Ex Parte Bonrath et al

Patent Trial and Appeal Board

Aug 21, 2018

14380901 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/380,901 08/25/2014
23117 7590 08/23/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Werner Bonrath
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BHD-4662-2901 7326
EXAMINER
MA YES, MEL VIN C
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER BO NRA TH 1
and Axel Buss
Appeal2017-010884
Application 14/380,901
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
DSM IP Assets B.V. ("DSM") timely appeals under
35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-13 and 16.3
We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as DSM IP Assets
B.V. ("DSM"). (Appeal Brief, filed 4 August 2016 ("Br."), 2.)
2 Office Action mailed 4 April 2016 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 17 and 18 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal2017-010884
Application 14/380,901
A. Introduction4
OPINION
The subject matter on appeal relates to a metal powder catalytic
system said to be useful as an improvement on "Lindlar catalysts," which
comprise palladium deposited on a calcium carbonate carrier that is also
treated with lead. The '901 Specification reveals that the new catalyst is,
inter alia, easily removed ( e.g., by filtration) after the reaction, readily
recycled, stable in regards to acids and water, lead free, and shows high
selectivity in hydrogenation reactions. (Spec. 2, 11. 13-23.) Of particular
interest are reductions of alkynols (alcohols comprising a carbon-carbon
triple bond) to alkenols ( alcohols comprising a carbon-carbon double bond).
(Id. at 7-14, Examples 1-5.)
Sole independent claim 1 is representative and reads:
A powderous catalytic system comprising powder particles
formed of
a metal alloy carrier which is coated by a metal oxide
layer impregnated with Pd-nanoparticles,
wherein the metal alloy carrier comprises:
(i) 60 wt-% - 80 wt-%, based on total weight of the
metal alloy, of Fe,
(ii) 1 wt-% - 30 wt-%, based on total weight of the
metal alloy, of Cr, and
4 Application 14/380,901, Metal powderdous [sic] catalyst comprising a
Fe-alloy, filed 25 August 2014 as the national stage under 35 U.S.C. § 371
of PCT/EP2013/053513, filed 22 February 2013, claiming the benefit of an
application filed in the European Patent office on 24 February 2012. We
refer to the "'901 Specification," which we cite as "Spec."
2
Appeal2017-010884
Application 14/380,901
(iii) 0.5 wt-%-10 wt-%, based on total weight of the
metal alloy, of Ni.
(Claims App., Br. 9; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following ground of rejection 5, 6, 7 :
Claims 1-13 and 16 stand rejected under 35 U.S.C. § I03(a)
in view of the combined teachings of Bird, 8 Bonrath, 9
Tsang, 10 Martin, 11 and Hsiao. 12
5 Examiner's Answer mailed 7 June 2017 ("Ans.").
6 Because this application claims the benefit of an application filed before
the 16 March 2013, effective date of the America Invents Act, we refer to
the pre-AIA version of the statute.
7 The Examiner fails to cite claim 16 in the header of the rejection (FR 3,
Ans. 2), but does refer to claim 16 in the body of the rejection (FR 4, last
para.; Ans. 3, last para.), and DSM acknowledges the rejection of claim 16
(Br. 5), so the error is harmless.
8 Alfred J. Bird et al., Process for the hydrogenation of a vegetable oil, U.S.
Patent No. 4,163,750 (1979).
9 Werner Bonrath et al., Novel structured catalyst, WO 2012/001166 Al
(2012) (DSM is listed as the applicant).
10 Shik Chi Tsang et al., Magnetically separable, carbon-supported
nanocatalysts for the manufacture of fine chemicals, 116 Angewante Chem.
5763---67 (2004).
11 Christina Martin et al., Stainless steel microbeads coated with sulfonated
polystyrene-co-divinylbenzene, 165 Surface and Coatings Technology 58---64
(2003).
12 C.N. Hsiao et al., Aging reactions in a 17-4 PH stainless steel,
74 Materials Chemistry and Physics, 134--42 (2002).
3
Appeal2017-010884
Application 14/380,901
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
DSM urges that the catalyst system of Bonrath, which is based on
sintered metal fibers as a carrier for a ZnO metal oxide layer with embedded
Pd nanoparticles "cannot suggest to an ordinarily skilled person the coating
of Pd-nanoparticles impregnated powder particles as defined the applicants'
pending claims" (Br. 6, 11. 19--21) and as described by Bird. This is because,
in DSM's view, in contrast to a powder particle, "a fiber is well known to be
very elongate having a length exceeding its diameter." (Id. at 11. 23-24.)
