Ex Parte Lockemeyer et al

Board of Patent Appeals and Interferences

Feb 28, 2011

11095791 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/095,791 03/31/2005 John Robert Lockemeyer TH2541 (US) 5853
7590 02/28/2011
Shell Oil Company
910 Lousiana
Houston, TX 77002
EXAMINER
NGUYEN, CAM N
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
02/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN ROBERT LOCKEMEYER
and RANDALL CLAYTON YEATES
____________

Appeal 2009-011750
Application 11/095,791
Technology Center 1700
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 9.2 Claims 10 and 11, the other claims pending

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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in the above-identified application, stand withdrawn from consideration by
the Examiner. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a process for preparing a
high-selectivity olefin epoxidation catalyst [and] the catalyst per se” (Spec.
1, ll. 8-10). Details of the appealed subject matter are recited in illustrative
claims 1 and 9 reproduced from the Claims Appendix to the Appeal Brief as
shown below:
1. A process for preparing a catalyst comprising silver, a rhenium
component, and a rhenium co-promoter on a support, which process
comprises
depositing the rhenium co-promoter on the support prior to or
simultaneously with depositing silver on the support, and
depositing the rhenium component on the support after depositing silver on
the support.
9. A catalyst comprising silver, a rhenium component, and a rhenium co-
promoter prepared in accordance with the process of claim 1.
According to pages 12 and 13 of the Specification, the claimed
rhenium co-promoter is described as including tungsten, chromium,
molybdenum, sulfur, phosphorus and/or boron.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at page 3 of the Answer:
Thorsteinson US 5,187,140 Feb. 16, 1993

2 See generally the Appeal Brief filed February 25, 2008 (“App. Br.), the
Examiner’s Answer dated May 15, 2008 (“Ans.”), and the Reply Brief filed
July 15, 2008 (“Reply Br.”).

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Lauritzen EP 0266 015 A1 May 4, 1988

Appellants seek review of the following grounds of rejection set forth
by the Examiner in the Answer:
1) Claims 1 through 9 under 35 U.S.C. § 102(b) as anticipated by
the disclosure of Thorsteinson; and
2) Claims 1 through 9 under 35 U.S.C. § 103(a), as unpatentable
over the disclosure of Lauritzen.3
RELEVENT FACTS, PRINCIPLES OF LAW, ISSUE, ANALYSIS, AND
CONCLUSIONS
I. CLAIMS 1 THROUGH 8 UNDER § 102(b)
The Examiner has found that Thorsteinson teaches impregnating a
catalyst support with an impregnation solution containing silver more than
once, with a suitable promoter corresponding to the claimed rhenium co-
promoter being deposited prior to, during or subsequent to the addition of
silver to the catalyst support (Ans. 3-4). The Examiner has also found that
Thorsteinson teaches that:
When the catalyst comprises rhenium, the rhenium
component can be provided in various forms, e.g., as the metal,
as a covalent compound, as a cation or as an anion. The
rhenium species that provides the enhanced efficiency and/or
activity is not certain and may be the component added or that
generated either during preparation of the catalyst or during use
as a catalyst. [(See Ans. 4 together with Thorsteinson, col. 13,
ll. 18-24.)]

