04119.000100.36
`
`REEXAMINATION
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Reexamination of:
`
`IVOR BULL ET AL.
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`Patent No. 7,601,662
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`Issued: October 13, 2009
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`Control No. 95/001,453
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`Reexam Filed: September 28, 2010
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`Examiner: Diamond, Alan D
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`Group Art Unit: 3991
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`Confirmation No.: 2755
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`For: COPPERCHAZEOLITECATALYSTS
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`January 18, 2012
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`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Third Party Comments After Patent Owner's Response After ACP
`Under 37 C.F.R. § 1.951
`
`Madam:
`
`The following is the Requester's response to "Patent Owner's Amendment and Response
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`Under 37 C.F.R. § l.951(a)" as well as the attachments thereto filed on December 19, 2011, and
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`to the Action Closing Prosecution (ACP) dated November 18, 2011.
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`Exhibit 2005.001
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`

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`Table of Contents
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`I.
`
`II.
`
`Introduction .......................................................................................................................... 1
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`Patent Owner's Amendments Should Not Be Entered Because They Raise
`New Issues, Require New Consideration and/or a New Search, Impose an
`Undue Burden On the Examiner and/or Patent Owner Fails to Provide
`Good and Sufficient Reasons Why They are Necessary and Not Presented
`Earlier ................................................................................................................................... 2
`
`III.
`
`Proposed Rejection of Amended Specification ................................................................... 3
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`IV.
`
`Proposed Non-Art Rejections of Amended Claims 1-25 and 28-38 and
`New Claims 39-55 ............................................................................................................... 4
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`A.
`
`B.
`
`C.
`
`Newly Presented Claims 1-6, 9-25 and 28-55 are Invalid in View
`of 35 U.S.C. § 314(a) .............................................................................................. 4
`
`Newly Presented Claims 25, 28, 29, 31, and 39-43 are Invalid in
`View of 35 U.S.C. § 112, First Paragraph .............................................................. .5
`
`All Proposed Claims are Invalid Under 35 U.S.C. § 112, Second
`Paragraph ................................................................................................................. 7
`
`V.
`
`Patent Owner's Response is Not Persuasive in Overcoming the Rejections
`Set Fo1th in the ACP ............................................................................................................ 8
`
`A.
`
`The Rejections Set Forth in the ACP Should be Maintained ................................... 9
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`1.
`
`2.
`
`3.
`
`4.
`
`Arguments Not Related to Claimed Invention ............................................. 9
`
`The Claims Were Properly Construed ....................................................... 10
`
`The Patent Owner's Attempt to Overcome Strong Prima
`Facie Case of Obviousness by Painting the Zeolite
`Catalysis Art as Highly Unpredictable Is Flawed ...................................... 10
`
`SCR NOx Conversion With a Propene Reductant Provides
`a Reasonable Expectation of Success with an Ammonia
`Reductant ................................................................................................... 12
`
`B.
`
`C.
`
`Rejection of Claim 1 Over Yuen/Ritscher ............................................................. 13
`
`Rejection of Claims 1-11 Over Zones in View of Ishihara, as
`Evidenced by the Centi Declaration ...................................................................... 15
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`- 1 -
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`Exhibit 2005.002
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`

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`1.
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`2.
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`3.
`
`Zones Teaches All of Claim 1 Except the Optimization of
`Copper ........................................................................................................ 15
`
`Ishihara Teaches, and a Person of Ordinary Skill Would
`Have Understood, How to Optimize the Copper Loading of
`Zones to Reduce Oxides of Nitrogen ......................................................... 15
`
`A Person of Ordinary Skill Would Have Had a Reasonable
`Expectation of Success .............................................................................. 16
`
`4.
`
`Claims 2-11 ................................................................................................ 20
`
`D.
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`Rejection of claims 12-32 and 39-55 over Zones in view of
`Ishihara, as evidenced by the Centi Declaration, and further in
`view of Patchett '843 ............................................................................................. 21
`
`L
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`2.
`
`3.
`
`4.
`
`Claims 16, 17, 19, 20, 22 and 24 ............................................................... 21
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`Amended Claims 25, 28 and 29 ................................................................. 21
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`Amended Claim 31 .................................................................................... 22
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`Amended Claims 39-43 ............................................................................. 23
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`E.
`
`F.