DSM argues that "[ t ]he only rationale that has been expressed is the
assumption that: 'No difference in performance would be expected between
the mesh support and a powdered support, so there is no reason to suspect
that the coating of Bonrath would not similarly improve a powderous
catalyst."' (Id. at 7, 11. 18-23, quoting FR2, 11. 16-18 13 .) This argument is,
in DSM's view, mere speculation, and the rejection is therefore based on
hindsight.
Review of the rejection and the record does not support DSM's
arguments. As the Examiner finds (FR 3, 11. 17-19), Bird describes supports
for Pd hydrogenation catalysts that may be ceramic or metal "and may be in
the form of an extended surface, for example a honeycomb. Alternatively
the catalyst support may be in the form of particles or granules." (Bird,
col. 2, 11. 46-50.) In particular, the catalyst support may be a stainless steel
13 DSM counts these as lines 10-12 under the heading "Response to
Arguments." (Br. 5, n.3.)
4
Appeal2017-010884
Application 14/380,901
substrate. (Id. at 11. 53-54.) Bird thus teaches that the form of the substrate
does not influence strongly the catalytic hydrogenation activity of the Pd
catalyst. Bonrath teaches that coating the sintered metal fibers with an oxide
such as ZnO "promote the hydrogenation activity of the palladium catalyst"
(FR 3, 11. 23-24, citing Bonrath 3, 11.20-25 14). The teachings of Bird and
of Bonrath support the Examiner's reasonable conclusion that the catalyst
would have been expected to function on the various disclosed substrates,
regardless of their shape. DSM has not directed our attention to any
teaching in Bonrath that the activity of the ZnO is due to------or is particularly
sensitive to----the sintered metal substrate or to the one-dimensional fibrous
geometry of that substrate.
Bonrath also discloses the selection of sintered metal fibers as a way
to ease the separation of the heterogeneous catalyst particles from the
reaction mixture. (Bonrath 2, 11. 22-31.) The Examiner has addressed this
aspect of Bonrath's teachings by showing that magnetic supports for
catalysts were known in the art as another way of improving the separation
of catalyst heterogeneous catalyst particles from the reaction mixture.
However, DSM has not addressed the Examiner's findings (FR, sentence
bridging 3--4) regarding Tsang and Martin, namely that catalysts supported
on a magnetic core are useful for, in the words of Tsang, "efficient
separation of suspended magnetic catalyst bodies from the liquid product by
using an external magnetic field." (Tsang 5764, col. 1, 11. 15-16; see also
Martin, in the Introduction, disclosing martensitic steels as magnetic
14 "ZnO layer acts both as a basic support and a Pd promoter." (Bonrath 3,
1. 23.)
5
Appeal2017-010884
Application 14/380,901
particles.) The Examiner also identifies Hsiao as describing a particular
martensitic stainless steel, 17-4 15 PH (precipitation hardening) as a common
variety of exceptionally corrosion-resistant steel. (FR 4, 11. 2-5.) Thus,
DSM has not substantively challenged the Examiner's further findings
demonstrating that a reasonable method of separating the steel-core catalyst
from the reaction would have been obvious.
Finally, we observe that DSM has not raised arguments for
patentability based on unexpected results or other so-called "secondary
considerations."
We conclude that DSM has not carried its burden on appeal to
demonstrate harmful error in the rejection. In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("even assuming that the examiner had failed to make a
prima facie case, the Board would not have erred in framing the issue as one
of 'reversible error.')
C. Order
It is ORDERED that the rejection of claims 1-13 and 16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
15 The EOS StainlessSteel GP-I® used by DSM in the Examples (Spec. 9,
11. 7-8) is described as corresponding to US classification 17-4. (EOS
Material data sheet, EOS StainlessSteel GPI for EOSINT M 270, available
at
6
Application/Control No. Applicant(s)/Patent Under Patent
Appeal No.
