Ex Parte Sudik et al

Patent Trial and Appeal Board

Feb 11, 2015

12233246 (P.T.A.B. Feb. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREA SUDIK, JUN YANG, DONALD J.
SIEGEL, and CHRISTOPHER MARK WOLVERTON
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Appeal 2012-008780
Application 12/233,246
Technology Center 1700
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claims 1
and 23–26 under 35 U.S.C. §102(e) as anticipated or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Meisner.1 We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.

1 US 2008/0274033 A1, pub. Nov. 6, 2008.
Appeal 2012-008780
Application 12/233,246
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The invention relates to a method of enhancing the kinetic properties
of hydrogen storage materials. Spec. 1:8–12. In this method, ancillary
reactions catalyze a primary hydrogen storage reaction. Claim 1, the only
independent claim, is drafted as a method involving formulating a reaction
pathway (hydrogen desorption pathway), and selecting an ancillary reaction.
Claim 1 is illustrative:
1. A method comprising:
formulating a hydrogen desorption pathway in a
hydrogen storage composition, the pathway including at least
one hydrogen releasing reaction and at least one ancillary
reaction; and
selecting at least one of the ancillary reactions to produce
at least one product that serves to enhance the kinetic properties
of at least one of the hydrogen releasing reactions, wherein the
at least one product of the at least one ancillary reaction serves
as a catalyst in the at least one hydrogen releasing reaction via
reduction of kinetic barriers.
Claims Appendix of the Br. 1.
According to the Specification, the method is “based on mixing
hydrogen storage materials in such a way as to formulate a hydrogen
pathway that includes both a primary hydrogen storage reaction and
an ancillary reaction.” Spec. 12:28–32. As an example, Appellants
describe a method of preparing a ternary composite by ball milling
LiNH2, LiBH4, and MgH2 in a 2:1:1 ratio for 5 hours. Spec. 15:14–18
and 18:9–12. Milling induces two transformations: (1) starting
materials LiNH2 and LiBH4 react to form Li4BN3H10 and (2) some of
the Li4BN3H10 reacts with MgH2 to form a small amount of
Mg(NH2)2. Spec. 18:9–13 and 20:12–21. Both reactions are
Appeal 2012-008780
Application 12/233,246
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exothermic and occur during ball milling or upon moderate heating.
Spec. 20:19–21. As the temperature reaches 100°C, Li4BN3H10 melts
and reacts with MgH2 to form Li2Mg(NH)2, LiBH4 and releases H2.
This reaction serves to catalyze a subsequent reaction thereby
enhancing the overall kinetic properties. Spec. 20:27 to 21:16.
OPINION
Appellants do not argue any claim apart from the others. We select
claim 1 as representative for resolving the issue on appeal. The issue is:
Have Appellants identified a reversible error in the Examiner’s finding that
Meisner’s method of producing a hydrogen storage composition inherently
results in an ancillary reaction producing a product that serves as a catalyst
in the hydrogen releasing reaction of that reference?
For the reasons the Examiner provides in the Answer, we answer that
question in the negative and, therefore, sustain the Examiner’s rejection.
As pointed out by Appellants, Meisner describes a hydrogen storage
mixture of a first composition including a nitride, a second composition
including a hydride, and a third composition including a cation. Appeal Br.
4; see also Meisner, Abstract and ¶ 6. A particularly preferred nitride is
lithium amide (LiNH2). Meisner ¶ 24. A particularly preferred hydride is
lithium borohydride (LiBH4). Meisner ¶ 25. One of two preferred third
compositions is magnesium hydride (MgH2). Meisner ¶ 28. As found by
the Examiner, these are same starting materials Appellants describe as
undergoing the hydrogen releasing reaction and ancillary reaction of
Appellants’ claim 1. Ans. 4– 5. The Examiner also finds that Meisner
processes the reactants in the same way, i.e., by ball milling and heating, as
Appellants. Ans. 4–6. Based on the similarities in starting materials and
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processing, the Examiner finds that the ancillary reaction of claim 1 would
inherently occur. Ans. 4–5.
Appellants contend that Meisner does not teach or suggest selecting
an ancillary reaction, wherein a reaction product of the ancillary reaction
serves as a catalyst for a hydrogen releasing reaction as recited in Appellants
claims, because Meisner is silent in this regard and teaches using externally
produced catalysts. Appeal Br. 4–5. Appellants further contend that the
rejection is based upon hindsight. Appeal Br. 5–7.
For the reasons provided in the Answer, Appellants have not
persuaded us of a reversible error in the Examiner’s finding of inherency.
Where an examiner has reason to believe that a characteristic in a
claim may, in fact, be an inherent characteristic of the prior art, the examiner
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic the
applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55
(CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An
examiner’s belief is reasonable where starting materials and processing of
the prior art are so similar to those disclosed by the applicant that it appears
that the claimed characteristic would naturally result when conducting the
process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255.
A finding of inherency is not defeated by the fact that the prior art is silent
regarding the inherent feature. In re Omeprazole Patent Litig., v. Andrx
Pharms, Inc., 483 F.3d 1364, 1373 (Fed. Cir. 2007) and Tronzo v. Biomet,
Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (“Where, as here, the result is a
necessary consequence of what was deliberately intended, it is of no import
that the article’s authors did not appreciate the results.”)
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Application 12/233,246
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A preponderance of the evidence supports the Examiner’s finding of
inherency based upon the similarities in both the starting materials and
processing disclosed in Meisner as compared to those exemplified by
Appellants in the Specification. The burden, thus, shifted to Appellants to
show that ball milling the mixture of Meisner as taught by Meisner would
not produce the ancillary reaction and catalyst of the claims. Although the
Appellants argue that different reaction routes and pathways may exist to the
same set of reactants, Appeal Br. 6–7, Appellants’ own Specification does
not specify any particular reaction parameters that are different from those
used by Meisner that would change the reaction pathway. Appellants have
not met their burden in rebuttal.

CONCLUSION
We sustain the Examiner’s rejection.

DECISION
The Examiner’s decision is affirmed.

TIME PERIOD FOR RESPONSE
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

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