Christopher T. Holt et al.

Patent Trials and Appeals Board

Nov 4, 2019

15064823 - (D) (P.T.A.B. Nov. 4, 2019)

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.
15/064,823 03/09/2016 Christopher T. Holt MTTR.009 (018471-11) 9122
155017 7590 11/04/2019
Luper Neidenthal & Logan
1160 Dublin Road, Suite 400
Colombus, OH 43215-1038
EXAMINER
CALL, DOUGLAS BRYANT
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
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eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER T. HOLT,
PAUL H. MATTER, and MICHAEL G. BEACHY
Appeal 2018-009134
Application 15/064,823
Technology Center 1700
Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to finally reject claims 1, 3, 5–12, and 23–30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 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 pH Matter, LLC.
Appeal Br. 6.
Appeal 2018-009134
Application 15/064,823
2
CLAIMED SUBJECT MATTER
The claims are directed to a chromium-free water-gas shift (“WGS”)
catalyst. Claim 1, reproduced below from the Claims Appendix to
Appellant’s Appeal Brief, is illustrative of the claimed subject matter:
1. A chromium-free water-gas-shift catalyst comprising:
an oxide of iron,
an oxide of boron, and
an oxide of aluminum.
Remaining independent claim 27 similarly recites a chromium-free
water-gas-shift catalyst comprising a solid solution of iron, aluminum,
boron, and oxygen.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Asano et al. (“Asano”) US 3,971,735 July 27, 1976
Tonkovich et al.
(“Tonkovich”)
US 2004/0034111 A1 Feb. 19, 2004
Fraenkel US 2005/0054738 A1 Mar. 10, 2005
Ozkan et al. (“Ozkan”) US 2008/0233045 A1 Sept. 25, 2008
Qian et al. (“Qian”) CN 101518737 A Sept. 2, 2009
REJECTIONS
The Examiner maintains, and Appellant requests review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1, 3, 5–12, and 23–29 as unpatentable over
Tonkovich in view of Ozkan and Qian; and
2. Claim 30 as unpatentable over Tonkovich in view of Ozkan
and Qian, and further in view of Asano and Fraenkel.
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OPINION
Appellant provides substantive arguments directed to limitations of
claims 1 and 27, but otherwise does not separately argue claims 3, 5–12, 23–
26, and 28–30. Appeal Br. 12–33. Therefore, we decide this appeal on the
basis of claims 1 and 27, with each of dependent claims 3, 5–12, 23–26, and
28–30 standing or falling its parent independent claim. See 37 C.F.R.
§ 41.37(c)(1)(iv).
After review of the Examiner’s and Appellant’s opposing positions
and the evidence of obviousness adduced by the Examiner in light of
Appellant’s countervailing evidence, we determine that Appellant’s
arguments and evidence are insufficient to outweigh the evidence of
obviousness marshalled by the Examiner. Thus, Appellant has not identified
reversible error in the Examiner’s obviousness rejection. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated
obviousness rejections for substantially the fact findings and the reasons the
Examiner set forth in the Examiner’s Answer. We offer the following for
emphasis only.
1. The Examiner’s position
The Examiner finds that Tonkovich discloses a chromium-free water-
gas-shift catalyst comprising one or more catalyst metals such as boron,
copper, and aluminum, as well as oxides of boron, copper, iron, and
aluminum. Ans. 3. However, the Examiner acknowledges that Tonkovich
fails to disclose the form of the oxides. Id. The Examiner finds Ozkan
discloses an essentially chromium-free water-gas-shift catalyst comprising
iron, aluminum, and copper, with copper oxide and iron oxide—as hematite
or magnetite. Id. In addition, the Examiner finds Qian discloses a water-gas-
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Application 15/064,823
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shift catalyst comprising iron oxide or copper oxide and boron oxide or
aluminum oxide. Id. The Examiner concludes that it would have been
obvious to utilize the iron, aluminum, and copper oxides of Ozkan and the
boron oxide of Qian in Tonkovich’s water-gas-shift catalyst. Id. at 4.
2. Appellant’s position
Appellant argues that the claimed catalyst achieves results that are
unpredictable and unexpected. Appeal Br. 17. Appellant urges that because
the Examiner failed to consider Appellant’s unexpected results, or the
teaching away in the prior art, the Examiner failed to articulate reasons for
the combination. Id. at 31. Appellant contends that Tonkovich, Ozkan, and
Qian lack possession of the named catalysts, and Tonkovich in particular is
non-enabling as to WGS catalysts. Id. at 17–20 (citing MPEP § 2121.01).
