Ex Parte TAKI et alDownload PDFPatent Trial and Appeal BoardMay 28, 201512946283 (P.T.A.B. May. 28, 2015) 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. 12/946,283 11/15/2010 Kenichi TAKI ADACHI P273USD1 9614 20210 7590 05/29/2015 DAVIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 EXAMINER VADEN, KENNETH I ART UNIT PAPER NUMBER 1732 MAIL DATE DELIVERY MODE 05/29/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENICHI TAKI, AKIMASA HIRAI, and HIROMASA SUZUKI ____________ Appeal 2013-007729 Application 12/946,283 Technology Center 1700 ____________ Before MARK NAGUMO, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1‒8 and 14‒18 of Application 12/946,283 under 35 U.S.C. § 103(a) as obvious. Final Act. (September 20, 2012). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Cataler Corporation is identified as the real party in interest. App. Br. 1. Appeal 2013-007729 Application 12/946,283 2 BACKGROUND The ’283 Application describes a catalyst composition that can be used to remove toxic substances from the exhaust gas of an internal combustion engine. Spec. ¶ 3. 2 The claimed catalyst composition comprises a precious metal such as platinum or rhodium and at least two of the following metal oxides: a zirconium oxide, a cerium oxide, and a zirconium-cerium mixed oxide. Id. at ¶ 11. The distribution of zirconium and cerium oxides varies along the exhaust gas’s flow path. Id. Claim 1 is representative of the ’283 Application’s claims and is reproduced below: 1. An exhaust gas purifying catalyst comprising: a substrate having a through hole penetrating the substrate in an axial direction; and a catalyst coating layer formed on an internal surface of the through hole, the catalyst coating layer containing: a component (I): a precious metal; and a component (ii): at least two from a group consisting of a Zr oxide, a Ce oxide and a ZrCe mixed oxide, wherein the through hole forms a passage for an exhaust gas, and an oxide equivalent weight of the Zr in an upstream portion of the passage is greater than an oxide equivalent content of Ce in the upstream portion of the passage, the oxide equivalent content of Ce in the upstream portion of the passage is greater than zero, and an oxide equivalent content of Ce in a downstream portion of the passage is greater than the oxide equivalent content of Ce in the upstream portion of the passage. App. Br. 15 (Claims App’x). 2 Citations are to the Substitute Specification filed December 10, 2010. Appeal 2013-007729 Application 12/946,283 3 REJECTION Claims 1‒8 and 14‒18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matsumoto. 3 Final Act. 3. DISCUSSION Appellants argue for reversal of the rejection of all claims pending in the ’283 Application without reference to any particular claim. See App. Br. 9‒13. Appellants’ arguments are based on limitations common to claims 1 and 7, the only independent claims on appeal. Id.; also compare claims 1 and 7. For the sake of clarity, we shall confine our discussion to claim 1. Our analysis, however, applies with equal force to claim 7. The dependent claims are not argued separately and, thus, stand or fall with the independent claim from which they ultimately depend. Appellants argue that the rejection of claim 1 as obvious over Matsumoto should be reversed because the Examiner has not established a prima facie case of obviousness. App. Br. 9‒13. In particular, Appellants assert that the Examiner erred in finding that Matsumoto describes or suggests the following recited limitations: (1) an upstream portion of the catalyst comprising an oxide equivalent weight of zirconium that is greater than the oxide equivalent content of cerium, (2) the oxide equivalent content of the cerium in the upstream portion of the catalyst is greater than zero, 4 and (3) the oxide equivalent content of the downstream portion of the 3 EP 1 136 115 A1, published September 26, 2001. 4 The combination of these two limitations requires the Ce:Zr ratio in the upstream portion of the catalyst to be between 0 and 1 (i.e., 0 < Ce:Zr < 1). Appeal 2013-007729 Application 12/946,283 4 catalyst is greater than the oxide equivalent content of cerium in the upstream portion of the catalyst. Id. With respect to the limitations at issue, the Examiner found that Matsumoto describes a catalyst comprising a mixture of Ce oxide and a ZrCe mixed oxide. Final Act. 3 (citing Matsumoto ¶ 19). The Examiner also found that Matsumoto describes the first loading layer of the upstream side catalyst having a Ce:Zr ratio in the range of 0.5‒ 2.0. Id. at 4 (citing Matsumoto ¶ 22). Because this overlaps the claimed range, the Examiner concluded that it renders the claimed range obvious. Id. The