Ex Parte Hannemann et alDownload PDFPatent Trial and Appeal BoardSep 21, 201613356766 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/356,766 01124/2012 123223 7590 09/23/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Stefan Hannemann 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. 074014-0485-286599 9829 EXAMINER ZIMMER, ANTHONY J ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEP AN HANNEMANN, DIETER STUTZER, GOTZ-PETER SCHINDLER, PETER PFAB, FRANK KLEINE JAGER, and DIRK GROSSSCHMIDT Appeal2015-004205 Application 13/356,766 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 filed an appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 15-22. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We AFFIRM. 1 Our decision refers to the Specification filed Mar. 23, 2012 (Spec.), the Final Office Action mailed Dec. 24, 2013 (Final Act.), Appellants' Appeal Brief filed Oct. 24, 2014 (Br.), and the Examiner's Answer mailed Dec. 22, 2014 (Ans.). 2 Appellants identify the real party in interest as BASF SE. Br. 2. Appeal2015-004205 Application 13/356,766 The claims on appeal are directed to a method of producing catalyst support particles (see, e.g., claim 1 ). According to Appellants, the method is inexpensive and time-saving but provides catalysts having activities and selectivity comparable to prior art catalysts that are prepared exclusively by impregnation processes or spray drying. Spec. p. 2, 11. 1-6. Independent claim 15 is illustrative of the subject matter on appeal. Claim 15 is reproduced from the Claims Appendix of the Appeal Brief with limitations at issue in the appeal italicized: 15. A method of production of catalyst support particles, comprising zirconium dioxide and optionally silicon oxide, comprising the steps (i) preparing a solution containing at least one precursor compound of zirconium dioxide and optionally of silicon dioxide, (ii) converting the solution to an aerosol, (iii) bringing the aerosol into a directly or indirectly heated P}'rol}'Sis zone, (iv) carrying out pyrolysis, wherein a pyrolysis gas is obtained, (v) separating the catalyst particles formed from the pyrolysis gas. Br. 8 (emphasis added). In the Final Office Action, the claims were rejected as follows: (1) claims 15, 16, and 21under35 U.S.C. § 102(b) as being anticipated by Jossen; 3 (2) claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Jossen; 3 Jossen et al., Thermal Stability of Flame-Made Zirconia-Based Mixed Oxides, Chem. Vap. Deposition I2, 614---619 (2006) ("Jossen"). 2 Appeal2015-004205 Application 13/356,766 (3) claims 17 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Zhou; 4 (4) claim 18 under 35 U.S.C. § 103(a) as being unpatentable over J ossen in view of Madler; 5 (5) claim 20 under 35 U.S.C. § 103(a) as being unpatentable over J ossen in view of Wang; 6 (6) claim 22 under 35 U.S.C. § 103(a) as being unpatentable over J ossen in view of Stark; 7 and (7) claims 15-22, provisionally rejected, on the ground of nonstatutory double patenting as being unpatentable over claims 18-31 of copending Application No. 13/356,787.8 OPINION Rejection of Claims 15, 16, and 21 under 35 US. C. § 102 Claims 15, 16, and 21 are rejected under 35 U.S.C. § 102(b) as being anticipated by Jossen. We select claim 15 as representative for discussing the issues on appeal. The dispositive issue on appeal is whether Appellants have identified a reversible error in the Examiner's finding that Jossen discloses converting a solution containing at least one precursor compound of zirconium dioxide 4 Zhou et al., CN 101108355 A, published Jan. 23, 2008 ("Zhou") (English Abstract). 5 Madler et al., Controlled Synthesis of Nanostructured Particles by Flame Spray Pyrolysis, Journal of Aerosol Science 33, 369-389 (2002) ("Madler"). 6 Wang et al., US 2010/0140560 Al, published June 10, 2010 ("Wang"). 7 Stark et al., US 7,211,236 B2, issued May 1, 2007 ("Stark"). 8 Since the Final Office Action was mailed, U.S. Application No. 13/356,787 issued as U.S. Patent No. 8,680,005 on Mar. 25, 2014. 3 Appeal2015-004205 Application 13/356,766 to an aerosol and bringing the aerosol into a heated pyrolysis zone, as recited in claim 15. Appellants contend Jossen fails to disclose step (ii) of claim 15, i.e., converting the solution to an aerosol, or that step (iii) i.e., bringing the aerosol into a directly or indirectly heated pyrolysis zone, follows step (ii). Br. 4. Appellants argue one of ordinary skill in the art would understand that external-mixing atomizers, like that disclosed by Jossen, mix fluids outside a nozzle. Br. 4. As a result, the atomizer of Jossen mixes a precursor solution with oxygen to atomize the solution in the pyrolysis zone, not prior to the solution reaching the pyrolysis zone. Br. 5. The Examiner finds Jossen discloses injecting a solution comprising precursors of zirconium dioxide through an atomizer to form an aerosol and bringing the aerosol into a pyrolysis zone, which is directly heated by a flame. Ans. 2. Using the broadest reasonable interpretation in view of Appellants' Specification, the Examiner interprets "pyrolysis zone" as being an area where pyrolysis takes place. Ans. 5. Appellants' Specification supports the Examiner's interpretation of "pyrolysis zone." Page 3, lines 5---6 of the Specification states "decomposition and/or oxidation of the oxide precursors take place, with formation of the oxide" in the pyrolysis zone. The Specification further discloses a preferred embodiment in which the pyrolysis zone is heated by a flame via an ignition device and combustion gases and an aerosol is supplied to the pyrolysis zone, such as by directly feeding the aerosol into a flame. Spec. p. 3, 11. 