Ex Parte Tustin et al

Board of Patent Appeals and Interferences

Aug 28, 2007

10650510 (B.P.A.I. Aug. 28, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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 GERALD C. TUSTIN,
JOSEPH R. ZOELLER
and RICHARD D. COLBERG
____________

Appeal 2007-2208
Application 10/650,510
Technology Center 1700
____________

Decided: August 28, 2007
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and JEFFREY T.
SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 1-8 and 13-15. Claims 9-12 and 16-40, the only other claims that
remain pending in this application, stand withdrawn from further
consideration by the Examiner as drawn to non-elected invention(s). We
have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.
Appeal 2007-2208
Application 10/650,510

Appellants’ invention is directed to fluidizable catalyst particles
having a specified range of average particle sizes and a process for preparing
same. The particles comprise carbonized polysulfonated vinylaromatic
polymer. Claim 1 is illustrative and reproduced below:
1. A fluidizable catalyst comprising carbonized polysulfonated
vinylaromatic polymer particles in which the particles have an average
particle diameter of about 1 to about 200 micrometers (µm).

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Maroldo US 4,839,331 Jun. 13, 1989
Zoeller ('673) US 6,235,673 B1 May 22, 2001
Zoeller ('043) US 6,452,043 B1 Sep. 17, 2002

Claims 1-5 and 13-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Maroldo. Claims 6-8 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Zoeller ‘043 in view of
Maroldo. Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zoeller ‘673 in view of Maroldo.
We affirm the stated rejections for reasons stated in the Answer and as
further explained below.
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 consideration. 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 have been
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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, 1740-741, 82 USPQ2d
1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336-337 (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.’”).
With respect to all of the Examiner’s obviousness rejections, the
thrust of Appellants’ arguments are directed to an alleged lack of teaching or
suggestion of the particle size requirement of the respectively rejected
claims in the applied references and to an allegation of unexpected results
based on the claimed particle size limitation (Br., 4-9).
Hence, the principal issues before us are: (1) Have Appellants
identified reversible error in the Examiner’s obviousness rejections based on
an alleged failure of the Examiner to present a prima facie case of
obviousness for the claimed subject matter because of a lack of
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teaching/suggestion of the claimed particle size: and (2) Have Appellants
refuted any alleged prima facie case of obviousness made out by the applied
prior art with evidence presented in the Specification that allegedly
establishes unexpected results for the claimed subject matter? We answer
these questions in the negative and affirm the Examiner’s obviousness
rejections.
Considering the Examiner’s first stated rejection, we note that
Appellants argue the rejected claims together as a group. Thus, we select
rejected claim 1 as the representative claim.
Appellants acknowledge that Maroldo discloses particles prepared by
partial pyrolysis of polysulfonated vinylaromatic polymer resins (Br. 5,
Maroldo, col. 1, ll. 5-7 and col. 3, ll. 8-13).
Maroldo discloses that the particles can be used as adsorbents or as a
catalyst support (col. 6, ll. 10-24). Maroldo discloses that the particles can
be made in the form of beads and that the beads or particles can be of a size
formed via conventional suspension polymerization or the particles can be
smaller or larger and can be ground and/or sieved to achieve desired sizes
(col. 4, ll. 22-28 and 49-56). From this disclosure, the Examiner essentially
takes the position that it would have been obvious to one of ordinary skill in
the art to form particles of a suitable size for an adsorbent or catalyst support
utility as taught by Maroldo, including the formation of particles of an
average size within the scope of the representative claim 1 range (Answer
9).1 We agree with the Examiner.

1 The Examiner also took the seemingly alternative position that Maroldo is
silent respecting the particle size of their polysulfonated polymer particles
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In this regard, Appellants counter with the contention that the
disclosure of Maroldo is too ambiguous with regard to the formation or use
of a specific size range of particles, as claimed, to be suggestive of the
claimed subject matter. We disagree. Given the full disclosure of Maroldo,
one of ordinary skill in the art would have been led to form the
polysulfonated polymer particles of a size to be useful for the disclosed
purposes of forming same. As such, the ordinarily skilled artisan would
have determined and made the treated polymer beads in particle sizes that
are suitable for using the particles as an adsorbent or catalyst support in
typical contacting beds arranged for such purposes. For example, one of
ordinary skill in the art would have generally made the particles of smaller
size when the adsorbent or catalyst use was to be performed in a typical
fluidized or entrained bed, as opposed to a fixed bed. This is so because one
of ordinary skill in the art would have had some skill in carrying out routine
experimentation and recognized the need for making particle sizes useful in
such typical contacting beds. In so doing, we have no doubt that one of
ordinary skill in the art would have been led to make the carbonized
(pyrolyzed) polysulfonated vinylaromatic polymer particles of Maroldo in a
size suitable for fluidization as one option and in so doing arrive at particle
sizes corresponding to the representative claim 1 particle sizes.2
We recognize that Maroldo also presented Example 1 wherein a
somewhat larger particle sized polymer bead was used for polysulfonation
(Answer 5). However, we need not concern ourselves with this statement of
the Examiner in light of our findings above.
2 We note, for example, that Maroldo discloses that the polymer particles
can be fluidized during the pyrolysis treatment thereof (col. 5, ll. 16-18).
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and pyrolysis. However, the teachings of Maroldo are not limited to the
Examples. Concerning this matter, it is well settled that a reference must be
considered in its entirety, and it is well-established that the disclosure of a
reference is not limited to preferred embodiments or specific working
examples contained therein. See In re Fracalossi, 681 F.2d 792, 794 n.1,
215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750,
192 USPQ 278, 280 (CCPA 1976). In this regard, we are bound to consider
the disclosure of each reference for what it fairly teaches one of ordinary
skill in the art, including not only the specific teachings, but also the
inferences which one of ordinary skill in the art would reasonably have been
expected to draw therefrom. See In re Boe, 355 F.2d 961, 965, 148 USPQ
507, 510 (CCPA 1966); and In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968).
Accordingly, we determine that the Examiner has presented a prima
facie case of obviousness with respect to representative claim 1 that is not
persuasively rebutted by the arguments furnished in the Brief.
For each of the Examiner’s separate rejections of claims 6-8,
Appellants argue the rejected claims as a group. Thus, we select claim 6 as
the representative claim. Appellants do not contend that either of the
separately applied Zoeller patents would not be combinable with Maroldo
for suggesting the formation of a catalyst of the type recited in representative
claim 6 using the pyrolyzed sulfonated polymer beads of Maroldo as the
catalyst support. In this regard, each of the applied Zoeller patents discloses
the use of pyrolyzed sulfonated polymer beads as a catalyst support and both
Zoeller patents refer to Maroldo (U.S. Patent No. 4, 839,331), including
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Application 10/650,510

incorporating that patent by reference as describing a catalyst support for use
therein. See, e.g., Zoeller ‘043, col. 3, ll. 53-65 and col. 6, ll. 2-5 and Zoeller
‘673, col. 4, ll. 48-64 and col. 5, ll. 22-30). Rather, Appellants make the
same arguments concerning the particle size as made against the Examiner’s
rejection of representative claim 1. For the reasons discussed above, we are
not persuaded by these particle size arguments.
Moreover, Appellants refer to Comparative Example 1 of their
Specification and argue that the claimed catalyst particles possess
unexpectedly improved fluidization properties in comparison with
Amberesorb 572, a particle disclosed in the Zoeller patents, that was tested
in this Comparative Example (Specification ¶ 0072). However,
Specification comparative Example 1 discloses or reports nothing
concerning unexpected results for the claimed particles. Rather, the
Comparative Example 1 merely shows that Ambersorb 572 particles were
loaded with glass frit in a small glass tube and fluidization was achieved at a
gas hourly space velocity of 7500 hr-1. The question as to whether
unexpected advantages have been demonstrated is a factual question. In re
Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Thus, it is incumbent upon Appellants to supply the factual basis to rebut the
prima facie case of obviousness established by the examiner. See, e.g., In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). Here, the
Appellants cursory reference to Comparative Example 1 of the Specification
is clearly inadequate to satisfy Appellants’ burden to demonstrate
unexpected results that are commensurate in scope with the claimed
invention.
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It follows that, on this record, we shall affirm the Examiner’s
obviousness rejections of the appealed claims.

CONCLUSION
The decision of the Examiner to reject claims 1-5 and 13-15 under
35 U.S.C. § 103(a) as being unpatentable over Maroldo; to reject claims 6-8
rejected under 35 U.S.C. § 103(a) as being unpatentable over Zoeller ‘043 in
view of Maroldo; and to reject claims 6-8 under 35 U.S.C. § 103(a) as being
unpatentable over Zoeller ‘673 in view of Maroldo 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)(1)(iv).

AFFIRMED

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Eric D. Middlemas
Eastman Chemical Company
P O Bo0x 511
Kingsport, TN 37662-5075
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