Ex Parte Schubert et al

Patent Trial and Appeal Board

Jun 21, 2017

12063522 (P.T.A.B. Jun. 21, 2017)

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.
12/063,522 02/11/2008 Markus Schubert 321546US0PCT 8169
22850 7590 06/23/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
06/23/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS SCHUBERT, ULRICH MUELLER,
MARKUS TONIGOLD, and ROGER RUETZ
Appeal 2016-004842
Application 12/063,5221
Technology Center 1700
Before JEFFREY T. SMITH, AVELYN M. ROSS, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 14, 15, 18, 20-25, 27, 31—36, and 38. We have
jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is BASF
Aktiengesellschaft of Ludwigshafen, Germany. Appeal Br. 2.
Appeal 2016-004842
Application 12/063,522
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a process for preparing
metal-organic frameworks. Spec. 1:3. The framework could be used, for
example, for storage or separation of a gas (preferably, for example,
hydrogen or methane) or liquid. Id. at 17:7—32; 23:12—29. Claim 14,
reproduced below, with emphases added to certain key recitations, is the
only independent claim on appeal and is illustrative of the claimed subject
matter:
14. A process for preparing a porous metal-organic
framework, which comprises:
reacting, with stirring and at a pressure of not more than 2
bar (absolute), at least one metal compound with at least one at
least bidentate organic compound which can coordinate to the
metal, in the presence of a nonaqueous organic solvent
selected from the group consisting of DMF, DEF, and NMP3 * *,
to form a porous metal-organic framework,
where the metal is Mg11, or Alm and the organic
compound has at least two atoms which are selected
independently from the group consisting of oxygen, sulfur and
nitrogen and via which the organic compound can coordinate to
the metal, wherein the at least bidentate organic compound is a
dicarboxylic, or tricarboxylic acid, and
wherein the reaction is carried out without additional
base.
Appeal Br. 13 (Claims App’x).
2 In this decision, we refer to the Non-Final Office Action dated May 6,
2015 (“Final Act.”), the Appeal Brief filed September 21, 2015 (“Appeal
Br.”), and the Examiner’s Answer dated February 8, 2016 (“Ans.”).
3 The Specification explicitly defines each of these acronyms: “N,N-
dimethylformamide (DMF), N,N-diethylformamide (DEF), . . . N-
methylpyrrolidone (NMP).” Spec. 10:34—11:5.
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Application 12/063,522
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Yaghi US 5,648,508 July 15, 1997
MacGillivray WO 2004/042270 A2 May 21, 2004
Xian-Ming Zhang et al., New double-layered open metal-
organic frameworks with nanosized channels encapsulated
removable 2,5-bis(r-pyridyl)-l,3,4-thiadiazole molecules,
CrystEngComm 7(14), 96—101 (2005) (hereinafter “Zhang”).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 14, 15, 18, 20-23, 25, 27, 31—33, 36, and 38
under 35 U.S.C. § 103 as unpatentable over Yaghi. Ans. 2.
Rejection 2. Claim 24 under 35 U.S.C. § 103 as unpatentable over
Yaghi in view of MacGillivray. Id. at 6.
Rejection 3. Claims 34 and 35 under 35 U.S.C. § 103 as unpatentable
over Zhang. Id. at 7—8.
ANALYSIS
I. The Examiner’s position
The Examiner rejects claim 14 as obvious over Yaghi. The Examiner
finds that Yaghi teaches preparing a crystalline metal organic microporous
material by mixing a solution with metal ions (such as Alm), a ligand (such
as a bi- or tri-carboxylic acid), and a templating agent (such as ethanol,
benzene, or toluene). Ans. 2—3. The Examiner finds that Yaghi teaches the
microporous materials can be prepared “in either an aqueous or [a] non-
aqueous system.” Id. at 4. Indeed, Yaghi teaches solvent choice does not
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Application 12/063,522
matter by stating: “choice of solvent is not believed to be critical in
obtaining the microporous materials of this invention.” Yaghi 13:3—7. The
Examiner thus concludes that it would have been obvious “to use any of the
metal ions, ligands and templating agents as taught by Yaghi as long as its
produces a crystalline metal organic microporous material because Yaghi
teaches any of these combinations can produce a crystalline microporous
material.” Ans. 4.
II. The Appellants’ Position
The Appellants generally agree with the Examiner that Yaghi broadly
teaches a wide range of metal ions, ligands, and templating agents “both
inside and outside the scope of the claimed invention.” Appeal Br. 5.
Appellants present a table that summarizes the scope of claim 14 as
compared to Yaghi’s general teachings and Yaghi’s examples. Id. at 9. We
reproduce much of that table below while adding an additional column to
generally identify each row and adding additional information and/or
clarification.
