Ex Parte Jewson et al

Board of Patent Appeals and Interferences

Aug 24, 2006

10435175 (B.P.A.I. Aug. 24, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JENNIFER D. JEWSON
C. ANDREW JONES and
RALPH M. DESSAU
____________

Appeal No. 2006-1750
Application No. 10/435,175
____________

ON BRIEF
____________

Before GARRIS, KRATZ and TIMM, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 12-18, which are all of the claims pending in
this application.1
BACKGROUND

1 This application is a divisional of Application No.
09/507,842, now abandoned. In the parent application, we entered
a decision affirming an obviousness rejection that was before us
in Appeal No. 2003-0630.
Appellants' invention relates to a method for preparing a
titanium zeolite catalyst using impregnation to add palladium and
gold compounds. The catalyst is disclosed as being useful in
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epoxidation reactions. See, e.g., pages 3 through 5 of
appellants’ specification. A further understanding of the
invention can be derived from a reading of exemplary claim 12,
which is reproduced below.
A method for preparing a catalyst comprising the steps
of:

(a) impregnating a titanium zeolite with a solution of
a palladium compound and a gold compound in a solvent;

(b) removing the solvent from the impregnated titanium
zeolite; and

(c) drying the impregnated titanium zeolite.

The prior art references of record relied upon by the
examiner in
rejecting the
appealed claims
are:
Muller
et al. (Muller)

5,859,265
Jan.
12, 1999
Bowman et al. (Bowman) 6,031,116 Feb. 29, 2000
Grosch et al. (Grosch) WO 99/52626 Oct. 21, 1999
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(published International Pat. Appl. No. PCT/EP99/02355)2

