UNITED ST ATES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PA TENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`WW\\o".uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,453
`
`09/2812010
`
`7,601,662
`
`04119.000100.36
`
`2755
`
`06/1412012
`7590
`13872
`Diehl Servilla LLC (CGG/COG)
`33 Wood Avenue South
`Second Floor, Suite 210
`lselin, NJ 08830
`
`EXAMINER
`
`DIAMOND, ALAND
`
`ART UNIT
`
`PAPER NUMBER
`
`3991
`
`MAIL DATE
`
`06/14/2012
`
`DELIVERY MODE
`
`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)
`
`Exhibit 2006.001
`
`

`
`UNITED STA TES PA TENT AND TRADEIYIARK OFFICE
`
`DO NOT USE IN PALM PRINTER
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`FITZPATR1CK, CELLA, HARPER & SCINTO
`1290 AVENUE OF THE AMER1CAS
`NEW YORK, NY 10104-3800
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date: MAILED
`
`JUN I 4 2012
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`REEXAMINATION CONTROL NO.: 95001453
`PATENT NO.: 7601662
`TECHNOLOGY CENTER: 3999
`ART UNIT: 3991
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified Reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`PTOL-2070(Rev.07-04)
`
`Exhibit 2006.002
`
`

`
`Transmittal of Communication to
`Third Party R~quester
`Inter Partes Reexamination
`
`Control No.
`
`95/001,453
`Examiner
`
`ALAN DIAMOND
`
`Patent Under Reexamination
`
`7,601,662
`Art Unit
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (5/04)
`
`PaperNo.20120613A
`
`Exhibit 2006.003
`
`

`
`INTER PARTES REEXAMINATION
`COMMUNICATION
`
`Control No.
`
`95/001,453
`Examiner
`
`Patent Under Reexamination
`
`7,601,662
`Art Unit
`
`ALAN DIAMOND
`
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`BELOW/ATIACHED YOU WILL FIND A COMMUNICATION FROM THE UNITED STATES PATENT
`AND TRADEMARK OFFICE OFFICIAL(S) IN CHARGE OF THE PRESENT REEXAMINATION
`PROCEEDING.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this
`communication.
`
`U.S. Patent and Trademark Office
`PTOL-2072 (5/04)
`
`PaperNo.20120613A
`
`Exhibit 2006.004
`
`

`
`Right of Appeal Notice
`(37 CFR 1.953)
`
`Control No.
`
`95/001,453
`Examiner
`
`Patent Under Reexamination
`
`7,601,662
`Art Unit
`
`3991
`ALAN DIAMOND
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on - -
`Third Party(ies) on __
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41.20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41.20{b){1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the US PTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed __
`
`D will be entered
`
`D will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`1 a.1.2] Claims 1-25 and 28-55 are subject to reexamination.
`are not subject to reexamination.
`1 b. D Claims
`2. 1.2] Claims 26 and 27 have been cancelled.
`3. D Claims
`are confirmed. [Unamended patent claims].
`4. 1.2] Claims 1-24.30.32-38 and 44-55 are patentable. [Amended or new claims].
`5. 1.2] Claims 25.28.29.31 and 39-43 are rejected.
`6. D Claims
`are objected to.
`7. D The drawings filed on
`Dare acceptable. Dare not acceptable.
`8. D The drawing correction request filed on __ is D approved. D disapproved.
`9. D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`D been received.
`10. D Other - -
`Attachments
`1. D Notice of References Cited by Examiner, PT0-892
`2. D Information Disclosure Citation, PTO/SB/08
`
`. D not been received.
`
`D been filed in Application/Control No. __ .
`
`3. o __
`
`U.S. Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20120613A
`
`Exhibit 2006.005
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 2
`
`Summary of Proceedings
`
`A Request pursuant to 37 CFR 1.913 for inter partes reexamination of claims 1-
`
`38 of U.S. Patent 7,601,662 (hereinafter "the '662 patent") was filed September 28,
`
`2010. A declaration under 37 CFR 1.132 by Gabriele Centi, PhD (hereafter "First Centi
`
`Declaration") accompanied the request. An Order granting inter partes reexamination of
`
`claims 1-38 and a non-final Office action rejecting claims 1-38 were mailed November
`
`16, 2010.
