Ex Parte Ciriminna et al

Patent Trial and Appeal Board

Aug 23, 2017

13057521 (P.T.A.B. Aug. 23, 2017)

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.
13/057,521 04/18/2011 Rosaria Ciriminna 1032256-000062 3511
21839 7590 08/25/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSARIA CIRIMINNA, MARIO PAGLIARO,
GIOVANNI PALMISANO, VALERICA PANDARUS,
LYNDA TREMBLAY, FRANCOIS BELAND
and MATHIEU SIMARD
Appeal 2016-008276
Application 13/057,521
Technology Center 1700
Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008276
Application 13/057,521
STATEMENT OF THE CASE
This is an appeal under 35U.S.C. § 134 from the final rejection of
claims 3, 7, and 17—27. We have jurisdiction under 35 U.S.C. § 6.
Claim 3 illustrates the invention:
3. A process for preparing a heterogeneous metal-
containing organosilica catalyst, comprising in order from steps
i) to iv):
i) mixing a silicon source of formula R4-xSi(L)x wherein
R is an alkyl, an aryl or an alkylaryl, L is independently Cl, Br,
I or OR' wherein R' is an alkyl or benzyl and x is an integer of 1
to 3 with an hydrolytic solvent to cause hydrolysis of the silicon
source;
ii) adding one or more metal catalyst precursor after step
i);
iii) treating the mixture of step ii) with a condensation
catalyst to form a network consisting of Si-O-Si bonds and Si-R
bonds; and
iv) treating the mixture resulting from step iii) with one
or more hydride-based reducing agent such as to reduce said
metal catalyst precursor to a metal catalyst having an oxidation
level zero (0);
wherein said metal catalyst is incorporated and retained
in said network consisting of Si-O-Si bonds and Si-R bonds by
encapsulation, providing said heterogeneous catalyst.
Appellants1 (App. Br. 5) request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 3, 7, and 17—27 rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
1 The real party in interest is identified as SILICYCLE INC. App. Br. 2.
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II. Claims 3, 7, and 21—27 rejected under 35 U.S.C. § 103(a) as
unpatentable over Stiegman (US 6,391,808 Bl, issued May 21, 2002) and
Panster et al. (US 5,187,134, issued February 16, 1993).
III. Claims 17—20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Stiegman, Panster, and Maier (US 6,121,187, issued
September 19, 2000).
OPINION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we AFFIRM the rejection under 35 U.S.C. § 112,
first paragraph, and the prior art rejections under 35 U.S.C. § 103(a) for the
reasons presented by the Examiner. We add the following for emphasis.
REJECTION UNDER § 112, FIRST PARAGRAPH - Written Description2
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
See also AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010).
This inquiry ... is a question of fact. . . . [T]he level of detail
required [in the Specification as originally filed] to satisfy the
written description requirement varies depending on the nature
2 Appellants only argue independent claim 3. See generally App. Br. 6—10.
Accordingly, we limit our discussion of the issues to this claim. Claims 7,
and 17—27 stand or fall with independent claim 3.
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and scope of the claims and on the complexity and
predictability of the relevant technology.
Id.
Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991).
The Examiner finds the Specification, as originally filed, does not
provide support for the language “network consisting of Si-O-Si bonds and
Si-R bonds” of independent claim 3. Final Act. 3. According to the
Examiner, paragraph 36 of the Specification defines “condensation
catalysts” as any reagent known in the art favoring the polycondensation to
form the Si-O-Si bonds.” Id. That is, the Examiner finds no descriptive
support for of using a condensation catalyst to form a network consisting of
Si-O-Si bonds and Si-R bonds. Ans. 7—9. The Examiner also finds the
Specification, as originally filed, does not even mention an Si-R bond. Id. at
9.
