Ex Parte Jones et al

Board of Patent Appeals and Interferences

Jul 5, 2011

10582593 (B.P.A.I. Jul. 5, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/582,593 03/19/2007 William Jones ACH-3026 US 2189
56744 7590 07/05/2011
Albemarle Netherlands B.V.
Patent and Trademark Department
451 Florida Street
Baton Rouge, LA 70801
EXAMINER
WALCK, BRIAN D
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
07/05/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte WILLIAM JONES, DENNIS STAMIRES,
PAUL O’CONNOR, and MICHAEL F. BRADY
________________

Appeal 2010-002883
Application 10/582,593
Technology Center 1700
________________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002883
Application 10/582,593

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-6.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellants request review of the following grounds of rejection (Br.
63):
1. Claims 1-3 under 35 U.S.C. §103(a) as unpatentable over
Frestad (US 4,975,406, issued Dec. 4, 1990) (Ans. 3);
2. Claims 1-3 and 6 under 35 U.S.C. §103(a) as unpatentable over
Chin (US 4,921,824, issued May 1, 1990) (Ans. 4);
3. Claims 4 and 5 under 35 U.S.C. §103(a) as unpatentable over
Chin in view of Kim (EP 0 554 968 A1, published Aug. 11, 1993) (Ans. 4-
5); and
4. Claims 1-6 under 35 U.S.C. §103(a) as unpatentable over Kim
in view of Chin (Ans. 5-7).
Appellants’ arguments are directed to limitations in claims 1, 4, and
54, which are reproduced below from the Claims Appendix to the Appeal
Brief:

1 Final Office Action mailed Mar. 27, 2009.
2 Appeal Brief filed Aug. 21, 2009 (“Br. 6”).
3 As explained on page 7 of the Examiner’s Answer (mailed Oct. 1, 2009
(“Ans.”)), the Examiner’s decision to withdraw claims 7 and 8 from
consideration pursuant to MPEP § 821.03 and 37 C.F.R. §1.142(b) is not
appealable subject matter. 35 U.S.C. §§ 6(b) and 134(a) (2009); see In re
Hengehold, 440 F.2d 1395, 1404 (CCPA 1971) (explaining that matters of a
discretionary, procedural or nonsubstantive nature are not appealable to the
Board when they are not directly connected with the merits of the issues
involving rejection of claims).
4We do not view Appellants’ statements with respect to claims 2 and 6 (see
Br. 9-10, and 12) as arguments in support of separate patentability. See 37
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Application 10/582,593

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1. Oxidic catalyst composition comprising 5-60 wt. % of a
divalent metal, 5-60 wt. % of a trivalent metal and 40-55 wt% of a rare earth
metal, calculated as oxide and based on the total weight of the oxidic
catalyst composition.
4. Process for preparing an oxidic catalyst composition according
to claim 1, which process involves forming a precipitate from a solution
containing dissolved divalent, trivalent, and rare earth metal salts, followed
by calcination of the precipitate obtained.
5. Process for preparing an oxidic catalyst composition according
to claim 1, which process involves the calcination of a physical mixture of a
divalent, a trivalent, and a rare earth metal source.

Having fully considered the respective positions of the Examiner and
Appellants, including Appellants’ evidence of unexpected results, we
determine a preponderance of the evidence favors the Examiner’s conclusion
of obviousness. We sustain all four grounds of rejection based on the
Examiner’s fact finding and reasoning as set forth on pages 2-7 of the Final
Office Action and pages 3-15 of the Answer, as discussed more fully below.

The first issue we consider is whether the Examiner established a
prima facie case of obviousness with respect to each ground of rejection.
In cases involving overlapping ranges, [the Federal Circuit] and
[its] predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of obviousness. .

C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”).

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Application 10/582,593

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. . [The Federal Circuit has] also held that a prima facie case
of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled
in the art would have expected them to have the same
properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,
783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Frestad
Appellants have not refuted the Examiner’s finding that the
composition of Frestad’s distinct catalyst coating layer includes a divalent
metal, a trivalent metal, and a rare earth metal in amounts which overlap
those recited in appealed claim 1. (Ans. 7; see Br. 8-10.) Appellants have
not persuasively explained why they believe the Examiner erred in reading
the composition recited in appealed claim 1 on Frestad’s catalyst coating
layer alone (see Br. 8-10). Stated somewhat differently, Appellants have not
identified, nor do we find, any basis in the claims or Specification which
supports a narrow interpretation of appealed claim 1as necessarily reading
on both Frestad’s distinct catalyst layer and the monolithic substrate on
which the layer is coated, as opposed to reading on the distinct catalyst layer
alone. (See Br. 9 (arguing that “when one compares the invention presently
claimed to the amount of metals present in the invention of Frestad, based on
the total composition instead of simply the coating, one can clearly see that
there is no overlap with regards to the amount of rare earth metal or divalent
metal”).)
Chin
Appellants have not refuted the Examiner’s finding that Chin’s
catalytic coating layer includes a divalent metal, a trivalent metal and a rare
Appeal 2010-002883
Application 10/582,593