`
`In accordance with the petition decision dated September 8, 2011, Patent
`
`Owner's response to the non-final rejection included the following:
`
`the amendments and remarks submitted on June 29, 2011;
`
`the drawings submitted on February 15 and 16, 2011;
`
`the declarations under 37 CFR 1.132 by Gary L. Haller (hereafter "First Haller
`
`Declaration"), David H. Olson (hereafter "First Olson Declaration"), Stanley Roth, Ph.D.
`
`(hereafter "First Roth Declaration"), Stacey I. Zones (hereafter "First Zones
`
`Declaration"), Ahmad Moini, Ph.D. (hereafter "First Moini Declaration"), and Pramod
`
`Ravindran (hereafter "First Ravindran Declaration"), filed on February 15, 2011 and on
`
`June 29, 2011, which, taken together, "are deemed to be· the declarations of record that
`
`are included with the June 29, 2011 corrected response submission" (see p. 2 of said
`
`petition decision); and
`
`the exhibits, filed on February 15, 2011, which accompany the declarations under
`
`37 CFR 1.132 of Gary L. Haller, David H. Olson, Stanley Roth, Ph.D., and Pramod
`
`Ravindran, respectively.
`
`Exhibit 2006.006
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 3
`
`The amendment of June 29, 2011 amended claims 9 and 26-29, and added new
`
`claims 39-55.
`
`Third Party Requester filed a response which included comments, a Rule 1.132
`.
`.
`
`declaration by Johannes A. Larcher, PhD (hereafter "First Larcher Declaration") and a
`
`second Rule 1.132 declaration by Centi (hereafter "Second Centi Declaration"), each
`
`filed July 27, 2011.
`
`An Action Closing Prosecution (ACP) rejecting claims 1-55 was mailed
`
`November 18, 2011.
`
`On December 19, 2011, Patent Owner filed a response including an amendment,
`
`which has been entered, and second Rule 1.132 declarations by each of Haller, Olson,
`
`Roth, Zones, Moini and Ravindran, respectively hereafter referred to as the "Second .
`
`Haller Declaration", "Second Olson Declaration", "Second Roth Declaration", "Second
`
`Zones Declaration", "Second Moini Declaration" and "Second Ravindran Declaration".
`
`On January 18, 2012, Third Party Requester filed comments including a Rule
`
`1.132 declaration by Wolfgang Strehlau (hereafter "Strehlau Declaration"), a third Rule
`
`1.132 declaration by Centi (hereafter "Third Centi Declaration"), and a second Rule
`
`1.132 declaration by Larcher (hereafter "Second Lercher Declaration").
`
`On May 11, 2012 a second ACP was mailed, wherein claims 1-24, 30, 32-38 and
`
`44-55 were found patentable, and claims 25, 28, 29, 31 and 39-43 were rejected.
`
`Patent Owner did not file a response to the second ACP.
`
`Exhibit 2006.007
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page4
`
`Scope of Claims
`
`In reexamination, patent claims are construed broadly. In re Yamamoto, 740
`
`F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984) (claims given "their
`
`broadest reasonable interpretation consistent with the specification"). This
`
`reexamination proceeding contains claims 1-25 and 28-55 as per the amendment of
`
`12/19/11, directed to a catalyst, an exhaust gas treatment system, and a catalyst article.
`
`Claims 1, 2, 12, 14, 15, 21, 25, 31 and 39 are representative:
`
`1. (amended) A catalyst comprising: an aluminosilicate zeolite having the CHA
`
`crystal structure and a mole ratio of silica to alumina [greater than) from about 15 to
`
`about 150 and an atomic ratio of copper to aluminum [exceeding] from about 0.25 to
`
`about 1. the catalyst effective to promote the reaction of ammonia with nitrogen oxides
`to form nitrogen and H20 selectively.
`
`2. (amended) The catalyst of claim 1, wherein the mole ratio of silica to alumina
`
`is from about 15 to about [256) 100 [and the atomic ratio of copper to aluminum is from
`
`about 0.25 to about 0.50].
`
`12. (original) The catalyst of claim 2, wherein the catalyst is deposited on a
`
`honeycomb substrate.
`
`14. (original) The catalyst of claim 12, wherein the honeycomb substrate
`
`comprises a flow through substrate.
`
`15. (original) The catalyst of claim 14, wherein at least a portion of the flow
`
`through substrate is coated with CuCHA adapted to reduce oxides of nitrogen contained
`
`in a gas stream flowing through the substrate.
`
`Exhibit 2006.008
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 5
`
`21. An exhaust gas treatment system comprising the catalyst of claim 15·
`
`disposed downstream from a diesel engine and an injector that adds a reductant to an
`
`exhaust gas stream from the engine.
`
`25. (amended) A catalyst article comprising a honeycomb substrate having a
`
`zeolite having the CHA crystal structure deposited on the substrate, the zeolite having a
`
`mole ratio of silica to alumina [greater than] from about 15 to about 150, and an atomic
`
`ratio of copper to aluminum [exceeding] from about 0.25 to about 1, such that when the
`
`catalyst is disposed on a 1 inch diameter X 3 inch long cellular ceramic core having a
`
`cell density of 400 cells per square inch and a wall thickness of 6.5 mil at a catalyst
`loading of 2.4 g/in3 and tested for nitrogen oxides selective catalytic reduction efficiency
`and selectivity by adding a feed gas mixture of 500 ppm of NO. 500 ppm of NH3. 10%
`lli. 5% HzO. balanced with N2 to a steady state reactor containing the catalyst core at a
`space velocity of 80.000 hr"1 across a 150 °C to 460 °C temperature range. the catalyst
`exhibits fresh NOx conversion exceeding 60% at 210 °C and upon aging. aged NOx
`
`conversion exceeding 60% at 210 °C after aging of the catalyst in the presence of 10%
`!:!20 at 800°C for 50 hours [and containing an amount of free copper exceeding ion(cid:173)
`exchanged copper].
`
`31. (amended) An exhaust gas treatment system comprising an exhaust gas
`
`stream containing oxides of nitrogen and ammonia and a catalyst in accordance with
`
`claim 2 effective to promote reaction of ammonia and nitrogen oxides and exhibiting
`
`high catalytic activity over a temperature range of 210 °C to 460 °C after hydrothermal
`
`aging in 10% steam at 800 °C for 50 hours [effective for destroying at least a portion of
`
`the ammonia in the exhaust gas stream].
`
`39. (new) An ammonia SCR catalyst article comprising a metallic or ceramic
`
`substrate having deposited thereon an aluminosilicate zeolite having the CHA crvstal
`
`structure. the zeolite having a mole ratio of silica to alumina greater than about 15 and
`
`less than about 100 and an atomic ratio of copper to aluminum equal to or exceeding
`
`Exhibit 2006.009
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 6
`
`about 0.25. the zeolite exhibiting higher NOx conversion at about 210 °C after
`
`hydrothermal aging at 850 °C in 10% steam for 6 hours. as compared to Cu Beta zeolite
`
`having a silica to alumina ratio of about 35 and a copper to aluminum ratio of about 0.36
`
`and prepared. tested and hydrothermally aged under the same conditions as the zeolite
`
`having the CHA crystal structure.
`
`According to col. 1, lines 55-65 of the '662 patent: "Aspects of the invention are
`
`directed to zeolites that have the CHA structure (as defined by the International Zeolite
`
`association) ... [i]n specific embodiments, novel copper chabazite catalysts are
`
`provided .... " Chabazite has the crystal structure designation "CHA", as is known in
`
`the art.
`
`35USC§132
`
`1.
`
`In the Comments filed 01/18/12, Third Party Requester proposes that the
`
`amendment filed 12/19/11 be objected to under 35 U.S.C. 132(a) as introducing
`
`new matter into the disclosure.
`
`This proposed objection is not adopted for the reasons that follow.
