a separate heading
but does not provide a substantive argument for the separate patentability of
that claim (Br. 5---6). We therefore limit our discussion to claim 2. Claim 3
stands or falls with that claim. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
Miao discloses:
"[C]omputations were used to demonstrate that the Sp electrons
in the inner shell of a Cs atom can become reactive under high
pressure. As a result, Cs atoms can be oxidized beyond the + 1
oxidation state to form a series of fluorides CsFn (n = 2 - 5)
under pressures ranging from 10 to 200 GPa. This approach is
based on accurate first-principles calculations, which have been
successfully used in numerous predictions regarding novel
compounds and structures over the past few decades [(p. 846)].
Figure 1 b shows that, for n> 1, all CsF n compounds are unstable
at ambient pressure, which is consistent with the common
knowledge that Cs is only stable in the+ 1 state [(pp. 846-
847)]. However, CsF2 becomes stable at a pressure of 5 GPa.
As the pressure increases, CsFn compounds with higher ratios
of F are formed. As shown in Fig. 1 b, CsF 2 is only stable in the
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Application 14/670,535
pressure range from 5 to 17 GPa. At higher pressures, it
decomposes into CsF and CsF 3. The CsF 3 and CsF s become
stable at pressures of 15 GPa and 50 GPa, respectively, and
both remain stable up to 200 GPa [(p. 847)].
Seseke-Koyro discloses (i-f 2):
[Manganese tetrafluoride], [ w ]hile it is stable at room
temperature, it splits off elemental fluorine when heated.
Manganese trifluoride is formed which then can be fluorinated
to manganese tetrafluoride again. Manganese tetrafluoride thus
can be considered a carrier for elemental fluorine. The
advantage is that elemental fluorine can be produced locally
where it is needed.
The Appellant asserts that Miao discloses "predicted methods and
predicted compounds" (Br. 3) and that "Miao nowhere discloses or
suggests these compounds [(CsF2, CsF3, CsFs)] were, in fact, prepared; it
merely mentions it is conceived that Sp electrons could be oxidized . ...
Miao does not teach these compounds or their purported instability are,
indeed, factual; Miao merely articulates a hypothesis" (id.).
"Obviousness does not require absolute predictability of success ....
For obviousness under§ 103, all that is required is a reasonable expectation
of success." In re O 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988).
Miao' s disclosures that the calculations regarding Cs atoms being
oxidized beyond the+ 1 oxidation state to form a series of fluorides CsFn
(n = 2 - 5) under pressures ranging from 10 to 200 GP a are "based on
accurate first-principles calculations, which have been successfully used in
numerous predictions regarding novel compounds and structures over the
past few decades" (p. 846), and "all CsFn compounds are unstable at ambient
pressure, which is consistent with the common knowledge that Cs is only
stable in the+ 1 state" (pp. 846-847), would have provided one of ordinary
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Application 14/670,535
skill in the art with a reasonable expectation of success in forming CsF2,
CsF 3, or CsF 5 from CsF and fluorine at elevated pressure and forming CsF
and fluorine from CsF2, CsF3, or CsFs at ambient pressure. Moreover, in the
Appellant's Specification's statement that "utilizing the above methods, a
series of compounds of the general formula CsFn (n = 2, 3, 5) are provided"
(Spec. ,r 45), the "above methods" are mathematical procedures
(Spec. ,r,r 18--44). The Specification then discloses "predicted materials"
(i-f 47), what "a procedure for the synthesis of CsF2 may include" (i-f 50),
what the yield "can be modelled as" (i-f 54), and what yield "one can expect"
(i-f 55). The Appellant does not explain, and it is not apparent, how the
Appellant's predictions, but not those of Miao, would have enabled one of
ordinary skill in the art to make CsF 2, CsF 3, or CsF 5 from CsF and fluorine,
or to make CsF and fluorine from CsF2, CsF3, or CsFs.
The Appellant asserts that one of ordinary skill in the art, in view of
Seseke-Koyro, would not have been motivated to heat Miao's CsFn to
release fluorine and form CsF and then form CsFn again with the formed
CsF, or had a reasonable expectation of success in doing so, because Miao's
cesium is a Group 1 A metal whereas Seseke-Koyro' s manganese is a
Group 7B transition metal (Br. 4--5).
The Appellant does not provide evidence or technical reasoning which
indicates that one of ordinary skill in the art would have considered a
Group 7B metal, but not a Group IA metal, to be useful for storing fluorine.
Miao' s disclosure that Cs is stable at ambient pressure only in the + 1 state
and that CsF2, CsF3, or CsFs are stable at higher pressures (p. 847) would
have motivated one of ordinary skill in the art to use Cs to store fluorine at
relatively high pressure as a component of CsF2, CsF3, or CsFs and to release
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Appeal2018-004539
Application 14/670,535
the fluorine and form CsF at ambient pressure. As pointed out above, Miao
would have provided one of ordinary skill in the art with a reasonable
expectation of success in doing so.
The Appellant asserts that "even if the Office is correct that the skilled
artisan would combine the references, which Appellant does not concede,
they still would not arrive at the process recited in claim 2, including heating
the CsFn to a temperature from about 250Q K to about 400Q K; recovering F
as the CsFn is heated; collecting CsF remaining after heating; and forming
CsFn by adding additional F to the collected CsF" (Br. 5).
The Appellant provides no explanation in support of that assertion.
Seseke-Koyro' s disclosure that manganese tetrafluoride, when heated, splits
off elemental fluorine (i-f 2) would have led one of ordinary skill in the art,
through no more than ordinary creativity, to determine the temperatures at
which fluorine splits off from CsF2, CsF3, and CsF5. See KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton"). In making an obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418.
For the above reasons we are not persuaded of reversible error in the
rejection.
DECISION
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) over the
combined disclosures of Miao and Seseke-Koyro is affirmed.
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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