Drexel, Claus-Peter et al.Download PDFPatent Trials and Appeals BoardMar 6, 202013582177 - (D) (P.T.A.B. Mar. 6, 2020) 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. 13/582,177 08/31/2012 Claus-Peter Drexel 032301 R 730 3728 441 7590 03/06/2020 SMITH, GAMBRELL & RUSSELL, LLP 1055 Thomas Jefferson Street Suite 400 WASHINGTON, DC 20007 EXAMINER LAZARO, DOMINIC ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 03/06/2020 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): docketing@sgrlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________ Ex parte CLAUS-PETER DREXEL, FRANK HASELHUHN, FRANK HEINDL, RALF RAUSCH, and GUENTER STEIN _________________ Appeal 2018-008254 Application 13/582,177 Technology Center 1600 _________________ Before DONALD E. ADAMS, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the Examiner’s decision to reject claims 1–3, 12–16, 18–20, 23, 24 and 27–36. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Evonik Degussa GmbH. (Appeal Br. 3.) 2 We consider the Final Office Action issued May 5, 2017 (“Final Act.”), the Appeal Brief filed January 4, 2018 (“Appeal Br.”), the Examiner’s Answer issued on May 16, 2018 (“Ans.”) in reaching our decision. Appeal 2018-008254 Application 13/582,177 2 The Examiner rejected claims 1, 3, 23, 27–36 under 35 U.S.C. § 103(a) as unpatentable over Bouchara3 and Cabelka.4 (See Final Act. 3– 11.) The Examiner also rejected claims 2 and 24 under 35 U.S.C. § 103(a) as unpatentable over Bouchara, Cabelka, and Deller.5 (See id. at 15–17.) Appellant’s Specification is directed to granular silicas for use as carrier material, such as to produce solid formulations from liquid substances. (See Spec. 1.) Appellant reports that granular silicas of the invention have three characteristics: [1] a sufficiently high porosity (reported as “Hg pore volume”); [2] an optimized particle size (reported as “dQ3=10%” and “dQ3=90%” for the fine and coarse fractions, respectively); and [3] better- stabilized pore walls (reported as the ratio of the mean particle size (d50) without ultrasound exposure to the mean particle size (d50u) after 3 min. of ultrasound exposure element). (See Spec. 5.) According to Appellant, the claimed granular silicas have increased mechanical stability high absorptivity and optimal particle size distribution due to the recited particle porosity [1], size [2], and stability [3]. (See Spec. 5.) Appellant’s claim 1 recites6: Granular silica having [1] an Hg pore volume (< 4 μm) of 0.90 ml/g to 1.30 ml/g, 3 U.S. Patent Application Publication 2009/0050557 A1, published February 26, 2009. 4 U.S. Patent Application Publication 2010/0151038 Al, published June 17, 2010. 5 U.S. Patent 5,776,240, issued July 7, 1998. 6 Claim 1 has been modified by adding bracketed numbers to the elements of the claimed granular silica. Appeal 2018-008254 Application 13/582,177 3 [2] a dQ3=10% of >428 μm with, at the same time, a dQ3=90% of 923 μm to 2448 μm, and [3] a ratio of the d50 without ultrasound exposure to d50 after 3 min of ultrasound exposure of 2.10 to < 4.00, the measurement being effected on a fraction of particles from 400 to 500 µm. (Appeal Br. 34.) Appellant’s independent claim 33 is similar, reciting limitations on Hg pore volume, dQ3=10% and dQ3=90% particle size distribution, and ratio of d50 without ultrasound exposure to d50 after three minutes of ultrasound exposure, but different values for these limitations. (See Appeal Br. 36.) The third recited limitation on the claimed granular silica of claim 1, the “ratio of the d50 without ultrasound exposure to d50 after 3 min of ultrasound exposure of 2.10 to < 4.00, the measurement being effected on a fraction of particles from 400 to 500 µm . . . ,” is a determination of how much the particle size is reduced by mechanical stress and, therefore, is a determination of the hardness of the silica. (See Spec. 11.) Bouchara teaches granular silica characterized by pore volume and mean particle size. (See Bouchara abstract, ¶¶ 6–9.) The granular silica of Bouchara is also characterized by a cohesion index (“CI”), which is a measure of the tendency of a sample to break or split up when handled or used and is an expression of median particle diameter with and without ultrasound treatment. (See Bouchara ¶¶ 10, 12–14, 16.) Bouchara teaches granular silica with a CI of less than 0.25 or even less than 0.07. (Id. ¶ 25.) The Examiner finds that the CI taught in Bouchara “appear[s] substantially identical” to the d50 with and without ultrasound determinations Appeal 2018-008254 Application 13/582,177 4 in the instant application. (Final Act. 10–11.) The Examiner finds that a 400 to 500 µm fraction of Bouchara’s “highly