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`Rejection of Claims 33, 34 and 36-38 over Zones in view of
`Ishihara, as evidenced by the Centi Declaration, and further in
`view of Patchett '514 ............................................................................................. 23
`
`Rejection of Claim 35 over Zones in view of Ishihara, as evidenced
`by the Centi Declaration, and further in view of Tennison .................................... 23
`
`G.
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`Rejection of Claims 1-11 over Dedecek in view of Chung ................................... 23
`
`L
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`2.
`
`3.
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`The Proposed Claims Remain Incredibly Broad ....................................... 24
`
`There was Strong Motivation for One Skilled in the Art to
`Increase the SAR of the Zeolite of Dedecek Based on the
`Teaching of Chung ..................................................................................... 24
`
`Patent Owner's "Comparative" Experiments Confirm that
`the CHA Zeolites of Dedecek Show High Catalytic
`Activity ...................................................................................................... 25
`
`4.
`
`Claims 2-11 ................................................................................................ 26
`
`H.
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`Rejection of Claims 12-32 and 39-55 over Dedecek in view of
`Chung, and fmther in view of Patchett '843 .......................................................... 26
`
`L
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`Claims 16, 17, 19, 20, 22 and 24 ............................................................... 26
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`- 11 -
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`Exhibit 2005.003
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`

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`2.
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`3.
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`4.
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`Amended Claims 25, 28 and 29 ................................................................. 27
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`Amended Claim 31 .................................................................................... 27
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`Amended Claims 39-43 ............................................................................. 27
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`Rejection of Claims 33, 34 and 36-38 over Dedecek in view of
`Chung, and further in view of Patchett '514 .......................................................... 28
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`Rejection of Claim 35 over Dedecek in view of Chung, and further
`in view of Tennison ............................................................................................... 28
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`I.
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`J.
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`VI.
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`No "lJnexpected Results" .................................................................................................. 28
`
`A.
`
`The Comparative Tests/Results of the "Closest Prior Art" are Not
`Relevant or lJnexpected ......................................................................................... 28
`
`1.
`
`2.
`
`The Patent Owner's Reliance on the Analysis by Dr. Haller
`Regarding the Closest Prior Art is Flawed ................................................ 28
`
`The Comparative Results are Not Unexpected or Relevant ...................... 29
`
`B.
`
`Attempt to Show "Unexpected Results" Not Commensurate in
`Scope With Claimed Invention .............................................................................. 31
`
`C.
`
`No Nexus Between Proffered Evidence and Claimed Invention ........................... 34
`
`VIL Attempt to Show Alleged "Secondary Considerations" Fails To Overcome
`the Strong Prima Facie Case of Obviousness ................................................................... 34
`
`CONCLUSION .............................................................................................................................. 36
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`- 111 -
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`Exhibit 2005.004
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`

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`I.
`
`Introduction
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`The Patent Owner attempts to amend the claims in response to the Action Closing
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`Prosecution (ACP) in a manner that creates a myriad of new issues. Therefore, the amendments
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`proposed in Patent Owner's Amendment and Response Under 37 C.F.R §1.95(a) (hereinafter
`
`"Response to ACP") should be denied entry.
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`Both the pending claims and the newly presented claims (if entered) fail to meet the
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`requirements of 35 U.S.C. §103 and §112, first and second paragraphs for the reasons previously
`
`stated and set forth herein. In addition, the newly presented claims contravene the requirements
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`of 35 U.S.C. §314 as they present claims having claim elements that are broader than granted in
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`the original U.S. Patent No. 7,601,622 patent (hereinafter "the '662 patent").
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`The prior art relied upon by the Examiner provides for a strong showing of obviousness.
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`For example, it is clear that Dr. Zones taught the world prior to the priority filing date of the '662
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`patent an aluminosilicate zeolite having a CHA crystal having a SAR of 22 or 30 could be loaded
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`with copper to reduce oxides of nitrogen. It is also clear that Ishihara provides a technique for
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`loading copper and recognizes the benefit of fully exchanging a zeolite having a CHA crystal
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`structure to maximize the conversion of oxides of nitrogen. Clearly, Zones provides a person of
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`ordinary skill with a reasonable expectation of success by virtue of actually claiming the process.
