Ex Parte Machhammer et al

Patent Trial and Appeal Board

Oct 12, 2012

10815873 (P.T.A.B. Oct. 12, 2012)

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
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Examiner has withdrawn (see id.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).
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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).
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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
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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
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