Ex Parte Mitchell et al

Patent Trial and Appeal Board

Dec 19, 2016

12507940 (P.T.A.B. Dec. 19, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/507,940 07/23/2009 Robert L. Mitchell SR. 10782-0034 7015
29052 7590 12/21/2016
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EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT L. MITCHELL, SR., LEE M. MITCHELL,
JOSEPH H. KELLER, and JACK H. L'AMOREAUX
Appeal 2015-006159
Application 12/507,940
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Applied Technology Limited
Partnership. (Appeal Brief, dated December 31, 2014 (“App. Br.”), 2.)
2 Final Rejection dated September 26, 2014 (“Final Act.”).
Appeal 2015-006159
Application 12/507,940
CLAIMED SUBJECT MATTER
The claims seek to address the need “for a carbon monolith catalyst,
and a process for making the same, having attrition resistance, predictable
pressure drop, high selectivity, high activity, and scalability for commercial
economy and efficiency.” (Spec. 4:12—14.)3 The claims are directed to “an
activated carbon monolith catalyst comprising a finished self-supporting
activated carbon monolith having at least one passage therethrough, and
comprising a supporting matrix and substantially discontinuous activated
carbon particles dispersed throughout the supporting matrix, and at least one
catalyst precursor supported on the finished self-supporting activated carbon
monolith.” {Id. at 7:20-23.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for catalytic chemical reaction comprising
contacting at least one reactant with an activated carbon monolith
catalyst comprising (a) a porous finished activated carbon
monolith having walls defining at least one passage therethrough
and comprising a supporting ceramic matrix and substantially
discontinuous activated carbon particles dispersed throughout
the supporting ceramic matrix, the walls having an exterior
surface, depth, and passageways into the depth of the walls, and
(b) at least one catalyst precursor on said porous finished
activated carbon monolith, the at least one catalyst precursor
applied to the porous finished activated carbon monolith and
disposed on the exterior surface of the walls and within the
passageways into the depth of the monolith walls of the porous
finished activated carbon monolith.
3 Application 12/507,940, Activated Carbon Monolith Catalyst, Methods for
Making Same, and Uses Thereof filed July 23, 2009. We refer to the
“’940 Specification,” which we cite as “Spec.”
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Application 12/507,940
(Claim Appendix, App. Br. 29.)
REFERENCES
Park US 5,914,294 June 22, 1999
Sekine US 5,997,829 Dec. 7, 1999
Gadkaree US 6,136,749 Oct. 24,2000
REJECTIONS
Independent claim 1 and its dependent claims 2—20 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Park in view of Sekine and
optionally Gadkaree. (Final Act. 2—3.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 74
Appellants do not dispute the prior art teachings but argue that a
skilled artisan would not have combined Park and Sekine because “Sekine
teaches away from using particles that are catalytically active” and thus the
proposed combination would result in the monolith taught in Park “not
be[ing] capable of catalyzing a chemical reaction.” (App. Br. 9.)
4 Appellants do not present separate arguments for dependent claims 2—20.
These claims therefore stand or fall with claim 1. (See App. Br. 4—27.)
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Application 12/507,940
Appellants submit a Declaration by Dr. Robert J. Gulotty Jr. in
support of the teaching away argument.5 Citing Sekine which discloses that
the catalyst “may preferably have a size of from 0.1 to 10 pm,” Dr. Gulotty
states that because “[ajctive catalytic particles have an average diameter of
less than 0.1 pm,” “Sekine’s material cannot be used to catalyze a chemical
reaction, such as those described in the Applicants’ specification.” (Gulotty
Deck 1-15.) While Dr. Gulotty asserts, without factual support, that
“problems [related to dispersion] are avoided only if particles with an
average diameter of greater than 0.1 pm are used,” {id.), Dr. Gulotty does
not explain why such potential issues would render the catalyst inactive. Dr.
Gulotty also does not explain why his opinion is consistent with Sekine’s
express disclosure that even for “a size larger than 10 pm,” the catalyst may
remain active with lower reactivity. (See Sekine 4:16—19 (cited at Gulotty
Deck 1.1 5); see also Reply 5.)6
“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from . . . alternatives because such disclosure
does not criticize, discredit, or otherwise discourage the solution claimed.”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Dr. Gulotty has not
identified factual error in the Examiner’s finding that Sekine’s disclosure
teaches or suggests a “catalyst precursor” as recited in claim 1. {See, e.g.,
id.; see also App. Br. 10.)
