Ex Parte Falkowski et al

Patent Trial and Appeal Board

Jul 5, 2016

12097064 (P.T.A.B. Jul. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/097,064 06/12/2008
23657 7590 07/07/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Jurgen Falkowski
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.
C 3078 PCT
(CGG0056-00US)
CONFIRMATION NO.
7864
EXAMINER
BULLOCK, IN SUK C
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
07/07/2016 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):
docket@dsiplaw.com
spedersen@dsiplaw.com
jescobar@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN FALKOWSKI, MARKUS DIERKER,
MICHAEL NEUSS, KARL HEINZ SCHMID,
STEPHAN wURKERT, and LARS ZANDER1
Appeal2014-008290
Application 12/097,064
Technology Center 1700
Before MARK NAGUMO, CHRISTOPHER M. KAISER, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection2 of
claims 11-18, 21, and 23-30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm but designate our affirmance as a new ground of rejection.
1 The Real Party in Interest is identified as Cognis IP Management GmbH
(assignee) and BASF SE, which acquired Cognis IP Management GmbH.
(Appeal Brief, filed 05 May 2014 ("Br."), 3.)
2 Final Office Action mailed 03 December 2013 ("Final Rejection"; cited as
"FR.").
Appeal2014-008290
Application 12/097,064
OPINION
A. Introduction3
The subject matter on appeal relates to a reaction to convert "hydroxyl
compounds" "with high selectivity into pure hydrocarbons." (Spec. 2, 11.
14-16.) Using hydrogen and a nickel catalyst, the reaction is said to produce
"linear saturated alkanes from primary alcohols whose carbon chain contains
one carbon atom more than the alkane." (Id. at 2, 11. 18-20.)
Representative claim 11 reads:
11. A process for the production of linear saturated
alkanes from one or more primary alcohols, wherein the carbon
chain of the one or more primary alcohols has one carbon atom
more than the alkane, comprising
conducting reductive dehydroxymethylation of one or
more primary fatty alcohols containing 8 to 24 carbon atoms, at
a temperature ranging from 100 to 300°C and pressures from 1
to 250 bar in the presence of hydrogen and a catalyst to form a
reaction mixture, wherein the catalyst comprises nickel, and
wherein the catalyst is used in quantities of about 0.1 to about
3% by weight, based on the quantity of fatty alcohol used; and
removing water formed from the reaction mixture during
the reaction.
(Claims Appendix, Br. 14 (emphasis added).)
3 Application 12/087,064, filed 12 June 2008, is a national stage entry of
PCT /EP2006/01164 7, with an international filing date of 05 December 2006,
which claims foreign priority to European Application 05027253.3 filed
14 December 2005. We refer to the '"064 Specification," which we cite as
"Spec."
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Application 12/097,064
The Examiner maintains the following grounds of rejection:4
A. Claims 11-18, 21, 23-28, and 30 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Wojcik,5 Covert,6 and GB
'327. 7
A 1. Claim 29 (dependent claim of claim 11) stands rejected under
35 U.S.C § 103(a) as being unpatentable over Wojcik, Covert,
GB '327, and Schneider.8
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim J l9
Appellants and the Examiner do not dispute that Wojcik discloses "a
method for the preparation of certain hydrocarbons" using "a primary
alcohol," "hydrogen," and "a nickel catalyst." (Wojcik, 1293 (cited in Ans.
2); see also Br. 7-8.) Appellants and the Examiner do not dispute that GB
'327 discloses a reaction for producing aliphatic hydrocarbons from primary
alcohols and that water may be removed from the reaction. (GB '327, 1, 11.
4 Examiner's Answer mailed 03 June 2014 ("Ans.").
5 Bruno Wojcik & Homer Adkins., Hydrogenolysis of Alcohols to
Hydrocarbons, 55 J. Am. Chem. Soc., 1293-1294 (1933).
6 Lloyd W. Covert & Homer Adkins Nickel by the Raney Process As a
Catalyst of Hydrogenation, 54 J. Am. Chem. Soc., 4116--4117 (1932).
(Covert is cited by Wojcik at 1294, 1. 1, as describing the nickel catalysts.)
7 Patent Specification 543,327, Improvements In or Relating to the
Production of Aliphatic Hydrocarbons, Great Britain Patent Application
(complete specification accepted 20 February 1942).