3 The Examiner has withdrawn the rejection of claims 1 through 9 under 35
U.S.C. § 102(b), as anticipated by the disclosure of Lauritzen set forth in the
final Office action dated April 4, 2007 and entered a new ground of rejection
against the same claims under 35 U.S.C. § 103 as unpatentable over the
disclosure of Lauritzen (Ans. 2-4).
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The Examiner has interpreted this passage of Thorsteinson as adding the
rhenium catalytic species on a catalyst during the use of the catalyst in an
olefin epoxidation process, thus meeting the limitation “depositing the
rhenium component on the support after depositing silver on the support” as
recited in claim 1 (Ans. 4 and 6). On the other hand, Appellants contend
that the Examiner has misinterpreted the disclosure of Thorsteinson (Reply
Br. 4-5). According to Appellants, Thorsteinson only teaches generating a
rhenium species, not depositing a rhenium component on a catalyst during
use as the catalyst (in an olefin epoxidation process) (Id.).
Thus, the dispositive question raised is: Has the Examiner erred in
finding that Thorsteinson teaches depositing the rhenium component on a
catalyst during use as the catalyst (i.e., during its use in an olefin epoxidation
process) within the meaning of 35 U.S.C. § 102(b)? On this record, we
answer this question in the affirmative.
As correctly stated by Appellants at pages 4 and 5 of the Reply Brief,
Thorsteinson as a whole indicates that the above-cited passage of
Thorsteinson must be read as generating, not adding, a rhenium component
during use as the catalyst. (See also Thorsteinson, cols. 11-60). The
Examiner has not shown why a person having ordinary skill in the art would
have understood the above-cited passage of Thorsteinson as teaching the
deposition of the rhenium component on the catalyst support during use of
the catalyst.
Accordingly, we reverse the Examiner’s decision rejecting claims 1
through 8 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Thorsteinson.
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II. CLAIM 9 UNDER § 102(b)
Thorsteinson discloses an olefin epoxidation catalyst comprising
silver and one or more promoters, with the most preferred promoters being
one or more oxyanions of nitrogen, sulfur, manganese, tantalum,
molybdenum, tungsten, and rhenium (col. 11, ll. 5-13 and 37-39). Although
Thorsteinson does not describe the claimed process limitation, i.e., the
claimed deposition sequence, with sufficient specificity4 as explained by
Appellants in their Brief, it is well settled that the patentability of a claim in
product-by-process form is determined based on the product itself, not on
the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985) (“If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior art product was made by a different process.”). This is
especially true in this instance since Thorsteinson teaches that the most
preferred “promoters may be deposited prior to, during, or subsequent to
silver addition to the carrier” (col. 16, ll. 37-38). Implicit in this teaching of
Thorsteinson is that the same or substantially the same catalyst useful for
olefin epoxidation is formed, regardless of the depositing sequence for
silver, rhenium, and a rhenium co-promoter. Indeed, Appellants do not

4 A prior art reference must identify each and every element as set forth in
the claim “with sufficient specificity to constitute a description thereof
within the purview of 35 U.S.C. § 102”. In re Schaumann, 572 F.2d 312,
315 (CCPA 1978). "Random picking and choosing" of steps and elements
from the prior art may not be relied upon to establish anticipation. Akzo N.
I1. v. U.S. International Trade Commission, 808 F.2d 1480, 1471 (Fed. Cir.
1986).

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argue that one of ordinary skill in the art would not readily envisage a
catalyst comprising silver, a rhenium co-promoter (e.g., sulfur, molybdenum
or tungsten), and rhenium from the teachings of Thorsteinson (App. Br. 13
and Reply Br. 8). Rather, Appellants only contend that the Examples and
Table II of the Specification show that the claimed process limitation, i.e.,
the claimed sequence for depositing silver, rhenium, and a rhenium co-
promoter, renders the claimed catalysts patentably different from
Thorsteinson’s catalysts prepared from a different depositing sequence (Id.).
Thus, the dispositive question is: Have Appellants demonstrated that
the claimed process limitation renders the olefin epoxidation catalysts
encompassed by claim 9 patentably different from the olefin epoxidation
catalysts of Thorsteinson5? On this record, we answer this question in the
negative.
As is apparent from the Examples and Table II of the Specification,
Appellants have not demonstrated that Thorsteinson’s catalyst does not
possess the characteristics of some of the catalysts encompassed by claim 9
on appeal. In particular, the Examples and Table II of the Specification
relied upon by Appellants only show that Catalyst B containing 27.3% Ag,
560 ppm Cs/g catalyst, 2.4 μmole Re/g catalyst, 0.60 μmole W/g catalyst,
and 12 μmole Li/g catalyst prepared from impregnating a particular catalyst

5 When Appellants’ product and a product of the prior art appear to be
identical or substantially identical, the burden shifts to Appellants to provide
evidence that the prior art product does not necessarily or inherently possess
the characteristics of Appellants’ claimed product. See Thorpe, 777 F.2d at
698; In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d
1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA
1974).

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support with a first solution comprising silver and ammonium tungsten
dissolved in an ethylenediamine/water mixture and then with a second
solution containing silver, NH4ReO4 in an ethylenediamine/water mixture,
LiNO3 dissolved in water, and CsOH has an improvement in activity
stability relative to Catalyst A containing about the same amounts of the
same ingredients prepared from using a first impregnating solution
containing silver and a second impregnating solution containing silver,
NH4ReO4, ammonium metal tungstate, LiNO3 and CsOH (Spec. 21-25). In
other words, the Examples and Table II of the Specification show that only
one of the myriad of catalysts embraced by claim 9 possesses an improved
catalytic stability characteristic (Id.). For instance, Appellants have not
shown that the claimed catalysts containing different ingredients, e.g., silver,
rhenium and either sulfur or chromium (a rhenium co-promoter) prepared
from the claimed, but different impregnating steps and solutions than those
used to prepare Catalyst B possess such improved catalytic stability
characteristic relative to the same catalysts prepared from the prior art’s
preferred impregnation steps. Thus, on this record, Appellants have not
demonstrated that the claimed process limitation renders all of the olefin
epoxidation catalysts encompassed by claim 9 patentably different from the
olefin epoxidation catalysts of Thorsteinson.
Accordingly, we affirm the Examiner’s decision rejecting claim 9
under 35 U.S.C. § 102(b) as anticipated by the disclosure of Thorsteinson.
III. CLAIMS 1 THROUGH 9 UNDER 35 U.S.C. § 103(a)
Appellants acknowledge at page 8 of the Reply Brief that:
Lauritzen discloses in broad generic terms possible
deposition steps for preparing a catalyst, in particular depositing
on the support a further metal prior to, coincidentally with,
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or subsequent to silver and depositing on the support rhenium
prior to, coincidentally with, or subsequent to silver and/or
further metal. See European Application No. 0 266 015, pg. 3,
ll. 14-18; pg. 7, ll. 31-33. In a further preferred embodiment,
the catalyst additionally contains a co-promoter. The co-
promoter may be deposited at the same time the other
components are added or before and/or later. Id. at pg. 12, ll.
19-23. The preferred process is to deposit silver and all the
promoters in single deposition step. Id. at pg. 5, ll. 20-23; pg.
7, ll. 33-35; pg. 12, ll. 21-23.

Appellants do not question the Examiner’s determination that Lauritzen
would have suggested, inter alia, employing the claimed deposition
sequence for silver, a rhenium co-promoter, and rhenium to arrive at the
olefin epoxidation catalysts recited in claims 1 and 9. Rather, Appellants
only contend that Lauritzen does not recognize that the catalysts prepared
from particular impregnation sequences embraced by claims 1, 2, 3, and 9
provide unexpectedly enhanced catalyst performance as evidenced by the
Examples and Table II of the Specification (Reply Br. 9-10).
Thus, the dispositive question here is: Have Appellants demonstrated
that the claimed subject matter as a whole imparts unexpected results
relative to the invention taught by Lauritzen, thereby rebutting any prima
facie case of obviousness established by the Examiner? On this record, we
answer this question in the negative.
It is well settled that a showing of unexpected results may be
sufficient to overcome a prima facie case of obviousness. In re Dillon, 919
F.2d 688, 692-93 (Fed. Cir. 1990) (internal citations omitted). The burden is
on Appellants to show that the claimed invention imparts unexpected results.
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such a showing must be
reasonably commensurate with the scope of protection sought by the claims
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on appeal. In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980). However, as indicated supra,
the Examples and Table II of the Specification only show that only one of
the myriad of catalysts embraced by claims 1, 2, 3, and 9 imparts an alleged
unexpected catalytic stability characteristic. Appellants have not shown that
such showing is applicable to or predictive of the other materially different
catalysts, impregnation steps and solutions encompassed by claims 1, 2, 3,
and 9.
Accordingly, based on the totality of the record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the claimed subject matter within the meaning of 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1
through 8 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Thorsteinson is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claim 9 under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Thorsteinson is AFFIRMED; and
FURTHER ORDERED that the decision of the Examiner to reject
claims 1 through 9 under 34 U.S.C. § 103(a) as unpatentable over the
disclosure of Lauritzen is AFFIRMED; and,
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FURTHER ORDERED that 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)(iv).
AFFIRMED

sld

Shell Oil Company
910 Lousiana
Houston TX 77002