Ex Parte Gramiccioni et al

Patent Trial and Appeal Board

Aug 31, 2016

12978712 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/978,712 12/27/2010
109171 7590 09/02/2016
Womble Carlyle Sandridge & Rice, LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30537-7037
FIRST NAMED INVENTOR
Gary A. Gramiccioni
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.
PF71327 1703
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
IPDocketing@wcsr.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY A. GRAMICCIONI, KENNETH R. BROWN,
MICHEL DEEBA, STEFAN KOTREL, and
KNUT W ASSERMANN1
Appeal2015-001742
Application 12/978,712
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellant, Gary A. Gramiccioni et al., identifies the real party in interest as
BASF Corporation. Br. 3.
2 In our opinion below, we reference the Specification filed December 27,
2010 (Spec.), Final Office Action mailed November 8, 2013 (Final), the
Appeal Brief filed May 10, 2014 (Br.), and the Examiner's Answer mailed
October 1, 2014 (Ans.).
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Application 12/978,712
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1-3, 5, 7, 8, and 16. We have jurisdiction under
35 U.S.C. §§ 6(b).
We AFFIRM.
The claims are directed to a catalyst carrier including a layer of
barium sulfate and a thermally fixed precious metal. The catalyst carrier is
useful for supporting an exhaust gas purification catalyst. Spec. 1, ,-i 1. 3
Claim 1 is illustrative:
1. A catalyst carrier comprising:
a porous support;
a barium sulfate layer dispersed on outer and inner
surfaces of the porous support and chemically bonded thereto;
and
a precious metal \x;hich is impregnated on the catalyst
carrier and calcined to thermally fix the precious metal on the
catalyst carrier,
wherein the catalyst carrier has a BET surface area of at
least about 100 m2 I g, and an average pore radius of about 80
Angstroms to about 150 Angstroms, and
wherein the barium sulfate layer is dispersed on said
porous support in an amount of about 0.5% by weight to about
10% by weight.
Claims Appendix, Br. 26.
The Examiner maintains two rejections:
3 The pages of the Specification do not include paragraph numbering or line
numbering. Throughout the Decision, we count as the first paragraph, the
first full paragraph on the page.
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Application 12/978,712
A. The rejection of claims 1-3, 5, 7, 8, and 16 under 35 U.S.C. § 112 ii 2
as indefinite, and
B. The rejection of claims 1-3, 5, 7, 8, and 16 under 35 U.S.C. § 103(a)
as obvious over Okumura4 in view of Pickering5 and McLaughlin. 6
OPINION
Indefiniteness
The Examiner rejects claims 1-3, 5, 7, 8, and 16 under 35 U.S.C.
§ 112 ii 2 as indefinite because the term "catalyst carrier" is used
inconsistently. Final 3; Ans. 7-8. The claims, on the one hand, are directed
to a catalyst carrier comprising components including precious metal, but on
the other hand, recite that the precious metal is thermally fixed "on the
catalyst carrier," i.e., on itself. The Examiner has suggested a change to fix
the problem, i.e., to change "on the catalyst carrier" to "on the barium sulfate
layered porous support." Ans. 7-8.
Appellants' arguments do not convince us of a reversible error in the
Examiner's determination of indefiniteness. Although we agree with
Appellants that the claims are directed to a catalyst carrier, and that the
Specification indicates that the catalyst carrier may optionally comprise a
precious metal, these facts do not identify a reversible error in the
Examiner's determination because the claims nonetheless contain an
inconsistency in how they use the term "catalyst carrier" to refer to the
4 Okumura et al., US 6,214,307 Bl, patented Apr. 10, 2001.
5 Pickering et al., WO 00/50168, published Aug. 31, 2000.
6 McLaughlin et al., US 5,837,634, patent Nov. 17, 1998.
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Application 12/978,712
overall product (preamble), and to the support upon which precious metal is
deposited (in the clause directed to the precious metal).
We sustain the Examiner indefiniteness rejection.
Obviousness
Turning to the rejection of claims 1-3, 5, 7, 8, and 16 under 35 U.S.C.
§ 103(a) as obvious over Okumura in view of Pickering and McLaughlin,
Appellants focus their arguments on the rejection of claims 1 and 16. Br. 8-
24. We select claims 1 and 16 as representative for deciding the issues on
appeal.
Claim 1
The Examiner finds that Okumura teaches or suggests a catalyst
carrier as required by claim 1 except that Okumura fails to discuss the pore
size of the carrier and the amount of barium sulfate used in percentage by
weight. Final 3-5. The Examiner relies upon Pickering as evidence to
support a finding that there was a suggestion within the art to use a catalyst
carrier having a pore size within the claimed range, and upon ivicLaughlin to
support a finding that the those of ordinary skill in the art would have used
amounts of barium sulfate within the claimed range. Final 4-5.
