Ex Parte Lelias et al

Patent Trial and Appeal Board

Jan 18, 2018

13248785 (P.T.A.B. Jan. 18, 2018)

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.
13/248,785 09/29/2011 Marc-Antoine LELIAS PET-2577-C01 8501
23599 7590 01/22/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC-ANTOINE LELIAS, OLIVIER DUCREUX,
and DAVID CHICHE
Appeal 2017-004000
Application 13/248,7851
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejection adverse to the patentability of claims 1—8 and 10-16 under 35
U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We reverse, and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
1 Appellants identify the real party in interest as IFP ENERGIES
NOUVELLES. App. Br. 1.
Appeal 2017-004000
Application 13/248,785
SUBJECT MATTER
Sole independent claim 1 is illustrative of the subject matter on
appeal, and is copied below with key limitations at issue in this appeal
italicized for emphasis:
1. A method for treating a gas mixture, upstream of a
Fischer-Tropsch synthesis unit, by removing halogenated
impurities from the gaseous mixture and catalyzing hydrolysis of
COS and/or of HCN contained in the gas mixture, said method
comprising:
contacting a gas mixture containing HCN, COS and 0.1-
1000 ppm by weight of halogenated impurities with a captive
mass composition comprising between 30 wt. % and 99 wt. % of
Ti02[,] between 1 wt. % and 30 wt. % of at least one sulfate of
an alkaline-earth metal selected from calcium, barium, strontium
and magnesium, and between 0.1 wt.% and 30 wt. % of alumina,
wherein COS and/or HCN within said gas mixture are
hydrolyzed and halogenated impurities are removed by contact
with said captive mass composition, and, after contact with said
captive mass composition, the residual content of halogenated
compounds within said gas mixture is less than 10 ppb by wt. for
each constituent of the halogenated compounds.
App. Br. 14 (emphasis added).
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Dupin
Nedez
US 4,388,288
US 2004/0247507 A1
June 14, 1983
Dec. 9, 2004
June 3, 2010Serban US 2010/0135884 A1
2
Appeal 2017-004000
Application 13/248,785
REJECTION
Claims 1—8 and 10—16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nedez in view of Dupin with or without Serban. Final
Act. 4.2
STATEMENT OF THE CASE
The Examiner finds that Nedez teaches the claimed method, except
for the requirement that the gas mixture is treated upstream of a Fischer-
Tropsch synthesis unit, and the requirement that the captive mass
composition used to treat the gas mixture comprises between 0.1 and 30 wt.
% of alumina. Final Act. 4—6. The Examiner considers the “upstream of a
Fischer-Tropsch synthesis unit” as an intended use, or alternatively, as being
taught by Serban. Id. at 6—7. To remedy Nedez’s deficiency regarding the
recited alumina content, the Examiner relies on the disclosure of Dupin,
which teaches the use of alumina as an optional component in a titanium
oxide based catalyst. Id. at 7—8. The Examiner determines that Dupin
“fairly suggests that alumina is an analogous material to the clays, silicates,
titanium sulfate and ceramic fibers as disclosed in Nedez [] that could be
used in the titanium oxide based catalyst,” and, accordingly, it would have
been obvious for the skilled artisan to use alumina instead of the clays,
silicates, titanium sulfate and ceramic fibers disclosed in Nedez “to obtain a
predictable result.” Id. at 8.
2 The obviousness-type double patenting rejection of claims 1—8 and 10-15
over claims 1—17 of US 8,617,501, listed at page 3 of the Final Action, was
withdrawn by the Examiner. Ans. 7.
3
Appeal 2017-004000
Application 13/248,785
OPINION
We do not sustain the Examiner’s obviousness rejection.
On this record, the Examiner has failed to establish that alumina is
actually analogous to the clays, silicates, titanium sulfate and ceramic fiber
additives disclosed in paragraph 17 of Nedez as alleged. Final Act. 8, 9, 10,
14; Ans. 8, 10, 11, 12, 13, 17. The evidence upon which the Examiner relies
falls short of demonstrating that the skilled artisan would reasonably expect
that substituting one of Nedez’s additives disclosed in paragraph 17 (e.g., a
clay) for alumina would yield a composition that provides predictably
similar properties. Absent a showing of such predictability, there can be no
prima facie case of obviousness.
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). Thus, the obviousness of substituting one element for another
presumes that the established functions of such elements are known in the
prior art. Here, there is no discussion in the Final Rejection or the Answer
regarding the function or purpose of additives such as clay, silica, silicates,
titanium sulfates, ceramic fibers or alumina. Moreover, the portions of the
references cited by the Examiner to support the equivalence of such
additives appear equally opaque on this issue. Nedez 117, Dupin 3:42-46.3
3 We note that Dupin’s Example 18 discloses that “a dilute solution of
sodium silicate” was used to aid in the granulation of powder. Examples 16
and 17, which use alumina and kaolin clay, respectively, are silent regarding
the purposes of such additives. Dupin 10:5—55.
4
Appeal 2017-004000
Application 13/248,785
It appears to us that the Examiner’s determination of equivalence is rooted in
the fact that alumina is listed among several optional components in Dupin,
some of which also appear in Nedez to be optional, and to be included in
similar amounts to those also disclosed in Dupin. Final Act. 8 citing Dupin
3:42—46; see also id. at 4 (noting howNedez’s composition “also comprises
at least one compound selected from clays, silicates, titanium sulfate and
ceramic fibers in a total amount of 30% by weight or less.”). This, without
more, is an insufficient basis upon which to determine equivalence. See In
re Ruff, 256 F.2d 590, 598—9 (CCPA 1958) (explaining how equivalence
cannot be demonstrated by mere existence within a Markush group).
Moreover, we note that the Examiner’s attempted reliance on Appellants’
Specification to support a showing of equivalence (Final Act. 9-10) is
