Ex Parte Altwasser et al

Patent Trial and Appeal Board

Sep 8, 2016

12950140 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/950,140 11/19/2010
123223 7590 09/12/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
STEFAN ALTWASSER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074008-1092-US (286143) 7148
EXAMINER
SOLIMAN, HAYTHAM
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEFAN ALTWASSER,
JURGEN ZUHLKE, FRANK ROSOWSKI,
and CORNELIA KATHARINA DOBNER
Appeal2015-005554
Application 12/950,140
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JULIA HEANEY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1, 5, and 7-11. Claims 2--4 are also pending but
have been withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The claims on appeal are directed to a multilayer catalyst for oxidizing
ortho-xylene ("o-xylene") to phthalic anhydride. The Appellants disclose:
Appeal2015-005554
Application 12/950,140
The hot spot temperatures in, for example, the oxidation of o-xylene
to phthalic anhydride (PA) at loadings in the range from 80 to 100 g
of o-xylene/standard m3 are usually above 440°C. High hot spot
temperatures reflect an excessive increase in the total oxidation of o-
xylene to CO, C02 and water and are associated with increased
damage to the catalyst. The lowest possible hot spot temperatures are
therefore desirable.
Spec. 3, 11. 30-35.
The Appellants disclose an improved catalyst for the partial oxidation of o-
xylene to PA for o-xylene loadings of at least 80 g/standard m3, wherein vanadium
antimonate is added to at least one of at least three catalyst layers. Spec. 3, 1. 37--4,
1. 1. According to the Appellants:
The hot spot temperature of such a catalyst is overall significantly
lower than in the case of a comparable catalyst which was produced
without addition of vanadium antimonate, and the carboxylic acid or
carboxylic anhydride yields are significantly higher.
Spec. 4, 11. 1--4; see also Appeal Brief dated November 12, 2014 ("Br."), at 5 ("at
least the presence of vanadium antimonate allowed for the hot spot temperature to
not exceed 425°C under conditions of oxidizing ortho-xylene to phthalic
anhydride").
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated November 12, 2014 ("Br.").
Br. 9.
1. A multilayer catalyst having at least 3 layers, wherein a
vanadium antimonate is added to at least one catalyst layer in the
production of the catalyst and wherein the multilayer catalyst is
effective to oxidize ortho-xylene to phthalic anhydride with an ortho-
xylene loading of at least 80 g/standard m3, wherein the hot spot
temperature is not above 425°C in any of the catalyst layers.
The claims on appeal stand rejected as follows:
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Application 12/950,140
(1) claims 1, 5, 7, and 11under35 U.S.C. § 103(a) as unpatentable over
Wilmer et al. 1 in view of Ebner2' 3 and
(2) claims 8-10 under 35 U.S.C. § 103(a) as unpatentable over Wilmer in
view of Ebner, and further in view of Heidemann et al. 4
B. DISCUSSION
The Examiner finds Wilmer discloses a catalyst system for preparing
carboxylic acids and/or carboxylic anhydrides wherein the catalyst has at least
three layers as claimed. Ans. 2; see also Wilmer i-f 1 (invention relates to a process
for gas phase oxidation in which a gaseous stream which comprises one
hydrocarbon and molecular oxygen is passed through a plurality of catalyst layers).
In particular, the Examiner finds the multilayered catalyst disclosed in Wilmer is
effective to oxidize o-xylene to phthalic anhydride with an o-xylene loading of at
least 80 g/standard m3 as recited in claim 1. Ans. 3 (citing Wilmer i-f 67); see also
Wilmer i-f 58.
The Examiner finds the catalyst disclosed in Wilmer does not include
vanadium antimonate as claimed, but rather includes vanadium pentoxide and
1 WO 2007/116018 Al, published October 18, 2007. The Examiner relies on US
2009/0286999 Al, published November 19, 2009, as the English language
equivalent of WO 2007/116018 Al. The Appellants do not object. Therefore, we
also rely on US 2009/0286999 Al ("Wilmer") as evidence of the disclosure of WO
2007/116018 Al.
2 EP 0 032 012, published July 15, 1981 ("Ebner").
3 Claim 6 was rejected under 35 U.S.C. § 103(a) as unpatentable over Wilmer in
view of Ebner in both the Final Office Action dated April 16, 2014, and the
Examiner's Answer dated March 5, 2015 ("Ans."). In an amendment dated March
10, 2014, claim 1 was amended to incorporate the features of claim 6, and claim 6
was cancelled. See Br. 3 (indicating that claim 6 is cancelled). Thus, the statement
of the rejection has been corrected to omit claim 6.
4 US 6,586,361 Bl, issued July 1, 2003 ("Heidemann").
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Appeal2015-005554
Application 12/950,140
antimony oxide in at least one layer of the catalyst. Ans. 2 (citing Wilmer i-fi-1 60-
66);5 Ans. 3.
The Examiner finds Ebner discloses a catalyst for oxidation of hydrocarbons
which is prepared by forming a mixture of vanadium antimonate along with other
catalytic elements. Ans. 3. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to add vanadium antimonate to a layer of
Wilmer's catalyst "to improve the effectiveness of the catalyst." Ans. 3 (citing
Ebner 9, 11. 22-26). The Examiner also concludes that it would have been
"'obvious to try"' adding vanadium antimonate to a layer of Wilmer's catalyst
because the addition of vanadium antimonate "represents a finite number of
identified, predictable combinations." Ans. 3.
The Appellants argue that the catalysts in Ebner are "prepared by combining
vanadium antimonate with bismuth molybdate" in contrast to Wilmer which "does
not have bismuth molybdate in any of the catalysts disclosed therein." Br. 5. For
this reason, the Appellants argue there would have been no reason to select
vanadium antimonate alone from Ebner to add to the catalyst of Wilmer. Br. 5.
We understand the Appellants to be arguing that one of ordinary skill in the
art would not have considered the catalyst and catalyst components disclosed in
5 Wilmer discloses that a suspension comprising, inter alia, vanadium pentoxide
and antimony oxide was stirred at 160°C for 18 hours, applied to an inert carrier
material, and calcined at 450°C for one hour. Wilmer ,-r 60. In a Declaration of
Cornelia Dobner dated December 4, 2013 ("Dobner Deel."), Ms. Dobner states,
"[O]ne of ordinary skill in the art would not understand paragraph 60 of Wilmer to
disclose that vanadium pentoxide and antimony oxide are heated to 160 °C with
stirring over a period of 18 hours so as to yield vanadium antimonate." Dobner
Deel. ,-r 7.
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Appeal2015-005554
Application 12/950,140
Ebner, which include bismuth molybdate, to be useful in the catalyst system of
Wilmer because Wilmer's catalyst does not include bismuth molybdate.
This argument is not persuasive of reversible error. The Examiner finds
Ebner and Wilmer both disclose catalysts in the same technical field. Ans. 7.
Namely, the catalysts disclosed in Ebner and Wilmer are both used for oxidation of
hydrocarbons. See Ebner 8, 11. 35-37 (catalyst is useful for oxidation of aliphatic
olefins to aldehydes and acids); Wilmer i-f 57 (process is suitable for gas phase
oxidation of aromatic hydrocarbons to carboxylic acids and/or carboxylic
anhydrides ). The Appellants do not direct us to any evidence establishing that the
oxidation reactions disclosed in Ebner and Wilmer are so dissimilar that one of
ordinary skill in the art would not have reasonably expected Ebner's catalyst and
catalyst components to be useful for catalyzing the reaction disclosed in Wilmer. 6
The Appellants also argue that neither Ebner nor Wilmer teaches or suggests
the hot spot temperature recited in claim 1 (i.e., "not above 425°C"). Br. 5.
According to the Appellants, "the hot spot is a property of the catalyst." Br.
