Ex Parte Ostgard et al

Patent Trial and Appeal Board

Oct 6, 2016

12601816 (P.T.A.B. Oct. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/601,816 11124/2009
66991 7590 10/06/2016
LAW OFFICE OF MICHAEL A, SANZO, LLC
15400 CALHOUN DR.
SUITE 125
ROCKVILLE, MD 20855
FIRST NAMED INVENTOR
Daniel Ostgard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7601/21500 1439
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
MAILDATE DELIVERY MODE
10/06/2016 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 DANIEL OSTGARD, MONIKA BERWEILER,
MARKUS GOTTLINGER, STEFFEN LAPORTE, and
MATTHIAS SCHWARZ
Appeal2015-003633
Application 12/601,816
Technology Center 1700
Before CHUNG K. PAK, JAMES C. HOUSEL, and JENNIFER R. GUPTA,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal 1 under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 65-75. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
The subject matter of the appeal relates to activated base metal
catalysts. Spec. 1:1-2. Claim 65, reproduced below, is illustrative of the
claims on appeal.
1 Appellants identify the real party in interest as Evonik Degussa GmbH.
Appeal Brief filed September 3, 2014 ("App. Br."), 2.
2 Final Office Action mailed March 12, 2014 ("Final Act.").
Appeal2015-003633
Application 12/601,816
65. A catalyst comprising a Ni/Al alloy doped with Cu and Fe
wherein:
a) said Ni/ Al alloy doped with Cu and Fe has been activated;
b) Cu and Fe are each present in the activated catalyst at
0.01 wt% to 10 wt%;
c) Al is present in the activated catalyst at 0.05 wt% to
10 wt%.
App. Br. (Claim Appendix) 18.
DISCUSSION
Claims 65-75 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schmidt (US 6,429,337 Bl, issued Aug. 6, 2002) (hereinafter
"Schmidt"). Final Act. 4; see also Examiner's Answer mailed December 2,
2014 ("Ans."), 2.
Appellants argue the claims as a group. We select claim 65, the sole
independent claim on appeal, as representative of the rejected claims, and
the remaining claims on appeal will stand or fall with claim 65. See 37
C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue the Examiner reversibly erred in finding that
Schmidt teaches or suggests catalysts comprising a Ni/ Al alloy doped with
Cu and Fe, as recited in claim 65. App. Br. 10.
Appellants' argument is persuasive of reversible error in the
Examiner's rejection. Column 3, line 45, column 6, line 35, and column 8,
lines 50-60 of Schmidt, which the Examiner relies on as suggesting the use
of both copper and iron as dopants in Schmidt's Ni/ Al alloy base material
(Final Act. 4; Ans. 4), and indeed Schmidt generally, teach using copper as a
base metal, not as a dopant. Accordingly, on this record, we are constrained
to reverse the Examiner's obviousness rejection of claims 65-75.
2
Appeal2015-003633
Application 12/601,816
DECISION
For the above reasons, the Examiner's rejection of claims 65-75 is
reversed.
REVERSED
3