Wong, Raymond J. et al.

Patent Trials and Appeals Board

Oct 21, 2019

13800317 - (D) (P.T.A.B. Oct. 21, 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.
13/800,317 03/13/2013 Raymond J. Wong 3192-016-01 1024
86723 7590 10/21/2019
Kilyk & Bowersox, P.L.L.C.
400 holiday Court, Suite 102
Warrenton, VA 20186
EXAMINER
PATEL, SMITA S
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
10/21/2019 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 RAYMOND J. WONG and LUCAS FONTENELLE
____________

Appeal 2019-001384
Application 13/800,317
Technology Center 1700
____________

Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.

ANKENBRAND, Acting Vice Chief Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 4–9, 11, 13, 15, 17, 18, 54–57, and 68.3
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant is the Applicant, Fresenius Medical Care Holdings, Inc., which,
according to the Appeal Brief, is a real party in interest. Appeal Brief, filed
July 11, 2018 (“Appeal Br.”) 3.
2 Final Action, mailed February 20, 2018 (“Final Act.”).
3 Appellant withdrew claims 14, 16, 19–53, 58–62, and 64–67 from
consideration. Amendment and Reply, filed July 14, 2016.
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STATEMENT OF THE CASE
Background
The subject matter on appeal “relates to hydrous zirconium oxide
particles and to methods of making hydrous zirconium oxide particles, such
as by sol gel synthesis.” Specification, filed March 13, 2013 (“Spec.”) ¶ 2.
According to the Specification, existing zirconium oxides often have
non-uniform particle size, low porosity, poor surface adsorption area, and
capacity. Id. ¶ 3. The Specification explains that zirconium ions in solution,
without an additive, are highly hydrated species that rapidly form a sol gel
hydrous zirconium oxide precipitate when a precipitant base is mixed with
the solution. Id. ¶ 21. This traps a large number of coordinated water
molecules within the gel particle, which gives the particle a tendency to
agglomerate. Id.
The Specification discloses the use of at least one oxygen-containing
additive with the solution containing zirconium species. Id. ¶¶ 22, 25. The
oxygen-containing additive forms a complex with metal ions in the solution.
Id. ¶ 42. This slows the reaction of zirconium ions with a precipitant base,
reduces the water content of the resulting particles, and allows for control of
the particle size and size distribution with less agglomeration. Id. ¶ 22.
According to the Specification, the complex can be a soluble complex with
the metal ions in solution, a temporary complex with the metal ions in
solution so the complex can be washed from a product after precipitation, or
a permanent complex with the metal ion of the hydrous metal oxide.
Id. ¶ 44.
Of the appealed claims, claim 1 is independent. Claim 1 is
representative of the subject matter on appeal, and reproduced below:
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1. Hydrous metal oxide particles comprising:
at least one hydrous metal oxide; and
at least one oxygen-containing additive;
wherein the oxygen-containing additive comprises at least one
polar group or a charged group or both; and
wherein the oxygen-containing additive is present as a soluble
ligand that forms a complex with a metal ion of the hydrous
metal oxide, wherein the metal ion of the hydrous metal oxide
is a zirconium ion, the hydrous metal oxide particles have a
sulfate adsorption capacity of 10 mg/g to 50 mg/g and a
phosphate binding capacity of from 0.1 mg/g to 100 mg/g, the
hydrous metal oxide particles have an average BET surface area
of at least 100 m2/g, and the hydrous metal oxide particles have
a particle size distribution of less than 25% in the range of less
than about 25 microns, less than 5% in the range of more than
about 100 microns, and more than 70% in the range of from
about 25 microns to about 100 microns.
Appeal Br. 31 (Claims App’x).
The References
Wong ’840 US 2006/0140840 A1 June 29, 2006
Wong ’609 US 2002/0112609 A1 Aug. 22, 2002
Bortun US 7,252,767 B2 Aug. 7, 2007
Torardi US 2006/0110314 A1 May 25, 2006

The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1, 4–9, 13, 15, 17, 18, 54–57, and 68 are rejected under
35 U.S.C § 103(a) over Wong ’840, Wong ’609, and Bortun; and
2. Claim 11 is rejected under 35 U.S.C § 103(a) over Wong ’840
Wong ’609, Bortun, and Torardi.
Final Act. 2–6.
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OPINION
After having considered the evidence presented in this Appeal and
each of Appellant’s contentions, we are persuaded that Appellant identifies
reversible error with respect to the Examiner’s rejections of claims 1, 4–9,
11, 13, 15, 17, 18, 54–57, and 68. We reverse the Examiner’s rejections of
those claims for the reasons explained below.
In rejecting claim 1, the Examiner finds Wong ’840 discloses
synthesizing zirconium phosphate particles that include zirconium and at
least one oxygen-containing additive. Final Act. 2–3. The Examiner finds
Wong ’840 does not disclose hydrous zirconium oxide comprising the
additive or the sulfate adsorption capacity and phosphate binding capacity
recited in claim 1. Id. at 3. The Examiner finds Wong ’609 discloses a
sorbent cartridge including zirconium phosphate or hydrous zirconium
oxide, but does not disclose the sulfate adsorption capacity or phosphate
binding capacity for hydrous zirconium oxide. Id. The Examiner concludes
it would have been obvious to modify Wong ’840 in view of Wong ’609 to
produce hydrous zirconium oxide particles with the additive of Wong ’840
so the particles do not agglomerate. Id. at 4.
As to the sulfate adsorption and phosphate binding capacities, the
Examiner finds Bortun teaches that hydrous zirconium oxide has a
phosphate affinity falling within the range recited in claim 1, but does not
disclose the sulfate adsorption capacity for hydrous zirconium oxide. Id.
However, the Examiner concludes it would have been obvious that hydrous
zirconium oxide “would result in low adsorption capacity for sulfate since
hydrous zirconium oxide material exhibits high affinity towards phosphate
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binding and it is resistance [sic] against poisoning by SO4,” as Bortun
teaches. Id.
Appellant argues the sulfate adsorption capacity recited in claim 1 is
not a “low” capacity, as the Examiner finds. Appeal Br. 17. As support,
Appellant cites a comparison in the Specification showing a sulfate
adsorption capacity of 10–22 mg/g for the inventive hydrous zirconium
oxide particles, but a sulfate adsorption capacity of 4 mg/g for hydrous
zirconium oxide with acetate, which Appellant contends is comparable to the
material of Wong ’609. Id. Thus, Appellant argues the Examiner’s
reasoning that the claimed sulfate adsorption capacity would have been
obvious is conclusory, based on hindsight, and lacking reasoning with
rational underpinnings. Id. at 18.
Appellant further asserts the claimed particles achieve unexpected
results, citing comparative experimental results in the Specification. Id. at
20–21.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the
Examiner concludes the claimed sulfate adsorption capacity would have
been obvious because “hydrous zirconium oxide material exhibits high
affinity towards phosphate binding.” Final Act. 4. However, the Examiner
does not explain how the phosphate binding of hydrous zirconium oxide
relates to sulfate adsorption capacity, or otherwise indicates that the hydrous
zirconium oxide of the proposed combination would have the claimed
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sulfate adsorption capacity or would have been an obvious modification.
Therefore, the Examiner does not articulate sufficient reasoning to support
the conclusion that the claimed sulfate adsorption capacity would have been
obvious in view of the applied references.
In response to Appellant’s arguments, the Examiner takes a different
position in the Answer finding, among other things, that although hydrous
zirconium oxide and zirconium phosphate are not alternatives or
interchangeable, hydrous zirconium oxide made with Wong ’840’s additive
and zirconium phosphate made with the same additive “should have similar
properties.” Examiner’s Answer, dated October 16, 2018 (“Ans.”) 4. The
Examiner further finds that because “Bortun teaches hydrous metal oxide
having high surface [area] and Wong [’840] suggest [sic] making zirconium
phosphate and hydrous zirconium oxide with at least one oxygen containing
additive and they both are used in dialysis” the claimed sulfate adsorption
capacity and phosphate binding capacity “would be considered as inherent
properties.” Id.
Appellant argues in reply that the Examiner’s reasoning does not meet
the burden to establish inherency. Reply Brief, dated December 6, 2018
(“Reply Br.”) 4. This argument is persuasive. Although “[i]nherency may
supply a missing claim limitation in an obviousness analysis,” “[a] party
must . . . meet a high standard in order to rely on inherency to establish the
existence of a claim limitation in the prior art in an obviousness analysis—
the limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.” PAR Pharm.,
Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–1195, 1196 (Fed. Cir. 2014).
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Here, the Examiner finds Bortun teaches a hydrous metal oxide with a
high surface area. Ans. 4. This finding is insufficient to explain why the
claimed sulfate adsorption capacity for hydrous zirconium oxide would have
been the natural result of or necessarily present in the proposed combination.
The Examiner also finds that Wong ’840 suggests making zirconium
phosphate and hydrous zirconium oxide with at least one oxygen-containing
additive and, thus, the hydrous zirconium oxide would have the claimed
sulfate adsorption capacity. Id. But as Appellant argues, the Examiner
identifies Wong ’840’s zirconium polymeric species in solution (i.e., an
intermediate compound) as hydrous zirconium oxide, but those species are
not particles and are instead used to produce zirconium phosphate particles,
which differ from hydrous zirconium oxide particles because the former are
cation exchangers and the latter are anion exchangers. Reply Br. 3–6.
Further, as noted above, the Examiner finds that hydrous zirconium
oxide made with an oxygen-containing additive and zirconium phosphate
made with the additive “should have similar properties.” Ans. 4.
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and internal quotation marks omitted). Therefore, the
Examiner does not sufficiently explain how the recited sulfate adsorption
capacity would have been a natural result of or necessarily present in the
proposed combination.
We also find the Examiner’s obviousness analysis deficient for a
second reason. Appellant argues that unexpected results support the
nonobviousness of the claims. App. Br. 20–21. The Examiner responds by
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restating “the position of the office.” Ans. 5. Appellant’s evidence may or
may not be sufficient to demonstrate that the claimed subject matter
achieved unexpected results such that it would not have been obvious over
the prior art of record. However, when, as here, the Examiner offers no
indication that the Examiner considered that evidence, we must reverse. See
In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976) (“When . . . evidence is
submitted in rebuttal, the decision-maker must start over.”).
Accordingly, we reverse the Examiner’s rejection of claims 1, 4–9,
13, 15, 17, 18, 54–57, and 68 under § 103(a) over Wong ’840, Wong ’609,
and Bortun.
The Examiner rejects claim 11 over the combination of Wong ’840,
Wong ’609, Bortun, and Torardi. However, the Examiner does not rely
upon Torardi to remedy the deficiency discussed above. See Final Act. 6.
Therefore, we reverse the rejection of claim 11 under 35 U.S.C. § 103(a) for
the same reasons that we reverse the Examiner’s rejection of claims 1, 4–9,
13, 15, 17, 18, 54–57, and 68 over Wong ’840, Wong ’609, and Bortun.
CONCLUSION
The Examiner’s rejections of claims 1, 4–9, 11, 13, 15, 17, 18, 54–57,
and 68 under 35 U.S.C. § 103(a) are reversed.

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In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 4–9, 13,
15, 17, 18,
54–57, 68
103(a) Wong ’840,
Wong ’609,
Bortun
1, 4–9, 13,
15, 17, 18,
54–57, 68
11 103(a) Wong ’840,
Wong ’609,
Bortun, Torardi
11
Overall
Outcome
1, 4–9, 11,
13, 15, 17,
18, 54–57,
68

REVERSED