Claim 14 General method
of Yaghi
Yaghi’s experiments
Metal Al(III) or
Mg (III)
67 different metal
ions
Co (II) or Zn(II)
bidente
organic
compound
di- or
tricarboxylic
acid
countless number
of organic ligands
comprising an
alkyl, aryl or
alkyl/aryl amine
substructure and a
multidentate
functional group
“X” selected from
31 different
groups
benzene tricarboxylic
acid
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Application 12/063,522
Solvent DMF, DEF,
NMP
Aqueous or 28
non-aqueous
solvents, polar or
nonpolar
ethanol/dichloroethane
Templating
Agent
not recited
or excluded
by claim 14
so long as it
is not an
“additional
base”
a countless
number of
templating agents
Pyridine, ethanol
Pressure /
Temperature
Pressure not
more than 2
bar;
temperature
is not limited
0 to 100° C in an
open beaker or
and 25 to 300° C
in a closed vessel
Room temperature
Additional
base?
Without
additional
base
Several ligands
and templating
agents are bases,
e.g.,
trimethylamine
Trimethylamine,
pyridine
Appellants argue that given the breadth of Yaghi’s teachings and
Appellants’ evidence of unexpected results, independent claim 14 is not
obvious. Appeal Br. 5; see also Eli Lilly & Co. v. Bd. of Regents ofUniv. of
Wash., 334 F.3d 1264, 1270 (Fed. Cir. 2003) (“earlier disclosure of a genus
does not necessarily prevent patenting a species member of the genus”).
Appellants rely on three sources as evidence of unexpected results: (1) the
October 8, 2014, Declaration of Dr. Stefan Marx (hereinafter “Marx Decl.”),
(2) the April 6, 2015, declaration of Dr. Lena Arnold (hereinafter “Arnold
Decl.”), and (3) the examples provided in the Specification (Spec. 20-30).
Appeal Br. 6. Each evidentiary source is discussed below.
The Marx Declaration. Dr. Marx discusses two attempts to prepare a
porous metal-organic framework using aluminum as the metal (one of two
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possible metals recited by claim 14), benzenetricarboxylic acid as the
bidentate organic compound (an example of a tricarboxylic acid as recited
by claim 14 and the same as the “BTC”4 used by Yaghi’s examples 1 and
25), ethanol as the nonaqueous organic solvent (different from the solvent
recited by claim 14 but the same as the solvent used by Yaghi examples 1
and 26), and pyridine as a templating agent (a base contrary to claim 14 but
the same as used by Yaghi’s examples 1 and 27). Marx Decl. Tflf 5—6. For
one attempt, polyethylene oxide (“PEO”) dissolved in 1,2-dichloroethane
was also added (as in Yaghi example l8). No porous aluminum-based
material was obtained with or without PEO.
The Arnold Declaration. Similar to the Marx Declaration, the Arnold
Declaration discusses an attempt to prepare porous metal-organic
frameworks by following certain teachings of Yaghi. Arnold 14. Arnold
discusses similar experiments except that terephthalic acid (an example of a
dicarboxylic acid as recited in claim 14) is used with aluminum for Arnold’s
examples 1 and 2 and 2,6-naphthaline dicarboxylic acid (another
dicarboxylic acid) is used with aluminum. Arnold 5—6. The experiments
were again with ethanol and pyridine along with, in some experiments, PEO
in 1,2-dichloroethane. Id. For each experiment, either no porous material
was obtained, or the material obtained was in poor yield with very low
surface area. Id.
Specification Examples. The Specification describes many
experiments that successfully obtained porous metal-organic frameworks
4 See Yaghi 8:41^19.
5 See id. 13:20-16:61.
6 See id. at 13:26-32; 16:4A-50.
7 See id.
* See id. at 13:26-38.
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using DMF, DEF, or NMP as the organic solvent (as recited in claim 14) and
using aluminum or magnesium (also as recited in claim 14) as the metal.
See, e.g., Spec. 20:4—17 (Example 1 using DMF and aluminum), 20:19-28
(Example 3 using DEF and aluminum), 22:27—36 (Example 8 using NMP
and aluminum), 27:14—24 (Example 23 using DEF and magnesium). The
Specification also provides an example where using water as the solvent was
not successful. See, e.g., id. at 21:8—20 (Example 4 using water and
aluminum).
III. Analysis of Unexpected Results
A. Appellants need not make a comparison to a composite
fashioned by the Examiner.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469—70 (Fed. Cir. 1997). That burden requires, for example,
Appellants to proffer factual evidence that shows unexpected results relative
to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991).
