Ex Parte Basset et alDownload PDFPatent Trial and Appeal BoardMar 7, 201712733809 (P.T.A.B. Mar. 7, 2017) 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. 12/733,809 03/22/2010 Jean-Marie Basset LCM-608-647 7148 23117 7590 03/09/2017 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER QIAN, YUN ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 03/09/2017 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): PTOMAIL@nixonvan.com pair_nixon @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-MARIE BASSET, NICOLAS MERLE, FRANCOIS STOFFELBACH, MOSTAFA TAOUFIK, and JEAN THIVOLLE-CAZAT Appeal 2014-003984 Application 12/733,809 Technology Center 1700 Before TERRY J. OWENS, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 34-45. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter of this appeal “relates to a solid metal compound ... its preparation processes and its uses, in particular as a catalyst in 1 This decision makes reference to the Specification filed Mar. 22, 2010 (“Spec.”), the Final Office Action mailed Dec. 20, 2012 (“Final Act.”), the Advisory Action mailed July 5, 2013 (“Advisory Act.”), the Appeal Brief filed Oct. 21, 2013 (“Br.”), and the Examiner’s Answer mailed Nov. 18, 2013 (“Ans.”). Appeal 2014-003984 Application 12/733,809 metathesis or hydrogenolysis reactions of hydrocarbon compounds.” Spec. 1:3—5. Claim 34 is representative of the issues in this appeal: 34. Catalyst for manufacturing saturated or unsaturated hydrocarbon(s) having a modified carbon skeleton, comprising: (i) a solid support in the form of particles comprising aluminium oxide, (ii) at least one first metal compound (Cl) supported on the solid support particles and selected from metal hydrides, organometallic compounds and organometallic hydrides, and comprising a metal (Ml) selected from the lanthanides, the actinides and the metals of Groups 4 to 7 of the Periodic Table of the Elements, and (iii) at least one second metal compound (C2) comprising a metal (M2) selected from the metals of Groups 8 to 10 of said Periodic Table and being supported on the same solid support particles as those containing said compound (Cl), or different from those containing said compound (Cl), the solid support being of a same type or different types. Br. 14 (Claims Appendix). The Examiner maintains, and Appellants2 appeal, the rejection of claims 34^45 under 35 U.S.C. § 103(a) as unpatentable over Basset3 in view of Sasaki4 and Wood.5 Ans. 3; Br. 6. Appellants argue the subject matter of independent claim 34, and rely on those same arguments for dependent claims 35—45. Br. 6—12. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 35—45 will stand or fall together with claim 34 on which they depend. 2 Appellants identity the real party in interest as CPE Lyon Formation Continue et Rechereche SAS. Br. 3. 3 Basset et al., WO 03/061823 Al, pub. July 31, 2003 (“Basset”). 4 Sasaki et al., US 2007/0281856 Al, pub. Dec. 6, 2007 (“Sasaki”). 5 Wood et al., US 4,686,314, iss. Aug. 11, 1987 (“Wood”). 2 Appeal 2014-003984 Application 12/733,809 ANALYSIS The dispositive issues for this appeal are (1) whether the Examiner erred in combining the disclosures of Basset, Sasaki, and Wood and (2) whether the Examiner erred in finding that Appellants’ evidence of secondary considerations is insufficient to establish unexpected results. Br. 6—12; Ans. 3—9; Advisory Act. 2; Final Act. 3—10. After review of the arguments and evidence presented by both Appellants and the Examiner, we affirm the stated rejection. It is the Examiner’s position that the combination of Basset, Sasaki, and Wood discloses the subject matter of claims 34-45 for the reasons stated on pages 3—6 of the Final Action and pages 6—9 of the Answer and that Appellants’ evidence of secondary considerations fails to show unexpected results and also “fails to be commensurate in scope with the claims” for the reasons stated on pages 3—5 of the Answer and page 2 of the Advisory Action. In the Appeal Brief, Appellants argue that the Examiner “admitted” in the Final Action that “Basset does not disclose catalysts in which a first metal compound (Cl) comprises a metal (Ml) selected from the lanthanides, the actinides and the metals of Groups 4 to 7, and a second metal compound (C2) comprises a metal (M2) selected from the metals of Groups 8 to 10.” Br. 9-10. Appellants also argue that “there is no suggestion in Sasaki of a combination of metals such as those required by the presently claimed invention” and for that reason “there would have been no motivation for the skilled person to rely on Sasaki or to combine Sasaki and Basset.” Id. at 10. Appellants also contend that the Examiner’s reasoning for combining Wood with Basset is “flawed” because “Wood does not. . . disclose or suggest that 3 Appeal 2014-003984 Application 12/733,809 the use of a metal of Groups 8 to 10 in the catalyst improves catalyst performance.” Id. at 10—11. Appellants also argue that “as shown in the working examples [of Appellants’ Specification], the combination of metals (Ml) and (M2) gives rise to surprising advantages.” Id. at 7. Regarding the Examples in their Specification, Appellants assert that (1) “[t]he catalysts used in Examples 12 and 14 . . . show far greater activity, i.e., ‘TON’, and far greater selectivity[,]” (2) “the catalysts used in Examples 15 and 17 . . . show far greater activity and comparable selectivity[,]” and (3) “the catalysts used in Examples 19, 20 and 22 . . . show far greater activity and comparable selectivity.” Id. at 7—8. Appellants contend that the Examiner erred in finding their unexpected results evidence “insufficient to overcome the rejection because the results are not commensurate in scope with the breadth of the claims” because “there is no requirement that the exemplification demonstrating effectiveness of an invention must be of the same scope as the claimed invention.” Id. at 8—9. The Examiner responds that Basset’s AI2O3 supported catalyst for hydrocarbon reactions has grafted to it two types of metal compounds which include[] at least one metal chosen [from] Lanthanide[s] and the actinides (corresponding to applicants’ Ml), and a transition metal of Group 2 to 12 of the Periodic Table corresponds to the instant claimed M2. Basset et al. indeed disclosed the instant claimed [] metal selected from Lantha[n]ide and the actinides and broadly teaches a transition metal including Group 8—10 transition metals. Ans. 6. The Examiner restates that what Basset does not explicitly teach is (1) a solid support AI2O3 in the form of particles and (2) that the second metal compound is selected from Group 8 to 10 of the Periodic table, as required by claim 34. Id. at 6—7; Final Act. 4. The Examiner also responds 4 Appeal 2014-003984 Application 12/733,809 that Sasaki teaches using alumina particles and that it would have been obvious to a skilled artisan to substitute the AI2O3 solid support of Basset with Sasaki’s alumina particles for the reason that Sasaki’s hydrothermal treatment of alumina particles improves the thermal resistance of the alumina particles. Id.', Final Act. 4 (citing Sasaki, Abstr.). The Examiner further responds that Wood teaches that the metals of Group 8 of the Periodic Table are preferred for a catalyst on a support material such as alumina for production of methane and olefin metathesis. Ans. 7—8 (citing Wood 5:20-26). Regarding the argument about unexpected results, the Examiner responds that the comparative examples relied upon by Appellants’ evidence to show unexpected results “may not be contributed by two metal components, but could be resulting from a higher dose of metals.” Id. at 4. The Examiner further responds that “the results demonstrated by applicants are not commensurate in scope with the breadth of the claims” in terms of (1) the different metals in the different groups claimed for each of Ml and M2, (2) catalysts for manufacturing saturated or unsaturated hydrocarbons, and (3) the support comprising aluminum oxide. Ans. 4—5. The Examiner finds that different metals “would be expected to exhibit a different catalytical activity and selectivity” because “different metals in different Groups have different electron configurations, which describe the distribution of [electrons] among different orbits (including shells and subshells) within atoms and molecules.” Id. at 4. The Examiner points out that Appellants’ comparative examples are limited to tungsten and molybdenum as Ml, nickel, platinum, cobalt, tantalum, and molybdenum for M2, the hydrocarbon conversion of ethylene and isobutene, and a selected aluminum oxide support. Id. at 4—5. 5 Appeal 2014-003984 Application 12/733,809 Appellants’ arguments are not persuasive of error for a number of reasons. First, Appellants’ argument that the Examiner admitted that Basset’s catalyst does not disclose first and second metal compounds comprising metals Ml and M2 from the groups recited in claim 34 is not supported by the record. The Examiner finds that Basset discloses both the groups of lanthanides and actinides corresponding to Ml as claimed as well as a transition metal of Group 2 to 12, which “broadly teaches a transition metal including Group 8—10 transition metals” corresponding to M2 as claimed. Ans. 6. The Examiner also finds that, in addition to teaching two types of metal compounds, form A and form B, Basset discloses “at least one metal” chosen from the corresponding groups. Id. The Examiner’s findings are supported by record. Basset 2:9—3:1, 7:22—24, 9:29-30. Appellants do not dispute the Examiner’s finding that Basset discloses “at least one metal” from the recited groups. The phrase “at least one metal” suggests more than one metal. Therefore, Appellants’ argument that Basset does not disclose or suggest first and second metal compounds from the groups recited in claim 34 is not supported by the record. Second, Appellants’ argument that Sasaki does not suggest the claimed combination of metals is not persuasive because it does not address the Examiner’s grounds for rejection over the combination of Basset, Sasaki, and Wood. The Examiner relies on Basset’s disclosure of the claimed metals, not Sasaki. Final Act. 3^4; Ans. 6. Sasaki is cited by the Examiner for disclosing the use of alumina particles in the catalyst support, not the claimed catalytic metals. Final Act. 4; Ans. 6. Appellants do not dispute that “Sasaki discloses catalyst support particles and methods of preparing them.” Br. 10. 