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`The Zones process may be used with any reductant, including ammonia, and certainly the Patent
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`Owner does not imply they are the first to use ammonia as a reductant. The findings of Ishihara
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`buttress the conclusion of reasonable expectation of success. The Patent Owner's assertions that
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`a person of ordinary skill would not have had a reasonable expectation of success because of the
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`unpredictability in the art are flawed. The assertions are predicated on an inapplicable standard
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`of certainty. The applicable standard, however, is reasonable expectation of success.
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`Pharmastem Therapeutics, Inc. v. Viacell, Inc., 492 F.3d 1342, 1364 (Fed. Cir. 2007) (although a
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`reasonable expectation of success is needed to support a case of obviousness, absolute
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`predictability is not required).
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`The Patent Owner continues to assert that the "stunning" and "remarkable" properties of
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`their claimed catalyst are evidence of patentability. As noted in Requester's Third Paity
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`Comments After Patent Owner's Response Under 37 C.F.R. § 1.947 filed on July 27, 2011 and
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`ratified on September 15, 2011 (hereinafter "Requester's First Response") and made clear in the
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`ACP, there is no question that objective evidence of nonobviousness must be commensurate in
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`Page 1of36
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`Exhibit 2005.005
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`

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`scope with the claimed invention. A careful review of the Response to ACP shows that the
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`Patent Owner has utterly failed to meet this requirement.
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`The newly presented independent claims 1 and 25 remain incredibly broad,
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`encompassing a tremendous number of potential aluminosilicate copper CHA zeolites. Newly
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`presented independent claim 39 continues to be directed to an infinite number of potential copper
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`zeolites. The Patent Owner asserts throughout its Response to ACP that copper CHA zeolitic
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`technology is a very unpredictable art area, but at the same time attempts to rely on a very
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`limited number of samples that are clearly not commensurate in scope with the claims previously
`
`presented or the newly presented claims. This is clear from the data of record that reveals
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`embodiments (e.g., Example 1 of the '622 patent) within the scope of the claims that do not
`
`exhibit properties that are "representative of the invention" as now defined by the Patent Owner,
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`and furthermore shows a complete lack of criticality regarding the claim ranges. See detailed
`
`discussion, infra, at Section VI.B. In fact, it is not apparent from the '662 patent or any of the
`
`Patent Owner's responses that more than one type of zeolite having a CHA crystal structure with
`
`a mole ratio of silica to alumina (SAR) greater than 15 has been tested. Moreover, Dr. Zones in
`
`his Second Declaration now asserts that even a person of extraordinary skill (Requester assumes
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`that Dr. Zones has more than ordinary skill) could not predict the results using SSZ-62 disclosed
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`in his own prior art patent (<J[l 4 ). The Patent Owner has not presented any data regarding this
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`copper exchanged zeolite. Nor is there any claim limitation in the proposed '662 patent claims,
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`whether dependent or independent, relating to the modification of the acid sites of a CHA zeolite
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`upon which Dr. Zones bases his opinion. If Dr. Zones' assertion is correct, it is clear for this
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`reason, as well as others detailed below, that the Patent Owner has not shown the evidence
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`presented is even close to commensurate in scope with the claimed invention. Accordingly, the
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`Patent Owner has not overcome the strong prima facie case of obviousness created by the prior
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`art relied upon by the Examiner in the ACP.
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`II.
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`Patent Owner's Amendments Should Not Be Entered Because They Raise New
`Issues, Require New Consideration and/or a New Search, Impose an Undue Burden
`On the Examiner and/or Patent Owner Fails to Provide Good and Sufficient
`Reasons Why They are Necessarv and Not Presented Earlier
`
`A response to an ACP is governed by 37 C.F.R. § 116(b).
`
`MPEP § 2673 (III) states:
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`Page 2of36
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`Exhibit 2005.006
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`It should be kept in mind that a patent owner cannot, as a matter of
`right, amend claims rejected in the ACP, add new claims after an ACP,
`nor reinstate previously canceled claims. A showing under 37 CFR
`1. l 16(b) is required and will be evaluated by the examiner for all proposed
`amendments after the ACP, except where an amendment merely cancels
`claims, adopts examiner's suggestions, removes issues for appeal, or m
`some other way reguires only a cursory review by the examiner.
`(Emphasis added).
