Saudi Arabian Oil Company et al.

Patent Trials and Appeals Board

Feb 7, 2022

2021001460 (P.T.A.B. Feb. 7, 2022)

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. 15/837,563 12/11/2017 Subhi Mohammed Hassan Al-Jeshi 38136-0142001 2854 26231 7590 02/07/2022 FISH & RICHARDSON P.C. (DA) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER MENON, KRISHNAN S ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 02/07/2022 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUBHI MOHAMMED HASSAN AL-JESHI, AZIZ CHERIFI, DAVID CORNU, and SOPHIE CERNEAUX Appeal 2021-001460 Application 15/837,563 Technology Center 1700 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 “Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Saudi Arabian Oil Company (Appeal Br. 1). Appeal 2021-001460 Application 15/837,563 2 CLAIMED SUBJECT MATTER The claims are directed to a filter comprising a porous ceramic membrane. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A filter comprising: a porous support defining one or more channels therethrough; and a porous ceramic membrane layer on a surface of the porous support defining at least one of the one or more channels, wherein the ceramic membrane layer defines pores having a monomodal distribution with a maximum of about 90 nm or about 160 nm, wherein the ceramic membrane layer comprises an inorganic ceramic composition having the formula SiMPpxpCyNzOmHn, wherein: p is an integer from 0 to 5, wherein p is the number of MPp elements present; each MPp present is independently selected from a p-block element or a d-block element comprising boron, aluminum, tin, gallium, or phosphorus, or a d-block element comprising titanium, zirconium, hafnium, lanthanum, molybdenum, tungsten, cobalt, copper, or zinc;2 for each MP present, xp is the number of atoms present in the formula and can be independently from about 1 to about 60; y is from about 0 to about 60; z is from about 0 to about 60; m is from about 0 to about 40; and n is zero or nonzero, wherein at least one of y and z is nonzero when p is zero, and p is nonzero when y and z are both zero. 2 We interpret this limitation as meaning: “each MPp is independently selected from a p-block element comprising boron, aluminum, tin, gallium, or phosphorus, or a d-block element comprising titanium, zirconium, hafnium, lanthanum, molybdenum, tungsten, cobalt, copper, or zinc.” Appeal 2021-001460 Application 15/837,563 3 REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Nair US 2004/0009865 A1 Jan. 15, 2004 REJECTIONS Claims 1-13 stand rejected under: 1) 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention; 2) 35 U.S.C. § 112(a) as failing to comply with the written description requirement; and 3) 35 U.S.C. § 102(a)(1) or § 103 as anticipated by or obvious over Nair. OPINION Rejection under 35 U.S.C. § 112(b) The relevant inquiry under 35 U.S.C. § 112(b) is whether the claim language, as it would have been interpreted by one of ordinary skill in the art in light of the Appellant’s Specification, sets out and circumscribes a particular area with a reasonable degree of precision and particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) The Examiner concludes that SiMPpxpCyNzOmHn in claim 1, which is the sole independent claim, is unclear because the immediately envisaged interpretation when p=2 would be SiM2x2CyNzOmHn and when p=4 would be SiM4x4CyNzOmHn, and the claim is unclear as to which elements are represented by M2 and M4 (Final 2-3). The Appellant’s Specification states: “In some embodiments, p is 1, M1 is Al, x1 is 1, and the composition has the chemical formula SiAlCyNzOmHn. In some embodiments, p is 2, and the composition has the chemical formula SiM1x1M2x2CyNzOmHn” (Spec. ¶ 29). That disclosure Appeal 2021-001460 Application 15/837,563 4 would have indicated to one of ordinary skill in the art that when p=2, M1 is one of the metals recited in claim 1, M2 is another of the metals recited in claim 1, and x1 and x2 are, respectively, the number of atoms of M1 and M2, and when p=4, the formula includes M1, M2, M3, and M4, in numbers of atoms, respectively, of x1, x2, x3, and x4. The Specification also states: “In some embodiments, p is 0, and the composition has the chemical formula SiCyNzOmHn” (id.), i.e., there is no Mp and, consequently, no xp. The Examiner asks: “What would the formula be reduced to, when y, z, m and n are zero? Wouldn't it be just SiMpxp? In this case what are the possible compounds? This is indeterminable” (Final 3). The formula would be SiMpxp, where M is any of the metals recited in claim 1, and xp is the number of atoms of that metal. Thus, the Examiner has not established that the Appellant’s claims, as they would have been interpreted by one of ordinary skill in the art in light of the Appellant’s Specification, fail to set out and circumscribe a particular area with a reasonable degree of precision and particularity. Accordingly, we reverse the rejection under 35 U.S.C. § 112(b). Rejection under 35 U.S.C. § 112(a) A specification complies with the 35 U.S.C. § 112(a) written