Here, the Examiner does not find that the evidence presented is not
unexpected or is not commensurate in scope with claim 14. Rather, the
Examiner objects to Appellants’ evidence as not providing a comparison to
the closest prior art of record. Ans. 9. It is not clear what “closest prior art
of record” the Examiner would require Appellants to test against. Although
Yaghi teaches aluminum and magnesium as two of many different possible
metals (Yaghi 4:39—54) and teaches DMF as one of near infinite possibilities
of solvents (id. at 12:57—13:7), Yaghi does not explicitly teach aluminum or
magnesium in conjunction with DMF, DEF, or NMP. A combination not
taught by Yaghi cannot reasonably be considered “the closest prior art.” See
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In re Tiffin, 443 F.2d 394, 399-400 (CCPA 1971) (“we cannot agree that
appellants’ affidavits are irrelevant because they compare products of the
claimed process to products of prior-art processes seriatim, rather than to
products of the composite processes fashioned by the examiner”); In re
Chapman, 357 F.2d 418, 422 (CCPA 1966) (holding that applicant need not
compare proposed combination of elements with claimed product because
this “would amount to requiring comparison of the results of the invention
with the results of the invention”).
B. Appellants may compare to a process closer to the claimed
subject matter than that taught by the prior art.
Appellants may satisfy the burden of providing a comparison to the
closest prior art by establishing improved results over a process even closer
to the claimed subject matter than that taught by the prior art. See Ex parte
Humber, 217 USPQ 265 (BPAI 1981) (“appellants may show improved
results for their claimed compounds in comparison with compounds which,
in fact, are even closer related than those of the prior art relied upon by the
Examiner in order to rebut the prima facie case”); MPEP § 716.02(e)
(“Applicants may compare the claimed invention with prior art that is more
closely related to the invention than the prior art relied upon by the
examiner”); cf In re Merchant, 575 F.2d 865, 869, n. 8 (CCPA 1976)
(stating that “[djirect comparison with the closest prior art is not required in
all cases”); In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978)
(holding that an applicant can choose what art compare to where two pieces
of prior art are equally close to the claimed invention); but see Pfizer Inc. v.
Teva Pharm. USA, Inc., 460 F. Supp. 2d 655, 658 (D.N.J. 2006) (declining
to follow Ex parte Humber).
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Here, Appellants reasonably identified Yaghi’s examples 1 and 2 as
the closest prior art and made comparisons based on experiments closer to
claim 14 than the examples. In particular, Appellants modified Yaghi’s
examples 1 and 2 to attempt to make aluminum or magnesium metal-organic
frameworks (as recited in claim 14) rather than using cobalt as Yaghi did.
Appellants used the solvents taught by the prior art and established that the
process taught by the prior art will not result in acceptable aluminum or
magnesium frameworks. Under these circumstances, these experiments are
sufficient to be considered a comparison to the closest prior art.
C. Appellants here have established unexpected results as
compared to a process closer to the claims than the closest prior
art.
Appellants establish, based on a preponderance of evidence presented
in the present record and as discussed above, that (1) claim 14’s recited
solvents (DMF, DEF, or NMP) in conjunction with the other recitations of
claim 14 will result in acceptable aluminum or magnesium metal-organic
frameworks and that (2) using the techniques expressly taught by Yaghi’s
examples 1 and 2 in conjunction with aluminum or magnesium will not
result in acceptable metal-organic frameworks. The evidence establishes a
difference in kind between claim 14 and these prior art teachings (i.e.,
acceptable aluminum or magnesium porous material forming as compared to
such material not forming) and establishes that the variables interacted in an
unexpected way (i.e., solvent choice proving critical as compared to Yaghi
teaching that solvent choice does not matter). Based on this record, and
because the Examiner has not made persuasive findings to the contrary, the
evidence is sufficient to establish unexpected results. Allergan, Inc. v.
Sandoz, Inc., 796 F.3d 1293, 1307 (Fed. Cir. 2015) (holding that unexpected
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difference in kind supported conclusion of nonobviousness); In re Applied
Materials, Inc., 692 F.3d 1289, 1298 (Fed.Cir.2012) (“Evidence that the
variables interacted in an unpredictable or unexpected way could render the
combination nonobvious.”).
IV. Obviousness analysis
Once a showing of unexpected results has been made, the
presumption of unpatentability created by the Examiner’s identification of a
prima facie case of obviousness dissolves and all of the evidence must be
weighed together to reach a final conclusion regarding the obviousness of
the claim in question. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Weighing all of the evidence before us and based on the totality of the
record, we do not agree with the Examiner’s obviousness conclusion.
Appellants persuasively argue that Yaghi’s basic teachings are broad, and
Appellants’ experimental evidence indicates that the relatively narrow
combination of solvents recited in claim 14 present unexpected advantages
when combined with aluminum or magnesium. Appeal Br. 5, 8—11. As
such, we do not sustain the Examiner’s rejection of claim 14.
Because the remaining claims all directly or indirectly depend from
claim 14, we also do not sustain the Examiner’s rejection of those claims.9
We note that the Examiner’s additional reliance on the MacGillivray and
Zhang references with respect to claims 24, 34, and 35 does not cure the
error in the Examiner’s rejection explained above. Ans. 6—8.
9 Because our analysis with respect to claim 14 is also dispositive for
dependent claims, we need not address Appellants’ separate argument
concerning dependent claim 35. Appeal Br. 11.
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DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
14, 15, 18, 20-25, 27, 31-36, and 38.
REVERSED
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