Ex Parte Kaminsky et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10867507 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK P. KAMINSKY
and ROGER A. GREY
__________

Appeal 2010-007534
Application 10/867,507
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1-7 and 9-17, which are all of the pending claims.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a method of regenerating a used
noble metal-containing titanium or vanadium zeolite catalyst. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A method of regenerating a used noble metal-containing
titanium or vanadium zeolite catalyst that has been used to catalyze
the epoxidation of an olefin with hydrogen and oxygen, said method
comprising contacting the used catalyst with a contact solvent
consisting essentially of water or a mixture of an alcohol and water at
a temperature 50ºC to 120ºC, and at a pressure sufficient to maintain
the contact solvent substantially as a liquid phase, to reactivate the
used catalyst.
App. Br., Claims Appendix.2
The Appellants seek review of the following rejections:3
(1) the rejection of claims 1-7 and 9-12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Catinat4 and Müller5; and

1 Claim 8 was cancelled in an amendment dated June 1, 2007.
2 Appeal Brief dated February 7, 2008.
3 The rejection of claims 1-7 and 9-12 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Chang and Müller was withdrawn in the Examiner’s
Answer dated April 10, 2008 (“Ans.”), at 2.
4 US 6,169,050 B1 issued January 2, 2001.
5 US 5,859,265 issued January 12, 1999.
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(2) the rejection of claims 1-7 and 9-17 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Thiele6 and Müller.
B. DISCUSSION
1. Rejection (1)
The method recited in claim 1 comprises the step of “contacting the used
catalyst with a contact solvent consisting essentially of water or a mixture of an
alcohol and water at a temperature of 50ºC to 120ºC, and at a pressure sufficient to
maintain the contact solvent substantially as a liquid phase, to reactivate the used
catalyst.” App. Br., Claims Appendix (emphasis added).
The Examiner finds Catinat discloses a method of regenerating a titanium
silicate catalyst used in the epoxidation of olefins wherein the catalyst is stripped
using a gas stream composed essentially of steam. The Examiner finds Catinat
discloses another embodiment of the invention wherein the catalyst is initially
washed with water or alcohol to remove substantially all of the compounds it
contacted during epoxidation. Ans. 3; see also Catinat, col. 3, ll. 5-16. The
Examiner finds this initial wash step satisfies the catalyst reactivation step recited
in claim 1.
The Appellants argue the initial wash step disclosed in Catinat does not
reactivate the used catalyst as recited in claim 1. Instead, the Appellants argue this
wash step removes compounds from the catalyst prior to the reactivation step. The
Appellants argue reactivation in the Catinat method is accomplished by heat
treating the used catalyst under a gas stream which is excluded by the language of
claim 1. App. Br. 6-7.

6 US 5,620,935 issued April 15, 1997.
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The Appellants’ arguments are supported by the record. See, e.g., Catinat,
col. 1, ll. 40-46 (catalyst regeneration process comprises a heat treatment whereby
the catalyst is stripped at a temperature of at least 130ºC by a gas stream); Catinat,
col. 3, ll. 5-11 (heat treatment is preceded by an initial wash step “in order to
remove substantially all the compounds with which the catalyst was in contact in
the reaction in which it was employed”). Thus, Catinat cannot be said to teach the
reactivation step recited in claim 1.
The Examiner does not rely on Müller to cure the deficiencies of Catinat
discussed above. Therefore, the § 103(a) rejection based on the combination of
Catinat and Müller will not be sustained.
2. Rejection (2)7
The Examiner finds Thiele discloses a method of regenerating a titanium
zeolite catalyst used in the epoxidation of olefins by contacting the catalyst with
aqueous hydrogen peroxide at a temperature between 40ºC and 120ºC, optionally
in the presence of an additional solvent such as an alcohol. Thiele discloses the
concentration of hydrogen peroxide may be as low as 0.01 wt. %. Thiele, col. 1, ll.
65-67. The Examiner finds Thiele does not disclose that the catalyst includes a
noble metal, such as palladium and/or gold. However, the Examiner finds Müller
teaches that noble metals can be incorporated into catalysts of the type disclosed in
Thiele and the resulting catalysts have improved selectivity, conversion, space-
time yield, and life. The Examiner concludes it would have been obvious to one of

7 The Appellants argue the claims in this rejection as a group. Thus, claims 2-7
and 9-17 stand or fall with the patentability of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).
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ordinary skill in the art to incorporate a noble metal into the catalyst of Thiele
based on the teachings of Müller. Ans. 4-5.
The Appellants argue claim 1 recites that the solvent “consist[s] essentially
of water or a mixture of an alcohol and water” and excludes the aqueous hydrogen
peroxide solution disclosed in Thiele. App. Br. 16-17.
The “phrase ‘consisting essentially of’ limits the scope of a claim to the
specified ingredients and those that do not materially affect the basic and novel
characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551-52, (CCPA
1976) (emphasis added). The Appellants bear the burden of showing the basic and
novel characteristics of their claimed invention. In re De Lajarte, 337 F.2d 870,
874 (CCPA 1964).
The Appellants do not direct us to any evidence identifying the basic and
novel characteristics of the claimed invention. Thus, there is no evidence on this
record that claim 1 excludes a solvent containing as little as 0.01 wt. % hydrogen
peroxide.
The Appellants also argue the statement in Müller regarding the improved
selectivity, conversion, and life of the disclosed catalysts relates to previously
known platinum and palladium-containing titanium silicalites, not non-noble
metal-containing catalysts as disclosed in Thiele. Thus, the Appellants argue there
is nothing in Müller that suggests incorporating a noble metal into the catalyst of
Thiele. App. Br. 8, 19.
The Examiner explains:
While this may be technically true, the reference teaches that these
properties are improved because of the use of metals in more than one
oxidation state, and the skilled artisan, knowing that noble metals
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often improve the properties of a catalyst (noble metals are typically
very catalytically active), would have upon looking at the reference of
Muller [sic, Müller], found it obvious to add these noble metals in
multiple oxidation states to the invention of [Thiele], to improve the
selectivity, conversion, space-time yield, and life . . . .
Ans. 7.
In response, the Appellants argue “it is well known that noble metals such as
platinum are known hydrogen peroxide decomposition agents and thus would be
detrimental to the Thiele epoxidation catalyst (for reaction of olefin + hydrogen
peroxide).” Reply Br. 5.8 The Appellants do not direct us to any evidence to
support this argument. See In re Schulze, 346 F.2d 600, 602 (CCPA 1965)
(“Argument in the brief does not take the place of evidence in the record.”).
Moreover, Müller discloses an object of the invention is “to provide a
universally applicable, efficient oxidation catalyst.” Müller, col. 1, ll. 25-28.
Müller contemplates using the disclosed catalyst in reactions involving hydrogen
peroxide. See Müller, col. 4, ll. 62-65 (process for preparing hydrogen peroxide
may be carried out using the disclosed catalyst).
Based on the foregoing, we conclude the method recited in claim 1 is prima
facie obvious over the combined teachings of Thiele and Müller. In an attempt to
rebut the prima facie case of obviousness, the Appellants direct us to Table 1 in the
Specification and contend the results reported therein demonstrate that a catalyst
reactivated according to the method recited in claim 1 unexpectedly improves
propane selectivity. App. Br. 9, 19.
The Examiner points out that the propylene epoxidation procedure used in
Example 4 in the Appellants’ Specification (the results of which are reported in

8 Reply Brief dated June 10, 2008.
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Table 1) is not the same procedure used in Thiele. Thus, the Examiner contends
that any increased propane selectivity is not probative of unexpected results. Ans.
8. Moreover, the Appellants do not compare the activity of a catalyst regenerated
according to the claimed method with the activity of a catalyst regenerated using
the aqueous hydrogen peroxide solution described in Thiele.9 See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“an applicant relying on comparative
tests to rebut a prima facie case of obviousness must compare his claimed
invention to the closest prior art”).
The Examiner also points out that the Appellants have not provided any
evidence establishing that the results reported in Table 1 are unexpected. Ans. 7.
To the extent that the results reported in Table 1 demonstrate improved propane
selectivity, a mere improvement is not sufficient to establish “unexpected” results.
See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of
“unexpected results” to be probative evidence of non-obviousness, the applicant
must establish that the difference between the results obtained through the claimed
invention and those of the prior art would not have been expected by one skilled in
the art at the time of invention).
In sum, the preponderance of the evidence weighs most heavily in favor of
the Examiner’s conclusion of obviousness. Thus, for the reasons set forth above
and in the Examiner’s Answer, the § 103(a) rejection based on the combination of
Thiele and Müller is sustained.

9 As correctly explained by the Examiner, the claimed invention is a method of
regenerating a catalyst, not a method of catalytic epoxidation. Ans. 9-10.
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C. DECISION
The Examiner’s decision rejecting claims 1-7 and 9-12 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Catinat and Müller is reversed.
The Examiner’s decision rejecting claims 1-7 and 9-17 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Thiele and Müller 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) (2010).

AFFIRMED

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