BASF SE

Patent Trials and Appeals Board

Oct 29, 2020

2020001522 (P.T.A.B. Oct. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/723,544 12/21/2012 Florina Corina Patcas 074014-0546-US (286637) 2435
123223 7590 10/29/2020
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
LI, JUN
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
10/29/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORINA CORINA PATCAS, CHRISTOPHE HOUSSIN, and
MARTIN DIETERLE

Appeal 2020-001522
Application 13/723,544
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2020-001522
Application 13/723,544

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5, 17, and 21–23. We have
jurisdiction under 35 U.S.C. § 6(b). The panel heard oral argument for this
appeal on October 20, 2020. A transcript will be entered into the record
when available.
We AFFIRM.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a catalyst for
dehydrogenation of hydrocarbons. Spec. 1:6–12. The dehydration can be
used to produce, for example, styrene, butadiene, or isoprene and,
ultimately, to prepare monomers and polymers. Id. at 1:14–24. Appellant
explains that, in such a process, steam is added to a hydrocarbon to
regenerate surface catalysts. Id. at 1:37–2:15. Reducing the amount of steam
the process uses is desired in order to save energy consumption and costs. Id.
Appellant also describes a need for catalysts with improved or equal catalyst
activity, higher operating lives, and improved stability. Id. at 4:16–20. To
reach these goals, Appellant cites use of a manganese compound especially
in combination with titanium. Id. at 4:33–37; Appeal Br. 4–5. Claims 1 and
22 are the only independent claims on appeal. Claim 1 is illustrative:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE.
Appeal Br. 2.
2 In this Decision, we refer to the Final Office Action dated March 19, 2019
(“Final Act.”), the Appeal Brief filed August 16, 2019 (“Appeal Br.”), the
Examiner’s Answer dated October 28, 2019 (“Ans.”), and the Reply Brief
filed December 19, 2019 (“Reply Br.”).
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Application 13/723,544

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1. A dehydrogenation catalyst comprising from 65 to 75%
by weight of at least one iron compound, calculated as Fe2O3;
from 10 to 15% by weight of at least one potassium
compound, calculated as K2O;
from 1 to 2% by weight of at least one manganese
compound, calculated as MnO2;
from 60 to 80 ppm of at least one titanium compound,
calculated as TiO2;
from 1 to 5% by weight of at least one calcium
compound, calculated as CaO;
from 5 to 10% by weight of at least one cerium
compound, calculated as CeO2;
from 1 to 5% by weight of at least one magnesium
compound, calculated as MgO;
from 1 to 5% by weight of at least one molybdenum
compound, calculated as MoO3;
from 0 to 5% by weight of at least one vanadium
compound, calculated as V 2Os, and
from O to 5% by weight of at least one further
component;
wherein the catalyst is a catalyst for a dehydrogenation
process at a low molar steam to hydrocarbon ratio of less than
or equal to 7.35.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Appeal 2020-001522
Application 13/723,544

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Name Reference Date
Baier et al.
(“Baier”)
US 6,551,958 B1 Apr. 22, 2003
Rokicki et al.
(“Rokicki”)
US 6,756,339 B1 June 29, 2004
Kowaleski US 2006/0106267 A1 May 18, 2006
Xin et al.
(“Xin”)
CN 02125653.5 Jan. 28, 2004

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 5, and 17 under 35 U.S.C. § 103 as obvious over Xin and
Kowaleski. Ans. 3.
B. Claim 21 under 35 U.S.C. § 103 as obvious over Xin, Kowaleski, and
Rokicki. Id. at 6.
C. Claims 22 and 23 under 35 U.S.C. § 103 as obvious over Baier in
view of Kowaleski. Id. at 7.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
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Application 13/723,544

