Ex Parte Grey et al

Board of Patent Appeals and Interferences

Dec 22, 2009

10770924 (B.P.A.I. Dec. 22, 2009)

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.
10/770,924 02/03/2004 Roger A. Grey 01-2623A 1640
24114 7590 12/22/2009
LyondellBasell Industries
3801 WEST CHESTER PIKE
NEWTOWN SQUARE, PA 19073
EXAMINER
COVINGTON, RAYMOND K
ART UNIT PAPER NUMBER
1625
MAIL DATE DELIVERY MODE
12/22/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROGER A. GREY and EDRICK MORALES
__________

Appeal 2009-009151
Application 10/770,924
Technology Center 1600
__________

Decided: December 22, 2009
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
process for producing an epoxide. The Patent Examiner rejected the claims
for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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Application 10/770,924

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STATEMENT OF THE CASE
“The invention relates to an epoxidation process using a mixed
catalyst system to produce oxides from hydrogen, oxygen, and olefins.”
(Spec. 1:6-7.) “The mixed catalyst system comprises a palladium-containing
titanium zeolite and a palladium-free titanium zeolite.” (Id. at 1:7-9.)
Claims 1-18, which are all the pending claims, are on appeal. Claim 1
is representative and reads as follows:
1. A process for producing an epoxide comprising reacting an olefin,
hydrogen and oxygen in the presence of a catalyst mixture comprising
a palladium-containing titanium zeolite and a palladium-free titanium
zeolite.

The Examiner rejected the claims as follows:
• claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over Jones1
and Sato;2 and
• claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over Grey3
and Bowman.4
Claims 2-18 have not been argued separately and therefore stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

1 C. Andrew Jones, Direct Epoxidation Process Using A Mixed Catalyst
System, US Patent No. 6,307,073 B1, Oct. 23, 2001.
2 Akira Sato et al., A Method for Manufacturing Propylene Oxide, JP
Application (Kokai) No. 4-352771, Dec. 7, 1992.
3 Roger A. Grey et al., Direct Epoxidation Process Using A Mixed Catalyst
System, US Patent No. 6,498,259 B1, Dec. 24, 2002.
4 Robert G. Bowman et al., Process For The Direct Oxidation Of Olefins To
Olefin Oxides, Int’l Pub. No. WO 98/00413, Jan. 8, 1998.
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Application 10/770,924

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OBVIOUSNESS
The Issues
The Examiner and Appellants agree that Jones and Bowman each
taught an epoxidation process that used a palladium-free titanium zeolite
catalyst, and that Sato and Grey each taught an epoxidation process that used
a palladium-containing titanium zeolite catalyst. Compare the facts set out
in the Non-final Rejection dated Oct. 19, 2005, and in the Appeal Brief.
The Jones and Sato rejection and the Grey and Bowman rejection thus
raise the same issues.
The Examiner’s position is that “[b]oth palladium-free titanium
zeolite and palladium-containing titanium zeolite catalysts [were] known in
the [epoxidation] art.” (Non-final Rej. dated Oct. 19, 2005, at 2.) The
Examiner concluded it would have been obvious to run an epoxidation
process using both the Jones palladium-free titanium zeolite and the Sato
palladium-containing zeolite, or both the Grey palladium-containing zeolite
and the Bowman palladium-free zeolite, “in order to obtain their cumulative
effects.” (Rej. at 2.)
Appellants contend that the “cited patents neither suggest Appellants’
claimed invention, nor would give one of ordinary skill a reasonable
expectation that the claimed process would be successful.” (App. Br. 4.)
According to Appellants, “one of ordinary skill would not be motivated to
combine a palladium-containing titanium zeolite with a palladium-free
titanium zeolite because the palladium-containing zeolite (by itself) is
known to be a catalyst useful for olefin epoxidation with hydrogen and
oxygen.” (Id. at 6-7.) Appellants also contend that the use of a palladium-
containing catalyst and a palladium-free catalyst “surprisingly results in
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Application 10/770,924

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enhanced productivity per amount of palladium.” (Id. at 7, citing Spec.
Examples 3 and 4, said to show 17-36% higher palladium productivity.)
The issues with respect to this rejection are:
Have Appellants shown the Examiner erred in finding a motivation to
combine the two different catalysts;
have Appellants shown that the Examiner’s proposed combination
lacked a reasonable expectation of success; and
have Appellants established a surprising or unexpected result?

Findings of Fact
The relevant factual content of the references is not in dispute. We
adopt the Examiner’s findings.

Principles of Law
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416.
“It is prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose.” In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
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“Obviousness does not require absolute predictability of success. . . .
[A]ll that is required is a reasonable expectation of success.” In re
O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).

Analysis
The Examiner reasoned that “[t]he idea of combining somewhat
different but otherwise analogous catalysts flows logically from their having
been individually taught in related processes producing the same epoxide
products in prior art.” (Rej. at 2, citing In re Kerkhoven.) We agree that the
Examiner set out a legally sufficient prima facie case of obviousness. See
Kerkhoven, 626 F.2d at 850. Moreover, the Examiner found that obtaining
the cumulative effects of the two kinds of catalyst would have been
desirable. Although Appellants dispute that there would have been a
motivation to use both kinds of catalyst together, they have not shown the
Examiner erred in finding one of ordinary skill in the art would have
expected cumulative effects. Thus, the prima facie case was founded not
only on the Kerkhoven principle, but also on additional evidence of the
desirability of the combination.
Appellants argue that their combined catalyst has a surprising result:
enhanced palladium productivity. (App. Br. 7.) The Specification discloses
that when a palladium-containing titanium zeolite catalyst and a palladium-
free titanium zeolite catalyst are used together, the productivity is greater
than with the palladium catalyst alone. (Spec. at 10:4-6.) The Specification
expresses the increase in terms of “palladium productivity,” apparently
attributing all the catalytic effect to palladium, and none to the palladium-
free titanium zeolite. We find this explanation unsatisfactory. It is
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undisputed that palladium-free titanium zeolite was known to catalyze
epoxidation. Rather than evidence of a change in “palladium productivity,”
we find the increased productivity may be only the cumulative effect of the
two kinds of catalyst that would have been predicted. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Finally, although Appellants argue that the Examiner’s proposed
combination lacked a reasonable expectation of success, they provide no
explanation how that could be so. Appellants provide no evidence that a
person of skill in the art would have expected any difficulty associated with
running an epoxidation process using the Jones and Sato, or Bowman and
Grey, catalysts respectively, in a mixture.

CONCLUSIONS OF LAW
Appellants not shown the Examiner erred in finding a motivation to
combine the two different catalysts;
Appellants have not shown that the Examiner’s proposed combination
lacked a reasonable expectation of success; and
Appellants have not established a surprising or unexpected result.

SUMMARY
We affirm the rejection of claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Jones and Sato; and
we affirm the rejection of claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Grey and Bowman.
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Application 10/770,924

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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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LYONDELLBASELL INDUSTRIES
3801 WEST CHESTER PIKE
NEWTOWN SQUARE PA 19073