Ex Parte Boger et al

Patent Trial and Appeal Board

Jan 5, 2018

13906151 (P.T.A.B. Jan. 5, 2018)

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.
13/906,151 05/30/2013 Thorsten Rolf Boger SP13-154 3671
22928 7590 01/09/2018
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
MAYES, MELVIN C
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
01/09/2018 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORSTEN ROLF BOGER, GREGORY ALBERT MERKEL,
and ZHEN SONG
Appeal 2017-005538
Application 13/906,151
Technology Center 1700
Before TERRY J. OWENS, JULIA HEANEY, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 8—172. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Coming Incorporated, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed November 4,
2016 (“App. Br.”),2.
2 Claims 1—7 and 18—37 stand withdrawn from consideration. Final Office
Action entered April 7, 2016 (“Final Act.”), 2.
Appeal 2017-005538
Application 13/906,151
STATEMENT OF THE CASE
Appellant claims a composite body comprising a formed ceramic
substrate comprising at least about 75% by weight cordierite and having an
elemental sodium content of less than about 1000 ppm, and at least one
catalyst. Claim 8 illustrates the subject matter on appeal and is reproduced
below:
8. A composite body comprising:
a formed ceramic substrate comprising at least about
75% by weight cordierite; and
at least one catalyst,
wherein the formed ceramic substrate has an elemental
sodium content of less than about 1000 ppm, and
wherein the composite body has a Brunauer-Emmet-
Teller (BET) surface area of at least about 55% after thermal
aging at about 800°C for about 5 hours in air containing about
10% by volume H20.
App. Br. 22—23 (Claims Appendix).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner’s Answer entered
December 9, 2016 (“Ans.”):
I. Claims 8—11 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Noguchi (US 2010/0086731 Al; published April 8, 2010);
II. Claims 12—16 under 35 U.S.C. § 103(a) as unpatentable over
Noguchi in view of Bull (US 2011/0020204 Al; published January 27,
2011);
III. Claims 8—11 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Inoguchi (US 4,476,236; issued October 9, 1994); and
IV. Claims 12—16 under 35 U.S.C. § 103(a) as unpatentable over
Inoguchi in view of Bull.
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 8—17 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Office Action, Answer, and below.
Rejections I and III
Appellant argues Rejections I and III together, and presents arguments
directed to only independent claim 8. Br. 8—16. Therefore, we address
Rejections I and III together as argued by Appellant, and decide the appeal
as to these rejections based on claim 8 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Noguchi discloses a cordierite-forming raw material having a sodium
content of 0.08 to 0.15 mass % in terms of sodium oxide. Noguchi H 12,
13. Noguchi discloses that this sodium concentration increases the average
pore size of a honeycomb structure produced with the cordierite-forming
material. Noguchi 112. Noguchi exemplifies producing honeycomb
structures from cordierite-forming raw materials having total Na20 mass
percentages of 0.084 and 0.039, which the Examiner finds correspond to
elemental sodium contents of 620 ppm and 300 ppm, respectively. Noguchi
11 87—91 (Table 1 Ex. 3, Comp. Ex. 1); Final Act. 3.
Noguchi discloses that a catalyst body for purifying exhaust gas can
be formed by applying a catalyst to a honeycomb structure produced from
the cordierite-forming raw material described in the reference. Noguchi
111, 60. Noguchi discloses that suitable catalysts for exhaust gas
purification include SCR catalysts for NOx selective reduction, such as
platinum, rhodium, and palladium noble metals. Noguchi 161. The
Examiner finds that a catalyst body (composite body) formed by depositing
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a noble metal catalyst on the honeycomb structure disclosed in Noguchi
would not lose any surface area on aging, and would therefore have a BET
surface area of at least 55% after thermal aging, as recited in claim 8. Final
Act. 3.
Inoguchi discloses that a cordierite body having “excellent low
[thermal] expansion” can be produced by forming the cordierite body from a
cordierite raw material containing no alkali metals, including sodium.
Inoguchi col. 1,11. 24—31. Inoguchi discloses that such a cordierite body can
be used as a catalyst support for purifying vehicle exhaust gas. Inoguchi col.
2,11. 1—3, 8—11, 15—19. The Examiner finds that the most common catalysts
for purifying vehicle exhaust gas with catalyst supports as suggested by
Inoguchi are noble metals. Final Act. 4. Because this finding is reasonable,
and because Appellant does not challenge it, we accept it as fact. In re
Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). The Examiner finds that a
catalyst support (composite body) formed by depositing a noble metal
catalyst on the catalyst body disclosed in Inoguchi would not lose any
surface area on aging, and would therefore have a BET surface area of at
least 55% after thermal aging, as recited in claim 8. Final Act. 4.
