Ex Parte Kowaleski et al

Patent Trial and Appeal Board

Sep 15, 2016

12015345 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/015,345 01/16/2008 Ruth Mary Kowaleski
48226 7590 09/19/2016
BASF CORPORATION
100 PARK A VENUE
FLORHAM PARK, NJ 07932
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PF71878(TH3131) 2193
EXAMINER
LI, TIJN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
09/19/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
andrea.dececchis@basf.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH MARY KOWALESKI and
DAVID MORRIS HAMIL TON JR. 1
Appeal2015-002480
Application 12/015,345
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify BASF Corporation as the real party-in-interest. App.
Br. 4.
2 In our opinion below, we refer to the Final Action mailed February 20,
2014 ("Final Act."), the Appeal Brief filed July 16, 2014 ("App. Br."), and
the Examiner's Answer mailed October 10, 2014 ("Ans.").
Appeal2015-002480
Application 12/015,345
The claims are directed to a process for preparing a catalyst. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A process for preparing a catalyst which process
comprises preparing a mixture comprising iron oxide and at least
one Group 1 metal or compound thereof, wherein the iron oxide
is obtained by heating a mixture comprising an iron chloride and
at least 0.07 millimole of a non-iron metal chloride per mole of
iron, the iron chloride having a first L1Grxn for conversion to an
Fe203, and the non-iron metal chloride has a second L1Grxn for
conversion to a non-iron metal oxide that is less than or equal to
the first L1Grxn.
App. Br. 27 (Claims App'x). Claims 21 and 22 are also independent claims,
each directed to a process for preparing a catalyst which process comprises
preparing a mixture comprising doped regenerator iron oxide and at least one
Group I metal or compound thereof wherein the doped regenerator iron oxide
is obtained by adding copper (claim 21) or cerium (claim 22) or a compound
thereof to an iron chloride mixture and heating the mixture.
Arnold
Croce
Kovacs
Hamilton, Jr.
Ruthner
Culp et al. ("Culp")
REFERENCES
us 3,448,058
us 3,655,805
us 4,248,851
us 5,597.547
us 5,911,967
US 2003/0144566 Al
REJECTIONS
June 3, 1969
Apr. 11, 1972
Feb.3, 1981
Jan.28, 1997
June 15, 1999
July 31, 2003
The claims stand rejected under 35 U.S.C. § 103(a) as follows: claims
1--4 and 6-15 over Culp in view of Ruthner and Arnold, as evidenced by
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Appeal2015-002480
Application 12/015,345
Kovacs (Final Act. 2); claim 5 over Culp in view of Ruthner and Arnold, as
evidenced by Kovacs, and further in view of Croce; claim 21 over Culp in
view of Ruthner and Arnold, as evidenced by Kovacs, and further in view of
Hamilton, Jr.; and claim 22 over Culp in view of Ruthner and Arnold, as
evidenced by Kovacs, in view of Croce, and further in view of Hamilton, Jr.
OPINION
Rejection of claims 1--4 and 6--15
The Examiner finds that Culp teaches a method of preparing an iron
oxide based catalyst containing a lanthanide (particularly cerium) which can
include one or more compounds of an alkali metal in the catalyst as an
additional component, comprising preparing a mixture of the iron oxide(s)
and additional elements in a sufficient quantity and calcining the mixture.
Ans. 3. Culp also teaches one or more compounds of copper may be present
in the catalyst, as an additional component wherein the total quantity of
copper may typically be at least 0.001 mole and at most 0.1 mole per mole
of iron oxide. Id. at 4. The Examiner contends that Culp teaches the
claimed non-iron metal concentration being at least 0.07 millimole per mole
of iron, and that such non-iron metal range overlaps with the claimed non-
iron metal ranges. Id. at 6. The Examiner acknowledges that Culp does not
disclose that iron oxide is produced by heating a mixture comprising an iron
chloride and at least 0.07 millimole of a non-iron metal chloride, the non-
iron metal chloride having a second L1Grxn for conversion to a non-iron metal
oxide less than or equal to L1Grxn for conversion of iron halide to Fe203. Id.
at 4.
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Appeal2015-002480
Application 12/015,345
According to the Examiner, Ruthner teaches a process of producing
iron oxide containing little amounts of residual chloride by spray roasting
freed hydrochloric acid containing iron chloride solutions to thermally
decompose the iron chloride to iron oxide. Id. Appellants argue that
Ruthner does not teach or suggest adding a non-iron metal chloride to an
iron chloride mixture. App. Br. 15.
Arnold discloses methods for production of dehydrogenation
catalysts. Arnold, col. 1, 11. 9-10. The Examiner finds that Arnold teaches
copper chloride and copper carbonate can be used as sources for making
copper oxide promoters for an alkalized iron oxide catalyst. Ans. 5.
Appellants contend that Arnold does not teach or suggest heating a mixture
of iron chloride and a non-iron metal chloride to produce iron oxide. App.
Br. 17.
Kovacs is directed to oxidation of ferrous chloride in liquid aqueous
solution to obtain a liquid aqueous solution containing ferric chloride, and to
producing hydrochloric acid from ferric chloride solution. Kovacs, Abstract
and col. 3, ln. 66-col. 4, ln.4. Kovacs discloses recovery of the chlorine
content of waste hydrochloric acid pickle liquor ("WPL"), the waste product
of the steel pickling process, as hydrochloric acid. Id. at col. 1, 11. 33-39.
WPL contains water, FeCb, FeCh, small amounts of free HCl, and small
amounts of organic inhibitors. Id. at col. 1, 11. 32-32, 38--44. WPL is
sprayed through a burner area onto a bed of refractory material, where it
decomposes into HCl gas and iron oxide. col. 1, 11. 61-64.
The Examiner relies on Kovacs as evidence that it is well known in
the art that pickling waste liquor of steel contains FeCh, FeCb, and HCl, and
that heating such pickling waste liquor in the presence of promoter elements
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Application 12/015,345
such as cupric chloride can produce iron oxide. Ans. 5 (citing Kovacs, col.
1, 11. 39--45; col. 2, 11. 53-65; col. 5, 11. 62-65; col. 10, ln. 41). Appellants
contend that Kovacs is devoid of any teaching or suggestion that a non-iron
metal chloride be added to an iron chloride mixture solution, or that there is
a relationship between the ~Grxn and non-iron metal chloride forming the
non-iron metal oxide. App. Br. 18.
Ferric oxide (Fe203) is a by-product of the ferrous ion oxidation
taught in Kovacs. Kovacs, col. 7, 11. 58-62. It is created in the presence and
absence of cupric chloride or other disclosed promoters. Id., col. 9, 11. 18-
22; col. 10, ln. 41. Nothing in the portions of Kovacs cited by the Examiner
or elsewhere in the reference teaches or suggests that one of ordinary skill in
the art would look to Kovacs for a method of creating ferric oxide, as
opposed to merely oxidation of the ferrous ion.
Appellants argue that the combination of references fails to teach or
suggest the claim element of obtaining the iron oxide "by heating a mixture
comprising an iron chloride and at least 0.07 millimole of a non-iron metal
chloride per mole of iron." App. Br. 19-20. Appellants further argue that
the Examiner employed improper hindsight in combining the teachings of
Culp, Ruthner, Arnold, and Kovacs. Id. at 18.
We agree with Appellants that the combination of references fails to
teach all of the claim elements, thus the Examiner failed to make a prima
facie case of obviousness in rejecting claim 1. Certainly, with respect to
Kovacs, the Examiner employed improper hindsight to try to show mixing
an iron chloride and a non-iron metal chloride. We, therefore, do not sustain
the rejection of independent claim 1 or dependent claims 2--4 and 6-15,
which stand with claim 1. App. Br. 10.
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Appeal2015-002480
Application 12/015,345
Rejection of claim 5
Claim 5 depends from claim 1, but the Examiner identifies Croce as
prior art in addition to that applied against claim 1. Final Act. 6. The
Examiner states that Culp in view of Ruthner and Arnold, and as evidenced
by Kovacs, does not expressly teach using a non-iron metal chloride
comprising cerium. Id. However, Croce is said to disclose cerous
hydroxide, cerous carbonate or cerous oxide and cerous (or eerie) chlorides
can be used for manufacturing a ferrite composition which can be used as an
iron oxide based catalyst. Id. at 7. According to the Examiner,
Id.
it would have been obvious for one of ordinary skill in the art at
the time of the invention to adopt a cerium compound including
cerium chloride as shown by Croce to modify the iron oxide
producing method because such cerium chloride compound can
help successfully producing an cerium containing iron oxide
based catalyst . . . and cerous or eerie chloride can also help
promote a ferrite catalyst formation as shown by Croce.
Furthermore cerium chloride and cerium carbonate are
functional equivalent precursors for successfully making an
cerium containing iron oxide catalyst and it would have been
obvious for one of ordinary skill in the art to substitute one with
another one for predictable results, i.e., substituting cerous
carbonate with cerous chloride for successfully making cerium
containing iron oxide catalyst, is well within the scope of one
ordinary skill in the art.
Among other things, Appellants contend that Croce does not teach or
suggest adding a non-iron metal chloride to an iron chloride mixture or the
relationship between the ~Grxn and non-iron metal chloride forming the non-
iron metal oxide. App. Br. 21-22.
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Appeal2015-002480
Application 12/015,345
Because we found this claim element missing from the prior art
asserted against claim 1, and Croce does not remedy the deficiency, the
Examiner failed to make a prima facie case of obviousness in rejecting claim 5.
Rejection of claim 21
Claim 21 is drawn to a process for preparing a catalyst comprising
preparing a mixture comprising doped regenerator iron oxide and at least
one Group 1 metal or compound thereof wherein the doped regenerator iron
oxide is obtained by adding copper or a compound thereof to an iron
chloride mixture and heating the mixture. App. Br. 29 (Claims App'x).
The Examiner rejects claim 21 as obvious over Culp in view of
Ruthner and Arnold, and as evidenced by Kovacs, and further in view of
Hamilton, Jr. Final Act. 7-8. The Examiner contends that the references
(aside from Hamilton, Jr.) together teach that copper can be used as an
element added into an iron compound for making an iron oxide based
catalyst. Id. at 8. The Examiner acknowledges that these references are
silent about the claim requirement that iron oxide is a regenerated iron oxide.
Id. However, the Examiner turns to Hamilton, Jr. as teaching production of
regenerated iron oxides from hydrochloric acid waste liquids generated from
steel pickling wherein such regenerated iron oxide can be further treated as
ferrite source material. Id.
Appellants argue that the Examiner failed to establish why one of
ordinary skill in the art would look to the disclosure of Arnold to add a
copper compound to the processes disclosed in Culp and Ruthner. App. Br.
23. Appellants submit that one of ordinary skill in the art would not look to
additional precursor choices where the precursors disclosed in Culp and
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Appeal2015-002480
Application 12/015,345
Ruthner already form iron oxide, thus no prima facie case of obviousness is
established. Id.
Claim 21 requires more than that "copper can be used as an element
added into iron compound for making an iron oxide based catalyst." Final
Act. 8 (emphasis added). Specifically, claim 21 requires adding copper or a
compound thereof to an iron chloride mixture and heating the mixture. App.
Br. 29. Alone or together, the cited references, absent Hamilton, Jr. which
we address below, do not disclose a mixture of an iron chloride and copper
or a copper compound. Culp teaches adding copper to an iron oxide catalyst
as a component. Culp iii! 17, 23. Ruthner discloses iron chloride solutions,
but not copper. Ruthner, col. 2, 11. 4-9. Arnold discloses catalysts
comprised of a mixture of iron oxide and copper oxide, but not iron chloride
and a copper compound. See, e.g., Arnold, col. 2, 11. 59-61. As discussed
above, one of ordinary skill in the art at the time of the invention would not
tum to Kovacs to prepare an iron oxide catalyst.
Hamilton, Jr. is drawn to reduction of residual chloride in regenerated
iron oxides. Hamilton, Jr., col. 1, 11. 6-8. Hamilton, Jr. discloses treating
regenerated iron oxides produced from hydrochloric acid waste liquids
generated from steel pickling. Id. at col. 2, 11. 3 8-41. During this process
FeCh (ferric chloride) is produced and hydrolyzed to produce iron oxide and
hydrogen chloride. Id. at col. 2, 11. 41--46. Ferric chloride is a temporary
state of the iron ion, and should not be viewed as a component for the
required "iron chloride mixture."
Because Hamilton, Jr. does not the deficiency in the other references,
the Examiner did not establish a prima facie case of obviousness of claim
21.
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Appeal2015-002480
Application 12/015,345
Rejection of claim 22
Claim 22 is very similar to claim 21, but requires cerium instead of
copper. App. Br. 29. The Examiner rejects claim 22 as obvious over Culp in
view of Ruthner and Arnold, and as evidenced by Kovacs, and further in
view of Croce and further in view of Hamilton, Jr. Final Act. 8.
As discussed above for claim 5, Croce is said to disclose that cerous
hydroxide, cerous carbonate or cerous oxide and cerous (or eerie) chlorides
can be used for manufacturing a ferrite composition which can be used as an
iron oxide based catalyst. Id. at 7. However, Croce does not remedy the
failure of the other references to teach an iron chloride mixture. As a
consequence, the Examiner did not establish a prima facie case of
obviousness of claim 22.
The Examiner erred in concluding that claims 1-15, 21, and 22 are
obvious.
DECISION
For the above reasons, the Examiner's rejection of claims 1-15, 21,
and 22 is REVERSED.
REVERSED
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