04119.000100.36
`
`REEXAMINATION
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Inter Partes Reexamination of:
`
`IVOR BULL ET AL.
`
`Patent No. 7,601,662
`
`Issued: October 13, 2009
`
`)
`
`)
`
`)
`
`)
`
`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
`For: COPPER CHA ZEOLITE CATALYSTS
`
`) September 28, 2010
`
`Mail Stop Inter Partes Reexamination
`Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION
`
`Sir:
`
`Pursuant to 35 U.S.C. §§ 311through318 and 37 C.F.R. §§ 1.902 through 1.997, inter
`
`partes reexamination is requested of United States Patent No. 7,601,662 ("the '662 Patent"),
`
`which issued on October 13, 2009, in the name oflvor Bull et al.
`
`Exhibit 2007.001
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`IDENTIFICATION OF EVERY CLAIM FOR WHICH
`REXAMINATION IS REQUESTED .................................................................................. 1
`
`II.
`
`The '662 Patent .................................................................................................................... 1
`
`A.
`
`B.
`
`The Background of the '662 Patent ......................................................................... 1
`
`The Prosecution History of the '662 Patent.. ........................................................... 4
`
`III.
`
`RELATED LITIGATION ................................................................................................... 7
`
`IV.
`
`CERTIFICATIONS ............................................................................................................. 7
`
`A.
`
`B.
`
`Real Party of Interest ............................................................................................... 7
`
`No Estoppel Exists ................................................................................................... 7
`
`V.
`
`PRIOR ART AS BASIS FOR REEXAMINATION ........................................................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`U.S. Patent Application Pub. No. 200610115403 (Yuen) ........................................ 8
`
`U.S. Patent No. 4,297,328 (Ritscher et al.) .............................................................. 8
`
`U.S. Patent No. 6,709,644 (Zones et al.) ................................................................. 9
`
`Ishihara, T. et al., Copper Ion-Exchanged SAP0-34 as a
`Thermostable Catalyst for Selective Reduction of NO with C3H6,
`Journal of Catalysis, vol. 169, pp. 93-102 (1997) (Ishihara et al.) .......................... 9
`
`U.S. Patent Application Pub. No. 2006/0039843 (Patchett et al.) ........................... 9
`
`U.S. Patent Application Pub. No. 2005/0031514 (Patchett '514) ......................... 10
`
`U.S. Patent Application Pub. No. 2004/0098973 (Tennison et al.) ....................... 10
`
`U.S. Patent Application Pub. No. 2004/0171476 (Nam et al.) .............................. 10
`
`Dedecek, J. et al., Siting of the Cu+ Ions in Dehydrated Ion
`Exchanged Synthetic and Natural Chabasites: A Cu+
`Photoluminescence Study, Microporous and Mesoporous
`Materials, vol. 32, pp. 63-74 (1999) (Dedecek et al.) ............................................ 10
`
`Chung, S.Y. et al., Effect of Si/Al Ratio ofMordenite and ZSM-5
`Type Zeolite Catalysts on Hydrothermal Stability for NO
`Reduction by Hydrocarbons, Studies in Surface Science and
`Catalysis, vol. 130, pp. 1511-1516 (2000) (Chung et al.) ...................................... 11
`
`ii
`
`Exhibit 2007.002
`
`

`
`VI.
`
`STATEMENT UNDER 37 C.F.R. § l.510(B)(l) POINTING OUT
`SUBSTANTIAL NEW QUESTIONS OF PA TENT ABILITY AND
`DETAILED EXPLANATION UNDER 37 C.F.R. § l.510(B)(2) OF THE
`PERTINENCY AND MANNER OF APPL YING THE CITED PRIOR
`ART .................................................................................................................................... 11
`
`A.
`
`B.
`
`C.
`
`Claim 1 is unpatentable under 35 U.S.C. § 102(e) as being
`anticipated by U.S. Patent Application Pub. No. 2006/0115403
`(Yuen) including the disclosure incorporated by reference from
`U.S. Patent No. 4,297,328 (Ritscher et al.) ............................................................ 12
`
`Claim 1 is unpatentable under 35 U.S.C. § 103(a) as being obvious
`over U.S. Patent Application Pub. No. 2006/0115403 (Yuen) in
`view of U.S. Patent No. 4,297,328 (Ritscher et al.) ............................................... 16
`
`Claims 1-11 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over U.S. Patent No. 6,709,644 (Zones et al.) in view of
`Ishihara, T. et al., Copper Ion-Exchanged SAP0-34 as a
`Thermostable Catalyst for Selective Reduction of NO with C3H6,
`Journal of Catalysis, vol. 169, pp. 93-102 (1997) (Ishihara et al.) ........................ 18
`
`1.
`
`2.
`
`3.
`
`Claims 12-32 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Zones et al. in view of Ishihara et al.
`and further in view of U.S. Patent Application Pub. No.
`2006/0039843 (Patchett et al.) ................................................................... 25
`
`Claims 33, 34 and 36-38 are unpatentable under 35 U.S.C.
`§ 103(a) as being obvious over Zones et al. in view of
`Ishihara et al. and further in view of U.S. Patent
`Application Pub. No. 2005/0031514 (Patchett '514) ................................. 33
`
`Claim 35 is unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Zones et al. in view of Ishihara et al. and
`further in view of U.S. Patent Application Pub. No.
`· 2004/0098973 (Tennison et al) .................................................................. 35
`
`D.
`
`Claims 1-11 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over U.S. Patent No. 6,709,644 (Zones et al.) in view of
`U.S. Patent Application Pub. No. 2004/0171476 (Nam et al.) .............................. 37
`
`1.
`
`2.
`
`Claims 12-32 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Zones et al. in view of Nam et al. and
`further in view of U.S. Patent Application Pub. No.
`2006/0039843 (Patchett et al.) .................................................................. .44
`
`Claims 33, 34 and 36-38 are unpatentable under 35 U.S.C.
`§ 103(a) as being obvious over Zones et al. in view of Nam
`
`iii
`
`Exhibit 2007.003
`
`

`
`et al. and further in view of U.S. Patent Application Pub.
`No. 2005/0031514 (Patchett '514) ............................................................. 51
`
`3.
`
`Claim 35 is unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Zones et al. in view of Nam et al. and further
`in view of U.S. Patent Application Pub. No. 2004/0098973
`(Tennison et al) .......................................................................................... 54
`
`E.
`
`Claims 1-11 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Dedecek, J. et al., Siting of the Cu+ Ions in
`Dehydrated Ion Exchanged Synthetic and Natural Chabasites: A
`Cu+ Photoluminescence Study, Microporous and Mesoporous
`Materials, vol. 32, pp. 63-74 (1999) (Dedecek et al.) in view of
`Chung, S.Y. et al., Effect of Si/Al Ratio ofMordenite and ZSM-5
`Type Zeolite Catalysts on Hydrothermal Stability for NO
`Reduction by Hydrocarbons, Studies in Surface Science and
`Catalysis, vol. 130, pp. 1511-1516 (2000) (Chung et al.) ...................................... 55
`
`1.
`
`2.
`
`3.
`
`Claims 12-32 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Dedecek et al. in view of Chung et al.
`and further in view of U.S. Patent Application Pub. No.
`2006/0039843 (Patchett et al.) ................................................................... 61
`
`Claims 33, 34 and 36-38 are unpatentable under 35 U.S.C.
`§ 103(a) as being obvious over Dedecek et al. in view of
`Chung et al. and further in view of U.S. Patent Application
`Pub. No. 2005/0031514 (Patchett '514) .................................................... 68
`
`Claim 35 is unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Dedecek et al. in view of Chung et al. and
`further in view of U.S. Patent Application Pub. No.
`2004/0098973 (Tennison et al) .................................................................. 71
`
`VIL CONCLUSION ............................................................................................ ; ..................... 72
`
`APPENDIX
`• Copy of U.S. Patent No. 7,601,662 (patent to be reexamined)
`• Exhibit A (D.W. Breck, Zeolite Molecular Sieves: Structure, Chemistry, and Use, pp. 4-
`5, 493, 536 (John Wiley & Sons, Inc.) (1974))
`• Exhibit B (R. M. Heck, et al., Catalytic Air Pollution Control: Commercial Technology,
`p. 15 (2d ed., John Wiley & Sons, Inc.) (2002))
`• Exhibit C (Chung, S.Y. et al., Effect of Si/Al Ratio ofMordenite and ZSM-5 Type
`Zeolite Catalysts on Hydrothermal Stability for NO Reduction by Hydrocarbons, Studies
`in Surface Science and Catalysis, vol. 130, pp. 1511-1516 (2000))
`• Exhibit D (Ishihara, T. et al., Copper Ion-Exchanged SAP0-34 as a Thermostable
`Catalyst for Selective Reduction of NO with C3H6, Journal of Catalysis, vol. 169, pp. 93-
`102 (1997))
`
`lV
`
`Exhibit 2007.004
`
`

