Ex Parte Quinones

Patent Trial and Appeal Board

Feb 26, 2018

13071864 (P.T.A.B. Feb. 26, 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.
13/071,864 03/25/2011 Augusto Rodolfo Quinones 110020 4850
9961 7590
Beck & Thomas, P.C.
SUITE 100
1575 McFarland road
PITTSBURGH, PA 15216-1808
EXAMINER
SMITH, JENNIFER A
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
beckthomas_docketing @ cardinal-ip. com
docket @ beckthomas .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AUGUSTO RODOLFO QUINONES
Appeal 2016-006235
Application 13/071,8641
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
maintained rejection of claims 40^14, 46, and 47.2 An oral hearing was held
on February 15, 2018. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 Appellant identifies the real parties in interest as Augusto Rodolfo
Quinones, Integrated & Proven Catalyst Technologies Corporation, and
Quanta Technologies, LLC. Appeal Br. 1.
2 While Appellant does not identify claim 46 as appealed, “[a]n appeal,
when taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.” 37 C.F.R. § 41.31(c).
Appeal 2016-006235
Application 13/071,864
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to composite
catalyst composition having particle sizes of components adjusted to
improve the catalyst functionality for specific reactions. Specification filed
March 25, 2011 (“Spec.”), Abstract.
Independent claims 40 and 42 are representative.
40. A composite catalyst for use in fluid catalytic cracking
having a particular size distribution formed by blending at least
two components with different compositions and different
particle size distributions.
42. A composite catalyst composition fluid catalytic that is
dependent on a particle size wherein no more than 5% of
particles in the composite are larger than 110 microns and no
more than 5% of particles in the composite are smaller than 20
microns.
Appeal Brief filed November 23, 2015 (“Appeal Br.”), 8.
THE REJECTIONS
Claim 46 stands rejected under 35 U.S.C. § 112, second paragraph for
indefmiteness.
Claims 40, 41, 43, 44, and 46 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Habib.3
Claim 42 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Habib.
Claims 40 and 47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Macedo.4
3 Habib, Jr. et al., US 2011/0224068 Al, published September 15, 2011.
4 Macedo, US 2002/0036157 Al, published March 28, 2002.
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Application 13/071,864
DISCUSSION5
We have reviewed the maintained grounds of rejection set forth by the
Examiner, Appellant’s arguments and proffered evidence, and the
Examiner’s response. On this record, we summarily affirm the
indefiniteness rejection of claim 46, reverse the anticipation rejection of
claims 40, 41, 43, 44, and 46, reverse the obviousness rejection of claim 42
over Habib, and summarily affirm the obviousness rejection of claims 40
and 47 over Macedo.
We add the following.
Indefiniteness
The Examiner finds claim 46 is indefinite because there is insufficient
antecedent basis for ‘“the composite catalyst of claim 45’” because there is
no pending claim 45. Final Act. 2; Ans. 2; Amendment dated March 20,
2015, 5 (canceling claim 45).
Appellant does not contest the rejection. See generally Appeal Br.
In the absence of any argument, we are unpersuaded of reversible
error and, therefore, we summarily affirm the indefmiteness rejection of
claim 46.
Anticipation
The Examiner finds claims 40, 41, 43, 44, and 46 are anticipated by
Habib. Examiner finds Habib teaches “a preferable particle size
distribution” and finds Habib’s Example 3 discloses a “composition . . .
5 In this discussion, we refer to the Specification, the Amendment dated
March 20, 2015 (“Amendment”), the Final Office Action dated May 7, 2015
(Final Act.”), the Appeal Brief, the Examiner’s Answer dated April 5, 2016
(“Ans.”), and the Reply Brief filed June 5, 2016 (“Reply Br.”).
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Application 13/071,864
formed by blending of two or more components with different compositions
and different particle[] size distributions.” Ans. 2-3 (citing 96, 136-142
(Example 3)). The Examiner determines that the steps of blending the two
components together are product-by-process limitations that do not limit the
product “to the manipulations of the recited steps, [but] only [to] the
structure implied by the steps.” Final Act. 3; Ans. 3, 6. The Examiner relies
on proffered reasoning that “[t]he percent of the components that pass
through screens [in Example 3] does not necessarily lead to and is unlikely
to result in identical particle size distributions in this range [between 44 and
125 microns].” Ans. 6.
Appellant argues, inter alia, that Habib ^ 96 is silent as to
“components with different particle size” (Appeal Br. 2-3) and that
“Example 3 uses different components but those components have the same
particle sizes between 44 and 125 [microns]” (id at 5). Appellant correctly
notes that while “claim 40 is a product by process claim, it requires that the