legally impermissible. See In re Ruff 256 F.2d at 598 (“To rely on an
equivalence known only to the applicant to establish obviousness is to
assume that his disclosure is a part of the prior art. The mere statement of
this proposition reveals its fallaciousness.”).4
4 We do not view the disclosure contained in the paragraph bridging pages
7—8 of the Specification as an admission that alumina is equivalent to the
other additives mentioned therein (i.e., “clays, silicates, [] titanium sulfate,
[and] ceramic fibres.”). Rather, we view this disclosure as a mere listing of
potential additives.
5
Appeal 2017-004000
Application 13/248,785
New ground of rejection under 37 C.F.R. § 41.50(b)
We determine, however, that at least claim 1 is unpatentable under 35
U.S.C. § 103(a) over Nedez, with or without Serban, but for different
reasons than those provided by the Examiner.5
Nedez discloses a catalyst comprising TiCE and a sulfate, such as
calcium sulfate, in overlapping amounts as those claimed for hydrolyzing
COS and/or HCN in a gas mixture. Nedez || 14, 15, claims 1—3. Nedez
also discloses that it was known in the art to use an alumina-based catalyst to
jointly hydrolyze COS and HCN. Nedez | 12.
Based on this disclosure, it would have been obvious to the skilled
artisan to combine Nedez’s catalyst comprising Ti02 and, e.g., calcium
sulfate, with a separate alumina-based catalyst known in the prior art, for the
purpose of hydrolyzing COS and/or HCN in a gas mixture. “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
which is to be used for the very same purpose. . . . [T]he idea of combining
them flows logically from their having been individually taught in the prior
art.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
We would be remiss if we did not express our disagreement here with
the Examiner’s position (Ans. 10) that Nedez teaches away from using an
alumina based catalyst, i.e., one “with no titanium dioxide and metal
sulfate.” While Nedez recognizes that certain prior art catalysts, including
5 Our new ground of rejection focuses on sole independent claim 1. We
leave it to the Examiner to determine the propriety of additionally rejecting
dependent claims 2—8 and 10—16 based on the factual findings and reasoning
set forth in this new ground of rejection.
6
Appeal 2017-004000
Application 13/248,785
those which are alumina-based, do not perform as well as those based on
titanium dioxide (Nedez 112), we fail to see how such disclosure rises to the
level of a teaching away from the use of alumina as a catalyst.
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Such is precisely the case
here because Nedez does not indicate that alumina, on its own, is ineffective
for the purpose of removing COS and/or HCN from a gas mixture. To the
contrary, Nedez recognizes that alumina-based catalysts do not convert COS
and/or HCN as well as titanium dioxide based catalysts (See Examples 1—4),
and are “generally mediocre in the case of joint hydrolysis of COS and
HCN.” Nedez 112. In our view, such disclosure does not amount to a
teaching away, particularly of the limited amount of alumina claimed in the
recited captive mass composition (i.e., as low as 0.1 wt. %).6
Thus, based on Nedez’s recognition that alumina-based catalysts do
not hydrolyze COS and/or HCN as effectively as titanium dioxide-based
catalysts, the skilled artisan would have used no more than routine skill in
the art to optimize the amount of alumina vis-a-vis other catalysts, such as
6 We disagree with Appellants’ teaching away arguments regarding
paragraph 12 of Nedez for the same reasons. We furthermore disagree with
Appellants’ teaching away arguments regarding Example 4 of Nedez
because the alumina-based catalyst used in Example 4 is present in an
amount of 80%. This amount is almost triple the maximum possible
concentration of alumina recited in the claims and does not constitute a
teaching away of using much lower levels of alumina (e.g., 0.1 wt %).
7
Appeal 2017-004000
Application 13/248,785
those which are titanium dioxide-based, in order to prepare a composition
that predictably hydrolyzes COS and/or HCN. “[W]here 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.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). “[Discovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Regarding the limitation requiring “the residual content of
halogenated compounds within said gas mixture [after treatment being] less
than 10 ppb by wt.,” we note that
“[i]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.”
In re Best, 562 F.2d 1252, 1254—55 (CCPA 1977) (quoting In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)). Indeed,
[w]here ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . [The]
fairness [of the burden-shifting] is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior
art products.
In re Best, 562 F.2d at 1255.
Here, the recited captive mass composition is substantially identical to
that disclosed in Nedez because it recites titanium dioxide and a metal
8
Appeal 2017-004000
Application 13/248,785
sulfate in overlapping concentrations disclosed by Nedez, and because the
claimed composition allows for concentrations of alumina as low as 0.1% by
weight. Thus, the burden of demonstrating that the recited residual content
of halogenated compounds is not an inherent property in the prior art is
properly shifted to Appellants. In re Best, 562 F.2d at 1255.
Finally, we share the Examiner’s view (Final Act. 7) that the
limitation requiring the method to be carried out “upstream of a Fischer-
Tropsch synthesis unit” is either an intended use entitled to no patentable
weight, or is, alternatively, obvious in view of Serban’s disclosure in
paragraph 5.
SUMMARY
The Examiner’s rejection claims 1—8 and 10—16 is reversed.
Claim 1 is newly rejected under 35 U.S.C. § 103(a) pursuant to our
authority under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection under 37 C.F.R.
§ 41.50(b) which provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
9
Appeal 2017-004000
Application 13/248,785
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
REVERSED
37 C.F.R. $ 41.50(b)
10