Ex Parte Krämer et alDownload PDFPatent Trial and Appeal BoardNov 17, 201713083055 (P.T.A.B. Nov. 17, 2017) Copy Citation 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. 13/083,055 04/08/2011 Michael KrAHmer 074008- 1172-US (286167) 7317 123223 7590 11/30/2017 Drinker Biddle & Reath LLP (WM) 222 Delaware Avenue, Ste. 1410 Wilmington, DE 19801-1621 EXAMINER LI, JUN ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): IPDocketWM @ dbr.com penelope. mongelluzzo @ dbr. com DB RIPDocket @ dbr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL KRAMER, MARKUS SCHUBERT, THOMAS LAUTENSACK, THOMAS HILL, REINHARD KORNER, FRANK ROSOWSKI, and JURGEN ZUHLKE Appeal 2017-002325 Application 13/083,0551 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 8—10 and 16—26. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is BASF SE. Appeal Br. 2. Appeal 2017-002325 Application 13/083,055 STATEMENT OF THE CASE2 Appellants describe the invention as relating to a catalyst for oxidizing SO2 to SO3. Spec. 1:3; Appeal Br. 4. The oxidation process is used to obtain sulfuric acid. Spec. 1:15—19. Appellants desire to make a catalyst that can be used over a wide temperature range and be produced cheaply. Id. at 6:10—12. The catalyst is formed on diatomaceous earth(s) (hereinafter referred to as “DE” or “DEs”) which are “generally classified according to the structure of the siliceous algae on which they are based.” Id. 5:15—18. Claim 8, reproduced below with emphasis added to certain key recitations and formatting added for readability, is illustrative of the claimed subject matter: 8. A catalyst for the oxidation of SO2 to SO3, which comprises active substance comprising vanadium, alkali metal compounds and sulfate applied to a support comprising naturally occurring diatomaceous earths, wherein the catalyst is formed by a process comprising applying the active substance to the support, which comprises at least two different naturally occurring uncalcined diatomaceous earths which differ in terms of the predominant structure type of the siliceous algae from which they are derived. 2 In this opinion, we refer to the Final Office Action dated October 7, 2015 (“Final Act.”), the Appeal Brief filed March 7, 2016 (“Appeal Br.”), the July 5, 2016, Supplemental Appeal Brief which provides a corrected claims appendix (“Supp. Appeal Br.”), the Examiner’s Answer dated September 29, 2016 (“Ans.”), and the Reply Brief filed November 29, 2016 (“Reply Br.”). 2 Appeal 2017-002325 Application 13/083,055 Supp. Appeal Br. 2 (Claims App’x). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Sherif US 4,284,530 Aug. 18, 1981 (hereinafter “Sherif’) Hoj US 7,431,904 B2 Oct. 7, 2008 (hereinafter “Hoj”) Wang US 2010/0126388 Al May 27, 2010 (hereinafter “Wang”) Appl et al. EP 0 019 174 Nov. 26, 1980 (hereinafter “Appl”) Tian et al. CN 1417110 May 14, 2003 (hereinafter “Tian”) REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 8—10 and 16—26 as indefinite under 35 U.S.C. § 112. Ans. 2. Rejection 2. Claims 8, 10, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Tian, or in the alternative, under 35 U.S.C. § 103(a) as obvious over Tian. Id. at 3. Rejection 3. Claims 8, 10, 19, 20, and 26 under 35 U.S.C. § 103(a) as unpatentable over Tian in view of Sherif. Id. at 5. Rejection 4. Claims 9, 24, and25 under 35 U.S.C. § 103(a) as unpatentable over Tian in view of Sherif as evidenced by Wang. Id. at 9. Rejection 5. Claims 16—18 under 35 U.S.C. § 103(a) as unpatentable over Tian in view of Sherif and further in view of Hoj. Id. at 10. 3 Appeal 2017-002325 Application 13/083,055 Rejection 6. Claims 21—23 under 35 U.S.C. § 103(a) as unpatentable over Tian in view of Sherif and further in view of Appl. Id. at 12. The Examiner also references C.H. Hitchcock and J.H. Huntington, The Geology of New Hampshire, Concord, Edward A. Jenks, State Printer, 1874 (hereinafter “Hitchcock”). ANALYSIS We review the appealed rejections for error based upon the issues identified by the Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) {cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After considering the evidence presented in this Appeal and each of Appellants’ arguments, we are not persuaded that Appellants identity reversible error. Thus, except where otherwise explained below, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection 1. The Examiner rejects claims 8—10 and 16—26 as indefinite under 35 U.S.C. § 112. Ans. 2. In particular, the Examiner states that the term “predominant,” as recited in all claims on appeal, is a relative term that is not defined by the claim or the specification. Id. at 2—3. Appellants argue that “‘predominant’ is defined as ‘present as the strongest or main element, ’ or in this case the structure type which appears more frequently than any other structure type.” Appeal Br. 7. Given the context of claims 1 and 26 and the Specification, we agree with Appellants’ proposed definition. Figures 1 through 4 of the Specification illustrate 4 Appeal 2017-002325 Application 13/083,055 various earths that each have one predominant type of algae. The captions for these figures use the term “predominant” to reference the most frequent structure type. Similarly, the text of the Specification refers to earths where one predominant type can be