11271468 (B.P.A.I. May. 4, 2009)

Ex Parte Martinis et al

Board of Patent Appeals and InterferencesMay 4, 2009

11271468 (B.P.A.I. May. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JORGE M. MARTINIS, MARIA E. VALERA, JOSE R. VELASQUEZ, and ANGEL R. CARRASQUEL ____________ Appeal 2009-2226 Application 11/271,468 Technology Center 1700 ____________ Decided:1 May 4, 2009 ____________ Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-2226 Application 11/271,468 Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 30-39. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. STATEMENT OF THE CASE Appellants claim a catalyst support comprising particles having siloxane bonds. Representative independent claim 30 reads as follows: 30. A catalyst support, comprising substantially spherical particles having siloxane bonds of a substantially homogenous mixture of refractory inorganic oxide and refractory inorganic carbide, the support having a solid surface area of at least about 65 m2/g, a particle size of at least about 0.1 mm, a pore volume of at least about 0.2 cc/g, and an average pore diameter of at least about 150Çº. The Examiner rejects all appealed claims under 35 U.S.C. Â§ 102(b) as being unpatentable over the Rivas patent (5,648,312 issued July 15, 1997). The Examiner finds that, "[w]ith respect to the limitation on ". . . having siloxane bonds . . ." in claim 30, it is inherent that the disclosed catalyst support [of Rivas] would possess the same properties as being claimed because the disclosed catalyst support contains the same refractory inorganic metal oxide and refractory inorganic carbide homogeneous mixture" (Ans. 4). ISSUE Have Appellants shown error in the Examiner's finding that Rivas inherently describes a catalyst support having siloxane bonds? 2 Appeal 2009-2226 Application 11/271,468 FINDINGS OF FACT A primary object of Appellants' invention is to provide catalyst particles which are resistant to attrition via a catalyst support which has excellent attrition resistance (Spec. Â¶Â¶ [0006], [0032]). The real party in interest for the subject application is the assignee of record, which is Intevep, S.A. (Br. 3). Like Appellants' invention, a primary object of the Rivas invention is to provide catalyst particles resistant to attrition (col. 1, ll. 33-35) via a catalyst support which exhibits an excellent resistance to attrition (col. 7, ll. 60-62). Also like Appellants' invention, the Rivas patent is assigned to Intevep, S.A. (Title page). The Examiner finds that Rivas expressly discloses a catalyst support that corresponds to the claim 30 catalyst support in all respects except for the claim characteristic "having siloxane bonds" which the Examiner finds is inherently possessed by the catalyst support of Rivas (Ans. 3-4). Appellants implicitly accept the Examiner's findings regarding the express disclosure of Rivas by contesting only the Examiner's finding that Rivas inherently discloses a catalyst support having siloxane bonds (Br. 9-10). PRINCIPLES OF LAW "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil, 814 F.2d 628, 631 (Fed. Cir. 1987). 3 Appeal 2009-2226 Application 11/271,468 "It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. . . . Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. . . . Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art." In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349 (Fed. Cir. 2002). "Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, 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." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). ANALYSIS Appellants' arguments concern independent claim 30 only (Br. 9-10). Therefore, dependent claims 31-39 will stand or fall with their parent independent claim. Appellants present the following argument in support of their position that the Examiner erred in finding that the catalyst support of Rivas inherently possesses siloxane bonds. As clearly set forth in paragraph [0026] of the instant application siloxane bonds result in the catalyst support of the present invention because ammonium salts are used as a gelling agent in the preparation of the support. Ammonium salts are not used in the preparation of the 4 Appeal 2009-2226 Application 11/271,468 Rivas patent [sic]. Therefore, the examiner's conclusion of inherency is totally without merit. (Br. 9). This argument is unpersuasive. The Examiner's inherency finding is reinforced by the undisputed commonalities possessed by the catalyst supports defined by claim 30 and disclosed by Rivas. This finding also is reinforced by the fact that the catalyst supports of claim 30 and Rivas serve the same primary objective of providing excellent attrition resistance. While paragraph [0026] of Appellants' Specification discloses that "[a]mmonium salts . . . cause gelling by forming siloxane bonds," this paragraph contains no teaching or suggestion that siloxane bonds would not be formed in the absence of ammonium salts. Therefore, although ammonium salts are not used in the gelling step for preparing the catalyst support of Rivas, this fact does not evince that siloxane bonds are not present in the catalyst support of Rivas. Appellants further argue that paragraph [0032] shows the catalyst supports of their invention and of Rivas2 have different attrition rates and that this "difference is due to the siloxane bonds" (Br., Â¶ bridging 9-10). However, paragraph [0032] simply contains statements of an attrition rate difference without any supporting data by which to assess the stated difference. Moreover, the paragraph does not disclose that the stated difference in attrition rate is due to the presence versus absence of siloxane bonds. This significant deficiency is not supplied by the earlier discussed 2 The Rivas patent 5,710,093 discussed in paragraph [0032] of Appellants' Specification is a "division" of the Rivas patent 5,648, 312 applied by the Examiner in the rejection before us. 5 Appeal 2009-2226 Application 11/271,468 paragraph [0026] since it also fails to disclose any connection between siloxane bonds and attrition resistance. For the above stated reasons, the appeal record provided by Appellants fails to show that siloxane bonds are not present in the catalyst support of Rivas. CONCLUSIONS OF LAW Appellants have not shown error in the Examiner's finding that Rivas inherently describes a catalyst support having siloxane bonds. We sustain, therefore, the Examiner's Â§ 102 rejection of all appealed claims as being anticipated by Rivas. ORDER The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(v)(2008). AFFIRMED cam BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN CT 06510 6