cohesive” silica granules would possess a ratio of d50 with and without ultrasound treatment of less than 3.00 and greater than 1.00, rendering obvious the claimed d50 range. (Id.) The Examiner maintains that it would have reasonably been expected that the silica taught in Bouchara would “maintain cohesiveness in order to approach and overlap the instantly claimed d50 after 3 min of ultrasound” because Bouchara teaches that the lower the CI, the higher the cohesion of the sample and thus the lower the tendency of the sample to break or split when used. (Ans. 28, citing Bouchara ¶ 16.) According to the Examiner, the teaching in Bouchara of a CI of less than 0.25 is substantially identical to the claimed range because a fraction of Bouchara’s highly cohesive silica granules per Cabelka would possess a 2.10 to 4.00 “d50” ratio of median particle sizes (wherein the “d50” ratio of median particles sizes is the “d50” without ultrasound exposure over the “d50” after 3 minutes of ultrasound exposure) similar to the granular silica of the instant claims, thereby rendering obvious the requirement for the ratio of median particle size (i.e., “d50”) without ultrasound exposure to the “d50” after 3 minutes of ultrasound exposure of “2.10 to < 4.00” (claim 1) and “2.50 to< 4.00” (claim 33). (Ans. 29.) Thus, the Examiner finds that the CI of the granular silica of Bouchara is “substantially identical” to the d50 ratio of the claimed silica and, thus, renders it obvious. Appellant disagrees with these findings, arguing that Bouchara bases its determinations on ultrasound treatment of only two minutes, whereas the Appeal 2018-008254 Application 13/582,177 5 claimed d50 determinations are of ultrasound treatment for three minutes. (See Appeal Br. 23.) Appellant argues that there is no overlap between the d50 values recited in claim 1 and the CI taught in Bouchara and they are not substantially the same. (See Appeal Br. 23–24.) To support these arguments, Appellant presents the affidavit of inventor Claus-Peter Drexel, executed February 26, 2014 (“First Drexel Affidavit”). Dr. Drexel reports that he performed tests on experimental grade silica of 400 –500 µm to compare the effects of two versus three minutes of ultrasound exposure. (First Drexel Affidavit 1–2.) Dr. Drexel presents the results of these tests in Table I: (First Drexel Affidavit 2.) According to Dr. Drexel, changing from a two minute duration to a three minute duration was observed to yield a further increase in the “D50-Ratio” of approximately 15.6%. (See First Drexel Affidavit 2.) Dr. Drexel explains that “the term ‘Ratio d50P:d50A’ refers to the ratio of the d50 prior to the ultrasound exposure (i.e., d50P) to the d50 after the ultrasound exposure (i.e., d50A) of the tested granular silica.” (First Drexel Affidavit 1–2.) Dr. Drexel concludes that “as evidenced by the foregoing results in Table I, a difference in the duration of ultrasound exposure (including a difference between 2 minutes and 3 minutes) will yield an appreciable difference in the resulting D50-Ratio of the granular silica – with longer durations yielding higher ratio values.” (First Drexel Affidavit 2.) Dr. Drexel concludes further that “it is incorrect to suggest that exposing a Appeal 2018-008254 Application 13/582,177 6 granular silica to an ultrasound energy for a duration of 2 minutes can be expected to yield substantially the same result as exposing the same granular silica to an ultrasound energy for a duration of 3 minutes.” (First Drexel Affidavit 4.) Appellant presents a second affidavit by Dr. Drexel, executed August 26, 2016 (“Second Drexel Affidavit”). (See Appeal Br. 25.) In this affidavit, Dr. Drexel reports the measurement of a silica sample (Tixosil® 38X) by laser diffraction without ultrasound treatment or with either two minutes or three minutes of ultrasound treatment, but otherwise the same conditions. (See Second Drexel Affidavit 1–2.) From the results reported by Dr. Drexel, Tixosil® 38X has a two minute d50 ratio of 2.85 and a three minute d50 ratio of 5.62. (See Second Drexel Affidavit 1–3.) Dr. Drexel concludes it is understood that while a silica may have a “2 min. d50 ratio” that falls within a specified range, that same silica has been shown to have a “3 min. d50 ratio” that does not fall within that same range – as, for example, wherein the “2 min. d50 ratio” of the Tixosil® 38X (at 2.85) is within a range of less than 4.00, whereas the “3 min. d50 ratio” of the Tixosil® 38X (at 5.62) is outside the range of less than 4.00. (Second Drexel Affidavit 3.) Appellant argues that this evidence shows that a two minute ultrasound exposure will not necessarily yield a d50 ratio with the claimed