`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UMICORE AG & CO. KG,
`Petitioner,
`
`
`
`
`
`v.
`
`
`
`BASF CORPORATION,
`Patent Owner.
`
`
`Case IPR2015-01121
`Patent No. 7,601,662
`
`
`PATENT OWNER BASF CORPORATION’S NOTICE OF APPEAL
`UNDER 37 C.F.R. § 90.2(a)
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`Pursuant to 37 C.F.R. § 90.2(a), notice is hereby given that Patent Owner
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`BASF Corporation (“BASF”) appeals to the United States Court of Appeals for the
`
`Federal Circuit from the Final Written Decision (Paper No. 53) (the “Final Written
`
`Decision”), in IPR2015-01121, entered on October 26, 2016, by the United States
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`Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), and from
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`all underlying orders, decisions, rulings, and opinions. A copy of the Final Written
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`Decision is attached hereto as Exhibit A.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), BASF further indicates that
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`the issues on appeal may include, but are not limited to, the PTAB’s determination
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`that claims 1-8, 12-24, 30, and 32-50 of U.S. Patent Number 7,601,662 have been
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`shown to be unpatentable under 35 U.S.C. § 103 in view of the grounds of
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`unpatentability identified in the Board’s Final Written Decision, challenges to any
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`findings supporting the determination, the Board’s failure to properly consider
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`evidence of record, the Board’s legal errors in undertaking the obviousness
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`analysis, the Board’s finding that conflict with the evidence of record and are not
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`supported by substantial evidence, and other issues decided adversely to Patent
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`Owner.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the PTAB through the Patent Trial and Appeal Board End to End
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`(“PTAB E2E”) System. In addition, a copy of the Notice of Appeal, along with the
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`
`
`
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`required docketing fee, are being filed with the Clerk’s office for the United States
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`Court of Appeals for the Federal Circuit.
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`
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`Dated: December 27, 2016
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`
`
`
` Respectfully submitted,
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`
`
`/ Anish R. Desai /
`Anish R. Desai (Reg. No. 73,760)
`Brian E. Ferguson (Reg No. 36,801)
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`anish.desai@weil.com
`brian.ferguson@weil.com
`
`
`
`
`
`
`
`
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`CERTIFICATE OF FILING
`
`It is certified that, in addition to being filed electronically through the PTAB
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`E2E System, the original version of Patent Owner BASF Corporation’s Notice of
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`Appeal has been sent via priority mail on December 27, 2016 with the Director of
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`the United States Patent and Trademark Office, at the following address:
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`
`
`
`
`
`
`
`
`
`Office of the General Counsel
`United States Patent and Trademark Office
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`CERTIFICATE OF FILING
`
`It is certified that a true and correct copy of Patent Owner BASF
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`Corporation’s Notice of Appeal has been filed via CM/ECF on December 27,
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`2016, with the Clerk’s Office of the United States Court of Appeals for the Federal
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`Circuit.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on December 27, 2016, the foregoing
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`PATENT OWNER BASF CORPORATION’S NOTICE OF APPEAL was
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`served via electronic mail, upon the following:
`
`Elizabeth Gardner
`Richard L. DeLucia
`K. Patrick Herman
`A. Anthony Pfeffer
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019-6142
`egardner@orrick.com
`rdelucia@orrick.com
`pherman@orrick.com
` apfeffer@orrick.com
`
`
`
`
`
`
`
`
`
`/ Timothy J. Andersen /
`Timothy J. Andersen
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`timothy.andersen@weil.com
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`EXHIBIT A
`
`EXHIBIT A
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper No. 53
`
` Entered: October 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`UMICORE AG & CO. KG,
`Petitioner,
`
`v.
`
`BASF CORPORATION,
`Patent Owner.
`
`____________
`
`Case IPR2015-01121
`Patent 7,601,662
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`IPR2015-01121
`Patent 7,601,662
`
`
`I. INTRODUCTION
`
`Umicore AG & Co. KG (“Petitioner”) filed a Petition seeking inter
`
`partes review of claims 1–24, 30, and 32–50 of U.S. Patent No. 7,601,662
`
`B2 (Ex. 1001, “the ’662 patent”), as amended by Ex parte Reexamination
`
`Certificate No. US 7,601,662 C1 (“Reexam. Cert.”). Paper 1 (“Pet.”).
