Ex Parte Liu et al

Patent Trial and Appeal Board

Oct 19, 2016

12706742 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121706,742 02/17/2010
109171 7590 10/21/2016
Womble Carlyle Sandridge & Rice, LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30537-7037
FIRST NAMED INVENTOR
Xinsheng Liu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
B248 2640US.l (0144.1) 1264
EXAMINER
FORREST, MICHAEL
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
IPDocketing@wcsr.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINSHENG LIU, YE LIU, P ASCALINE TRAN, MICHAEL
GALLIGAN, WENYONG LIN, and KESHA V ARAJA ALIVE 1
Appeal2015-004154
Application 12/706,742
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-10.2 We have jurisdiction pursuant to
35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is BASF Corporation.
Appeal Brief filed August 21, 2014 ("App Br.") 2.
2 Pending claims 11-21 stand withdrawn from consideration. Final Office
Action entered February 26, 2014 ("Final Act.") 2.
Appeal2015-004154
Application 12/706,742
CLAIMED SUBJECT MATTER
Appellants' claimed invention is directed to a catalyst article
comprising a first catalytic layer formed on a substrate and a second
catalytic layer formed on the first catalytic layer. Spec. Abstract. The first
catalytic layer comprises palladium impregnated on a ceria-free oxygen
storage component and platinum impregnated on a refractory metal oxide,
and the second catalytic layer comprises platinum impregnated on an oxygen
storage component and rhodium impregnated on a zirconia-coated or yttria-
coated alumina. Id.
Claim I-the sole independent claim-is illustrative:
1. A catalyst article for use in an internal combustion engine
compnsmg:
a first catalytic layer formed on a substrate, wherein the first
catalytic layer comprises palladium impregnated on a ceria-free
oxygen storage component and platinum impregnated on a
refractory metai oxide, and;
a second catalytic layer formed on the first catalytic layer, the
second catalytic layer comprising platinum impregnated on an
oxygen storage component and rhodium impregnated on
zirconia-coated or yttria-coated alumina, wherein the second
catalytic layer does not contain palladium,
wherein the catalyst article is effective to reduce nitrogen
oxides in exhaust gas from the internal combustion engine.
App. Br. 18 (Claims Appendix).
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Application 12/706,742
REJECTIONS
The Examiner maintains the following obviousness rejections under
35 U.S.C. § 103(a): 3
I. Claims 1 and 6-10 over Sung (US 5,948,723, issued
September 7, 1999) and Kawamoto et al. (US 2006/0217263 Al,
published September 28, 2006).
II. Claims 2 and 3 over Sung, Kawamoto, and Hu et al. (US
2003/0061860 Al, published April 3, 2003).
III. Claims 4 and 5 over Sung, Kawamoto, and Narula et al. (EP
0808800 A2, published November 26, 1997).
DISCUSSION
Having carefully reviewed the Examiner's rejections in light of the
arguments advanced by Appellants in their Appeal Brief, we are not
persuaded that the Examiner errs reversibly in concluding that claims 1-10
and 35 are unpatentable for obviousness. We add the following for
emphasis.
Rejection/
Appellants argue claims 1 and 6-10 as a group on the basis of claim 1,
to which we limit our discussion. App. Br. 11-15.