6 Appeal 2014-003984 Application 12/733,809 Third, Appellants’ argument that the Examiner erred in combining the teaching of Sasaki regarding particles with the teachings of Basset to use two catalytic metal compounds from the claimed groups of metals, is not persuasive because it fails to address the Examiner’s stated reason for combining Sasaki’s teaching with those of Basset. The Examiner’s finding that Sasaki teaches a benefit of using alumina particles in the substrate is supported by the record and not disputed. Ans. 6; Sasaki, Abstr. (hydrothermal treatment of x-alumina particles used as catalyst support particles “improves the thermal resistance of the alumina particles”). Moreover, the Examiner’s finding that Basset and Sasaki, as well as Wood, all teach “alumina supported transition metal catalyst for production of hydrocarbons” (Ans. 7) is not disputed by Appellants. Fourth, Appellants’ argument that the Examiner erred in combining Basset with Wood because Wood does not disclose or suggest the use of metal of Groups 8 to 10 in the catalyst improves catalyst performance is not supported by the record. Indeed, the Examiner’s finding that Wood discloses a preferred use of metals from Group 8 as the catalytic metal on an alumina support (Ans. 7—8) is explicitly disclosed in Wood and, therefore, fully supported by the record. Wood 5:23—25 (“Examples of preferred catalytic metals include the metals of Group VIII of the Periodic Table of the elements”). Fifth, we are not persuaded by Appellants’ argument that the examples with two different metals show “far greater activity” and “far greater selectivity” than comparative examples with one metal and therefore the Examiner erred in finding the evidence insufficient to overcome the obviousness rejection. Appellants do not direct us to any evidence to rebut 7 Appeal 2014-003984 Application 12/733,809 the Examiner’s finding that the unexpected results relied on by Appellants “may not be contributed by two metal components, but could be resulting from a higher dose of metals” (Ans. 4). Based on the Examiner’s calculations, which we accept as correct in the absence of any challenge by Appellants, the Examiner’s finding is supported by Appellants’ comparative examples 13 and 17, which have less overall metal content than the examples having two metal components. Ans. 3^4. Therefore, in view of the record before us, the examples in the Specification having greater catalytic metal content would be expected to have improved catalytic performance. Sixth, Appellants’ assertion of surprising and unexpected results is unpersuasive because Appellants merely direct us to comparative examples in the Specification that allegedly show less favorable catalytic performance compared to other examples. Br. 7—8. Such evidence is insufficient to establish surprising or unexpected results commensurate with the scope of claim 34, which includes multiple groups of metals for both Ml and M2, as well as a solid support comprising aluminum oxide for a “catalyst for manufacturing saturated or unsaturated hydrocarbon(s)” as recited antimony as a promoter. Appellants’ evidence is also insufficient as a comparison to the closest prior art, i.e., Basset, which Appellants do not dispute discloses two types of metal in a supported catalytic metal compound. Br. 9 (“Basset discloses a supported metal compound which may be used as a catalyst. The catalyst comprises two type of metal atom, each of which may be chosen from the lanthanides, the actinides and Groups 2 to 12.”). Therefore, Appellants’ evidence comparing activity and selectivity results to examples 13, 17, and 19, which do not include two types of metal atoms, is not a 8 Appeal 2014-003984 Application 12/733,809 comparison to the closest prior art. In addition, Appellants do not explain how the cited examples from the Specification that use tungsten, tantalum, and molybdenum for Ml support and nickel, platinum, cobalt, and tantalum for M2 (Br. 7—8) support the asserted unexpected results for the full scope of the claimed Ml and M2 metals. It is well settled that Appellants have the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellants to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 34 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied upon by Appellants must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Furthermore, it is only in the Appeal Brief that Appellants state that the “advantages [of the claimed invention] could not have been predicted by the skilled person based on the state of the art as of the filing date of the present case and/or in light of the cited prior art.” Br. 8. Such attorney argument is not enough. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot take the place of evidence). Rather than describing surprising results with respect to the comparative examples specifically, or describing surprising results with respect to prior art such as Basset which describes two supported catalytic 9 Appeal 2014-003984 Application 12/733,809 metals, page 2 of the Specification cited by Appellants merely describes the claimed invention as “surprisingly found” compared to “a tungsten hydride supported onto an aluminum oxide as disclosed in International Patent Application 2004/089541Moreover, what would have been expected also is not explicitly conveyed in either the Specification or the Appeal Brief. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007) (A proper evaluation of a showing of unexpected results considers what properties were expected). In sum, Appellants’ arguments are not persuasive of reversible error in the Examiner’s rejection of claims 34-45 over the combination of Basset, Sasaki, and Wood. ORDER For the foregoing reasons, we affirm the Examiner’s rejection of claims 34-45 under 35 U.S.C. § 103(a). 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)(v). AFFIRMED 10 Copy with citationCopy as parenthetical citation