8 Gunther Schneider et al., Skin Cosmetics, Ullmann's Encyclopedia of
Industrial Chemistry (2001 ).
9 Claims 12-18, 21, 23-28, and 30 stand or fall with claim 11. (Br. 6, 7.)
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Application 12/097,064
11-15 (cited in FR. 11); see also Br. 8-9.) Appellants and the Examiner
also do not dispute that the recited range of "about 0.1 to about 3% by
weight" of nickel catalyst is not disclosed in the cited references. (Ans. 10
(finding that "the specific catalyst concentration range is not disclosed").)
The Examiner, however, finds that GB '327 discloses a reaction to
produce hydrocarbons from alcohol "in the presence of 10% by weight
of ... nickel catalyst." (Ans. 10; GB '327, 1, 11. 11-15; 2, 11. 13-14.) The
Examiner also finds that Covert discloses using about 6.7 wt% of a nickel
catalyst in a hydrogenation reaction. (Ans. 10; FR. 12.) The Examiner
additionally finds that Covert "discloses that small amounts of [Raney]
catalyst10 can be used, but that the small amounts are expected to be
ineffective" for the hydrogenation reaction. (Ans. 10.) Based on these
findings and without specifying what the "small amounts" of the catalyst
might be, the Examiner determines that "the combined references teach
catalyst concentrations ranging from small amounts to 10 wt%," which
"overlaps the claimed range." (Id. at 11.)
Appellants argue that the recited range of "about 0.1 to about 3% by
weight" of nickel catalyst is much lower than the 6. 7 wt% nickel catalyst
disclosed in Covert or the 10 wt% nickel catalyst disclosed in GB '327. (Br.
6.) Appellants argue that the fact that Covert discloses using "very small
amounts of [Raney] catalyst" in a hydrogenation reaction as being "quite
ineffective" is further proof that "there is no rational basis on which to rely
to justify using the recited range of catalyst of about 0.1 to about 3% by
weight of the alcohol." (Id.) Appellants raise additional arguments
10 Covert states that a Raney catalyst is "a pure nickel catalyst." (Covert,
4116.)
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Appeal2014-008290
Application 12/097,064
regarding the criticality of the recited range for the process on an industrial
scale. (Id. at 8 (citing to a Rule 132 Declaration by co-inventor Dr. Jurgen
Falkowski11 in support of criticality); see also Reply 3.) 12
It is well established that optimization of a prior art range flows from
the normal desire of scientists or artisans to improve upon what is already
generally known. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1366-68 (Fed.
Cir. 2007). It is, however, equally well established that when the parameter
optimized was not recognized to be a result-effective variable, optimization
would not have been obvious. In re Antonie, 559 F.2d 618, 620 (CCPA
1977).
In this case, the Examiner finds that the recited weight range of the
nickel catalyst is not disclosed by the references of record. The Examiner
also finds that the reference Covert discloses that hydrogenation reactions
using small amounts of Raney catalyst may be "quite ineffective." (Ans. 11;
see also FR 12 (citing Covert, 4117).) Based on the stated ineffectiveness as
a result of using the unspecified small amounts of Raney catalyst, the
Examiner concludes that Covert "disclose[ s] that very low levels [of
catalyst] are undesirable when one desires an efficient hydrogenation
process that is operated in such a manner as to obtain high conversions in
reasonable periods of time." (Ans. 11.) The Examiner then finds that
because "efficiency is not a concern" for the claimed reaction (as claim 11
does not recite a particular efficiency), "one would simply minimize the
amount of catalyst used to produce the alkane and would arrive at the
11 The Declaration states the name as "Juergen Falkowski." (Declaration iJ
1, signature block.) The oath shows the co-inventor's name as "Jurgen
Falkowski." (Oath filed 12 June 2008.)
12 Reply Brief filed 31 July 2014 ("Reply").
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Application 12/097,064
claimed range of low catalyst concentrations." (Id.) The Examiner
concludes that a skilled artisan would have been motivated to arrive at the
claimed range "simply [by] the optimization itself, i.e., the reduction of
catalyst needed to produce the desired alkane." (Id.)
