Ex Parte Walter et alDownload PDFPatent Trial and Appeal BoardNov 28, 201714294672 (P.T.A.B. Nov. 28, 2017) 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. 14/294,672 06/03/2014 Richard Walter 100727-233 3071 27384 7590 11/28/2017 Briscoe, Kurt G. Norris McLaughlin & Marcus, PA 875 Third Avenue, 8th Floor New York, NY 10022 EXAMINER QIAN, YUN ART UNIT PAPER NUMBER 1732 MAIL DATE DELIVERY MODE 11/28/2017 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 RICHARD WALTER, HORST MEYER, STEFFEN VOSS, and JAN SCHAPP ____________ Appeal 2017-002478 Application 14/294,672 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals the Examiner’s decision finally rejecting claims 14–19, which constitute all the claims pending in this application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification filed June 3, 2014 (“Spec.”); Final Office Action mailed April 21, 2016 (“Final Act.”); Appeal Brief filed September 19, 2016 (“App. Br.”); Examiner’s Answer to the Appeal Brief mailed October 31, 2016 (“Ans.”); and Reply Brief filed December 2, 2016 (“Reply Br.”). 2 Appellant is the Applicant, Heraeus Precious Metals GmbH & Co. KG; Appellant identifies “HERAEUS DEUTSCHLAND GMBH & CO. KG” as the real party in interest (App. Br. 2). Appeal 2017-002478 Application 14/294,672 2 We AFFIRM. The Claimed Invention Appellant’s disclosure relates to a process for the production of noble metal carboxylate compounds of Ir, Ru, Rh, Pd, Pt and Au. Spec. 1, Abstract. Claim 14, the only independent claim, is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 11) (key disputed claim language italicized and bolded and indentation added): 14. A process for the production of catalytically highly effective noble metal carboxylate compounds or their solutions, wherein the catalytically highly effective nobel metal carboxylate compounds or their solutions comprise A) a noble metal carboxylate, wherein the noble metal is selected from the group consisting of ruthenium, platinum, palladium, rhodium and gold, and B) at least one compound selected from the group consisting of oxalic acid, a salt of oxalic acid, a derivative of oxalic acid and a salt of the derivative of oxalic acid, said process comprising: digesting the noble metal with alkaline earth peroxide; and dissolving a digestion mass in a carboxylic acid or a carboxylic acid diluted with a protic solvent, wherein, from a resulting solution, alkaline earth ions are separated off as salt of an oxalic acid or salt of oxalic acid derivatives. Appeal 2017-002478 Application 14/294,672 3 The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Nappier et al., EP 0380213 A2 Aug. 1, 1990 (hereinafter “Nappier”) Keep et al., GB 2413323 A Oct. 26, 2005 (hereinafter “Keep”) The Rejection On appeal, the Examiner maintains the following rejection: claims 14–19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Keep further in view of Nappier. Final Act. 3; Ans. 3. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s rejections based on the fact finding and reasoning set forth in the Answer to the Appeal Brief and Final Office Action, which we adopt as our own. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)) (precedential) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”) We highlight and address specific findings and arguments below for emphasis. Appellant argues claims 14–19 as a group. App. Br. 4. We select claim 14 as representative and the remaining claims subject to this rejection stand or fall with claim 14. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2017-002478 Application 14/294,672 4 The Examiner determines that the combination of Keep and Nappier suggests a process for producing noble metal catalysts satisfying all of the steps of claim 14 and thus, would have rendered claim 14 obvious. Final Act. 3–4 (citing Keep 1–8, claims 1–7; Nappier, col. 1, l. 20–col. 9, l. 10). Appellant argues that the Examiner’s rejection should be reversed because it is based on improper hindsight and that a skilled artisan would not have been motivated to combine Keep’s process with Nappier’s method as alleged by the Examiner. App. Br. 4–6; see also Reply Br. 2–4. In particular, Appellant contends that “Nappier’s method deviates from Keep’s method.” App. Br. 5. Appellant further argues that because Keep discloses only iridium, the combination Keep and Nappier does not teach or suggests “at least a noble metal selected from the group consisting of ruthenium, platinum, palladium, rhodium and