Furthermore, contrary to Appellants’ assertion that “claim 1 . . .
requires the presence of “at least one catalyst precursor,” i.e., an active
5 Declaration by Dr. Robert J. Gulotty Jr. dated May 25, 2012. (“Gulotty
Deck I.”)
6 Reply Brief dated June 3, 2015 (“Reply”).
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Application 12/507,940
catalyst species” (App. Br. 10), the ’940 Specification provides that “[t]he
term ‘catalyst precursor’ means a material that is capable of creating a
catalytically active site on a substrate material. A catalyst precursor may or
may not undergo a change in becoming catalytically active.” (Spec. 8:6—8.)
Given this definition which is not limited to “an active catalyst species,” (see
App. Br. 10) and given the fact that Appellants have not shown that Sekine’s
disclosure of certain preferable catalyst sizes “criticize[s], discredits], or
otherwise discourage[s] the solution claimed” — that is, having “at least one
catalyst precursor” as recited in claim 1, Fulton, 391 F.3d at 1201, we find
the evidence in this record insufficient to identify reversible error in the
Examiner’s fact findings here.7
Appellants next argue that Sekine teaches away from the proposed
combination because it “does not teach or suggest the application of a metal,
either individually or as part of a three-component material, to a ‘finished
self-supporting activated carbon monolith,’ as required by the Appellants’
claims.” (App. Br. 11; see also Reply 3.) Appellants, however, do not
provide evidence specifying why Sekine “criticize[s], discredits], or
otherwise discourage[s] the solution claimed.” Fulton, 391 F.3d at 1201.
The assertion that Sekine is silent with regard to the Examiner’s proposed
combination is insufficient to support Appellants’ argument. Syntex (U.S.A.)
LLCv. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
7 Because Suh (US 7,691,773 B2, Apr. 6, 2010) does not form the basis of
the obviousness rejection at issue here, we decline to address it.
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Application 12/507,940
claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
In this case, the Examiner reasons that “one skilled in the art in
possession of the Park monolith would easily be able to add a catalyst
thereto by techniques notoriously well known in the art [as shown by
Gadkaree], and Sekine provides the motivation to do so.” (Ans. 3; see also
Final Act. 2 (finding that “[ujsing the catalyst of Sekine in the system of
Park is thus an obvious expedient to improve catalytic activity”).)8
Appellants have not identified reversible error in the Examiner’s “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
Appellants next argue that “a person of ordinary skill in the art would
not have expected that a catalytically effective amount of Sekine's material
could be applied to Park’s monolith.” (App. Br. 12.) Appellants submit a
Declaration from Dr. Frank Herkes9 stating that “[d]ue to the problems that
are expected to occur as a result of Park's production method, it is surprising
that the Applicants have demonstrated the adsorption of a catalytically
effective amount of a metal precursor to Park’s support.” (Herkes Decl. I.
14; see also App. Br. 13.)
From the outset, the “catalyst precursor” recited in claim 1 is not
limited to “a metal precursor” which is the subject of Dr. Herkes’
Declaration. Neither Dr. Herkes nor Appellants point to the ’940
8 Examiner’s Answer dated April 23, 2015 (“Ans.”).
9 Declaration by Dr. Frank Herkes dated August 24, 2011 (“Herkes Decl.
I.”).
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Specification to support the notion that the recited “catalyst precursor” is
limited to “a metal precursor.” Claim 1 also does not recite “a catalytically
effective amount of a metal precursor” as stated in Dr. Herkes’ Declaration
14. Neither Dr. Herkes nor Appellants point us to the ’940 Specification for
support of the phrase “a catalytically effective amount of a metal precursor.”
Moreover, claim 1 recites a method “for catalytic chemical reaction
comprising contacting at least one reactant with an activated carbon
monolith comprising (a) a porous finished activated carbon monolith . . . and
(b) at least one catalyst precursor . . . .” Claim 1 does not recite a method to
produce an activated carbon monolith. Dr. Herkes’ opinion, related to
whether “Park’s production method” (Herkes Decl. 1.14) would result in a
carbon monolith, is not directed to limitations recited in claim 1 and cannot
support the patentability of the claim.
