Jeffrey Rimer

Patent Trials and Appeals Board

Apr 30, 2021

2020003409 (P.T.A.B. Apr. 30, 2021)

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.
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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-
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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
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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.
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[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
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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
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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.

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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.
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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.
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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