In addressing this rejection, Appellants cite to numerous tables in the
Specification that purport to exemplify the heterogeneous metal-containing
organosilica catalysts claimed as having a network consisting of Si-O-Si and
Si-R bonds. App. Br. 6—7. According to Appellants, a person of ordinary
skill in the art would have readily recognized that hydrolysis and
condensation reactions that rely on R4_xSi(L)x as a starting material would
result in a final product having (1) Si-O-Si bonds as a result of hydrolysis
and polycondensation and (2) Si-R bonds, left uncleaved from the original
silicon source starting material. App. Br. 8—9.
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We have considered Appellants’ arguments and are unpersuaded by
them for the reasons presented by the Examiner. Ans. 7—9. Appellants’
assertion that one skilled in the art would understand that the inventors were
in possession of the claimed invention at the time of filing based the
disclosed examples (for example, those listed on Tables 1, 4 and 7) appears
to be premised on the descriptive support being obvious to the skilled
artisan. App. Br. 6—8. However, obviousness is not the proper standard for
determining whether a claim complies with the written description
requirement of 35 U.S.C. § 112, first paragraph. Lockwood v. Am. Airlines,
107 F.3d 1565, 1572 (Fed. Cir. 1997) (“[Description which renders obvious
the invention ... is not sufficient.”). The Examiner explains there is no
description in the Specification, as originally filed, of using a condensation
catalyst to form a network consisting of Si-O-Si bonds and Si-R bonds.
Ans. 7—9. The Examiner also notes the Specification only discloses that
“‘[condensation catalysts’ means any reagent known in the art favoring the
poly condensation to form the -Si-O-Si- bonds’ '' (emphasis added). Ans. 8;
Spec. 136. Appellants have not adequately explained or directed us to
objective evidence of how the Specification, including the cited examples,
provide descriptive support for the disputed language.
In light of these circumstances, on this record, the Specification, as
originally filed, does not show that Appellants were in possession of the
scope of the subject matter described in claims 3,7, and 17—27.
REJECTIONS UNDER § 103(a)
For Rejection II, Appellants do not argue any claim separate from the
other. See generally Appeal Brief. Further, Appellants rely on the
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arguments presented when discussing Rejection II to address the separate
rejection of claims 17—20 (Rejection III) without further addressing or
distinguishing the additional secondary reference cited based on the
additional limitations of the respectively rejected claims. Id. at 17.
Accordingly, we select claim 3 as representative of the subject matter before
us on appeal. Claims 7 and 17—27 stand or fall with claim 3.
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner. We
add the following for emphasis.
Claim 3 is directed to a process for preparing a heterogeneous metal-
containing organosilica catalyst.
The Examiner finds Stiegman teaches a sol gel process to make a
hybrid metal-containing organosilica catalyst that is heterogeneous that
differs from the subject matter of claim 3 in that Stiegman does not disclose
the reduction step. Final Act. 3^4; Stiegman col. 1,11. 25, 38, 55—60, col. 3,
11. 8—25, 53—60, col. 6,1. 46, col. 7,1. 50. The Examiner finds Panster
teaches a process of making a heterogenized metal complex catalyst with
organosiloxane wherein reducing agent such as alkali or akaline-earth metal
boron hydride is used as a special variation in which the metal is present
complex-bound in zero-valent form and the final catalytic composition has a
structure of an analogous homogeneous complex catalyst with Si-R bond.
Final Act. 4; Panster col. 2,1. 60, col. 3,1. 25^40, col. 14,11. 20-65, col. 15,
1. 33. The Examiner determines it would have been obvious to one skilled in
the art to incorporate the teaching of Panster of using a reducing agent as a
variation step to the process of Stiegman to derive a heterogenized complex
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catalyst with a homogeneous structure having higher activity and selectivity
with Si-O-Si and Si-R bonds. Final Act. 4—5.
Appellants argue Stiegman does not disclose the claimed silicon
source or a final product containing Si-R bonds. App. Br. 12. According to
Appellants, a Si-R bond is never initially introduced into the sol-gel reaction
scheme because Stiegman’s initial silicon source contains four alkoxide
groups (initial source is a tetraalkoxysilane or tetraalkyl orthosilicate). Id.
