Ex Parte Kiener et al

Patent Trial and Appeal Board

Dec 5, 2012

12297666 (P.T.A.B. Dec. 5, 2012)

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.
12/297,666 10/29/2008 Christoph Kiener 13156*205 (PF59045/TE) 1673
23416 7590 12/06/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
JONES, CHRISTOPHER P
ART UNIT PAPER NUMBER
1776
MAIL DATE DELIVERY MODE
12/06/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPH KIENER,
ULRICH MULLER,
and MARKUS SCHUBERT
____________

Appeal 2011-011479
Application 12/297,666
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and JAMES C. HOUSEL,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 17-19, 21, and 32-36 under 35 U.S.C. § 103(a), as obvious
over Mueller (US 2006/0210458 A1, published Sep. 21, 2006).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Final Office Action mailed Aug. 11, 2010.
2 Appeal Brief filed Mar. 14, 2011(“Br.”)
Appeal 2011-011479
Application 12/297,666

2
Claim 17 is representative of the invention and is reproduced below from the
Claims Appendix to the Appeal Brief:
17. A porous metal organic framework comprising A1III ions and fumarate
ions, wherein the A1III ion and the fumarate ions are coordinated in a framework
structure, wherein the framework is present as a powder and has a specific surface
area of at least 1000 m2/g, determined according to the Langmuir method by N2
adsorption at 77 K.

According to Appellants, they “have surprisingly discovered that the
claimed porous metal organic frameworks comprised of aluminum (III) ions and
fumarate ions exhibit a one-dimensional channel structure with a surprisingly high
surface area particularly useful for storage and separation of gases.” (Br. 3 (citing
Spec.3 2:1-7).)
The Examiner relies on the following disclosure in Mueller in support of the
obviousness determination (Ans.4 3-7), concluding that while
Mueller does not explicitly disclose the exact combination of AlIII ions
and fumarate ions . . ., it would have been obvious to one of ordinary
skill in the art at the time the invention was made to combine AlIII ions
and fumarate ions to create a porous metal organic framework since
the selection of a known material based on its suitability for its
intended use supports a prima facie case of obviousness . . .[, and
both] AlIII and fumarate ions are listed in Mueller as ions that can be
used to create a porous metal organic framework
(id. at 3-4):
Mueller discloses a “porous metal-organic framework [(“MOF”)]
compris[ing] at least one . . . bidentate organic compound having a
coordinate bond to at least one metal ion.” (¶[0020].) “The term ‘at least bidentate
organic compound’ refers to an organic compound which comprises at least one

3 Specification filed Oct. 20, 2008
4 Examiner’s Answer mailed Apr. 20, 2011.
Appeal 2011-011479
Application 12/297,666

3
functional group which is capable of forming at least two bonds, preferably two
coordinate bonds, to a given metal ion and/or one coordinate bond to two or more,
preferably two, metal atoms.” (¶[0025].) Preferably, “the organic compounds . . .
are derived from a saturated or unsaturated aliphatic compound or an aromatic
compound or a compound which is both aliphatic and aromatic.” (¶[0028].)
“[T]rans-muconic acid or fumaric acid5 or phenylenebisacrylic acid” are exemplary
“aromatic compound[s] or [] aromatic moiet[ies] of [a] compound which is both
aromatic and aliphatic.” (¶¶ [0030-0031].)6 The ions of the metal components in
the frame work which are “mentioned in particular” include Al3+. (¶ [0024].)
“[T]he MOF may be present in powder form.” (¶[0014].) “The specific surface
area, calculated using the Langmuir model according to DIN 66135 (DIN 66131,
66134)7 for a[] MOF in powder form, is more than 5 m2/g, . . . even more
preferably more than 1000 m2/g.” (¶ [0022].)
Appellants contend the Examiner’s obviousness determination is based on
“impermissible hindsight reconstruction” (Br. 4), arguing, more specifically:
“[t]here is nothing which would motivate one of ordinary skill in the art to make
the specific selection of trivalent aluminum and fumarate” (id. at 5); “it would not
be clear to one of ordinary skill in the art that fumaric acid is disclosed as a
bidentate, but rather merely an aliphatic compound from which a bidentate may be