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Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejections 1 and 2. The Examiner rejects claims 1, 5, and 17 under 35
U.S.C. § 103 as obvious over Xin and Kowaleski and rejects claim 21 as
obvious over Xin, Kowaleski and Rokicki. Ans. 3, 6. Appellant argues these
rejections together and argues these claims as a group. See Appeal Br. 5
(beginning argument as to claim 1), 15 (stating that the arguments also apply
to claims depending from claim 1). Therefore, consistent with the provisions
of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claim 1, and
all other claims subject to these rejections stand or fall with claim 1.
The Examiner finds that Xin teaches a catalyst for dehydrogenation
and teaches most of the components in ranges that overlap the ranges claim
1 recites. Ans. 3–4. The Examiner finds that Xin does not explicitly teach a
calcium amount but finds that Kowaleski teaches a calcium component with
a range that overlaps the range claim 1 recites. Id. at 4. The Examiner
determines that it would have been obvious to use Kowaleski’s amount of
calcium and states a reason why a person of skill in the art would have made
such a combination. Id. 4–5. The Examiner also finds that Kowaleski
teaches a low titanium content and that Kowaleski teaches use of its catalyst
under low steam to oil ratio. Id. at 5. The Examiner determines that it would
have been obvious to choose a low titanium content when practicing Xin to
help obtain a dehydrogentation catalyst with claim 1’s steam to oil ratio.
Id. at 5.
Appellant argues that Xin’s teachings are inapplicable because Xin’s
process uses a higher steam to hydrocarbon ratio. Appeal Br. 6–7. We,
however, agree with the Examiner, based on the words of claim 1, that claim
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Application 13/723,544

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1’s recitation of “wherein the catalyst is a catalyst for a dehydrogenation
process at a low molar steam to hydrocarbon ratio of less than or equal to
7.35” states an intended use of the recited catalyst. Final Act. 4. Appellant
does not identify any structural requirement that this recitation imparts on
the recited catalyst. Appeal Br. 6–7.
Appellant further argues that Kowaleski discourages claim 1’s recited
60 to 80 ppm titanium. Appeal Br. 15; Reply Br. 4–7. Kowaleski, however,
teaches that titanium should be less than 100 ppm and preferably less than
75 ppm. Ans. 16 (citing Kowalski ¶ 16). Kowaleski thus suggests, for
example, that 75 ppm of titanium is an appropriate amount. Kowaleski’s
titanium range overlaps with claim 1, and this is sufficient to establish a
prima facie obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (“[E]ven a slight overlap in range establishes a prima facie case of
obviousness.”).
Appellant also argues that a person of skill in the art would not have
modified Xin to include Kowaleski’s low titanium amounts because Xin and
Kowaleski operate at different steam to oil ratios and differ in other critical
features. Reply Br. 1–4. This argument is unpersuasive because Xin, even
standing alone, teaches a titanium range overlapping the range of claim 1.
Ans. 3 (citing Xin 7, claims 1, 2). The preponderance of the evidence
supports the Examiner’s determination that a person of ordinary skill in the
art, recognizing that Kowaleski operates at a lower steam to oil ratio than
Xin, would have reason to select an amount of titanium on the lower end of
the range Xin teaches, especially if an operation using less steam were
desired. Ans. 5, 10–11 (citing Kowaleski).
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Appellant also argues unexpected results and synergy based on
optimum titanium and manganese ranges. Appeal Br. 7–14; Reply Br. 6–14.
A party asserting unexpected results as evidence of nonobviousness has the
burden of proving that the results are unexpected. In re Geisler, 116 F.3d
1465, 1469–70 (Fed. Cir. 1997). The evidence of unexpected results also
must also be reasonably commensurate with the scope of the claims. In re
Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir. 2003) (explaining that
applicant may overcome a prima facie case of obviousness by showing
unexpected results but the showing of unexpected results “must be
commensurate in scope with the claims which the evidence is offered to
support” (internal quotes and citation omitted)). “If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the claims.” In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
Here, Appellant relies upon the April 13, 2015, Declaration of Dr.
Florina Patcas (“Patcas Decl.”) and Appellant’s Specification (Figures 1–3
as described at Spec. 22:36–23:17 and examples and related data at Spec.
23:20–31:16) to support its unexpected results argument. Appeal Br. 7–14.
Appellant does not, however, adequately explain how the evidence is
commensurate in scope with claim 1. Ans. 13–14. In particular, claim 1
permits variations in amounts of iron, potassium, magnesium, calcium,
cerium, molybdenum, and vanadium and also permits “other components.”
In contrast, Appellant’s data primarily addresses variance of manganese and
titanium oxide components. See, e.g., Spec. Figs. 1–3, Table 2. Appellant
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does not present evidence sufficient for a person of skill in the art to
reasonably expect superior results across the range of variations permitted
by claim 1.
For example, while Appellant argues that it is manganese and titanium
oxide amounts that are critical (Appeal Br. 7–8), the Patcas Declaration
indicates that calcium amounts may also impact yield. Patcas Decl. ¶¶ 2–3.
But Appellant does not provide evidence sufficient for a person of skill in
the art to reasonably expect superior results from 1% calcium oxide to 5%
calcium oxide. Because Appellant’s evidence of unexpected results is not
reasonably commensurate with the scope of claim 1, the evidence, when
considered in view of the record as a whole, does not persuasively weigh
against obviousness.3
Because a preponderance of the evidence of record supports the
Examiner’s conclusion of obviousness, we sustain the Examiner’s rejection
of claims 1, 5, 17, and 21.
Rejection 3. The Examiner rejects claims 22 and 23 under 35 U.S.C.
§ 103 as obvious over Baier in view of Kowaleski. Ans. 7. The Examiner
finds that Baier teaches a catalyst for dehydrogenation and teaches most of
the components in ranges that overlap the ranges claim 22 recites. Ans. 7–9
(citing Baier). The Examiner finds that Baier does not expressly teach claim
22’s recited 60–80 ppm titanium or “wherein the catalyst is a catalyst for
dehydrogenation process at a low molar steam to hydrocarbon ratio of less