Appellant also contends that Ozkan’s catalyst lacks boron and would
not be expected to be as stable as commercial Fe-Cr-Al-Cu compositions
because it lacks chromium to stabilize the iron. Appeal Br. 21. As such,
Appellant urges that Ozkan would not motivate examination of either boron
or aluminum to stabilize a chromium-free WGS catalyst. Id. Moreover,
Appellant contends that because Ozkan is silent as to the location of
aluminum in the catalyst, Ozkan fails to teach a catalyst with boron or
aluminum in solid solution. Id.
Appellant next contends that Qian lacks possession of catalysts
containing boron because, although listing boron in combination with iron,
zinc, and copper as a catalyst, Qian does not disclose an example of such a
catalyst composition. Appeal Br. 21–22. Appellant urges that Qian’s listing
of boron and aluminum would not motivate a combination of boron and
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aluminum. Id. at 22. Appellant also asserts that Qian fails to mention
anything regarding solid solutions. Id.
Appellant further asserts that experimental evidence presented in the
application shows unexpected results. Appeal Br. 23. In this regard,
Appellant urges that boron has been shown to poison WGS catalytic activity.
Id. (citing Colin Rhodes et al., Promotion of Fe3O4/Cr2O3 High Temperature
Water Gas Shift Catalyst, 3 Catalysis Communications 381–84 (2002)
(“Rhodes”)). Appellant asserts that, other than listing boron as a possible
catalyst material, no prior art examines the use of boron in WGS catalysts.
Id. at 24. Although observing that doping gun barrel steel with boron
improved its durability, Appellant states a similar result was not expected for
catalysts. Id. at 24–25.
Appellant argues that “[s]urprisingly, if both aluminum and boron
were used in combination, a catalyst with both good activity and
hydrothermal stability is found in Table 2 of the [Specification].” Appeal Br.
25. Appellant specifically compares examples on rows 4, 12, and 13 of
Table 2, indicating that only the sample with “the optimal amount of Al and
B in combination showed good stability.” Id. at 27. Appellant also compares
examples on rows 1 and 4 of Table 3, indicating that optimizing the
calcination temperature of Fe-Cu-Al-B catalyst that matches the commercial
Fe-Cr stability. Id.
Appellant further contends that excluding boron fails to produce a
stable catalyst. Appeal Br. 28 (citing Spec. Table 3, row 5). Appellant
further compares Figures 1–3, asserting that Figure 2, showing optimized
Fe-Cu-Al-B catalyst, has similar catalytic performance after multiple
thermal cycles as the commercial Fe-Cr catalyst. Id. Appellant notes that
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Application 15/064,823
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Figure 3, showing Fe-Cu-Al catalyst “without the optimal amount of boron,”
demonstrates catalytic deactivation after a single thermal cycle to 550°C. Id.
Appellant argues, therefore, that “only the combination of aluminum and
boron, particularly when combined with a high calcination temperature,
produces a catalyst with activity and stability matching the commercial
standard.” Id. at 30.
Appellant next argues that the claimed invention satisfies a long-felt
need in the art to remove chromium from high temperature WGS catalysts
due to chromium toxicity, as recognized even by Ozkan. Appeal Br. 32–33.
Appellant asserts:
Despite decades of research, catalyst developers have not
found a route to replace the chromium that still produces a
catalyst with activity and hydrothermal[] stability matching Fe-
Cr-Al-Cu. This high motivation, still unmet in the industry, is in
itself a strong argument against obviousness.
Id. at 33.
3. Analysis
Initially, we observe that the Examiner has considered each of
Appellant’s arguments, and has articulated reasoning with rational
underpinning in support of the conclusion of obviousness. See Ans. 3–10; In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”) (quoted with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). In addition, the
Examiner has also considered Appellant’s assertion of surprising and
unexpected results. See Ans. 10–11.
