W. R. GRACE & CO.-CONN.

Patent Trials and Appeals Board

Oct 28, 2020

14269905 - (D) (P.T.A.B. Oct. 28, 2020)

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.
14/269,905 05/05/2014 Ranjit KUMAR W9739-02 3042
30633 7590 10/28/2020
W.R. GRACE & CO.-CONN.
7500 GRACE DRIVE
COLUMBIA, MD 21044
EXAMINER
LI, JUN
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
10/28/2020 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 RANJIT KUMAR
Appeal 2019-005898
Application 14/269,905
Technology Center 1700
Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 29–35 and 39–41. See Final Act. 4, 9.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “W.R.
GRACE & CO.-CONN.” Appeal Br. 2.
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Application 14/269,905
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CLAIMED SUBJECT MATTER
“The present invention relates to novel compositions bound by an
alumina binder obtained from aluminum sulfate, the process of preparing the
compositions and the process of using the compositions.” Spec. ¶ 1. Claim
23, reproduced below, is illustrative of the claimed subject matter:
23. A method of forming a particulate composition of matter,
said method comprising, in this order, a) forming an aqueous
slurry comprising a plurality of inorganic metal oxide particles
and aluminum sulfate in an amount sufficient to provide at least
5 wt % alumina in a final particulate inorganic metal oxide
composition;
b) optionally, milling the slurry;
c) spray drying the slurry to form inorganic metal oxide
particles bound by aluminum sulfate;
d) optionally, calcining the aluminum sulfate bound metal
oxide particles;
e) forming a binder comprising alumina by contacting the
aluminum sulfate bound inorganic metal oxide particles with an
aqueous base solution at a pH of about 7 to about 13;
and;
f) recovering and drying the resulting inorganic metal
oxide composition to obtain the final inorganic metal oxide
composition bound with the alumina obtained from aluminum
sulfate and having a Davison Index of less than 30.
Claims App. (Appeal Br. 14).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nozemack US 4,542,118 Sept. 17, 1985
Riley US 2005/0040080 A1 Feb. 24, 2005
Stamires US 2006/0096891 A1 May 11, 2006

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REJECTIONS2
Claims 23–26 and 40 are rejected under pre–AIA 35 U.S.C. § 103(a)
as being unpatentable over Nozemack in view of Riley. Final Act. 4.
Claims 27–35, 39, and 41 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over Nozemack in view of Riley and
Stamires. Final Act. 9.
OPINION
Claim 233
Appellant argues that the Examiner erred in finding Nozemack
teaches or suggests a method including “forming a binder comprising
alumina by contacting the aluminum sulfate bound inorganic metal oxide
particles with an aqueous base solution at a pH of about 7 to about 13” as
recited in claim 23. Appeal Br. 5. Appellant argues that “Nozemack merely
discloses that the particulate composites comprising aluminum chlorohydrol
are reacted with ammonia in the absence of free liquid water.” Id.
This argument is not persuasive of error because it does not address
the Examiner’s finding in support of the rejection. Specifically, the
Examiner finds that “Nozemack discloses such reaction can be achieved
with aqueous ammonia solution wherein pH is above 8[.]” Advisory Action
of October 16, 2018 (citing various portions of Nozemack). Appellant does

2 The Examiner rejected claims 23–35 and 39–41 under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre–AIA), first paragraph (Final Act. 2) and
subsequently withdrew the rejection. Advisory Action of October 16, 2018.
This rejection is not before us.
3 Appellant argues for the patentability of claims 23–26 and 40 as a group
with claim 23 being the representative claim. See Appeal Br. 5–11. These
claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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not address or dispute this finding. Appeal Br. 5–7. Because that finding is
reasonable (see Nozeman 4:23–27, 6:1–40) and the Appellant has not
challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964). No reversible error has therefore been identified in this
aspect of the obviousness rejection.
Appellant next argues that Riley discloses “a long list of suitable
precursors for a binder material” while acknowledging that Riley discloses
both aluminum chlorohydrol and aluminum sulfate as binder precursors.
Appeal Br. 7. Appellant’s argument is unpersuasive as it is not supported by
evidence in the record. Contrary to Appellant’s argument, Riley provides
that “[s]uitable precursors are, e.g., alkali metal aluminates (to obtain an
alumina binder) . . . chlorohydrol, aluminum sulfate, or mixtures thereof.”
Riley ¶ 78, cited in Final Act. 6, 12–13. The Examiner’s finding that a
skilled artisan would have found it obvious “to adopt aluminum sulfate as
shown by Riley to substitute aluminum chlorohydrol of Nozemack to make
an alumina binder containing catalyst composition” (Final Act. 6) is
therefore supported by evidence in the record. See Final Act. 6 (explaining
that it is “because both aluminum chlorohydrol and aluminum sulfate can be
used for successfully making alumina binder containing catalyst
composition and substituting equivalents known for the same purpose is well
within the scope of one [of] ordinary skill in the art”).
Appellant’s argument that aluminum chlorohydrol and aluminum
sulfate have different decomposition temperatures (Appeal Br. 7) is not
persuasive of error because it does not explain why a skilled artisan would
have been deterred from using either compound when making a binder in
light of the difference in decomposition temperatures.
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Appellant also argues that the proposed substitution would change of
the principle of operation of Nozemack because “using aluminum
chlorohydrol in the manufacturing process is the primary invention of
Nozemack.” Appeal Br. 8. Appellant’s argument, however, is based on the
premise that the reaction in Nozemack takes place “in the absence of free
liquid water.” Appeal Br. 8. As noted supra, the teaching of Nozemack is
not limited to such a reaction and Appellant’s argument is unpersuasive as it
is unsupported by the record. With regard to Riley, Appellant argues that
“[n]one of Examples in Riley discloses using aluminum sulfate as a binder
material.” Id. at 9. We are not persuaded by these arguments first and
foremost because the arguments attack the references individually rather
than the prior art teaching as a whole. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986)
Moreover, Appellant’s arguments are not persuasive because the
arguments do not address the Examiner’s rationale in support of the
rejection. Compare Appeal Br. 8–10, with Final Act. 6–7, 14 (explaining, for
example, that “one of ordinary skill in the art would have been motivated to
combine these references and make the modification because they are drawn
to same technical fields, constituted with same ingredients and share
common utilities, and pertinent to the problem which applicant concerns
about”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
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art is obvious,” the answer depends on “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417. In this case, Appellant has not shown that substituting
aluminum chlorohydrol with aluminum sulfate for the formation of a binder
is beyond the ordinary skill.
Appellant’s argument that the use of aluminum sulfate yields
unexpected results is unsupported by the record. “To be particularly
probative, evidence of unexpected results must establish that there is a
difference between the results obtained and those of the closest prior art, and
that the difference would not have been expected by one of ordinary skill in
the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). “Mere improvement
in properties does not always suffice to show unexpected results. In our
view, however, when an applicant demonstrates substantially improved
results . . . and states that the results were unexpected, this should suffice to
establish unexpected results in the absence of evidence to the contrary.” In
re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
In this case, the record lacks, among others, a showing of what would
have been expected. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369
(Fed. Cir. 2007) (stating that a proper evaluation of a showing of unexpected
results considers what properties were expected). The record likewise lacks a
showing that the purported improvement is unexpected. See In re Soni, 54
F.3d at 751. Appellant refers to a declaration “dated October 3, 2018”
(Appeal Br. 10), but that declaration has not been entered into evidence and
is therefore not part of the record. The Advisory Action of October 16, 2018
specifically states that the declaration will not be entered “because applicant
failed to provide a showing of good and sufficient reasons why the affidavit
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or other evidence is necessary and was not earlier presented.” Advisory
Action of October 16, 2018 at 1 (item 9). Appellant’s argument is therefore
unpersuasive and unsupported by evidence.
Claim 274
Appellant argues that Nozemack does not teach or suggest “a method
comprising calcining the spray-dried particles before forming a binder
comprising at least 5 wt% alumina, as recited in claim 27.” Appeal Br. 11.
The rejection of claim 27, however, is based on the Examiner’s finding that
Riley teaches or suggests this particular limitation. Ans. 16; Final Act. 9.
Appellant does not dispute the Examiner’s findings with regard to Riley. See
Reply Br. 5–6; see also Appeal Br. 11–12. No reversible error has therefore
been identified here.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–26, 40 103(a) Nozemack, Riley 23–26, 40
27–35, 39,
41
103(a) Nozemack, Riley,
Stamires
27–35, 39,
41

Overall
Outcome:

23–35, 39–
41

4 Appellant argues for the patentability of claims 27–35, 39, and 41 as a
group with claim 27 being the representative claim. See Appeal Br. 11–12.
These claims stand or fall together. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
Appeal 2019-005898
Application 14/269,905
8

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED