GENCELL LTD.

Patent Trials and Appeals Board

Sep 23, 2021

2020005602 (P.T.A.B. Sep. 23, 2021)

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.
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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))
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(“[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).
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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
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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
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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.
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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
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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.
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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
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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
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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
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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