Ex Parte Zheng et al

Patent Trial and Appeal Board

Jun 20, 2017

13916727 (P.T.A.B. Jun. 20, 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.
13/916,727 06/13/2013 Xiaolai Zheng PF73417/ENG0277-00US 7084
109171 7590 06/22/2017
Womble Carlyle Sandridge & Rice, LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-7037
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
IPDocketing@wcsr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOLAI ZHENG, XIAOMING WANG,
and KNUT WASSERMANN1
Appeal 2016-003717
Application 13/916,727
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN,
and JANE E. INGLESE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 and 3—13.2 We have jurisdiction under 35 U.S.C. § 6.
We affirm-in-part.
1 According to the Appeal Brief, the Real Party in Interest is BASF
Corporation. (App. Br. 3.)
2 Pending claims 14—24 have been withdrawn from consideration.
Appeal 2016-003717
Application 13/916,727
Appellants’ claimed invention relates to a composite of mixed metal
oxides. Claim 1 is illustrative and is reproduced from the appendix to the
principal brief below:
1. A composite of mixed metal oxides comprising:
a ceria-zirconia solid solution that optionally further
comprises at least one rare earth oxide other than ceria; and
alumina in an amount in the range of 1 to less than 30%
by weight of the composite, the alumina being formed by using
a colloidal alumina precursor;
wherein the mixed metal oxide composite, after 12 hours
of hydrothermal aging at 1050°C, has a reducibility of ceria of
at least 50% in H2-TPR at a temperature up to 900°C.
Appellants request review of the rejection of claims 1 and 3—13 under
35 U.S.C. § 103(a) as unpatentable over Di Monte (US 2009/0023581 Al;
published Jan. 22, 2009). (App. Br. 6.)
OPINION3’4
The Examiner found Di Monte teaches a composite of mixed metal
oxides comprising elements in amounts that overlap the claimed invention.
(Final Act. 2—5.) The Examiner found Di Monte teaches the catalyst
3 Appellants have grouped their arguments together as follows: I. claims 1,
9, and 10; II. claims 3 and 4; III. claims 5 and 6; IV. claims 7 and 8; and V.
claims 11—13. We will address the claims as argued by Appellants.
4 Appellants have not presented substantive arguments addressing the
limitations of claim 13. (App. Br. 15—16.) Appellants contend claim 13
should stand or fall with claims 11 and 12. However, claim 13 does not
depend from either claims 11 or 12, we do not agree with Appellants’
proposed grouping of the claim. Since claim 13 depends from independent
claim 1, it will stand or fall with independent claim 1.
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Application 13/916,727
comprising ceria and zirconia with at least one other component, and 100—20
wt % alumina that provides increased thermal stability. (Final Act. 3; Di
Monte H 16, 22.) The Examiner found Di Monte teaches ceria may be
present at up to 20 % wt. (Final Act. 4; Di Monte 113.) The Examiner
determined, due to compositional similarities between the claimed invention
and Di Monte, the mixed metal oxide composite of Di Monte inherently
possess the properties specified by the claimed invention. (Final Act. 3.)
Claims 1, 9, 10, and 13
Appellants argue claim 1 differs from Di Monte by the recitation of a
colloidal alumina precursor and the particular properties of the composites.
(App. Br. 8.) Appellants also argue claim 1 requires 1 to less than 30% by
weight alumina which differs from Di Monte’s requirement of 100—20% wt.
alumina. (Id.) Appellants argue the data in the Specification distinguished
materials made with colloidal alumina versus those made with other sources
of alumina. (Id.) Appellants also contend colloidal alumina results in
composites having higher surface areas and pore volumes along with lower
alumina loadings as compared to composites formed with soluble aluminum
salts. (App. Br. 8; Spec. 118.) Appellants argue the presence of a colloidal
alumina precursor during formation—required by the claimed invention—
results in a materially different product compared to a product made without
colloidal alumina. (App. Br. 9.) Specifically, Appellants assert the BET
surface area of Example 6, having alumina derived from a colloidal
dispersion, is not the same as the comparative Examples 11 and 12. (Id.)
According to Appellants, comparative Examples 11 and 12 describe
aluminum salts as the source of alumina which are not colloidal. (Id.)
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Appellants assert the evidence presented establishes the composite of mixed
metal oxides of Di Monte is not the same as the claimed invention. (Id.)
We do not find Appellants’ arguments and evidence persuasive of
error in the Examiner’s obviousness determination. Appellants acknowledge
that the amount of alumina present in Di Monte overlaps with the claimed
invention. Thus, the Examiner has established a prima facie case of
obviousness.
[A] prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior
art. [(Citations omitted.)] Where the “claimed ranges are
completely encompassed by the prior art, the conclusion [that
the claims are prima facie obvious] is even more compelling
than in cases of mere overlap.”
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Secondary Considerations
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of prima facie obviousness was based. In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976).
Appellants have not demonstrated the data presented in the
Specification show that the composites comprising mixed metal oxides and
alumina in the amounts which overlap with the Di Monte disclosure are
patently distinct. It is first recognized that Appellants rely on Specification
Example 6 as evidence of the distinguishing features. However, Example 6
only comprises 15% of alumina. Appellants have not provided an
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Application 13/916,727
explanation as to why this limited showing would apply in the range of the
overlap between the claimed invention and Di Monte (20-30%). Appellants
also have not explained how Comparative Examples 11 and 12 are
representative of Di Monte. There are several distinguishing features
between the comparative invention and the description of Di Monte. For
example, the comparative examples comprise 15% of alumina, an amount
which is substantially below 20% described by Di Monte.