Appellants argue that, in addition to failing to disclose the pore size
range and barium sulfate concentration, Okumura fails to disclose or suggest
"a barium sulfate layer dispersed on outer and inner surfaces of the porous
support and chemically bonded thereto," as recited in claims 1 and 16, and
"a precious metal which is impregnated on the catalyst carrier and calcined
to thermally fix the precious metal on the catalyst carrier," as recited in
claim 1. Br. 9 and 11-13. Appellants also argue that Pickering and
McLaughlin do not provide a reason to select the pore size and concentration
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ranges of those references, and the rejection is based upon impermissible
hindsight. Br. 13-20.
After considering the evidence cited by the Examiner and Appellants,
we determine that a preponderance of the evidence supports the Examiner's
findings of fact and conclusions of law with respect to the prima facie case
of obviousness.
Okumura is directed to an exhaust-gas-purifying catalyst containing
iridium and sulfur. Okumura, col. 1, 11. 5-10. Okumura teaches various
embodiments using a support that may include "a fire resistant inorganic
oxide normally used as a support," such as gamma alumina. Okumura, col.
2, 11. 41-55 (active alumina of y). There is no question that such a gamma
alumina support is a "porous support" as required by claim 1. Appellants
themselves disclose using gamma alumina as the porous support. See, e.g.,
Spec. 4 ii 4.
Okumura suggests various ways of including sulfur in the support
including depositing sulfuric acid, sulfates, sulfites, sulfides, etc. onto the
support. Okumura, col. 5, 11. 11-24. One suggested method involves
impregnating the support with an aqueous solution of a sulfate, sulfite, etc.,
drying and calcining. Okumura, col. 5, 11. 16-20. It is reasonable to
presume, as the Examiner has done, 7 that such a method would disperse the
sulfur-containing compound, e.g., sulfate, on the outer and inner surfaces of
the porous gamma alumina support suggested for use by Okumura, and that
calcining would chemically bond the sulfate to the surfaces of the support as
further required by claim 1. Appellants have not shown otherwise, either by
way of an evidentiary showing or persuasive technical reasoning.
7 Ans. 8-9.
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Okumura further suggests using a metallic sulfate, preferably a sulfate
of an alkaline earth metal to improve the purifying function of iridium for
reducing NOx and to allow catalytic activity in a wider temperature range of
the exhaust gas. Okumura, col. 8, 11. 14-19; see also col. 13, 11. 10-52.
Okumura further specifically suggests using barium sulfate as the most
preferably adopted sulfate of alkaline earth metal. Okumura, col. 9, 11. 3-11.
Thus, Okumura suggests including a barium sulfate layer dispersion on outer
and inner surface of the porous gamma alumina support with a step of
calcining to chemically bond the barium sulfate to the porous gamma
alumina support.
Okumura suggests, for example, further impregnating the support with
an aqueous solution of iridium salt, drying and calcining. Okumura, col. 5,
11. 1-2. Such a method would thermally fix the precious metal to the support
as required by claim 1. Appellants disclose that calcining thermally fixes the
precious metal. Spec. 11, iJ 2; 21 iii! 1 and 3 (Catalysts 3 and 5 calcined to
thermally fix the Pd"). Iridium is a precious metal within the meaning of
claim 1. Spec. 4, iJ 6 ("The catalyst carrier optionally further comprises a
precious metal selected from the group consisting of platinum, palladium,
rhodium, ruthenium, osmium, iridium, and combinations thereof."); claim 5.
Okumura further suggests depositing other precious metals such as
platinum, palladium, and rhodium on a "fire-resistant inorganic compound"
support, i.e. a material such as gamma alumina. Okumura, col. 7, 11. 9-19 as
informed by col. 4, 11. 46--49. The support in this case may include alkaline
earth metals such as barium or barium oxide to improve heat stability.
Okumura, col. 8, 11. 41--4 7.
Pickering and McLaughlin are both concerned with stabilizing
alumina that is to be used as an automobile exhaust catalyst support so that it
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resists the loss of surface area at high temperatures. Pickering, p. 1;
McLaughlin, col. 1, 11. 7-10.
Pickering supports the finding that gamma alumina was a known
support material and was selected because of its high specific surface area,
for example exceeding 100 m2 I g. Pickering, p. 2, 11. 5-13. Pickering
explains that gamma alumina is metastable and degrades at temperatures
above about 1000 °C to more stable alpha alumina, which has a lower
specific surface area and reduced catalytic activity. Pickering, p. 2, 11. 1-29.
It was known in the art to use additives such as barium to prevent thermal
degradation of the gamma phase. Pickering, p. 3, 11. 20-23. McLaughlin
also discloses a genus of compounds containing Group IIA and IIIB metals,
of which barium is one, as a stabilizer that prevents thermal degradation of
alumina supports. McLaughlin, col. 2, 11. 29-51. McLaughlin discloses
including an amount of stabilizer that will result in a metal oxide content of
from about 0.5 to about 20% by weight based on the combined weight of the
metal oxide and the alumina as Ab03. ivicLaughlin, col. 2, 11. 52-58.