`
`The Patent Owner's Response to ACP includes amendments to each of the independent
`
`claims and many dependent claims. The proposed amendments create significant new issues and
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`would require far more than a cursory review by the Examiner. For reasons discussed in detail
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`below, the Patent Owner's proposed amendments attempt to enter invalid claims that will require
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`significant new consideration and/or a new search, impose an undue burden on the Examiner, are
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`not in compliance with 37 C.F.R. § 1.l 16(b) or MPEP § 2673 (III), and certainly do not reduce
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`the issues for appeal. Accordingly, these amendments should not be entered.
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`III.
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`Proposed Rejection of Amended Specification
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`MPEP § 2163.06 (I) states that, "[i]f new subject matter is added to the disclosure,
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`whether it be in the abstract, the specification, or the drawings, the examiner should object to the
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`introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to
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`cancel the new matter."
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`Requester proposes that the Patent Owner's new amendment to the specification be
`
`rejected as new matter under 35 U.S.C. § 132, and the amendment not be entered. The new
`
`amendment to the specification at col. 4, lines 31-33, of the '662 patent deletes the term "ZYT-
`
`6" from the definition of zeolites having the CHA stmcture. However, such an amendment is
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`contrary to col. 1, lines 55-57, of the '662 patent, which indicates that "[a]spects of the invention
`
`are directed to zeolites that have the CHA crystal stmcture (as defined by the International
`
`Zeolite Association), catalysts comprising such zeolites, and exhaust gas treatments
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`incorporating such catalysts." It is clear from reading the '662 patent specification that an
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`important aspect of the invention was zeolites having a CHA crystal structure. The inventors
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`further indicate at col. 4, 11. 31-33, of the '662 patent that ZYT-6 is a known zeolite having a
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`CHA crystal stmcture. This is not a factual error, but is in fact tme. It would not be apparent to
`
`a person of ordinary skill in the art that the inclusion of ZYT-6, which is a
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`Page 3of36
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`Exhibit 2005.007
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`silicoaluminophosphate zeolite, as an example of a zeolite having the CHA structure, was an
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`"error", as currently alleged by Patent Owner.
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`In fact, during the prosecution of the '662 patent, this alleged "error" was not apparent
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`even to the Patent Owner. In an obviousness rejection, when the Examiner cited to the Frache
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`reference as disclosing "compositions such as Cu containing SAPO materials, which are of the
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`CHA crystal structure," the Patent Owner acknowledged that Frache disclosed SAP0-34, but did
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`not argue that SAP0-34 was included in the specification in "error" or that SAP0-34 was
`
`excluded per se from the claims. Office Action dated January 13, 2009, p. 6; Patent Owner's
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`Amendment dated May 28, 2009, pp. 11-12. Instead, the Patent Owner argued that the SAR and
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`the Cu/ Al ratio of Frache were outside the claimed range. Id. In fact, in this Amendment, the
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`Patent Owner had amended the specification to update the patent number of a disclosed U.S.
`
`patent application, but did not correct the currently alleged "error". Accordingly, Requester
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`respectfully submits that Patent Owner's new amendment to the specification should be rejected
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`under 35 U.S.C. § 132, and the amendment not be entered.
`
`IV.
`
`Proposed Non-Art Rejections of Amended Claims 1-25 and 28-38 and New Claims
`39-55
`
`A.
`
`Newly Presented Claims 1-6, 9-25 and 28-55 are Invalid in View of
`35 U.S.C. § 314(a)
`
`Section 314(a) states that in inter partes reexamination "no proposed amended or new
`
`claim enlarging the scope of the claims of the patent shall be permitted." The standard for this
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`determination is the same as in reissue applications - that is to say that a claim change "enlarges
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`the scope of the claims of the patent if it is broader in at least one respect, even though it may be
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`narrower in others." MPEP § 1412.03(1); see also MPEP § 2658(III)(A).
`
`Requester respectfully proposes that proposed amended claims 1-6, 9-25 and 28-38 and
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`new claims 44-55, if entered, be rejected under 35 U.S.C. § 314(a) for impermissibly enlarging
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`the scope of the claims of the '662 patent. Current amendments to independent claims 1 and 25
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`broaden original claims 1 and 25, respectively, by amending SAR from "greater than about 15"
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`to "from about 15". Similarly, current amendments to independent claims 1 and 25 broaden
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`original claims 1 and 25, respectively, by amending the atomic ratio of copper to aluminum from
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`"exceeding about 0.25" to "from about 0.25". This new recitation includes a SAR of about 15
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`and a Cu/Al ratio of about 0.25, instead of greater than or exceeding those values. These values
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`Page 4of36
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`Exhibit 2005.008
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`were not present in original claims 1 and 25. Although the phrase "from about" was used in
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`original dependent claim 2, it is axiomatic that a dependent claim cannot create a greater scope
`
`than the claim from which it depends. Accordingly, claims 1 and 25, and their dependent claims,
`
`namely, claims 2-6, 9-26 and 28-38 and new claims 44-55, broaden the scope of the invention
`
`claimed in the '662 patent.