`
`BASF Corporation (“Patent Owner “) filed a Preliminary Response to the
`
`Petition. Paper 7. On October 29, 2015, we instituted an inter partes review
`
`of claims 1–8, 12–24, 30, and 32–50 as discussed below. Paper 8 (“Dec. on
`
`Inst.”).
`
`After institution, Patent Owner filed a Patent Owner Response (Paper
`
`24, “PO Resp.”), and Petitioner filed a Reply (Paper 36, “Reply”). An oral
`
`hearing was held on July 28, 2016, and a transcript of the hearing has been
`
`entered into the record of the proceeding as Paper 52 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by a
`
`preponderance of the evidence that claims 1–8, 12–24, 30, and 32–50 are
`
`unpatentable.
`
`II. BACKGROUND
`
`A. Related Proceedings
`
`Petitioner identifies pending inter partes review Case IPR2015-01125,
`
`also pertaining to the ’662 patent. Pet. 1. In addition to IPR2015-01125,
`
`Patent Owner identifies pending inter partes review Cases IPR2015-01123
`
`and -01124, pertaining to U.S. Patent No. 8,404,203 B2, which issued from
`
`a divisional of the application that issued as the ’662 patent. Paper 5, 2.
`
`
`
`2
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`IPR2015-01121
`Patent 7,601,662
`
`
`B. The ’662 Patent
`
`The ’662 patent, titled “Copper CHA Zeolite Catalysts,” originally
`
`issued on October 13, 2009, with an ex parte reexamination certificate
`
`issuing on June 7, 2013. The ’662 patent states that “synthetic and natural
`
`Zeolites and their use in promoting certain reactions, including the selective
`
`reduction of nitrogen oxides with ammonia in the presence of oxygen, are
`
`well known in the art,” and that “[m]etal-promoted Zeolite catalysts
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`including, among others, iron-promoted and copper-promoted Zeolite
`
`catalysts, for the selective catalytic reduction of nitrogen oxides with
`
`ammonia are known.” Ex. 1001, 1:26–33.
`
`The ’662 patent discloses catalysts that comprise zeolites having a
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`CHA crystal structure and include copper, which may be part of an exhaust
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`gas treatment system. Id. at 1:55–61. According to the ’662 patent, “novel
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`copper chabazite catalysts are provided which exhibit improved NH3 SCR of
`
`NOx.” Id. at 1:64–66. Several embodiments described in the ’662 patent
`
`depict a catalyst comprising a zeolite having the CHA crystal structure, a
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`specific mole ratio of silica to alumina (e.g., greater than about 15), and a
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`specific atomic ratio of copper to aluminum (e.g., greater than about 0.25).
`
`Id. at 4:24–29.1 The ’662 patent teaches that the catalyst compositions can
`
`be disposed on a substrate, which usually comprises a honeycomb structure.
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`Id. at 6:55–59. According to the Specification, the CuCHA zeolite catalysts
`
`of the ’662 patent are said to have increased hydrothermal stability (i.e.,
`
`
`1 For purposes of this decision, we follow the parties’ convention of using
`“SAR” to refer to the mole ratio of silica to alumina, and “Cu/Al ratio” to
`refer to the atomic ratio of copper to aluminum required in the claims.
`
`
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`3
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`IPR2015-01121
`Patent 7,601,662
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`greater stability when subjected to thermal aging) as compared to other Cu-
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`zeolite catalysts. Id. at 5:1–16, 5:49–52.
`
`C. Illustrative Claim
`
`
`
`Claim 1 is the only independent claim challenged, and is reproduced
`
`below:
`
`1. A catalyst comprising:
`
`an aluminosilicate zeolite having the CHA crystal structure
`and a mole ratio of silica to alumina from about 15 to
`about 150 and an atomic ratio of copper to aluminum
`from about 0.25 to about 1, the catalyst effective to
`promote the reaction of ammonia with nitrogen oxides to
`form nitrogen and H2O selectively.