A prerequisite condition for the obviousness of optimization via
routine experimentation is a recognition in the prior art of the range over
which that optimization may be accomplished. When, as here, the Examiner
finds that the unspecified "small amounts" of Raney catalyst are deemed
"quite ineffective" in the prior art of record but nonetheless concludes that a
skilled artisan would have arrived at the lower end of the recited range
through routine optimization, we find that the evidentiary basis for a prima
facie case of obviousness has not been established.
New Ground of Rejection
The test of obviousness is "whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention." In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). In this case, the reference
Covert discloses two types of nickel catalysts: "a nickel on kieselguhr" type
of catalyst (a "supported catalyst") and a Raney catalyst ("a pure nickel
catalyst"). (Covert, 4116-17.) Comparing the two types of catalyst for use
in a hydrogenation reaction, Covert discloses that "[i]f the Raney catalyst
had been used in the same proportion as was nickel on kieselguhr (0.2 g for
74 ml. of acetone), it would have been quite ineffective." (Id. at 4117.)
Based on the totality of the teachings in Covert, a skilled artisan
would have understood that, unlike using a Raney catalyst at about 0.34 wt%
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Application 12/097,064
at around 23°C (Covert, 4117), 13 using a nickel catalyst on kieselguhr in that
amount (i.e., 0.34 wt%) likely would have been effective for the
hydrogenation reaction. Covert, therefore, suggests using a nickel catalyst
from 6.7 wt% to 0.34 wt%, which encompasses the recited range of "about
0.1 to about 3% by weight" of nickel catalyst. A skilled artisan, based on
the encompassing range of the nickel catalyst in Covert, the undisputed
teachings in Wojcik for using "a nickel catalyst," hydrogen, and a primary
alcohol to produce hydrocarbons (Wojcik, 1293), and the undisputed
teachings in GB '327 regarding water removal in a reaction for producing
aliphatic hydrocarbons from primary alcohols (GB '327, 1, 11. 11-15), would
have found claim 11 obvious. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.").
Appellants' argument that "the amount of catalyst is critical to the
feasibility of the process on an industrial scale" based on the Declaration of
co-inventor Dr. Juergen Falkowski does not persuade us of the patentability
of claim 11. (See Br. 8; Declaration ,-i 2.) The process recited in claim 11 is
not limited to one "on an industrial scale" and we decline to import such a
limitation into the claim. Moreover, the Declaration states that the recited
catalyst amounts "are suitable in a large-scale application," without stating
that there is an "unexpectedly good" outcome based on the amounts.
(Declaration ,-i 6; Reply 3; see In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
13 Based on the density of acetone which is a standard property of a
well-known material, we calculate that the weight percentage of nickel on
kieselguhr and acetone is 0.34 wt%.
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Appeal2014-008290
Application 12/097,064
1997) (To show criticality of a claimed range, "it is not inventive to discover
the optimum or workable ranges by routine experimentation. Only if the
'results of optimizing a variable' are 'unexpectedly good' can a patent be
obtained for the claimed critical range.") (internal citations omitted).)
Appellants' remaining arguments that water removal is "not a real
concern" in GB '327 and that none of the references discloses the claimed
process as predictable do not persuade us of patentability. The prior art
reference Wojcik states that "it is preferable to carry out the
[hydrogenolysis] operation in two stages since the water formed in the
second step prevents the completion of the first reaction." (Wojcik, 1294.)
A skilled artisan therefore would have understood that water removal may
be "preferable" in this type of reaction. (Id.)
Appellants do not address this teaching in Wojcik regarding water
removal. Appellants do not argue that there is in fact unpredictability in the
particular reaction at issue. Appellants do not explain why a skilled artisan,
based on the collective teachings of the references, would have found the
claimed process yielding more than "a predictable result" and as a result,
claim 11 has not been shown to distinguish over the prior art. See KSR, 550
U.S. at 417 ("If a person of ordinary skill can implement a predictable
variation [of a known work], § 103 likely bars its patentability.").
Claim 29
Appellants argue that dependent claim 29 is not obvious based on the
arguments with regard to claim 11. (Br. 12.) We affirm the rejection of
claim 29 for the reasons discussed with respect to claim 11 (including the
new ground of rejection), from which claim 29 depends. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
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Application 12/097,064
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.").
C. Order
It is ORDERED that the rejection of claims 11-18, 21, and 23-30 is
affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
AFFIRMED; NEW GROUND OF REJECTION
37 C.F.R. § 41.50(B)
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