Notice of References Cited
14/380,901 2017-010884
Examiner Art Unit
1732 Page 1 of 1
U.S. PATENT DOCUMENTS
*
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A US-
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS
*
Document Number Date
Country Code-Number-Kind Code MM-YYYY Country Name Classification
N
0
p
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T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
u S-GP1-M270_Material_data_sheet_04-09 _en
V
w
X
*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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Material data sheet
EOS StainlessSteel GP1 for EOSINT M 270
A number of different materials are available for use with EOSINT M systems, offering a broad
range of e-Manufacturing applications. EOS StainlessSteel GP1 is a stainless steel powder which
has been optimized especially for EOSINT M 270 systems. Other materials are also available for
EOSINT M systems, and further materials are continuously being developed - please refer to the
relevant material data sheets for details.
This document provides a brief description of the principle applications, and a table of technical
data. For details of the system requirements please refer to the relevant information quote.
Description, application
EOS StainlessSteel GP1 is a pre-alloyed stainless steel in fine powder form. Its composition cor-
responds to US classification 17-4 and European 1.4542. This kind of steel is characterized by
having good corrosion resistance and mechanical properties, especially excellent ductility in la-
ser processed state, and is widely used in a variety of engineering applications.
This material is ideal for many part-building applications (DirectPart) such as functional metal
prototypes, small series products, individualised products or spare parts. Standard processing pa-
rameters use full melting of the entire geometry with 20 µm layer thickness, but it is also
possible to use Skin Et Core building style to increase the build speed. Using standard parame-
ters the mechanical properties are fairly uniform in all directions. Parts made from
EOS StainlessSteel GP1 can be machined, spark-eroded, welded, micro shot-peened, polished
and coated if required. Unexposed powder can be reused.
Typical applications:
- engineering applications including functional prototypes, small series products, individu-
alised products or spare parts.
- parts requiring high corrosion resistance, sterilisability, etc.
- parts requiring particularly high toughness and ductility.
EOS StainlessSteel GPl
MMI / 04.09 1 / 5
EOS GmbH - Electro Optical Systems
Robert-Stirling-Ring 1
D-82152 Krailling / Miinchen
Telephone: +49 (0)89 / 893 36-0
Telefax: +49 (0)89 / 893 36-28
Internet: www.eos.info
Material data sheet
Technical data
General process and geometric data
Minimum recommended layer thickness
Typical achievable part accuracy [1]
- small parts
- large parts [2]
Min. wall thickness [3]
Surface roughness
- after shot-peening
- after polishing
Volume rate [4]
- standard parameters (20 µm layers, full density)
- Inner core parameters (Skin Et Core style, full density)
20 µm
0.8 mil
± 20 - 50 µm
0.8 - 2.0 mil
± 0.2 O/o
0.3 - 0.4 mm
O.Q12 - 0.016 in
Ra 2.5 - 4.5 µm, Ry 15 - 40 µm
Ra 0.1 - 0.2 , Ry 0.6 - 1.6 mil
R, up to< 0.5 µm
(can be very finely polished)
2 mmJ/s
0.44 inJ/h
4 mmJ/s
0.88 - 1.1 inJ/h
[1] Based on users' experience of dimensional accuracy for typical geometries, e.g.± 20 µm when parameters can
be optimized for a certain class of parts or± 50 µm when building a new kind of geometry for the first time.
[2] For larger parts the accuracy can be improved by post-process stress-relieving at 650 •C for 1 hour.
[3] Mechanical stability is dependent on geometry (wall height etc.) and application
[4] Volume rate is a measure of build speed during laser exposure. The total build speed depends on the average
volume rate, the recoating time (related to the number of layers) and other factors such as DMLS-Start set-
tings.
