GENCELL LTD.Download PDFPatent Trials and Appeals BoardSep 23, 20212020005602 (P.T.A.B. Sep. 23, 2021) 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. 15/548,214 08/02/2017 Gennadi FINKELSHTAIN 6250-P50397 1711 13897 7590 09/23/2021 Abel Schillinger, LLP 12414 Alderbrook Drive Suite 201 Austin, TX 78758 EXAMINER IQBAL, SYED TAHA ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 09/23/2021 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GENNADI FINKELSHTAIN, NINO BORCHTCHOUKOVA, and LEONID TITELMAN Appeal 2020-005602 Application 15/548,214 Technology Center 1700 ____________ Before DONNA M. PRAISS, JENNIFER R. GUPTA, and LILAN REN, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 36–55. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Aug. 2, 2017 (“Spec.”), the Final Office Action dated Sept. 27, 2019 (“Final Act.”), the Appeal Brief filed Feb. 18, 2020 (“Appeal Br.”), the Examiner’s Answer dated May 28, 2020 (“Ans.”), and the Reply Brief filed July 27, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies GENCELL Ltd. as the real party in interest. Appeal Br. 3. Appeal 2020-005602 Application 15/548,214 2 STATEMENT OF THE CASE The invention relates to a nickel-based catalyst for the thermal decomposition of ammonia into hydrogen and nitrogen. Spec. ¶ 1. According to the Specification, the invention is based on an unexpected finding that both the percentage of nickel oxide in the catalyst and the particle size of the catalyst “significantly affects the performance of the catalyst.” Id. ¶ 31. The Specification states that there is a non-linear relationship between the concentration of nickel oxide in the catalyst and the catalyst performance and that employing the powder form reduces the temperature at which efficient decomposition of ammonia into hydrogen and nitrogen can be effected compared to granulated or pellet forms. Id. The Specification describes the nickel oxide of the invention comprising at least 25% by weight of nickel oxide relative to the catalyst and “[p]articularly good results are usually obtained when the concentration of nickel oxide in the catalyst ranges from 34% to 38% by weight of nickel oxide.” Id. ¶ 32. Claim 36, reproduced below, is illustrative. 36. A catalyst for the thermal decomposition of ammonia, wherein the catalyst comprises from 32 % to 42 % by weight of nickel oxide and is present in powder form, at least 50 % of all powder particles having a particle size of not more than 0.5 mm. Appeal Br. 12 (Claims Appendix) (disputed elements italicized). ANALYSIS We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)) Appeal 2020-005602 Application 15/548,214 3 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejection. The Examiner’s rejection relies on the following prior art reference: Name Reference Date Okamura US 2011/0176988 A1 July 21, 2011 The Examiner maintains the following rejection: Claims Rejected 35 U.S.C. § References/Basis 36–55 103 Okamura Appellant argues the rejection of claims 36–46, 51, 52, 54, and 55 together. Appeal Br. 5–11. Therefore, we select claim 36 as representative of this group, and claims 37–46, 51, 52, 54, and 55 stand or fall with claim 36. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). We address Appellant’s arguments directed to claims 36, 47–50, and 53 below.3 Claim 36 The Examiner’s rejection of claim 36 relies on Okamura’s disclosure of an ammonia catalyst having active components A and B where B can be 3 Appellant notes in the Reply Brief that the Examiner’s Answer does not identify a supervisory patent examiner (SPE) as a conferee in the appeal conference. Reply Br. 2 (quoting MPEP § 1207.01). In response, we note that the Examiner’s Answer lists two conferees with the titles Primary Examiner and Quality Assurance Specialist. Ans. 6. We also note that the quoted MPEP section states that “participants of the appeal conference should include” the examiner, the SPE, and another examiner. MPEP § 1207.01 (emphasis added). Appeal 2020-005602 Application 15/548,214 4 nickel oxide in an amount of preferably 10–40% by mass relative to the mass of catalytically active components A and B. Final Act. 2 (citing ¶¶ 48– 53). The Examiner finds Okamura discloses nearly all of the catalyst’s particles are less than 0.5mm in size as claimed because the particle size of component A is 100nm and for component B the particle size is 25nm. Id. at 2–3 (citing Okamura ¶ 130). Appellant contends the Examiner erred in rejecting claim 36 because “OKAMURA does not state [that] the indicated percentage range is that of nickel or that of nickel oxide or any other form of nickel.” Appeal Br. 6. Appellant also argues that because Okamura’s percentage of component B is relative to the catalytically active material only, “OKAMURA leaves it open what the percentage of component B should be in [the] case of the additional presence of a carrier (inert material).” Id. Appellant does not dispute the Examiner’s finding that Okamura discloses particle sizes for components A and B, but asserts those sizes for components A and B are disclosed with respect to catalyst III and not catalyst I. Id. at 8–9. Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claim 36 as obvious over the teachings of Okamura. The cited record in this appeal supports the Examiner’s findings. Okamura explicitly discloses “nickel oxide” for component B. Okamura ¶ 52. Okamura discloses its catalyst comprises catalytically active components A and B and explicitly teaches component B “may preferably be from 0% to 50% by mass, more preferably from 10% to 40% by mass, relative to 100% mass of the catalytically active component.” Okamura ¶ 53. Moreover, Appellant does not adequately explain why a person having ordinary skill in the art would understand Okamura’s disclosed particle sizes Appeal 2020-005602 Application 15/548,214 5 for components A and B to apply solely to the components A and B in catalyst example III. In this regard, Appellant acknowledges that Okamura does not contain any other disclosure to a preferred particle size of the catalyst example components A and B. Appeal Br. 9. Thus, Okamura’s disclosed ranges for particle size and the nickel oxide content in its catalyst overlap the entire range recited in claim 36 and a more preferred range for nickel oxide content narrows around, and almost fully overlaps, the claimed range of 32% to 42% nickel oxide. Even a slight overlap in ranges establishes a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Accordingly, Appellant’s assertion that Okamura does not disclose or suggest every limitation of claim 36 is not supported by the appeal record. In the Reply Brief, Appellant argues that claim 36 is directed to a catalyst and not just to a catalytically active component of a catalyst. Reply Br. 2–3. This argument does not adequately distinguish claim 36 over Okamura because Okamura likewise discloses a catalyst and claim 36 does not require any specific components beside nickel oxide in the claimed percentage by weight. Appellant argues that the Specification’s Tables 1 to 4 rebut the obviousness rejection because they show “significantly higher” ammonia decomposition activity for two catalysts (34.9% and 37.5% nickel oxide) within the claimed range and “that surprisingly, the catalytic activity is not a linear function of the concentration of [nickel oxide].” Appeal Br. 6–7. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Whether an invention has produced unexpected Appeal 2020-005602 Application 15/548,214 6 results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no hard-and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir.1990) (“Each situation must be considered on its own facts.”). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must also be shown to be unexpected compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Additionally, the relied-upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. Appeal 2020-005602 Application 15/548,214 7 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). We agree with the Examiner that the evidence presented is not commensurate in scope with the claims to establish unexpected results attributable to the claimed nickel oxide and particle ranges. As the Examiner states, Appellant’s unexpected results in Tables 1–4 are specific to 34.9% and 37.5% nickel oxide at 500–525ºC without any particle size specified. Ans. 6. Thus the evaluated product has not been shown to meet all of the limitations of claim 36. Id. Moreover, based on the record in this Appeal, Appellant fails to adequately show that the differences between the comparative results would have been unexpected compared to the closest prior art, i.e., known catalytically active material, across the scope of the claimed catalyst. Appellant’s position is that (1) it does not matter what temperature the unexpected results have been obtained because claim 36 is directed to a product not a process, and (2) it does not matter that the particle size is not specified because Table 5 shows the effect of particle size is independent from the nickel oxide concentration. Reply Br. 3. However, Appellant’s positions are inconsistent with the Specification which states “both the percentage of nickel oxide in the catalyst . . . and the particle size/particle size distribution of the catalyst significantly affects the performance of the catalyst.” Spec. ¶ 31. Regarding temperature, the Specification discloses a relationship between temperature and the efficient decomposition of ammonia. Id. (“employing the catalyst in powder form . . . significantly reduces the temperature at which an efficient decomposition of ammonia into hydrogen and nitrogen can be effected.”). Regarding the criticality of Appeal 2020-005602 Application 15/548,214 8 the claimed range for nickel oxide concentration, the Specification identifies other ranges including “at least 25 % by weight of nickel oxide” and “34 % to 38 %” (id.) which also differ in scope from the two data points to which Appellant directs us, suggesting that the asserted unexpected results are not supported by the full range of recited 32% to 42% in claim 36. The preponderance of the evidence in this appeal record, including Appellant’s objective evidence of non-obviousness, therefore, supports the Examiner’s conclusion that the claimed subject matter would have been obvious in view of Okamura’s ammonia decomposition catalyst. Accordingly, we affirm the Examiner’s rejection of claim 36 as well as claims 37–46, 51, 52, 54, and 55 under 35 U.S.C. § 103 for the above reasons and those the Examiner provides. Claims 47–49 Dependent claims 47–49 each recite “the catalyst comprises from 34 % to 38 % by weight of nickel oxide,” which is a narrower range than the “32% to 42%” range recited in claim 36.4 Appeal Br. 9. Because we find Appellant’s arguments directed to the claimed catalyst’s nickel oxide content unpersuasive of error in the Examiner’s rejection of claim 36 for the reasons discussed above, we likewise affirm the Examiner’s rejection of claims 47– 49 for the same reasons. 