`
`Ex. 1001, Reexam. Cert. 1:56–2:3 (annotations and emphasis omitted).
`
`D. References
`
`Petitioner relies on the following references:
`
`Zones et al., US 6,709,644 B2, issued March 23, 2004
`(“Zones,” Ex. 1004).
`
`Maeshima et al., US 4,046,888, issued September 6, 1977
`(“Maeshima,” Ex. 1002).
`
`Patchett et al., US 2006/0039843 A1, published February 23,
`2006 (“Patchett,” Ex. 1005).
`
`E. Reviewed Grounds of Patentability
`
`The Board instituted trial to review the patentability of the challenged
`
`claims on the following grounds:
`
`References
`
`Zones and Maeshima
`
`Zones, Maeshima, and
`Patchett
`
`
`Statutory
`Basis
`§ 103
`
`§ 103
`
`Claims Challenged
`
`1–8 and 30
`
`12–24 and 32–50
`
`
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`4
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`IPR2015-01121
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`
`F. Level of Ordinary Skill in the Art
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`Petitioner’s declarant, Dr. Lercher, testified that a person of ordinary
`
`skill in the art “would have at least a Master’s degree in chemistry or a
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`related discipline, and have knowledge of the structure and chemistry of
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`molecular sieves like zeolites, including factors that impact their stability
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`and activity.” Ex. 1008 (“Lercher Declaration) ¶ 66. Patent Owner’s
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`declarant, Dr. Tsapatsis, stated that he agrees with the level of ordinary skill
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`in the art advanced by Dr. Lercher. Ex. 2018 (“Tsapatsis Declaration”) ¶ 22.
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`We credit the testimony provided by the declarants for both parties
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`and hold that one of skill in the art would possess at least a Master’s degree
`
`in chemistry or a related discipline, and have knowledge of the structure and
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`chemistry of molecular sieves like zeolites, including factors that impact
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`their stability and activity. This level of ordinary skill is reflected not only
`
`by the information presented by the parties, but also by the prior art of
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`record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the
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`prior art itself can reflect the appropriate level of ordinary skill in the art).
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`III. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard). We
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`determine that no express claim construction is required for purposes of this
`
`Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`
`
`5
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`IPR2015-01121
`Patent 7,601,662
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`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B. References
`
`1. Zones
`
`
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`Zones discloses aluminosilicate zeolites having the CHA crystal
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`structure. Ex. 1004, 1:7–23 and Abstract (referring specifically to the
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`chabazite structure). Zones teaches that its zeolite may have an SAR greater
`
`than 10. Id. at 1:7–10. Zones further discloses that its zeolite may be
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`prepared from a mixture of reactants having SAR values ranging from 20 to
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`50, and preferably SAR values ranging from 25 to 40. Id. at 2:34 (Table 1);
`
`see also id at 7:34–35, claim 3 (reciting an SAR of at least 30). Zones also
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`discloses
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`an improved process for the reduction of oxides of nitrogen
`contained in a gas stream in the presence of oxygen wherein
`said process comprises contacting the gas stream with a zeolite,
`the improvement comprising using as the zeolite a zeolite
`having the CHA crystal structure, a mole ratio greater than
`about 10 of silicon oxide to aluminum oxide and having a
`crystallite size of 0.5 micron or less. The zeolite may contain a
`metal or metal ions (such as cobalt, copper or mixtures thereof)
`capable of catalyzing the reduction of the oxides of nitrogen . . .
`. In a preferred embodiment, the gas stream is the exhaust
`stream of an internal combustion engine.
`
`Id. at 1:54–67.
`
`Zones states that metals may be introduced into the zeolite “via
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`standard ion exchange techniques” (id. at 4:25–27) or the zeolite can be
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`“impregnated with metals” (id. at 4:36–40). Zones teaches that the zeolite
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`may contain a metal cation “preferably in the range of from about 0.05 to 5
`
`% by weight.” Id. at 5:25–28.
`
`
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`6
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`IPR2015-01121
`Patent 7,601,662
`
`
`2. Maeshima
`
`
`
`Maeshima “relates to a method for selectively reducing nitrogen
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`oxides contained in exhaust gases from stationary sources, such as flue gas
`
`from the combustion furnace of power plants, by using ammonia as a
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`reducing agent.” Ex. 1002, 2:9–13. According to Maeshima, this is
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`accomplished by contacting a gaseous exhaust mixture with a catalyst in the
`
`presence of ammonia. Id. at 2:6–8. Maeshima teaches that the catalyst can
`
`be a crystalline aluminosilicate or a “product obtained by exchanging an
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`alkali metal ion in a crystalline alumino-silicate with at least one metal
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`cation having an activity of reducing nitrogen oxides.” Id. at 3:33–38.
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`Maeshima lists “Chabazite,” among others, as a suitable natural zeolite to be
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`used in the described method. Id. at 4:6–12. Maeshima includes copper in
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`its list of the most preferred metal components that can be incorporated into
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`the zeolite catalysts (id. at 6:4, 4:51–52), noting that “[t]he ion exchange
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`ratio is not particularly critical, but it is generally preferred that the ion
`
`exchange ratio be about 60 to about 100%” (id. at 4:44–52) and also
`
`disclosing that the amount of the active metal component in the catalyst may
`
`be a “catalytically effective amount,” ranging from about 1 to about 20% by
`
`weight, preferably about 2 to about 10% by weight (id. at 6:13–17).
`
`3. Patchett
`
`Patchett relates to an emissions treatment system and method for
`
`reducing nitrogen oxides emissions in the exhaust stream produced from an
`
`internal combustion engine. Ex. 1005 ¶ 1. Patchett teaches that “[a] proven
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`NOx abatement technology applied to stationary sources with lean exhaust
`
`conditions is Selective Catalytic Reduction (SCR) using ammonia (NH3) or
`
`an NH3 precursor.” Id. ¶ 3.
`
`
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`7
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`IPR2015-01121
`Patent 7,601,662
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`
`Patchett discloses one embodiment of an emissions treatment system
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`that includes an injector for inserting ammonia into an exhaust stream
`
`upstream from a first substrate with an SCR catalyst composition and an
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`NH3 destruction catalyst composition (comprising a platinum group metal
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`component) disposed thereon. Id. ¶¶ 18–19. Patchett teaches that the SCR
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`catalyst composition can contain a copper-exchanged zeolite and the
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`substrate may be a honeycomb flow-through substrate. Id. ¶¶ 21, 23.
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`According to Patchett, a copper-exchanged zeolite “typically [has] an
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`effective SCR catalyst operating temperature range of from about 150 to
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`550 oC.” Id. at ¶ 69.
`
`C. Analysis of Grounds of Unpatentability
`
`1. Claims 1–8 and 30
`
`As noted above, independent claim 1 recites a catalyst having the
`
`CHA crystal structure and specific SAR and Cu/Al values, which is effective
`
`to promote the reaction of ammonia with nitrogen oxides. Dependent claims
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`2–8 recite narrowed SAR and Cu/Al values, and dependent claim 30 recites
`
`an exhaust gas treatment system that comprises the catalyst of claim 2.
`
`Petitioner argues that that the subject matter of claims 1–8 and 30 would
`
`have been obvious over Zones2 in view of Maeshima.
`
`Petitioner provides detailed explanations and the declaration of Dr.
`
`Lercher to show how the references disclose or suggest each claim
`
`limitation. Pet. 10–23. In our Decision on Institution, we determined that
`
`Petitioner had made a threshold showing that the prior art discloses or
`
`
`2 Petitioner acknowledges that Zones was cited and considered by the
`Examiner during reexamination of the ’662 patent, but points out that the
`combination of Zones and Maeshima was not before the Examiner in the
`reexamination. Pet. 4.
`
`
`
`8
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`IPR2015-01121
`Patent 7,601,662
`
`suggests all limitations of claims 1–8 and 30 sufficient for us to conclude
`
`that there was a reasonable likelihood that Petitioner would prevail in
`
`showing that the subject matter of the challenged claims would have been
`
`obvious in view of Zones and Maeshima. Dec. on Inst. 7–16.
`
`In its Response, Patent Owner does not challenge Petitioner’s
`
`arguments and evidence demonstrating that the prior art discloses or
`
`suggests all limitations of the challenged claims. To the contrary, Patent
`
`Owner acknowledges that the limitations in the claims were well-known in
`
`the art. E.g., PO Resp. 20 (“There was certainly nothing new in 2004 about
`
`a zeolite having the CHA structure and a SAR up to 50.”), 24 (“[I]t was
`
`known decades earlier, in 1985, that a high SAR CHA zeolite can be metal
`
`exchanged.”), 38 (stating that “it is undisputed that a high SAR CHA zeolite
`
`and the ion-exchange of copper in zeolite catalysts were well known in the
`
`art since at least 1985”); Tr. 8:11–14, 38:9–14. Thus, the record contains the
`
`same arguments and evidence regarding whether the prior art discloses or
`
`suggests the limitations of the challenged claims as it did at the time of our
`
`Decision on Institution.
`
`Based upon our review of the totality of the record after trial, we agree
`
`with Petitioner’s arguments and evidence presented in the Petition regarding
`
`whether Zones and Maeshima disclose or suggest the limitations of claims
`
`1–8 and 30. See Pet. 10–23. Thus, we determine that the preponderance of
`
`the evidence supports a finding that Petitioner has demonstrated that all
`
`limitations of claims 1–8 and 30 are disclosed or suggested by Zones and
`
`Maeshima.
`
`In view of this, in our analysis below we focus on the remaining
`
`issues disputed by the parties, namely (i) whether Petitioner has shown one
`
`
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`9
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`IPR2015-01121
`Patent 7,601,662
`
`of ordinary skill in the art would have been motivated to combine the
`
`teachings of Zones and Maeshima to arrive at the claimed CuCHA catalyst
`
`(PO Resp. 2, 25–30; Pet. 15–17) and (ii) whether Petitioner has shown that a
`
`person of ordinary skill in the art would have had a reasonable expectation
`
`of success in combining Zones and Maeshima (PO Resp. 3, 30–32; Pet. 16–
`
`17).
`
`i.
`
`Motivation to Combine Zones and Maeshima
`
`a. Petitioner’s Arguments
`
`Petitioner argues that “[o]ne of ordinary skill in the art as of February
`
`2007 would have been motivated to combine Zones with Maeshima to
`
`arrive, with a reasonable expectation of success, at the subject matter of the
`
`claims.” Pet. 15 (internal footnote omitted). Petitioner contends that Zones
`
`discloses zeolites with the CHA crystal structure and a high SAR value for
`
`the reduction of oxides of nitrogen. Id. at 10, 15–16; Tr. 15:5–7. Dr.
`
`Lercher notes that Zones “does recognize that ‘the zeolite may contain a
`
`metal or metal ions (such as . . . copper . . .)’.” Ex. 1008 ¶ 152 (quoting Ex.
`
`1004, 1:61–63). Petitioner thus argues that Zones teaches the addition of
`
`copper, but does not explicitly disclose adding copper up to its ion exchange
`
`maximum. Tr. 16:1–5; Pet. 15–16.
`
`Petitioner contends that a person of ordinary skill in the art would
`
`have known to add a metal up to its ion exchange maximum, and directs us
`
`to Maeshima, which, according to Petitioner, “says it directly.” Tr. 16:6–9,
`
`117:21–22, 118:10–14, 119:14–16; Ex. 1008 ¶ 153; Pet. 16. Petitioner
`
`further contends that Maeshima discloses the incorporation of copper into
`
`aluminosilicate zeolites with the CHA crystal structure, and describes “the
`
`benefit of copper loading” (Pet. 16), which, according to Dr. Lercher,
`
`
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`10
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`IPR2015-01121
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`
`includes “enhanc[ing] the effectiveness of a zeolite when catalyzing the
`
`reduction of nitrogen oxides” (Ex. 1008 ¶ 153). See also Tr. 116:12–24
`
`(arguing that “effective” in this context means “effective to convert NOx,
`
`which is the limitation of the claim”). Petitioner also argues that a person of
`
`ordinary skill in the art would have known that higher SAR zeolites were
`
`less susceptible to sulfate poisoning. Reply 17 (citing Ex. 1003, 47:47–53).
`
`According to Petitioner, “[b]y directing one of ordinary skill to
`
`include copper in its zeolites to render them able to reduce NOx in diesel
`
`exhaust, Zones sufficiently motivates those of skill to look to prior art
`
`references like Maeshima that discuss appropriate levels of copper loading
`
`to apply to an SCR catalyst.” Id. at 22; Tr. 97:18–19 (“Zones itself tells you
`
`what the motivation to combine with Maeshima is. It is to add copper.”);
`
`100:10–15. Additionally, Petitioner argues that Zones and Maeshima are in
`
`the same technical field and directed to solving the same technical
`
`problem—catalyzing the reduction of nitrogen oxides—which would further
`
`motivate a person of ordinary skill in the art to combine the references. Pet.
`
`17.
`
`Petitioner further argues that “the motivation to modify a prior art
`
`reference to arrive at the claimed invention need not be the same motivation
`
`that the patentee had.” Reply 21 (quoting Alcon Research, Ltd. v. Apotex,
`
`Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012)). Thus, according to Petitioner,
`
`whether Zones and Maeshima disclose a particular degree of SCR
`
`performance or hydrothermal stability is irrelevant, especially because these
`
`are not requirements of the claims. Id.
`
`
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`11
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`
`
`b. Patent Owner’s Arguments
`
`Patent Owner asserts that Petitioner’s argument on motivation to
`
`combine is flawed because “neither reference teaches using a high SAR
`
`chabazite for ammonia SCR.” Tr. 61:13–16. According to Patent Owner,
`
`“the use of the CHA structure for the NH3 SCR of NOx is a key aspect of the
`
`662 invention, yet Petitioner and its expert simply presume that a person of
`
`ordinary skill in the art would have selected and modified a CHA zeolite for
`
`the NH3 SCR of NOx.” PO Resp. 14–15. Patent Owner acknowledges that
`
`Zones teaches “the previously well-known proposition that metal-exchanged
`
`zeolites can be active for the reduction of oxides of nitrogen,” but asserts
`
`that Zones does not disclose any specific reactions, such as the NH3 SCR of
`
`NOx. PO Resp. 2; Tr. 46:10–11. According to Patent Owner, Dr. Lercher
`
`incorrectly assumes that a person of ordinary skill in the art “would use
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`[Zones’] CHA material for ammonia SCR, when, in fact, Zones does not
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`teach that.” Tr. 50:12–15.
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`Patent Owner acknowledges that Maeshima includes chabazite among
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`its list of nine zeolites “suitable” for the NH3 SCR of NOx, but argues that
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`Maeshima ultimately points one of ordinary skill in the art in the direction of
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`a different zeolite, one having a low SAR and large pore size. PO Resp. 21,
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`28. Patent Owner argues that Zones, which is not about NH3 SCR of NOx
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`specifically, teaches using a high SAR, lower pore size CHA zeolite. Id. at
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`26. Thus, according to Patent Owner, “there is simply no reason why one of
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`ordinary skill in the art would have been motivated to combine the high SAR
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`CHA zeolite disclosed in Zones with the ion-exchange ratio teaching in
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`Maeshima for a low SAR, large pore size zeolite.” Id. at 3.
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`Patent Owner further argues that a person of ordinary skill in the art
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`would not be motivated to combine the teachings of Zones and Maeshima
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`because “neither reference provides any suggestion that doing so would
`
`improve the zeolite for the SCR of NOx.” Id. at 26. Patent Owner argues
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`that none of the prior art references include any teachings regarding the
`
`properties of the CHA framework with regard to NH3 SCR of NOx. Id. at
`
`18, 27–28. In this regard, Patent Owner argues that although Maeshima
`
`teaches using chabazite for ammonia SCR (Tr. 59:4–6), Maeshima does not
`
`say anything about how well chabazite works for the SCR of NOx. Tr.
`
`57:22–23; 58:8–9. Additionally, Patent Owner argues that neither Zones nor
`
`Maeshima suggests that the claimed features of CHA structure, SAR, and
`
`Cu/Al ratio will improve the activity or stability of the zeolite. PO Resp. 3,
`
`26, 29.
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`Patent Owner cites to Byrne3 as the only prior art reference that
`
`discloses the properties of the CHA framework with regard to NH3 SCR of
`
`NOx. PO Resp. 18. According to Patent Owner, Byrne teaches not to use
`
`chabazite for this reaction because of susceptibility to sulfate poisoning, and
`
`instead discloses that zeolites having large pore sizes should be used. Id. at
`
`27 (citing Ex. 1010 at 4:63–5:26); Tr. 50:20–23 (arguing that Byrne teaches
`
`to avoid using a copper chabazite for ammonia SCR). Patent Owner points
`
`out that other references teach that different zeolite frameworks, other than
`
`CHA, were being studied for NH3 SCR of NOx. PO Resp. 19. In this
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`regard, Patent Owner argues that “Petitioner’s theory of obviousness is in
`
`direct conflict with the fact that it was known more than a decade before the
`
`662 Patent was filed that the low hydrothermal stability of metal-exchanged
`
`
`3 Byrne, U.S. Patent No. 4,961,917, issued Oct. 9, 1990 (Ex. 1010).
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`zeolites limited their usefulness for the NH3 SCR of NOx.” Id. at 5.
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`According to Patent Owner, the claimed CuCHA catalyst is a solution to this
`
`problem. Id.
`
`c. Analysis
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`Evidence of a motivation to combine prior art references “may flow
`
`from the prior art references themselves [or] the knowledge of one of
`
`ordinary skill in the art.” Brown & Williamson Tobacco Corp. v. Philip
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`Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000). It is undisputed that
`
`Zones discloses the synthesis of a high SAR CHA zeolite that may contain
`
`copper, which is “capable of catalyzing the reduction of the oxides of
`
`nitrogen.” Ex. 1004, 1:54–64. Zones explains that its zeolite can be used in
`
`an “improved process for the reduction of oxides of nitrogen contained in a
`
`gas stream,” wherein the gas stream is the exhaust stream of an internal
`
`combustion engine. Id. at 1:54–67.
`
`Although Zones does not explicitly list specific reactions for the
`
`reduction of oxides of nitrogen, such as the use of CHA zeolites for
`
`ammonia SCR, the evidence of record suggests that a person of ordinary
`
`skill in the art would have understood the reference to the “reduction of
`
`oxides of nitrogen” to include ammonia SCR of NOx. Ex. 2009, ¶ 8; Ex.
`
`2027, 36:16–37:25; Tr. 46:21–23.
`
`Maeshima discloses “various modifications and improvements” to
`
`methods for catalytic reduction of nitrogen oxides, including “a selective
`
`reduction method in which ammonia is used as the reducing [a]gent.” Ex.
`
`1002, 1:19–26. In fact, Patent Owner states that “Maeshima itself . . .
`
`teach[es] metal-exchanged zeolites that are active for the NH3 SCR of
`
`NOx.” PO Resp. 30. Like Zones, Maeshima discloses removing nitrogen
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`oxides from a gas by contacting the gaseous mixture with a catalyst. Ex.
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`1002, 2:5–9. Maeshima states that “it is necessary to perform removal of
`
`nitrogen oxides while eliminating influences of sulfur oxides and oxygen.”
`
`Id. at 2:36–38. Maeshima includes chabazite among its list of zeolites that
`
`are “suitable” catalysts for the ammonia reduction of nitrogen oxides. Id. at
`
`4:6–11. Maeshima also discloses “a product obtained by exchanging an
`
`alkali metal ion in a crystalline alumino-silicate with at least one metal
`
`cation having an activity of reducing nitrogen oxides” (id. at 3:35–38),
`
`wherein the active metal can be copper, and the ion exchange ratio is
`
`preferably about 60 to about 100% (id. at 4:44–52).
`
`
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`In view of this, we credit Dr. Lecher’s testimony that “it was well
`
`known in the prior art that copper should be beneficially incorporated into a
`
`catalyst in an amount approaching a 100% ion-exchange rate” and that “[i]t
`
`was also well known that up to a point, increased amounts of copper,
`
`including that achieved by a utilizing a 100% ion-exchange ratio or rate,
`
`enhance the effectiveness of a zeolite when catalyzing the reduction of
`
`nitrogen oxides.” Ex. 1008 ¶ 153. This statement is consistent with not only
`
`the prior art references, but also with testimony from Patent Owner’s
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`declarant, Dr. Tsapatsis, who admitted that it was well-known that metals,
`
`such as copper, can be introduced into zeolites and make a zeolite active for
`
`the SCR of NOx. Ex. 1019, 113:25–114:14; Ex. 2018 ¶ 94. Dr. Tsapatsis
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`further admitted that a person of ordinary skill in the art would have known
`
`that a 60–100 % ion exchange ratio range was acceptable for incorporation
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`of copper into any zeolite. Ex. 1019, 114:23–115:19.
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`Thus, we find that both the prior art references themselves, as well as
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`the knowledge of a person of ordinary skill in the art, provide adequate
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`reasons to combine Zones and Maeshima.4
`
`
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`In arguing that Maeshima directs a person of ordinary skill towards
`
`the “especially preferred” low SAR (2–6), large pore size (6–13 Angstroms)
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`aluminosilicates, in contrast to the high SAR, small pore size CHA zeolite of
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`Zones (PO Resp. 28), Patent Owner ignores the full disclosure of Maeshima,
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`which describes preferred aluminosilicates as having “pore diameters in the
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`range of about 3–15 A and SiO2/Al2O3 molar ratios of above about 2” and
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`explicitly includes chabazites as suitable catalysts for SCR of NOx (Ex.
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`1002, 3:68–4:11). See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166
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`(Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior art
`
`must be considered as a whole for what it teaches”); see also Merck & Co. v.
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`Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103
`
`inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
`
`controlling, since all disclosures of the prior art, including unpreferred
`
`embodiments, must be considered.’” (quoting In re Lamberti, 545 F.2d 747,
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`750 (CCPA 1976))). Thus, contrary to Patent Owner’s contentions, the
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`combined teachings of Zones and Maeshima disclose using a high SAR
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`CHA zeolite for ammonia SCR.
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`4 We are not persuaded by Patent Owner’s argument that Petitioner does not
`explain “what a person of ordinary skill in the art would be attempting to
`achieve in combining Zones and Maeshima.” PO Resp. 30. Patent Owner
`cites to no legal authority establishing that this particular question, separate
`and apart from the question of whether Petitioner has established a reason to
`combine the prior art references, is part of an obviousness inquiry under 35
`U.S.C. § 103.
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`Patent Owner’s arguments that the prior art references fail to provide
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`any suggestion that combining the high SAR and CHA framework of Zones
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`with the ion exchange ratio of Maeshima “would improve the zeolite for the
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`SCR of NOx” is unconvincing. PO Resp. 26. Although finding an
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`improved zeolite for the SCR of NOx may have been the inventors’
`
`motivation, “[t]he skilled artisan need not be motivated to combine [the prior
`
`art] for the same reason contemplated by [the inventors].” In re Kahn, 441
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`F.3d 977, 990 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 420, (2007) (stating that it is error to look “only to the problem the
`
`patentee was trying to solve”).
`
`As to Patent Owner’s arguments regarding sulfur poisoning discussed
`
`in Byrne, we note that another prior art reference, Breck,5 discloses silicon
`
`substituted zeolites (including chabazites), which, “because they are more
`
`highly siliceous than their precursors[,] they are not only more thermally and
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`hydrothermally stable than those prior known materials but also have
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`increased resistance toward acidic agents such as m
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