range and that it is unreasonable for the Examiner to rely on an apparent similarity of the claimed range and the range taught in Bouchara based only on a numerical similarity. (See Appeal Br. 25–26.) Appeal 2018-008254 Application 13/582,177 7 The Examiner dismisses Appellant’s arguments, stating that Appellant focuses on the differing measurement criteria and not on the “high cohesiveness” of Bouchara’s silica, which would provide it with “high bond strength” and, thus, the same cohesiveness as the claimed silica. (Ans. 29.) The Examiner explains the reliance on the cohesiveness determinations in Bouchara, wherein a silica that is much softer than either instantly claimed silica or Bouchara is more likely to exhibit a “d50 initial/d50 2 min” at 2 minutes of ultrasound that is greater than 4.00, which would not approach the instantly claimed “d50” after 3 minutes of ultrasound since d50 decreases with increasing ultrasound exposure times and the ratio increases, whereby the softer silica would be distinguishable from that of the instant claims. (Ans. 29.) The Examiner fails to provide evidence of CI determinations, or d50 ratios that define silica with “high cohesiveness” or that define “softer” silica. We are not persuaded by the Examiner’s reasoning because it is not based on specific evidence that the silica of Bouchara would demonstrate a d50 ratio within the claimed range. “[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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner identifies Bouchara as the “closest prior art” and asserts that Appellant has the burden to provide evidence distinguishing the claimed silica from Bouchara’s silica. (Ans. 32.) Although the silica of Bouchara may exhibit a CI at least overlapping with the claimed d50 ratio range, we Appeal 2018-008254 Application 13/582,177 8 disagree that merely being the “closest prior art” shifts the burden to Appellant. Rather, it is the Examiner’s burden to show that the silica of Bouchara is necessarily the same or overlapping with the claimed silica. Only then does the burden shift to Appellant to show that despite the appearance, they are not the same. The Examiner also asserts that Appellant’s calculations regarding the CI taught in Bouchara “does not preclude the ‘D50initial/D503min’ overlap of Bouchara and the claimed silica” (Ans. 32), but the Examiner fails to direct us to evidence that they necessarily overlap. Appellant submitted evidence, specifically Dr. Drexel’s affidavits, that persuades us that because the ratio of d50 at 1 minute to a d50 at 2 minutes does not indicate the same ratio of d50 at 1 minute to d50 at 3 minutes, the Examiner has failed to provide the required showing that the prior art and the claimed ranges are necessarily the same. The Examiner criticizes Dr. Drexel’s affidavits for several reasons. (See Ans. 36–39.) First, the Examiner find that because Bouchara does not teach the specific silica, “Tixosil® 38X” used in the studies reported by Dr. Drexel in his second affidavit, the affidavit is not a comparison of the particular silica of the closest prior art and mischaracterizes the rejection as being based on the properties of any silica. (See Ans. 36–37.) The Examiner states that the rejection is not based on any silica having a claimed range of a “d50-0 min” to “d50-3 min” ratio, but instead on the particular, highly cohesive silica of Bouchara. (Ans. 36.) According to the Examiner, absent evidence to the contrary, Bouchara’s silica would be expected to possess the claimed range of d50 ratio. (See id.) Appeal 2018-008254 Application 13/582,177 9 We disagree with the Examiner’s understanding of Dr. Drexel’s second affidavit. Rather than being evidence of what Bouchara specifically teaches regarding the cohesive index of the silica taught, we understand the second affidavit to demonstrate that one of ordinary skill would not have been able to determine the ratio of d50 with and without 3 minutes of ultrasound treatment from data about the ratio with and without 2 minutes of ultrasound treatment. We understand from Dr. Drexel’s second affidavit that without knowing the CI that results from a ratio with three minutes of ultrasound treatment, the Examiner’s finding that the silica of Bouchara is substantially identical to the claimed silica. The Examiner fails to direct us to evidence that the difference between two and three minutes of ultrasound treatment would be inconsequential for the silica used in Bouchara, when it provided for a different ratio with Tixosil® 38X. The Examiner also rejects Appellant’s arguments based on Dr. Drexel’s affidavits because the results reported in Tables II and III of the first affidavit