Notwithstanding the above, contrary to Appellants’ arguments,
Example 6 and the Comparative Examples 11 and 12 are distinguished by
more than just the source of the alumina. In addition to the source for the
alumina, Comparative Example 11 is different from Example 6 in that
double the amount of aqueous ammonium solution and double the amount of
deionized water content was used for preparation of the nitrate solution,
which required double the amount of time for addition, and double the
amount of lauric acid was utilized in preparation of the comparative
example. (Spec. 1 85.) Table 1 exhibits the amount of components present
in Comparative Example 12 are not the same as Example 6 or Di Monte.
(Spec. 11 86-87.)
Consequently, Appellants have failed to direct us to evidence that
establishes a patentable distinction is achieved utilizing a colloidal alumina
precursor compared to alumina derived from an aluminum salt that are
reasonably commensurate with the scope of protection sought by the claims
on appeal. Cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”); see also In re Harris, 409
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Application 13/916,727
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.”); In re Greenfield,
571 F.2d 1185, 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.’”) (QuotingIn re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re
Woodruff 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in 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). Appellants have
not adequately explained how the relatively few examples produced in the
Specification are representative of the scope of composite materials
encompassed by the claimed invention.
Claims 3, 4, 11, and 12
Appellants argue Di Monte has alumina present in a broad range of
100—20% and there is no overlap of the ranges with respect to the amounts
required in the claims 3,4, 11, and 12. (App. Br. 12—14.) Appellants argue
Examples 1, 6, and 7 and the data presented in Figure 7 establish that as the
content of alumina decreases, the reducibility of ceria increases, which
establishes a patentable distinction for the amount of alumina of from 20%
(Di Monte) compared to less than 20% or 18%. (Id. at 13.) Appellants also
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Application 13/916,727
argue Di Monte provides no guidance to select the amount of ceria required
by claims 11 and 12. {Id. at 15.)
Appellants’ arguments regarding the content of ceria are not
persuasive. As set forth above, the Examiner found Di Monte teaches ceria
is typically present at up to 20 % wt. (Final Act. 4; Di Monte 113.) This
disclosure would have suggested to a person of ordinary skill in the art the
use of ceria in amounts greater than 1% or 5% as required by claims 11 and
12.
Claims 3 and 11
It has been often said that when a claimed range overlaps, is close to,
or within a broader range disclosed in the prior art, the claimed range is
prima facie obvious. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1321-22 (Fed. Cir. 2004). When
“the difference between the claimed invention and the prior art
is the range or value of a particular variable,” then a patent
should not issue if “the difference in range or value is minor.”
Haynes Int’l v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed.
Cir. 1993); see also Titanium Metals Corp. of Am. v. Banner,
778 F.2d 775, 783 (Fed. Cir. 1985).
Iron Grip, 392 F.3d at 1321. This principle applies even in the case of
alloys for which several different elements have encompassed or
overlapping ranges. See In re Harris, 409 F.3d 1339 (Fed. Cir. 2005).
The case of Titanium Metals explains why claimed ranges that are
close to, or encompassed by, the prior art make compelling evidence of
obviousness in stating that “[t]he proportions are so close that prima facie
one skilled in the art would have expected them to have the same
properties.” 778 F.2d at 783 (emphasis added); see also KSR Int’l v.
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Application 13/916,727
Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”).
There is a reasonable expectation that utilizing alumina in an amount of
19.99%—an amount within the scope of less than 20% (required by claims 3
and 11)—would have substantially identical properties when utilizing
alumina an amount of 20% as described by Di Monte. Moreover, we note
that the Appellants have not established the criticality of the concentration
range disclosed by claims 3 and 11.
Claims 4 and 12
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner does not carry the burden of establishing
obviousness of the subject matter recited in claims 4 and 12 within the
meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the Examiner’s
§ 103(a) rejection of these claims.
The Examiner found Di Monte describes composite materials wherein
alumina is present in the amount of 20%. The Examiner determined the
alumina content of 18%—as required by claims 4 and 12 —would have been
determined through routine experimentation in an effort to optimize the
performance of a catalyst. (Final Act. 3—4.)
As stated by the predecessor court to our reviewing court in In re
Sebek, 465 F.2d 904, 907 (CCPA 1972),
[wjhere, as here, the prior art disclosure suggests the outer
limits of the range of suitable values, and that the optimum
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Application 13/916,727
resides within that range, and where there are indications
elsewhere that in fact the optimum should be sought within that
range, the determination of optimum values outside that range
may not be obvious.
On this record, the Examiner has not identified a teaching in Di Monte
that indicates or would have suggested the alumina should be utilized in an
amount within the range of 10—18% weight of the composite as recited in
claims 4 and 12. The Examiner has not directed us to evidence that
establishes Di Monte recognizes alumina can be utilized in an amount
substantially below 20%.
Accordingly, on this record, we are constrained to reverse the
Examiner’s rejection of claims 4 and 12 under 35 U.S.C. § 103(a).
DECISION
The rejection of claims 1, 3, 5—11, and 13 under 35 U.S.C. § 103(a) is
affirmed.
The rejection of claims 4 and 12 under 35 U.S.C. § 103(a) is reversed
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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