W. R. GRACE & CO.-CONN.

Patent Trials and Appeals Board

May 19, 2021

2020003357 (P.T.A.B. May. 19, 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.
14/416,469 01/22/2015 Yuying Shu W9960-01 4785
30633 7590 05/19/2021
W.R. GRACE & CO.-CONN.
7500 GRACE DRIVE
COLUMBIA, MD 21044
EXAMINER
SLIFKA, COLIN W
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
05/19/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUYING SHU, WU-CHENG CHENG,
RICHARD F. WORMSBECHER, KEVIN J. SUTOVICH,
RANJIT KUMAR, and MICHAEL S. ZIEBARTH
Appeal 2020-003357
Application 14/416,469
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 8, 10–16, and 28. We have
jurisdiction under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed January 22, 2015
(“Spec.”); the Final Office Action dated November 7, 2017 (“Final Act.”);
the Appeal Brief filed July 2, 2018 (“Appeal Br.”); the Examiner’s Answer
dated July 19, 2018 (“Ans.”); and the Reply Brief filed November 13, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as W.R.
Grace & Co.-Conn. Appeal Br. 2.
Appeal 2020-003357
Application 14/416,469

2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an ultra low soda catalytic cracking catalyst
composition. Spec. ¶ 9. Claim 1, reproduced below with emphasis to
highlight a key disputed limitation, is illustrative of the claimed subject
matter:
1. An ultra low soda fluid catalytic cracking catalyst
having increased activity and improved selectivity for cracking
a hydrocarbon feedstock to lower molecular weight products,
the catalyst comprising a particulate composition comprising a
zeolite having catalytic cracking activity under fluid catalytic
cracking conditions, a magnesium salt, clay, an inorganic
binder and optionally at least one matrix material, wherein the
catalyst has a Na2O content of less than 0.7 wt% Na2O, on a
zeolite basis, based on the total weight of the catalyst
composition, and the catalyst is free of rare earth metal
containing compounds.
Appeal Br. 8 (App. A) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections on appeal (Ans. 3–
4):
Rejection 1: Claims 1–6, 8, 10–16, and 28 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Hu et al. (US 2011/0120911 A1,
published May 26, 2011);
Rejection 2: Claims 1–6, 10–16, and 28 are rejected on the ground of
non-statutory double patenting as unpatentable over claims 1–3, 5, 6, 8–11,
13, and 21 of U.S. Patent No. 9,993,810; and
Appeal 2020-003357
Application 14/416,469

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Rejection 3: Claims 1–6, 8, 10–16, and 28 are rejected on the ground
of non-statutory double patenting as unpatentable over claims 1–6, 12–15,
17, 19, 23–25, 27, 28, 30, and 48–50 of U.S. Patent No. 10,005,072.
DISCUSSION
Rejection 1 – Obviousness over Hu
The dispositive issue before us in this appeal is:
Has the Examiner reversibly erred in finding that Hu teaches a
catalytic cracking catalyst as in claim 1, where the catalyst is “free” of rare
earth metal containing compounds? We answer this question in the negative.
According to Appellant’s Specification, “free” as it relates to an
amount of rare earth metals means “less than 0.3 wt%,” measured as the
oxide, based on the total weight of the composition. Spec. ¶ 21.
Appellant argues that there are no examples in Hu that teach a catalyst
“free” of rare earth metals or a catalyst including less than 0.3% of yttrium
excluding all other rare earth metals. Appeal Br. 4. Appellant argues that
Hu’s teaching that yttrium, a rare earth metal, may be present in amounts
ranging from about 0.1% to about 12% by weight of the composition,
without more, would not be sufficient to establish a prima facie case of
obviousness that the catalyst is free of rare earth metal containing
compounds. Id. at 6.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection. “A reference must be considered for everything that it
teaches, not simply the described invention or a preferred embodiment.” In
re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). As the
Examiner finds, Hu teaches a catalyst composition including yttrium
Appeal 2020-003357
Application 14/416,469

4
preferably in amounts of about 0.1% to about 12% by weight. Final Act. 5
(citing Hu ¶ 25). The preferred range of yttrium taught by Hu overlaps with
the range of “less than 0.3 wt%” given in Appellant’s Specification for a
catalyst “free” of rare earth metal. In re Peterson, 315 F.3d 1325, 1329–30
(Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.”).
Because Appellant does not identify error in the Examiner’s § 103(a)
rejection over Hu, we sustain the rejection of claims 1–6, 8, 10–16, and 28.
Rejections 2 and 3 – Non-statutory Double Patenting
Appellant states that they “are willing to file terminal disclaimers
against U.S. Patent No. 9,993,810 and U.S. Patent No. 10,005,072 to
overcome the double patenting rejections after the . . . obviousness rejection
of this application is resolved.” Reply Br. 5. Because Appellant does not
present any substantive arguments regarding the double patenting rejections,
we summarily affirm the rejections. See Manual of Patent Examining
Procedure (MPEP) § 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).

Appeal 2020-003357
Application 14/416,469

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–
16, 28
103(a) Hu 1–6, 8, 10–
16, 28

1–6, 10–16,
28
Obviousness-type
Double Patenting
1–6, 10–16,
28

1–6, 8, 10–
16, 28
Obviousness-type
Double Patenting
1–6, 8, 10–
16, 28

Overall
Outcome
1–6, 8, 10–
16, 28

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED