Ex Parte Thomazeau et al

Patent Trial and Appeal Board

Jun 17, 2016

11953272 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111953,272 12/10/2007
23599 7590 06/21/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P,C
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Cecile Thomazeau
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.
PET-2440 1871
EXAMINER
LI, TIJN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CECILE THOMAZEAU, DENIS UZIO, CATHERINE VERDON,
and LARS FISCHER
Appeal2015-001586
Application 11/953,272
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1through5, 9, 11, 12, 16, and 21through25. We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellants' invention is generally directed to a process for preparing a
catalyst. App. Br. 1-2. Claim 1 illustrates the subject matter on appeal and
is reproduced below:
1. A process for preparing a catalyst, consisting of:
1) providing an aqueous colloidal solution (solution
A) containing oxy(hydroxide) particles of a cation M2+ that is
from columns IIA, IIIA, IIIB, IVB or IV A of the periodic table;
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Application 11/953,272
2) adding to solution A an aqueous solution B
containing a precursor salt of a group VIII metal with a
concentration of 0. 01 to 0 .1 mo le/litre, the precursor salt of the
metal being soluble in colloid under the pH conditions used in
step 1;
3) impregnating the solution in (2) on a support, and
4) drying and calcining the support,
whereby the colloidal solution A is stable until drying in (4).
Reply to Office Action filed November 15, 2013, 2. 1
The Examiner maintains the following rejections from the Final Office
Action entered November 27, 2013:
I. Claims 1-5, 11, 12, and 21-25 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement.
II. Claims 11, 12, and 16 under 35 U.S.C. § 112, fourth paragraph
as being of improper dependent form for failing to further limit
the subject matter of the claim upon which they depend.
III. Claims 1-5, 9, 11, 12, 16, and 21-25 under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinct! y claim the subject matter that the inventors
regard as the invention.
1 In the Claims Appendix to the Appeal Brief, Appellants list the claims as
amended in a Reply filed on February 27, 2014 in response to a Final Office
Action entered November 27, 2013. However, the Examiner indicates in an
Advisory Action entered March 21, 2014, that the claim amendments filed
February 27, 2014 would not be entered, and indicated in the Answer that
the outstanding rejections are based on the claims filed on November 15,
2013, in response to the Non-final Office Action entered on August 15,
2013.
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Application 11/953,272
IV. Claims 1-5, 9, 16, and 21-25 under 35 U.S.C. § 103(a) as
unpatentable over Richard et al. (US 4,590, 177, issued May 20,
1986) ("Richard") in view of Lowe et al. (US 2005/0113615 Al,
published May 26, 2005) ("Lowe") and Petit-Clair et al. (US
2001/0036902 Al, published November 1, 2001) ("Petit-Clair").
V. Claims 11and12 under 35 U.S.C. § 103(a) as unpatentable over
Richard in view of Lowe, Petit-Clair, and Korotkikh et al. (US
2003/0064887 Al, published April 3, 2003) ("Korotkikh").
VI. Claims 11and12 under 35 U.S.C. § 103(a) as unpatentable over
Richard in view of Lowe, Petit-Clair, and Benazzi et al. (US
2003/0057135 Al, published March 27, 2003) ("Benazzi").
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejections of claims 1-5, 9, 11,
12, 16, and 21-25 under 35 U.S.C. § 103(a), the Examiner's rejection of
claims 1-5, 9, 11, 12, 16, and 21-25 under 35 U.S.C. § 112, second
paragraph, and the Examiner's rejection of claims 11, 12, and 16 under
35 U.S.C. § 112, fourth paragraph, but REVERSE the Examiner's rejection
of claims 1-5, 11, 12, and 21-25 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement. We add the
following for emphasis.
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Application 11/953,272
Rejection I
The Examiner finds that the recitation in claim 1 that "the precursor
salt of the metal being soluble in the colloid" is not described in the
Specification as originally filed in violation of 35 U.S.C. § 112, first
paragraph. Although the Specification indicates that the precursor salt is
soluble under the pH conditions used in step 1 of the claimed process, the
Examiner finds that the Specification does not "support the precursor salt of
[the] metal being soluble in the colloid." Final Act. 2 (emphasis added.)
However, the Specification discloses that in the first step of the
claimed process for preparing a catalyst, an aqueous colloidal solution
(solution A) is prepared, and in the second step of the process, an aqueous
solution containing a precursor salt of a group VIII metal (solution B) is
added, preferably drop by drop, into colloidal solution A. Spec. 6, 11. 9-13;
8, 11. 10-12. The Specification further indicates that the precursor salt added
in step 2 is "soluble'; under the pH conditions used in step 1 to prepare
colloidal solution A. Spec. 8, 11. 12-13. Under these circumstances, we
agree with Appellants that the Examiner has not demonstrated that one of
ordinary skill in the art, upon review of the Specification in its entirety,
would notunderstand that the precursor salt is soluble in solution A, which is
a colloidal solution, under the pH conditions used to form the colloid. App.
