Ex Parte Quesada Perez et alDownload PDFPatent Trial and Appeal BoardSep 6, 201311119015 (P.T.A.B. Sep. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/119,015 04/29/2005 Andres M. Quesada Perez 01-688-2 7567 34704 7590 09/09/2013 BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 EXAMINER BRUNSMAN, DAVID M ART UNIT PAPER NUMBER 1732 MAIL DATE DELIVERY MODE 09/09/2013 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 ANDRES M. QUESADA PEREZ and GERARDO VITALE-ROJAS ____________ Appeal 2012-006593 Application 11/119,015 Technology Center 1700 ____________ Before CHUNG K. PAK, GEORGE C. BEST, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge DECISION ON APPEAL The named inventors (hereinafter “Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 4, 5, and 7-9, all of the claims pending in the above identified application.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). 1 Appellants identify the real party in interest as “Intevep, S.A.” (See Appeal Brief filed August 30, 2011 (“App. Br.”) at 2.) 2 See App. Br. 7. Appeal 2012-006593 Application 11/119,015 2 STATEMENT OF THE CASE The subject matter on appeal is directed to “a new family of crystalline m[e]taloaluminosilicate materials of offretite (OFF) topology (see Spec. [0033]). Details of the appealed subject matter are recited in illustrative claims 1, 2, 4, and 8, which are reproduced below from the “Claims Appendix” in the Appeal Brief: 1. An offretite metalloalluminosilicate complexing agent free composition, comprising an aluminosilicate framework containing iron and a divalent element selected from the group consisting of zinc, nickel and combinations thereof, wherein at least a portion of said metal is incorporated into said framework, and wherein said portion is at least about 0.5% wt. with respect to said composition, wherein said composition has a molar relationship as follows: SiO2: mAl2O3: nFe2O3: oZO, wherein Z is the divalent element; m is between about 0.02 and about 0.5; n is between 0.01 and about 0.5; o is between 0 and about 0.5; and n+o>0. 2. The composition of claim 1, wherein said portion is not ion exchangeable. 4. The composition of claim 1, wherein the composition has an X-ray diffraction pattern substantially as set forth below: App App (See 5, an Skee para 3 EP 4 US eal 2012-0 lication 11 8. is ion ex ions, hyd App. Br. 1 Appellan d 7-9 unde ls4 and the graph, as i 0476901 A 4,892,720 06593 /119,015 The comp changed to rogen pre 2-13 (Cla ts seek re r 35 U.S.C rejection ndefinite a 2, publish , issued on osition of include a cursor ion ims App’x view of th . § 103(a of claim 4 s set forth ed on Ma January 9 3 claim 1, w t least one s and com )). e Examine ) as unpate under 35 in the Exa rch 25, 19 , 1990. herein the of metal i binations t r’s rejectio ntable ove U.S.C. § 1 miner’s A 92. composit ons, hydro hereof. n of claim r Araya3 i 12, second nswer ma ion gen s 1, 2, 4, n view of iled Appeal 2012-006593 Application 11/119,015 4 August 30, 2011 (“Ans.”). (See App. Br. 7 and Reply Brief filed January 9, 2012 (“Reply Br.”) at 3.) DISCUSSION Findings of Fact The following enumerated findings are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. Araya teaches an offretite zeolite having framework atoms replaced by zinc. The zinc atoms are incorporated into the framework and therefore are not exchangeable. In the products of Example 3, the values for the variables Z, m, n, and o in the appealed claims are Zn, 0.17-0.18, 0, and 0.004-0.009. Ans. 4 (citing Araya, Example 3, p. 12, ll. 45-49). The products of Example 3 include no structure directing agent or “complexing agent.” Ans. 5 (citing Aray, p. 8, ll. 36-51). Araya also teaches that iron may be incorporated into the framework. 2. Skeels teaches the addition of 0.01-0.49 molar fraction of iron in the framework of a zeolite, including offretite, improves the thermal stability of the zeolite. Ans. 5 (citing Skeels, col. 5, ll. 51-52). The 35 U.S.C. § 112, ¶ 2 Rejection The Examiner determines that claim 4 is indefinite because no standard is set forth by which to judge the relative terms “very strong, strong, middle, weak, and very weak.” Ans. 7. Regarding the use by others of similar relative terms to describe the intensity of X-ray diffraction pattern peaks of zeolites, the Examiner finds U.S. Patent 3,702,886 relevant because it uses such terminology in the claims, but concludes “[w]hat might have Appeal 2012-006593 Application 11/119,015 5 been sufficient to support a claim in 1972 may very well be insufficient to support a claim 38 years later especially in view of the explosion of zeolite types and their characteristic x-ray diffraction patterns discovered since then.” Ans. 7-8. Appellants contend that one skilled in the art would understand that the terms recited in claim 4 are relative to each other. “The evidentiary materials establish that a person skilled in the art readily understands the relative peak intensities used in claim 4. The exact relative strength of signals is not needed by the person skilled in the art in order to determine what is shown by the signals. A person skilled in the art could readily determine whether a particular composition had or did not have peaks of relative intensities as called for in claim 4.” App. Br. at 10. The dispositive issue for us to decide is: Would one of ordinary skill in the art at the time of the invention have understood the relative terms “very strong, strong, middle, weak, and very weak” for describing the relative peak intensity in the offretite metalloalluminosilicate’s x-ray diffraction pattern? On this record, we answer this question in the affirmative. The test for definiteness under 35 U.S.C. § 112, ¶ 2, is not whether the terms are precise, but, rather, whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The Examiner’s indefiniteness rejection is based on the lack of a standard on which to judge the value at which the relative terms change from, e.g. “weak” to “very weak.” See Ans. 6. However, Appellants assert that one skilled in the art would understand that “very strong is larger than strong, which is larger than Appeal 2012-006593 Application 11/119,015 6 middle and so on.” App. Br. 10. Appellants also provide evidence that the use of such relative terms to identify the peak intensities at different locations (different spacing distances) without violating indefiniteness was known at the time of the invention. See id. at 15, Evidence Appendix. We find Appellants’ argument persuasive and supported by the record. “Definiteness problems often arise when words of degree are used in a claim. That some claim language may not be precise, however, does not automatically render a claim invalid. When a word of degree is used the [factfinder] must determine whether the patent's specification provides some standard for measuring that degree. The [factfinder] must decide, that is, whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification.” Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (affirming the trial court’s determination that one skilled in the art would know the limitations of the claims because the specification clearly sets forth a standard for measuring the degree used in the claim language). Here, contrary to the Examiner’s contention, both claim 4 and the Specification provide a standard by which the relative expressions “very strong (VS),” “strong (S),” “middle (M),” “weak (W),” and “very weak (VW)” are measured. In particular, such expressions, according to claim 4 and the Specification, are measured relative to one another in the context of the intensity of peaks at the specifically identified interplanar spacing distances. For example, peak intensities at specific spacing distances, which are said to be strong, must be higher than peak intensities at other specific spacing distances which are said to be middle, weak, or very weak, but lower than peak intensities at spacing distances which are said to be very strong. In other words, the relative expressions used in claim 4 set forth Appeal 2012-006593 Application 11/119,015 7 clear boundaries and are not indefinite. Indeed, the prior art evidence relied upon by Appellants further supports the definiteness of using such relative terms to define peak intensities relative to one another at different specific spacing distances. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“[T]he definiteness of the language employed must be analyzed—not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.”). Thus, for the reasons provided above and in Appellants’ brief (App. Br. 10-11), we reverse the rejection of claim 4 under 35 U.S.C. § 112, ¶ 2. The 35 U.S.C. § 103 Rejection Based on the above findings of fact, the Examiner finds that “[s]ince the prior art discloses a composition of the same structure and composition as that of the instant invention, it must likewise exhibit a similar x-ray diffraction pattern.” Ans. 5. The Examiner further finds “[i]t would have been obvious to one of ordinary skill in the art to modify Example 3 of Araya by incorporating iron into the framework in place of some of the aluminum