Jeffrey RimerDownload PDFPatent Trials and Appeals BoardApr 30, 20212020003409 (P.T.A.B. Apr. 30, 2021) 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. 13/366,206 02/03/2012 Jeffrey D. Rimer 109293.00112 9168 25555 7590 04/30/2021 JACKSON WALKER LLP 2323 ROSS AVENUE SUITE 600 DALLAS, TX 75201 EXAMINER BRUNSMAN, DAVID M ART UNIT PAPER NUMBER 1732 MAIL DATE DELIVERY MODE 04/30/2021 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 JEFFREY D. RIMER ____________ Appeal 2020-003409 Application 13/366,206 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 22–28, 30–38, and 88–91 of Application 13/366,206. Final Act. 1 (Aug. 3, 2018). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the University of Houston System as the real party in interest. Appeal Br. 4. Appeal 2020-003409 Application 13/366,206 2 I. BACKGROUND The ’206 Application describes a synthetic zeolite material with desirable crystal habits and methods for tailoring such crystal habits. Spec. ¶ 3. The ’206 Application describes zeolites as tending to form anisotropic crystals with pore openings on low surface area faces and channels oriented along the longest crystal dimensions. Id. ¶ 5. The ’206 Application describes these features as imposing severe mass transport issues that reduce molecular flux when using synthetic zeolite as a catalyst. Id. ¶¶ 4, 5. According to the Specification, the described synthetic zeolite material is designed to have “effective, facile, and inexpensive synthetic pathways to selectively tailor crystal habit with precise and predictive control.” Id. ¶ 5; Figs. 1D, 6. Claim 1 is representative of the ’206 Application’s claims and is reproduced below from the Appeal Brief’s Appendix of Claims. 1. A method for forming a zeolite material, comprising: selecting a zeolite growth modifier to produce zeolite crystals having a crystal structure of MFI, MOR, AEL, or LTL, wherein the zeolite growth modifier is selected from the group consisting of spermine, ethanolamine, poly-L-lysine, triethylenetetramine, 2-dimethylethanolamine, and combinations thereof to produce zeolite crystals having a crystal structure of MFI, wherein the zeolite growth modifier is selected from the group consisting of tris(hydroxymethyl)aminomethane, 2- dimethylethanolamine, polyethyleneimine, tris(2- aminoethyl)amine, and combinations thereof to produce zeolite crystals having a crystal structure of MOR, wherein the zeolite growth modifier is selected from the group consisting of tris(hydroxymethyl)aminomethane, 2- Appeal 2020-003409 Application 13/366,206 3 dimethylethanolamine, or combinations thereof to produce zeolite crystals having a crystal structure of AEL, and wherein the zeolite growth modifier tris(hydroxymethyl)aminomethane is selected to produce zeolite crystals having a crystal structure of LTL; combining at least one framework source precursor, the zeolite growth modifier, and a solvent to form a synthesis mixture; and maintaining the synthesis mixture at a room temperature or above for a period of time and forming a plurality of zeolite crystals within a suspension during a synthesis process, wherein the zeolite crystals have a crystal structure of MFI, MOR, AEL, or LTL and wherein each of the zeolite crystals comprises: a crystalline zeolite material having a single crystal structure; an upper surface of the crystalline zeolite material extending substantially parallel to a lower surface of the crystalline zeolite material; a length of the upper surface within a range from about 10 nm to about 50 μm; a width of the upper surface within a range from about 10 nm to about 50 μm; a plurality of side surfaces extending between the upper and lower surfaces; a thickness of the crystalline zeolite material extending substantially perpendicular between the upper and lower surfaces; an aspect ratio of about 4 or greater, wherein the aspect ratio is determined as a sum of one half of the length and one half of the width of the upper surface relative to the thickness of the crystalline zeolite material; and a plurality of vertical channels extending between the upper and lower surfaces, wherein each vertical channel independently has an exclusive diffusion pathway extending Appeal 2020-003409 Application 13/366,206 4 from an opening on the upper surface, through the crystalline zeolite material, and to an opening on the lower surface. Appeal Br. Claims App. 1–2 (emphases added). II. REJECTION On appeal, the Examiner maintains the rejection of claims 1, 22–28, 30–38, and 88–91 under 35 U.S.C. § 112, ¶ 1 as not enabled.2 Final Act. 2– 3. III. DISCUSSION Appellant argues for reversal of the rejection at issue based upon the limitations in independent claim 1 and dependent claims 88–91. Appeal Br. 8–14. We select claim 1 as representative of the claims subject to this ground of rejection and limit our discussion to this claim. 