Ex Parte Böhringer et alDownload PDFPatent Trial and Appeal BoardNov 21, 201712595728 (P.T.A.B. Nov. 21, 2017) 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. 12/595,728 05/31/2011 Bertram Bohringer 78-10460 5697 77741 7590 11/24/2017 Rrannnn Sowers; Rr rYarraft PP EXAMINER 47 South Meridian Street HENDRICKSON, STUART L Suite 400 Indianapolis, IN 46204 ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 11/24/2017 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): docket @ bscattorney s. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERTRAM BOHRINGER, SVEN FICHTNER, and JANN-MICHAEL GIEBELHAUSEN Appeal 2017-000715 Application 12/595,728 Technology Center 1700 Before CHUNG K. PAK, AVELYN M. ROSS, and JANE E. INGLESE, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 16—18, 20-22, 24—31, and 35. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM and enter a new ground of rejection against claims 16—18, 20-22, 24—31, and 35 based on 1 In our Decision we refer to the Specification originally filed October 13, 2009, as amended, (“Spec.”), the Non-Final Office Action appealed from dated July 10, 2014 (“Non-Final Act.”), the Appeal Brief filed January 7, 2015 (Appeal Br.), the Examiner’s Answer dated May 4, 2015 (“Ans.”) and the Reply Brief filed July 6, 2015 (“Reply Br.”). 2 Appellants identify the real party in interest as Bliicher GmbH, the assignee of the above-captioned application. Appeal Br. 3. Appeal 2017-000715 Application 12/595,728 obviousness pursuant to 37 C.F.R. § 41.50(b). We also designate our affirmance as including a new ground of rejection because our reasons for affirming the prior art rejection of record differ from those expressed by the Examiner. See In reLeithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner”). STATEMENT OF THE CASE The claims are directed to high-performance adsorbents based on activated carbon having high meso- and macropososity and useful as adsorptive filtering materials in the food industry, pharmacy, and in the manufacture of adsorptive filtering materials (e.g., protective garments). Spec. 1 and 3. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. High-performance adsorbents based on discrete spherules of activated carbon, wherein: • the spherules of activated carbon have measure of central tendency particle diameters in the range from 0.01 to 2.0 mm, • at least 70% of the total pore volume of the high- performance adsorbents are formed by pores having pore o diameters of more than 20 A, • the high-performance adsorbents have a measure of central tendency pore diameter (mean pore diameter) of o more than 25 A, 2 Appeal 2017-000715 Application 12/595,728 • the high-performance adsorbents have a BET surface area of at least 1,250 m2/g, • the high-performance adsorbents have an iodine number of at least 1,250 mg/g, and • the high-performance adsorbents have an abrasion resistance, measured according to ASTM D3802, of at least 95%. Appeal Br. 34 (Claims App’x). REJECTION3 The Examiner maintains the rejection of claims 16—18, 20—22, 24—31, and 35 under 35 U.S.C. § 103(a) as unpatentable over Nishimura4, alone or in view of Stephens.5 Non-Final Act. 2. Appellants request our reversal of the Examiner’s rejection. See generally Appeal Br. Appellants rely on the same arguments for all claims on appeal. Id. Therefore, we confine our discussion to claim 16, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this rule, all other claims stand or fall with claim 1. 3 The Examiner previously rejected claims 16—31, 35, and 36 35 U.S.C. § 103(a) as unpatentable over Karles et al. (US 8,227,376 B2, issued July 24, 2012), alone or in view of Stephens. See, e.g., Non-Final Office Action dated February, 11, 2014. That rejection is no longer pending. See Ans. 4 (explaining that “[t]he Bohringer declaration refers to Karles, no longer applied”). 4 Yasushi Nishimura, US 4,761,284, issued August 2, 1988 (“Nishimura”). 5 Douglas K. Stephens, US 6,114,280, issued September 5, 2000 (“Stephens”). 3 Appeal 2017-000715 Application 12/595,728 OPINION The Examiner rejects claims 16—18, 20—22, 24—31, and 35 under 35 U.S.C. § 103(a) as unpatentable over Nishimura alone or Nishimura, as explained by Stephens. Non-Final Act. 2. The Examiner finds that “Nishimura teaches, especially in col. 4 and 7 and the tables, spherical carbon having the same size and large pores and overlapping area[s].” Id.', see also Ans. 2—3. The Examiner acknowledges that the iodine number and abrasion resistance are not expressly taught, but “Stephens is presented to indicate that iodine number roughly is equivalent to BET area,” and Nishimura teaches a BET surface area of 500-2000 m2/g. Ans. 2—3. Nishimura describes its particles for “use in human bodies ‘without disintegration’. Therefore, it would be reasonably expected to have high abrasion resistance.” Id. at 3. Appellants argue that the teachings of Stephens are insufficient to establish a correlation between the BET surface area and an iodine number. Appeal Br. 17. Rather, Appellants explain that “Stephens only suggests a correlation between BET surface area and the iodine number for pores in the micro and mesopore regions, regions that exclude the macropore region” and because claim 16 requires at least 70% of the total pore volume to be in the meso- and macropore region, there is no correlation. Id. Appellants also contend that certain properties of the carbon particles are missing from the combined