Ex Parte Schlegel

Board of Patent Appeals and Interferences

Sep 26, 2007

09962935 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS SCHLEGEL
____________

Appeal 2007-4099
Application 09/962,935
Technology Center 1700
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Decided: September 26, 2007
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 8 and 19 through 21. Claims
9 through 18, the other claims pending in the above-identified application,
stand withdrawn from consideration by the Examiner as being directed to a
non-elected invention. We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-4099
Application 09/962,935

STATEMENT OF THE CASE
The subject matter on appeal is directed to pellets based on "iron
oxides and/or iron oxyhydroxides having a large specific surface area (50 to
500 m2/g according to BET)…” (Specification 1, ll. 1-3). According to page
8 of the Specification:
To prepare the granules according to the invention, an
aqueous suspension of fine-particle iron oxyhydroxides and/or
iron oxides is first produced according to the prior art. The
water and constituents dissolved within it can be removed
….initially, e.g. by evaporation. A residue is obtained which in
addition to the fine-particle iron oxide and/or hydroxide also
contains the entire salt content. This residue is redispersed in
water after being dried, for which purpose only relatively little
shear force needs to be applied. This suspension is then filtered
and the residue washed until it is substantially free from salts.
The filter cake obtained as residue is a solid to semisolid paste
which generally has a water content of between 10 and 90
wt.%.
This can then be completely or partially dehydrated, and
the material thus obtained can then be comminuted to the
desired shape and/or size. Alternatively the paste or filter cake,
optionally after predrying to achieve a sufficiently solid state,
can undergo shaping followed by (additional) drying until a
pellet state is achieved. [Emphasis added.]
Further details of the appealed subject matter are recited in representative
product-by-process claim 11 reproduced below:

1 Product-by-process claims are claims directed to products defined at least
in part by process limitations. Claim 1 is directed to a unit containing a
pellet which is defined at least in part by a process limitation.

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Application 09/962,935

1. A unit suitable for the through-flow of a fluid medium at
least partially filled with particles agglomerated from fine-particle
iron oxide and/or iron oxyhydroxide which agglomerated particles
were prepared from an aqueous suspension, wherein the fine-particle
iron oxide and/or iron oxyhydroxide displays a particle size of up to
500 nm and a BET surface area of 50 to 500 m2/g.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Benjamin US 5,369,072 Nov. 29, 1994
Klabunde US 6,093,236 Jul. 25, 2000

The Examiner has rejected the claims on appeal as follows:
1. Claims 1 through 4 and 19 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Klabunde (Answer 3).
2. Claims 7, 8, 20, and 21 under 35 U.S.C. § 103(a) as anticipated
by the disclosure of Klabunde (Answer 3).
3. Claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Benjamin and Klabunde (Answer 4-5).
The Appellant appeals from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. §§ 102(b) and 103(a).
The appealed subject matter in the above-identified application is
somewhat similar to those in the Appellant's copending Applications
09/962,887 filed September 25, 2001 (Appeal No. 2007-4098), 09/962,971
filed September 25, 2001 (Appeal No. 2007-4100), and 09/962,972 filed
September 25, 2001 (Appeal No. 2007-4101). Accordingly, we will
consider and decide the propriety of the Examiner’s rejections directed to the
appealed subject matter in the present and copending applications
concurrently.
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Application 09/962,935

PRINCIPLES OF LAW, FACTS, ISSUES and ANALYSES
ANTICIPATION
Under 35 U.S.C. § 102(b), anticipation is established only when a
single prior art reference describes, either expressly or under the principle
of inherency, each and every element of a claimed invention. In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). The law of
anticipation, however, does not require that the prior art reference teach
Appellant's purpose or utility described in the Specification, but only that the
claims on appeal “read on” something disclosed in the reference. See
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983).
Here, the Appellant has not challenged the Examiner’s finding at page
3 of the Answer2 that:
Klabunde discloses a unit suitable for the flow through of
a gas or liquid (see col. 3, lines 19-25), which unit is at
least partially filled with an adsorbent formed from
agglomerated fine particles of iron oxide (col. 2, lines 22-
23) which fine particles have the recited particle size (col.
2, lines 28-30) and BET surface area (col. 6, ll. 5-6)….
Compare Answer 3 with Br. 11-13.

