BASF SEDownload PDFPatent Trials and Appeals BoardOct 29, 20202020001522 (P.T.A.B. Oct. 29, 2020) Copy Citation 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 2 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.”). Appeal 2020-001522 Application 13/723,544 3 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 4 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 Appeal 2020-001522 Application 13/723,544 5 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 Appeal 2020-001522 Application 13/723,544 6 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). Appeal 2020-001522 Application 13/723,544 7 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 Appeal 2020-001522 Application 13/723,544 8 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). Appeal 2020-001522 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 10 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). 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