BASF SE

Patent Trials and Appeals Board

Apr 20, 2020

14139098 - (D) (P.T.A.B. Apr. 20, 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.
14/139,098 12/23/2013 Stephan SCHUNK 426474US106DIV 8595
22850 7590 04/20/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CALL, DOUGLAS BRYANT
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
04/20/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHAN SCHUNK, ANDRIAN MILANOV,
ANDREAS STRASSER, GUIDO WASSERSCHAFF, and
THOMAS ROUSSIERE
Appeal 2019-003787
Application 14/139,098
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–13, 16, 17, 20–27, 29 and 33–44
under 35 U.S.C. § 103(a) as obvious over Wickham2 in view of Zhu,3 and

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as BASF SE Appeal
Br. 1.
2 Wickham et al., US 2003/0176278 A1, published Sept. 18, 2003.
3 Zhu et al., Catalytic partial oxidation of methane using
Appeal 2019-003787
Application 14/139,098
2
adding further prior art references to reject claims 18, 19, 28, 30–32 and 37–
39. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a process for preparing a hexaaluminate-
comprising catalyst. See, e.g., claim 11. The process requires a step of
contacting a finely divided aluminum oxide source with a metal salt. The
claims allow the finely divided aluminum oxide to be either in solid form or
liquid form, but if the source is in liquid form, it must be dispersed in a
solvent or present as colloidal particles. Claim 11, reproduced below with
the most at issue limitation highlighted, is illustrative of the claimed subject
matter:
Claim 11: A process for preparing a hexaaluminate-
comprising catalyst, the process comprising:
(i) contacting a finely divided aluminum oxide source,
with a metal salt which comprises at least soluble or fusible
cobalt- and lanthanum-comprising species, wherein said finely
divided aluminum oxide source is in the form of a solid or a
liquid form with the proviso that when in a liquid form the
finely divided aluminum oxide source is dispersed in a solvent
or is present as colloidal particles,
(ii) mixing the aluminum oxide source and the metal salt,
to obtain a mixture,
(iii) drying the mixture,
(iv) low-temperature calcination of the mixture,