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earth metal in amounts which overlap those recited in appealed claim 1.
(See Ans. 11; Br. 10.)
Kim and Chin
Appellants concede that Kim discloses the calcination of a precipitate
of a divalent metal and a trivalent metal in amounts which overlap those
recited in appealed claim 1. (See Ans. 12; Br. 10-12; Spec. 1:10-12.)
Appellants acknowledge Kim’s precipitate includes a rare earth metal as
claimed, but in an amount of 5-30%, which is lower than the claimed range
of 40-55%. (See Ans. 12; Spec. 1:10-12.) Appellants have not refuted the
Examiner’s finding that a precipitate is a physical mixture as recited in
appealed claim 5. (Ans. 12; see Br. 10-12.)
Appellants “acknowledge[] that the process of Kim could be used to
make the composition of Chin, and [] ha[ve] not argued that the combination
of the two references is improper for any reason.” (Ans. 12; see Br. 11.)
Appellants have not explained why the Examiner erred in determining
it would have been obvious to have increased the amount of rare earth metal
in Kim’s composition to within Appellants’ claimed range (see Ans. 5-6)
based on Chin’s teaching that “[t]he amount of lanthanum and, optionally,
other rare earth oxides in the discrete particles . . . is preferably at least about
50% . . . In general, the greater the amount of lanthanum in the discrete
particle, the better the improvement in catalyst performance will be” (Ans. 9
(quoting Chin, col. 3, ll. 46-53); see Br. 10-12).

In sum, the unrefuted evidence supports the Examiner’s determination
that Frestad, Chin, and Kim in view of Chin suggest a composition as
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claimed in claim 1 and that the combined teachings of Chin and Kim suggest
a process as recited in claims 4 and 5. See In re Peterson, 315 F.3d at 1329.

Having determined the Examiner established a prima facie case of
obviousness, the second issue we consider is whether Appellants’ arguments
in support of nonobviousness, taken together with the evidence of
unexpected results in the Specification, outweigh the Examiner’s evidence
of obviousness.5
To demonstrate unexpected results, Appellants rely on several
comparison examples, and a single example (Example 2) which falls within
the scope of claim 1. (See Spec. 10 Table.) Appellants have not provided
examples in which the rare earth was present in amounts of 40 and 55%, i.e.,
the lower and upper limits of the claim 1 range. (See id.)
According to the Specification, “[v]anadium causes the micropore
volume of the zeolite Y to deteriorate. So, the better the vanadium
passivating capacity of the sample, the higher the micropore volume of the
zeolite that will be retained in this measurement.” (Spec. 10:3-5.) The
Specification states that “a lanthanum content higher than 35 wt% results in
an increased performance. A lanthanum content above 60 wt% does not
increase the performance any further and only makes the compositions more
expensive and denser.” (Spec. 10:14-17.) Appellants’ evidence shows that
compositions comprising 50% and 65% by weight La2O3 performed equally
in micropore volume retention of the zeolite Y. (See Spec. 10 Table.)

5 We note Appellants’ reliance on unexpected results is limited to the
rejections based on Chin (i.e., grounds of rejection 2-4). (See Br. 10-12;
Ans. 7.)
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In general, an applicant may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range.” That same
standard applies when . . . the applicant seeks to optimize
certain variables by selecting narrow ranges from broader
ranges disclosed in the prior art. Moreover, the applicant’s
showing of unexpected results must be commensurate in scope
with the claimed range.
Id. at 1330 (internal citations omitted). “[B]y definition, any superior
property must be unexpected to be considered as evidence of non-
obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007).
Appellants have not demonstrated any criticality in the claimed range.
As explained by the Examiner, Appellants have not provided examples
which are commensurate in scope with the claimed range of 40-55%, and the
Example 2 results
are not unexpected in view of Chin because the instantly
disclosed examples show that the MiPV retention of the catalyst
increases with increasing wt% La2O3 and Chin explicitly states
“the greater the amount of lanthanum in the discrete particle,
the better the improvement in catalyst performance will be,”
which appears to be the case in the instantly disclosed
examples.
(Ans. 10-11.)

In sum, based on the Examiner’s fact finding and reasoning, we
determine that a preponderance of the evidence weighs in favor of the
Examiner’s conclusion of obviousness. Accordingly, we sustain all four
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Application 10/582,593

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grounds of rejection. The Examiner’s decision to reject claims 1-6 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)(1).
AFFIRMED

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