gold, as required by independent claim 14.” App. Br. 7; see also Reply Br. 3. We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination that the combination of Keep and Nappier suggests all of the process steps of claim 14 and conclusion that the combination would have rendered the claim obvious. Keep 1–8, claims 1–7; Nappier, col. 1, l. 20–col. 9, l. 10. As the Examiner finds (Ans. 4), Keep teaches a process comprising the steps of: (a) sintering precious metal such as iridium metal with an alkaline earth peroxide BaO2; (b) dissolving the resulting mixture in acetic acid/water (which corresponds to the “carboxylic acid” and a “protic Appeal 2017-002478 Application 14/294,672 5 solvent” recited in claim 14); (c) precipitating Ba with oxalic acid; and (d) filtering to remove barium oxalate. Keep 1–8, claims 1–7. As the Examiner further finds (Ans. 4), Nappier teaches a process for making noble metal salt catalysts, including ruthenium and iridium metal salts. Nappier, col. 1, ll. 20–25. Nappier also teaches that it is to be understood that the process of the invention is equally applicable to salts of other precious metals such as silver, platinum, iridium, gold, rhodium and ruthenium, so that references to such other precious metals may generally be substituted for palladium . . . . Id. at col. 2, ll. 44–50. The Examiner also provides a reasonable basis and identifies persuasive evidence in the record to evince why one of ordinary skill would have combined the teachings of Keep and Nappier to arrive at Appellant’s claimed method. Ans. 4 (explaining that it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine Nappier’s ruthenium salt with Keep’s process as an alternative noble metal salt because both ruthenium and iridium are Group VIII precious metals having similar chemical and physical properties); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed.). Appellant fails to direct us to sufficient evidence or provide an adequate technical explanation to establish why the Examiner’s articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appeal 2017-002478 Application 14/294,672 6 Appellant’s arguments that the Keep reference does not disclose any precious metal except iridium and the combination of Keep and Nappier does not teach or suggest the “at least a noble metal” limitation of claim 14 (App. Br. 7; Reply Br. 3) are not persuasive of reversible error because they do not take into consideration what Keep’s broader disclosures reasonably would have suggested to one of ordinary skill in the art at the time of the invention. As the Examiner finds (Ans. 4) and contrary to what Appellant argues, although Keep focuses on iridium metal and iridium acetate, the reference’s disclosure is not limited solely to these components. A reference is not limited to the disclosure of specific working examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A prior art reference’s disclosure is not limited to its examples.). Nor do disclosed examples teach away from a reference’s broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference “must be evaluated for what they fairly teach one of ordinary skill in the art.”). Rather, as the Examiner finds (Ans. 4), Keep broadly discloses that the “invention concerns precious metal salts” (Keep 1), which would include, for example, salts based on precious metals such as rhenium, ruthenium, and palladium and would satisfy the “at least a noble metal selected from the group consisting of ruthenium, platinum, palladium, rhodium and gold” limitation of claim 14. Appellant’s arguments reveal no reversible error in the Examiner’s analysis and factual findings in this regard. Appeal 2017-002478 Application 14/294,672 7 Appellant’s assertions that the Examiner’s rejection is “erroneously based on improper hindsight” (App. Br. 4) and “Nappier’s method deviates from Keep’s method” (id. at 5) are not persuasive of reversible error because they are conclusory and Appellant does not provide an adequate technical explanation or direct us to sufficient evidence in the record to support them. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Accordingly, we affirm the Examiner’s rejection of claims 14–19 under 35 U.S.C. § 103(a) as obvious over the combination of Keep and Nappier. DECISION/ORDER The Examiner’s rejection of claims 14–19 is affirmed. It is ordered that the Examiner’s decision 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). AFFIRMED Copy with citationCopy as parenthetical citation