RhSr- and Ni-substituted hexaa1uminates, Proceedings of the Combustion
Institute 31 (2007) 1965–1972.
Appeal 2019-003787
Application 14/139,098
3
(v) molding or shaping, and
(vi) high-temperature calcination,
wherein cobalt is incorporated into said hexaaluminate-
comprising catalyst and said hexaaluminate-comprising catalyst
comprises from 70 to 90 mol% aluminum, from 2 to 15 mol%
cobalt, and from a total content of 2 to 25 mol% of La and at
least one further element selected from the group consisting of
Ba and Sr.
Appeal Br. Claims Appendix i (emphasis added).
OPINION
There is no dispute that Wickham teaches forming a hexaaluminate
catalyst by a process involving first binding carboxylic acid to very small
beohmite particles (between 10 and 100 nm) to form a carboxylato-
aluminoxane, which Wickham calls an alumoxane precursor, and second
contacting the alumoxane precursor with a metal salt. Compare Appeal Br.
6, with Final Act. 3–5; see also Wickham ¶¶ 61, 62, 65, and 66. The
Examiner relies on Wickham for this teaching for all the rejections.
The issue on appeal is the same for all the rejections. Appeal Br. 4–10.
The issue is: Has Appellant identified a reversible error in the Examiner’s
finding that Wickham discloses “contacting a finely divided aluminum oxide
source with a metal salt” wherein the “finely divided aluminum oxide
source” is “present as colloidal particles” in liquid as recited in claim 11?
Appellant has not identified such an error.
Wickham teaches contacting an alumoxane precursor with a metal
salt. Wickham ¶¶ 65–66. Appellant contends that Wickham does not teach
that the alumoxane precursor is in the form of colloidal particles. Appeal Br.
6. Appellant’s argument is predicated on Wickham’s disclosure that “after
Appeal 2019-003787
Application 14/139,098
4
the boehmite particles are bound with carboxylic acids, they are also water-
soluble.” Id., quoting Wickham ¶ 62. According to Appellant, because the
particles are water-soluble, they are not in colloidal form. Id.
We disagree. Although Wickham uses the term “water-soluble” when
describing the particles, Wickham is merely conveying the idea that the
carboxyl groups added to the surface of the beohmite particles allow the
particles to be suspended in water to create a sol. This is evident from
Wickham’s statement that they “used a 12:1 molar ratio of boehmite to
carboxylic acid, and found that this formed a stable alumoxane sol.”
Wickham ¶ 65 (emphasis added).
There is no dispute that, as found by the Examiner, a sol is defined as
follows:
Sol, in physical chemistry, a colloid (aggregate of very fine
particles dispersed in a continuous medium) in which the
particles are solid and the dispersion medium is fluid. If the
dispersion medium is water, the colloid may be called a
hydrosol; and if air, an aerosol.
Compare Appeal Br, and Reply Br., generally, with Ans. 15, citing
Sol/colloid/Britannica.com.
That Wickham intends to form a sol is further evidenced by
Wickham’s Figure 2 and the statement that “[t]he conversion of boehmite
into a water-soluble alumoxane (referred to as carboxylato-alumoxane)
compound is illustrated in FIG. 2.” Wickham ¶ 65. Figure 2 shows the
beohmite core on the left and the carboxyl groups attached to beohmite core
on the right. The beohmite core remains after the carboxyl groups are
attached. Fig. 2. The beohmite core of the carboxylate-alumoxane is never
dissolved in the water. Instead, the particles are suspended in water to form a
sol.
Appeal 2019-003787
Application 14/139,098
5
Zhu supports the Examiner’s interpretation of Wickham. In a process
similar to that of Wickham, Zhu describes an alumoxane-based metal-
exchange synthesis technique that prepares alumoxane precursors by
refluxing a beohmite sol with carboxylic acid at a 12:1 molar ratio to
introduce metal cations into the boehmite core. Zhu § 2 ¶¶ 2–3. It is a sol
that is present in the process.
By using the term “water-soluble” Wickham is not stating that the
solution is a true solution with a solid solute that dissolves in the water
solvent, rather it is a sol, i.e., a suspension of very small solid particles in
water. Wickham specifically states that very small particles are present, i.e.
particles of boehmite of between 10 and 100 nm in size. Given that
Wickham describes forming “a stable alumoxane sol,” the ordinary artisan
would understand the terminology “water-soluble” as merely reflecting that
the very small particles are stably suspended in water rather than aggregating
or settling out.
Appellant further finds fault with the Examiner’s interpretation of
“aluminum oxide source.” Appeal Br. 7–8. Appellant’s contention is again
predicated on the incorrect interpretation of Wickham as teaching an
alumoxane precursor that is dissolved in the water to form a true solution
rather than as particles within a colloidal solution/dispersion (sol). Id. For
the above reasons, we disagree.
We agree with the Examiner that Wickham’s alumoxane precursor is
an aluminum oxide source as required by claim 11. In the Reply Brief,
Appellant equates the aluminum oxide source with the beohmite (Reply Br.
4), but the Specification does not limit aluminum oxide sources to aluminum
oxide and, thus, “aluminum oxide source” encompasses sources other than
aluminum oxides. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
Appeal 2019-003787
Application 14/139,098
6
Cir. 2017) (holding that claim terms should be given “an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997)).
The Specification describes a number of different aluminum oxide
sources in a list of aluminum sources. Spec. 8. For instance, the
Specification lists “colloidal basic aluminum oxides” (Spec. 8:19) and
“highly reactive aluminum oxide or aluminum hydroxide source[s]” (Spec.
8:24–41). Specific examples include boehmite. Id. But the Specification
further indicates that aluminum oxide colloidal primary particles can be
peptized with organic acids such as acetic acid, propionic acid, or by means
of inorganic acids, for example nitric acid or hydrochloric acid. Id.
Appellant has furnished Bancroft, The Theory of Peptization, The
Journal of Physical Chemistry 1915 20 (2), 85–117, as evidence of the
meaning of peptization. According to Bancroft “[p]eptization consists in the
disintegration of particles so that they form a colloidal solution” and
peptization can occur through the absorption of a substance, such as a
solvent, ion, salt, or a colloid, into the substance being peptized. Bancroft
87. Thus, peptization allows for the presence of additional substances such
as ions and salts.
The Specification does not limit “aluminum oxide sources” in a way
that excludes the presence of the additional carboxylic acid groups of
Wickham. Wickham’s alumoxane precursor, which is a sol of carboxylato-
alumoxane, is a “finely divided aluminum oxide source . . . . present as
colloidal particles” as required by claim 11.
Appeal 2019-003787
Application 14/139,098
7
CONCLUSION
The Examiner’s decision to reject claims 11–13 and 16–44 is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–13, 16,
17, 20–27,
29, 33–44
103(a) Wickham, Zhu 11–13, 16,
17, 20–27,
29, 33–44

18, 19 103(a) Wickham, Zhu,
Kareiva
18, 19
28 103(a) Wickham, Zhu,
Chen
28
30–32 103(a) Wickham, Zhu,
Loechelt
30–32
37–39 103(a) Wickham, Zhu,
Ercan, Chu
37–39
Overall
Outcome
11–13, 16–
44

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