product at the end of the process have [sic, has] two blended components
with two different size distributions.” Reply Br. 2.6
On this record, the Examiner has failed to establish a sufficient factual
basis for Habib disclosing a mixture of components where the components
have differing particle size distributions. The reasoning that the screening
process in Habib’s Example 3 “does not necessarily lead to and is unlikely to
result in identical particle size distributions” (Ans. 6), absent more, is
insufficient to support a prima facie case of anticipation of independent
claim 40. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The
6 The Reply Brief lacks page numbering; we refer to the pages by number
sequentially from the first page.
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Application 13/071,864
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not. . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”); In re
Sporck, 301 F.2d 686, 690 (CCPA 1962); see also In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden ... of
presenting a prima facie case of unpatentability.”).
Accordingly, we reverse the Examiner’s finding of anticipation of
claims 40, 41, 43, 44, and 46 by Habib.
Obviousness over Habib
As in the anticipation rejection, the Examiner relies on Habib for the
notion that it teaches a preferred particle size. Ans. 4 (citing Habib ^ 96).
The Examiner further reasons that “the hydrocarbon process is [thus]
considered dependent on this particle size.” Id. The Examiner also relies on
Habib as disclosing preferred particle sizes of “20-150 microns” or that
“obtained within mesh screens from 44-125 microns” and finds “[tjhese
values lie inside/overlap with Applicants [sic] claimed particle sizes.” Id.
(citing Habib ^ 93, Example 3). The Examiner concludes there is a prima
facie case grounded on the overlap. Id.
Appellant relies on the inventor’s § 1.131 declaration dated March 12,
2015 (“Decl.”) to establish prior invention. Appeal Br. 5-7; Reply Br. 2-3.
The declaration identifies the material from which particles were removed to
meet the claim limitations as to particle size to be a “composite catalyst
composition for use in fluid catalytic cracking” (Decl. 2), and is relied on as
“showing] unequivocally possession of a composite catalyst wherein no
more than 5% of the particles are larger than 110 and no more than 5% of
the particles are less than 20 [microns]” (Appeal Br. 6); see also Reply Br.
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Application 13/071,864
2-3. Counsel for Appellant similarly contended during the oral hearing that
the material discussed in the declaration was, and was identified in the
declaration as, a catalyst according to claim 42.
In light of the declarant’s testimony, the proffered corroborating
evidence, and the unambiguous averments of record, the Examiner erred
reversibly in finding the evidence insufficient to establish prior invention.
While vague and general statements are insufficient, the Examiner fails to
establish how the declaration stating the material is “a composite catalyst
composition for use in fluid catalytic cracking” (Decl. 2) fails to “set forth a
composite catalyst composition” (Ans. 7).
Accordingly, we reverse the rejection of claim 42 for obviousness
over Habib.
Obviousness over Macedo
The Examiner rejections claims 40 and 47 as unpatentable for
obviousness over Macedo. Ans. 5; Final Act. 6-7. The Examiner relies on
Macedo’s disclosure of a composition catalyst composition for use in a fluid
catalytic cracking process, which catalyst composition is formed by mixing
an alumina and zeolite. Final Act. 6-7 (citing Macedo 2, 6, 26-27).
Appellant fails to contest the rejection in the Appeal Brief {see
generally Appeal Br.), only raising an argument against the rejection for the
first time in the Reply Brief (Reply Br. 3—4).
We, accordingly, deem the arguments waived as there is no good
reason offered why they could not have been raised earlier in the Appeal
Brief. 37 C.F.R. § 41.41(b)(2); cf McBride v. Merrell Dow and Pharms.,
Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted)
(“Considering an argument advanced for the first time in a reply brief... is
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Application 13/071,864
not only unfair to an appellee but also entails the risk of an improvident or
ill-advised opinion on the legal issues tendered.”).
Accordingly, in the absence of any argument properly before us, we
are unpersuaded of reversible error in the Examiner’s rejection of claims 40
and 47 for obviousness over Macedo.
DECISION
The Examiner’s rejection under 35 U.S.C. § 112 of claim 46 is
AFFIRMED.
The Examiner’s rejections under 35 U.S.C. § 102(e) of claims 40, 41,
43, 44, and 46 and of claim 42 under 35 U.S.C. § 103(a) over Habib are
REVERSED.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 40 and
47 under 35 U.S.C. § 103(a) over Macedo 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)(l)(iv).
AFFIRMED-IN-PART
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