5. "The discovery of a new property or use of a previously known composition,
even when that property and use are unobvious from the prior art, can not impart
patentability to claims to the known composition." In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990). In this case, the evidence of record establishes that vanadium
antimonate was a known catalyst material at the time of the Appellants' invention.
Thus, the Examiner correctly finds, "[i]f Vanadium Antimonate is the only factor
that decreases the hot spot temperature, and if the prior art, in combination, teaches
6 To the extent the Appellants are arguing that one of ordinary skill in the art would
not have selected vanadium antimonate to the exclusion of bismuth molybdate, we
conclude that claim 1 does not exclude additional catalysts, including the bismuth
molybdate disclosed in Ebner.
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Appeal2015-005554
Application 12/950,140
the vanadium antimonate component, then indeed this prior art meets this
limitation." Ans. 10.
In sum, we conclude that the catalyst recited in claim 1 is prima facie
obvious based on the combined teachings of Wilmer and Ebner.
In an attempt to rebut the prima facie case of obviousness, the Appellants
argue that "the claimed catalysts provide unexpected results as compared to
catalysts with a hot spot temperature above 425°C and lacking vanadium
antimonate." The Appellants direct our attention to Table 1 in the Specification for
support. Br. 6. According to the Appellants,
Br. 6.
Table 1 of the specification shows that the yield of phthalic anhydride
increased from 113.5% by weight to 114.7% by weight when using a
catalyst encompassed by the claims instead of a catalyst lacking
vanadium antimonate in its layers (see specification, page 6, line 42 to
page 7, line 1) that also had a hot spot temperature of 450°C.
The Appellants argue that "[t]he 1.2% by weight increase in phthalic
anhydride yield is significant, as understood by those having ordinary skill in the
art." Br. 6 (citing Nunez Deel. ,-r 8).7
Table 1 of the Appellants' Specification, comparing one example "according
to the invention" and one example "not according to the invention," is reproduced
below.
7 Declaration of Dr. Diana Carolina Galeano Nunez dated March 4, 2014.
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Application 12/950,140
Table 1:
r-------------------
1 lot tube results
Amount of alr [standard m3/h]
Example 1
(according to the
Example 2
(not according to
invention) the invention)
4.0 I 4.0 ---·------------------····-----···--1
f---------------i-------------·--···················-------··--··- ·-
Loading [g/~_!_an:..~r~ m'.1] 80 80 j
. Period of operation [days] 29 37 I
I ------------------····----------------- ---------------------1
I Salt bath temperature ["CJ 349 359 I
~-------~~ ........................................ ···-------------------------------------------------- -----------------------------------------------------------~
Hot spot temperature [«CJ 421 450 I
PA yield[% by weight] I 114.7 113.5............... ... . .. J
Spec. 7.
The Examiner finds the difference in hot spot temperatures in Example 1
does not demonstrate unexpected results. See Ans. 11. Indeed, on this record, it is
unclear whether the 1.2% increase in phthalic anhydride yield in Example 1 is due
to the claimed catalyst (i.e., the lower hot spot temperature), the lower salt bath
temperature, or a combination of the claimed catalyst and the lower salt bath
temperature. See In re Dunn, 349 F.2d 433, 439 (CCPA 1965) ("cause and effect
sought to be proven is lost here in the welter of unfixed variables"). In this regard,
we note that Wilmer defines "the activity of a catalyst layer" as "the higher the
conversion for a specific reactant mixture at the same salt bath temperature, the
higher the activity." Wilmer i-f 15 (emphasis added).
On balance, the evidence of record weighs most heavily in favor of the
Examiner's conclusion of obviousness. Therefore, the§ 103(a) rejection of claim
1 based on the combination of Wilmer and Ebner is sustained.
The Appellants do not present arguments in support of the separate
patentability of any of the remaining claims on appeal. Therefore, the § 103 (a)
rejection of claims 5, 7, and 11 based on the combination of Wilmer and Ebner and
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Application 12/950,140
the§ 103(a) rejection of claims 8-10 based on the combination of Wilmer, Ebner,
and Heidemann are sustained.
C. DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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