Given the facts above, we agree with the Examiner that although
Okumura does not use the words of Appellants' claim 1, Okumura fairly
teaches or suggests both the barium sulfate layer and impregnated and
thermally fixed precious metal of claim 1. Ans. 8-9.
With respect to the pore radius range of the claim, the Examiner finds
that pore size is correlated to BET surface area. Ans. 10. There is no
dispute that Okumura specifically suggests using alumina supports with a
BET surface area within the claimed range. Compare Final 3 with Br. 13-
16. Okumura discloses using a porous active alumina in the Examples that
has a BET surface of 100 m2/g. Okumura, col. 16, 11. 66-67 (Example l);
col. 21, 11. 24-26 (Example 30). In fact, Okumura suggests using gamma
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alumina as a support material. Okumura, col. 4, 11. 46--49. It is reasonable
to presume that the gamma alumina of Okumura would have a pore radius
within or overlapping the claimed range. Pickering supports this
determination.
With respect to the about 0.5 wt.% to about 10 wt.% concentration
range of barium sulfate dispersed on the porous support required by claim 1.
Okumura provides guidance on the amount of sulfur deposited from the
sulfur source (e.g., barium sulfate) to be included. Okumura, col. 5, 11. 6-10
as informed by col. 4, 11. 56-62 and col. 9, 11. 40-46 as informed by col. 9, 11.
12-14. The amount is disclosed in terms of an amount relative to the
amount of iridium used. Id. Given this guidance and the fact that Okumura
seeks to obtain a catalyst for the same purpose as Appellants, it is reasonable
to presume that the range of workable or optimized concentrations the
ordinary artisan would obtain through routine experimentation would fall
within, or overlap, the range of claim 1. Under the circumstances, the
burden shifts to Appellants to show that their range is critical for obtaining
unexpected results. See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
("where the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation," but patentability may be imparted "if the particular ranges
claimed produce a new and unexpected result.").
Claim 16
Claim 16 further requires the catalyst layer contain "about 40% more
precious metal active sites relative to a porous support lacking a barium
sulfate layer." The Examiner finds that this property is inherent to the
catalyst carrier of Okumura given the similarities in structure and
components between Okumura's catalyst carrier and the claimed catalyst
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carrier. Ans. 9. Appellants argue that Okumura fails to disclose or suggest
that the catalyst carrier has the required percentage increase precious metal
active sites as recited in claim 16. Br. 9-11.
Appellants' argument does not address the Examiner's finding of
inherency. Thus, we cannot say that Appellants have identified a reversible
error in the Examiner's finding.
Unexpected Results
According to Appellants, a catalyst carrier with a barium sulfate layer
dispersed and chemically bonded to the outer and inner surface of a porous
support in an amount of about 0.5 wt% to about 10 wt% and with a precious
metal impregnated and calcined to thermally fix the precious metal on the
carrier cause the catalyst carrier to exhibit unexpected results. Br. 23-24.
Appellants specifically rely upon Example 5, Table 5, and Figure 9 to
support their showing. Id.
Appellants' Specification states that:
Treatment of catalyst support materials such as alumina
with aqueous barium salts is well-known. For example,
impregnation of gamma alumina with aqueous barium acetate,
followed by drying and calcining yields a BaO/alumina
supported materials. However, as demonstrated herein, further
treatment of barium oxide or complex mixed oxides containing
barium, on a support, with sulfuric acid, gives BaS04/alumina
materials that are unexpected thermally stable and provide
advantageous characteristics as catalyst carriers for formation
of emissions catalysts.
Spec. 7 ii 4.
Example 5 is a comparison of multi-layered catalyst substrates with a
middle coat catalyst carrier impregnated with 4% Pd. The comparison is
between a Control catalyst 2 with no barium sulfate and no thermally fixed
Pd on an alumina support, a Catalyst 3 with no barium sulfate, but with
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thermally fixed Pd on BaO/alumina, a Catalyst 4 with 5% barium sulfate,
but no thermally fixed Pd on a thermally stable alumina, and a Catalyst 5
with 5% barium sulfate and thermally fixed Pd on a thermally stable
alumina. Spec. 21-22; Table 5.
Appellants' claims are not limited to using alumina as a support, much
less the support material Appellants state give rise to unexpected thermal
stability, i.e. BaO/gamma alumina. Nor are the claims limited to using Pd as
the precious metal. Moreover, Appellants' claims further encompass a range
of about 0.5 wt.% to about 10 wt.% barium sulfate, but Appellants only test
catalyst carriers having 5 wt.% barium sulfate.
Appellants do not provide persuasive evidence that any unexpected
result is commensurate in scope with the breath of the claims. "[O]bjective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."' In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (quoting Jn re Tiffin, 448 F.2d 791, 792
(CCPA 1971)).
Based on the evidence as a whole before us, we determine that a
preponderance of the evidence supports the Examiner's ultimate conclusion
of obviousness.
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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