20-29. The Examiner finds the device of Jossen would include an area directly outside a nozzle where the spray of Jossen would exist as an aerosol, 4 Appeal2015-004205 Application 13/356,766 which would then move into a separate pyrolysis area where pyrolysis takes place. Ans. 6. To support this finding, the Examiner cites Jossen's disclosure of: A 1 L precision piston pump ... is used for pulsation-free supply of the precursor solution through the capillary tube. The resulting spray is ignited by a supporting methane/oxygen diffusion flame ... surrounding the nozzle. Jossen p. 619 (emphasis added). We agree with the Examiner's findings. Jossen discloses a method in which a solution including zirconium dioxide precursors was prepared. Jossen p. 618---619. This solution is pumped through a capillary tube to create a "spray" via a dispersion gas, such as oxygen. Jossen p. 619. As stated above, the spray is ignited by a flame surrounding the nozzle. Therefore, Jossen discloses the creation of a spray (aerosol) and igniting the aerosol via a flame (i.e., pyrolyzing the aerosol). Moreover, Appellants' Specification discloses a similar arrangement in which a flame-spray pyrolysis device includes a central aerosol nozzle and an annular burner surrounding the central aerosol nozzle. Spec. p. 3, 11. 36-40. As a result, Appellants' arguments do not direct us to a difference between the process of J ossen and the method of claim 15. Appellants further argue one of ordinary skill in the art would not consider the spray of Jossen to be an aerosol. Br. 5. The Examiner responds by stating Appellants' argument is conclusory and without supporting evidence or technical reasoning. Ans. 6. The Examiner finds Jossen discloses the use of a dispersion gas to inject a precursor solution through a nozzle, much like Appellants' process of using a carrier gas. Ans. 6. Page 3, lines 29--31 and 36-40 of Appellants' Specification disclose the use of a 5 Appeal2015-004205 Application 13/356,766 flame-spray pyrolysis device using a carrier gas, such as oxygen. Similarly, Jossen discloses the use of oxygen as a dispersion gas to create a spray of a precursor solution. Jossen p. 619. Therefore, the disclosure of Jossen and Appellants' Specification support the Examiner's finding. As the Examiner finds at pages 6-7 of the Answer, Appellants have not demonstrated a difference between the spray produced by the process of Jossen and the aerosol of claim 15. In view of the above, a preponderance of the evidence in the record supports the Examiner's finding that Jossen discloses converting a solution containing at least one precursor compound of zirconium dioxide to an aerosol and bringing the aerosol into a heated pyrolysis zone, as recited in claim 15. Appellants do not argue claims 16 and 21 separately from claim 15. As a result, for the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 102(b) rejection of claims 15, 16, and 21 over Jossen. Rejections under 35 US.C. § 103 Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jossen. Claims 17 and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Zhou. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Madler. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Wang. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Stark. 6 Appeal2015-004205 Application 13/356,766 For claims 17-20 and 22, Appellants merely reiterate the arguments set forth in support of the patentability of claim 15 and contend Zhou, Madler, Wang, and Stark do not remedy the deficiencies of Jossen in the rejection of claim 1. Br. 6. For the reasons set forth above, there are no deficiencies in the rejection of claim 15 that require curing by the additional references or any other modification of J ossen. For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 103 rejections of claims 17-20 and 22. Double Patenting Rejection of Claims 15-22 Claims 15-22 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-31 of copending Application No. 13/356,787. Appellants neither listed the provisional rejection as a ground to be reviewed, nor directed any arguments to the provisional rejection. Br. 3---6. Although the Examiner does not reproduce the provisional rejection in the Answer, neither does the Examiner withdraw the provisional rejection. Ans. 2-5. Application No. 13/356,787 matured into U.S. Patent 8,680,005 on March 25, 2014. A "provisional" rejection serves a notice function. Such a rejection allows an applicant to address the rejection without waiting for the first patent to issue. MPEP § 804 (I) (B) (9th ed., 2014). Claims in the 13/356,787 application have now issued. Thus, the Examiner should review the issued claims to determine if they remain patentably indistinct from claims in this application. 7 Appeal2015-004205 Application 13/356,766 As we discussed above, we are not persuaded of a reversible error in the Examiner's rejections over prior art. Therefore, Appellants' claims remain subject to the prior art rejections. Because Appellants offer no argument directed to the substance of the provisional rejection, we need not substantively review the provisional rejection. On this record, we decline to reach the provisional rejection. Cf Ex parte Jerg, 2012 WL 1375142, at *3 (BPAI 2012) ("Panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections."). DECISION On the record before us, we: A. sustain the Examiner's decision to reject claims 15, 16, and 21 under 35 U.S.C. § 102(b) as being anticipated by Jossen; B. sustain the Examiner's decision to reject claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Jossen; C. sustain the Examiner's decision to reject claims 17 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Zhou; D. sustain the Examiner's decision to reject claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Madler; E. sustain the Examiner's decision to reject claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Wang; F. sustain the Examiner's decision to reject claim 22 under 35 U.S.C. § 103(a) as being unpatentable over Jossen in view of Stark; and G. decline to reach the Examiner's decision to reject claims 15-22 on the ground of nonstatutory double patenting as being unpatentable over claims 18-31 of copending Application No. 13/356,787. 8 Appeal2015-004205 Application 13/356,766 We affirm the decision of the Examiner to reject the claims. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 9 Copy with citationCopy as parenthetical citation