Ex Parte Burba et al

Patent Trial and Appeal Board

Apr 26, 2016

11931616 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111931,616
22442 7590
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
10/31/2007 John L. Burba III
04/28/2016
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.
6062-27 1413
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. BURBA III and TIM L. ORIARD1
Appeal2014-007213
Application 11/931,616
Technology Center 1700
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 68-77, 79-85, 87-91, 94--98, 101, 103, 104, 106---
108, 110, 111, and 115-122.2 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Molycorp Minerals, LLC is identified as the real party in interest. App.
Br. 2.
2 Appellants incorrectly represent claims 78 and 112 as pending by including
these claims in the Claims Appendix of the Appeal Brief (Amended Appeal
Brief filed 11March2014 (App. Br.) 26, 30). In fact, claims 78 and 112
were canceled via an amendment filed 8 August 2013.
Appeal2014-007213
Application 11/931,616
Appellants claim a method of contacting an aqueous solution
comprising an active biological contaminant with an aggregate composition
comprising cerium oxide (Ce02) and another rare earth compound, wherein
the contacting kills the active biological contaminant (independent claims
68, 94, and 103). In more specific embodiments, the method requires that
each of the cerium oxide and the other rare earth compound kill the active
biological contaminant or that each has a bacteriostatic and/or antimicrobial
effect (see, e.g., dependent claims 104 and 108).
A copy of representative claims 68, 103, 104, and 108, taken from the
Claims Appendix of the Appeal Brief, appears below.
68. A method, comprising:
contacting an aqueous solution comprising an active
biological contaminant with an aggregate composition
comprising cerium (IV) oxide (Ce02) and another rare earth
compound, wherein the contacting of the aggregate
composition with the aqueous solution kills the active
biological contaminant to form a treated aqueous solution
substantially depleted of the active biological contaminant,
wherein:
the biological contaminant is one or more of bacteria,
fungi, protozoa, and algae;
the aggregate composition [is] in the form of an extruded
flowable particulate, granule, bead, pellet, powder, or fiber
comprising a polymeric binder and at least about 75% by
weight cerium (IV) oxide-containing particles;
the extruded aggregated particulates have an average
surface area of at least about 70 m2/g; and
the extruded aggregated particulates have a mean
aggregate size of at least about 25 µm.
103. A method, comprising:
receiving an aqueous solution comprising an active
biological contaminant; and
contacting the aqueous solution with an aggregate
comprising cerium (IV) oxide (Ce02) and a rare earth-
2
Appeal2014-007213
Application 11/931,616
containing compound other than cerium, the cerium (IV) oxide
being insoluble in the aqueous solution and the other rare earth-
containing compound being soluble in the aqueous solution, the
cerium in the cerium (IV) oxide and the rare earth in the other
rare earth-containing compound having differing oxidation
states, to kill the active biological contaminant and provide a
solution substantially depleted of the active biological
contaminant, wherein the biological contaminant is one or more
of bacteria, fungi, protozoa, and algae.
104. The method of claim 103, wherein each of the
cerium (IV) oxide and the other rare earth-containing
compound kill[ s] the active biological contaminant and wherein
the other rare earth-containing compound is selected from the
group consisting of compounds of lanthanum, praseodymium,
neodymium, promethium, samarium, europium, gadolinium,
terbium, dysprosium, holmium, erbium, thulium, ytterbium, or
lutetium, and mixtures thereof.
108. The method of claim 103, wherein each of the
cerium (IV) oxide and the other rare earth-containing
compound has a bacteriostatic and/or antimicrobial effect.
Under 35 U.S.C. § 112, 2nd ,-r, the Examiner rejects independent claim
68 and the claims which depend therefrom (i.e., claims 69-77, 79-85, 87-
91, 115, 118, 121, and 122) as indefinite for failing to particularly point out
and distinctly claim the subject matter which Appellants regard as their
invention.
Under 35 U.S.C. § 103(a), the Examiner rejects all appealed claims as
unpatentable over Koper (US 6,653,519 B2, issued Nov. 25, 2003) in view
of Johnston (US 6,180,016 Bl, issued Jan. 30, 2001), Witham (US
6,863,825 B2, issued Mar. 8, 2005), and Mills (US 6,146,539, issued Nov.