Unlike Dr. Herkes’ Declaration, claim 1 also does not recite an
“adsorption” of the precursor. Neither Dr. Herkes nor Appellants point us to
the ’940 Specification for a disclosure of any “adsorption” process. Dr.
Herkes’ statement that “the Applicants have demonstrated the adsorption of.
. . a metal precursor . . .” is without support from the ’940 Specification
(Herkes Decl. 1.14) and no reversible error has been identified in this aspect
of the obviousness analysis here.
Appellants further argue that unexpected results are shown to rebut
any prima facie case of obviousness. (App. Br. 15.) In support of their
arguments, Appellants submit additional statements from Dr. Gulotty and
Dr. Herkes.
“[B]y definition, any superior property must be unexpected to be
considered evidence of non-obviousness. Thus, in order to properly evaluate
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whether a superior property was unexpected, the [fact-finder] should have
considered what properties were expected. Here, Pfizer’s evidence must fail
because the record is devoid of any evidence of what the skilled artisan
would have expected.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371
(Fed. Cir. 2007).
Dr. Gulotty states that unexpected results are present because “the
claimed activated carbon monolith catalysts have activities that are similar to
granular based catalysts, even when the activated carbon monolith catalysts
contain lower precious metal loadings” and also because “the claimed
activated carbon monolith catalysts have significantly lower pressure drop
than comparable granular based catalysts.” (Gulotty Decl. II. 13.)10 Dr.
Gulotty presents examples including “several hydrogenation reactions using
the claimed activated carbon monolith catalysts (ACMC) that contain Ni
(ACMC-Ni) and Ni/Cu (ACMCNi/Cu).” (Id. 17.)
Appellants, however, do not respond to the Examiner’s finding that
the results discussed in Dr. Gulotty’s Declaration II “are not commensurate
in scope to the claims, which are broad and generic” because the claims “do
not require any particular reaction or any particular catalyst.” (Compare
App. Br. 15—19 & Reply with Ans. 3.) Moreover, neither Dr. Gulotty nor
Appellants have pointed us to evidence in the record showing “what the
skilled artisan would have expected” based on claim 1. Pfizer, Inc., 480 at
1371. No reversible error has therefore been identified in the Examiner’s
evaluation of Dr. Gulotty’s Declaration II.
10 Declaration by Dr. Dr. Robert J. Gulotty Jr. dated May 13, 2013.
(“Gulotty Decl. II.”)
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Turning now to Dr. Herkes’ Declaration II11 which states, without
factual evidence, that “[u]sing the same carbon from a slurry or conventional
fixed bed catalyst, however, [the claimed] ACMCs achieve superior results,
which is surprising[.]” (Herkes Decl. II. 13.) Again, neither Dr. Herkes nor
Appellants have pointed us to evidence in the record showing “what the
skilled artisan would have expected” based on claim 1. Pfizer, Inc., 480 at
1371. No reversible error has therefore been identified in the Examiner’s
evaluation of Dr. Herkes’ Declaration II.
“Mere improvement in properties does not always suffice to show
unexpected results. In our view, however, when an applicant demonstrates
substantially improved results . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995)
(emphasis in original). Appellants have not demonstrated substantially
improved results that rise to the level of unexpected results. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of
“unexpected results” to be probative evidence of non-obviousness, the
applicant must establish that the difference between the results obtained
through the claimed invention and those of the prior art would not have been
expected by one skilled in the art at the time of invention). The evidence in
the record before us is therefore insufficient to identify reversible error in the
Examiner’s findings here.
Dr. Herkes’ unelaborated statement that the claims solve “a long felt
but unsolved need within the catalyst business” is similarly without factual
11 Declaration by Dr. Frank Herkes dated November 13, 2013 (“Herkes
Decl. II.”).
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support. (Herkes Decl. II. 13; see also App. Br. 18.) Neither Appellants
nor declarants provide any analysis of “long-felt need ... as of the date of an
articulated identified problem and evidence of efforts to solve that problem.”
See Texas Instruments, Inc. v. Int’l Trade Comm., 988 F.2d 1165, 1178 (Fed.