recognized. See, e.g., Spec. 5:33—6:8 (explaining that “in a particular diatomaceous earth predominantly only one form of siliceous algae can be recognized”); 6:25—31 (referring to “plate shaped, cylindrical and rod-shaped structure types”); 6:36—38 (“For the purposes of the invention, a diatomaceous earth is assigned to the structure type of the siliceous alga from which it is derived, with the form of the parent siliceous alga being able to be predominantly recognized in an electron micrograph.”). Because we do not agree that “predominant” as recited in independent claims 8 and 26 is unclear, we do not sustain the Examiner’s Section 112 rejection. Rejections 2—3. The Examiner rejects claims 8, 10, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Tian or, alternatively, under 35 U.S.C. § 103(a) as obvious over Tian. Ans. 3. The Examiner also rejects claims under 35 U.S.C. § 103(a) as obvious over Tian in view of Sherif. Id. at 5. Appellants present separate arguments for claims 8 and 26. App Br. 8—9, 14—15. We limit our discussion to those claims. All other claims stand or fall with claim 8, from which they depend. The Examiner finds that Tian teaches a vanadium catalyst composition comprising V2O5 K20, alkali metal sulphate, and diatomaceous earth (DE) which can be selected from one of four different regions in China or a mixture of two kinds of DE. Ans. 3. The Examiner finds that one would expect that DEs obtained from different places in China to have different predominant structure type of the siliceous algae from which they 5 Appeal 2017-002325 Application 13/083,055 are derived. Id. at 4. In particular, the Examiner finds that Tian’s DEs are derived from distant regions of China. Id. at 15 (providing a map of China illustrating where Tian’s DEs come from). Appellants’ central argument concerns whether or not Tian’s DEs are the same as those recited in claim 8. Appeal Br. 8—9. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, there are two sound bases for believing that the DEs taught by Tian will be the same as claim 8’s recited support comprising two DEs “which differ in terms of the predominant structure type of the siliceous algae from which they are derived.” First, Tian teaches, for example, that DEs from far northeast China and from southwest China can be combined. Tian page 3 (“Diatomaceous earth can be one kind in Shandong Linqu diatomaceous earth, northeast long white diatomaceous earth, Zhejiang Shengxian County diatomaceous earth and the Yunnan Xun Dian diatomaceous earth, also can be two kinds mixture. . . .”); see also id. at claim 4; see also Ans. 3, 15. As illustrated by the Examiner’s annotated map of China (Ans. 15), the source of these DEs are nearly 2,000 miles apart.3 The great distance between these DE sources provides a reasonable basis for the Examiner’s finding that the algae will have different structure type. Ans. 17 (finding that different areas will differ in algae structure); see also Hitchcock 431—432 (explaining how different 3 The city of Anshan is in the northeast portion of China indicated by the Examiner and the city of K’un-ming is in the area annotated with the arrow labeled “Yunnan DE.” Those two cities are nearly 2,000 miles apart. 6 Appeal 2017-002325 Application 13/083,055 algae fossils appear in different parts of the United States); Declaration of Dr. Michael Kraemer submitted December 2, 2013, |11 (hereinafter “Kraemer Decl.”) (“Different structure types occur between DEs from different deposits that are fairly remote from each other, even on different continents.”). As to the second basis, claim 8 does not limit how much each of the two DEs is included in the support. For example, the support could comprise 99% DE having predominantly plate structure type mixed with 1% DE having predominantly rod structure type. In this example, the support’s mixture would be structurally indistinguishable from a DE that is predominantly plate structure type but includes some rods. In other words, absent at least some recitation concerning how much each of the two DEs is included, there is no structural difference between a support made from mixing two DEs and a support made from DE that is naturally a mix of structure types. See Ans. 4 (emphasizing that distinction between the claim and prior art must be based on a structural difference). These two bases are sufficient to shift the burden to Appellants. In re Spada, 911 F.2d at 708. Burden shifting is particularly appropriate under this fact pattern because Appellants are in a position to analyze the DEs taught by Tian while the Patent Office is not. See, e.g., In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (holding that challenging the PTO to prove characteristics of prior art did not meet appellant’s burden to “prove that the subject matter shown to be in the prior art does not possess the characteristic relied on” because the “PTO is not equipped to perform such tasks”) (citations omitted). 