2 The Appellant has not supplied any substantive arguments for the separate
patentability of any specific claims. See Br. 11-13. Therefore, for purposes
of this rejection, we focus our discussion on independent claim 1 alone
pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2004).
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Application 09/962,935

The Appellant only argues (Br. 11-12) that:
Klabunde fails to disclose [its] agglomerated particles
prepared from an aqueous suspension and fails to describe
a method for preparing [its] agglomerated particles of
[iron oxide,] iron hydroxide and/or iron oxyhydroxide
without a powder compacting step.3

The dispositive question is, therefore, whether the claimed process
or method limitations would have rendered the claimed pellet patentably
distinguishable over the pellet taught by Klabunde within the meaning of
35 U.S.C. § 102(b). On this record, we answer this question in the negative.
As stated in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972):
[T]he lack of physical description in a product-by-process
claim makes determination of the patentability of the
claim more difficult, since in spite of the fact that the
claim may recite only process limitations, it is the
patentability of the product claimed and not of the recited
process steps which must be established….when the prior
art discloses a product which reasonably appears to be
either identical with or only slightly different than a
product claimed in a product-by-process claim, a rejection
based alternatively one either section 102 or section 103 of
the statute is eminently fair and acceptable. As a practical
matter, the Patent Office is not equipped to manufacture
products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons
therewith.

3 Contrary to the Appellant's argument, claim 1 on appeal does not preclude
mechanically shaping (e.g., pressing or compacting) wet powder from an
aqueous suspension as is apparent from page 7 of the Appellant's
Specification.

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Consistent with Brown, the Examiner has demonstrated that the pellet taught
by Klabunde “reasonably appears to be either identical with or only slightly
different than” the claimed pellet. As indicated supra, there is no dispute
that Klabunde describes a pellet useful for a fluid medium (inclusive of gas
or liquid), having the claimed ingredient, particle size and BET surface area.
Klabunde also teaches preparing pellets in methods similar to that claimed
(cols. 4-11, Examples 1-3). Klabunde’s Examples 1 and 2 show forming
powder from an aerogel and pressing the powder in a small hydraulic press
at 1000 and 2000 psi to make spherical pellets having a diameter of 12 mm
(col. 4-9). The pellets formed are then activated at 500oC (Klabunde, cols. 6
and 7). Klabunde’s Example 3 also shows forming powder from “hydrating
99.99 % ultrapure metal oxide with excess distilled deionized water, heating
it under a nitrogen flow forming metal hydroxide, removing the excess of
water in the microwave” (col. 9, ll. 58-65). The powder prepared in this
manner, according to Klabunde, is compacted and activated (cols. 10 and 11,
Table 5).
Thus, it is incumbent upon the Appellant to demonstrate that the
claimed pellet prepared from an aqueous suspension is not either identical or
substantially identical to the pellet taught by Klabunde. Rather than
demonstrating the difference between the claimed and prior art pellets, the
Appellant only argues that Klabunde does not teach preparing pellets from
an aqueous suspension (Br. 10). In so doing, the Appellant has failed to
recognize that the claims on appeal are directed to a unit containing an
adsorbent/catalyst pellet, not a process for making the same. In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“ The patentability
of a product does not depend on its method of production….If the product in
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a product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.”). On this record, we find that the Appellant has not
relied on any evidence to rebut the prima facie case of anticipation
established by the Examiner (Br. 9-11)4.
Accordingly, based on the factual findings set forth in the Answer and
above, we are constrained to agree with the Examiner that Klabunde renders
the subject matter defined by claims 1 through 4 and 19 anticipated within
the meaning of 35 U.S.C. § 102(b).
OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g.,
unexpected results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject
matter of a claim would be obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007) quoting In re