`
`Requester also proposes that new claims 39-43 be rejected under 35 U.S.C. § 314(a) for
`
`impermissibly enlarging the scope of the claims of the '662 patent. New independent claim 39 is
`
`based on original claim 25. Original claim 25 recites a Cu/Al ratio of "exceeding about 0.25".
`
`New claim 39 broadens this feature by reciting "equal to or exceeding about 0.25". Because
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`claim 39 changes the lower limit of the Cu/Al ratio, Patent Owner has impermissibly changed the
`
`scope of the claims. Accordingly, claim 39 and its dependent claims 40-43 broaden the scope of
`
`the invention claimed in the '662 patent.
`
`Accordingly, if the amendments set forth in the Response to ACP are entered, then
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`Requester respectfully requests that claims 1-6, 9-26, and 28-55 should be rejected under 35
`
`U.S.C. § 314(a).
`
`B.
`
`Newly Presented Claims 25, 28. 29. 31. and 39-43 are Invalid in View of 35
`U.S.C. § 112. First Paragraph
`
`Newly presented claim 25 is invalid under the written description requirement of 35
`
`U.S.C. § 112, first paragraph. The newly presented claim recites that "the catalyst exhibits fresh
`
`NOx conversion exceeding 60% at 210 °C." This recitation is not found anywhere in the original
`
`disclosure of the '662 patent. Similarly, the same claim further recites "aged NOx conversion
`
`exceeding 60% at 210 °C after aging." Again, no such recitation is found anywhere in the
`
`original disclosure of the '662 patent. Accordingly, this recitation is clearly an attempt to craft a
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`subgenus of the original invention long after the filing of the original specification. There is
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`simply no support. Therefore, if newly presented claim 25 is entered, then it should be rejected
`
`as lacking written description. Additionally, dependent claims 28 and 29 should be rejected for
`
`the same reason.
`
`Newly presented claim 39 is invalid under the written description requirement of 35
`
`U.S.C. § 112, first paragraph. The newly presented claim recites a "zeolite exhibiting higher
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`NOx conversion at about 210 °C after hydrothermal aging at 850 °C in 10% steam for 6 hours, as
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`compared to Cu Beta zeolite having a silica to alumina ratio of about 35 and a copper to
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`Page 5of36
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`Exhibit 2005.009
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`aluminum ratio of about 0.36 and prepared, tested and hydrothermally aged under the same
`
`conditions as the zeolite having CHA crystal structure." (Emphasis added). A careful review of
`
`the specification shows no disclosure of such a comparative test. The CHA samples in Table 1
`
`of the '662 patent appear to have been aged at 800 °C for 50 hours, not 850 °C. Moreover, it is
`
`not seen that the Cu Beta catalyst, which was prepared using the method of comparative
`
`Example 10 (e.g. 0.1 M copper sulfate solution) was ever prepared in the same manner as any of
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`the copper CHA samples set forth in Table 1 (e.g., Example 3 uses a 1.0 M copper sulfate
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`solution). There appears to be absolutely no support for this proposed comparative test.
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`Accordingly, if newly presented claim 39 is entered, then it should be rejected as lacking written
`
`description. Similarly, dependent claims 39-43 should also be rejected as lacking written
`
`description.
`
`Newly presented claims 25, 31 and 39 are invalid as lacking enablement under 35 U.S.C.
