Ex Parte Succi et al

Patent Trial and Appeal Board

Aug 12, 2016

13866875 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/866,875 04/19/2013
45965 7590
TIPS GROUP
960 San Antonio Road
Suite 200
Palo Alto, CA 94303-4921
08/16/2016
FIRST NAMED INVENTOR
MARCOSUCCI
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.
SAESP071.US01 1045
EXAMINER
JONES, CHRISTOPHER P
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
phickman@tipsgroup.com
gvouraki@tipsgroup.com
tj ellison @tips group. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte MARCO SUCCI1
and Cristian Landoni
Appeal2016-0057042
Application 13/866,875
Technology Center 1700
Before MARK NAGUMO, A VEL YN M. ROSS and LILAN REN,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Marco Succi and Cristian Landoni ("SAES") timely appeal under
35 U.S.C. § 134(a) from the Final Rejection3 of claims 7, 9-12, and 17-22,
which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6(b).
We affirm.
1 The Real-Party-in-Interest is identified as SAES Getters S.p.A. ("SAES").
(Appeal Brief, filed 20 October 2015 ("Br."), 1.)
2 A petition to participate in the Patent Prosecution Highway program under
37 C.F.R. §1.102(a), filed 11July2014, was granted on 23 October 2014.
3 Office action mailed 9 April 2015 ("Final Rejection"; cited as "FR").
Appeal2016-005704
Application 13/866,875
A. Introduction4
OPINION
The subject matter on appeal relates to an apparatus and catalytic
system for purifying nitrous oxide (N20). The '875 Specification reveals
that high purity nitrous oxide is useful in processes such as chemical vapor
deposition, selective oxidation, and rapid thermal oxynitridation processes in
semiconductor manufacturing. (Spec. 1 [0003].) Impurities such as C02,
H20, and CO are said to be detrimental and must be removed from N20, but,
due to the similar condensation temperatures of C02 and N20, C02 cannot
be removed by standard industrial distillation processes. (Id. at [0005].)
Thus a process that can be conducted at room temperature with high
efficiency and without the need for external cooling apparatus is said to be
desirable. (Id. at 2 [0008].)
Claim 7 is representative and reads:
A room temperature regenerable N20 purifier comprising
a vessel having
an impure N20 inlet and
a purified N20 outlet,
an active portion being completely filled with an N20
purification material consisting essentially of nickel
oxide (NiO) and optional elemental nickel (Ni),
where the Ni weight ratio over NiO is less than 5%,
the surface area of the nickel oxide and the optional
elemental nickel is greater than 100 m2 I g,
4 Application 13/866,875, Nitrous oxide regenerable room temperature
purifier and method, filed 19 April 2013, claiming the benefit of an
application filed in Italy on 24 April 2012. We refer to the
'"875 Specification," which we cite as "Spec."
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Application 13/866,875
whereby impurities in N20 flowing through the vessel
are removed by the N20 purification material at room
temperature[.]
(Claims App., Br. 12; indentation, paragraphing5, and emphasis added.)
The other independent claims, claims 17 and 18, require at least a pair
of regenerable purifiers, a gas-handling manifold, and automatic controls
(claim 17) or heaters capable of heating the vessels to 150-300°C
(claim 18).
The Specification provides definitions of the italicized terms, which
we present in thematic order, rather than in the order of occurrence.
We begin with the meaning of the term "N20 purification material."
The Specification states that, "[a ]s used herein, the terms 'purification
media,' 'material' and the like shall mean a material with the characteristics
in terms of NiO/Ni weight ratio and surface area as describe[ d]."
(Spec. 5 [00020], emphasis added.) More particularly, the Specification
discloses that a preferred embodiment uses a purification material having "a
surface area of at least 100 m2/g and the NiO/Ni weight ratio is equal or
higher than 5." (Id.) "In an example embodiment," the Specification
continues, "the purification material is essentially completely oxidized such
that it consists essentially ofNiO (e.g. the Ni weight fraction over NiO is
less than 5%)." (Id.) The Specification teaches further that "the purification
material can also include inert materials" such as amorphous silica or
5 In compliance with 37 C.F.R. § l.75(i) (2014): "Where a claim sets forth a
plurality of elements or steps, each element or step of the claim should be
separated by a line indentation."
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Application 13/866,875
magnesium oxide as high surface area supports for the NiO and the Ni.
(Id. at [00021].)
The Specification defines the term "active portion" by reference to the
purification material in the following words: "a portion of the vessel
containing the purification material is defined as an 'active portion' of the
vessel and defines an internal volume of the active portion."
(Spec. 3 [00014].)
Finally, the Specification instructs that "the method for purifying N20
is carried out at room temperature (e.g. at about 20-25 °C)."
(Id. at 5 [00021].)
The Examiner maintains the following ground of rejection6' 7, 8 :
Claims 7, 9-12, and 17-22 stand rejected under 35 U.S.C. § 103 in
view of Succi. 9
6 Examiner's Answer mailed 8 March 2016 ("Ans.").
7 Because the Application was filed after 16 March 2013, we refer to the
AIA version of Title 35, United States Code.
8 The Examiner has withdrawn a rejection of claims 18-22 under
35U.S.C.§l12(b) in response to an amendment filed under 37 C.F.R. §116
on 14 July 2015, that was entered 30 July 2015 (Advisory Action, "Adv.").
(Ans. 2.)
9 Marco Succi and Carolina Solcia, Hydrogen purification, U.S. Patent
No. 6,436,352 Bl (2002) (assigned to SAES, the Real-Party-in-Interest in
this appeal).
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Application 13/866,875
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
SAES bases the majority of its arguments for patentability on
limitations recited commonly in independent claims 7, 17, and 18. (Br. 6-9,
part IV.BJ.a.) SAES fails to comply with 37 C.F.R. § 41.37(c)(l)(iv) in that
the Brief does not identify particular claims that recite other limitations for
which, in SAES' s view, the Examiner failed to provide adequate evidence
and reasoning to support obviousness. (E.g., Br. 9-10, part IV.B.I.b.) We
shall address these issues to the extent they arise in the independent claims,
with which the respective dependent claims stand or fall.
The Examiner holds that the claimed N20 purifiers would have been
obvious in view of the gas-purifying apparatus described by Succi. Succi
shares the same lead inventor and is assigned to the present Real-Party-in-
Interest. Moreover, Succi is described in the Specification.
(Spec. 5 [00023] and 10 [00047], referring to US patent 6,436,352.)
We may therefore assume, without prejudice, full knowledge and
understanding of the teachings of Succi on the part of appellant SAES.
Gas purifying apparatus 100 described by Succi is illustrated in
Figure 1, which is reproduced on the following page. Impure gas (i.e.,
hydrogen, contaminated with carbon monoxide, and other impurities,
namely carbon dioxide, oxygen, nitrogen, water, and methane, singly or in
mixtures: Succi, col. 2, 11. 35-38) is introduced via inlet 102. Chambers 106
are filled with a supported Ni/NiO catalyst 110, which "can be followed or
proceeded [sic] by a sorbing bed" of molecular sieves 111. (Id. at col. 3,
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11. 3-6.) In this regard, Succi teaches that "[c]hambers 106, 106' may in
addition contain a natural or synthetic molecular sieve 111 to better promote
the removal of carbon dioxide .... " (Succi col. 3, 1. 67, to col 4, 1. 2;
emphasis added.) Thus, Succi teaches that the presence of molecular
sieves 111 is optional. The disclosure that the molecular sieves "better
promote the removal of carbon dioxide" also indicates that the Ni/NiO
catalyst removes at least some C02 from the hydrogen gas stream.
{Succi Figure 1 is reproduced below}
{Succi Fig. 1 shows a hydrogen purification apparatus}
Succi reveals that "[t]he chambers 106, 106' can also remove moisture
down to trace levels, but do not remove nitrogen or methane." (Id. at col. 4,
11. 3-5.) In particular, Succi teaches that "it is possible to obtain a partially
purified hydrogen-gas-mixture containing only a second class of impurities
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Application 13/866,875
which are nitrogen and methane." (Id. at 11. 6-9; emphasis added.) "The
partially purified gas-mixture leaves preliminary purification chambers 106,
106' entering a final purification chamber 112 .... " (Id. at 11. 9-11.) In
Succi, Example 1, chamber 112 is filled with Ti2Ni, and is operated at high
temperature, 550°C. (Id. at 11. 57-60.) The only role Succi describes
expressly for purification chamber 112 is the removal of methane.
(Id. at col. 4, 1. 64, to col. 5, 1. 7.) This conclusion is strengthened by Succi's
teachings that the partially purified gas exiting preliminary purification
chamber 106 contains "only a second class of impurities which are nitrogen
and methane." (Succi, col. 4, 11. 6-9.)
SAES first argues that "Succi does not describe a vessel having an
active portion that is completely filled with an N20 purification material [as
recited in the claims]." (Br. 6, 11. 9-10; emphasis omitted.) Rather, SAES
urges, Succi describes a two-stage purification system with two reaction
zones, "which, together, comprise the active portion of the purification
apparatus." (Id. at 7, 11. 18-20.) "There is," SAES continues, "no disclosure
in Succi that the entire active portion of the purifier is filled a purification
material" as recited in the claims. (Id. at 11. 20-22.)
First, as the Examiner points out (Ans. 3, 11. 1-2), the claimed purifier
comprises a vessel having "an active portion being completely filled" with
the Ni/NiO catalyst (emphasis added). Thus, the plain language of the claim
permits the presence of other vessels, and those vessels may contain active
materials.
Second, the Examiner did not err in reading the "active portion" solely
on "the portion containing purification material 110" (FR 3, 11. 18-20).
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Although claim terms that are not defined expressly in the Specification are
to be given the broadest reasonable interpretation, from the perspective of a
person having ordinary skill in the art, in light of the disclosure in the
Specification, the applicants, being their own lexicographer, are free to
provide express definitions. Such express definitions override any more
"general" interpretation. As outlined supra at 3--4, the Specification defines
the term "active portion" in terms of a purification material
(Spec. 3 [00014]), which is in tum is defined "with the characteristics in
terms ofNiO/Ni weight ratio and surface area as described" in the
Specification (id. at 5 [00020]). Thus, the '875 Specification itself limits the
"active material" to NiO and optional Ni on inert carriers. The "active
portion" is therefore the region that contains the NiO/Ni active material. If
that region contains only NiO/Ni catalyst, and is filled, that region meets the
"active region" recited by the claims.
As a consequence of this definition, molecular sieves that remove C02
from a mixture of gases are not included in the class of "purification
materials," so regions of vessels 106 that contain such sieves 111 are not
"active portions" of vessels 106. Similarly, even if the TbNi removes some
C02, a proposition that has not been established on the present record, it is
not an "active material" according to the '875 Specification. 10
10 In the event of further examination, we direct the attention of the
Examiner and of SAES to Succi's disclosure (Succi col. 3, 1. 67, to col 4,
1. 2; quoted supra at 5) that the presence of the molecular sieves 111 is
optional. Thus, Succi appears to suggest a vessel filled with NiO/Ni that is
capable of removing C02 from a gas stream. Whether this suggestion
suffices, possibly in combination with other prior art disclosures, to render
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SAES urges (Br. 7-8) that the Examiner incorrectly dismisses the
recitation in both the preambles (claims 7, 17) and in the bodies (claims 7,
17, 18) of purification at room temperature as mere statements of intended
use that do not limit the structure of the claimed purifier (FR 3, 1. 23, to 4,
1. 5). It is well settled that such a functional limitation may be very broad, as
it encompasses any "structure"-including chemical compositions-that
will perform the recited function. In re Swinehart, 439 F.2d 210, 213
(CCPA 1971) ("'Functional' terminology may render a claim quite broad.
By its own literal terms a claim employing such language covers any and all
embodiments which perform the recited function."). A "structure" that will
not perform the function does not meet the room temperature limitation of
the claim. Thus, the Examiner erred to the extent that this limitation was
ignored.
However, when the PTO shows that a reference "structure", more
likely than not, is capable of performing the recited function, the burden
shifts to the applicant to show error in that conclusion. See, e.g., In re Crish,
393 F.3d 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 In re Spada,
911 F.2d 705, 708 n.3)).
In this case, the Examiner finds (FR 4, 1. 8-9) that Succi discloses an
Ni/NiO catalyst in Example 1, in which 5% by weight of the atomic nickel is
obvious any given claim we leave to the Examiner and SAES to consider in
the first instance.
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Application 13/866,875
elemental metallic nickel, and 95% by weight is in the form of nickel oxide
(Succi, col. 4, 11. 41--43.) The Examiner reasons that the artisan would have
understood that values close to that of the Example would also be suitable,
and concludes that higher ratios of NiO:Ni would have been obvious. (FR 4,
11. 14-21.)
SAES argues that in the "claimed embodiments, the Ni/NiO ratio is
very low compared to that of Succi (less than 1/20 or 5%) such that N 20 can
be purified at room temperatures, i.e., without creating a hazardous
exothermic reaction." (Br. 9, 11. 13-15.) In support of this argument, SAES
quotes Comparative Example 3 of the Specification, which reads:
Nickel purification media has been subjected to an activation
treatment that causes its reduction to nickel, by flowing a
nitrogen stream with 10% of hydrogen. After having brought
it at room temperature the purifier was exposed to N20 in a
series of controlled cycles in order to condition the material,
even with this precautions, the system temperature went
over 250°C, posing serious problems in terms of safety. This
tests show that the media disclosed in previously mentioned
US patent 6,436,352 is not suitable to be used in the Nitrous
Oxide purification, in an industrial scale process.
(Spec. 10 [00047].)
There are several difficulties with this argument. First, the claims
require less than 5% Ni compared to NiO (claims 7 and 17), or "between 0
and 5%" (claim 18). Given the characterization of Ni being optional, the
lower endpoint, 0%, is clearly included. In light of the Examiner's
reasoning, we do not find it necessary to conclude whether the upper limit of
5% is included in claim 18. Thus, the claims are open to purifiers having
Ni/NiO ratios only slightly less than 5%, whether or not claim 18 includes
the Ni/NiO ratio of 5%. Second, the claims are not limited in the
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composition of impure N20 that the claimed purifier must purify. Thus, as
long as a given purifier is capable of removing impurities via the NiO/Ni
active material in the active portion of the vessel at room temperature, it is
within the scope of claim 7.
Third, Comparative Example 3 does not disclose the composition of
the nickel purification media after the activation treatment; nor does it
disclose the composition of the N20 stream that is purified. Thus, we have
not been placed in a position to assess whether the amount of elemental
metallic nickel used in Comparative Examine 3 is about 5%, or that the
remainder is NiO. In other words, we are unable to decide whether
Comparative Example 3 is a reasonable reproduction of the Ni/NiO catalyst
described in Succi Example 1. Moreover, because the composition of the
impure N20 stream is not clear, the significance of the reported temperature
rise to 250°C cannot be evaluated.
These concerns are heightened by the '875 Specification disclosures
that embodiments have a surface area of "at least 100 m2/g and the NiO/Ni
weight ratio is equal or higher than 5" (Spec. 5, [00020]), i.e., Ni/NiO is less
than 20%, and more preferably less than 5% (id.). These disclosures suggest
that the larger ratios might be effective for removing small amounts of C02
at room temperature, even though exposure to higher levels of C02 would
lead to temperatures well above room temperature. The claims, however,
are not limited by the levels of impurities in the input N20 stream. Thus, we
are not persuaded of harmful error in this aspect of the Examiner's rejection.
For these reasons, we also are not persuaded by SAES's arguments
(Br. 10-11) that the Examiner erred in failing to give adequate weight to the
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alleged evidence of unexpected results. Cf Jn re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (explaining that statements of unexpected results in the
specification need not be credited if they are not supported by credible
evidence).
Finally, we are not persuaded that the list of "unsupported assertions"
SAES urges (Br. 9-10) the Examiner relies on (FR 5-7) amount to harmful
error. SAES argues that there is no basis for the Examiner's determination
that heaters for the regeneration of the NiO/Ni catalysts would be capable of
heating the vessels to 150 to 300 °C. (Br. 9, last para.) However, Succi
teaches that the Ni/NiO catalyst in preliminary purification chamber 106 can
be regenerated following removal of CO and C02 from a gas stream. (Succi,
col. 4, 11. 14-20.) Succi's silence on the regeneration conditions is not
harmful provided that such conditions are well known to those skilled in the
art. In re Howarth, 654 F.2d 103, 105 (CCPA 1981) ("An inventor need
not, however, explain every detail since he is speaking to those skilled in the
art."). If the catalyst were novel, or being used in a novel way, such that
special conditions were required to regenerate the catalyst, that lapse might
be harmful. But the removal of CO and of C02 by Ni/NiO catalysts, and the
regeneration of those catalysts appear to have been sufficiently well known
that Succi did not see the need to report such conditions. Moreover, the
Examiner cited a reference to show that the use of heaters and temperature
control were known in the art for regenerating purification materials. (FR 5,
last para.) SAES has not challenged the substance of these findings or
conclusions.
Similarly, we find without persuasive merit SAES unelaborated
challenges (Br. 9, last para.) to the Examiner's determination (FR 6) that
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aspect ratios of purification passages containing particulates through which
gases are flowed (reference cited at 6, 11. 8-9), and the use of automatic
controls for a gas manifold (claim 17) were well known in the art (no
reference cited) and obvious to modify or optimize.
In conclusion we are not persuaded of harmful error in the appealed
rejections.
C. Order
It is ORDERED that the rejection of claims 7, 9-12, and 17-2 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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