Ex Parte Hill et al

Board of Patent Appeals and Interferences

Feb 25, 2010

10262930 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS HILL, MATHIAS HAAKE, EKKEHARD SCHWAB,
ANDREA FRENZEL, and HELMUT WORZ
____________

Appeal 2009-010181
Application 10/262,930
Technology Center 1700
____________

Decided: February 25, 2010
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
Claim 1 is illustrative of the invention:
1. A process for the selective catalytic gas-phase
hydrogenation of alkynes, dienes, alkenynes and/or polyenes in
an olefin-containing hydrocarbon stream in at least two reaction
zones connected in series without introduction of part of this
hydrocarbon stream between the penultimate reaction zone and
the last reaction zone,

wherein catalysts comprising a metal of group 10 of the
Periodic Table of the Elements on a catalyst support are used in
the reaction zones, and

wherein the hydrogen content in the reaction mixture
upstream of the penultimate reaction zone and the degree of
conversion in the penultimate reaction zone are set so that the
reaction mixture contains at least 0.7% and not more than 2.0%
by volume of hydrogen at the outlet of the penultimate reaction
zone.

The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Inglis 4,367,353 Jan. 4, 1983
Joly 5,821,397 Oct. 13, 1998
Flick 5,866,734 Feb. 2, 1999

The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Joly, Inglis, and Flick.
Appellants present arguments concerning the rejected claims as a
group (App. Br. 5-10; Reply Br. 2-4). Appellants do not advance an
argument that is reasonably specific to any particular claim on appeal1.

1 Appellants merely pointing out what the various dependent claims recite
are not separate arguments in support of patentability (App. Br. 6, 9, 10).
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Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as
the representative claim on which our discussion will focus.
ISSUE ON APPEAL
The issue before us is whether Appellants have identified an error in
the Examiner’s determination that the claims are obvious under 35 U.S.C. §
103(a). We answer this question in the negative. Therefore, we affirm.
The issue turns on whether the combined prior art renders obvious a
method for selective catalytic gas-phase hydrogenation “wherein the
reaction mixture contains at least 0.7% and not more than 2.0% by volume
of hydrogen at the outlet of the penultimate reaction zone” as recited in
independent claim 1, and if so, did the Examiner err in concluding that the
weight of the evidence, taking into account Appellant’s evidence of
unexpected results, weighs in favor of obviousness?
FINDINGS OF FACT (FF)
Appellants admit that alkynes, dienes, alkynynes and/or polyenes “are
customarily removed from an olefin-containing hydrocarbon stream by
selective catalytic hydrogenation” (Spec. 2:15-17). Appellants also admit
that multi-stage hydrogenation is widely known (e.g., Spec. 2:24-30; also
Spec. 3:25-30).
Appellants also admit that the conventional catalysts used for this
process are palladium or silver-doped palladium (Spec. 2:21-23). Appellants
admit that catalysts such as disclosed in “US-A-5,866,743” (that is, the Flick
reference used in the Examiner’s rejection) are known hydrogenation
catalysts.
Appellants describe as their invention that they have found that when
at least two reaction zones are connected in series without part of the
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hydrocarbon feed stream being introduced between the penultimate and last
reaction zones, and the “hydrogen content . . . and the degree of conversion
in the penultimate reaction zone are set so that the reaction gas mixture
contains at least 0.7% by volume of hydrogen at the outlet” (Spec. 4: 18-
28), then the process “substantially suppresses” the undesirable formation of
green oil while at the same time minimizing the loss of desired product
(Spec. 4:30-35).
The Examiner found that Joly describes a process as recited in claim 1
except it does not specify that the hydrogen content and degree of
conversion are set such that the volume of hydrogen at the outlet of the
penultimate reaction zone is “at least 0.7% and not more than 2.0%” as
required by claim 1, and relies upon Inglis to exemplify that hydrogen
amounts at a level within this range are conventional at the outlet of a
penultimate zone (Ans. 4, 5). The Examiner also finds that Joly does
explicitly disclose a catalyst comprising a group 11 metal (e.g., silver), and
relies upon Flick to exemplify that the use of such a catalyst.
Appellants’ claim 1 does not require a catalyst comprising a group 11
metal (see claim 1). Claim 1 only requires a catalyst comprising a group 10
metal (e.g., palladium). As the Examiner pointed out, Joly does describe the
use of palladium (which is a group 10 metal catalyst) (Ans. 4).
Inglis also describes the use of a palladium catalyst as the preferred
catalyst for a hydrogenation process, and that silver may be added thereto
(Inglis, col. 2, ll. 39-46).
PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
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rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
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 at
988.
In responding to a prima facie case of obviousness, one cannot show
non-obviousness by attacking references individually where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981).
In an obviousness rejection, the combination of references must be
considered as a whole, rather than the specific teaching of each reference. In
re Simon, 461 F.2d 1387, 1390 (CCPA 1972); In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971).
ANALYSIS
Appellants do not dispute the Examiner’s findings that Inglis2
describes that it is conventional in a catalytic hydrogenation process wherein
no hydrocarbon feed is introduced in between the first and second reaction
zones to have the reaction mixture contain 1.3% by volume of hydrogen at
the outlet of the penultimate (that is, the first of only two reaction zones)
(Ans. 4; see App. Br.; Reply Brief generally).3
Accordingly, Appellants have not identified any error in the
Examiner’s reasonable conclusion that it would have been obvious to one of