`
`§ 112, first paragraph. Each claim now sets forth a test that must be conducted to determine if an
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`aluminosilicate zeolite having a CHA structure having a SAR with a claimed range of 15 to an
`
`upper range of 150 (claim 25), 100 (claim 31) or less than about 100 (claim 39) and a copper to
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`aluminum ratio from 0.25 to 1 (claims 25 and 31) or simply exceeding 0.25 (claim 39). As
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`previously noted, the claims extend to any aluminosilicate zeolite having a CHA structure. A
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`multitude of aluminosilicate zeolites having the CHA structure were known at the time of the
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`priority filing. Moreover, these claims would extend to even aluminosilicate zeolites having a
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`CHA structure that might be invented after the priority filing or in the future. It is not apparent
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`from the '662 patent or any of the Patent Owner's responses that more than one aluminosilicate
`
`zeolite with a CHA structure has been exemplified and tested. The Patent Owner has not stated
`
`otherwise. The catalysts set forth in the '662 patent and the Second Moini Declaration, which
`
`are not comparable to those of the '662 patent (discussed infra at Section VI.B.), are limited in
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`the range of SAR tested. The highest SAR tested that is asserted to have acceptable results being
`
`for a SAR of 49.2, although the claimed SAR ranges include double or more than that. In
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`addition, a very limited Cu/ Al ratio was shown to be tested and asserted to be effective to some
`
`degree. Most significantly, not only are the ranges of SAR and Cu/Al far beyond the scope of
`
`what the Patent Owner alleges has been shown to be effective, but it appears that only one type
`
`of aluminosilicate with a CHA structure has been tested. The claims presented by Patent Owner
`
`are much broader than that and encompass for instance the SSZ-62 disclosed in Zones.
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`Page 6of36
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`Exhibit 2005.010
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`Significantly, however, Dr. Zones has stated in his Second Declaration at paragraph 14 that "[i]n
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`the case of SSZ-13/SSZ-62 having the CHA framework type, the additional modification of acid
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`sites within the cages through the addition of various metals can change overall reaction rates,
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`catalyst stability, possible selectivity and/or high temperature stability. Because the results are
`
`so unpredictable, further experimental work would need to be conducted." (Emphasis added).
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`While Dr. Zones has made these statements in the attempted rebuttal of an obviousness rejection
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`over the '662 patent, these same statements, if accurate, would mean that each and every
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`aluminosilicate having a CHA structure would need to be tested to determine if it met the
`proposed conditions set forth in the newly presented claims. 1 This would clearly be undue
`
`experimentation. Accordingly, if the Patent Owner's assertion that the art is so highly
`
`unpredictable is accepted, then Requester respectfully submits that the newly presented claims
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`25, 31 and 39 and dependent claims 28, 29, and 40-43, if entered, should be rejected for lack of
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`enablement.
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`Requester also notes that previous enablement rejection of pending claim 9 has not been
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`rebutted. Accordingly, it is respectfully submitted that the rejection of claim 9 be maintained.
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`C.
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`All Proposed Claims are Invalid Under 35 U.S.C. § 112. Second Paragraph
`
`Proposed amended claim 1 recites that "the catalyst [is] effective to promote the reaction
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`of ammonia with nitrogen oxides to form nitrogen and H 20 selectively". However, it is unclear
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`what the claim term "catalyst effective to promote" means and the '662 patent does not make
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`clear what constitutes an effective catalyst, let alone what test one of ordinary skill in the art
`
`would use to determine if a catalyst is effective. For example, it is unclear how much of NOx
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`conversion is required to be considered "effective". Is it aged or unaged? Under what
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`conditions of use? Therefore, the recitation of "catalyst effective to promote" is indefinite.
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`Accordingly, Requester respectfully submits that newly proposed claim 1 and its dependent
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`claims 2-24, 30-36, and 44-55, if entered, should be rejected under 35 U.S.C. § 112, second
`
`paragraph.
`
`Proposed amended claim 25 is indefinite for a number of reasons. At line 4 of the claim
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`it recites "when the catalyst is disposed". However, "the catalyst" has not been previously
`
`defined, and therefore, this recitation lacks antecedent basis. Moreover, at lines 4-5, the claim
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`1 Notably. there is no limitation in the claims that defines the modification of the acid sites to which Dr. Zones
`refers.
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`Page 7of36
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`Exhibit 2005.011
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`requires that the catalyst be "disposed on a 1 inch diameter X 3 inch long cellular ceramic core",
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`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
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`"
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`recited at line 6 inclusive of a binder and what "catalyst" is being referred to? At least for these
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`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.