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7
We further note that Appellant’s arguments as to the teachings of the
prior art primarily address these teachings individually, rather than what the
combined teachings of the prior art, as a whole, would have suggested to one
of ordinary skill in the art. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
accord Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319,
1336–37 (Fed. Cir. 2004); In re Keller, 642 F.2d 413, 425 (CCPA 1981); In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Further, we are not persuaded by Appellant’s argument that
Tonkovich lacks possession of, and is non-enabling for, catalysts made from
elements listed therein, including boron and aluminum. A reference applied
by an examiner in a prior art rejection is presumed to be enabling. In re
Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (“[A] prior art printed publication
cited by an examiner is presumptively enabling barring any showing to the
contrary by a patent applicant.” (quoting In re Antor Media Corp., 689 F.3d
1282, 1288 (Fed. Cir. 2012))); accord In re Sasse, 629 F.2d 675, 681 (CCPA
1980) (it is applicant’s burden to demonstrate non-enablement of a
reference). Where, as here, an appellant has challenged the enablement of a
cited reference, we review all evidence and appellant argument to determine
if the prior art reference is enabling. Morsa, 713 F.3d at 109; Antor Media,
689 F.3d at 1292.
In this regard, we note that Appellant expresses the wrong standard
for assessing the propriety of maintaining the Examiner’s obviousness
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rejection using Tonkovich. While a reference applied as an anticipatory
teaching under 35 U.S.C. § 102 must contain an enabling disclosure, a
reference need not be enabling for the purpose of determining obviousness
under 35 U.S.C. §103. See MPEP § 2121.01(II). A reference, regardless of
its operability, is prior art for all that it teaches. Beckman Instruments, Inc. v.
LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (“Even if a
reference discloses an inoperative device, it is prior art for all that it
teaches.”). However, when considered as a whole, the prior art must enable a
person of ordinary skill in the art to make and use the invention. Id.
Here, Appellant argues that each of Tonkovich, Ozkan, and Qian
individually lacks possession of the claimed invention and, therefore, is non-
enabling. Even if persuasive, Appellant’s arguments fail to address the
question whether the prior art, as a whole, is enabling. Further, merely
arguing that each reference, though listing oxides of iron, boron, copper, and
aluminum as possible catalyst materials for a WGS catalyst, fails to provide
an example with this combination of elements, is insufficient. See Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll
disclosures of the prior art, including unpreferred embodiments, must be
considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)));
accord In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining
that a prior art reference’s disclosure is not limited to its examples).
Appellant does not dispute, for example, that Tonkovich teaches that a
catalyst may include boron oxide, iron oxide, and aluminum oxide, but
instead criticizes Tonkovich for the breadth of possible catalytic elements
disclosed therein. This critique is insufficient to establish either that the prior
art is non-enabling or that the prior art as a whole fails to render the
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Application 15/064,823
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combination any less obvious. See Merck, 874 F.2d at 807 (“That the ʼ813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”); accord In re Susi,
440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the
disclosure of the prior art was “huge, but it undeniably include[d] at least
some of the compounds recited in appellant’s generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant’s additives”).
Turning next to Appellant’s assertion of unexpected results, we are in
agreement with the Examiner that Appellant’s evidence fails to establish
unexpected results for the invention of claims 1 and 27. As the Examiner
notes, claim 1 is not limited to a solid solution, and neither claim 1 nor claim
27 recites copper or the amounts of each of the constituents. Ans. 11.
However, Appellant’s experimental data set forth in Specification Tables 1
and 2, and Figures 2 and 3, include copper in each of the inventive catalysts.
As such, the Examiner determines that the results are not commensurate in
scope with the claims.
In response, Appellant argues that copper and solid solution are not
critical to the results. Reply Br. 4–7. Appellant asserts that the skilled artisan
would know that most commercial Fe-Cr catalysts contain a small amount of
copper to improve performance. Id. at 4, citing to Rhodes, generally.
Appellant further urges that the skilled artisan would understand that copper
could easily be replaced with a number of other similar metal catalysts, such
as Pt, Pd, Au, etc., to improve performance. Id. at 4–5. Appellant also asserts
that Rhodes discusses the promoting effect of copper, as well as alternative
promoters to copper. Id. at 5. Appellant also notes that even Tonkovich
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confirms that other performance promoters to copper were known. Id. As
such, Appellant contends that copper is not essential to the invention and
need not be part of the inventive catalyst. Id.
Similarly, Appellant also argues that the invention need not be limited
to a solid solution as the unexpected results do not rest solely on having a
solid solution. Reply Br. 5–6. Instead, Appellant contends that the
unexpected and surprising result is that the use of boron, though “widely
believed in the art to be poisonous to WGS catalytic activity, could in fact be
used as a performance stabilizer without adversely affecting initial catalytic
performance.” Id. at 6 (footnote omitted). Appellant urges that there is no
evidence that suggests a boron-utilizing catalyst must exist in a solid-
solution with all of the constituents. Id. Appellant speculates that “it is
possible boron only needs to be in solid solution with the iron phase and thus
aluminum could be a separate support phase.” Id. at 7 (citing Tonkovich
¶ 54). Further, Appellant speculates that it is possible that some elements fall
out of solid solution or become enriched at the surface where catalytic
activity occurs, which is difficult to characterize or define. Id.