EOS StainlessSteel GPl
MMI / 04.09 2/5
EOS GmbH - Electro Optical Systems
Robert-Stirling-Ring 1
D-82152 Krailling / Miinchen
Material data sheet
Physical and chemical properties of parts
Material composition steel including alloying elements
Cr (15 - 17.5 wt-0/o)
Relative density with standard parameters
Density with standard parameters
Mechanical properties of parts [5]
Ultimate tensile strength
- in horizontal direction (XY)
- in vertical direction (Z)
Yield strength
(ReL, Lower yield strength)
- in horizontal direction (XY)
- in vertical direction (Z)
(ReH, Upper yield strength)
- in horizontal direction (XY)
- in vertical direction (Z)
EOS StainlessSteel GPl
MMI / 04.09
As manufactured
min 850 MPa (123 ksi)
typical 930 ± 50 MPa (135 ± 7 ksi)
min 850 MPa (123 ksi)
typical 960 ± 50 MPa (139 ± 7 ksi)
min 530 MPa (77 ksi)
typical 586 ± 50 MPa (85 ± 7 ksi)
min 530 MPa (77 ksi)
typical 570 ± 50 MPa (83 ± 7 ksi)
min 595 MPa (86 ksi)
typical 645 ± 50 MPa (94 ± 7 ksi)
min 580 MPa (84 ksi)
typical 630 ± 50 MPa (91 ± 7 ksi)
3/5
Ni (3 - 5 wt-0/o)
Cu (3 - 5 wt-0/o)
Mn (max. 1 wt-0/o)
Si (max. 1 wt-0/o)
Mo (max. 0.5 wt-0/o)
Nb (0.15 - 0.45 wt-0/o)
C (max. 0.07 wt-0/o)
approx. 100 D/o
7.8 g/cmJ
0.28 lb/inJ
Stress relieved
(1 hour at 650 °C)
typical 1100 MPa
(160 ksi)
typical 980 MPa
(142 ksi)
typical 590 Mpa
(86 ksi)
typical 550 MPa
(80 ksi)
typical 634 MPa
(92 ksi)
typical 595 MPa
(86 ksi)
EOS GmbH - Electro Optical Systems
Robert-Stirling-Ring 1
D-82152 Krailling / Miinchen
Material data sheet
Young's modulus
Elongation at break
- in horizontal direction (XY)
- in vertical direction (Z)
Hardness [6]
- as built
- ground Et polished [7]
170 ± 30 GPa
(25 ± 4 msi)
min 25 D/o
typical 31 ± 5 D/o
min 25 D/o
typical 35 ± 5 D/o
approx. 230 ± 20 HV1
approx. 250 - 400 HV1
typical 180 GPa
(26 msi)
typical 29 D/o
typical 31 D/o
[5] Mechanical testing according to ISO 6892:1998(E) Annex C, proportional test pieces, Diameter of the neck
area 5 mm, original gauge length 25 mm
[6] Vickers hardness measurement (HV) according to DIN EN ISO 6507-1. Note that depending on the measure-
ment method used, the measured hardness value can be dependent on the surface roughness and can be
lower than the real hardness. To avoid inaccurate results, hardness should be measured on a polished surface.
[7] Due to work-hardening effect
Thermal properties of parts
Coefficient of thermal expansion
- over 20 - 600 °C (68 - 1080 °F)
Thermal conductivity
- at 20 oc (68 OF)
- at 100 oc (212 OF)
- at 200 oc (392 OF)
- at 300 oc (572 OF)
Maximum operating temperature
EOS StainlessSteel GPl
MMI / 04.09 4/5
14 x 10-• m/m °C
7.8 x 10-• in/in °F
13 W/m °C
90 Btu/(h n2 °F/in)
14 W/m °C
97 Btu/(h n2 °F/in)
15W/m°C
104 Btu/(h n2 °F/in)
16W/m°C
111 Btu/(h n2 °F/in)
550 °C
1022 °F
EOS GmbH - Electro Optical Systems
Robert-Stirling-Ring 1
D-82152 Krailling / Miinchen
Material data sheet
The quoted values refer to the use of these materials with EOSINT M 270 systems according to current specifica-
tions (including the latest released process software PSW and any hardware specified for the relevant material} and
operating instructions. All values are approximate. Unless otherwise stated, the quoted mechanical and physical
properties refer to standard building parameters and test samples built in horizontal orientation. They depend on
the building parameters and strategies used, which can be varied by the user according to the application. Meas-
urements of the same properties using different test methods (e.g. specimen geometries) can give different results.
The data are based on our latest knowledge and are subject to changes without notice. They are provided as an in-
dication and not as a guarantee of suitability for any specific application.
EOS®, EOSINT®, DMLS® and DirectPart® are registered trademarks of EOS GmbH.
© 2009 EOS GmbH - Electro Optical Systems. All rights reserved.
EOS StainlessSteel GPl
MMI / 04.09 5/5
EOS GmbH - Electro Optical Systems
Robert-Stirling-Ring 1
D-82152 Krailling / Miinchen