teachings of Nishimura and Stephens and cannot be deemed possessed by Nishimura because they are not a “reflection of the pore characteristics” as alleged by the Examiner. Appeal Br. 20 and 27. In particular, Appellants identify (1) at least 70% of the pore volume is formed o by pores having pore diameters of more than 20 A, (2) the mean pore 4 Appeal 2017-000715 Application 12/595,728 o diameter is more than 25 A, (3) an iodine number of at least 1,250 mg/g, and (4) an abrasion resistance of at least 95% as missing, and further that these missing limitations cannot be deemed to exist based solely on BET surface area and particle diameter. Id. at 21—22. We agree with Appellants that the Examiner’s rejection is not as detailed as it could be. Nonetheless, we concur with the Examiner’s conclusion that claims 16—18, 20-22, 24—31, and 35 are obvious over Nishimura alone, or Nishimura, as explained by Stephens. As the Examiner finds, Nishimura teaches spherical particles having a diameter of 0.07 to 1.8 mm (within the claimed range of 0.01 to 2.0 mm), a o o o pore diameter of 200-150,000A (above the 20 A and 25 A mean required by claim 16), and a BET surface area of 500—2000m2/g. Ans. 2. However, the teachings of Nishimura do not end here. Nishimura further explains that the “spherical particles of activated carbon . . . compris[e] . . . at least 85%, preferably 90%, in number of microscopically spherical particles of activated carbon which have . . . diameters of 0.05 to 2.0 mm and a pore cavity volume not more than 0.05 cc/g determined in the range of pore- radius of 5,000 to 75,000 A.” Nishimura col. 3,11. 12—22 (emphasis added); see also id. at col. 1,11. 28—35 and 45—52, col. 2,11. 9-17, col. 3,11. 25—37, col. 4,11. 1—5 and 11. 24—30 (“pore-radius of 100 to 75,000 A”). Furthermore, Nishimura discloses Specimens 2 and 3 (Table 1) having particle sizes, pore radius, and surface area properties as claimed. Id. at col. 7,1. 55—col. 8,1. 25. Thus, we agree with the Examiner (Ans. 2—3) that the only two properties not expressly taught include the iodine number and abrasion resistance. 5 Appeal 2017-000715 Application 12/595,728 Regardless of whether Stephens indicates a general correlation between the BET surface area and the iodine number of a particle, the Examiner further finds similarities in the method and starting materials of the instant invention and Nishimura, specifically that the “specification carbonizes DVB-PS materials at 850 degrees for 4 hours, then activation at 900 for 8.5 hours [where] Nishimura uses a temperature of 900 degrees, and teaches that organic polymers can be the carbon source.” Ans. 4; compare Nishimura col. 4,11. 50-54 with Spec. 21. In addition, carbonization occurs in an inert atmosphere (compare Nishimura col. 4,11. 50—51 with Spec. 21) and is followed by activation in water vapor at a temperature of 900 to 1000 -C (Nishimura col. 4,11. 51—53) or at a temperature of 700 to 1300 -C (Spec. 22—23). Therefore, in light of these similarities and “the inability of the PTO to obtain and characterize the products of Nishimura” (Ans. 3), the Examiner reasons that the iodine number and BET area will reasonably correspond so that where Nishimura teaches a BET surface value of 1500 m2/g, an iodine value of at least 1,250 (as claimed) would result. Ans. 4. We agree. “Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“However, when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not”). Appellants’ arguments discussed below fail to meet the requisite burden of showing that the exemplified products of 6 Appeal 2017-000715 Application 12/595,728 Nishimura do not inherently have the iodine number and abrasion resistance recited in claim 16. Appellants also rely upon the Declarations of Dr. Bohringer6 and Mr. McQuigg7 who conclude, based on their analysis of Stephens as supported by published articles, that “a close correlation d[oes] not generally exist and that it was not possible to determine the iodine number for a carbon particle based solely on its BET surface area.” Appeal Br. 17. For example, Mr. McQuigg explains that Stephens shows at the upper end of the disclosed ranges (650-1000 versus 600—1200 m2/g), the iodine number is about 17% lower than the surface area value and at the lower end, the iodine number is about 8% higher than the surface area value. McQuigg Decl. 110; see also Bohringer Decl. 16 (reasoning that about 20% at the upper end is “hardly a close correlation”). We are not persuaded that these Declarations demonstrate that the exemplified products of Nishimura do not inherently have the iodine number and abrasion resistance recited in claim 16. The Examiner’s position that the correlation, while not absolute, is close enough to suggest that a BET surface area of 1500 m2/g would be expected to have an iodine number of 1,250 is supported by the Declarants’ evidence. Ans. 3. For example, the Nwosu reference at Table 3 illustrates that in five out of six examples, a BET surface area of 1500 m2/g would likely yield an iodine number of at least 1,250. McQuigg Decl., Exhibit C, 92 (reporting an iodine number larger than the corresponding BET value in 5 of 6 cases). Furthermore, ASTM D 6 Declaration of Dr. Bertram Kurt Bohringer, dated December 16, 2013 (“Bohringer Deck”). 7 Declaration of Donald W. McQuigg, dated December 20, 2013 (“McQuigg Decl.”). 