Ex Parte Hooks et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10741385 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICIA A. HOOKS, DAVID L. SULLIVAN,
MICHAEL D. MIER, JAAP W. VAN HAL, and XIANKUAN ZHANG
____________

Appeal 2009-002460
Application 10/741,385
Technology Center 1700
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Decided:1 July 01, 2009
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided
Date shown on this page of the decision. The time period does not run
from the Mail Date (paper delivery) or Notification Date (electronic
delivery).
Appeal 2009-002460
Application 10/741,385

Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-7, 10, and 12-53, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6.2
We AFFIRM
Appellants’ invention relates to a process of preparing a supported
silver-containing catalyst for use in a process of making an alkene oxide
from an alkene and an oxygen-containing gas by oxidation of the alkene to
the corresponding epoxide. (Spec. 1). Claim 1 is illustrative:
1. A process for making a catalyst for oxidation of an alkene to
an alkene oxide comprising:
a) forming a slurry of a silver compound, water and one or more
organic compounds having at least one functional group of the
formula -NX2, -OX or [(=O)(-OX)] wherein X is hydrogen or an
alkyl of one to three carbon atoms, X being the same or different,
and wherein at least one functional group is bound to a terminal
carbon;
b) contacting a support material of an alkaline earth carbonate, an
alkaline earth oxide or mixtures thereof with the slurry;
c) maintaining contact of the support material in the slurry for
sufficient time for silver to be deposited on the support material;
d) removing liquid from the slurry to form dry solid particles;
e) calcining the solid particles; and
f) adding a silver chloride compound in step a) or step b) or after
step b), step c), step d) or step e).

2 In this decision we have considered Appellants’ arguments presented in
the Appeal Brief, filed March 30, 2007, and the Reply Brief, filed
September 04, 2007.
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Appeal 2009-002460
Application 10/741,385

The following rejections are presented for our review:
Claims 1-7, 10, and 12-53 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Cooker, U.S. Patent No. 5,780,657, issued July 14, 1998.
ISSUE
The issue presented for review is: Have Appellants shown reversible
error in the Examiner’s finding that Cooker discloses a process for making
a catalyst for oxidation of an alkene to an alkene oxide comprising forming
a slurry of a silver compound as required by independent claims 1, and 38?

FINDINGS OF FACT

The Examiner found that Cooker discloses a process for making a
catalyst for oxidation of an alkene to an alkene oxide comprising forming a
slurry of a silver compound as required by independent claims 1, and 38.
The Examiner found that Cooker discloses silver compounds and silver
chloride can be applied to the support in the form of a suspension or a
slurry. (Ans. 4-5; Cooker, col. 4, ll. 12-21). Cooker, col. 4, ll. 12-21 are
reproduced below:
Combinations of one or more silver compounds easily reduced
to metallic form under calcination conditions (e.g., silver oxide
and silver carboxylates) together with silver chloride (which is
not readily reduced to silver metal and thus may serve as a
source of the inorganic chloride promoter in the catalyst) may
also be used to advantage. Surprisingly, the silver chloride
need not be applied to the support in the form of a solution in
order to obtain an active and selective catalyst. Thus, the silver
chloride may be in the form of a suspension or slurry or
combined directly with the support as a dry solid.

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Appeal 2009-002460
Application 10/741,385

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is
proper to take account of the inferences and creative steps that a person of
ordinary skill in the art would employ. Id. at 417-418.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Nevertheless, absence of
an explicit disclosure in the prior art of an inherent characteristic or
function does not necessarily confer patentability. MEHL/Biophile Int’l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
ANALYSIS
In addressing the rejection on appeal, Appellants in the principal
Brief have not presented separate arguments for each individually rejected
claim. Appellants have argued independent claims 1 and 38 (App. Br. 5-
11). In assessing Appellants’ arguments, we will focus on claims 1, and 38
since these claims contain the limitations relevant to Appellants’
arguments.
In rebuttal to the rejections of claims 1 and 38, Appellants argue that
Cooker fails to describe the claimed invention and does not meet the
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Appeal 2009-002460
Application 10/741,385

requirements for anticipation.3 Appellants argue that the Specification
states: “Slurry” does not mean a separation between a liquid and solid, i.e.,
a suspension, and does not mean a homogeneous mixture in a single phase
in which the solid is dissolved in the liquid, i.e. a solution. (Spec. 5, ll. 10-
14; App. Br. 8). Appellants acknowledge that Cooker discloses a mixture
that comprises the components that are required by the slurry of the
claimed invention. However, Appellants contend that this mixture is a
solution and is not the same as the slurry required by the claimed
invention. (App. Br. 9).

3 We note that, for the first time, Appellants advance arguments
concerning claims 52 and 53 on page 8 of the Reply Brief that were not
presented in the Brief. According to 37 C.F.R. § 41.37(c)(vii):

Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the
patentability of any grouped claim separately [emphasis
added].

In the Brief, claims 52 and 53 were argued together with claims 1-7, 10,
and 12-51. (App. Br. 5-12). Arguments raised for the first time in a Reply
Brief are considered waived. Cross Medical Products, Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1321 n.3 (Fed. Cir. 2005).
(“Medtronic has not properly raised the inventorship issue in its opening
brief to warrant relief from this court. See Fuji Photo Film Co. v. Jazz
Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir. 2005) (holding that this
court will not address arguments that are not properly raised in the opening
brief). Nor will this court consider Medtronic's new arguments raised for
the first time in its reply brief. Id.”).

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Appeal 2009-002460
Application 10/741,385

Appellants’ arguments regarding the rejection over Cooker are not
persuasive for the reasons set forth above and in the Answer. Cooker
discloses the support and catalysts can be prepared by any known method
of introducing silver and/or a promoter in soluble form to a support.
(Cooker, col. 3, ll. 22-39). Cooker expressly discloses that silver
compounds and silver chloride can be applied to the support in the form of
a suspension or a slurry. (Cooker, col. 4, ll. 12-21). This disclosure places
a person of ordinary skill in the art in the possession of slurries of silver
chloride with or without additional silver compounds. The claimed
invention does not exclude the presence of silver chloride from the slurry.
The claimed invention also does not exclude the silver compound from
being silver chloride.
Conclusions of Law
For the above stated reasons, Appellants have failed to show
reversible error in the Examiner’s finding that Cooker discloses a process
for making a catalyst for oxidation of an alkene to an alkene oxide
comprising forming a slurry of a silver compound as required by
independent claims 1, and 38.
ORDER
The rejections of claims 1-7, 10, and 12-53 under 35 U.S.C. § 102(b)
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)(1)(v).
AFFIRMED
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Appeal 2009-002460
Application 10/741,385

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