Ex Parte BAEK et al

Patent Trial and Appeal Board

Dec 13, 2012

11678092 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOUNG SOON BAEK, WON JUN CHO, YUN BIN YAN,
YONG GI MO, KYUNG HAE LEE, and EUN MEE JANG
____________

Appeal 2011-010847
Application 11/678,092
Technology Center 1600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-5 (App. Br. 5;
Reply Br. 1; Ans. 3). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a mixed catalyst used for producing
dimethylether (claims 1-3) and a method of producing dimethylether in the
presence of the mixed catalyst of claim 1 (claims 4 and 5). Claim 1 is
representative and is reproduced in the Claims Appendix of Appellants‟
Brief.
Appeal 2011-010847
Application 11/678,092

2
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hsiung,
1
Chang,
2
Hirano,
3
Sofianos,
4
„716,
5
Jun,
6

and „180.
7

We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Hsiung suggests “a one step liquid phase process for preparing
dimethyl ether” but fails to suggest, inter alia, “a dehydration catalyst
formed by mixing aluminum phosphate with gamma alumina … [in] the
claimed ratios of … aluminum phosphate to gamma alumina” (Ans. 5-6, 10-
11 and 12-13).
FF 2. Chang suggests a “method for preparing dimethyl ether,” wherein
the dehydrating component “is preferably an acidic component such as
gamma alumina” (id. at 6, 11 and 13).
FF 3. Hirano and Sofianos both suggest a catalyst for synthesizing
dimethyl ether. Examiner, however, fails to establish that Hirano or
Sofianos suggest “a dehydration catalyst formed by mixing aluminum
phosphate with gamma alumina … [in] the claimed ratios of … aluminum
phosphate to gamma alumina” (see id. at 7, 11, and 13).

1
Hsiung et al., EP 0 409 086 A1, published Jan. 23, 1991.
2
Chang et al., GB 2 093 365, published Sept. 2, 1982.
3
Hirano et al., JP 2001070793 A, published Mar. 2001.
4
Sofianos, US 5,254,520, issued Oct. 19, 1993.
5
Peng et al., US 5,753,716, issued May 19, 1998.
6
Jun et al., US 6,248,795 B1, issued Jun. 19, 2001.
7
Peng et al., US 6,069,180, issued May 30, 2000.

Appeal 2011-010847
Application 11/678,092

3
FF 4. „716 suggests “a catalyst system for preparing methanol and
dimethyl ether” and acknowledges that “the literature sometimes refers to
aluminum phosphate as mixed alumina-aluminum … imply[ing] that the
skilled artisan would reasonably believe that aluminum phosphate
dehydration catalysts that are made with high ratios of aluminum to
phosphorus will contain a mixture of alumina and aluminum phosphate” (id.
at 7 and 11-13).
FF 5. „716 suggests “that the molar ratio of aluminum to phosphorous in
the catalyst is in the range of from about 0.4 to about 20.0, more preferably
from about 1.0 to about 3” (id. at 12-13).
FF 6. Examiner relies on Jun to suggest a “process for preparing dimethyl
ether using a methanol synthesis catalyst … prepared from a metal nitrate
solution” (id. at 9).
FF 7. Examiner relies on „180 to suggest “a process for converting
synthesis gas to dimethyl ether with a bifunctional catalyst system …
wherein the reaction can be conducted in the liquid phase o[r] gas phase”
(id. at 10).
ANALYSIS
Based on the combination of Hsiung, Chang, Hirano, Sofianos, and
„716, Examiner concludes that, at the time Appellants‟ invention was made,
it would have been prima facie obvious to “combine a gamma-alumina
catalyst … with an aluminum-phosphate catalyst” in a method of producing
dimethylether (Ans. 8). In addition, Examiner concludes that it would have
been prima facie obvious to substitute Jun‟s nitrates for those suggested by
the combination of Hsiung, Chang, and Hirano and conduct the reaction in
the liquid or gas phase as suggested by „180 (id. at 9-10).
Appeal 2011-010847
Application 11/678,092

4
Appellants contend, inter alia, that Examiner failed to establish that
the combination of prior art relied upon suggests a dehydration catalyst has a
ratio of aluminum phosphate to gamma alumina in a range of 1:0.82 to
1:1.22 as required by Appellants‟ claimed invention (App. Br. 12; Reply Br.
3-4). We agree.
At best, Examiner established that a dehydration catalyst may
comprise a “molar ratio of aluminum to phosphorous in … in the range of
from about 0.4 to about 20.0, more preferably from about 1.0 to about 3”
(FF 5). Examiner, however, failed to establish how this molar ratio of
aluminum to phosphorous relates to a ratio of aluminum phosphate to
gamma alumina in a range of 1:0.82 to 1:1.22 as required by Appellants‟
claimed invention. “Obviousness requires more than a mere showing that
the prior art includes separate references covering each separate limitation in
a claim under examination.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Specifically, “obviousness requires the additional showing that
a person of ordinary skill at the time of the invention would have selected
and combined those prior art elements in the normal course of research and
development to yield the claimed invention.” Id. at 421.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1-5 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hsiung, Chang, Hirano,
Sofianos, „716, Jun, and „180 is reversed.

REVERSED
cdc