`
`Proposed amended claim 31 is indefinite for several reasons. At lines 2-3 of claim 31,
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`"effective to promote reaction of ammonia and nitrogen oxides" appears to be redundant with the
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`recitation in claim 1 from which claim 31 ultimately depends. As noted above, the meaning of
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`"effective to promote" is not defined by the '662 patent specification and its duplicative
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`inclusion creates further confusion as to the meaning of the claim. In addition, proposed claim
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`31 now recites "exhibiting high catalytic activity", but there is no definition of "high catalytic
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`activity" in the '662 patent. Accordingly, Requester respectfully submits that the proposed
`
`amended claim 31, if entered, should be rejected for failing to meet the requirements of 35
`
`U.S.C. § 112, second paragraph.
`
`Proposed amended claim 39 is indefinite. There is no indication as to how the
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`aluminosilicate zeolite would be deposited on the substrate. Would a binder be present or
`
`absent? As previously stated, even an inventor of the '662 patent has stated in his First
`
`Declaration that NOx conversion by a zeolite is highly dependent on how the sample was made.
`
`See First Moini Deel., <[5. Moreover, the claim requires that the zeolite exhibit "higher NOx
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`conversion". The '662 patent, however, is silent as to what "higher" means. There is no
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`definition provided. Accordingly, Requester respectfully submits that proposed amended claim
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`39 and its dependent claims 40-43, if entered, should be rejected as indefinite under 35 U.S.C. §
`
`112, second paragraph.
`
`V.
`
`Patent Owner's Response is Not Persuasive in Overcoming the Rejections Set Forth
`in theACP
`
`The following comments are directed to the Patent Owner's Response to ACP set forth at
`
`pages 18-44 (i.e., Section VI).
`
`Page 8of36
`
`Exhibit 2005.012
`
`

`
`A.
`
`The Rejections Set Forth in the ACP Should be Maintained
`
`1.
`
`Arguments Not Related to Claimed Invention
`
`In the Response to ACP, the Patent Owner continues to repeatedly make arguments based
`
`on features not actually recited in the claims or alleged advantages that have not been shown to
`
`be commensurate in scope with the claimed invention. As noted above, the proposed
`
`amendment to claims that recites the catalyst is effective to promote the reaction of ammonia
`
`with nitrogen oxides can at most mean the catalyst is catalytically active in that regard. Thus,
`
`this is not a meaningful limitation and is certainly not limited to a catalyst having some defined
`
`unexpected property. Notably, this claim is not even limited to an aged catalyst. Nor are the
`
`proposed claims limited to a catalyst that reduces oxides of nitrogen exclusively with ammonia,
`
`i.e., they include catalysts that also reduce oxides of nitrogen with other reductants, such as
`
`hydrocarbons. Zones provides for the reduction of oxides of nitrogen with any reductant.
`
`Accordingly, the Patent Owner's numerous assertions regarding the unpredictability in the art are
`
`not relevant.
`
`The Patent Owner asserts that the allegedly unique features of invention of the claims,
`
`such as high conversion at low temperatures, maintenance of high conversion at low
`
`temperatures after hydrothermal aging, low generation of N 20 and low susceptibility to
`
`poisoning by hydrocarbons, have been improperly ignored or could not have been predicted by
`
`the cited art. The Patent Owner cites to In re Papesch, 315 F.2d 381, 391(C.C.P.A.1963) for
`
`the proposition that a compound and all of its properties are inseparable. Far different from the
`
`present case, the genus claim at issue in the In re Papesch case was focused on a highly defined
`
`trialkyl compound, where the alkyl group was limited to one of C 2-C4 alkyl. In contrast, the
`
`pending and proposed claims here are incredibly broad. The newly presented independent
`
`claims 1 and 25 encompass a tremendous number of potential aluminosilicate copper CHA
`
`zeolites, while newly presented independent claim 39 continues to be directed to an infinite
`
`number of potential copper zeolites. The Patent Owner has not shown that the claims of the '662
`
`patent are even close to commensurate with such alleged unique features, let alone that a person
`
`of ordinary skill would not have had a reasonable expectation of successfully obtaining said
`
`features.
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`Page 9of36
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`Exhibit 2005.013
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`

`
`2.
`
`The Claims Were Properly Construed
`
`The Patent Owner asserts that the ACP improperly construed the claims of the '662
`
`patent by including SAP0-34 (Ishihara) in the scope of the claims. However, if the Examiner
`
`has indeed improperly construed the claims as suggested by the Patent O