4 Claim 48 depends from claim 39 and additionally requires that “at least 70 % of all powder particles have a particle size of not more than 0.4 mm.” Appeal Br. 12, 13 (Claims App.). Claim 49 depends from claim 41 and additionally requires that “at least 50% of all powder particles have a particle size of not more than 0.3 mm.” Id. Appellant does not argue these additional claim limitations in the Appeal Brief. Appeal 2020-005602 Application 15/548,214 9 As discussed above in connection with claim 36, Okamura’s disclosure overlaps the claimed nickel oxide content and Appellant’s objective evidence of non-obviousness fails to establish that the results are unexpected, that the results are for the claimed product, and that the results presented are commensurate in scope with the claimed ranges. In the Reply Brief, Appellant asserts that “it is reasonable to assume that the unexpected result is obtained not only with a concentration of 34.9 and 37.5% NiO but within a (relatively narrow) range that encompasses these concentrations.” Reply Br. 3. However, Appellant’s mere assertion that the gaps between the data and the claimed catalyst are close enough is insufficient to establish the data is commensurate in scope with claims 47–49, let alone that the results would have been unexpected compared to the closest prior art. See Geisler, 116 F.3d at 1470. Claim 50 Claim 50 depends from claim 36 and recites “wherein the catalyst further comprises inert material comprising at least one of alumina and calcium aluminate.” Appeal Br. 13 (Claims App.). In addition to the Examiner’s findings with respect to independent claim 36, the Examiner finds Okamura teaches alumina as a carrier. Final Act. 3 (citing Okamura ¶ 132). Appellant argues the Examiner erred because Okamura does not provide any information as to the weight percentages of components A and B when carrier is included in the total weight of the catalyst. Appeal Br. 10. As discussed above, Okamura discloses a range of 10–40% by mass of nickel oxide (component B) relative to the catalytically active material in the catalyst. Okamura ¶ 53. We agree with the Examiner (Ans. 5–6) that the Appeal 2020-005602 Application 15/548,214 10 inert material is not catalytically active and that the nickel oxide percentage is not relative to the weight of the inert carrier in either Okamura or dependent claim 50. As the Examiner notes (Ans. 6), claim 50 does not specify any particular amount of carrier, let alone that the nickel oxide content required by claim 36 includes the weight of the inert carrier. Therefore, the teachings of Okamura sufficiently disclose or suggest the further limitation of claim 50. Accordingly, we sustain the Examiner’s rejection of claim 50 over Okamura. Claim 53 Claim 53 is directed to a reactor comprising the catalyst of claim 36, a gas inlet, and a gas outlet “wherein the reactor is capable of decomposing at least 99.8% by volume of ammonia at 575ºC and a gas hourly space velocity of hydrogen plus nitrogen of 2,000 h-1.” Appeal Br. 13 (Claims App.). In addition to the Examiner’s findings with respect to independent claim 36, the Examiner finds Okamura teaches similar operating parameters, therefore Okamura’s reactor is capable of performing the function of the recited reactor structure. Final Act. 3–4 (citing Okamura ¶¶ 22, 137, 169). Appellant argues that the Examiner erred in finding that Okamura’s disclosure suggests the reactor is capable of performing the recited functions of Appellant’s claimed reactor. Appeal Br. 10. Appellant’s argument is not persuasive of error because claim 53 defines the claimed reactor functionally. A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). Yet, choosing to define an element functionally, i.e., by what it does, carries Appeal 2020-005602 Application 15/548,214 11 with it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in Swinehart, 439 F.2d at 213: where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Appellant does not dispute the Examiner’s finding that Okamura teaches similar operating parameters. The Examiner directs Appellant to Okamura’s paragraphs 22, 137, and 169 which disclose operating conditions for Okamura’s production process including a flow rate of the gas containing ammonia per catalyst is a space velocity of preferably 2,000 to 150,000 h-1, a reaction temperature of 400 ºC, 450 ºC, or 500 ºC, and a reaction pressure of 0.101325 MPa (normal pressure). The record thus supports the Examiner’s determination that Okamura’s production process has similar operating parameters to those recited in claim 53, therefore, Okamura’s reactor is capable of performing the recited functions. Accordingly, we sustain the Examiner’s rejection of claim 53 over Okamura. CONCLUSION For these reasons and those the Examiner provides, we uphold the Examiner’s rejection of claims 36–55 under 35 U.S.C. § 103 as obvious over Okamura. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 36–55 103 Okamura 36–55 Appeal 2020-005602 Application 15/548,214 12 TIME PERIOD FOR RESPONSE 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation