Jonathan David Sharman et al.

Patent Trials and Appeals Board

Jan 15, 2021

2020001569 (P.T.A.B. Jan. 15, 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.
13/390,821 05/07/2012 Jonathan David Brereton Sharman 032891.000017 5715
148994 7590 01/15/2021
BakerHostetler / Johnson Matthey
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
CHUO, TONY SHENG HSIANG
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
01/15/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DAVID BRERETON SHARMAN,
BRIAN RONALD THEOBALD, DAVID THOMPSETT, and
EDWARD ANTHONY WRIGHT

Appeal 2020-001569
Application 13/390,821
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This decision responds to Appellant’s December 28, 2020, Request
for Rehearing (the “Request”) of our Decision mailed November 4, 2020
(the “Decision”). In a request for rehearing, the request “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a)(1). New arguments and evidence are
generally not permitted. Id.
Here, the Request presents two arguments. First, the Request argues
that the Board failed to present evidence that establishes that Appellant’s
Appeal 2020-001569
Application 13/390,821
2
claimed single oxide structure would be the natural result of combining the
cited references. Request 1–3. Second, the Request argues that it is improper
to regard an invention as obvious under a theory of inherency when there is
no evidence that the claimed invention itself would have been obvious. Id. at
4–5. We address each argument below.
First, the evidence of record establishes that the resulting product of
spray drying (as taught by Atanassova) to achieve a membrane (as taught by
Knights or Cisar) having an IrTa oxide catalyst (as taught by Ashizawa or
Morimitsu) will necessarily result in claim 1’s recited “single oxide structure
comprising iridium and tantalum.” Decision 7–8; see also Ans. 4 (finding
that Atanassova teaches reacting precursors, spray drying, and heat treatment
(calcination) to form a single oxide structure and citing Atanassova
paragraphs 50 and 112–114 as support). Appellant’s Request argues for the
first time that a number of “variable parameters” associated with spray
drying could affect whether a spray drying process forms a single oxide
structure. Request 3. This is new argument that is not permitted in a request
for rehearing, and we deny Appellant’s Request on this basis.
Alternatively, even if we were to consider the argument on the
merits,1 the argument is unpersuasive because Appellant cites no evidence to
support Appellant’s proposition that these variable parameters are
substantial relative to the scope of Appellant’s claimed subject matter—in
other words, Appellant presents no evidence to support that these factors
will impact whether or not the process forms a single oxide structure. See
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)

1 We alternatively address Appellant’s arguments on the merits in the
interest of efficiency and compact prosecution.
Appeal 2020-001569
Application 13/390,821
3
(“[A]rguments of counsel cannot take the place of evidence lacking in the
record”). Appellant’s Specification also does not indicate that any of these
parameters are important in forming a single oxide structure. See, e.g.,
Appeal Br. 2 (citing Spec. 12:13–18 as disclosing a single oxide structure);
Spec. 12:13–18 (merely referring to spray drying and calcination).
Contrary to Appellant’s argument, the preponderance of the evidence
of record supports the Examiner’s finding that spray drying itself results in a
single oxide structure. See, e.g., Ans. 4–5, 22. Dr. Sharman confirms this
point: “I believe that the use of a spray drying step is responsible for the
ability of the Applicant’s procedure to produce a single oxide structure,
rather than distinct mixture of tantalum oxide and iridium oxide.” April 19,
2018, Declaration of Dr. Jonathan Sharman, ¶ 9 (“Sharman Decl.”).
Appellant argues that Dr. Sharman’s declaration demonstrates that
Appellant’s process differs from prior art processes in at least three respects.
Request 3.2 Dr. Sharman’s declaration, however, only distinguishes
Appellant’s process from the processes of the Ashizawa and Morimitsu
references. Sharman Decl. ¶ 8. Dr. Sharman emphasizes that these
references’ processes are different because those processes do not employ
spray drying. Id. at ¶ 9. Dr. Sharman does not address Atanassova. Thus, as
a whole, the Sharman Declaration supports that a spray drying process (as
Atanassova suggests) will result in a single oxide structure.
The Examiner’s findings further support the importance of spray
drying. In particular, the Examiner finds that the Atanassova reference
teaches that the Atanassova spray drying process results in a single oxide

2 Appellant presented a similar argument in the Appeal Brief. Appeal
Br. 10–11.
Appeal 2020-001569
Application 13/390,821
4
structure. Ans. 4 (citing Atanassova ¶¶ 50, 112–114). Appellant does not
persuasively dispute this finding. Because the preponderance of the evidence
supports that spray drying necessarily results in a single oxide structure,
Appellant’s first argument does not persuade us of Examiner error.
Second, Appellant’s argument regarding the law of inherency when
references are combined (Request 4–5) is also belated. 37 C.F.R.
§ 41.52(a)(1). Appellant emphasizes Millennium Pharm., Inc. v. Sandoz Inc.,
862 F.3d 1356 (Fed. Cir. 2017), but that precedent is a 2017 decision that
could have been raised in Appellant’s Appeal or Reply Brief. We, thus, also
decline to consider Appellant’s Request based upon this new argument.
Alternatively, Appellant’s argument is also unpersuasive on the
merits. The Examiner determined that a person having ordinary skill in the
art would have modified the teachings of the other cited references to use
spray drying because “spray drying has the advantage of high throughput,
which allows large amounts of particles to be produced and provides
uniformity.” Decision 6; see also Ans. 5, 8–9, 11–12, 15. The Examiner’s
position is supported by the preponderance of the evidence. See, e.g.,
Atanassova ¶ 113 (“Spray dryers have the advantage of having high
throughput, which allows large amounts of particles to be produced.”).
Appellant did not persuasively refute that a person of skill in the art would
have modified the cited art to use spray drying in order to achieve high
throughput and uniformity. Decision 7. And, as explained above, the
preponderance of the evidence supports that a person of skill in the art’s
choice to use spray drying would inherently result in a single oxide structure.
See also Atanassova ¶ 114. The single oxide structure is the natural result of
the combined prior art elements. See Par Pharm., Inc. v. TWI Parm., Inc.,
773 F.3d 1186, 1195 (Fed. Cir. 2014).
Appeal 2020-001569
Application 13/390,821
5
Millennium Pharm., Inc. v. Sandoz Inc., is distinguishable. There, our
reviewing court held that Millenium offered persuasive evidence that
chemical modification of bortezomib would have been an unattractive
option. 862 F.3d at 1366. Because of this teaching away, reason to modify
the prior art in a manner that would result in the patentee’s claimed chemical
compound was lacking. Id. at 1366–67. And because no one expected the
patentee’s claimed compound or the advantages of that compound to result
from modification of the art, the resultant compound also could not serve to
establish a reason why a person of skill in the art would have modified the
prior art. Id. at 1367. In contrast, the preponderance of the evidence here
establishes, as explained above, that a person of skill in the art would have
utilized spray drying (as taught by Atanassova) to achieve a membrane (as
taught by Knights or Cisar) having an IrTa oxide catalyst (as taught by
Ashizawa or Morimitsu) because of the advantages spray drying would
provide. See, e.g., Decision 6; Ans. 5, 8–9, 11–12, 15; Atanassova ¶ 113
(“Spray dryers have the advantage of having high throughput, which allows
large amounts of particles to be produced.”). In other words, the
preponderance of the evidence of record provides the reason why a person of
skill in the art would have combined the references’ teachings that was
lacking in Millennium Pharm., Inc.
Appellant appears to take the position that we must focus only on
whether the product “would itself have been obvious.” Appeal Br. 4. We
disagree. Courts have long held that recognition of an inherent characteristic
that was unrecognized or unappreciated by those of skill in the art is
insufficient for patentability. Our reviewing court explained this principle
and culminated precedent as follows:
Appeal 2020-001569
Application 13/390,821
6
“[I]nherency may supply a missing claim limitation in an
obviousness analysis.” PAR, 773 F.3d at 1194–95; see also
Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374,
1381 (Fed. Cir. 2018) (“An inherent characteristic of a
formulation can be part of the prior art in an obviousness
analysis even if the inherent characteristic was unrecognized or
unappreciated by a skilled artisan.”). It is long settled that in the
context of obviousness, the “mere recitation of a newly
discovered function or property, inherently possessed by things
in the prior art, does not distinguish a claim drawn to those
things from the prior art.” In re Oelrich, 666 F.2d 578, 581
(C.C.P.A. 1981). The Supreme Court explained long ago that
“[i]t is not invention to perceive that the product which others
had discovered had qualities they failed to detect.” Gen. Elec.
Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945).

Persion Pharm. v. Alvogen Malta Operations Ltd., 945 F.3d 1184, 1190–91,
1196 (Fed. Cir. 2019) (holding that the district court correctly applied
inherency to find that claimed pharmacokinetic limitations of asserted claims
added no patentable weight over combination of cited references). Here, the
preponderance of the evidence supports that it would have been obvious to
follow the Atanassova spray drying process, and the preponderance of the
evidence supports that following this process would inherently result in a
single oxide structure. Even if the art failed to predict single oxide structure
formation, Appellant’s perception of that distinction “is not invention.” Gen
Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. at 240. As such,
Appellant’s arguments do not identify anything misapprehended or
overlooked by the Board.
We deny Appellant’s Request to the extent it raises patentability
arguments raised for the first time in the Request. In the alternative, to the
extent we consider Appellant’s arguments on the merits, the Request is
denied in that the Decision is not modified.
Appeal 2020-001569
Application 13/390,821
7
Outcome of Decision on Rehearing:
Claims 35 U.S.C § Basis Denied Granted
33 103 Cisar,
Ashizawa,
Atanassova,
Ye
33
1, 4–10, 15–
20, 22–32, 34,
35
103 Knights,
Morimitsu,
Atanassova
1, 4–10, 15–
20, 22–32, 34,
35

33 103 Knights,
Morimitsu,
Atanassova,
Ye
33
1, 4, 5, 8–10,
15–20, 22, 23,
26–30
103 Cisar,
Morimitsu,
Atanassova
1, 4, 5,
8–10,
15–20, 22, 23,
26–30

33 103 Cisar,
Morimitsu,
Atanassova,
Ye
33
Overall
Outcome
1, 4–10, 15–
20, 22– 35

Appeal 2020-001569
Application 13/390,821
8
Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Basis Affirmed Reversed
33 103 Cisar,
Ashizawa,
Atanassova,
Ye
33
1, 4–10, 15–
20, 22–32, 34,
35
103 Knights,
Morimitsu,
Atanassova
1, 4–10, 15–
20, 22–32, 34,
35

33 103 Knights,
Morimitsu,
Atanassova,
Ye
33
1, 4, 5, 8–10,
15–20, 22, 23,
26–30
103 Cisar,
Morimitsu,
Atanassova
1, 4, 5, 8–10,
15–20, 22, 23,
26–30

33 103 Cisar,
Morimitsu,
Atanassova,
Ye
33
Overall
Outcome
1, 4–10, 15–
20, 22–35

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).

REHEARING DENIED