Normen Szesni et al.

Patent Trials and Appeals Board

Sep 25, 2019

13276403 - (D) (P.T.A.B. Sep. 25, 2019)

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.
13/276,403 10/19/2011 Normen Szesni 201100424 4638
135004 7590 09/25/2019
RatnerPrestia
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
09/25/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pcorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NORMEN SZESNI, ALFRED HAGEMEYER,
FRANK GROSSMANN, RICHARD FISCHER,
MICHAEL URBANCIC, CLAUS LUGMAIR,
MINGYONG SUN, HONGYI C. HOU, and
DAVID MICHAEL LOWE

____________________

Appeal 2018-004871
Application 13/276,403
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
SHELDON M. MCGEE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this decision, we refer to the Specification filed Oct. 19, 2011 (“Spec.”),
the Final Office Action mailed Oct. 5, 2017 (“Final Act.”), the Appeal Brief
filed Dec. 12, 2017 (“Appeal Br.”), the Examiner’s Answer mailed Feb. 7,
2018 (“Ans.”), and the Reply Brief filed Apr. 9, 2018 (“Reply Br.”).
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STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision to reject claims 1–13 and 20–24 as obvious under
35 U.S.C. § 103(a) over the combination of Bailey3 and Riisager.4 An oral
hearing was held on September 19, 2019.5 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to a catalyst composition for
selective hydrogenations comprising a heterogeneous catalyst with a BET
surface area of ≤ 9 m2/g and an ionic liquid applied to the surface of the
same. Spec. 1. According to the Specification, the catalyst composition has
improved selectivity in favor of the desired product and better thermal
stability. Id. Independent claim 1 is illustrative (disputed matter italicized):
1. A catalyst comprising palladium supported on a
substrate, said catalyst further comprising at least one ionic
liquid, wherein said substrate has a BET surface area of less
than 9 m2/g prior to the addition of said at least one ionic liquid,
and said catalyst has an ionic liquid loading of 0.01% to 5% by
weight of the catalyst.
Appeal Br. 10 (Claims Appendix).

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Clariant Corporation as the real party
in interest. Appeal Br. 2.
3 US 2006/0217579 A1, published Sept. 28, 2006.
4 US 2011/0065950 A1, published Mar. 17, 2011.
5 A transcript of the oral hearing will be filed in due course.
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OPINION
Appellant argues the rejection of claims 1–13 and 20–24 as a group.
Appeal Br. 4–9. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 2–13
and 20–24 will stand or fall together with independent claim 1.
Appellant argues that the Examiner erred in rejecting claim 1 over
Bailey and Riisager because “Riisager provides no teaching regarding a
lower limit of ionic liquid loading” which, Appellant contends, means that
“Riisager does not go down to zero.” Appeal Br. 5 (citing Riisager Abstract,
¶ 12). According to Appellant, Riisager’s silence regarding a lower limit of
ionic liquid loading indicates that a large amount of ionic liquid should be
used, specifically the upper bounds explicitly disclosed in Riisager. Id. at 6.
Appellant also asserts that Riisager’s ranges are “so broad as to provide no
guidance to one of ordinary skill in the art to use ionic liquid within the
claimed range.” Id. at 8.
In addition, Appellant asserts that the rejection is rebutted by the
Declaration of Dr. Normen Szesni (“Szesni Decl.”), one of the named
inventors, because each of the nine publications attached to the declaration
discloses an ionic liquid loading of 10% or more. Id. at 7. According to
Appellant, the publications are consistent with the Specification’s disclosure
that “the ‘accepted wisdom in the art’ included the use of ionic liquid well
above the claimed range” of 0.01% to 5% by weight of the catalyst. Id.
Appellant further notes that one of the publications included with the Szesni
Declaration is another publication by Riisager. Id. at 8.
We are not persuaded by Appellant’s arguments that the Examiner
reversibly erred in rejecting claim 1 under 35 U.S.C. § 103(a) for the reasons
stated in the Final Action and the Answer. The Examiner’s finding (Ans. 4)
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that Riisager discloses ionic liquid loading up to 33% by weight, is
supported by the cited record in this appeal. Riisager ¶ 95. Appellant does
not dispute the Examiner’s finding (Ans. 4) that “up to 33% by weight” is a
range that encompasses the claimed range of 0.01% to 5% by weight.
Instead, Appellant asserts that absent an explicit disclosure of a value for the
lower end of the range, Riisager “would have directed one of ordinary skill
in the art to use amounts of ionic liquid approaching the recited numbers.”
Appeal Br. 6. The difficulty with Appellant’s argument, however, is that
Riisager discloses a range rather than merely the value of 33%.
In the Reply Brief, Appellant asserts that Riisager’s examples do not
include ionic liquid loadings within the claimed range. Reply Br. 4. This
argument also is not persuasive of error because “a reference is not limited
to the disclosure of specific working examples.” In re Mills, 470 F.2d 649,
651 (CCPA 1972) (citation omitted). Moreover, in a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”).
Appellant’s argument (Appeal Br. 7) that Riisager necessarily
discloses a lower bound of 10% because it was common practice to use ionic
liquid loading of 10% or more based on the Szesni Declaration and its
supporting publications is also not persuasive of error. First, the Examiner’s
rejection is based on the combination of Bailey and Riisager, not Appellant’s
additional references. Second, neither Appellant nor the Szesni Declaration
adequately explains why the additional publications would have been
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expected to import limitations to the applied Riisager reference, particularly
in view of the earlier publication dates of the appended publications to the
Szesni Declaration. Therefore, we are not persuaded by Appellant that the
Examiner erred in finding that Riisager discloses a range for ionic liquid
loading that overlaps the range required by claim 1.
Regarding Appellant’s argument (Appeal Br. 8; Reply Br. 5) that the
breadth of Riisager’s range (up to 33%) is too large to offer any guidance for
carrying out the claimed range, we are not persuaded of error because
Appellant has not established any criticality of the claimed range. See In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.); In re Peterson, 315 F.3d 1325,
1330 (Fed. Cir. 2003) (“In general, an applicant may overcome a prima facie
case of obviousness by establishing ‘that the [claimed] range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.’ That same standard applies when, as here, the
applicant seeks to optimize certain variables by selecting narrow ranges
from broader ranges disclosed in the prior art.”).
Finally, Appellant asserts two additional arguments in the Reply
Brief: (1) that the combination of Bailey and Riisager is improper because
Bailey discloses a heterogeneous hydrogenation catalyst and Riisager
discloses a homogeneous liquid phase system, which are “highly distinct
branches of catalyst chemistry” and (2) the “inventive examples” on pages
12–19 of the Specification show “improved selectivity” sufficient to rebut
prima facie obviousness. Reply Br. 3, 5–6. These arguments were not
presented in the Appeal Brief, and Appellant has not proffered a showing of
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good cause explaining why the arguments could not have been presented in
the Appeal Brief. Therefore, we will not consider these new and untimely
arguments in our assessment of the Examiner’s § 103 rejections. 37 C.F.R.
§§ 41.37, 41.41. In addition, we note that both Bailey and Riisager describe
being suitable for supported catalyst systems. Bailey ¶¶ 13, 14; Riisager
¶ 11.
In sum, Appellant fails to show harmful error by the Examiner in
rejecting claim 1 as obvious over the combination of Bailey and Riisager.
Accordingly, we find the preponderance of the evidence in this appeal
record supports the Examiner’s rejection of claims 1–13 and 20–24 over the
combination of Bailey and Riisager.

CONCLUSION
In summary:
Claims Rejected Basis Affirmed Reversed
1–13 and 20–24 § 103(a) Bailey and Riisager 1–13 and 20–24

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