Ex Parte Whittenberger et al

Patent Trial and Appeal Board

Aug 28, 2017

13342517 (P.T.A.B. Aug. 28, 2017)

United States Patent and Trademark Office
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.
13/342,517 01/03/2012 WILLIAM A. WHITTENBERGER CATA-47688 7581
86378 7590 08/30/2017
Pearne Rr frnrHnn T T P
EXAMINER
1801 East 9th Street YOUNG, NATASHA E
Suite 1200
Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. WHITTENBERGER, LORNE W. DEYOUNG,
TODD A. ROMESBERG, DAVID A. BECKER, and
SNEZANA ALEKSIC1
Appeal 2017-001390
Application 13/342,517
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision finally rejecting claims
13—15, 19, 21—31, and 34^40. 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
1 Appellants identify Johnson Matthey Public Limited Company as the real
party in interest. App. Br. 1.
2 In our Decision, we refer to the Specification filed January 3, 2012
(“Spec.”); Final Office Action dated January 15, 2016 (“Final Act.”); Appeal
Brief dated June 13, 2016 (“App. Br.”); Examiner’s Answer to the Appeal
Appeal 2017-001390
Application 13/342,517
The Claimed Invention
Appellants’ invention relates to a monolith for catalytic or sorbent
purposes that includes a substrate sheet having attached thereto a plurality of
catalytic or sorbent beads. Abstract; Spec. 1. Independent claim 13 is
illustrative of the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 13) (key disputed
claim language italicized and bolded):
13. A method of making a monolith for catalytic or sorbent
purposes, comprising the steps of:
(a) providing a substrate sheet having a top surface and a
bottom surface;
(b) coating both of the surfaces with an adhesive
composition, wherein both of the surfaces are coated at the same
location along the substrate sheet for at least a portion of the
substrate sheet;
(c) contacting both of the coated surfaces with a plurality of
catalytic or sorbent beads so that the beads are attached to the
substrate sheet, each bead having a diameter of at least 50
microns, each bead having catalytic or sorbent material on an
exposed surface of the bead; and
(d) providing a separator sheet to separate the catalytic or
sorbent beads on adjacent coated surfaces of the substrate
sheet.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Fratzer et al. US 4,271,044 June 2, 1981
(hereinafter “Fratzer”)
Brief dated September 2, 2016 (“Ans.”); and Reply Brief dated November 2,
2016 (“Reply Br.”).
2
Appeal 2017-001390
Application 13/342,517
Augustine et al. US 5,446,003 Aug. 29, 1995
(hereinafter “Augustine”)
Doughty et al. US 2005/0211100 Al Sept. 29, 2005
(hereinafter “Doughty”)
Eigenberger et al. EP 885653 A2 Dec. 23, 1998
(hereinafter “Eigenberger”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 13—15, 17—19, 23—31, 34—37, 39, and 40 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Eigenberger in
view of Doughty (“Rejection 1”). Ans. 2; Final Act. 3.
2. Claims 21 and 22 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Eigenberger in view of
Doughty as applied to claim 13 above, and further in view of Augustine
(“Rejection 2”). Ans. 14; Final Act. 16.
3. Claim 38 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Eigenberger in view of Doughty as applied to claim 24
above, and further in view of Fratzer (“Rejection 3”). Ans. 17; Final Act.
19.
OPINION
The Examiner determines that the combination of Eigenberger and
Doughty suggests a method of making a monolith satisfying all of the
limitations of claim 13 and would have rendered claim 13 obvious. Ans. 2—
4, 17-19.
Regarding the limitation “(d) providing a separator sheet to separate
the catalytic or sorbent beads on adjacent coated surfaces of the substrate
3
Appeal 2017-001390
Application 13/342,517
sheet,” the Examiner finds that because Eigenberger discloses a coated
substrate sheet and a separator sheet and Doughty discloses a substrate
coated on both sides with a catalyst or sorbent beads, the combined
teachings of Eigenberger and Doughty suggests this step. Ans. 17—18 (citing
Eigenberger, Figs. 1—5; Doughty || 7—29, Abstract, Figs. 1—7). In
particular, the Examiner finds that the wall 1 of Eigenberger’s Figure 1
corresponds to the claimed “separator sheet.” Id. at 18. The Examiner finds
further that Doughty discloses a method of making a monolith comprising
the steps of providing a substrate 13; coating both of the surfaces of the
substrate with an adhesive composition 15; and contacting both of the coated
surfaces with a plurality of catalytic or sorbent beads. Id. at 18.