Appellant’s arguments are not persuasive that the Examiner reversibly
erred in determining that the experimental data presented in the
Specification and drawings are not commensurate in scope with claims 1 and
27. Appellant’s position that the addition of copper provides a predictable
result on the one hand such that it need not be included in the claims, while
at the same time asserting that the results are surprising and unexpected is
inconsistent. We recognize that Appellant’s position is that it was
unexpected that the combination of boron and aluminum provides similar
stabilization of the iron and catalytic performance as chromium. However,
Appeal 2018-009134
Application 15/064,823
11
Appellant’s catalyst compositions in support of this position all include
copper, and Appellant fails to direct our attention to any persuasive evidence
that copper is not required to achieve stability and performance similar to
Fe-Cr catalysts.
In addition, we are not persuaded that a solid solution is also not
similarly required by Appellant’s experimental data. Again, we note
Appellant’s position that a solid solution is not required, while at the same
time arguing that the experimental data demonstrate surprising and
unexpected results is inconsistent. Indeed, Appellant does not dispute that all
the data present solid solutions of catalytic compositions. Moreover,
Appellant’s speculation regarding what elements need or need not be in solid
solution, as well as whether such elements are or are not in solid solution at
the catalytic surface, lacks evidentiary support in the record. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot
take the place of evidence.”). We also note that claim 27 requires a solid
solution of iron, aluminum, boron, and oxygen, without limiting which
elements are in solid solution or where the solid solution exists in the
catalyst. Further, although Rhodes teaches that adding boron decreases
activity, Rhodes teaches that this “effect is quite minor.” Rhodes 382. In
fact, Rhodes teaches that the CO conversion is only reduced by 0.1% upon
the addition of 2 wt.% boron. Id., Table 1.
Additionally, we note that Appellant’s evidence does not consistently
demonstrate improved results for all catalysts within the scope of claims 1
and 27, i.e., containing iron, aluminum, boron, copper, and oxygen. For
example, rows 15–17 of Table 2 are catalyst examples within the scope of
claims 1 and 27, yet these examples did not yield results comparable to the
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Application 15/064,823
12
commercial Fe-Cr catalyst. Spec. 9, Table 2. Also, the examples of rows 7
and 9 of Table 2 using cobalt instead of boron appear to provide similar
results to some of the inventive examples. Id. Similarly, the example of row
3 of Table 3 is also within the scope of claims 1 and 27, but failed to yield
stability results after 1 and 2 thermocycles. Id. at 10, Table 3.
We also note that Appellant fails to direct our attention to persuasive
evidentiary support in the record that the results were surprising or
unexpected to the ordinary artisan. “[I]t 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. 1994)); see also Pearson, 494 F.2d at 1405.
Turning next to Appellant’s argument that the claimed invention
fulfills a long-felt need, we are in agreement with the Examiner that the
record before us is insufficient to establish a long-felt need. To persuasively
establish long-felt need, Appellant must show not only a demand existed for
the claimed invention, but also that others tried but failed to satisfy that
demand. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d 1063, 1082–83 (Fed. Cir. 2012). As with unexpected
results, Appellant must “submit actual evidence of long-felt need, as
opposed to argument.” In re Kahn, 441 F.3d at 990.
Here, the only evidence of long-felt need Appellant directs our
attention to is Ozkan, which was filed in 2006, less than nine years before
Appellant’s provisional filing date. Thus, the record fails to establish a
persistent need or demand for a chromium-free WGS catalyst having similar
catalytic performance and thermostability as a commercial Fe-Cr WGS
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catalyst. Additionally, Appellant fails to direct our attention to any evidence
of the failure of others. Appellant’s experimental data presented in the
Specification and drawings is insufficient to show either a long-felt need or a
failure of others because it merely presents Appellant’s own work.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting claims 1,
3, 5–12, and 23–30 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5–12,
23–29
103 Tonkovich, Ozkan,
Qian
1, 3, 5–12,
23–29

30 103 Tonkovich, Ozkan,
Qian, Asano,
Fraenkel
30
Overall
Outcome
1, 3, 5–12,
23–30

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