Ex Parte Viloria et al

Patent Trial and Appeal Board

Nov 26, 2014

12415389 (P.T.A.B. Nov. 26, 2014)

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.
12/415,389 03/31/2009 Alfredo Viloria 08-200 2626
34704 7590 11/28/2014
BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
11/28/2014 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 ALFREDO VILORIA, MONICA ROMAN, MARVIN RICAURTE,
YANINE GONZALEZ, RAFAEL YOLL, and MARCOS ROSA-BRUSSIN
____________

Appeal 2013-000642
Application 12/415,389
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and TERRY J. OWENS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision2 rejecting claims 1, 2, 7, 14, and 16 through 20. We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter on appeal is directed to “a composition for fluid
treatment” and in particular, “a regenerable sorbent for the removal of hydrogen

1 Appeal Brief filed March 30, 2012 (“App. Br.”) at 4 and 8.
2 Final Rejection mailed August 23, 2011(“FR.”) at 1-10 and Answer mailed
August 2, 2012 (“Ans.”) at 4-12.
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sulfide from production fluid streams [.]” (Spec. 1, ¶ [0001].) “The raw material
used in this regenerable sorbent may include iron mineral, expansive clays and
starch.” (Spec. 6, ¶ [0028].) The iron mineral employed includes, but is not
limited to, hematite, magnetite, maghemite or mixtures thereof. (Id.) “The
expansive clay may be any expansive clay, such as vermiculite, bentonite,
montmorillonite, blends of chlorite, kaolinite, and mixtures thereof.” (Id.)
Details of the appealed subject matter are recited in representative claims 1,
14, and 203 reproduced below from the Claims Appendix of the Appeal Brief:
1. A composition for the removal of acid gas from a fluid stream, comprising
pellets of an iron mineral, an expansive clay comprising vermiculite, and a
starch, wherein the iron mineral comprises an iron oxide selected from the
group consisting of Fe2O3, Fe3O4 and combinations thereof, and wherein the
iron oxide is present in particle sizes less than 75 microns.

14. A composition for the removal of acid gas from a fluid stream, consisting
essentially of: an iron mineral consisting essentially of an iron oxide
selected from the group consisting of Fe2O3, Fe3O4 and combinations
thereof; an expansive clay consisting essentially of vermiculite; and a
starch.

20. A composition for removal of acid gas from a fluid stream, comprising
pellets of material formed of an iron mineral selected from the group
consisting of Fe2O3, Fe3O4 and combinations thereof, vermiculite, and
starch, wherein the iron mineral is present in the pellets in the form of
particles having a particle size of less than 75 microns, the vermiculite is
present in the pellets in an amount of 5% w/w and the starch is present in
the pellets in an amount of 5% w/w.

3 Appellants have separately argued the separate grounds of rejection set forth in
the Answer, but have not separately argued claims 1, 14, and 20 rejected under
such separate grounds of rejection. (App. Br. 5-12.) Therefore, for purposes of
this appeal, we select claims 1, 14, and 20 and decide the propriety of each
rejection based on these claims alone. See, e.g., 37 C.F.R. § 41.37(c)(1)(vii).
.

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Appellants seek review of the following grounds of rejection4 maintained by
the Examiner in the Answer:
1. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Schneider (U.S. Patent 4,774,213 issued to Schneider et al. on September 27,
1998);
2. Claims 1, 2, 7, 16, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Schneider and Fytzani-
Stephanopoulos (U.S. Patent 4,977,123 issued to Fytzani-Stephanopoulos et al. on
December 11, 1990); and
3. Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Schneider, Fytzani-Stephanopoulos, and Siriwardane
(U.S. Patent 6,743,405 B1 issued to Siriwardane on June 1, 2004). (App. Br. 8.)

DISCUSSION

Upon consideration of the evidence on this record and each of
Appellants’ contentions,5 we find that the preponderance of evidence supports the
Examiner’s determination that one of ordinary skill in the art, armed with the

4 The Examiner has withdrawn the rejection of claims 1, 2, 7, 14, and 16 through
20 under 35 U.S.C. § 112, second paragraph, set forth in the Final Rejection. (Ans.
4.)
5Any arguments not timely presented in the Principal Brief will not be considered,
when filed in in the Reply Brief, absent a showing of good cause explaining why
the arguments could not have been presented in the Principal Brief. Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010); see also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief [is not] an
opportunity to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner’s rejections, but were not.”).
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knowledge provided in the applied prior art, would have been led to the subject
matter recited in claims 1, 2, 7, 14, and 16 through 20 within the meaning of 35
U.S.C. § 103(a). Accordingly, we sustain the Examiner’s § 103(a) rejections of the
claims on appeal for the reasons set forth in the Final Rejection and the Answer.
We add the following primarily for emphasis and completeness.
Appellants have not refuted the Examiner’s finding that Schneider teaches a
molded or compacted composition for treating acid gas in a fluid stream, which
employs acid treated aluminosilicate with a layered structure, iron ores (iron
mineral) having iron oxides, such as Fe2O3, and an organic substance or binder,
such as various polysaccharides. (Compare Ans. 4-5 with App. Br. 11-15. ) Nor
have Appellants challenged the Examiner’s official notice that vermiculite, like
bentonite and montmorilonite exemplified in Schneider, is a known aluminosilicate
with a layered structure and starch is a known low cost polysaccharide binder.6
(Compare Ans. 5-6 and 10 with App. Br. 11-15.) Thus, we find no reversible error
in the Examiner’s determination that one of ordinary skill in the art, armed with
such knowledge, would have been led to employ or select acid-treated vermiculite
and starch as the acid treated aluminosilicate with a layered structure and the
polysaccharide binder of the composition taught by Schneider, with a reasonable
expectation of successfully forming a composition useful for Schneider’s purpose.
See, e.g., Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (“That the ʼ813 patent discloses a multitude of effective combinations does
not render any particular formulation less obvious.”); In re Corkill, 771 F.2d 1496,

6 In view of the absence of any arguments presented by Appellants to the contrary,
we accept this finding or notice as accurate. See, e.g., In re Fox, 471 F.2d 1405,
1407 (CCPA 1973)(in affirming the Board’s decision, the predecessor to our
reviewing court explained that “[i]n this court appellant has not denied the
existence of the facts on which the examiner rested his obviousness rejection….”).

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1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of a prior
art teaching that “hydrated zeolites will work” in detergent formulations, even
though “the inventors selected the zeolites of the claims from among ‘thousands' of
compounds”)); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection
affirmed where the disclosure of the prior art was “huge, but it undeniably
include[d] at least some of the compounds recited in appellant's generic claims and
[was] of a class of chemicals to be used for the same purpose as appellant's
additives”).
Appellants contend that independent claim 14, by virtue of using the
transitional phrase “consisting essentially of, is a closed ended claim and excludes
the presence of additional unclaimed ingredients, such as acid present in
Schneider’s aluminosilicate material with a layered structure (vermiculite), in the
claimed composition. (App. Br. 11-12.) However, contrary to Appellants’
argument, the transitional phrase “consisting essentially of,” unlike the transitional
term “consisting of,” does not render claim 14 “closed ended.” The transitional
phrase “consisting essentially of” in claim 14 has long been interpreted to include
“the listed ingredients and …unlisted ingredients that do not materially affect the
basic and novel properties of the invention.” PPG Industries. v. Guardian Indus.
Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); see also In re Herz, 537 F.2d 549,
551-52 (CCPA 1976) ("[T]he phrase 'consisting essentially of' limits the scope of a
claim to the specified ingredients and those that do not materially affect the basic
and novel characteristic(s) of a composition."). Appellants has the burden of
showing that the additional ingredient listed in the applied prior art, but not listed
in claim 14, namely acid in Schneider, materially affects the basic and novel
properties of the claimed invention. In re De Lajarte, 337 F.2d 870, 873-74
(CCPA 1964). However, Appellants have not shown, much less alleged, that the
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acid taught by Schneider materially affects (e.g., is deleterious to) the claimed
composition. Herz, 537 F.2d at 551-52. Appellants have not referred to any
disclosure in the Specification which indicates that the term “consisting essentially
of” excludes the acid taught by Schneider. Herz, 537 F.2d at 551-52 (“[I]t is
necessary and proper to determine whether [the] specification reasonably supports
a construction” that would exclude or include particular ingredients.); see also
PPG Indus., 156 F.3d at 1354-357 (Patentees “could have defined the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear in its
specification what it regarded as constituting a material change in the basic and
novel characteristics of the invention. The question for our decision is whether
PPG did so.”). Nor have Appellants proffered any evidence to show that the acid
taught by Schneider is deleterious to the claimed composition.
Appellants also contend that the applied prior art, namely Schneider and
Fytzani-Stephanopoulos, do not suggest the iron oxide particle size of less than 75
microns as recited in independent claim 1. However, Schneider impliedly teaches
employing appropriate iron particle sizes useful for forming optimally sized
compact materials or molded shapes, including in the form of optimally sized
tablets or balls, for use as a catalyst for treating a flue gas. (Schneider, col. 5, ll.
35-55.) Fytzani-Stephanopoulos also teaches using mixed oxide powders,
including iron oxide powders, having a wide a particle size distribution, with both
coarse (60-250 microns) and fine (less than 50 microns) particles in extruding or
pelletizing a composition. (Fytzani-Stephanopoulos, col. 1, ll. 37-45 and col. 2, ll.
42-55.) Thus, we find no reversible error in the Examiner’s determination that one
of ordinary skill in the art would have been led to employ iron oxide powders
having optimum particle sizes, such as less than 75 microns, in forming the
compacted or molded (pelletized) composition of the type taught by Schneider. In
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re Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery of an optimum value of
a result effective variable…is ordinarily within the skill of the art.”); In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)(“In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of obviousness.”) As our reviewing
court stated in In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990):
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable
within the claims. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected
results relative to the prior art range. [Citation omitted.]

On this record, however, Appellants have not shown that the particular iron oxide
particle size recited in claim 1 is critical.
Finally, Appellants do not dispute the Examiner’s determination that the
collective teachings of Schneider, Fytzani-Stephanopoulos, and Siriwardane would
have suggested employing 2-60 wt. % of vermiculite and 2-60 wt.% of starch .
(App. Br. 16-17.) Thus, we concur with the Examiner that one of ordinary skill in
the art would have been led to employ 5 wt. % of vermiculite and 5 wt.% of starch
as recited in claims 19 and 20. Peterson, 315 F.3d at 1329(“In cases involving
overlapping ranges, we and our predecessor court have consistently held that even
a slight overlap in range establishes a prima facie case of obviousness.”)
To extent that Appellants may have argued the criticality of the claimed
composition in reference to Figure 2 allegedly showing unexpected results, we
note that Appellants have not explained how and why Figure 2 data establish that
the claimed composition as a whole imparts unexpected results relative to the
closest prior art. (App. Br. 16-17.) It is not within the province of this Board to
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independently assess the probative value of Specification data and/or Figure 2 data
and interpret them in a light most favorable to Applicants. It is Appellants’ burden
to demonstrate unexpected results. In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) (“the burden of showing unexpected results rests on he who asserts them”).
"[I]t is not enough to show that results are obtained which differ from those
obtained in the prior art; that difference must be shown to be an unexpected
difference." Klosak, 455 F.2d at 1080.
Thus, we find that Appellants have not identified any reversible error in the
Examiner’s determination that one of ordinary skill in the art, armed with the
knowledge provided in the applied prior art, would have been led to the subject
matter recited in claims 1, 2, 7, 14, and 16 through 20 within the meaning of 35
U.S.C. § 103(a).
.
ORDER
Upon consideration of the record, and for the reasons given above and in the
Answer, it is
ORDERED that the decision of the Examiner to reject claims 1, 2, 7, 14, and
16 through 20 under 35 U.S.C. §103(a) is AFFIRMED; and
FURTHER ORDERED that 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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