14, 2000).
3
Appeal2014-007213
Application 11/931,616
The § 112, 2nd iJ, Rejection
Paragraph 2 of§ 112 requires "patent claims, viewed in light of the
specification and prosecution history, [to] inform those skilled in the art
about the scope of the invention with reasonable certainty." Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, *2129 (2014).
The Examiner determines that the rejected claims are rendered
indefinite by the claim 68 recitation "the aggregate composition in the form
of an extruded flowable particulate, granule, bead, pellet, powder, or fiber
comprising a polymeric binder and at least about 75% by weight cerium (IV)
oxide-containing particles" and by the undisputed fact that the claim 68
phrase "the extruded aggregated particulates" lacks antecedent basis (Final
Action 2-3). In the Answer, the Examiner explains that the above quoted
claim recitation lacks clarity because it differs from the Specification
disclosure "[t]he aggregate composition can comprise aggregated
particulates in granule, bead, powder, fiber or similar form" (Spec. 18:28-
29) (Ans. 3). According to the Examiner, this difference creates ambiguity
as to the relationship between the recited "extruded flowable particulates" of
claim 68 and the subsequently recited "granule, bead, pellet, powder, or
fiber" as well as the subsequent phrase "the extruded aggregated
particulates" (id. at 3--4).
The Examiner's above position has merit. The Specification discloses
a relationship wherein the aggregated particulates are in the form of a
granule, bead, powder, fiber or similar form. However, claim 68
inconsistently defines "the aggregate composition in the form of an extruded
flowable particulate" whose relationship to the "granule" and other above
mentioned limitations is ambiguous. This ambiguity arises because
Appellants have drafted claim 68 in a manner which is not consistent with
4
Appeal2014-007213
Application 11/931,616
their Specification disclosure such that the claim, when read in light of this
disclosure, appears to take on an unreasonable degree of uncertainty. See In
re Moore, 439 F.2d 1232, 1235 n. 2 (CCPA 1971) ("[C]laims which on first
reading ... appear indefinite may upon a reading of the specification
disclosure or prior art teachings become quite definite[, and] ... this rule
also applies in the reverse, making an otherwise definite claim take on an
unreasonable degree of uncertainty.").
"Given the role of the applicant in the process, it is a reasonable
implementation of the examination responsibility, as applied to§ 112(b), for
the USPTO, upon providing the applicant a well-grounded identification of
clarity problems, to demand persuasive responses on pain of rejection." In
re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014).
Appellants' responses to the rejection do not clarify the ambiguity
discussed above. For example, in the Appeal Brief, Appellants argue that
the claim terms identified by the Examiner "do not cause claim 68 to be
insolubly ambiguous" (App. Br. 12). As indicated previously and as
seemingly recognized in the Reply Brief (Reply Br. 2), "insolubly
ambiguous" is not the test for whether a claim is indefinite. Appellants also
argue that "one of ordinary skill in the art would understand that an
'aggregate' can be in any of the associated forms granule, bead, pellet,
powder, or fiber" (id. at 4) but do not explain how these forms are related to
the claim recitation "an extruded flowable particulate." Similarly,
Appellants agree with the Examiner that the claim 68 limitation "the
extruded aggregated particulates" lacks antecedent basis (id. at 5) but
contend that "[t]his ... does not mean that the claim ... fails to inform, with
reasonable certainty, those skilled in the art about the scope of the invention"
(id.). The deficiency of this contention is that Appellants do not offer any
5
Appeal2014-007213
Application 11/931,616
explanation of the relationship between this limitation lacking antecedent
basis and the earlier recited limitations "an extruded flowable particulate,
granule, bead, pellet, powder, or fiber."
Under these circumstances, the record of this appeal supports a
determination that claim 68 and the claims which depend therefrom, when
read in light of the Specification, fail to inform those skilled in the art about
the scope of the invention with reasonable certainty. We sustain, therefore,
the§ 112, 2nd ,-r, rejection of claims 68-77, 79-85, 87-91, 115, 118, 121, and
122.
The§ 103 Rejection3
We will sustain this rejection for the reasons given by the Examiner
and below.
