Ex parte IMMEL et al.

Board of Patent Appeals and Interferences

Sep 29, 1997

07832154 - (D) (B.P.A.I. Sep. 29, 1997)

Application for patent filed February 6, 1992.1
1

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte OTTO IMMEL,
HARALD MULLER

_____________
Appeal No. 94-1863
Application 07/832,1541
______________
ON BRIEF
_______________
Before SOFOCLEOUS, JOHN D. SMITH and WARREN, Administrative
Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 8
and 10 to 16. Claim 9 stands allowed.
Appeal No. 94-1863
Application 07/832,154
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The subject matter on appeal is directed to a catalyst for
removing sulfur compounds from industrial gases and to a process
for the production of the catalyst. The catalyst consists
essentially of an inorganic, abrasion-resistant and non-
combustible support which is uniformly impregnated with a mixture
of (1) at least one oxide of an element selected from the sixth
secondary group of the Periodic System of Elements and (2) at
least three other oxides of elements selected from the first,
second, sixth, and eighth secondary group of the Periodic System
of Elements.
In their brief, appellants state that none of the claims
will be argued separately. Accordingly, all the claims are
considered to stand or fall with claim 1, the only independent
claim, which reads as follows:
1. A catalyst for removing sulfur compounds from industrial
gases consisting essentially of an inorganic, abrasion resistant
and non-combustible support uniformly impregnated with a mixture
of at least one oxide of an element selected from the sixth
secondary group of metals of the Periodic System of Elements and
at least three other oxides of elements selected from the first,
second, sixth and eighth secondary groups of metals of the
Periodic System of Elements.
The reference relied upon by the Examiner is:
van der Wal et al. (van der Wal) 4,629,612 Dec. 16, 1986
Claims 1 to 8 and 10 to 16 stand rejected under 35 U.S.C.
Appeal No. 94-1863
Application 07/832,154
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§ 112, first paragraph, based on a lack of written description
for the limitation "at least three other oxides."
Claims 1 to 8 and 10 to 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over van der Wal.
After having carefully considered the positions and
arguments presented by both the examiner and appellants, we
conclude that the rejection under 35 U.S.C. § 112, first
paragraph, should not be sustained, while the rejection under 35
U.S.C. § 103 over van der Wal should be sustained. We add the
following comments for emphasis.
An application disclosure is directed to one skilled in the
art. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926, 16
USPQ2d 1033, 1036 (Fed. Cir. 1990). In order to satisfy the
written description requirement of 35 U.S.C. § 112, an
application must reasonably convey to the artisan that the
applicant had possession of the claimed subject matter at the
time the application was filed. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
It is the examiner's position that appellants' disclosure
does not contain a written description for the limitation, "at
least three other oxides of elements selected from the first,
Appeal No. 94-1863
Application 07/832,154
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second, sixth, and eighth secondary group of the Periodic System
of Elements," because the disclosure at page 2, lines 32 to 35,
reads at least two other oxides. In our view, appellants'
disclosure would reasonably convey to those skilled in the art
that the language at least two other oxides would include at
least three oxides as now recited in claim 1, notwithstanding the
fact that the examples only show catalysts containing three metal
oxides. In this regard, we note the disclosure at page 3, lines
17 to 27, which reads as follows:
Preferred metal oxides are the oxides of Cu, Zn,
Cr, Mo, W, Fe, Co and Ni.
In one preferred embodiment of the invention, the
inorganic support is impregnated with each of the
metal oxides in a quantity of from about 0.05 to
about 4% by weight and more preferably from about 0.1
to about 2% by weight, based on the quantity of
support material.
A particularly preferred catalyst is made up of
an aluminum oxide support impregnated with at least
three of the following oxides: copper oxide, iron
oxide, molybdenum oxide, chromium oxide and zinc
oxide.
Certainly, this portion of the disclosure would clearly convey to
those skilled in the art that all eight, or preferably at least
three, metal oxides without any restrictions as to their combination
can be impregnated in the inorganic support. Thus, appellants'
Appeal No. 94-1863
Application 07/832,154
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disclosure is considered in compliance with 35 U.S.C. § 112, first
paragraph.
Adverting to the rejection over van der Wal, we agree with the
examiner for the reasons stated by him that van der Wal renders
obvious the claimed invention. Van der Wal, column 1, lines 7 to 26,
and column 4, lines 31 to 38, and column 8, lines 4 to 15, teaches a
catalyst for removing sulfur compounds from industrial gases
consisting essentially of an inorganic support impregnated with
"mixed oxides of iron with one or more metals of the group consisting