2 Indeed, Appellants’ arguments in their briefs contain no mention of Inglis.
3 Inglis alone appears to teach or suggest a process as recited in claim 1.
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ordinary skill in the art to set the hydrogen content upstream and the degree
of conversion in the penultimate first reaction zone of Joly so that the
reaction mixture contains “at least 0.7% and not more than 2.0% by volume
of hydrogen at the outlet of the penultimate reaction zone” as recited in
claim 1, since an amount of hydrogen within this range was conventional (as
exemplified in Inglis) for a penultimate reaction zone as encompassed by
claim 1.
Appellants’ contentions that there is no motivation to modify the
process of Joly with the catalyst of Flick are not persuasive (App. Br. 7).4
First, as pointed out by the Examiner, Appellants have not provided any
persuasive technical reasoning nor evidence in support of their allegation
that the catalysts of Flick would render Joly unsatisfactory for its intended
purpose (Ans. 7, 8; see App. Br. 8). Moreover, the Examiner only relies
upon Flick to suggest the use of a catalyst of a metal of group 11 (e.g.,
silver), whereas claim 1 does not even require the use of a group 11 catalyst
in combination with the Group 10 catalyst (e.g., palladium)5 (see FF).
In any event, Appellants admit that the use of silver-doped palladium
catalysts are conventional for hydrogenation processes as encompassed by
the claimed process (see FF). An applicant cannot defeat an obviousness
rejection by asserting that the cited references fail to teach or suggest
elements which the applicant has acknowledged are taught by the prior art.
It is well established that “[a]dmissions in the specification regarding the

4 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
5 Only dependent claims 7 and 9 require a combination of catalysts.
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prior art are binding on the patentee for purposes of a later inquiry into
obviousness.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1362 (Fed. Cir. 2007).6 Accordingly, Appellants have not identified
an error in the Examiner’s determination that it would have been prima facie
obvious to use such conventional catalysts in the hydrogenation process of
Joly.
Accordingly, Appellants have not persuasively argued that the facts
and reasons relied on by the Examiner are insufficient to establish a prima
facie case of obviousness. Because Appellants also rely upon evidence of
unexpected results, we reevaluate the facts on which the prima facie case of
obviousness was reached along with the secondary indicia of
nonobviousness. See In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990) (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“Prima
facie obviousness is a legal conclusion, not a fact. Facts established by
rebuttal evidence must be evaluated along with the facts on which the earlier
conclusion was reached, not against the conclusion itself.” (internal cites
omitted))).
Secondary Considerations
Appellants rely upon the evidence presented in their Specification to
argue that their claim invention established unexpected results (App. Br. 6).
The burden rests with Appellants to establish that the results are unexpected,
based on comparisons with the closest prior art, and commensurate in scope

6 See also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570
(Fed. Cir. 1988) (A statement that something is prior art is binding on an
applicant for determinations of anticipation and obviousness) and In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).
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with the claimed subject matter. See, e.g., In re Kulling, 897 F.2d 1147,
1149 (Fed. Cir. 1990).
We agree with the Examiner that the evidence of unexpected results is
insufficient (Ans. 7) for the following reasons. The Specification Example
is certainly not commensurate in scope with claim 1, which does not require
a silver-palladium catalyst in the penultimate reaction zone as in the
Example. As even Appellants recognize, only dependent claim 9 requires
such a catalyst (App. Br. 6). Furthermore, the Specification Example does
not identify specific process parameters, and also does not identify
catalyst(s) used in the first and third reactors. Rather it refers to
“conventional parameters”, “customary operating conditions” and
“conventional catalysts” (Spec. 10: 20-28). Thus it can hardly be concluded
that the relied upon evidence of unexpected results is due to the claimed
processing steps and catalysts or due to other unclaimed processing steps
and/or unclaimed catalysts in other reaction zones.
Under these circumstances, Appellants have not persuaded us of any
error in the Examiner’s conclusion that the weight of the evidence, taking
into account Appellants’ evidence of secondary considerations, weighs in
favor of obviousness.
We have considered Appellants’ other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
CONCLUSION
Appellants have failed to demonstrate reversible error in the
Examiner’s determination that the claims would have been obvious over the
prior art.
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Accordingly, we sustain the Examiner’s § 103 rejection of claims 1-
11 on appeal.
ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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