7 Appeal 2017-002325 Application 13/083,055 Appellants rely on the Kraemer Declaration to attempt to show that the DEs of Tian would not be structurally identical to claim 8. Appeal Br. 9—11. We agree with Appellants that the Kraemer Declaration establishes that the three DEs analyzed by Dr. Kraemer have the same predominant plate structure. Id. at 11. Dr. Kraemer, however, did not analyze the four DEs suggested by Tian. Rather, the DEs analyzed by Dr. Kraemer come from regions only “several hundred miles from each other” (Reply Br. 3—4), as compared to the much greater distance between the Tian DE sources. Thus, the particular DEs analyzed by Dr. Kraemer do not serve to show that the Tian DEs are structurally identical. Moreover, the Kraemer Declaration does not adequately support a general proposition that all DEs of “Chinese origin, would be expected to have the same structure type.” Appeal Br. 10. Rather, Dr. Kraemer states that “[different structure types occur between DEs from different deposits that are fairly remote from each other, even on different continents.” Kraemer Decl. 111. This statement is silent as to whether or not DEs from remote deposits within a continent must necessarily be the same. Moreover, Dr. Kraemer provides no explanation as to whether or not far northeast China is “fairly remote” as compared to southwest China. Dr. Kraemer states that “[a] person of ordinary skill in the art would expect, therefore, that the DEs employed in the Tian reference would have the same structure type” {id. Ill), but he provides no basis for this conclusion other than recognizing that the Tian DEs are sourced within China’s large geographic land mass. Meanwhile, C. H. Hitchcock’s 1874 book, The Geology of New Hampshire, teaches that fossils having different structure type appear in different regions of the United States. Hitchcock 431 432. It is not credible 8 Appeal 2017-002325 Application 13/083,055 that national boundaries—often arbitrary from a geological standpoint— would, standing alone, control the dominant structure type of siliceous algae. Because the Kraemer Declaration is conclusory, lacks analysis as to Tian’s particular DEs, and is not supported by objective evidence, we find the Declaration unpersuasive in establishing that the DEs of Tian would not be structurally identical to claim 8. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board [or the Examiner] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (stating Board was within its discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”). Appellants also argue unexpected results. Appeal Br. 12. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellants to proffer factual evidence that actually shows unexpected results relative to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The evidence of unexpected results must also be reasonably commensurate with the scope of the claims. In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). Here, the Examiner responds to Appellants’ argument by persuasively explaining that Appellants proffered evidence of unexpected results is not commensurate with the scope of Appellants’ claims and does not establish unexpected results as compared to the closest prior art (i.e., Tian). Ans. 20—22. Appellants do not rebut the Examiner’s response. 9 Appeal 2017-002325 Application 13/083,055 Reply Br. 7. Appellants therefore have not met their burden of proving unexpected results. Appellants also argue that Sherif’s teaching concerning DEs of Actinoptychus class and of Coscinodiscus class do not establish two differing predominant structure types. Appeal Br. 13—14. We need not resolve this factual dispute because, as explained above, a sound basis exists for believing the Tian support falls within the scope of claims 8 and 26, and Appellants have not met the burden of showing otherwise. Claim 26 recites a support “which comprises at least three different naturally occurring . . . diatomaceous earths.” Supp. Appeal Br. 5 (Claims App’x). Appellants argue that none of the references “would have suggested to us[ing] three differing predominant structure types.” Appeal Br. 15; see also Reply Br. 8 (arguing that following Tian would only result in two different structure types). The Examiner, however, concludes that “it would have been obvious for one of ordinary skill in the art to adopt different (at least 3) predominant structure DEs as shown by Tian and Sherif for help providing an [sic] useful catalyst with high activity and good heat endurance for sulfuric acid production.” Ans. 24 (providing citation to Tian); cf., In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition ... to be used for the very same purpose.”) (citations omitted). Appellants’ argument does not squarely or persuasively dispute the Examiner’s factual finding underlying the Examiner’s obviousness conclusion. Because Appellants do not establish reversible error, we sustain the Examiner’s second and third rejections. 10 Appeal 2017-002325 Application 13/083,055 Rejections 4—6. Appellants argue that Wang, Hoj, and Appl do not remedy the flaws of Tian and Sherif. Appeal Br. 15—16. As explained above, we do not agree that the Examiner’s rejections based on Tian or based on both Tian and Sherif are in error. Accordingly, we also sustain these rejections. DECISION For the above reasons, we reverse the Examiner’s rejection of claims 8—10 and 16—26 as indefinite under 35 U.S.C. § 112. We affirm the Examiner’s rejection of claims 8—10 and 16—26 under 35 U.S.C. §§ 102(b) and 103(a). 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 11 Copy with citationCopy as parenthetical citation