Ex Parte Egami

Patent Trial and Appeal Board

Feb 12, 2013

11798821 (P.T.A.B. Feb. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/798,821 05/17/2007 Kazutaka Egami IPA-017 7610
32628 7590 02/13/2013
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
PATEL, SMITA S
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
02/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JGC CATALYSTS AND CHEMICALS LTD.
Inventor: Kazutaka Egami
________________

Appeal 2011-005373
Application 11/798,821
Technology Center 1700
________________

Before CHARLES F. WARREN, MARK NAGUMO, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/798,821

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A. Introduction1
JGC Catalysts and Chemicals Ltd. (“JGC”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 7-16, 19, and 20,
which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We REVERSE.
The subject matter on appeal relates to methods of producing an
oxychlorination catalyst. Oxychlorination catalysts are used to chlorinate
aliphatic hydrocarbons such as ethylene (C2H4) to produce, e.g.,
1,2-dichloroethane (CH2ClCH2Cl, “EDC”). Typically, the oxychlorination
reaction is conducted in a fluidized bed reactor. Catalysts that do not lose
their fluidity (e.g., by migration of certain components to the surface of the
catalyst particles), and that have high selectivity and activity for producing
EDC, are desired. (Spec. 1 [0002].)
According to the 821 Specification, the present inventor previously
disclosed, in “Patent document 5,”3 an oxychlorination catalyst having high
selectivity and activity, as well as suppressed lowering of fluidity, arising
from the use of a pseudo-boehmite-alumina-slurry as the carrier for the

1 Application 11/798,821, Oxychlorination Catalyst and Method for
Preparing the Same, filed 17 May 2007. The specification is referred to as
the “821 Specification,” and is cited as “Spec.” The real party in interest is
listed as JGC Catalysts and Chemicals Ltd. (Japan) (Appeal Brief, filed 7
September 2010 (“Br.”), 2.)
2 Office action mailed 1 April 2010.
3 Kazutaka Egami and Susumu Fujii, Method For Preparing
Oxychlorination Catalyst And Oxychlorination Catalyst, JP 2005-000730 A
(2005) (“Egami”).
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Application 11/798,821

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catalyst. (Spec. 2 [0004].) The manufacture of this catalyst, however, is
said to require the use of a large amount of chlorine, which tends to corrode
the stainless steel apparatus. (Id.) “On the other hand,” the Specification
continues, “the activity, selectivity and fluidity of the catalyst are
insufficient when an amount of halogen (chlorine) used as a raw material
decreases, or when other acidic salt such as sulfate is used.” (Id.)
The solution to this problem, for which patent protection is sought, is
to use cupric nitrate, rather than cupric chloride, and nitric acid, rather than
hydrochloric acid, as well as the nitrate salts of alkali, alkaline earth, and
rare earth metals, rather than the halide (chloride) salts used by the prior art
in oxychlorination catalysts.
Representative Claim 7 reads:
A method of producing a catalyst for oxychlorination
comprising alumina and copper, the method comprising the
following steps (a) to (c):
(a) preparing a slurry for spray-drying by adding, to a
pseudo-boehmite alumina slurry,
nitric acid in a range from 0.001 to 0.1 moles per mole
of Al2O3 in the slurry, and
an aqueous solution of cupric nitrate;
(b) spray-drying the slurry; and
(c) calcining particles obtained in the step (b),
wherein a content of copper is in the range from 5 to 20% by
weight calculated as CuO, and a content of chlorine is 0.5%
by weight or less.
(Claims App., Br. 17; indentation, paragraphing, and emphasis added.)
Remaining independent claims 12 and 13 are similar to claim 1, but
require the further presence of alkaline earth [Group 2] metal salts, rare earth
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metal salts, and an alkaline [Group 1] salt, within specified concentration
ranges. Both require that the content of chlorine is 0.5% by weight or less,
and claim 13 further requires that chlorine is “substantially absent in the
catalyst.”4
The Examiner maintains the following ground of rejection:5
Claims 7-16, 19, and 20 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Kramer6 and Egami.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that, in the present posture of the case, JGC has not
presented substantively distinct arguments for the separate patentability of
any claims. Accordingly, all claims stand or fall with claim 7.
The Examiner finds that Kramer describes methods of making
oxychlorination catalysts that meet all the limitations recited in the

4 We need not decide whether the dual chlorine recitations in claim 13 are
redundant.
5 Examiner’s Answer mailed 9 November 2010 (“Ans.”).
6 Keith S. Kramer and Joseph A. Cowfer, Catalyst Compositions and
Process for Oxychlorination, U.S. Patent Application Publication
2007/0112235 A1 (17 May 2007), based on an application
filed 10 November 2006.
7 See n.3, supra. We refer to the JPO machine translation in the record.
The Examiner and Appellants refer to this reference as “Susumu,” the given
name of the second author.
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independent claims but for the molar ratio range of acid to alumina slurry,
and the use of pseudo-boehmite alumina. (Ans. 4, ll. 19-21). The Examiner
finds that Egami describes oxychlorination catalysts with pseudo-boehmite
alumina carriers and the use of acids, including nitric acid, in the required
ratio to alumina, and argues that it would have been obvious to use those
teachings in processes taught by Kramer. (Id. at 5.) The Examiner finds
further that Kramer does not expressly describe the requirement that the
chlorine content [of the catalyst] be 0.5% by weight or less. (Id. at 5,
ll. 20-21.) However, “it would have been obvious,” the Examiner argues,
“that chlorine content being zero when using metal oxide or salt such as
bromide, iodide, nitrate, bicarbonate, carbonate as taught by Kramer to
provide a higher optimal temperature without sacrificing the performance
benefits such as high EDC selectivity, high product purity, high HCl
conversion and excellent fluidity.” (Id. at 5, l. 21, to 6, l. 4.)
In JGC’s view, the Examiner’s reliance on Egami, which teaches the
addition of cupric chloride, chloridation rare earth metal salts, and an alkali
halide (Br. 7, ll. 4-10, quoting Egami [0006]) is incongruous with the
subsequent argument that it would have been obvious to use only the
alternative (non-chloride) salts mentioned by Kramer (id. at 8, ll. 14-18).
JGC argues further that the rejection lacks any clearly articulated reason
(id. at 6, l. 27) or any support (id. at 8, l. 24) for the conclusions that the
advantages taught by Egami would be achieved with the proposed
substitution into the processes taught by Kramer. In this regard, JGC
submits that the inventor discovered that the claimed catalyst “surprisingly
shows the same high activity and selectivity as those in the conventional
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catalysts.” (Id. at 9, ll. 26-28.) Moreover, according to JGC, the nitric acid,
in addition to providing a non-corrosive process of producing the catalyst,
provides homogenized aggregated particles and a catalyst with high abrasion
resistance. (Id. at 10, ll. 20-25.) Finally, JGC argues that there is no
evidence of record indicating that “the cited references remotely considers
the corrosive problem that is addressed in this application.” (Id. at 11,
ll. 8-10.)
The weight of the evidence supports JGC. At best, the combined
teachings of Kramer and Egami might have suggested that it might be
obvious to try coprecipitating cupric nitrate, rather than cupric chloride, in
nitric acid, rather than in hydrochloric acid, with rare earth nitrates, alkaline
earth nitrates, and alkali nitrates, or non-chloride salts, onto pseudo-
boehmite alumina slurries, with a reasonable expectation of achieving an
oxychlorination catalyst. To this extent, a minimal prima facie case of
obviousness might be said to have been established. However, as JGC
argues, the Examiner has not directed our attention to any credible evidence
that the benefits taught by Egami for the particular catalysts resulting from
the particular processes taught would have been expected to apply to any
catalyst formed on the disclosed pseudo-boehmite carriers. Similarly, the
Examiner has not directed our attention to any data suggesting that low-
chlorine-content oxychlorination catalysts would have been expected to
perform comparably to the chlorinated catalysts described by Egami.
Indeed, the Examiner has not directed our attention to any oxychlorination
catalysts prepared with low amounts of chloride salts, and the express
preference of both Kramer and Egami for chlorides suggests that non-
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chloride salts are not as highly regarded by those skilled in the art.
Moreover, the mechanisms of heterogeneous catalysis reactions are
generally regarded as being poorly understood, and thus, relatively
unpredictable. Thus, a minimal showing of unpredictability in the art would
suffice to demonstrate failure to establish a prima facie case of obviousness,
or a minimal showing of unexpected results would suffice to rebut the
rejection of record, taken as a prima facie case of obviousness.
As has often been observed, especially in the area of “improvement”
inventions, it is rare that those skilled in the art would not have recognized
the possibility that the invented improvement would work. Because
enablement is not an issue, evidence of enablement is not probative of
obviousness. In such cases, the existence or not of evidence of practical
reasons to pursue an embodiment within the scope of the claimed invention
is often the strongest evidence of obviousness or non-obviousness. Here, the
absence of practical reasons for a person having ordinary skill in the art to
select catalyst components in which every preferred compound is substituted
by some non-preferred alternative establishes, at best, a very weak case of
prima facie obviousness.
A showing of unpredictability or of unexpected results is provided by
the data presented in Tables 1 through 3 at page 28 of the 821 Specification.
These data show that Examples 1 through 4 of the claimed catalysts have at
least comparable selectivity, activity, abrasion resistance as Comparative
Examples 1 and 2 (the chlorinated catalysts), and that the inventive
Examples have fluidity superior to catalysts prepared from aqueous HCl
slurries of pseudo-boehmite carriers during the oxychlorination reaction.
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The Examiner has not directed our attention to evidence indicating that these
results would have been expected.
We conclude that the preponderance of the evidence supports JGC’s
arguments that the rejections of record should be REVERSED.
C. Order
We REVERSE the rejection of claims 7-16, 19, and 20 under
35 U.S.C. § 103(a) in view of the combined teachings of Kramer and Egami.
REVERSED
bar