Appellants argue that the Examiner’s rejection of claim 13 should be
reversed because the combination of Eigenberger in view of Doughty does
not teach or suggest the step of “providing a separator sheet to separate the
catalytic or sorbent beads on adjacent coated surfaces of the substrate sheet,”
as required by the claim. App. Br. 4; Reply Br. 3^4.
Appellants’ argument in this regard is persuasive because the
Examiner has not established by a preponderance of the evidence that the
combination of Eigenberger and Doughty teaches or suggests the claim step
“providing a separator sheet to separate the catalytic or sorbent beads on
adjacent coated surfaces of the substrate sheet.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial
burden of establishing a prima facie case of obviousness).
The Examiner does not adequately explain how or direct us to
sufficient evidence that the cited art teaches or suggests this step. The
portions of Eigenberger and Doughty upon which the Examiner relies (Ans.
4
Appeal 2017-001390
Application 13/342,517
2-4, 17—19) do not teach or suggest providing a separator sheet to separate
the catalytic or sorbent beads on adjacent coated surfaces of the substrate
sheet. See Eigenberger, Figs. 1—5; Doughty || 7—29, Abstract, Figs. 1—7.
As Appellants correctly point out (App. Br. 6—7; Reply Br. 3—4),
Eigenberger’s wall 1 is not a separator sheet to separate a catalytically-
coated substrate from another catalytically-coated substrate in an adjacent
channel. Rather, the structure serves as a heat exchanger for promoting
efficient heat transfer between the catalyzed portion of the substrate that
performs the chemical reaction and the non-catalyzed portion of substrate.
Eigenberger, Abstract, Fig. 1. As Appellants also note (App. Br. 4; Reply
Br. 4) and the Examiner acknowledges (Ans. 4), the Doughty reference does
not disclose, suggest, or even mention a separator sheet in connection with
its disclosure.
There is no teaching or suggestion—whether in Eigenberger,
Doughty, or elsewhere in the record—establishing that Eigenberger’s wall
structure 1 is or could be used as a separator sheet to separate the catalytic or
sorbent beads on adjacent coated surfaces of the substrate in the manner
claimed.
The Examiner also does not identify evidence in the record or provide
reasoning sufficient to support a finding that one of ordinary skill would
have had reason to modify Eigenberger’s structure in view of Doughty’s
teachings to separate the catalytic or sorbent beads on adjacent coated
surfaces.
The fact that Doughty discloses a composite adsorbent that includes a
shaped substrate having an adhesive material on a portion of one or both
sides (Doughty 17), without more, does not persuade us that one of ordinary
5
Appeal 2017-001390
Application 13/342,517
skill would have had reason to modify Eigenberger’s structure to arrive at
the claimed method. SeeKSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (requiring “reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Moreover, the Examiner’s assertion that Eigenberger’s and Doughty’s
“two means of coating a substrate with a catalyst or sorbent were art-
recognized equivalents at the time the invention was made” (Ans. 3) is
conclusory and the Examiner does not identify sufficient evidence in the
record or provide an adequate technical explanation to support it. Kahn, 441
F.3d at 988 (holding “rejections on obviousness grounds cannot be sustained
by mere conclusory statements”).
We, therefore, do not sustain the Examiner’s determination that the
combination of Eigenberger and Doughty suggests a method satisfying all of
the steps of claim 13 and would have rendered claim 13 obvious.
Because claims 14, 15, 17—19, 23, and 35 depend from claim 13 and
claims 24—31, 34, 36, 37, 39, and 40 recite a “separator sheet,” we also do
not sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 13—15,
17—19, 23—31, 34—37, 39, and 40 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eigenberger and Doughty.
Rejections 2 and 3
The foregoing deficiencies in the Examiner’s findings and conclusions
regarding the combination of Eigenberger and Doughty are not remedied by
6
Appeal 2017-001390
Application 13/342,517
the Examiner’s findings regarding the additional references or combination
of references cited in support of the second and third grounds of rejection.
Accordingly, we also reverse Rejection 2 and Rejection 3.
DECISION
The Examiner’s rejections of claims 13—15, 19, 21—31, and 34^40 are
reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
7