Appellant argues that “claim 8 should be considered in its entirety,
including the thermal aging characterizing limitations.” Br. 8—9. Appellant
contends that neither Noguchi nor Inoguchi teach or suggest thermal aging
of a ceramic substrate with a catalyst (a composite body), or the BET surface
area of a composite body. Id. Appellant argues that Noguchi and Inoguchi,
therefore, fail to assess or even appreciate the effect of thermal aging on the
BET surface area of a composite body, and what the BET surface area of
such a composite body would be after thermal aging. Br. 9—12. Appellant
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asserts that the Examiner fails to provide evidence establishing that the
effects of thermal aging on BET surface area of composite bodies were
known at the time of Appellant’s effective filing date. Br. 13.
However, Noguchi’s disclosure that utilizing a sodium content of 0.08
to 0.15 mass % in terms of sodium oxide in a cordierite-forming raw
material increases the average pore size of a honeycomb structure produced
with the material, and disclosure of the suitability of using such a
honeycomb structure loaded with a noble metal catalyst for purifying
exhaust gas, would have led one of ordinary skill in the art to form a catalyst
body (composite body) by depositing a noble metal catalyst on Noguchi’s
honeycomb structure in order to effectively purify exhaust gas, regardless of
whether the skilled artisan would have recognized the additional advantage
of maintaining the BET surface area after thermal aging of the catalyst body,
as recited in claim 8. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.”); In re Omeprazole Patent Litig., v. Andrx Pharms, Inc.,
483 F.3d 1364, 1373 (Fed. Cir. 2007) (recognition in the prior art is not
necessary when the claimed characteristic or function is inherently present in
the prior art).
Similarly, Inoguchi’s disclosure that eliminating sodium from a
cordierite raw material results in excellent low thermal expansion of a
cordierite body produced with the material, and disclosure of the suitability
of using such a cordierite body loaded with a catalyst for purifying exhaust
gas, in view of the Examiner’s unchallenged official notice that the most
common catalysts used for purifying vehicle exhaust gas with such catalyst
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supports are noble metals, would have led one of ordinary skill in the art to
form a catalyst support (composite body) for purifying exhaust gas having
excellent low thermal expansion by depositing a noble metal catalyst on
Inoguchi’s cordierite body, regardless of whether the skilled artisan would
have recognized the additional advantage of maintaining the BET surface
area after thermal aging of the catalyst support, as recited in claim 8. KSR,
550 U.S. at 419; Omeprazole, 483 F.3d at 1373.
In other words, although Noguchi does not explicitly mention a BET
surface area of at least about 55% after thermal aging under the conditions
recited in claim 8, this property would have naturally flowed from following
Noguchi’s suggestion of forming a honeycomb structure from cordierite-
forming raw material having a sodium content of 0.08 to 0.15 mass % in
terms of sodium oxide, and applying a noble metal catalyst to the
honeycomb structure to form a catalyst body. Similarly, although Inoguchi
does not explicitly mention a BET surface area of at least about 55% after
thermal aging under the conditions recited in claim 8, this property would
have naturally flowed from following Inoguchi’s suggestion of forming a
cordierite body from cordierite-forming raw material that contains no
sodium, and applying a suitable catalyst, such as a noble metal, to the
cordierite body to form a catalyst support. PAR Pharm., Inc. v. TWIPharm.,
Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of inherency, when
applied to obviousness, is present “when the limitation at issue is the ‘natural
result’ of the combination of prior art elements”); Ex parte Obiaya, 227
USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
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otherwise be obvious.”); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(explaining that a chemical composition and its properties are inseparable.);
In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of
record explicitly discusses the [limitation], [applicants’] application itself
instructs] that [the limitation] is not an additional requirement imposed by
the claims on the [claimed invention], but rather a property necessarily
present in [the claimed invention]”).
Appellant further argues that the Examiner fails to provide evidence to
support the assertion that the composite bodies suggested by Noguchi and
Inoguchi would not lose significant surface area on aging. Br. 12—14.
Appellant asserts that the Examiner fails to establish that the BET surface
area after aging recited in claim 9 is “inherently possessed by Noguchi or
Inoguchi.” Br. 14—16.
However, because Noguchi and Inoguchi suggest a catalyst body and
catalyst support, respectively, having a structure that appears to be the same
as, or substantially similar to, the composite body recited in claim 8, the
Examiner has a reasonable basis for determining that Noguchi’s catalyst
body and Inoguchi’s catalyst support would both possess the same
characteristics or attributes as the recited composite body, including the
same BET surface area after aging.
Therefore, the burden shifts to Appellant to show otherwise. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where ... the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”); In re Crish, 393 F.3d
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1253, 1259 (Fed. Cir. 2004) (“[W]hen the prior art evidence reasonably
allows the PTO to conclude that a claimed feature is present in the prior art,
the evidence ‘compels such a conclusion if the applicant produces no
evidence or argument to rebut it.’” (quoting Spada, 911 F.2d at 708 n.3)).
