Ex Parte Diehl et al

Board of Patent Appeals and Interferences

Jan 13, 2011

11715949 (B.P.A.I. Jan. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FABRICE DIEHL, CHRISTOPHE BOUCHY,
TIVADAR CSERI, and SLAVIK KASZTELAN
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Appeal 2010-001420
Application 11/715,949
Technology Center 1700
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21-30, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001420
Application 11/715,949

The Invention
The Appellants claim a hydrotreating catalyst and a catalytic process
in which the catalyst is used. Claim 21 is illustrative:
21. A hydrotreating catalyst comprising at least one element of
group VIB and group VIII of the periodic table deposited on a porous
substrate, and as an additive at least one organic compound selected from the
group consisting of hexamethylene diamine, monoethanolamine,
diethanolamine, triethanolamine, N,N-dimethyl-N'-ethylethylene diamine,
an amino alcohol and an amino alkoxy-silane, wherein the catalyst is in
sulfurized form, and is prepared by a process in which the organic
compound is incorporated during sulfurization.

The References
Rony 3,855,307 Dec. 17, 1974
Wu 5,856,608 Jan. 5, 1999
Poulet 5,891,821 Apr. 6, 1999
The Rejections
The claims stand rejected as follows: claims 21, 22, 25 and 27-30
under 35 U.S.C. § 102(b) over Poulet, claims 23 and 26 under
35 U.S.C. § 103 over Poulet in view of Rony, and claim 24 under
35 U.S.C. § 103 over Poulet in view of Wu.
OPINION
We affirm the rejections.
Issue
It is undisputed that the catalyst claimed in the Appellants’ claims 21,
22, 25 and 27-29 and the catalytic process claimed in the Appellants’
claim 30 are prima facie anticipated by Poulet. The sole issue is whether the
Appellants’ evidence is sufficient to show that the Appellants’ catalyst,
which is claimed in product-by-process form, is not the same or substantially
the same as Poulet’s catalyst. Although additional references are applied in
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Application 11/715,949

the rejections under 35 U.S.C. § 103, the Appellants do not separately argue
those claims (Br. 4-5).2
Analysis
The patentability of a claim in product-by-process form is determined
based on the product itself, not on the method of making it. See In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior [art] product was made by a
different process.”). Whether a rejection is under 35 U.S.C. § 102 or § 103,
when the Appellants’ product and that of the prior art appear to be identical
or substantially identical, the burden shifts to the Appellants to provide
evidence that the prior art product does not necessarily or inherently possess
the relied-upon characteristics of the Appellants’ claimed product. See In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255
(CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974). The
reason is that the Patent and Trademark Office is not able to manufacture
and compare products. See Best, 562 F.2d at 1255; In re Brown, 459 F.2d
531, 535 (CCPA 1972).
The Appellants rely upon a Declaration under 37 C.F.R. § 1.132 by
Slavik Kasztelan (filed Jan. 12, 2009) which compares catalysts C10, C11
and C12, which were prepared by a process wherein the organic compound
is added simultaneously with sulfurization in accord with the Appellants’
claim 21, to catalysts 14 and 15 which were prepared by a process wherein

2 The pages of the Appellants’ Brief are not numbered. The Brief’s page
numbers cited herein have been provided by the Board.
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Application 11/715,949

the organic compound is first added and the catalyst subsequently is
sulfurized, as disclosed by Poulet (col. 7, ll. 23-25).
The Appellants argue that Declaration “Table 6 shows that catalyst
C10, simultaneously sulfurized with the treatment by the organic compound,
possesses far superior activity then [sic] catalyst C5, which organic
compound is incorporated, followed by sulfurization” (Br. 3), and that
similar results are shown in “the comparison of catalyst C10, (invention)
with C5 (subsequent sulfurization) in table 7 with respect to activity and
conversion” (Br. 4).
That argument is not well taken because no organic compound is used
in the preparation of catalyst C5 (Spec. 13-14). Hence, the comparison to
catalyst C5 does not provide a comparison with art that is as close as the
closest prior art (Poulet). See In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
The Appellants argue that far superior activity of the Appellants’
catalyst is shown by the comparison in Declaration Tables 6 and 7 of the
Appellants’ catalysts C11 and C12 prepared using simultaneous
sulfurization and incorporation of the organic compound versus,
respectively, catalysts C15 and C14 prepared by a process wherein the
sulfurization is subsequent to incorporation of the organic compound (Br. 3-
4). The Appellants argue that “[t]his declaration thus shows that the
catalysts prepared in accordance with the invention are different products
than catalysts prepared according to the prior art” (Br. 4).
Declarant Kasztelan states that “[s]urprisingly, table[s] 6 and 7 show
the significant gain of activity that is obtained on the catalysts prepared
according to the invention relative to the catalyst according to the
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EP 0 164 162 process of preparation [of] C14 and C15” (Decl. 5).3 A
comparison of the process used to prepare comparative catalysts C14 and
C15 (Decl. 3-4) and the process used to prepare the Appellants’ catalysts
C11 and C12 (Decl. 2; Spec. 10-11) shows numerous differences in the
processes. Also, the organic compounds differ in the comparison of
catalysts C11 (2(2-amino ethyl amino)ethanol) and C15 (ethylenediamine).
Hence, the cause-and-effect relationship which the Appellants desire to
show between simultaneous sulfurization/organic compound incorporation
and increased catalytic activity is lost in a welter of unfixed variables. See
In re Heyna, 360 F.2d 222, 228 (CCPA 1966); In re Dunn, 349 F.2d 433,
439 (CCPA 1965).
Moreover, the evidence relied upon by the Appellants is not
commensurate in scope with the claims which encompass all group VIB and
group VIII metals and numerous organic compounds, yet the evidence
includes only Mo in group VIB and Co in group VIII, and the organic
compounds include only 2(2-amino ethyl amino)ethanol and
ethylenediamine (Decl. 2-4). We find in the evidence of record no
reasonable basis for concluding that the great number of materials
encompassed by the Appellants’ claims would behave as a class in the same
manner as the particular materials tested. See In re Lindner, 457 F.2d 506,
508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
Conclusion
The Appellants have not provided convincing evidence that their
claimed catalyst is not identical or substantially identical to that of Poulet.

3 The Declaration page numbers herein have been provided by the Board
starting with the first page as page 1.
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Application 11/715,949

DECISION/ORDER
The rejections of claims 21, 22, 25 and 27-30 under
35 U.S.C. § 102(b) over Poulet, claims 23 and 26 under 35 U.S.C. § 103
over Poulet in view of Rony, and claim 24 under 35 U.S.C. § 103 over
Poulet in view of Wu are affirmed.
It is ordered that 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).
AFFIRMED

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