2 Our references to Grosch are to U.S. Patent No. 6,551,546,
which patent is employed as an English language equivalent
(translation) of WO 99/52626 by the examiner. See page 5, line 3
of the answer. Appellants do not dispute the examiner’s reliance
on U.S. Patent No. 6,551,546 as an acceptable English language
equivalent (translation) of the disclosure of WO 99/52626.
Claims 12-16 and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Grosch in view of Muller. Claim 17
stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Grosch in view of Muller and Bowman.
We refer to the brief and reply brief and to the answer for
a complete exposition of the opposing viewpoints expressed by
appellants and the examiner concerning the issues before us on
this appeal.
OPINION
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Having carefully considered each of appellants’ arguments
set forth in the brief and reply brief and the specification
evidence relied on in support thereof, appellants have not
persuaded us of reversible error on the part of the examiner.
Accordingly, we affirm the examiner’s rejections for
substantially the reasons set forth by the examiner in the
answer. We add the following for emphasis.
Rejection of claims 12-16 and 18
Appellants do not argue claims 12-16 and 18 separately.
Thus, we consider these claims as a group and select claim 12 as
the representative claim on which we decide this appeal as to
this ground of rejection.
The examiner has determined that Grosch discloses a method
of preparing a zeolite (titanium silicalite) catalyst body
wherein one or more noble metals selected from ruthenium,
rhodium, palladium, osmium, iridium, platinum, rhenium, gold and
silver are added to the catalyst via an impregnation technique
that employs a solvent. Grosch teaches that the catalyst is
subjected to a drying step, as noted by the examiner at page 3 of
the answer. See, e.g., column 8, line 62 through column 9, line
30 of Grosch. Grosch discloses, inter alia, that the product
catalysts can be used as oxidation catalysts, including as a
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catalyst for epoxidizing olefins. See, e.g., column 10, lines
1-36 of Grosch.
Muller teaches a catalyst comprising titanium having a
zeolite structure, a platinum group metal such as palladium, and
optionally modified with an additional metal selected from among
iron, cobalt, nickel rhenium, silver and gold. The catalyst may
be employed in an epoxidation process. See, e.g., column 1,
lines 25-63 and column 2, lines 33-36 of Muller.
Muller teaches that the catalyst can be prepared by
impregnating a titanium zeolite structure with platinum metal
salt solution, subjecting the impregnated zeolite structure to
evaporation (ostensibly to remove solvent) followed by heating
(drying) to form the catalyst. See column 2, line 48 through
column 3, line 17 and Example 2 of Muller. As for the optional
additional iron, cobalt, nickel rhenium, silver or gold elements
suggested by Muller, Muller does not exemplify how any of those
metals are added but does state a desire for easy preparation of
the catalyst. See column 1, lines 25-28 of Muller.
It follows that one of ordinary skill in the art would have
been led to add such an additional metal, including gold, via a
conventional method, such as the impregnation method as taught by
Muller (and Grosch) for the palladium metal addition.
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Based on that similarity of catalyst composition, catalyst
utility, and method of preparation taught by Grosch and Muller,
we agree with the examiner’s reasonable determination that the
appellants’ catalyst preparation method, including the use of
impregnation, solvent removal and drying as set forth in
representative claim 12, is reasonably suggested by the combined
teachings of the applied references in a manner that would have
rendered the claimed subject matter prima facie obvious to one of
ordinary skill in the art. In this regard, the selection of
palladium and gold as the additives for the titanium zeolite
catalyst of Grosch would have been well within the level of
ordinary skill in the art, especially given the relatively small
list of additive ingredients suggested by each of Grosch and
Muller.
Appellants maintain that “Grosch does not teach the required
impregnation of a titanium zeolite with a solution of a palladium
and a gold compound in a solvent” (brief, page 3). Also,
appellants argue that Muller (brief, pages 3-5) does not teach
how and why the optional elements, including gold are
incorporated in the zeolite catalyst. In this regard, appellants
assert (brief, pages 6-8 and reply brief, page 1) that the
claimed method requires that a zeolite is simultaneously
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impregnated with a solution of a palladium compound and a gold
compound in a solvent.
We do not find appellants’ arguments persuasive for reasons
set forth in the answer, and as further explained herein.
Representative claim 12 does not require the simultaneous
addition of gold and palladium via impregnation, as argued. In
this regard, representative claim 12 recites “... impregnating a
titanium zeolite with a solution of a palladium compound and a
gold compound in a solvent ....” Thus, the zeolite is required
to be impregnated with a solution of a palladium compound and the
zeolite is required to be impregnated with a gold compound in a
solvent. However, representative claim 12 does not require that
the palladium compound and the gold compound are incorporated
into the same solution and that such a solution is used for
simultaneously impregnating the zeolite with both additives. In
this regard, the conjunctive term “and”, as employed in claim 12,
does not clearly require that the solution contains both
compounds. Indeed, the claim phrase “gold compound in a solvent”
is inclusive of an embodiment wherein a solution of gold compound
(gold compound in a solvent) that is distinct from the solution
of a palladium compound is employed in the impregnation in either
a serial or concurrent manner. Thus, representative claim 12
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does not require the disclosed option of simultaneous addition of
the compounds.
Moreover, even if we could agree with appellants that
representative claim 12 requires the concurrent impregnation
addition of palladium and gold to the zeolite, such a limitation,
by itself, would not patentably distinguish appellants’ method
over the method suggested by the applied references. This is so
since Muller is concerned with using a catalyst for the oxidation
that is easy to prepare. Muller fully describes how platinum
group metals, such as palladium, may be incorporated into the
catalyst by impregnation using a solvent and a salt form of the
metal. Clearly, one of ordinary skill in the art would have been
led to incorporate one of the additional disclosed metals, such
as gold, via a similar impregnation method with a reasonable
expectation of success in so doing.3 Thus, one of ordinary skill

3 Muller does not explicitly disclose a separate reason for
additionally modifying a catalyst with one or more elements
selected from iron, cobalt, nickel, rhenium, silver and gold, as
disclosed as column 2, lines 33-39 of the patent. However, the
lack of express disclosure of a separate reason for incorporating
those additional additives taught by Muller does not militate
against the use of one or more of those additional catalyst
modifiers to achieve a desirable catalyst as taught by Muller.
Indeed, Muller teaches that the catalyst is not only easy to
prepare but does not suffer disadvantages associated with prior
art catalysts. See column 1, lines 20-43 of Muller. Thus, one
of ordinary skill of the art would be guided by these previously
stated purposes in choosing to add such additional modifier(s).
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in the art would have readily recognized that the impregnations
could be conducted serially or simultaneously based on the
combined teachings of Grosch and Muller. After all skill, and
not the converse, is presumed on the part of those practicing in
the art. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985); In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317,
319 (CCPA 1962).