7 Appeal 2017-000715 Application 12/595,728 4607 states the “[ijodine number may be used as an approximation of surface area for some types of activated carbons.” Id. at Exhibit E, 14.1 (emphasis added); see also id. at Exhibit D, 1 (“Iodine Number is the most common standard for indicating total surface area available for adsorption . . . and it approximates the internal surface area (micropores) in square meters per gram”). The Standard Test Method acknowledges that “any relationship between surface area and iodine number cannot be generalized” as “it varies with changes in carbon raw material, processing conditions, and pore volume distribution.” Id. at Exhibit E, 14.1. But as discussed above (supra 5—6), there is substantial parity between the materials, processing method and conditions, as well as pore volumes (and other properties) in Nishimura as compared to those described in the instant disclosure. Nevertheless, Appellants do not proffer any evidence that the exemplified products of Nishimura do not inherently have the iodine number and abrasion resistance recited in claim 16. Appellants contend that the Examiner fails to correlate digestion with the ASTM D3802 test. Reply Br. 6. Appellants explain that the “mechanical stress the inventive carbon is intended to withstand” cannot be compared to the disintegration discussed in Nishimura because they are used in different environments. Id. In arguing that the mechanical stress of the gastrointestinal tract is not the same as the ball/pan test described in ASTM D3802, Appellants fail to show, through evidence or argument, that the particles of Nishimura would not possess the claimed abrasion resistance. Once the Examiner shows that the products of Nishimura are substantially identical to the claimed product and are produced by substantially the same process for producing the claimed product as here, the burden is on 8 Appeal 2017-000715 Application 12/595,728 Appellants to show the contrary. Best, 562 F.2d at 1255; In re Spada, 911 F.2d705, 708 Appellants also argue that “the Examiner fails to predictably produce Applicants’ claimed high-performance adsorbent having all of the [claimed] properties” because the combination of properties is not foreseeable, but are rather the product of unexpected results. Appeal Br. 24 and 29. Appellants rely upon Mr. McQuigg who explains that particles with large surface areas and pore diameters are understood to have lower physical strength. Id.; see also McQuigg Decl. 113. Thus, the preparation of carbon particles having the unique combination of “high levels of resistance to abrasion with such increased levels of porosity could not be predicted in view of the cited art or his own experience.” Appeal Br. 25. We do not find Appellants’ arguments persuasive of reversible error. The prior art reference Nishimura teaches a complete disclosure of the claimed invention.8 Cf. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). In addition, the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was unexpected. See In re Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants’ comparative results are not based on a comparison to the closest prior art—in this case the exemplified 8 In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[L]ack of novelty is the ultimate of obviousness. . . . That the rejection is here described as one under § 103 is not controlling, for it is not in this case rebuttable by evidence. Here we have the ultimate obviousness — lack of novelty. To recognize that fact is not to replace the rejection with a new one based on anticipation.”)) 9 Appeal 2017-000715 Application 12/595,728 embodiments in Nishimura—and, therefore, fails to establish unexpected results. Appellants also argue that the lack of factual similarity between In re Malagari and the instant case render the Examiner’s use as inappropriate. Appeal Br. 22—23. As the Examiner explains, “[t]he Malagari caselaw decision does not shed any light as to the 2 properties in question.” Ans. 4. Therefore, Appellants’ argument fails to identify reversible error. Thus, because Appellants do not argue, much less show, that the exemplified products of Nishimura do not necessarily possess the additional properties as claimed, we are constrained to affirm. But, because we rely upon record evidence and reasoning that is different from that of the Examiner, we designate our affirmance as a new ground. DECISION The Examiner’s rejection of claims 16—18, 20—22, 24—31, and 35 is affirmed, but we designate our affirmance as including new grounds of rejection. NEW GROUNDS OF REJECTION DESIGNATION Notwithstanding our concurrence with the Examiner’s obviousness conclusion, we designate our affirmance as including new grounds of rejection because we have relied on additional facts and reasoning in support of the obviousness conclusion. Our new grounds of rejection designation preserves the procedural safeguards that must be afforded to the Appellant. In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011) (“Had the Board labeled its rejection as a new ground of rejection, Stepan could have 10 Appeal 2017-000715 Application 12/595,728 reopened prosecution to address the newly-alleged deficiencies in its Declaration with the examiner”); Leithem, 661 F.3d at 1319 (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner”). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record .... 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). AFFIRMED: 37 C.F.R, § 41.50(b) 11 Copy with citationCopy as parenthetical citation