The Examiner concludes that it would have been obvious to provide
Koper's aggregate composition of cerium (IV) oxide pellets for killing an
active biological contaminant such as E. coli in water with another rare earth
compound such as lanthanum oxide for removing arsenic from water as
taught by Witham or lanthanum chloride for removing algae-growing
nutrients from water as taught by Mills (Final Action 4---6, Ans. 6).
Appellants present a number of arguments and exhibits for the
proposition that the applied references contain no teaching or suggestion of a
3 For the purpose of evaluating the§ 103 rejection, we will consider the
aggregate composition of claim 68 to be in the form of flowable extruded
aggregated particulates (e.g., in the form of flowable extruded pellets)
comprising a polymeric binder, at least about 75% by weight cerium (IV)
oxide-containing particles, and another rare earth compound.
6
Appeal2014-007213
Application 11/931,616
non-cerium rare earth compound for killing an active biological contaminant
(see, e.g., App. Br. 14--22).
These arguments and exhibits are not applicable to the claims, such as
the independent claims, that do not require the other non-cerium rare earth
compound to be capable of killing an active biological contaminant (cf
independent claim 103 which contains no such requirement with its
dependent claims 104 and 108 which expressly recite the requirement; see
also Spec. 8: 1-5 which explains that killing microorganisms is only one of
several mechanisms for removing or deactivating the microorganisms).
Moreover, the arguments and exhibits lack persuasive merit even for
claims, such as claims 104 and 108, which require the non-cerium rare earth
compound to be capable of killing an active biological contaminant, for
example, via a bacteriostatic effect. These claims are satisfied by the
lanthanum chloride taught by Mills as evinced by Appellants' admission that
lanthanum chloride was known in the prior art to possess bacteriostatic
activity (Spec. 11: 16-20). Therefore, the Examiner's combination of
Koper's cerium oxide and Mills' lanthanum chloride necessarily would have
resulted in a composition in which the lanthanum chloride inherently
possesses the claimed bacteriostatic effect. See Par Pharm., Inc. v. TWI
Pharms., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014) ("[I]n order to rely
on inherency to establish the existence of a claim limitation in the prior art in
an obviousness analysis-the limitation at issue necessarily must be present,
7
Appeal2014-007213
Application 11/931,616
or the natural result of the combination of elements explicitly disclosed by
the prior art."). 4
In summary, Appellants fail to show error in the Examiner's
conclusion that it would have been obvious to combine Koper' s cerium
oxide with the lanthanum compounds of Witham or Mills to obtain the
established functions of these lanthanum compounds in accordance with the
Witham or Mills teachings, thereby resulting in compositions corresponding
to those defined by the appealed claims. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (in assessing the obviousness of claims to a
combination of prior art elements, the question to be asked is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions").
Regarding the claim 68 feature of an aggregate composition in an
extruded form comprising polymeric binder, the Examiner concludes that it
would have been obvious to form Koper's pellets of cerium oxide and
binder, as modified by the lanthanum compounds of Witham or iviills, by
extruding the cerium and lanthanum compounds with polymeric binder in
view of Johnston (Final Action 4).
Appellants concede that Johnston's microbiological water filter is
formed by extrusion using polymeric binder (App. Br. 23) but argue that
Johnston "does not teach extruded pellets, much less extruded pellets
comprising cerium (IV) oxide (Ce02)" (id.).
4 This legal authority reveals error in Appellants' apparent view that
obviousness and inherency are incompatible (Reply Br. 9-10).
8
Appeal2014-007213
Application 11/931,616
Appellants' argument is not persuasive because it attacks Johnston
individually rather than the combination of references applied by the
Examiner. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
In their Reply Brief, Appellants argue that Johnston teaches away
from an aggregate composition in any of the forms recited by claim 68
(Reply Br. 14--15). This argument could have been, but was not, raised in
the Appeal Brief. Further, Appellants have not shown good cause for
considering this new argument. As a consequence, the argument in question
will not be considered by this panel of the Board for purposes of the present
appeal. 37 CPR§ 41.41(b)(2).
For the reasons expressed above as well as in the Final Action and
Answer, we sustain the Examiner § 103 rejection of all appealed claims.
Conclusion
The decision of the Examiner is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connect with this
appeal may be extended under 35 C.F.R. § 1.136(a).
AFFIRMED
9