description requirement if it conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). The Appellant’s Specification states that “for each MP present, xp is Appeal 2021-001460 Application 15/837,563 5 independently from about 0 to about 60” (¶ 27), whereas claim 1 recites that “for each MP present, xp is the number of atoms present in the formula and can be independently from about 1 to about 60.” The Examiner finds (Ans. 5-6): “The limitation of xp ‘from about 1 to about 60’ appears new matter because the examiner could not find support for this range” (Final 4), and “1-60 or 0-60, explained as ‘number of atoms’ would make the values integers, which is also not in the disclosure. The disclosure is not limited to number of atoms or integers, and these terms atoms and integers do not appear in the disclosure either. The Appellant argues (Appeal Br. 10): [I]f the subscript xp were 0, this would be the same as if an M element were not present. As the claim recites, “for each Mp present, xp is the number of atoms present in the formula and can be independently from about 1 to about 60.” (Emphasis added). Thus, according to the plain language of the claim, it does not matter whether the term is 1-60 or 0-60 if an element is not present. The Examiner does not establish that the Appellant’s disclosure would have conveyed with reasonable clarity to those skilled in the art that the inventor was in possession of an xp range of about 0 to about 60, but not the narrower range of about 1 to about 60, or that “about 1 to about 60,” but not “about 0 to about 60,” is limited to integers. Thus, the Examiner has not shown lack of written descriptive support in the Appellant’s original disclosure for the filter as presently claimed. We therefore reverse the rejection under 35 U.S.C. § 112(a). Rejections under 35 U.S.C. §§ 102(a)(1) and 103, and New Ground of Rejection We enter the following new ground of rejection under Appeal 2021-001460 Application 15/837,563 6 37 C.F.R. § 41.50(b): Claims 1-13 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. The Appellant’s sole independent claim, i.e., claim 1, requires that “the ceramic membrane layer defines pores having a monomodal distribution with a maximum of about 90 nm or about 160 nm.” The Appellant’s written descriptive support for that claim limitation is in Specification Example 1 (“the ceramic membrane was found to have a monomodal distribution with a maximum at 160 nm” (Spec. ¶ 57)), and Example 2 (“the ceramic membrane was found to have a monomodal distribution with a maximum at 90 nm” (Spec. ¶ 59)). The Appellant’s Specification does not indicate the meaning of “maximum” in the claims. The Appellant argues that “one of ordinary skill in the art would recognize that the phrase ‘a monomodal distribution with a maximum of about 90 nm or about 160 nm’ specifically refers to the peak values of the monomodal distributions, not to the point at which the distribution returns to the base axis” (Appeal Br. 13-14), and that “one of ordinary skill in the art interpreting the specification would realize that the terms ‘maxima’ and ‘maximum’ reported for a pore size measurement curve in the present specification would correspond to the measured pore size with the maximum probability of being present. This is the point that the Examiner calls [(Ans. 8)] the ‘average’ or ‘peak’ of the distribution” (Reply Br. 5). The Appellant’s Specification states that “[t]he ceramic membrane pores may have a mean [(i.e., average)] diameter of about 2 nm to about 50 nm” (Spec. ¶ 7). If the average or peak of the pore distribution is 90 nm Appeal 2021-001460 Application 15/837,563 7 or 160 nm as argued by the Appellant, then the pore distribution’s mean cannot have the value of about 2 to about 50 nm in the Specification. That inconsistency renders unclear the meaning of the Appellant’s claim term “maximum” and, therefore, renders claims 1-13 indefinite. In some instances it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances, however, it may be impossible to determine whether claimed subject matter is anticipated by or would have been obvious over references because the claims are so indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). For the reason discussed above, we consider the Appellants’ claims to be sufficiently indefinite that application of the prior art to the claims is not possible. On this basis, we do not sustain the rejections under 35 U.S.C. §§ 102(a)(1) and 103. This reversal is not a reversal on the merits of the rejections but, rather, is a procedural reversal predicated upon the indefiniteness of the claims. CONCLUSION The Examiner’s rejections are reversed. A new ground of rejection is entered under 37 C.F.R. § 41.50(b). Appeal 2021-001460 Application 15/837,563 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1-13 112(b) Indefiniteness 1-13 1-13 1-13 112(a) Written Description 1-13 1-13 102(a)(1) Anticipation 1-13 1-13 103 Obviousness 1-13 Overall Outcome 1-13 1-13 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. REVERSED; 37 C.F.R. § 41.50(b)