Examiner further found that Matsumoto describes the solid solution of Ce oxide in the downstream portion of the catalyst as greater than the solid solution of Ce oxide in the upstream portion. Id. (citing Matsumoto ¶ 37). Specifically, Matsumoto describes the amount of cerium in the upstream catalyst as being 0.01‒0.05 moles per liter catalyst, while the downstream catalyst preferably comprises 0.2‒0.8 moles cerium per liter catalyst. Compare Matsumoto ¶¶ 20, 37. Appellants argue that Matsumoto’s description of the Ce:Zr ratio as being between 0.5 and 2.0 is too broad to be of any value: 5 This cited ratio is so divergent in fact, considering the technical complexity of the art of catalytic [sic, catalysis], as to be undermine [sic] any value of the teaching as a matter of law. See In re Marzocchi, 439 F.2d 220, 223‒24, 169 USPQ 367, 369‒70 (CCPA 1971) (“[I]n the field of chemistry generally, there may be times when the well-known unpredictability of 5 We note that Matsumoto is assigned to Cataler Corporation, the real party in interest in this case. Thus, it appears that Appellants are arguing that an earlier-filed, commonly-owned patent application contains an unreliable disclosure. Appeal 2013-007729 Application 12/946,283 5 chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement . . .â€). App. Br. 10. Appellants argue that the content of Matsumoto’s description of the prior art should be limited by the details of the particular examples described therein. App. Br. 11. Based on these examples, Appellants argue that while Matsumoto ’115 may recite a technically suspiciously divergent ratio range that includes more Ce than Zr contained in the upstream portion, and may teach some examples that use more Ce in the downstream portion than in the upstream portion, Matsumoto ’115 repeatedly and exclusively, teaches against combining these two features. Id. at 11‒12. This argument is not persuasive. Matsumoto is presumptively enabled, and Appellants have the burden of demonstrating—with evidence, rather than with attorney argument—that Matsumoto’s disclosure is not reliable. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“[W]e hold a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled.â€) Appellants also argue that catalyst design is an unpredictable technology and that, therefore, the Examiner must have relied upon hindsight to reject claim 1: Even very slight differences in the makeup of a catalyst can result in distinct characteristics which could greatly hinder the catalyst’s capability to perform its intended function. This is even evidenced in [Matsumoto], which shows 19 different distinct combinations of elements. And although the distinctions in the makeup of the different catalysts may be slight, these distinctions result in a number of vast differences (see Figs. 2‒9) in the ability of the catalysts to reduce the amount of hydrocarbons (HC), carbon monoxide (CO) and nitrogen oxides (NOx) emissions from exhaust gases emitted by Appeal 2013-007729 Application 12/946,283 6 vehicles. Therefore, it is respectfully submitted that picking and choosing divergent elements of distinct embodiments, in this complex and unpredictable field, can only be achieved via impermissible hindsight. Id. at 12‒13. We are not persuaded by these arguments. The Examiner established a prima facie case of obviousness, which Appellants have not attempted to rebut with evidence. Appellants’ most important argument is that catalysis is an unpredictable technology. We appreciate Appellants’ “confident reliance upon a four-plus decade old case,†Reply Br. 4, , but an assertion that this particular field of catalysis would have been regarded as unpredictable at the time of the invention must be supported by authoritative contemporaneous evidence. This assertion, however, is not supported by sufficient evidence. For example, Appellants point to Matsumoto’s Figures 2‒9 as evidence of unpredictability. Although these figures show that Matsumoto’s compositions do not perform identically, Appellants have not identified any evidence that the differences in the reported results would have been considered significant evidence that the range disclosed by Matsumoto, more likely than not, would not have been considered enabled by a person of ordinary skill in the art. In sum, Appellants have not identified reversible error in the Examiner’s findings of fact or reasoning. We, therefore, affirm the rejection of claim 1. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1‒8 and 14‒18 of the ’283 Application. Appeal 2013-007729 Application 12/946,283 7 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 cdc Copy with citationCopy as parenthetical citation