Br. 2-3. Accordingly, on this record, the Examiner has not shown that the
Specification does not convey with reasonable clarity to those skilled in the
art that the inventors had possession at the time of the invention of a process
for preparing a catalyst in which a precursor salt of a group VIII metal is
soluble in a colloid (solution A) under the pH conditions used to prepare the
colloidal solution, as recited in claim 1. Ariad Pharms., Inc. v. Eli Lilly and
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Application 11/953,272
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (the purpose of the
written description requirement is to "clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.").
It follows that we will not sustain the Examiner's rejection of claims
1-5, 11, 12, and 21-25 under 35 U.S.C. § 112, first paragraph.
Rejection II
We affirm the Examiner's rejection of claims 11, 12, and 16 under
35 U.S.C. § 112, fourth paragraph as being of improper dependent form for
failing to further limit the subject matter of the claim upon which they
depend without comment because Appellants do not contest this rejection.
App. Br. 2-9; 37 C.F.R. § 41.37(c)(l)(iv) (requiring that "arguments shall
explain why the examiner erred as to each ground of rejection ... [and that]
any arguments or authorities not included in the appeal brief will be refused
consideration by the Board"); see also Manual of Patent Examining
Procedure (MPEP) § 1205.02 (9th ed. Mar. 2014) ("If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer.").
Rejection III
We affirm the Examiner's rejection of claims 1-5, 9, 11, 12, 16, and
21-25 under 35 U.S.C. § 112, second paragraph as being indefinite for
failing to particularly point out and distinctly claim the subject matter that
the inventors regard as their invention without comment because Appellants
do not contest this rejection. App. Br. 2-9; 37 C.F.R. § 41.37(c)(l)(iv); see
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also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed.
Mar. 2014).
Rejection IV2
Appellants do not dispute the Examiner's finding that Richard
discloses a method for preparing a catalyst composition that includes
(1) forming a colloidal suspension by admixing (a) a solution containing a
soluble salt of Al (from group IIIA of the periodic table), Si (from group
IV A of the periodic table), or an element of group IIA of the periodic table
(referred to as a promoter element) with (b) an aqueous base solution of a
hydroxide of Ba, Ca, or Sr (from group IIA of the periodic table), (2) adding
to the colloidal suspension an aqueous solution containing a soluble salt of a
group VIII transition metal, and (3) maintaining the pH of the resulting
admixture at a sufficient basicity to keep the admixture in colloidal form.
Compare Final Act. 5 with App. Br. 3-9. The Examiner acknowledges that
Richard does not explicitly disclose that the concentration of the group VIII
metal solution is 0.01 to 0.1 mole/liter, and to remedy this difference in
Richard, relies on Lowe's disclosure of a catalyst composition comprising
from about 0.01 % to about 10 % Rh (a group VIII metal). Final Act. 6.
Appellants do not dispute the Examiner's de facto determination that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to use an aqueous solution of a group VIII metal having a
2 Appellants argue claims 1-5, 9, 16, and 21-25 together. See Appeal Brief,
generally. Therefore, we select claim 1 as representative of these claims.
Claims 2-5, 9, 16, and 21-25 will stand or fall with claim 1.
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concentration as disclosed in Lowe to prepare a catalyst composition as
disclosed in Richard. Compare Final Act. 6 with App. Br. 3-9.
The Examiner also acknowledges that Richard does not disclose a
method for preparing a catalyst that includes impregnating a support with a
catalyst composition, and drying and calcining the support. Final Act. 6. To
remedy this difference in Richard, the Examiner relies on Petit-Clair's
disclosure of a method for forming a catalyst composition that includes
preparing an aqueous colloidal suspension of palladium oxide (a group VIII
metal) from a palladium nitrate precursor, impregnating a support with the
colloidal suspension, and drying and calcining the impregnated support,
thereby improving control of the particle size of the catalyst. Final Act. 6-7.
The Examiner concludes in essence that it would have been obvious to one
of ordinary skill in the art to utilize a palladium nitrate precursor in
Richard's method for preparing a catalyst composition, and to impregnate a
support with the composition, and dry and calcine the support as disclosed in
Petit-Clair, for better control of the particle size of the catalyst. Final Act. 7.
In contesting this rejection, Appellants first explain that one of
ordinary skill in the art would understand that the recitation in claim 1 that
the precursor salt of the group VIII metal is soluble in the colloid under the
pH conditions used in step 1 requiresthat while solution A remains in
colloidal form during preparation of the catalyst, solution B remains
dissolved, in non-colloidal form. App. Br. 3--4. Appellants argue that
Richard discloses that both the group VIII metal and the promoter element
of the catalyst composition "are in a colloidal state when the final solution is
formed," and does not disclose that the group VIII element remains
dissolved or soluble in the final solution. App. Br. 5-6. Appellants further
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argue that neither Petit-Clair nor Lowe remedy this difference in Richard
because Petit-Clair, like Richard, discloses a catalyst composition that is in a
colloidal state when impregnated on a support, and Lowe discloses
impregnating a support with a dissolved, non-colloidal catalyst composition.
App. Br. 6-7.
We begin our analysis by determining the meaning of claim 1, giving
terms the broadest reasonable interpretation consistent with the Specification
as it would be interpreted by one of ordinary skill in the art. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, "the PTO must give claims their broadest
reasonable construction consistent with the specification .... Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation."). The Specification "acts as a
dictionary when it expressly defines terms used in the claims or when it
defines terms by implication.'' Vitronics Corp. v. Conceptronics, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996).
With the above principles of law in mind, we first consider the proper
meaning of the phrase "the pH conditions used in step 1" and, noting that
because claim 1 does not recite particular pH conditions for step 1, tum to
the Specification for guidance. Spec. 1. The Specification does not
explicitly define particular pH conditions that must be used during step 1,
but does disclose two distinct embodiments of this step. Spec. 6-7. In the
first embodiment, colloidal solution A "with a defined pH" is prepared by
dissolving a precursor salt of a cation from group IIA, IIIA, IIIB, IVB, or
IV A of the periodic table in a sodium hydroxide solution, in water, or in
water to which a sodium hydroxide solution has been added, and
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oxy(hydroxide) particles of the cation are formed in situ in the solution.
Spec. 6, 11. 10-20. The Specification does not identify the pH of solution A.
In the second embodiment of step 1, oxy(hydroxide) particles of a cation
from group IIA, IIIA, IIIB, IVB, or IV A of the periodic table are formed ex-
situ, and are then redispersed in an aqueous solution under a "defined pH."
Spec. 7, 11. 7-13. The Specification does not identify the defined pH.
Example 1 of the Specification describes step 1 as involving the
formation of magnesium hydroxide particles by dissolving magnesium
nitrate hexahydrate in a sodium hydroxide solution having a pH of 11.0 to
form a solution with a pH of 11.0. Spec. 13, 11. 14--17. Example 3 describes
step 1 as involving dissolving an aqueous solution having a pH of 1.5
containing colloidal nanoparticles of cerium oxide in water to form a
solution having a pH of 3.4. Spec. 15, 11. 9-11. Based on these disclosures
in the Specification, we determine that under a broadest reasonable
interpretation consistent with the Specification, the "pH conditions used in
step 1" refer to either basic or acidic conditions under which colloidal
solution A is formed.
We next determine the meaning of "the precursor salt of the [group
VIII] metal being soluble in the colloid under the pH conditions used in step
1." The Specification does not explicitly define "soluble," indicating only
that in step 2 of the catalyst preparation process, an aqueous solution
containing a precursor salt of a group VIII metal (solution B) is added,
preferably drop by drop, into colloidal solution A, and the precursor salt is
"soluble" under the pH conditions used in step 1 of the process. Spec. 8, 11.
10-13. Example 1 describes adding a tetrahydroxopalladate precursor
(solution B) dropwise into an aqueous solution containing magnesium
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hydroxide particles having a pH of 11.0 (solution A) (Spec. 13, 11. 13-23),
while Example 3 describes adding a palladium nitrate precursor (solution B)
dropwise into an aqueous solution containing colloidal cerium oxide having
a pH of 3.4 (Spec. 15, 11. 9-15), but neither Example describes the level or
degree of solubility of the precursor salt in the colloidal solution.
Therefore, the Specification does not provide guidance regarding the
degree or level of solubility of the precursor metal salt under the pH
conditions used to form colloidal solution A in step 1 of the process, but
does indicate that colloidal solution A can be formed under either basic or
acidic conditions. Spec. 13, 11. 14--17; 15, 11. 9-11. We accordingly
determine that "the precursor salt of the [group VIII] metal being soluble in
the colloid under the pH conditions used in step 1" means that the precursor
salt is soluble to at least some degree in colloidal solution A under basic or
acidic conditions used to form the colloid.