4 Even if we must consider the evidence relied upon by the Appellant in
rebutting the Examiner’s § 103 rejection in the context of the Examiner’s
§ 102(b) rejection, we are not convinced that the Appellant has demonstrated
that the pellets encompassed by the claims on appeal are patentably different
from those taught by Klabunde for the factual findings set forth in the
Answer and infra.
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Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006); see
also DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The
motivation need not be found in the references sought to be combined, but
may be found in any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself.”); In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”).
As evidence of obviousness of the subject matter defined by claims 7,
8, 20, and 21 under 35 U.S.C. § 103(a), the Examiner has again relied on the
disclosure of Klabunde. Certain aspects of the relevant disclosures of
Klabunde are discussed above. We find that Klabunde further discloses
obtaining particles having a BET surface area within the range recited in
claim 7 (col. 6, Table 1). We also find that Klabunde teaches employing
iron oxides particles which are inclusive of the iron oxide pigment recited in
claim 8. Compare Klabunde, col. 2, ll. 21-22, with Specification 10-11. We
find that Klabunde teaches that it is desirable to form agglomerated particles
useful for both the liquid and gaseous environment (col. 3, ll. 19-25). Thus,
we concur with the Examiner that it is well within the ambit of one of
ordinary skill in the art to determine optimum abrasion values in liquid
(water), such as those recited in claim 20, for agglomerated particles having
the claimed BET surface areas and iron oxides (inclusive of iron oxide
pigment). In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37
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(Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980).
As to claim 21 relating to a process limitation relating to excluding a
powder-compacting step, we remind the Appellant that the claims on appeal
are directed to a product. Thorpe, 777 F.2d at 697, 227 USPQ at 965-66
(“ The patentability of a product does not depend on its method of
production….If the product in a product-by-process claim is the same as or
obvious from a product of the prior art the claim is unpatentable even though
the prior product was made by a different process.”). In any event, as
correctly found by the Examiner (Answer 4), “Klabunde clearly discloses
that other agglomerating techniques (e.g.[,] spraying, adhering,
centrifugation, etc.) may be utilized to form the sorbent pellets (see col. 2,
lines 44-45).”
As a rebuttal to the prima facie case, the Appellants have referred to
the Utamapanya literature (Utamapanya et al., Chem. Mater., 3:175-181
(1991)), an unknown published application, and a Rule 132 Declaration
executed by Mr. Schlegel (one of the inventors listed in this application) as
evidence of non-obviousness (Br. 14-18).
The dispositive question is, therefore, whether the Appellant's
reference to Utamapanya, the unknown published application, and the
Schlegel declaration rebuts the prima facie case established by the Examiner.
On this record, we answer this question in the negative.
Initially, we note that the Appellant has referred to Utamapanya as
teaching against using an aqueous suspension to prepare a pellet (Br. 12).
However, the Appellant has not supplied any copy of this literature evidence
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in the Evidence Appendix section of the Brief as required by 37 C.F.R.
§ 41.37(c)(viii) (2004). In fact, the Appellant has indicated “none” at the
Evidence Appendix section of the Brief for the evidence relied upon in the
Brief. Accordingly, we need not consider the Utamapanya literature not
provided by the Appellant.
Even were we to consider the literature evidence in question, our
conclusion would not be altered. As is apparent from our discussion above,
Klabunde teaches forming a pellet from the types of gels recommended by
Utamapanya. Utamapanya does not teach away from employing the pellets
taught by Klabunde or pelletizing adsorbents in the manner taught by
Klabunde. Moreover, the Appellant's reliance on Utamapanya to highlight a
process by which pellets are made is of no moment as the claims on appeal
are directed to a product, i.e., a unit containing an adsorbent/catalyst pellet.
The Appellant has also referred to page 3, paragraphs 0036 and 0037
of the unknown published application as describing the formation of a paste
having highly organized crystalline needle-like structure recovered from an
aqueous suspension (Br. 18). However, the Appellant has not supplied any
copy of this evidence in the Evidence Appendix section of the Brief as
required by 37 C.F.R. § 41.37(c)(viii) (2004). In fact, as indicated above,
the Appellant has indicated “none” at the Evidence Appendix section of the
Brief for the evidence relied upon in the Brief. Accordingly, we need not
consider the unknown published application not provided by the Appellant.
In any event, the claims on appeal, as broadly recited, do not preclude
crushing the structure in the powder form and shaping the resulting powder.
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Moreover, the Appellant also has referred to the Schlegel declaration
and Specification Example 2 to rebut the prima facie case established by the
Examiner (Br. 17). According to the Appellant, the Schlegel Declaration
and Specification Example 2 show that the claimed subject matter imparts
unexpected results (id). We are not convinced that the Appellant has carried
the burden of showing unexpected results. In re Soni, 54 F.3d 746, 750,
34 USPQ2d 1684, 1687 (Fed. Cir. 1995) (Appellant has the burden of
rebutting a prima facie case of obviousness); In re Klosak, 455 F.2d 1077,
1080, 173 USPQ 14, 16 (CCPA 1972)(“the burden of showing unexpected
results rests on a party who asserts them”).
Initially, we note that the Appellant has not supplied any copy of the
Schlegel Declaration in the Evidence Appendix section of the Brief as
required by 37 C.F.R. § 41.37(c)(viii) (2004). In fact, the Appellant has
indicated “none” at the Evidence Appendix section of the Brief for the
evidence relied upon in the Brief. Accordingly, we need not consider the
Schlegel Declaration not provided by the Appellant.
Even were we to consider the Schlegel Declaration, we are not
convinced that the Schlegel Declaration and Specification Example 2 would
be sufficient to rebut the prima facie case of obviousness. Contrary to the
Appellant's arguments at page 13 of the Brief, for example, the Schlegel
Declaration does not show preparing Klabunde’s pellets useful for liquid and
gas. Nowhere does the Schlegel Declaration show preparing pellets in the
manner taught by Examples 1-3 of Klabunde. Specifically, we find that the
Schlegel Declaration is silent as to preparing pellets by compacting wet or
dry metal oxide or metal hydroxide powder made from an aerogel or
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deionized water and activating the compacted particles at a temperature of
500ºC. Thus, we concur with the Examiner that the Appellant has not
compared the claimed subject matter with the closest prior art (Klabunde).
In re Burckel, 592 F.2d 1175, 1180, 210 USPQ 67, 71 (CCPA 1979)(the
claimed subject matter must be compared with closest prior art in a manner
which addresses the thrust of the rejection); In re Dunn, 349 F.2d 433, 439,
146 USPQ 479, 483 (CCPA 1965)(“[W]e do not feel it an unreasonable
burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be
proven is lost here in the welter of unfixed variables.”). In other words, we
cannot determine whether Klabunde’s pellets are patentably different from
those claimed or unexpectedly inferior to those claimed.
Even if the Schlegel Declaration shows preparing the pellet taught by
Klabunde, the Appellant still has not demonstrated that the showing in
Specification Example 2 is reasonably commensurate in scope with the
protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731,
743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980). While the showing in the
Specification Example 2 is limited to pellets produced by granulating the
product formed from specific compounds and FeOOH under specific
conditions, the claims on appeal are not so limited. The Appellant has not
demonstrated that the pellets encompassed by the claims on appeal,
including those resulting from mechanically shaping (compacting) wet iron
oxide from an aqueous suspension (without the compounds used in Example
2) have the same properties as that shown in Specification Example 2.
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Therefore, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter recited in claims 7, 8,
20, and 21 within the meaning of 35 U.S.C. § 103.
As to the § 103 rejection based on Benjamin and Klabunde, the
Appellant has not challenged the Examiner’s finding at pages 4-5 of the
Answer that:

