Mastrodonato, Marco et al.

Patent Trials and Appeals Board

Oct 1, 2019

13510157 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/510,157 07/23/2012 Marco Mastrodonato SS122-1060 3687
122515 7590 10/01/2019
Silvia Salvadori, P.C.
Silvia Salvadori
270 Madison Avenue, 8th Floor
New York, NY 10016
EXAMINER
SOLIMAN, HAYTHAM
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
eofficeaction@appcoll.com
silvia30121@me.com
silvia@salvadorilaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCO MASTRODONATO, MASSIMO PRATI, and
IOANA VERONICA MICU
____________

Appeal 2019-001055
Application 13/510,157
Technology Center 1700
____________
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals from the Examiner’s decision to finally reject
claims 14–20, which are all of the claims pending in this application.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed May 16, 2012
(“Spec.”); Final Office Action dated Aug. 21, 2017 (“Final Act.”); Appeal
Brief filed Mar. 22, 2018 (“Appeal Br.”); Examiner’s Answer dated Sept.
20, 2018 (“Ans.”); and Reply Brief filed Nov. 19, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies GRAFCO2 S.R.L as the real party in
interest. Appeal Br. 3.
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The Claimed Invention
Appellant’s disclosure relates to a mold made of a material that is said
to be capable of adsorbing carbon dioxide, which is obtainable by isostatic
compression of a mixture of a carbonious material selected from fossil
carbon and/or graphite and a binder. Spec. 1, 2; Abstract. Claim 14 is
illustrative of the subject matter on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief:
14. A mold made of a material able of adsorbing carbon
dioxide obtained by cold isostatic compression
independently of external energy sources of a mixture of
anthracite and solid binder, the solid binder consisting of
disaccharide or glucose in powder form, wherein the
weight ratio anthracite/binder is between 1:100 and 100:1.
Appeal Br. 16 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Meissner et al. (“Meissner”) US 5,736,076 Apr. 7, 1998
Ryan et al. (“Ryan”) WO 02/25190 A1 Mar. 28, 2002
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 14–17 are rejected under 35 U.S.C. § 103(a) as obvious
over Meissner (“Rejection 1”). Ans. 3; Final Act. 2.
2. Claims 18–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meissner in view of Ryan (“Rejection 2”). Ans. 5; Final
Act. 4.
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OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and for the reasons set forth in the
Answer to the Appeal Brief and Final Office Action, which we adopt as our
own. We add the following for emphasis.
Rejection 1
Appellant argues claims 14–17 as a group. We select claim 14 as
representative and remaining claims 15–17 stand or fall with claim 14.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines Meissner teaches or suggests a molding
satisfying all of the limitations of claim 14 and concludes the reference
would have rendered the claim obvious. Ans. 3–4. On the record before us,
we find that a preponderance of the evidence and sound technical reasoning
support the Examiner’s analysis and determination that Meissner teaches or
suggests a molding satisfying all of the limitations of claim 14, and
conclusion that the reference would have rendered the claim obvious.
Meissner, Abstract, 1:1–5, 1:11, 1:47–52, 1:63, 2:15–24.
Appellant argues the Examiner’s rejection of claim 14 should be
reversed because Meissner does not teach or suggest the “obtained by cold
isostatic compression independently of external energy sources of a mixture
of anthracite and solid binder” recitation of the claim. Appeal Br. 6; Reply
Br. 2. Rather, Appellant contends Meissner “only provides for graphite
mixtures subjected to heat treatment at from 300° to 800° C . . . in the
absence of oxygen.” Id. at 2 (citing Meissner 1:47–53). Appellant also
contends that because inventive Examples 2–5 of Meissner are all heat
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treated at 500° C and Comparative Example 1 of Meissner, which is not heat
treated, produces “negative results,” one of ordinary skill in the art would
not have been led to the claimed invention, which does not include a heat
treatment. Id. at 11.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection because Meissner’s teachings are not limited to the
disclosures in its examples or preferred embodiments. See In re Mills, 470
F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure
of specific working examples.”); see also In re Susi, 440 F.2d 442, 445-46
(CCPA 1971) (holding disclosure of a particular preferred embodiment does
not teach away from a prior art reference’s broader disclosure).
As the Examiner finds (Ans. 3–4, 8) and contrary to what Appellant
argues, Meissner teaches that the prior art material is “preferably subjected
to a heat treatment” (Meissner, 1:51–52), which would reasonably suggest to
one of ordinary skill that heat treatment is optional and the disclosed
material may be obtained with or without the heat treatment. See In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining a prior art reference’s
disclosure must be considered for all that it teaches, including “the
inferences which one skilled in the art would reasonably be expected to draw
therefrom”).
Meissner’s disclosure is also not limited to graphite mixtures, as
Appellant argues. Rather, as the Examiner finds (Ans. 3–4), Meissner
teaches the use of various mixtures, including, for example, mixtures of
anthracite and solid binders, as recited in the claim. See Meissner 1:9–13,
1:60–63.
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Appellant further argues the Examiner’s rejection should be reversed
because the material Meissner discloses and the claimed material are not the
same materials. Appeal Br. 6–7. Relying on the declaration of Piero
Sozzani (“Sozzani Declaration”), Appellant contends that because Meissner
describes material treated at temperatures above 300° C to 800° C, there are
“substantial differences” in the carbonaceous nature of the material disclosed
by Meissner. Appeal Br. 7. Appellant contends that, in contrast to the
claimed material, the carbonaceous raw material described in Meissner is
graphite. Id. at 8 (citing Sozzani Decl. ¶ 16). Appellant also contends the
claimed material is “necessarily different” from the material disclosed in
Meissner because the claimed material contains “intact sucrose, not
subjected to coking in the absence of oxygen, a process which inevitably
would degrade sucrose.” Id. at 11.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and for the reasoning
provided by the Examiner at pages 3–4 and 7–8 of the Answer. As
previously discussed above, in addition to disclosing graphite mixtures,
Meissner discloses the use of various other carbonaceous raw materials,
including, anthracite. See Meissner 1:9–13, 1:60–63.
Moreover, we find a preponderance of the evidence supports the
Examiner’s determination that claim 14 is a product-by-process claim, and
Appellant has not established, either by persuasive technical reasoning or
evidence, that the claimed product is patentably distinct from Meissner’s
prior art product. “The patentability of a product does not depend on its
method of production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
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even though the prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted); see also In
re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969) (“[The] patentability of a
claim to a product does not rest merely on a difference in the method by
which that product is made. Rather, it is the product itself which must be
new and unobvious.”).
Thus, even if Meissner did not explicitly teach or suggest the method
of practicing cold isostatic pressure independently of external energy
sources, this fact, without more, is insufficient to outweigh the Examiner’s
determination of unpatentability, where the claimed product is the same as
or obvious from the product of the prior art. Thorpe, 777 F.2d at 697.
Appellant’s argument is also misplaced because it is premised on
Appellant’s erroneous contentions that Meissner’s disclosure is limited to
graphite mixtures subjected to heat treatment and that heat treatment of
Meissner’s material is required. As previously discussed above, Meissner’s
disclosure is not limited to heat treating the material. Meissner, 1:46–53
(disclosing that the material can be “preferably subjected to a heat
treatment”).
Appellant’s contentions regarding the Sozzani Declaration also are not
persuasive because the declaration is not commensurate in scope with
Meissner’s teachings regarding the prior art product and thus, is not
sufficient to establish that the claimed invention is patentably distinct from
the prior art. For example, as the Examiner correctly points out (Ans. 7), the
Sozzani Declaration does not compare the claimed material to Meissner’s
prior art material, which has not been subjected to a heat treatment. See
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Sozzani Decl. ¶ 17 (reporting results based on a “compound after the curing
procedure”).
Appellant’s contention that “Meissner is silent about the capacity of
absorbing carbon dioxide” and comments regarding the claimed material’s
“heat transfer property” at page 12 of the Appeal Brief are equally
unpersuasive because, as the Examiner finds (Ans. 8), they are based on
limitations not recited in the claims. See In re Van Geuns, 988 F.2d 1181,
1184-85 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims
from the specification.”).
Accordingly, we affirm the Examiner’s rejection of claims 14–17
under 35 U.S.C. § 103(a) as obvious over Meissner.
Rejection 2
The Examiner rejects claims 18–20 under 35 U.S.C. § 103(a) as
obvious over the combination of Meissner and Ryan, which we refer to
above as “Rejection 2.” Ans. 5–6. Appellant, however, does not present
any new or additional substantive arguments for the patentability of claims
18–20 in response to the Examiner’s rejection. Instead, Appellant states “all
the reasons discussed . . . above with regard to Meissner apply as well to the
combination of Meissner in view of Ryan.” Appeal Br. 15; see also Reply
Br. 4 (“Appellants respectfully submit that claims 18–20 are patentable over
the combination of cited references for all of the reasons discussed with
regard to claims 14–17.”).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming Rejection 1, we affirm Rejection 2.
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CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
14–17 § 103(a)
Meissner
14–17
18–20 § 103(a)
Meissner, Ryan
18–20
Overall
Outcome
14–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED