Ex Parte Zheng et alDownload PDFPatent Trial and Appeal BoardJun 20, 201713916727 (P.T.A.B. Jun. 20, 2017) Copy Citation 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 Br. 3.) 2 Pending claims 14—24 have been withdrawn from consideration.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. 2 Appeal 2016-003717 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.) 3 Appeal 2016-003717 Application 13/916,727 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 4 Appeal 2016-003717 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 5 Appeal 2016-003717 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 6 Appeal 2016-003717 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. 7 Appeal 2016-003717 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 8 Appeal 2016-003717 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 9 Copy with citationCopy as parenthetical citation