Also, see the teachings of Grosch at column 8, line 62 through
column 9, line 15 and as further referred to herein and in the
answer.
Appellants note the generic addition methods for catalyst
modifiers as set forth in the applied references (brief, page 6),
as if the other addition options disclosed therein detract from
the teaching of impregnation set forth in Grosch and Muller.
Such an argument is clearly unpersuasive in that the disclosure
of each of the limited number of addition options set forth in
the applied references, including impregnation, are clear and
instructive to one of ordinary skill in the art as to how to add
a metal promoter. Certainly, these teachings are not destructive
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of each other. Moreover, we note that appellants’ specification
undercuts such a line of argument in that appellants present
several ways of incorporating the catalyst components other than
impregnation while acknowledging that the manner of incorporating
palladium into the catalyst is not critical. See page 4, line 12
through page 5, line 21 of appellants’ specification.
As for appellants’ remarks regarding the lack of examples
disclosing how to add palladium and gold in the applied
references, it cannot be overemphasized that a reference must be
considered in its entirety and that the disclosure of a reference
is not limited to specific working examples contained therein.
See In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570
n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278,
280 (CCPA 1976).
Appellants maintain that appellants’ claimed process is
attended by unexpected results. Appellants (brief, page 8 and
reply brief, pages 2 and 3) point to Example 4 and Example 7 of
the specification wherein catalysts of Example 1 and Example 6,
respectively, are employed in the epoxidation of propylene.
Appellants assert that those examples demonstrate that “a
simultaneous addition of palladium and gold results in
significantly higher oxygen to POE selectivity and hydrogen to
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POE selectivity compared to a catalyst in which a palladium-
containing titanium zeolite is first formed followed by addition
of gold” (reply brief, pages 2 and 3).
The question as to whether unexpected advantages have been
demonstrated is a factual question. In re Johnson, 747 F.2d
1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984). Thus, it is
incumbent upon appellants to supply the factual basis to rebut
the prima facie case of obviousness established by the examiner.
See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972).
Appellants, however, do not refer to an adequate factual
showing in the specification to support a conclusion of
unexpected advantages. In this regard, we note that the catalyst
employed in the Example 4 reaction test was prepared by a method
that differs substantially from the method of preparation of the
catalyst employed in Example 7. For example, the catalyst used
in Example 4 was prepared using particular metal salts and long
stirring times as detailed in the following steps of Example 1 of
the specification:
The pre-calcined TS-1 (20 g), [Pd (NH3)4] (NO3)2
(2.06 g of a 5 weight percent Pd solution in water),
AuCl3 (0.0317 g), and distilled water (80 g) are placed
in a 250-mL single-neck round-bottom flask forming a
pale white mixture. The flask is connected to a 15-
inch cold water condenser and then blanketed with
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nitrogen at a 150 cc/min flow rate. The flask is
inserted into an oil bath at 80 °C and the reaction
slurry is stirred. After stirring for 24 hours, the
slurry is transferred to a roto-vap and the water is
removed by roto-evaporation under vacuum at 50 °C. The
solid catalyst is then dried at 60 °C in a vacuum oven
for 24 hours. Measured Pd loading of the catalyst is
0.40 wt.% and the measured Au loading is 0.09 wt.%.

Contrastingly, the catalyst employed in the Example 7
reaction test was prepared by a method that differed by more than
the lack of simultaneous gold and palladium addition from the
catalyst employed in Example 4 as evident by the use of different
metal salts in different amounts, much shorter stirring times,
and a hydrogen reduction step. See Examples 5 and 6 of the
specification for the manner of preparing the catalyst used in
Example 7. Not only is a catalyst composition that differs by
more than the order of addition of palladium and gold used in
Example 7 (as compared to the catalyst used in Example 4), but
the reaction test employed in Examples 4 and 7 differ.
For example, the relative amounts of propylene, hydrogen and
oxygen employed in Examples 4 and 7 were not the same. Also, the
pressure employed during the reactions of Example 4 and 7
differed. Moreover, in Example 4 both gas and liquid phase
products are analyzed whereas in Example 7 only the exit-gas is
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analyzed. The cause-and-effect relationship which appellants
desire to show between step wise and simultaneous palladium and
gold addition is lost in such a welter of unfixed variables. See
In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966);
In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483 (CCPA 1965).
Thus, a comparison between the PO equivalent products (POE), as
referred to in Example 4 and the PO product (propylene oxide) as
measured in Example 7 cannot be fairly made.4 Hence, we are
not satisfied that the evidence of record that is offered for
comparison, as discussed in the briefs, demonstrates results that
are truly unexpected over the closest prior art for reasons set
forth above and in the answer. Nor have appellants satisfied
their burden of explaining how the results reported for the
limited tests presented can be extrapolated to substantiate
appellants’ contentions for the invention as broadly claimed.
Thus, the examiner correctly notes (answer, pages 10 and 11) that
appellants have not satisfied the well established criterium that
the evidence relied on to establish unobviousness must be
commensurate in scope with the claimed subject matter. See In re
Kerkhoven, 626 F.2d 846, 851, 205 USPQ 1069, 1072-73 (CCPA 1980)

4 The POE products include not only PO but also PG
(propylene glycol), DPG (diphenylguanidine) and acetol according
to appellants. See Example 4 of the specification.
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and In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA
1980).
Under the circumstances recounted above, it is our
determination that the evidence of record for and against a
conclusion of obviousness, reconsidered in light of the
respective arguments and evidence advanced by appellants and the
examiner, on balance, weighs most heavily in favor of an
obviousness conclusion with respect to the rejection under
consideration. Accordingly, we sustain the examiner's
§ 103(a) rejection of claims 12-16 and 18.
Rejection of dependent claim 17
Dependent claim 17 requires that the gold compound employed
is selected from halides, cyanides, hydroxides, and sulfides. In
the separate rejection of dependent claim 17, the examiner
additionally relies on the teachings of Bowman to show that a
soluble gold compound, such as a gold cyanide is known to be
useful in adding a gold promoter to a zeolite catalyst. See,
e.g., column 9, lines 23-26 of Bowman.5
In addition to the arguments and evidence advanced against
the examiner’s rejection of independent claim 12, which we find

5 Also, we note that Bowman (column 10, lines 25-33)
discloses the simultaneous addition of multiple promoter metals
as an option.
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unpersuasive for reasons set forth above, appellants maintain
that Bowman excludes palladium promoter in a preferred embodiment
leaving little incentive to combine Bowman with Grosch and
Muller. We disagree for reasons set forth by the examiner in the
answer (page 11). In this regard, Grosch teaches that water
soluble salts should be employed in adding metals, such as gold,
to the catalyst. See, e.g., column 8, lines 62 through column 9,
line 7 of Grosch. Nor is the teaching value of Bowman limited to
one preferred embodiment thereof that would exclude palladium.
It follows that, on this record, we affirm the examiner’s
separate obviousness rejection of claim 17.

CONCLUSION
The decision of the examiner to reject claims 12-16 and 18
under 35 U.S.C. § 103(a) as being unpatentable over Grosch in
view of Muller and to reject claim 17 under 35 U.S.C. § 103(a) as
being unpatentable over Grosch in view of Muller and Bowman is
affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(2004).
AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )

PFK/TF
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LYONDELL CHEMICAL COMPANY
3801 WEST CHESTER PIKE
NEWTOWN SQUARE, PA 19073
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