Appellants further argue that Stiegman discloses a sol-gel having a network
of bonds that (i) are specifically excluded from the claimed invention and
(ii) do not correspond to the Si-R bonds recited in the claims. Id. at 12—13.
According to Appellants, Stiegman discloses incorporating metals within the
silica network through Si-O-M bonds which would be excluded by the
recited language in the claim requiring “a network consisting of Si-O-Si
bonds and Si-R bonds.” Id. at 13.
We are unpersuaded by these arguments. As noted by the Examiner,
Stiegman discloses using tetramethylorthosilicate (TMOS) as a silicon
source, which is disclosed by Appellants as a silicon source within the scope
of the claimed formula R4-xSi(L)x. Ans. 9—10; Stiegman col. 3,11. 53—60;
Spec. H12, 17. In view of this, Appellants have not adequately explained
why Stiegman’s heterogeneous metal-containing organosilica catalyst made
using TMOS as the silica source would not comprise a network consisting of
Si-O-Si bonds and Si-R bonds as claimed.
With respect to Appellants’ arguments concerning the Si-O-M bond,
we agree with the Examiner that Appellants’ arguments on this issue do not
take into account the proposed combination of teachings where the reduction
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step based on the special variation of the method disclosed by Panster would
reduce the metal of Stiegman to valence zero and the Si-O-M bonds would
not form. Ans. 11; Panster col. 14,11. 20-64. Appellants have not
adequately argued otherwise.
Appellants additionally argue adding a reduction step to Stiegman’s
process, as taught by Panster, would result in a modification that requires the
cleavage of the Si-O-M bonds disclosed in Stiegman that would be contrary
to the purpose of Stiegman. App. Br. 13—14. According to Appellants,
Stiegman discloses a glass matrix having Si-O-M bonds and unless the O-M
bond is broken or destroyed, the metal of Stiegman cannot achieve an
oxidation state of zero (0) as claimed. Id. Thus, Appellants argue any
cleavage of Stiegman's Si-O-M bonds would run counter to Stiegman's
stated goal of obtaining a single phase metal-silica sol-gel glass because the
metal centers would no longer be part of the silica matrix to confer unique
sensor and catalytic properties. App. Br. 15.
We find these arguments unavailing as well for the reasons presented
by the Examiner. The Examiner notes Stiegman discloses silica gels act as a
host matrix to entrap and stabilized reactive chemical species while at the
same time permitting small molecules to diffuse into the silica matrix and
react. Ans. 11; Stiegman col. 1,11. 56—60. We agree with the Examiner that
Appellants have not adequately explained how this differs from the claimed
requirement of “wherein said metal catalyst is incorporated and retained in
network consisting of Si-O-Si bonds by encapsulation.” Ans. 11.
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Appellants argue the combination of teachings would require a
significant modification of Panster’s reduction process that could only be
obtained through the benefit of impermissible hindsight. App. Br. 16—17.
We are unpersuaded for the reasons presented by the Examiner. Ans.
9—11. Moreover, Panster suggests that the addition of a reduction step to a
method of making a heterogeneous metal-containing organisilica catalyst
results in a catalyst that is no different from the catalysts made with a
process without a reduction step. Panster col. 15,11. 33—35. Given this
disclosure, one skilled in the art would have reasonably expected that adding
a reduction step in making Stiegman’s catalyst would result in a catalyst
with unique sensor and catalytic properties. Stiegman col. 1,1. 12. “For
obviousness under § 103, all that is required is a reasonable expectation of
success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Appellants
have not adequately explained why one skilled in the art would have
expected the addition of a reduction step to the process of Stiegman would
result in a catalyst that is unsuitable for Stiegman’s purposes.
Accordingly we affirm the Examiner’s prior art rejections of claims 3,
7 and 17—27 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner’s rejection of claims 3, 7, and 17—27 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement is affirmed.
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The Examiner’s prior art rejections of claims 3, 7, and 17—27 under 35
U.S.C. § 103(a) are 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
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