Cir. 1993). Absent sufficient factual evidence, no reversible error has been
identified in the Examiner’s evaluation of secondary non-obviousness
factors. See In re Beattie, 91A F.2d 1309, 1313 (Fed. Cir. 1992) (opinion
evidence in declarations has little value without factual support).
Appellants also argue that the Examiner erred in rejecting the claims
based on the alternative combination of Park, Sekine, and Gadkaree. (App.
Br. 19; Reply 6.) Appellants argue that Gadkaree teaches away from the
proposed combination because it requires sulfur which would “ruin[]” active
catalyst materials. (App. Br. 21.) Appellants present an article by “J.K.
Dunleavy” entitled “Sulfur as a Catalyst Poison” (“Dunleavy article”) in
support of the argument. (Id. at 22.) Dr. Gulotty likewise states that
“[ajctive metal catalysts . . . cannot be supported by Gadkaree’s apparatus,
because Gadkaree’s apparatus contains sulfur.” (Gulotty Decl. 1.13.)
Claim 1, an open-ended claim, does not preclude the presence of
sulfur. To the extent that the Dunleavy article describes that sulfur removal
from “[pjrecious metal catalysts . . . [in] many hydrocarbon processing
application” is “essential to achieve the highest catalyst activity/selectivity,
and an acceptable cycle length,” (Dunleavy article 110), neither Appellants
nor Dr. Gulotty explains why a skilled artisan would have been dissuaded
from combining Gadkaree with the other references to arrive at claim 1
which recites a “catalyst precursor” without reciting any particular catalyst
activity, selectivity, or cycle length or any particular application. Neither
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Appellants nor Dr. Gulotty respond to the Examiner’s finding that the
Dunleavy article is “limited only to platinum group metals in hydro [carbon]
processing neither of which the claims are limited to” and no reversible error
has been identified in the Examiner’s finding here. (Compare Ans. 3 with
Reply 7.)12
Appellants’ assertion that “Gadkaree's invention will not serve its
intended purpose of removing mercury if the sulfur is removed from the
devices” (App. Br. 24; see Reply 6) does not show factual evidence
supporting that the references, when combined, “would produce a seemingly
inoperative device.” In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969).
“An assertion of what seems to follow from common experience is just
attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997).
Appellants next argue that Gadkaree teaches away from “a porous
finished activated carbon monolith having . . . substantially discontinuous
activated carbon particles dispersed . . .” as recited in claim 1 because
“Gadkaree’s invention is a composition that forms a continuous carbon
coating or network that may, in some instances, be used ‘to coat an inorganic
substrate such as a honeycomb.’” (App. Br. 25 (citing Gadkaree 4:36—37))
(emphasis in original). “As a result,” according to Appellants, “Gadkaree
excludes activated carbon particles from the definition of ‘carbon
precursor.’” (App. Br. 25.)
12 Because Miller (US 5,066,628 A, December 19, 1999) does not form the
basis of the obviousness rejection at issue here, we decline to address it.
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Appellants, however, acknowledge that Gadkaree discloses that
“[bjodies made directly from activated carbon are made of discontinuous
carbon . . . (Gadkaree 8:47—49 (cited in App. Br. 26).) Appellants also
acknowledge that an embodiment of using activated carbon particles” is
disclosed in Gadkaree — albeit not as preferred as a carbon precursor. (App.
Br. 26 (citing Gadkaree 2:50-51).) Other than Appellants’ argument,
Appellants do not point to factual evidence showing that Gadkaree
“criticize[s], discredits], or otherwise discourage[s] the solution claimed” in
claim 1. Fulton, 391 F.3d at 1201. “Attorneys’ argument is no substitute for
evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Given that the ’940 Specification provides that “[t]he activated carbon
monolith catalyst of this invention is not limited to use of precursor
materials that must be carbonized to form a carbon catalyst support” which
“can include any activated carbon particles from any source” and that “[t]he
activated carbon monolith catalyst can then be expected to have a
predictable activity and selectivity based on the knowledge available
regarding the particular activated carbon particles used,” Appellants’
argument does not identify reversible error in the Examiner’s findings of the
combined prior art teachings with respect to claim 1.
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DECISION
The Examiner’s rejection of claims 1—20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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