in order to improve its thermal stability.” Id. at 5-6. Appellants concede that Araya teaches an offretite composition and putting zinc “in the framework” and putting iron “in the ‘framework structure.’” App. Br. 8. Appellants also concede that Skeels adds 0.01-0.49 molar fraction of iron into the framework of a zeolite in similar fashion to Araya. Id. Appellants contend that the Examiner erred in finding claim 1 obvious in view of Araya and Skeels because the method by which the metal is incorporated into the framework is different from the method used by Appeal 2012-006593 Application 11/119,015 8 Appellants. App. Br. 8 (“Araya . . . accomplishes this with ammonium and ion exchange, which is different from the direct synthesis of the present invention which results in the claimed catalyst composition.”); id. (“Skeels does this . . . through extraction of aluminum and isomorphic replacement through a post synthesis treatment. The methods of preparation therefore remain quite different.”); id. at 9 (“[i]ncorporating the metal into the structure is different from ion exchange into the framework as discussed in Araya and Skeels.”). Appellants rely on this same argument based on the method of preparation for claims 2, 4, and 8 as well. Id. The Examiner responds to Appellants’ arguments that “once the metal is in the framework, it is indistinguishable from a metal atom put there by any other means” and “it would be expected to have the same properties, including its degree of ion exchangeability.” Ans. 9. The Examiner finds that there is “no evidence of record demonstrating an actual difference in the composition between a[n] offretite metalloaluminosilicate including framework iron from the initial synthesis and one having iron incorporated into the framework by isomorphous substitution.” Id. The Examiner finds that Araya indicates the same product is formed. Id. (citing Araya, p. 5, ll. 39-41). With respect to claim 4, the Examiner finds there is no evidence that the X-ray diffraction pattern is not the same for materials made through ion exchange. Id. With respect to claim 8, the Examiner finds Araya uses an ion exchange process, separate from isomorphous substitution, . . . to add ammonium and metal ions.” Id. (citing Araya, p. 4, ll. 14-16). The dispositive issue for the prior art rejections is: Would Araya and Skeels, individually or in combination, have taught or suggested an aluminosilicate framework containing iron and zinc as recited in the claims Appeal 2012-006593 Application 11/119,015 9 within the meaning of 35 U.S.C. § 103? On this record, we answer this question in the affirmative. In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to the appellant. Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. Id. The Examiner has set forth a prima facie case of obviousness over the combination of Araya and Skeels, including a reasonable basis for combining the quantity of iron disclosed in Skeels with Araya’s composition for the purpose of improving the thermal stability of the zeolite. See Ans. 4- 6. Appellants do not dispute that the claimed metal ions are in the framework of the offretite compositions of Araya and Skeels as found by the Examiner. Rather, Appellants assert that the method in which the framework is prepared makes the composition of Araya and/or Skeels different from the framework claimed. See App. Br. 8. However, Appellants’ arguments are unpersuasive given the lack of evidence in support thereof. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). On this record, Appellants do not direct us to any objective evidence demonstrating that the offretite metalloalluminosilicate complexing agent free composition suggested Araya and Skeels is structurally or compositionally different from those embraced by the claims on appeal. Nor do Appellants direct us to any objective evidence showing unexpected results. Appeal 2012-006593 Application 11/119,015 10 Accordingly, based on the totality of record, including due consideration of Appellants’ arguments, and for the reasons stated above and in the Examiner’s Answer, including the Response to Argument section, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of claims 1, 2, 4, 5, and 7-9 within the meaning of 35 U.S.C. § 103(a). SUMMARY In view of the foregoing, the rejection of claim 4 under 35 U.S.C. § 112, second paragraph, is reversed and the rejection of claims 1, 2, 4, 5, and 7-9 under 35 U.S.C. § 103(a) 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). AFFIRMED tc Copy with citationCopy as parenthetical citation