Christopher T. Holt et al.Download PDFPatent Trials and Appeals BoardNov 4, 201915064823 - (D) (P.T.A.B. Nov. 4, 2019) 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. 15/064,823 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): Patents@lnlattorneys.com 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. Appeal 2018-009134 Application 15/064,823 3 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- Appeal 2018-009134 Application 15/064,823 4 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 Appeal 2018-009134 Application 15/064,823 5 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 Appeal 2018-009134 Application 15/064,823 6 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. Appeal 2018-009134 Application 15/064,823 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 Appeal 2018-009134 Application 15/064,823 8 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 Appeal 2018-009134 Application 15/064,823 9 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 Appeal 2018-009134 Application 15/064,823 10 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 Appeal 2018-009134 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 Appeal 2018-009134 Application 15/064,823 13 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 Copy with citationCopy as parenthetical citation