Ex Parte Machhammer et alDownload PDFPatent Trial and Appeal BoardOct 12, 201210815873 (P.T.A.B. Oct. 12, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte OTTO MACHHAMMER, SVEN CRONE, FRIEDER BORGMEIER, KLAUS JOACHIM MULLER-ENGEL, CHRISTOPH ADAMI, and ARMIN DIEFENBACHER __________ Appeal 2011-002725 Application 10/815,873 Technology Center 1600 __________ Before FRANCISCO C. PRATS, STEPHEN WALSH, and ERICA A. FRANKLIN Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims to a process of preparing acrylic or methacrylic acid from propane and/or isobutane. The Examiner entered a rejection for lack of enablement. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1-14 and 17-32 stand rejected (see Ans. 3-4). Claims 15 and 16 are also pending, but were subject to an obviousness rejection which the Appeal 2011-002725 Application 10/815,873 2 Examiner has withdrawn (see id. at 11), and now stand objected to as depending from a rejected claim (id. at 3). Claim 1, the only independent claim, recites “[a] process for heterogeneously catalyzed partial direct oxidation of propane and/or isobutane to at least one of the target products acrylic acid, methacrylic acid” (App. Br., Claims Appendix i). Claim 1 specifies the conditions under which the reaction must be conducted, as well as the particulars regarding recycling of the reactant gases, and further specifies that the reaction stage of the process must be conducted “over a solid state catalyst” (id.). The sole rejection before us for review is the Examiner’s rejection of claims 1-14 and 17-32 under 35 U.S.C. § 112, first paragraph, as failing to be enabled for the full scope of the claimed subject matter (Ans. 4-10). DISCUSSION The Examiner contends that the Specification, while enabling the use of a catalyst of formula (I) in the claimed process, “does not reasonably provide enablement for all kinds of catalysts known in the art” (Ans. 4; see also Spec. 10 (catalyst of Formula (I)). The Examiner finds, based on a review of the state of the art, that there is no conclusive data that all the kinds of solid catalyst in the process of heterogeneously catalyzed partial oxidation of propane and /or isobutane to at least one of the target products acrylic acid would be required to produce the final desired product except only certain combinations of solid catalyst useful in the partial oxidation process. (Ans. 6 (citing Borgmeier, 1 Bogan, 2 and Olah 3 ).) 1 U.S. Patent No 6,858,754 B2 (issued February 22, 2005). 2 EP 1 193 240 A1 (published April 3, 2002). Appeal 2011-002725 Application 10/815,873 3 The Examiner cites Hilditch 4 as evidence that it was unpredictable whether a particular catalyst would catalyze a particular type of reaction, and further notes that “chemical reactions are well-known to be unpredictable” (id. at 7). The Examiner finds that the Specification provides guidance only for using a catalyst having formula (I), and further notes that the only catalyst exemplified falls within that formula (id. at 9). Thus, the Examiner urges, given the unpredictability in the art, as well as the lack of guidance and exemplification in the Specification, contrasted with the claims’ expansive breadth encompassing “any solid catalyst” (id.), an ordinary artisan “would know how to use the taught solid state catalyst [from the Specification], but not how to select other catalyst[s] without trial and error” (id. at 10). As our reviewing court explained in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. As to the issue at hand, the Federal Circuit noted the following in Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003): The enablement requirement is often more indulgent than the written description requirement. The specification 3 U.S. Patent No. 3,766,286 (issued October 16, 1973). 4 T.P. HILDITCH, CATALYTIC PROCESSES IN APPLIED CHEMISTRY xiii (D. Van Nostrand Company 1929). Appeal 2011-002725 Application 10/815,873 4 need not explicitly teach those in the art to make and use the invention; the requirement is satisfied if, given what they already know, the specification teaches those in the art enough that they can make and use the invention without “undue experimentation.” Thus, the “scope of enablement . . . is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Technols. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed Cir. 1999). Accordingly, it is “well settled that patent applicants are not required to disclose every species encompassed by their claims, even in an unpredictable art.” In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991). For example, in Falkner v. Inglis, the court affirmed the conclusion of the Board of Patent Appeals and Interferences that claims to a modified pox virus vaccine were enabled, despite the fact that the specification focused on viruses other than pox virus, provided no examples directed to pox virus, and discussed pox virus only in general terms relating to the inventive disclosure. Falkner v. Inglis, 448 F.3d 1357, 1365 (Fed. Cir. 2006). With this direction in mind, we agree with Appellants that a preponderance of the evidence does not support the Examiner’s enablement rejection. The Specification explicitly states that the preparation of acrylic and methacrylic acid “by heterogeneously catalyzed partial direct oxidation of propane and/or isobutane in a reaction stage is known” (Spec. 1). As Appellants point out, the Specification further states that “[u]seful catalysts for the process according to the invention are in principle all of those which are recommended in the prior art for the heterogeneously catalyzed partial Appeal 2011-002725 Application 10/815,873 5 direct oxidation of propane and/or isobutane to at least one of the target products” (id. at 9 (emphasis added)). The Specification then cites a considerable number of patent documents describing suitable catalysts, including suitable multimetal oxides, and explains that those having particular stoichiometric formulae are preferred (id. at 9-15). It may be true that the Specification only exemplifies the use of a single catalyst (see id. at 23-24). However, given the fact, undisputed by the Examiner, that the catalysts required to cause the oxidation reaction required by claim 1 were known in the art, we are not persuaded that an ordinary artisan, having knowledge of such catalysts, would have had to undertake an undue amount of experimentation to determine which would be suitable when practicing the process recited in claim 1, particularly given the Specification’s guidance as to which catalysts are preferred. We acknowledge that claim 1’s recitation of using “a solid state catalyst” might, in a literal sense, encompass the use of catalysts which would render the process inoperative. However, it is well settled that a claim does not lack enablement merely because it encompasses inoperative embodiments. See Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984); see also In re Angstadt, 537 F.2d 498 (CCPA 1976). In sum, because we are not persuaded that a preponderance of the evidence supports the Examiner’s prima facie case of non-enablement, we reverse the Examiner’s rejection of claim 1, and its dependents, under 35 U.S.C. § 112, first paragraph. REVERSED Appeal 2011-002725 Application 10/815,873 6 cdc Copy with citationCopy as parenthetical citation