Ex Parte Schlegel et al

Board of Patent Appeals and Interferences

Sep 26, 2007

09962971 (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is not binding precedent of the Board.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
AND JURGEN KISCHKEWITZ
____________

Appeal 2007-4100
Application 09/962,971
Technology Center 1700
____________

Decided: September 26, 2007
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
LINDA M. GAUDETTE, 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 6. Claims 7 through 15, 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other claims pending in the above-identified application, stand withdrawn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 2007-4100
Application 09/962,971

STATEMENT OF THE CASE
The subject matter on appeal is directed to pellets “based on iron
oxides and/or iron oxyhydroxides containing a small quantity of inorganic
Al and/or Mg oxides or (oxy)hydroxides as binders…” (Specification 1, ll.
2-4). These pellets are said to be prepared by adding Al, Mg, and/or
titanium oxides or (oxy)hydroxides into an aqueous suspension of iron oxide
and/or iron oxyhydroxide, including iron hydroxide, and then
either (b1) drying the suspension until it reaches a solid state
and mechanically comminuting the solid material to the desired
shape and/or size, or (b2) mechanically shaping the suspension,
optionally in the semisolid state after predrying, followed by
additional drying until a solid state is achieved. [Specification
7, ll. 6-10.] [Emphasis added.]
Further details of the appealed subject matter are recited in representative
product-by-process claim 11 reproduced below:
1. A unit suitable for the through-flow of a fluid medium at
least partially filled with an adsorbent/catalyst in pellet form
consisting essentially of iron oxide and/or oxyhydroxides
prepared from aqueous suspension, solidified with oxides
and/or (oxy)hydroxides of the elements Al, Mg and Ti.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:

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 09/962,971

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 under 35 U.S.C. § 102(b) as anticipated by
the disclosure of Klabunde (Answer 3);
2. Claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Benjamin and Klabunde (Answer 3-4).
The Appellants appeal 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 Appellants’ copending Applications
09/962,887 filed September 25, 2001 (Appeal No. 2007-4098), 09/962,935
filed September 25, 2001 (Appeal No. 2007-4099), 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.

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
Appellants’ purpose or utility described in the Specification, but only that
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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 Appellants have 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 in pellet form (col. 2, line 17)…. This
reference further teaches that the pellets can consist essentially
of a mixture (col. 2, line 21) of oxides or hydroxides of metals
such as magnesium, titanium, iron or aluminum, with metal
oxides being preferred, and magnesium oxide being most
preferred (see col. 2, lines 22-24); and one skilled in the fluid
purification art would, on reading the Klabunde et al. patent, at
once envisage a mixture of iron oxide with aluminum,
magnesium or titanium oxide as the pellet material. Compare
Answer 3 with Br. 9-11.
The Appellants only argue (Br. 9) 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

2 The Appellants have not supplied any substantive arguments for the
separate patentability of any specific claims. See Br. in its entirety.
Therefore, for purposes of this appeal, we focus our discussion on
independent claim 1 alone pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2004).
3 Contrary to the Appellants’ argument, the term “consisting essentially of”
recited in claim 1 does not preclude mechanically shaping (e.g., pressing or
compacting) wet powder from an aqueous suspension as is apparent from
page 7 of the Appellants’ Specification. See In re Herz, 537 F.2d 549, 551-
52, 190 USPQ 461, 463 (CCPA 1976); In re Lajarte, 337 F.2d 870, 873-74,
143 USPQ 256, 258 (CCPA 1964).

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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….[W]hen 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.

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 (gas or liquid),
having the claimed ingredients. 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
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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 Appellants 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
Appellants only argue that Klabunde does not teach preparing pellets from
an aqueous suspension (Br. 10). In so doing, the Appellants have 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
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 Appellants have
not relied on any evidence to rebut the prima facie case of anticipation
established by the Examiner (Br. 9-11)4.

4 Even if we must consider the evidence relied upon by the Appellants in
rebutting the Examiner’s § 103 rejection in the context of the Examiner’s
§ 102(b) rejection, we are not convinced that the Appellants have
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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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 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
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
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‘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.’”).
Here, the Appellants have not challenged the Examiner’s finding at
page 4 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). [Br. 11-15.]
The Appellants first contend that there is no suggestion to pelletize the
granular composition taught by Benjamin (Br. 12). According to the
Appellants, Klabunde teaches away from pelletizing the granular
composition of the type discussed in Benjamin since Klabunde’s Figure 1
shows that the resulting pellet is less effective than powder (id.).
The first question is, therefore, whether Klabunde teaches away from
forming pellets from the powder of the type discussed in Benjamin. On this
record, we answer this question in the negative.
As is apparent from Klabunde’s disclosure as a whole, Klabunde
would have suggested employing the granular composition of the type
discussed in Benjamin in the form of pellets. 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
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pelletized, 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.
…

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
granular composition 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 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. 12-15).
The dispositive question is, therefore, whether the Appellants’
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 Appellants have referred to Utamapanya as
teaching against using an aqueous suspension to prepare a pellet (Br. 12).
However, the Appellants have not supplied any copy of this literature
evidence in the Evidence Appendix section of the Brief as required by
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37 C.F.R. § 41.37(c)(viii) (2004). In fact, the Appellants have 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 Appellants.
Even if we were 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. The Appellants simply have not pointed to any part of
Utamapanya which contradicts Klabunde’s teaching relating to the
desirability of pelletizing the material of the type discussed in Benjamin (Br.
12). Moreover, the Appellants’ 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 Appellants have 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 Appellants have 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). As noted above, the
Appellants have 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 Appellants.
In any event, the claims on appeal, as broadly recited, do not preclude
crushing the structure into the powder form and shaping the resulting
powder.
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Moreover, the Appellants have referred to the Schlegel Declaration
and Specification Example 2 to rebut the prima facie case established by the
Examiner (Br. 13-14). According to the Appellants, the Schlegel
Declaration and Specification Example 2 show that the claimed subject
matter imparts unexpected results (id.). We are not convinced that the
Appellants have carried the burden of showing unexpected results. In re
Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995) (Appellants
have 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 Appellants have 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), but have 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 Appellants.
Even if we were 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
Appellants’ 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 Appellants have 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 Appellants still have 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
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 Appellants have not
demonstrated that the multifarious 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 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.
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

cam

LANXESS CORPORATION
111 RIDC PARK WEST DRIVE
PITTSBURGH, PA 15275-1112

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