`
`Third Party Requester argues that deletion of "ZYT-6" zeolite from col. 4, line 33
`
`of the '662 patent specification is new matter because ZTY-6 is a known zeolite having
`
`a CHA crystal structure; and that "[i]t would not be apparent to a person of ordinary skill
`
`in the art that the inclusion of ZYT-6, which is a silicoaluminophosphate [SAPO] zeolite,
`
`as an example of a zeolite having the CHA structure, was an 'error', as currently alleged
`
`by Patent Owner." (Comments of 01/18/11, pp. 3-4). Third Party Requester argues that
`
`Exhibit 2006.010
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 7
`
`during prosecution of the '662 patent, Patent Owner acknowledged that the Frache
`
`reference (Topics in Catalysis, Vol. 22, Nos. 1 and 2, January 2003, pp. 53-57, hereby
`
`made of record) disclosed SAP0-34, but did not argue that SAP0-34 was included in
`
`the specification in error or that SAP0-34 was excluded per se from the claims
`
`(Comments of 01/18/12, p. 4).
`
`This is unpersu?sive. As noted on pp. 21-22 of Patent Owner's Remarks filed
`
`12/19/11, citing to 117 of the Second Haller Declaration, "[i]t is well known to one of
`
`ordinary skill in the art that a SAPO material has a silica to alumina ratio less than one,
`
`and certainly less than 15", and thus, the claims of the '662 patent exclude SAPO
`
`materials. As noted in W of the Second Haller Declaration, "I have been informed that
`
`the inclusion of ZYT-6 in the '662 patent was an error, which is not significant because
`
`the claims of the '662 patent never recited or covered ZYT-6." Accordingly, deletion
`
`from the '662 patent specification of the SAPO known as ZYT-6 is not new matter.
`
`35 USC § 314(a)
`
`2.
`
`In the Comments filed 01/18/12, Third Party Requester proposes that claims
`
`1-6, 9-25 and 28-55 be rejected under 35 USC 314(a) as enlarging the scope of the
`
`claims of the '662 patent.
`
`This proposed rejection is not adopted for the reasons that follow.
`
`Third Party Requester argues that amended independent claims 1 and 25 (and
`
`their dependent claims 2-6, 9-26, 28-38 and 44-55) broaden original claims 1 and 25,
`
`respectively, by amending the silica to alumina mole ratio (SAR) from reciting "greater
`
`Exhibit 2006.011
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 8
`
`than about 15" to now recite "from about 15"; and by amending the atomic ratio of
`
`copper to aluminum from reciting "exceeding about 0.25" to now recite "from about 0.25"
`
`(Comments of 01/18/12, pp. 4-5). Third party requester argues that "[a]lthough the
`
`phrase "from about" was used in original dependent claim 2, it is axiomatic that a
`
`dependent claim cannot create a greater scope than the claim from which it depends."
`
`(Comments of 01/18/12).
`
`These arguments are unpersuasive. Since "greater than about 15" and "from
`
`about 15" are modified by "about", there is no discernable difference between the two.
`
`There is no evidence showing that the actual numerical value forthe lower.limit of
`
`"greater than about 15" is any different from "from about 15". Likewise, there is no
`
`discernable difference between "exceeding about 0.25" and "from about 0.25" due to
`
`the word "about". Additionally, the "from about 15" and "from about 0.25" are recited in
`
`patented claim 2, which depends from claim 1.
`
`With respect to claim 39 and its dependent claims 40-43, Third Party Requester
`
`argues that new independent claim 39 is based on patented claim 25, which recites
`
`"exceeding about 0.25" for the copper to aluminum ratio; and that the range "equal to
`
`or exceeding about 0.25" in claim 39 is broader than said "exceeding about 0.25"
`
`(Comments of 01/18/12, p. 5).
`
`This is unpersuasive. The zeolite recited in the zeolite article of claim 39 is
`
`based on the zeolite in patented claims 1 and 2. As noted above, patented claim 1
`•
`recites an atomic ratio of copper to aluminum "exceeding about 0.25", while patented
`
`Exhibit 2006.012
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 9
`
`claim 2 recites "from about 0.25 ... ". Each of these ranges includes 0.25, and thus the
`
`range "equal to or exceeding about 0.25" is supported.
`
`35USC§112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
`
`3.
`
`Claims 25, 28, 29 and 39-43 are rejected under 35 U.S.C. 112, first
`
`paragraph, as failing to comply with the written description requirement. The
`
`claim(s) contains subject matter which was not described in the specification in
`
`such a way as to reasonably convey to one skilled in the relevant art that the
`
`inventor(s), at the time the application was filed, had P.ossession of the claimed
`
`invention.
`
`This rejection was proposed by Third PartY Requester in the Comments filed
`
`01/18/12 and is adopted for the reasons that follow.
`
`In claim 25, the recitation "the catalyst exhibits a fresh NOx conversion
`
`exceeding 60% at 210°C and upon aging, aged NOx conversion exceeding 60% at 210
`
`°C after aging of the catalyst in the presence of 10% H20 at 800°C for 50 hours" is not
`
`supported by the '662 patent. The same applies to dependent claims 28 and 29.
`
`The test recited in claim 25 is based on disposing the catalyst on a 1 inch
`
`diameter X 3 inch long cellular ceramic core having a cell density of 400 cells per
`
`square inch and a wall thickness of 6.5 mil at a catalyst loading of 2.4 g/in3 and testing
`
`Exhibit 2006.013
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 10
`
`for nitrogen oxides selective catalytic reduction efficiency and selectivity by adding a
`
`feed gas mixture of 500 ppm of NO, 500 ppm of NH3, 10% 02, 5% H20, balanced with
`
`N2 to a steady state reactor containing the catalyst core at a space velocity of 80,000 hr"
`
`1 across a 150 °C to 460 °C temperature range, and Patent Owner has pointed for
`
`support to Example 1 at col. 11, lines 1-19 of the '662 patent (seep. 14 of the Remarks
`
`filed 12/19/11 ). While much of the testing added to claim 25 comes from said Example
`
`1, the ranges exceeding 60% at 210°C for the fresh and aged catalyst subjected to the
`
`testing are unsupported.
`
`In addition to Example 1, other inventive examples tested according to the test in
`
`claim 25 are Examples 1A, 2-5 and 18. The data for fresh and aged NOx conversion in
`
`Examples 1-5 are shown in Table 1 of the '662 patent, the pertinent portion of which is
`
`reproduced below:
`
`NOx conversion(%)
`
`Example
`
`210°C, fresh
`
`210°C, aged
`
`1
`2
`3
`4
`5
`
`75
`62
`74
`76
`50
`
`43
`59
`70
`60
`30
`
`Further, Fig. 1A of the '662 patent shows the NOx conversion data for Example 1A.
`
`According to col. 19, lines 59-60, Example 18 exhibited the same selective catalytic
`
`reduction (SCR) performance as Example 3. While col. 19, line 59 states that the SCR
`
`Exhibit 2006.014
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 11
`
`data for Example 18 is in Fig. 7, the correct '662 patent figure showing the Example 18
`
`data is Fig. 9 (see col. 4, lines 4-8).
`
`The above data do not support 100% conversion as an upper limit for the fresh
`
`and aged conversion at 210°C, and thus, the ranges "exceeding 60% at 210°C" for the
`
`fresh and aged conversion are unsupported by the '662 patent. Example 2 meets the
`
`210°C fresh conversion (62%) and comes close to the 210°C aged conversion (59%).
`
`Example 3 meets the 210°C fresh (74%) and aged (70%) conversion. Example 4 meets
`
`the 210°C fresh conversion (76%) and abuts the 210°C aged conversion (60%).
`
`Additionally in claim 25, the recitation of "a catalyst loading of 2.4 g/in3
`
`" is not
`
`supported by the '662 patent. The same applies to dependent claims 28 and 29. The
`
`2.4 g/in3 is recited in Example 1 of the '662 patent, but is for the washcoat, not the
`
`"catalyst" (see col. 11, lines 4-6). This washcoat includes not only catalyst, but also
`
`zirconium acetate binder (see col. 7, lines 55-67 and col. 10, line 60 through col. 11, line
`
`6).
`
`Claim 39 and its dependent claims 40-43 lack adequate written description in the
`
`'662 patent since they require a "zeolite exhibiting higher NOx conversion at about 210
`
`°C after hydrothermal aging at 850°C in 10% steam for 6 hours, as compared to Cu
`
`Beta zeolite having a silica to alumina ratio of about 35 and a copper to aluminum ratio
`
`of about 0.36 and prepared, tested and hydrothermally aged under the same conditions
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`as the zeolite having CHA crystal structure." There is no such comparative test in the
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`'662 patent specification. The Cu beta zeolite in Comparative Example 11 of the '662
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`patent was evaluated according to Example 1 (see col. 14, lines 13-14). However, the
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`Exhibit 2006.015
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`

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`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 12
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`aging in Example 1 is carried out at 800°C for 50 hours, not 850°C for 6 hours.
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`Furthermore, it is not seen that the Cu Beta catalyst, which was prepared using the
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`method of comparative Example 10 (e.g. 0.1 M copper sulfate solution) was ever
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`prepared in the same manner as any of the copper CHA samples set forth in Table 1
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`(e.g., Example 3 uses a 1.0 M copper sulfate solution).
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`4.
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`In the Comments filed 01/18/12, Third Party Requester proposes that claims
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`25, 28, 29, 31 and 39-43 be rejected under 35 USC 112, first paragraph, as lacking
`
`enablement.
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`This proposed rejection is not adopted for the reasons that follow.
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`On pp. 6-7 of the Comments filed 01/18/12, Third Party Requester argues that
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`the claims set forth a test that must be conducted; that there are a multitude of
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`aluminosilicates having the CHA crystal structure; that results are unpredictable in the
`
`art; that every aluminosilicate zeolite having a CHA structure would need to be tested to
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`determine if it met the proposed conditions set forth in the claims; and that such would
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`be undue experimentation (Comments of 01/18/12, pp. 6-7).
`
`This is unpersuasive. As noted in MPEP 2164.01(a), there are many factors to
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`be considered when determining whether there is sufficient evidence to support a
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`determination that a disclosure satisfies the enablement requirement and whether any
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`necessary experimentation is "undue." These factors include:
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`(A)
`
`The breadth of the claims;
`
`(B) The nature of the invention;
`
`Exhibit 2006.016
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`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`(C)
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`The state of the prior art;
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`Page 13
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`(D)
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`The level of one of ordinary skill;
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`(E)
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`The level of predictability in the art;
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`(F)
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`The amount of direction provided by the inventor;
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`(G)
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`The existence of working examples; and
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`(H)
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`The quantity of experimentation needed to make or use the invention
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`based on the content of the disclosure.
`
`With respect to factor (A), claims 25, 28, 29, 31 and 39-43 are more narrow than
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`the broadest claim, i.e., claim 1 that issued in the '662 patent.
`
`With respect to factor (B), the tests set forth in the claims are related to low
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`temperature stability and hydrothermal stability of the catalyst as used for NH3 SCR of
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`NOx. As noted, for example, in the paragraph bridging cols. 1 and 2 of the '662 patent:
`
`One embodiment of the present invention pertains to copper CHA
`catalysts and their application in exhaust gas systems such as those designed to
`reduce nitrogen oxides. In specific embodiments, novel copper chabazite
`catalysts are provided which exhibit improved NH3 SCR of NOx. The copper
`chabazite catalysts made in accordance with one or more embodiments of the
`present invention provide a catalyst material which exhibits excellent
`·
`hydrothermal stability and high catalytic activity over a wide temperature range.
`When compared with other zeolitic catalysts that find application in this field,
`such as Fe Beta zeolites, copper CHA catalyst materials according to
`embodiments of the present invention offer improved low temperature activity
`and hydrothermal stability.
`
`With respect to factor (C), the prior art already knew, for example, that metal-
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`promoted zeolite catalysts including, among others, iron-promoted and copper(cid:173)
`
`promoted zeolite catalyst, could be used for the SCR of NOx with NH3 (see col. 1, lines
`
`30-33; and col. 2, lines 3-8). As noted by Third Party Requester at pp. 1-2 of the
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`Exhibit 2006.017
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`

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`Application/Control Number: 95/001,453
`Art Unit: 3991
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`Page 14
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`request, "the use of copper promoted zeolites for the removal of oxides of nitrogen from
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`gaseous media by selective catalytic reduction with reduCing agents, such as ammonia
`
`and hydrocarbons, was well known at the time of the priority filing of the '662 Patent."
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`With respect to factor (D), the level of ordinary skill in the art is high, as
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`evidenced by the art of record.
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`With respect to factor (E), i.e., the level of predictability, it is again noted that
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`patented claim 1 is broader than claims 25, 28, 29, 31 and 39-43 and sets forth a
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`catalyst comprising a zeolite having the CHA crystal structure and a mole ratio of silica
`
`to alumina greater than about 15 and an atomic ratio of copper to aluminum exceeding
`
`about 0.25.
`
`With respect to factors (F) and (G), numerous working and comparative
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`examples are provided in the '622 patent. See Examples 1-22 of the '622 patent.
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`Example 1 teaches how to prepare a Cu-CHA catalyst, and sets forth specific testing for
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`conversion and hydrothermal stability.
`
`With respect to factor (H), there is nothing unusual about the tests set forth in the
`
`claims. They are merely conventional-type tests that a skilled artisan would perform to
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`evaluate conversion and hydrothermal stability of the catalyst. In fact, similar testing is
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`shown in the Chen and Ishihara references.
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`Accordingly, claims 25, 28, 29, 31 and 39-43 are enabled.
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`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Exhibit 2006.018
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`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
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`Page 15
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`5.
`
`Claims 25, 28, 29 and 31 are rejected under 35 U.S.C. 112, second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which applicant regards as the invention.
`
`On pages 7-8 of the Comments filed 01/18/12, Third Party Requester proposes
`
`that claims 1-25 and 29-55 be rejected under 35 USC 112, second paragraph. The
`
`proposed rejection of claims 1-25, 29, 30 and 32-55 is not adopted for the reasons that
`
`follow. The proposed rejection of claims 25, 28, 29 and 31 is adopted for the reasons
`
`that follow. It is noted that Patent Owner proposes rejection of claims 25, 28, 29 and 31
`
`under 35 USC 112, second paragraph, for several reasons, some of which are adopted
`
`and some of which are not adopted, as discussed below.
`
`Proposed 112 second paragraph rejections not adopted:
`
`With respect to claims 1-24, 30-36 and 44-55, Third Party Requester argues that
`
`in independent claim 1 and dependent claim 31 (as well as dependent claims 2-24, 30,
`
`32-36 and 44-55), it is unclear what "effective to promote" means (Comments of
`
`01/18/12, pp. 7-8). This is unpersuasive. For example, claim 1 recites that "the catalyst
`
`[is] effective to promote the reaction of ammonia with nitrogen oxides to form nitrogen
`
`and H20 selectively"; and claim 31, which depends from claim 1, recites "effective to
`
`promote reaction of ammonia and nitrogen oxides". The "effective to promote" sets
`
`forth the use of the catalyst. It is clear from the '662 patent specification that the
`
`claimed catalyst improves upon the low temperature activity and hydrothermal stability
`
`of catalysts for NH3 selective catalytic reduction of NOx (see the Summary of the
`
`invention at cols. 1-3 of the '662 patent; and Examples 1-22).
`
`Exhibit 2006.019
`
`

`
`Application/Control Number: 95/001,453
`Art Unit: 3991
`
`Page 16
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`With respect to claim 25 and its dependent claims 28 and 29, Third Party
`
`Requester argues the following at pp. 7-8 of the Comments filed 01/18/12:
`
`[A]t lines 4-5, the claim [i.e., claim 25] requires that the catalyst be "disposed on a
`1 inch diameter X 3 inch long cellular ceramic core", but there is no indication
`how the "catalyst" is "disposed". For example, is a coating applied as a slurry
`and would that slurry contain a binder? Similarly, is "a catalyst loading of 2.4
`g/in3
`" recited at line 6 inclusive of a binder and what "catalyst" is being referred
`to? At least for these reasons, Requester respectfully submits that newly
`proposed claim 25, and its dependent claims 28 and 29, if entered, should be
`rejected as indefinite under 35 U.S.C. § 112, second paragraph.
`
`This is unpersuasive. Claim 25 and its dependent claims encompass the
`
`situation where a binder can be present, a slurry is used, and the slurry contains a
`
`binder, however, the catalyst (e.g., CuCHA) is deposited at 2.4 g/in3
`
`.
`
`With respect to claim 39 and its dependent claims 40-43, Third Party Requester
`
`argues the following on p. 8 of the Comments filed 01/18/12:
`
`Proposed amended claim 39 is indefinite. There is no indication as to how
`the aluminosilicate zeolite would be deposited on the substrate. Would a binder
`be present