The Examiner relies on Sung for its disclosure of a catalyst composite
comprising a lower layer (first layer) in which palladium is supported on a
cerium-free oxygen storage component and platinum is supported on a
refractory oxide, and an upper layer (second layer) in which platinum is
supported on a cerium-containing oxygen storage component and rhodium is
3 Examiner's Answer entered December 1 7, 2014 ("Ans.").
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Application 12/706,742
supported on alumina. Final Act. 5---6. The Examiner finds that Sung
discloses that the catalyst composite reduces nitrogen oxides in exhaust gas
emissions. Final Act. 6. The Examiner acknowledges that Sung does not
disclose that the rhodium in the upper layer of the catalyst is impregnated on
zirconia-coated or yttria-coated alumina, and relies on Kawamoto's
disclosure of a catalyst containing an upper layer comprising rhodium
carried on alumina particles coated with zirconium dioxide. Id. The
Examiner finds that Kawamoto discloses that the zirconium dioxide coating
stabilizes the rhodium over a long period of time. Final Act. 6-7. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to apply a surface coating of zirconia to
the rhodium supported on alumina in the upper layer of the catalyst
disclosed by Sung to stabilize the rhodium activity over a long period of
time as disclosed by Kawamoto. Final Act. 7.
Appeiiants argue that Sung discloses a cataiyst in which an oxygen
storage component is optionally included in the first layer of the catalyst,
and Appellants contend that if an oxygen storage component is included in
the first layer of the catalyst, it comprises cerium. App. Br. 12.
However, Appellants' arguments are contrary to the express
disclosures of Sung. Specifically, Sung discloses that an oxygen storage
component can optionally be included in the first layer of the catalyst, and
further discloses that as an alternative to an oxygen storage component
comprising cerium, "other oxygen storage compositions can be included in
the first layer." Sung col. 8, 11. 1-18. Sung explicitly delineates four
particular oxygen storage component compositions suitable for use in the
first catalyst layer, three of which contain ceria, but one of which contains
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Application 12/706,742
"praseodymia components." Sung col. 8, 11. 59---66, referencing col. 8,
11. 10-16 and col. 8 11. 42--49. Sung also discloses that the oxygen storage
component of the first layer is "preferably at least one oxide of a metal
selected from the group consisting of rare earth metals, most preferably a
cerium or praseodymium compound with the most preferred oxygen storage
component being cerium oxide (ceria)." Sung col. 17, 11. 3-8. Accordingly,
Sung's disclosures are not limited to only cerium-containing oxygen storage
components in the first catalyst layer as Appellants maintain. To the
contrary, Sung discloses that although the preferred oxygen storage
component in the first catalyst layer is ceria, any rare earth metal oxide,
including praseodymia, can be used as the oxygen storage component in the
first layer of the catalyst. Sung col. 17, 11. 3-8.
Appellants also argue that Sung discloses that the oxygen storage
component in the first catalyst layer must comprise cerium because,
Appeiiants contend, Sung discloses in coiumn 8, iines 59----67 that, in
addition to ceria-containing oxygen storage components, the first layer of
the catalyst can contain other oxygen storage components. App. Br. 12.
However, this argument is again contrary to Sung's express disclosures.
Specifically, the portion of Sung cited by Appellants actually discloses (as
discussed above) that the oxygen storage component of the first layer can
comprise the following four alternative compositions having the indicated
components: (1) a diluent component, a cerium component, a neodymium
component, and a praseodymium component ("a first oxygen storage
composition as recited above [col. 8, 11. 10-16] for use in the first layer");
(2) a zirconia component, a cerium component, a neodymium component,
and a praseodymium component ("the oxygen storage component containing
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Application 12/706,742
zirconia, ceria, neodymia and praseodymia as recited above [col. 8, 11. 42-
49]"); (3) praseodymia components; and (4) ceria groups components,
preferably cerium oxide. Sung col. 8, 11. 59---66. The third composition
contains praseodymia components and does not contain ceria, and thus,
contrary to Appellants' arguments, Sung does disclose an oxygen storage
component for the first catalyst layer that does not contain ceria, as recited in
claim 1.
Appellants also argue that Sung discloses a genus of precious metals
supported on oxygen storage components, and Appellants argue that Sung
does not disclose or suggest the species of palladium impregnated on a ceria-
free oxygen storage component in the first layer. App. Br. 12-13.