37 C.F.R. § 41.37(c)(1)(iv).3 Dependent claims 22–28, 30–38, and 88–91 will stand or fall with claim 1, from which they ultimately depend. The Examiner rejects claim 1 under 35 U.S.C. § 112, ¶ 1 for “contain[ing] numerous inoperative embodiments that would require an undue level of experimentation on the part of one of ordinary skill in the art 2 The Examiner entered Appellant’s Amendment After Final, and has withdrawn the rejection of claim 88 under 35 U.S.C. § 112, ¶ 2. Advisory Act. 4 (January 8, 2019); Answer 3. 3 Claim 1 recites particular zeolite growth modifiers (ZGMs), which may be selected to produce specific crystal structures of MFI, MOR, AEL, or LTL. Dependent claims 88–91 recite each individual alternative specific crystal structure recited in claim 1, respectively, along with the corresponding ZGM(s) for producing each structure. Appeal 2020-003409 Application 13/366,206 5 [to] identify those particular embodiments that are operative and make up the enabled scope of the claims.” Final Act. 3. “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). “[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.” In re Fisher, 427 F.2d 833, 839 (CCPA 1970); see also Crown Operations Int’l v. Solutia Inc., 289 F.3d 1367, 1378–79 (Fed. Cir. 2002) (“The purpose of the enablement requirement is to ‘ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.’”) (quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., 166 F.3d 1190, 1196 (Fed. Cir. 1999)). Whether undue experimentation is required is the conclusion reached by weighing many factual considerations. ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Factors—which are illustrative, not mandatory, see Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991)— to be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability of the art, and (8) the claims’ breadth. Wands, 858 F.2d at 737. Enablement is a Appeal 2020-003409 Application 13/366,206 6 question of law based upon underlying factual determinations. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). With respect to Wands factor (3), Appellant contends that the Specification provides a sufficient amount of direction and working examples “in line with the scope of the claims.” Appeal Br. 10–11; see also id. at 9; Jeffrey D. Rimer’s Rule 132 Declaration (filed April 16, 2018) (“Rimer Decl.”) ¶¶ 16, 18, 19, 20. In particular, Appellant argues that Paragraphs [00132]–[00133], [00135] and [00143] of the specification and Figures 4A–4C, 5, 12B and 12D show that the recited ZGMs spermine, diethanolamine, triethylenetetramine, poly-L-lysine, and 2-dimethylethanolamine may be used to prepare zeolite MFI crystals having the features recited in the claims. Paragraphs [00136]–[00137] and Figure 7 show how the recited ZGMs tris(hydroxymethyl)aminomethane, 2- dimethylethanolamine, polyethyleneimine, and tris(2- aminoethyl)amine may be used to prepare zeolite MOR crystals having the features recited in the claims. Paragraph [00144] and Figure 14 show that the recited ZGMs tris(hydroxymethyl)aminomethane and 2-dimethylethanolamine may be used to prepare zeolite ZEL crystals having the features recited in the claims. Paragraph [00153] and Figure 21C show that the recited ZGM tris(hydroxymethyl)aminomethane may be used to prepare zeolite LTL crystals having the features recited in the claims. Appeal Br. 11 (emphasis added). The Examiner, however, noted that the limitations recited in claim 1 “exclude processes forming crystals having a fine needle like o[r] rod shape, crystals having a globular or rounded shape, crystals having a thick (aspect Appeal 2020-003409 Application 13/366,206 7 ratio less than 4) platelet shape[,] and[] crystals of a cubic nature.”4 Final Act. 6. The Examiner found that claim 1 encompasses at least 12 combinations of a ZGM and the crystal structure formed through use of the ZGM, namely: (1) spermine with MFI; (2) ethanolamine with MFI; (3) poly- L-lysine with MFI; (4) triethylenetetramine with MFI; (5) 2- dimethylethanolamine (“DMEA”) with MFI; (6) tris(hydroxymethyl)aminomethane (“THAM”) with MOR; (7) DMEA with MOR; (8) polyethyleneimine with MOR; (9) tris(2-aminoethyl)amine with MOR; (10) THAM with AEL; (11) DMEA with AEL; and (12) THAM with LTL. Answer 4–5. Of these 12 combinations, the Examiner found that only combination (1) of spermine with MFI “is shown by the disclosure as producing the crystal nature properties required by claim 1.” Id. at 5. The Examiner found that combinations (2) and (3) were indeterminate and that combinations (4)–(12) “fail[ed] to exhibit the characteristics required by the independent claim.” Id. The Examiner found that a majority of the figures in the disclosure show crystals having shapes and features which are not encompassed by claim 1. Id. at 5–6. With respect to Wands factor (3), we are not persuaded that Appellant has identified reversible error for the reasons stated on pages 5–6 of the Examiner’s Answer, which we adopt. When we consider Appellant’s evidence of the presence of working examples together with the Examiner’s findings and conclusions regarding their absence, we think that, on balance, 4 Appellant does not dispute the Examiner’s construction of claim 1. See generally Appeal Br. 8–14. Appeal 2020-003409 Application 13/366,206 8 a preponderance of the evidence supports a conclusion that claim 1 is not supported by operative embodiments. Appellant argues that other Wands factors favor a conclusion that claim 1 is enabled. Appeal Br. 9–13. Appellant proffers named inventor Dr. Jeffrey D. Rimer’s Rule 132 Declaration to provide evidence regarding: (i) the level of ordinary skill in the art,5 (ii) the amount of predictability attained when adjusting the claimed parameters and components, and (iii) the amount of experimentation routinely performed in the field that is not considered undue. See Rimer Decl. ¶ 4. In particular, Appellant argues that “[t]he Rimer Declaration provides that adjusting pH, adjusting amounts of materials, and making other adjustments to the synthesis process are routine.” Appeal Br. 13; see also Rimer Decl. ¶¶ 8, 10, 11, 13, 15, 16. We are not persuaded by the Rimer Declaration’s characterization of the evidence as sufficient to establish that the amount of routine experimentation performed in the synthetic zeolites art is not undue. Because the majority of claim 1’s embodiments fail to exhibit the claimed crystal features, we are not convinced by Dr. Rimer’s argument that the level of predictability in this art is high. As the Examiner found, the Specification fails to “set forth any chemical principle or heuristic to guide” one of ordinary skill in the art in determining “which pair [of] combinations could be expected to exhibit what crystal nature.” Answer 4. In other words, the declarant has not established that it is routine to adjust the pH or material amounts in a crystal forming processes, using non-spermine ZGMs, such 5 There is no dispute regarding the level of ordinary skill in the art required for zeolite crystal synthesis and characterization. Final Act. 4; Rimer Decl. ¶ 4; Appeal Br. 11. Appeal 2020-003409 Application 13/366,206 9 that the formed crystal shape results in the features recited in claim 1. Final Act. 6, 7–8; Answer 5–6. In Wands, our reviewing Court provided an indication of what evidence of routine experimentation was sufficient to support an enabling disclosure. Wands, 858 F.2d at 739. Although the Rule 132 Declaration in Wands detailed that “only . . . 2.8 percent” of the produced hybridomas provided antibodies that “were proved to fall within the claims,” the declaration in that case evinced the routine necessity of screening hundreds of hybridomas to derive the claimed antibody. Id. at 740 (“Wands carried out this entire procedure three times, and was successful each time in making at least one antibody that satisfied all of the claim limitations.”) (emphasis added). Here, the Rimer Declaration does not show the amount of routine experimentation needed to successfully use each of the 12 claimed combinations of ZGM and crystal structure types. See Answer 5. Rather, Appellant only establishes the amount of routine experimentation needed to form a silicalite-1 crystal having the MFI structure through the use of a spermine ZGM. See id. at 16. In doing so, Appellant does not effectively rebut the Examiner’s challenge to the enablement of the present disclosure. We, therefore, agree with the Examiner that undue experimentation would be required to make and use the full scope of the claimed invention. In view of the foregoing, we affirm the rejection of claim 1 as not enabled. Appeal 2020-003409 Application 13/366,206 10 IV. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 22–28, 30–38, 88–91 112, first paragraph Enablement 1, 22–28, 30– 38, 88–91 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 Copy with citationCopy as parenthetical citation