of zinc, copper, cobalt, and of the metals of groups IV to VII of the
periodic table of the elements" (see column 4, lines 36 to 39).
Van der Wal, column 5, lines 1 to 7, exemplifies the use of eight
metal oxides from groups IV to VII, four of which include the metal
oxides exemplified by appellants, i.e., chromium oxide (Cr O ),2 3
tungsten oxide (WO ), molybdenum oxide (Mo O ), and zinc oxide (ZnO). 3 2 3
Clearly, van der Wal's generic disclosure includes many of the
catalysts embraced by appellants' genus. Appellants do not argue
otherwise, but rather contend that one of ordinary skill in this art
would have to pick and choose from the teachings of van der Wal in
order to arrive at appellants' claimed invention. However, there is
nothing unobvious in choosing some catalysts from among the many
Appeal No. 94-1863
Application 07/832,154
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disclosed in van der Wal. Cf. In re Lemin, 332 F.2d 839, 841, 141
USPQ 814, 815 (CCPA 1964). Consequently, we agree with the examiner
that appellants' claimed catalyst is prima facie obvious over
van der Wal.
Appellants urge that their claimed invention is distinguishable
from van der Wal in five respects which we will address seriatim.
Appellants urge that van der Wal does not disclose a single
catalyst in which four or more metal oxides are present whereas at
least four different metal oxides must be present in the claimed
catalyst. This argument is not considered well taken. A reference
must be considered not only for what it expressly teaches, but also
for what it fairly suggests. In re Burckel, 592 F.2d 1175, 1179, 201
USPQ 67, 70 (CCPA 1979). Van der Wal, column 5, lines 1 to 7,
teaches a catalyst containing mixtures of iron oxide with any of
eight metal oxides selected from chromium oxide (Cr O ), manganese2 3
oxide (MnO ), vadium oxide (V O ), tungsten oxide (WO ), molybdenum2 2 3 3
oxide (Mo O ), titanium oxide (TiO ), zinc oxide (ZnO), and zirconium2 3 2
oxide (ZrO ). In making the selections, van der Wal, column 5, lines2
8 to 17, gives the caveat that Cr, Ti and Zr should not be combined
together because they form a stable non-reactive oxide not suitable
Appeal No. 94-1863
Application 07/832,154
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for the removal of sulfur. In our view, this disclosure clearly
conveys to those skilled in the art that van der Wal contemplates
catalysts containing three, four or more metal oxides.
Appellants urge that van der Wal teaches that iron oxide is a
critical component of his catalyst whereas it need not be present in
the claimed catalyst. This argument is not considered well taken.
The fact that iron oxide is a critical component of van der Wal's
catalyst, but not of appellants', does not show that van der Wal does
not render obvious the claimed subject matter. Appellants' catalyst
may include iron oxide. As we noted above, van der Wal's generic
disclosure includes many of the catalysts embraced by appellants'
genus and there is nothing unobvious in choosing some catalysts from
among the many disclosed in a reference.
Appellants urge that van der Wal teaches that the critical oxide
of appellants' invention (an oxide of an element of the sixth
secondary group, i.e., Cr, Mo and W) is optional in van der Wal's
catalysts. This argument is not considered well taken. This does
not diminish in any way van der Wal's teachings since, as we noted
above, van der Wal's generic disclosure includes many of the
catalysts embraced by appellants' genus and there is nothing
Appeal No. 94-1863
Application 07/832,154
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unobvious in choosing some catalysts from among the many disclosed in
a reference.
Appellants urge that the amount of oxide present in van der Wal
is higher than the amount present in their claimed catalyst and that
their claimed catalysts are effective at lower temperatures than the
van der Wal catalysts. These arguments are not considered well
taken. These differences, the amount of oxide present and the
usefulness of appellants' catalyst at low temperatures, are not
recited in appellants' claim 1, upon which dependent claims 2 to 8
and 10 to 16 stand or fall. Since we do not read unrecited
limitations into a claim, such unrecited limitations may not be
relied to
distinguish the claim over a reference. Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1571, 7 USPQ2d 1057, 1064 (Fed. Cir.
1988); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA
1969). Even if these limitations were recited in claim 1, which they
are not, appellants have not shown that their claimed catalysts
rendered unexpected results over the catalysts disclosed in
van der Wal.
Appeal No. 94-1863
Application 07/832,154
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For the foregoing reasons, the rejection of claims 1 to 8 and 10
to 16 under 35 U.S.C. § 112, first paragraph, is reversed and the
rejection of claims 1 to 8 and 10 to 16 over prior art is affirmed.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
)
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHARLES F. WARREN )
Administrative Patent Judge )
Patent Department
Miles Inc.,
Mobay Road
Pittsburgh, PA 15205-9741
Appeal No. 94-1863
Application 07/832,154
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