Appellants contend that picking and choosing from among any of the
possible oxygen storage components and any of the possible precious metals
disclosed in Sung would lead to many combinations that would not result in
the claimed invention. App. Br. 13. Appeiiants further argue that
Kawamoto does not overcome the deficiencies of Sung, and does not
provide guidance towards the claimed combination. Id.
A reference is available for all that it teaches to one of ordinary skill
in the art. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972); Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
'813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose."). As discussed
above, one out of four alternative oxygen storage components explicitly
disclosed in Sung as suitable for use in the first layer of Sung's catalyst is
ceria-free (contains praseodymia components). Sung col. 8, 11. 59---66. Sung
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also explicitly discloses a preferred catalyst composite in which the first
layer comprises a palladium component and an optional platinum
component. Sung col. 8, 11. 54--58. Accordingly, one of ordinary skill in the
art, armed with the knowledge of the disclosures of Sung and Kawamoto,
reasonably would have been led to a catalyst article comprising a first
catalytic layer that comprises palladium impregnated on a ceria-free oxygen
storage component, as recited in claim 1.
Appellants further argue that paragraphs 55, 56, and 59 of the
Specification and Figure 1 demonstrate that the claimed combination of
palladium impregnated on a ceria-free oxygen storage component provides
performance advantages for exhaust gas treatment relative to palladium
impregnated on a ceria-containing oxygen storage component, which would
not have been predictable to the person of ordinary skill in the art. App. Br.
15.
The burden of anaiyzing and expiaining Specification data to support
nonobviousness rests with Appellants. In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). In the present case, Appellants do not explain why the
limited data for two catalysts, the composition of one of which is not even
set forth in the Specification (Spec. i-fi-150-56, 59) 4, is sufficient to show that
the full scope of the catalyst articles covered by claim 1 imparts unexpected
results relative to the catalysts of the closest prior art-Sung-that comprise
a ceria-free oxygen storage component in the first layer, as discussed above.
App. Br. 15. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
4 Example 4 of the Specification states only "a catalyst article according to
the invention," and does not describe the materials used to prepare the
catalyst or the composition of the catalyst. Spec. i1 59.
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1991) ("[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art."); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming
that the results were unexpected, Harris needed to show results covering the
scope of the claimed range. Alternatively Harris needed to narrow the
claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978)
("Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for 'it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."') (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)).
Further, Appellants fail to direct us to any statement in the
Specification attesting to the unexpected nature of the relied-upon data, or to
any other persuasive evidence or averment evincing that these results would
have been unexpected by one of ordinary skin in the art at the time of the
invention. App. Br. 15. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed.
Cir. 1997) ("Geisler made no such assertion [that results were unexpected]
in his application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132 .
. . . Instead, the only reference to unexpected results was a statement by
Geisler's counsel ... that Geisler's results were 'surprising."').
Thus, Appellants do not meet their burden of demonstrating that the
claimed invention imparts unexpected results sufficient to rebut the
Examiner's prima facie case of obviousness.
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Rejections II and III
In addressing the separate rejections of claims 2-5, Appellants rely on
contentions that the Examiner errs in rejecting the base claim, independent
claim 1, from which claims 2-5 depend, and argue that the additional
references relied upon by the Examiner in the rejections of these claims fail
to remedy the deficiencies of Sung. App. Br. 15-16. Appellants further
argue that the evidence of unpredictably improved and unexpected results
for the claimed catalyst article provided in the Specification and discussed
above overcomes any prima facie case of obviousness for claims 2-5. App.
Br. 16.
However, because we are not persuaded of reversible error in the
Examiner's rejection of claim 1, and because Appellants do not meet their
burden of demonstrating that the claimed invention imparts unexpected
results sufficient to rebut or outweigh the Examiner's prima facie case of
obviousness as discussed above, we aiso sustain the rejections of claims 2-5
under 35 U.S.C. § 103(a).
DECISION
In view of the foregoing, the Examiner's rejections of claims 1-10
and 35 under 35 U.S.C. § 103(a) are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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