provide d50 ratios of particular particle fractions after one minute and three minutes. (See Ans. 37–39.) According to the Examiner, it would have been obvious to optimize the particle size distribution of the silica taught in Bouchara to obtain the specific values recited in Appellant’s claims. (See Ans. 37–39.) We do not find the Examiner to be responsive to the evidence presented in Dr. Drexel’s first affidavit. Rather than demonstrating whether or not it would have been obvious to obtain granular silica of the recited particle size, the data reported by Dr. Drexel shows that one of ordinary skill would not have been able to determine that the silica of Bouchara has a d50 ratio claimed from the characteristics taught in Bouchara. Dr. Drexel Appeal 2018-008254 Application 13/582,177 10 concludes: “as evidenced by the foregoing results in Table II and Table III, a difference in the particle fraction size will yield an appreciable difference in the resulting D50-Ratio of the granular silica – with larger particle fractions yielding higher ratio values.” (First Drexel Affidavit 3.) We find that the reported data shows that it is inappropriate to draw the conclusion that the d50 ratios reported in Bouchara are substantially identical to the claimed d50 ratios. In regard to obviousness due to the ability of an ordinarily skilled artisan to achieve the claimed d50 ratio through routine optimization, the Examiner notes that Bouchara teaches calcination of silica by heat treatment. (See Ans. 34–35, citing Bouchara ¶¶ 77–79.) The Examiner relates this heat treatment to the heat treatment taught in Appellant’s Specification to achieve calcination and hardening of the silica. (See Ans. 34–35.) The Examiner finds that these disclosures demonstrate that calcination of silica is a result effective variable affecting the high-bond strength of silica and being subject to routine optimization. (See Ans. 35.) According to the Examiner, [s]ince Bouchara describes a preparation for a high bond strength silica involving similar drying conditions, as well as similar treatments identified in appellant’s specification for enhancing hardness, namely exposure to water, exposure to alkaline, and calcination, it reasonably follows that Bouchara’s silica would have the same hardness as the silica of the instant application for exhibiting the claimed “d50-0 min” to “d50 3 min” ratio range. (Ans. 35 (emphasis added).) We are not persuaded by the Examiner’s reasoning because the Examiner does not demonstrate that the effect of heat or calcination on hardness, or more importantly on the d50 ratio, was known to be a result Appeal 2018-008254 Application 13/582,177 11 effective variable from the teachings of Bouchara or elsewhere in the prior art. The Examiner’s reliance on Appellant’s Specification does not persuade us that ordinarily skilled artisans would have considered it routine to optimize calcination to achieve a specific d50 ratio as claimed. See In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (“The question is whether the dimensions were known to be result-effective variables.”). We are not persuaded that Bouchara teaches or suggests granular silica having the ranges of d50 without ultrasound exposure to d50 after 3 minutes of ultrasound exposure required in claim 1 or claim 33. The basis of the Examiner’s rejection is obviousness over Bouchara in view of Cabelka, with Cabelka cited for its teaching of particle sizes, not a d50 ratio with and without ultrasound exposure. (See Final Act. 4–5, citing Cabelka ¶ 24.) Because Cabelka does not cure the deficiency of the Examiner’s findings regarding Bouchara, we are persuaded by Appellant’s arguments that the Examiner has failed to show that the granular silica recited in independent claim 1 or 33 would have been obvious over Bouchara and Cabelka. Similarly, in the rejection of dependent claims 2 and 24, the Examiner cites Deller for its teaching that the pH granular silica can be altered during pyrogenic preparation. (See Final Act. 15–17, citing Deller 6:12–19.) Because the Examiner does not cite Deller for a d50 ratio with and without ultrasound exposure, we are persuaded by Appellant’s argument that the Examiner has failed to show why claims 2 and 24 would have been obvious over Bouchara, Cabelka, and Deller. Appeal 2018-008254 Application 13/582,177 12 Conclusion Upon consideration of the record and for the reasons given, we reverse the Examiner’s rejections. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 23, 27– 36 103 Bouchara, Cabelka 1, 3, 23, 27– 36 2, 24 103 Bouchara, Cabelka, Deller 2, 24 Overall Outcome 1–3, 23, 24, 27–36 REVERSED Copy with citationCopy as parenthetical citation