3 We also note that, although claim 1 refers to a “molar steam to
hydrocarbon ratio of less than or equal to 7.35,” Appellant’s evidence does
not indicate superior results across this range. See, e.g., Patcas Decl. ¶¶ 2–3
(referring to results at a ratio of 1.0 and 1.25).
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Application 13/723,544

9
than or equal to 7.35.” Id. at 9. The Examiner finds, however, that
Kowaleski teaches a catalyst that can be used at a low steam to hydrocarbon
ratio and teaches an overlapping titanium range. Id. (citing Kowaleski). The
Examiner determines that it would have been obvious to lower the titanium
content in Baier to “help obtain[] a dehydrogenation catalyst that has good
stability, activity and selectivity and can be used under low molar ratio of
steam to oil in dehydrogenation process.” Id. at 10.
Appellant argues that claim 22 recites a catalyst that “consists of” the
recited elements and that Baier is, therefore, even further from the invention.
Appeal Br. 15. Claim 23 depends from claim 22, and Appellant emphasizes
that claim 23 further narrows the amount of magnesium in the claimed
catalyst. Id. Appellant again argues surprising synergy based on titanium and
manganese. Id. at 16.
Appellant’s arguments are unpersuasive. Baier teaches components in
amounts that overlap the recitations of claims 22 and 23. Ans. 17 (citing
Baier). The Examiner provides a rationale why a person of skill in the art
would have selected components to reach the recitations of claims 22 and 23
(id. at 17–18), and Appellant does not persuasively rebut this reasoning.
Moreover, for the reasons explained above, Appellant’s evidence concerning
unexpected results is not commensurate with the scope of Appellant’s claim.
On balance, a preponderance of the evidence of record supports the
Examiner’s conclusion of obviousness. Therefore, we sustain the
Examiner’s rejection of claims 22 and 23.

Appeal 2020-001522
Application 13/723,544

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 17 103 Xin, Kowaleski 1, 5, 17
21 103 Xin, Kowaleski,
Rokicki
21
22, 23 103 Baier, Kowaleski 22, 23
Overall
Outcome
1, 5, 17,
21–23

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

AFFIRMED