As discussed above, Richard discloses forming a colloidal suspension
by mixing a solution containing a soluble salt of Al (from group IIIA), Si
(from group IVA), or an element of group IIA, with an aqueous base
solution of a hydroxide of Ba, Ca, or Sr (each from group IIA); adding to the
colloidal suspension an aqueous solution containing a soluble salt of a group
VIII transition metal; and maintaining the admixture at a basic pH. Richard
col. 2, 1. 60-col. 3, 1. 9; col. 6, 11. 42--46. Claim 1 as we have interpreted it
does not require the group VIII precursor salt to be completely soluble in the
colloidal solution under the pH conditions used to form the colloid, and
Richard's group VIII salt reasonably would be soluble, to at least some
extent, in the colloidal solution under the basic pH used to form the colloid,
as indicated in Appellants' Specification. Thus, the burden is on Appellants
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to show that Richard's step of adding an aqueous solution containing a
soluble salt of a group VIII transition metal to a colloidal suspension at a
basic pH does not necessarily render the soluble salt of a group VIII
transition metal some degree soluble in the colloidal suspension. In re Best,
562 F.2d 1252, 1255 (CCP A 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."). However,
on this record, Appellants fail to carry such burden. Accordingly,
Appellants' arguments regarding Richard's lack of disclosure that the group
VIII element remains dissolved or soluble in the final solution, and Petit-
Clair' sand Lowe's failures to remedy this difference, are unpersuasive of
reversible error.
Appellants also argue that "Lowe teaches away from the use of metals
such as Ni or Pd in a selective hydrogenation catalyst." App. Br. 6.
However, this argument lacks persuasive merit because, as correctly pointed
out by the Examiner, it is based on limitations that do not appear in claim 1.
(Ans. 17.) In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims."). In other words, claim 1 does not require the
catalyst to be a selective hydrogenation catalyst. Moreover, Appellants do
not argue that Richard is directed to forming a selective hydrogenation
catalyst such that one of ordinary skill in the art would have been taught
away from using palladium in its catalyst per Lowe's teaching. App. Br.??
Nor do Appellants argue that Richard's explicit teaching of using a soluble
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salt of a group VIII transition metal in its specific catalyst is somehow
negated by Lowe's teaching relating to forming its different selective
hydrogenation catalyst. App. Br.??
Appellants also argue, relying on the Rule 132 Declaration of Cecile
Thomazeau, an inventor of the instant application, which was submitted to
the Patent and Trademark Office on April 1, 2013 (the "Thomazeau
Declaration"), that the experimental examples provided in the Declaration
"show that the process used in Petit-Claire [sic] is different from the one in
the invention and leads to catalysts having a lower activity and selectivity in
selective hydrogenation as the ones of the catalysts prepared according to the
invention." App. Br. 8. However, we agree with the Examiner (Ans. 21-23)
that the experiments provided in the Thomazeau Declaration do not provide
a comparison between the claimed subject matter and the closest prior art-
Richard-because the Declaration compares the activity of a catalyst
prepared according to Example 5 of Petit-Clair with that of a catalyst
prepared according to the method of Appellants' invention. Thomazeau
Declaration Example 14. In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 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 addition, Appellants do not demonstrate that the
narrow showing provided in the Declaration of preparing only a single
catalyst supports patentability over the entire scope of the method of
preparing a myriad of catalyst compositions recited in claim 1. App. Br. 6.
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
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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)).
Accordingly, Appellants do not meet their burden of showing that the
claimed subject matter imparts results that would have been unexpected by
one of ordinary skill in the art at the time of the invention relative to the
closest prior art, and that are reasonably commensurate with the scope of
protection sought by the claims on appeal. In re Klosak, 455 F .2d 1077,
1080 (CCPA 1972) ("the burden of showing unexpected results rests on he
who asserts them").
Therefore, on this record, we find no reversible error in the
Examiner's determination that the evidence of obviousness, on balance,
outweighs the evidence of non-obviousness relied upon by Appellants, and
we accordingly sustain the Examiner's rejection of claims 1-5, 9, 16, and
21-25 under 35 U.S.C. § 103(a) as unpatentable over Richard, Petit-Clair,
and Lowe.
Rejections V and VI
Appellants rely on the same arguments advanced in connection with
the Examiner's rejection of claim 1 based on Richard, Lowe, and Petit-Clair,
and further assert that neither Korotkikh or Benazzi remedy the deficiencies
of these references. App. Br. 9. Because we are unpersuaded of reversible
error in the Examiner's rejection of claim 1 based on Richard, Lowe, an
Petit-Clair as discussed supra, Appellants' position as to these rejections are
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equally without merit. Accordingly, we sustain the rejection of claims 11
and 12 under 35 U.S.C. § 103(a) as unpatentable over Richard, Lowe, Petit-
Clair, and either Korotkikh or Benazzi (Rejections V and VI).
ORDER
For the reasons set forth above and in the Answer, the Examiner's
rejections of claims 1-5, 9, 11, 12, 16, and 21-25 under 35 U.S.C. § 103(a),
rejection of claims 1-5, 9, 11, 12, 16, and 21-25 under 35 U.S.C. § 112,
second paragraph, and rejection of claims 11, 12, and 16 under 35 U.S.C.
§ 112, fourth paragraph, are affirmed. The Examiner's rejection of claims
1-5, 11, 12, and 21-25 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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