Appellant does not direct us to any persuasive evidence or reasoning
demonstrating that Noguchi’s catalyst body and Inoguchi’s catalyst support
would not have BET surface areas of at least about 55% after thermal aging
under the conditions recited in claim 8. Br. 8—16.
Accordingly, a preponderance of the evidence relied upon in this
appeal supports the Examiner’s conclusion of obviousness, and we therefore
sustain the Examiner’s rejections of claims 8—11 and 17 under 35 U.S.C.
§ 103(a).
Rejections II and IV
Appellant argues Rejections II and IV together, and does not
separately address any of the claims subject to these grounds of rejection.
App. Br. 16—20. Therefore, we address Rejections II and IV together as
argued by Appellant, and decide the appeal as to these rejections based on
representative claim 13. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 13 depends from claim 8 and recites that the at least one
catalyst is chosen from zeolite catalysts. Bull discloses catalytic articles,
including honeycomb structures, which are used to treat exhaust gas and
comprise chabazite (CHA) zeolite catalysts. Bull H 2, 6, 7. Bull discloses
that the catalytic articles can reduce NOx, providing a selective catalytic
reduction (SCR) system. Bull 110.
The Examiner finds that one of ordinary skill in the art would have
been led to apply a chabazite (CHA) zeolite catalyst as disclosed in Bull to
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the honeycomb structure disclosed in Noguchi, and to the cordierite body
disclosed in Inoguchi, because Noguchi discloses that the honeycomb
structure is intended for loading an exhaust gas catalyst, Inoguchi discloses
that the cordierite body is intended for loading an exhaust gas catalyst, and
Bull discloses that chabazite (CHA) zeolite is an effective exhaust gas
catalyst. Final Act. 3,5. The Examiner further finds that composite bodies
formed by applying a chabazite (CHA) zeolite as disclosed in Bull to the
honeycomb structure disclosed in Noguchi, and to the cordierite body
disclosed in Inoguchi, would not be expected to lose significant surface area
after aging, according to Appellant’s Specification. Id.
Appellant argues that “there is an apparent lack of motivation or
suggestion to combine the ceramic bodies of Noguchi and Inoguchi with the
catalyst of Bull based on the references of record.” Br. 16—19. Appellant
contends that the Examiner’s proposed combination of zeolite catalysts as
disclosed in Bull with each of Noguchi and Inoguchi is based on hindsight
gleaned from Appellant’s Specification because Noguchi and Inoguchi do
not disclose the use of zeolite catalysts. Id.
However, as discussed above, Noguchi discloses that a catalyst body
formed by applying a catalyst to the honeycomb structure described in the
reference can be used to purify exhaust gas, while Inoguchi similarly
discloses that a catalyst support formed by applying a catalyst to the
cordierite body described in the reference can be used to purify exhaust gas.
As also discussed above, Noguchi discloses that suitable catalysts for
exhaust gas purification include SCR catalysts for NOx selective reduction.
Inoguchi does not disclose particular catalysts suitable for application to
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Inoguchi’s cordierite body for exhaust gas purification, leaving it to one of
ordinary skill in the art to identify suitable catalysts.
Therefore, contrary to Appellant’s arguments, in view of Bull’s
disclosure that chabazite (CHA) zeolite catalysts can be used effectively in
catalytic articles as SCR catalysts to reduce NOx in exhaust gas, one of
ordinary skill in the art seeking to purify exhaust gas with a catalyst body as
disclosed in Noguchi, or with a catalyst support as disclosed in Inoguchi,
would have been led to utilize a chabazite (CHA) zeolite catalyst in such
articles.
Appellant further argues that even if Bull were properly combined
with either Noguchi or Inoguchi, Bull fails to teach or suggest a BET surface
area of at least about 55% after thermal aging under the conditions recited in
claim 8, from which claims 12 to 16 depend. Br. 19.
However, because the catalyst body suggested by the combined
disclosures of Noguchi and Bull, and the catalyst support suggested by the
combined disclosures of Inoguchi and Bull, appear to have structures that
are the same as, or substantially similar to, the composite body recited in
claim 13, the Examiner has a reasonable basis for determining that such
suggested articles would both possess the same characteristics or attributes
as the recited composite body, including the same BET surface area after
aging.
Therefore, the burden shifts to Appellant to show otherwise. Best,
562 F.2d at 1255; Crish, 393 F.3d at 1259. Because Appellant does not
direct us to any persuasive evidence or reasoning demonstrating that
Noguchi’s catalyst body and Inoguchi’s catalyst support, modified as
suggested by Bull to include a chabazite (CHA) zeolite catalyst, would not
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have a BET surface area of at least about 55% after thermal aging under the
conditions recited in claim 8, a preponderance of the evidence relied-upon in
this appeal supports the Examiner’s conclusion of obviousness. Br. 8—20.
Accordingly, we sustain the Examiner’s rejections of claims 12—16
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1—5, 9, and 10 under
35 U.S.C. § 103(a).
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
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