Ex Parte Saito et alDownload PDFPatent Trial and Appeal BoardDec 14, 201613410382 (P.T.A.B. Dec. 14, 2016) Copy Citation 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. 13/410,382 03/02/2012 Yoshinori Saito M1071.3143 9006 38485 7590 ARENT FOX LLP 1675 BROADWAY NEW YORK, NY 10019 12/16/2016 EXAMINER SOLIMAN, HAYTHAM ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 12/16/2016 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): patentdocket @ arentfox. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHINORI SAITO and HIDETO SATO Appeal 2015-005613 Application 13/410,382 Technology Center 1700 Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and WESLEY B. DERRICK, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 2, 7, 8, 13, and 14. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is stated to be Murata Manufacturing Co., LTD. (App. Br. 2). Appeal 2015-005613 Application 13/410,382 Claims 1, 7, and 13 are illustrative of the subject matter on appeal (emphasis added): 1. A hydrocarbon gas reforming catalyst to be used for reforming a hydrocarbon source material gas and producing a synthesized gas containing carbon monoxide and hydrogen, containing NiO and SrTiCh as main components, the hydrocarbon gas reforming catalyst comprising: a Ni-SrTi03 solid solution in which 1 to 3 parts by mole ofNi is dissolved in 100 parts by mole of SrTi03. 7. A hydrocarbon gas reforming catalyst to be used for reforming a hydrocarbon source material gas and producing a synthesized gas containing carbon monoxide and hydrogen, containing NiO and SrZr03 as main components, the hydrocarbon gas reforming catalyst comprising: a Ni-SrZr03 solid solution in which 1 to 2 parts by mole ofNi is dissolved in 100 parts by mole of SrZr03. 13. A hydrocarbon gas reforming catalyst to be used for reforming a hydrocarbon source material gas and producing a synthesized gas containing carbon monoxide and hydrogen, containing NiO, SrTiO^, and SrZr03 as main components, the hydrocarbon gas reforming catalyst comprising: a Ni-SrTi03 solid solution in which Ni is dissolved in SrTi03 and a Ni- SrZr03 solid solution in which Ni is dissolved in SrZr03. The Examiner maintains the following rejections under 35 U.S.C. § 103(a): Claims 1 and 2 as unpatentable over Saito (WO 2008/084785 Al, pub. July 17, 2008, as machine translated (Final Action 2, Ans. 2)); and Claims 7, 8, 13, and 14 as unpatentable over Saito with Moreira et al. (Photoluminescent behavior of SrZrOfSrTiOs multilayer thin fdms, 473 Chemical Physics Letters 293—298 (2009)) (“Moreira”). 2 Appeal 2015-005613 Application 13/410,382 ANALYSIS We have reviewed each of Appellants’ arguments for patentability. We determine that Appellants have not shown error in the Examiner’s rejections of the claims on appeal. We affirm for essentially the reasons set forth by the Examiner in the Final Action and the Answer. We add the following primarily for emphasis. It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). All three independent claims call for a “solid solution” which the Appellants contend is not taught in Saito, since Saito states the catalyst is a “mixture” of ATiCF (where A may be Ca, Sr, or Ba) and NiO (App. Br. 6). The Examiner’s position is that a solid solution would have been formed in Saito, predicted on the similarity of Saito’s and Appellants’ process used to make and use the catalyst (Ans. 6, 7). Claims 1 and 7 require an explicit amount of moles of Ni is dissolved in 100 parts per mole of SrTiCf or SrZrCF, respectively. The Examiner determined that the amount of Ni would have been 6.2 parts of Ni to every 100 parts of SrTiCE in Saito2, and that this is “‘close enough’” to the claimed 2 The Examiner’s calculation apparently assumes all of the NiO will be converted to Ni, while Saito generally states “at least part of’ the NiO is 3 Appeal 2015-005613 Application 13/410,382 range to expect similar properties (Final Action 3). Appellants contend that the Examiner’s calculation that Saito will have more than double the claimed amount for claims 1 and 7 is not “close enough” to expect a similar compound, contrary to the Examiner’s position (App. Br. 10; Final Action 3; Ans. 3, 9). The Examiner’s calculation apparently assumes all of the NiO will be converted to Ni, while Saito generally states “at least part of’ the NiO is reduced (e.g., Saito ]Hf 56, 84). Thus, Saito actually encompasses a range of “at least some” to an upper limit of 6.2, and such a range overlaps the claimed amount of Ni. Thus, Appellants have not shown that the claimed amount(s) in claims 1 and 7 would not have reasonably been encompassed and rendered obvious by Saito. Furthermore, as pointed out by the Examiner, Saito uses the same amount of NiO in the initial manufacturing step of its catalyst as does Appellants (compare Spec. 1 56 to Saito 153 each describing that 2 percent by weight NiO is used with a 1 to 1 molar ratio of ACO3 with Ti02; e.g., Final Action 6). Claim 13 does not require any explicit amount of Ni in each of the recited catalysts, such that even a trace amount of Ni dissolved therein would satisfy the claim. As the Examiner points out, none of the independent claims preclude the presence of significant amounts of NiO in the catalyst (e.g., Ans. 7, 8). Appellants’ arguments that Moreira may not be relied upon to show obviousness of a mixture of Ni-SrZr03 with Ni-SrTi03 is unpersuasive (App. Br. 12). One of ordinary skill in that art would have readily inferred from Moreira that such a mixture would have been likely useful for catalytic reduced (e.g., Saito Tflf 56, 84). Thus, Saito reasonably discloses Ni in a range of “at least some” to an amount of not greater than upper limit of 6.2. 4 Appeal 2015-005613 Application 13/410,382 applications (Ans. 10). “[A] reasonable expectation of success, not absolute predictability” supports a conclusion of obviousness. In reLongi, 759 F.2d 887, 897 (Fed. Cir. 1985). Appellants’ arguments that the comparative examples E to G in the Specification are “similar” to Saito’s catalysts and thus evince that Saito’s catalysts are not “solid solutions” are unavailing (App. Br. 11; Reply Br. 3; Spec. 131—133). Appellants have de facto admitted that catalysts E to G are not the same as Saito’s. Furthermore, claims 1, 7 and 13 do not preclude mixtures of NiO with a solid solution catalyst, and also do not preclude trace amounts of solid solution catalysts in a mixture with NiO and other components. Accordingly, in light of the similarities in processing and the fact that Saito states that at least some of the NiO is reduced to Ni3, the burden has properly shifted to Appellants to show that there is no Ni dissolved in the catalyst for claim 13, or less than the amounts claimed in claims 1 and 7, under the processing conditions of Saito, including its reduction step. It is not apparent on this record why the reduction step taking place as part of a reforming reaction in Saito (claim 1) or the Saito/Moreira combination (claims 7 and 13) renders a different product in its reforming reaction than if 3 Compare, e.g., Appellants Specification || 56—59 with Saito’s Tflf 53—56, 79—81. The Examiner’s position that it is Appellants burden to show that the 100 degree difference in firing (1000-C in Saito versus 1100-C in Appellants’ Spec. 1 56), or any reduction step differences, results in a product that contains no solid solution is reasonable. 5 Appeal 2015-005613 Application 13/410,382 the reduction step takes place as described in Appellants’ Specification (e.g., App. Br. 9; Reply Br. 2).4 On this record, the burden shifts to Appellants to provide some rationale or evidence why the resulting products of Saito (modified to include SrZr03 as suggested by Moreira) would not have some solid solution formed so as to render the claimed amounts obvious. Ans. 6, 7; see also In re Spada, 911 F.2d at 708; In re Best, 562 F.2d at 1255. Appellants have not persuasively presented facts or reasons to convince us that the Examiner failed to establish a prima facie case of obviousness. Accordingly, we sustain the § 103 rejections. 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. § 1.136(a)(1). AFFIRMED 4 Appellants are in the best position to provide such evidence, since Saito shares a common joint inventor and assignee. 6 Copy with citationCopy as parenthetical citation