5 (See Spec. 7:3-4 (“The organic component of the porous metal organic
framework of the invention is fumaric acid which can be reacted with an aluminum
compound.”).)
6 The Examiner further makes an unrefuted finding that “in order for fumaric acid
to become a bidentate, it would necessarily be reduced to a fumarate ion, since
Mueller discloses that a bidentate organic compound must be capable of forming at
least two bonds . . ., and the way for fumaric acid to be capable of forming at least
two bonds is by being reduced to a fumarate ion. (Ans. 5-6 (Response to
Argument).)
7 (See Spec. 6:23-24 (referencing DIN 66131, 66134).)
Appeal 2011-011479
Application 12/297,666

4
derived” (id.); “[t]here is no suggestion that such a framework be present in
powder form” (id. at 4); and “there is no teaching, nor any suggestion . . . that such
a combination would have a high surface area” (id.). Appellants also contend that
because Mueller fails to teach or suggest a MOF as recited in claim 17, the
Examiner reversibly erred in finding Mueller’s MOF would inherently possess
(Ans. 4) “an X-ray diffraction pattern” and “orthorhombic one-dimensional
channel structure” as recited in dependent claims 18 and 19, respectively. (Br. 6-
7.)
Where a skilled artisan merely pursues ‘known options’ from a ‘finite
number of identified, predictable solutions,’ obviousness under § 103 arises.” In re
Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 421 (2007)). An obviousness rejection predicated on selection
of one or more components from numerous possible choices may be appropriate if
the prior art provides direction as to which of many possible choices is likely to be
successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342,
1364 (Fed Cir. 2007). The fact that a reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious.” Merck &
Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill,
771 F.2d 1496, 1500 (Fed.Cir.1985) (obviousness rejection of claims affirmed in
light of prior art teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites of the claims from
among ‘thousands' of compounds”)); see also, In re Susi, 440 F.2d 442, 445
(CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art
was “huge, but it undeniably include[d] at least some of the compounds recited in
appellant's generic claims and [was] of a class of chemicals to be used for the same
purpose as appellant's additives”).
Appeal 2011-011479
Application 12/297,666

5
Appellants have not persuaded us that the Examiner relied on improper
hindsight reasoning in rejecting the claims. We agree with the Examiner that the
above-cited disclosure in Mueller (i.e., the disclosure relied upon by the Examiner)
would have provided one of ordinary skill in the art with a reasonable expectation
of success in selecting a porous metal organic framework comprising AlIII ions and
fumarate ions, in the form of a powder having a specific surface area of at least
1000 m2/g. Mueller clearly contemplates an MOF comprising a framework in the
form of a powder (¶[0014]), indicates a preference for the claimed specific surface
area (¶[0022]), and identifies AlIII ions (¶[0024]) and fumarate ions (¶¶ [0030-
0031] ; see supra note 6) as suitable choices for the MOF.
Appellants have also not provided evidence which demonstrates that the
resultant MOF would not have possessed the characteristics recited in appealed
claims 18 and 19. See In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (“[W]hen
the prior art evidence reasonably allows the PTO to conclude that a claimed feature
is present in the prior art, the evidence ‘compels such a conclusion if the applicant
produces no evidence or argument to rebut it.’” (quoting In re Spada, 911 F.2d
705, 708 n.3 (Fed. Cir. 1990))); In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011)
(wherein the court stated that “[s]ubstantial evidence supports the Board's finding,
based upon the specification, which confirms that the claimed 'food effect' is an
inherent property of the oxymorphone itself”); Kubin, 561 F.3d at 1357 (“Even if
no prior art of record explicitly discusses the . . . [limitation], [Appellants’]
application itself instructs that [the limitation] is not an additional requirement
imposed by the claims on the [claimed invention], but rather a property necessarily
present in [the claimed invention].”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI
1985) (“The fact that appellant has recognized another advantage which would
Appeal 2011-011479
Application 12/297,666

6
flow naturally from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious.”).
In sum, for the reasons expressed in the Answer and above, we affirm the
Examiner’s decision to reject claims17-19, 21, and 32-36.
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

cam