`
`• Exhibit E (Dedecek, J. et al., Siting of the Cu+ Ions in Dehydrated Ion Exchanged
`Synthetic and Natural Chabasites: A Cu+ Photoluminescence Study, Microporous and
`Mesoporous Materials, vol. 32, pp. 63-74 (1999))
`• Exhibit F (January 13, 2009 Office Action)
`• Exhibit G (May 28, 2009 Supplemental Amendment)
`• Exhibit H (July 31, 2009 Notice of Allowability)
`• Exhibit I (Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 58 U.S.P.Q.2d
`1545 (Fed. Cir. 2001))
`• Exhibit J (Declaration by Gabriele Centi, Ph.D., under 37 C.F.R. § 1.132)
`• Certificate of Service
`
`v
`
`Exhibit 2007.005
`
`

`
`I.
`
`IDENTIFICATION OF EVERY CLAIM FOR
`WHICH REXAMINATION IS REQUESTED
`
`Reexamination is requested of claims 1-38 of the '662 Patent.
`
`II.
`
`The '662 Patent
`
`A.
`
`The Background of the '662 Patent
`
`The '662 Patent is directed to copper CHA zeolite catalysts that may be used in exhaust
`
`gas treatment systems. Col. 1, 11. 16-18. It is well known that zeolites are aluminosilicate
`
`crystalline materials having a "framework" of channels of interconnected voids of relatively
`
`uniform pore size and are often described as molecular sieves. D.W. Breck, Zeolite Molecular
`
`Sieves: Structure, Chemistry, and Use, pp. 4-5 (John Wiley & Sons, Inc.) (1974) (Breck)
`
`(attached as Exhibit A). See also R. M. Heck, et al., Catalytic Air Pollution Control:
`
`Commercial Technology, p. 15 (2d ed., John Wiley & Sons, Inc.) (2002) (attached as Exhibit B);
`
`'662 Patent at col. 1, ll. 22-26. As indicated in the '662 Patent, it is also well known to use
`
`"copper-promoted zeolite catalysts for the selective catalytic reduction of nitrogen oxides with
`
`ammonia." Col. 1, 11. 30-34.
`
`Zeolites are classified by the International Zeolite Association based on the structure of
`
`the zeolite. The '662 Patent uses a known zeolite structure type that is described as a chabazite
`
`crystal structure or CHA for short. Col. 1, ll. 55-57. It is well known that zeolites may have
`
`varying molar ratios of Si02:Ab03 commonly described as the silica to alumina molar ratio or
`
`SAR. See, e.g., U.S. Patent Application Pub. No. 2006/0115403 (Yuen) at paragraphs [0005]-
`
`[0008] on p. 1.
`
`As noted above, the use of copper promoted zeolites for the removal of oxides of nitrogen
`
`from 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. See U.S.
`
`1
`
`Exhibit 2007.006
`
`

`
`Patent Application Pub. No. 2004/0171476 (Nam et al.), paragraphs [0005]-[0007] on p. 1. The
`
`'662 Patent in its broadest sense is directed to a copper zeolite catalyst having a CHA crystal
`
`structure with a silica to alumina mole ratio greater than about 15 and an atomic ratio of copper
`
`to aluminum exceeding about 0.25. Col. 2, 11. 9-12. It is asserted in the '662 Patent that
`
`embodiments of the invention provide copper CHA catalysts having improved low temperature
`
`activity and hydrothermal stability. Col. 2, 11. 5-8. It was well known, however, at the time of
`
`the priority filing of the '662 Patent that the hydrothermal stability of zeolite catalysts, despite
`
`the difference in structure, was dependent primarily on the silica to alumina mole ratio of the
`
`catalyst. Chung, S.Y. et al., Effect of Si/Al Ratio ofMordenite and ZSM-5 Type Zeolite
`
`Catalysts on Hydrothermal Stability for NO Reduction by Hydrocarbons, Studies in Surface
`
`Science and Catalysis, vol. 130, 1511-1516 (2000) (Chung et al.), at pp. 1513-16 (attached as
`
`Exhibit C). See also Breck at p. 493. In addition, zeolites having the CHA crystal structure and
`
`a silica to alumina mole ratio greater than 15 were also known at the time of the priority filing of
`
`the '662 Patent. See, e.g., U.S. Patent No. 6,709,644 (Zones et al.), Yuen and U.S. Patent No.
`
`4,544,538 (Zones).
`
`Thus, it is clear that it was well known that increasing the silica to alumina mole ratio
`
`would enhance the hydrothermal stability of zeolites and that zeolites having a CHA crystal
`
`structure with a silica to alumina ratio greater than 15 were known. It was also well recognized
`
`prior to the priority filing date of the '662 Patent that as the silica to alumina mole ratio was
`
`increased, the exchange capacity of the zeolite would decrease. See Breck at p. 536. With this
`
`knowledge in mind, a person of ordinary skill in the art at that time seeking to make a copper
`
`promoted zeolite for the selective catalytic reduction of oxides of nitrogen with a particular
`
`2
`
`Exhibit 2007.007
`
`

`
`zeolite, would have sought to place an amount of copper on the zeolite carrier to optimize the
`
`conversion of oxides of nitrogen. See, e.g., Nam et al., paragraph [0015] on p. 2.
`
`The '662 Patent requires a copper to aluminum atomic ratio greater than 0.25. It was,
`
`however, very well known at the time of the priority filing of the '662 Patent that a person of
`
`ordinary skill in the art would seek to optimize the amount of copper that would be loaded on a
`
`catalyst used for the reduction of oxides of nitrogen. See, e.g., Ishihara, T. et al., Copper Ion(cid:173)
`
`Exchanged SAP0-34 as a Thermostable Catalyst for Selective Reduction of NO with C3H6,
`
`Journal of Catalysis, vol. 169, pp. 93-102 (1997) (Ishihara et al.), Figure 4 (attached as Exhibit
`
`D). Thus, the inclusion of an amount of copper on the CHA zeolite of the '662 Patent to
`
`optimize the reduction of oxides of nitrogen was nothing more than the optimization of a well
`
`known results effective parameter. In fact, the prior art would have suggested to a person of
`
`ordinary skill in the art to load about 2.5 to about 4.0 wt. % copper on a known CHA zeolite
`
`having a silica alumina mole ratio greater than 15 to optimize the resulting catalyst's use for the
`
`reduction of oxides of nitrogen. See, e.g., Ishihara et al., Fig. 4 (3 to 4 wt.% optimal), Nam et al.,
`
`paragraph [0015] on p. 2 (2.5 wt.% to 3.5 wt.% optimal). Not surprisingly, the '662 Patent states
`
`that a particular embodiment should contain at least 2.0% CuO by weight (1.6 wt.% copper) and
`
`the Examples found to be the best performing contained 2.75 wt.% to 3.7 wt.% CuO, which is
`
`about 2.2 wt.% to about 3.0 wt.% copper.
`
`Although, the '662 Patent informs the reader that the copper loaded on the CHA zeolite
`
`may be exchanged or non-exchanged (also described as free copper) (col. 2, 11. 27-31 and col. 6,
`
`11. 31-34), there is no indication of an amount of free copper or even how one would measure the
`
`amount of free copper. In fact, the '662 Patent alleges that equivalent results are obtained using
`
`a catalyst allegedly having some amount of free copper and a catalyst allegedly containing no
`
`3
`
`Exhibit 2007.008
`
`

`
`free copper. Col, 19, 11. 58-61. Thus, the claims of the '662 Patent are clearly disclosed or
`
`suggested by the prior art and yield nothing more than predictable results.
`
`B.
`
`The Prosecution History of the '662 Patent
`
`The '662 Patent was filed on February 27, 2008, as U.S. Patent Application No.
`
`12/038,423 ("the '423 Application"). The '423 Application claimed priority to U.S. Provisional
`
`Patent Application No. 60/891,835, filed February 27, 2007. 1
`
`The '423 Application was filed with claims 1-38. The originally-filed claims included
`
`independent claims 1.and 32 directed to a catalyst and a catalyst article, respectively, 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. Independent claim 25 from
`
`the '662 Patent corresponds to claim 32 of the '423 Application. Originally-filed claims 25-31
`
`directed to a process for the reduction of oxides of nitrogen were withdrawn as a result of a
`
`restriction requirement.
`
`In the first Office Action dated January 13, 2009, the Examiner rejected all the pending
`
`claims as being rendered obvious by (among others) U.S. Patent No. 6, 709,644 (Zones et al.) or
`
`U.S. Patent Application Pub. No. 2006/0115403 (Yuen). See January 13, 2009 Office Action, p.
`
`6, 11. 3-6 (hereinafter "Office Action") (attached as Exhibit F). The Examiner stated that the
`
`cited references teach silica to alumina mole ratio of approximately 5, and that any increase in
`
`this ratio to greater than about 15 as claimed was obvious. Id. at p. 6, 11. 15-18. The Examiner
`
`further stated that the cited references do not state that the copper to aluminum atomic ratio
`
`should be greater than 0.25, although they all contain copper in amounts that overlap this
`
`recitation. Id. at p. 6, 11. 11-13. In addition, the Examiner stated that Yuen indicated that the
`
`1 Requester does not concede that the application to which the '423 Application claims priority
`includes a written description that supports the claims in the '662 Patent.
`
`4
`
`Exhibit 2007.009
`
`

`
`amount of copper was disclosed as being a result-effective variable for converting nitrogen oxide
`
`materials, which is the same ultimate use envisioned by the Applicants. Id. at p. 6, 11. 13-15.
`
`In response to the rejection, the Applicants asserted that Zones et al. and Yuen contained
`
`absolutely no teaching of the copper to aluminum atomic ratio. See May 28, 2009 Supplemental
`
`Amendment, p. 12, 11. 6 (hereinafter "Responsive Amendment") (attached as Exhibit G). The
`
`Applicants, however, admitted that Zones et al. disclosed a silica to alumina mole ratio of 30,
`
`and erroneously asserted that Yuen disclosed a silica to alumina mole ratio of"l,010 to
`
`288,900"2
`
`• See id. at 11. 8-9. Nevertheless, the Applicants argued that the claimed ranges of
`
`silica to alumina and copper to aluminum were well outside the ranges taught by the references.
`
`See id. at p. 14, 11. 1-2.
`
`The Examiner allowed the application after the Applicants made the above arguments.
`
`The Examiner's allowability of the claims of the '662 Patent was based on the fact that she had
`
`found no teaching whatsoever regarding any amount of copper in the composition of Yuen, and
`
`accordingly no motivation to provide a material with the atomic ratio of copper to aluminum
`
`claimed in the '662 Patent. See July 31, 2009 Notice of Allowability, p. 2, 11. 15-17 (hereinafter
`
`"Notice of Allowability") (attached as Exhibit H). In addition, the Examiner stated that none of
`
`the prior art of record, either alone or in combination, anticipates or renders obvious the instantly
`
`claimed invention as the prior art fails to teach or establish a link between the silica to alumina
`
`ratio and the copper to aluminum ratio in the final catalyst. Id. at p. 2, 11. 2-4. The '662 Patent
`
`subsequently issued on October 13, 2009.
`
`The Applicants' argument with respect to Yuen not disclosing the claimed silica to
`
`alumina mole ratio of greater than about 15, however, is not accurate. Yuen discloses a catalyst
`
`2 In fact, the Applicants' arguments were erroneously directed to U.S. Patent Application Pub.
`No. 2006/0115401 (with first inventor Yuen), which was not applied by the Examiner.
`
`5
`
`Exhibit 2007.010
`
`

`
`comprising a molecular sieve having the CHA crystal structure and having a mole ratio of silicon
`
`oxide to aluminum oxide of 50 to 1500. See paragraph [0010] on p. 1; Examples 1-16 on pp. 4-
`
`5. Moreover, Example 1 of Zones et al. discloses a zeolite with a silica to alumina mole ratio of
`
`22. Col. 6, 11. 30-31. Thus, contrary to the Applicants' argument, Yuen does in fact disclose the
`
`claimed silica to alumina mole ratio of greater than about 15, as does Zones et al.
`
`Moreover, the Applicants' arguments and the Examiner's statements set forth above with
`
`respect to Yuen not disclosing the claimed copper to aluminum atomic ratio of greater than about
`
`0.25, are also not accurate. See Responsive Amendment, p. 12, 11. 6; Notice of Allowability, p.
`
`2, 11. 15-17. In particular, Yuen discloses that its catalyst can be used in a process including the
`
`reduction of oxides of nitrogen wherein an effective amount of catalytiG copper metal or copper
`
`ions is included within or on the zeolite. See paragraph [0034] on p. 4 of Yuen. Yuen clearly
`
`describes that U.S. Patent No. 4,297,328 (Ritscher et al.), which was "incorporated by
`
`reference", contains more detailed information as to what is "an effective amount of catalytic
`
`copper metal or copper ions" for reducing oxides of nitrogen. See paragraph [0034] on p. 4 of
`
`Yuen. Ritscher et al. discloses an example of a zeolite containing 7.3% copper by weight. Col.
`
`10, 11. 28-29 of Ritscher et al. In addition, Zones et al. also discloses that the zeolite may contain
`
`metal ions such as copper for catalyzing the reduction of the oxides of nitrogen. Col. 1, 11. 61-65.
`
`Further, the metal cation of Zones et al. is preferably in the range of from 0.05 to 5 % by weight.
`
`Col. 5, 11. 25-35.
`
`For these and other reasons, Yuen and Zones et al. are being applied against the claims in
`
`this Request, albeit alone or using a different combination of references. It is Requestor' s
`
`position that a substantial amount of prior art that teaches the claimed copper to aluminum
`
`6
`
`Exhibit 2007.011
`
`

`
`atomic ratio was not applied during prosecution. When taken in combination, that prior art
`
`renders the claimed subject matter obvious.
`
`In addition, the Examiner did not apply specific prior art that inherently would result in
`
`non-exchanged copper or free copper recited in the claims, including in independent claim 25.
`
`Examples of such art are described below in Sections V. and VI.
`
`III. RELATED LITIGATION
`
`The '662 Patent was asserted in BASF Catalysts LLC v. Johnson Matthey Inc., Case No.
`
`09-cv-761, U.S. Dist. Ct. Dist. of Delaware, filed October 13, 2009. This litigation was
`
`terminated per stipulation of dismissal filed May 13, 2010. Requestor will provide a copy of the
`
`complaint and/or the stipulation of dismissal in this case at the request of the Office.
`
`IV.
`
`CERTIFICATIONS
`
`A.
`
`Real Party of Interest
`
`The real party of interest for this request is Johnson Matthey, Inc.
`
`B.
`
`No Estoppel Exists
`
`Requestor certifies it is not estopped under 37 C.F.R. § 1.907 from filing this Request for
`
`Inter Partes Reexamination.
`
`V.
`
`PRIOR ART AS BASIS FOR REEXAMINATION
`
`Requestor submits that the following documents raise substantial new questions of
`
`patentability of the claims of the '662 Patent as set forth below. The substantial new questions of
`
`patentability are set forth in Section VI. below.
`
`Copies of the listed non-patent literature are submitted with this Request for Inter Partes
`
`Reexamination. In accordance with MPEP § 2618, however, copies of the U.S. Patents and U.S.
`
`Patent Publications discussed below are not provided.
`
`7
`
`Exhibit 2007.012
`
`

`
`A.
`
`U.S. Patent Application Pub. No. 2006/0115403 (X!!£!!)
`
`U.S. Patent Application Pub. No. 2006/0115403 (Yuen) is applicable under 35 U.S.C. §
`
`102(e) against the claims of the '662 Patent.
`
`Yuen was cited as a reference in an Information Disclosure Statement by the Applicants.
`
`Also, as discussed above with respect to the prosecution history, the Examiner rejected all of the
`
`originally-filed claims of the '423 Application as being rendered obvious by Yuen. Yuen,
`
`however, still raises a substantial new question ofpatentability of the.claims of the '662 Patent
`
`because it is being applied below as an anticipation rejection (when considered with the
`
`disclosure incorporated by reference from U.S. Patent No. 4,297,328 (Ritscher et al.)) with
`
`respect to claim 1 of the '662 Patent and in a combination not previously considered with respect
`
`to claim 1 of the '662 Patent. Specifically, it is being considered for the disclosures of the
`
`copper to aluminum atomic ratio of greater than about 0.25, which the Applicants argued was not
`
`disclosed in Yuen.3
`
`B.
`
`U.S. Patent No. 4,297,328 (Ritscher et al.)
`
`U.S. Patent No. 4,297,328 (Ritscher et al.) is applicable under 35 U.S.C. § 102(b) against
`
`the claims of the '662 Patent.
`
`As discussed above, Ritscher et al. was "incorporated by reference" in the specification
`
`of Yuen. However, Ritscher et al. was not cited as a reference in an Information Disclosure
`
`Statement by the Applicants or in a Notice of References Cited by the Examiner during
`
`prosecution of the '423 Application. Nor was Ritscher et al. applied in a rejection by the
`
`Examiner.
`
`3 In fact, the Applicants' arguments were erroneously directed to U.S. Patent Application Pub.
`No. 2006/0115401 (with first inventor Yuen), which was not applied by the Examiner.
`
`8
`
`Exhibit 2007.013
`
`

`
`C.
`
`U.S. Patent No. 6,709,644 (Zones et al.)
`
`U.S. Patent No. 6,709,644 (Zones et al.) is applicable under 35 U.S.C. § 102(b) against
`
`the claims of the '662 Patent.
`
`Zones et al. was cited as a reference in an Information Disclosure Statement by the
`
`Applicants. Also, as discussed above, the Examiner rejected all of the originally-filed claims of
`
`the '423 Application as being rendered obvious by Zones et al. Zones et al., however, still raises
`
`a substantial new question of patentability of the claims of the '662 Patent because it is being
`
`applied below in a combination not previously considered. Specifically, it is being considered
`
`with a disclosure that would provide a copper to aluminum atomic ratio of greater than about
`
`0.25, which the Applicants argued was not disclosed in Zones et al.
`
`D.
`
`Ishihara, T. et al., Copper Ion-Exchanged SAP0-34 as a Thermostable
`Catalyst for Selective Reduction of NO with C3H6' Journal of Catalysis, vol.
`169, pp. 93-102 (1997) (Ishihara et al.)
`
`Ishihara is applicable under 35 U.S.C. § 102(b) against the claims of the '662 Patent.
`
`Ishihara was cited as a reference in an Information Disclosure Statement by the
`
`Applicants. Ishihara, however, was not otherwise discussed or applied during prosecution of the
`
`'423 Application.
`
`E.
`
`U.S. Patent Application Pub. No. 2006/0039843 (Patchett et al.)
`
`U.S. Patent Application Pub. No. 2006/0039843 (Patchett et al.) is applicable under 35
`
`U.S.C. § 102(b) against the claims of the '662 Patent.
`
`Patchett et al. was cited as a reference in an Information Disclosure Statement by the
`
`Applicants. Patchett et al., however, was not otherwise discussed or applied during prosecution
`
`of the '423 Application.
`
`9
`
`Exhibit 2007.014
`
`

`
`F.
`
`U.S. Patent Application Pub. No. 2005/0031514 (Patchett '514)
`
`U.S. Patent Application Pub. No. 2005/0031514 (Patchett '514) is applicable under 35
`
`U.S.C. § 102(b) against the claims of the '662 Patent.
`
`Patchett '514 is a publication of U.S. Application No. 10/634,659, which is "incorporated
`
`by reference" in the specification of the '662 Patent, and was cited as a reference in an
`
`Information Disclosure Statement by the Applicants. Patchett '514, however, was not otherwise
`
`discussed or applied during prosecution of the '423 Application.
`
`G.
`
`U.S. Patent Application Pub. No. 2004/0098973 (Tennison et al.)
`
`Tennison et al. is applicable under 35 U.S.C. § 102(b) against the claims of the '662
`
`Patent.
`
`Tennison et al. was not made ofrecord or otherwise discussed during prosecution of the
`
`'423 Application.
`
`H.
`
`U.S. Patent Application Pub. No. 2004/0171476 (Nam et al.)
`
`Nam et al. is applicable under 35 U.S.C. § 102(b) against the claims of the '662 Patent.
`
`Nam et al. was not made of record or otherwise discussed or applied during prosecution
`
`of the '423 Application. It is, however, the publication which issued as U.S. Patent No.
`
`7,049,261, which was cited as a reference in an Information Disclosure Statement by the
`
`Applicants but was not otherwise discussed or applied during prosecution of the '423
`
`Application.
`
`I.
`
`Dedecek, J. et al., Siting of the Cu+ Ions in Dehydrated Ion Exchanged
`Synthetic and Natural Chabasites: A Cu+ Photoluminescence Study,
`Microporous and Mesoporous Materials, vol. 32, pp. 63-74 (1999) (Dedecek
`et al.)
`
`Dedecek et al. (attached as Exhibit E) is applicable under 35 U.S.C. § 102(b) against the
`
`claims of the '662 Patent.
`
`10
`
`Exhibit 2007.015
`
`

`
`Dedecek et al. was not made of record or otherwise discussed during prosecution of the
`
`'423 Applic~tion.
`
`J.
`
`Chung, S.Y. et al., Effect of Si/Al Ratio ofMordenite and ZSM-5 Type
`Zeolite Catalysts on Hydrothermal Stability for NO Reduction by
`Hydrocarbons, Studies in Surface Science and Catalysis, vol. 130, pp. 1511-
`1516 (2000) (Chung et al.)
`
`Chung et al. is applicable under 35 U.S.C. § 102(b) against the claims of the '662 Patent.
`
`Chung et al. was not made of record or otherwise discussed during prosecution of the
`
`'423 Application.
`
`VI.
`
`STATEMENT UNDER 37 C.F.R. § 1.510(B)(l) POINTING OUT
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY AND
`DETAILED EXPLANATION UNDER 37 C.F.R. § 1.510(B)(2) OF THE
`PERTINENCY AND MANNER OF APPL YING THE CITED PRIOR ART
`
`Independent claims 1 and 25 of the '662 Patent are generally directed to a catalyst and a
`
`catalyst article, respectively, comprising a zeolite having the following features:
`
`• The CHA crystal structure
`
`•
`
`•
`
`a mole ratio of silica to alumina greater than about 15 and
`
`an atomic ratio of copper to aluminum exceeding about 0.25.
`
`Independent claim 25 also requires the following features:
`
`• A honeycomb substrate having the above zeolite and
`
`•
`
`an amount of free copper exceeding ion-exchanged copper.
`
`A full recitation of the features of the claims is provided in the attached copy of the '662
`
`Patent.
`
`The following sections set forth each proposed rejection along with a statement pointing
`
`out the substantial new question of patentability. Also included with each section is a detailed
`
`11
`
`Exhibit 2007.016
`
`

`
`explanation of the manner in which the cited references apply to the features listed above, as well
`
`as other features of the claims.
`
`The rejections proposed below raise substantial new questions of patentability which are
`
`non-cumulative technological teachings with respect to what was discussed in the prosecution of
`
`the '423 Application. In particular, each rejection presents a copper to aluminum atomic ratio of
`
`greater than about 0.25 not previously considered during prosecution.
`
`The following headings set forth each of the proposed rejections.
`
`A.
`
`Claim 1 is unpatentable under 35 U.S.C. § 102(e) as being anticipated by U.S.
`Patent Application Pub. No. 2006/0115403 ~including the disclosure
`incorporated by reference from U.S. Patent No. 4,297,328 (Ritscher et al.)
`
`Yuen was cited as a reference in an Information Disclosure Statement by the Applicants.
`
`Also, as discussed above with respect to the prosecution history, the Examiner rejected all of the
`
`originally-filed claims of the '423 Application as being rendered obvious by Yuen. Yuen,
`
`however, still raises a substantial new question of patentability of the claims of the '662 Patent
`
`because it is being applied below as an anticipation rejection including the disclosure
`
`incorporated by reference from Ritscher et al. Requestor submits that Yuen was improperly
`
`characterized by the Applicants4 and the Examiner during prosecution of the '423 Application.
`
`Specifically, Requestor notes that the Examiner did not cite Yuen as teaching the disclosure of
`
`the copper to aluminum atomic ratio of greater than about 0.25, which it does disclose as will be
`
`demonstrated below. Thus, Yuen provides a new, non-cumulative teaching that was not
`
`previously considered during the prosecution of the '423 Application.
`
`In the first Office Action for the '423 Application, the Examiner cited to Yuen and
`
`indicated that it does not state that the copper to al