Benjamin discloses a waterwork including a water treatment
plant (col. 5, lines 21-22; and col. 14, lines 44-45) having an
adsorbent unit containing a granular composition of iron oxide
and magnesium oxide (see col. 14, lines 65 and 68).
Accordingly, this primary reference discloses the claimed
invention with the exception of the use of agglomerated
particles (pellets). Klabunde discloses agglomerated fine
particles (pellets) of the type recited, and further teaches that
such pellets make the adsorbent "easier to handle" (col. 11,
lines 44-45).

Notwithstanding the Appellant's arguments to the contrary at page 14 of the
Brief, we find that Klabunde as a whole would have suggested pelletizing
the particles of the type discussed in Benjamin. Specifically, we find that
Klabunde teaches (col. 11, ll. 34 to 67) that:
The data from Table 5 provides further evidence that a
higher surface area/unit mass is obtained when the hydroxide is
activated in pellet form. This is beneficial, as storage of
palletized, rather than powder, hydroxide is more convenient
due to its lower volume….Overall the palletizing is very
beneficial as it preserves surface area/unit mass, decreases the
volume, and minimizes the static nature of the powder, making
it easier to handle the adsorbent.
…

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Fig. 1 graphically illustrates the adsorption of acetaldehyde on
powder and palletized samples of AP-MgO. Over a period of
twenty hours, the efficiency of adsorption on the two samples
was very similar.

We find that Klabunde as a whole teaches that it is desirable to pelletize the
composition of the type discussed in Benjamin. In addition, we find that
Klabunde teaches such pellets are useful in the liquid environment (col. 3, ll.
19-25). Nothing in Utamapanya relied upon by the Appellants contradicts
Klabunde’s teaching relating to the desirability of pelletizing the material of
the type discussed in Benjamin. Consequently, we determine that the
Examiner has established a prima facie case of obviousness.
As a rebuttal to the prima facie case, the Appellant has again referred
to the same evidence discussed above. For the factual findings set forth
above and in the Answer, we are not convinced that the Appellant has
demonstrated that the claimed subject matter as a whole imparts unexpected
results.
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter recited in claims 5 and
6 within the meaning of 35 U.S.C. § 103.

ORDER
In view of the forgoing, the decision of the Examiner is
affirmed.
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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

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