Ex Parte Madon et al

Patent Trial and Appeal Board

Feb 9, 2017

12650110 (P.T.A.B. Feb. 9, 2017)

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.
12/650,110 12/30/2009 Rostam Jal Madon 018894-5032 (5396A) 6714
131076 7590 02/13/2017
RA.SF Fomoratinn
EXAMINER
100 Park Avenue
Florham Park, NJ 07932
FORREST, MICHAEL
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
ipdocketing @ foley. 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 ROSTAM JAL MADON and PETER NAGEL
Appeal 2015-004496
Application 12/650,110
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims
1—19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is “BASF Corporation”
(Appeal Brief filed September 19, 2014, hereinafter “Br.,” 3).
2 Br. 7—9; Final Office Action (notice delivered electronically on July 1,
2014), hereinafter “Final Act.,” 2—8; Examiner’s Answer (notice delivered
electronically on January 7, 2015), hereinafter “Ans.,” 2—9.
Appeal 2015-004496
Application 12/650,110
BACKGROUND
The subject matter on appeal relates to a method for converting
carbon monoxide and water in a gas stream to carbon dioxide and hydrogen
using a specified low temperature water gas shift (WGS) catalyst
(Specification, hereinafter “Spec.,” 1,11. 11—13). Representative claim 1 is
reproduced from page 10 of the Appeal Brief (Claims Appendix, emphasis
added), as follows:
1. A method for the low temperature conversion of carbon
monoxide, hydrogen and water derived from the high
temperature catalytic water gas shift reaction of carbon
monoxide and water, comprising:
contacting a water gas shift catalyst at a temperature of
from about 180°C up to about 220°C with a gas mixture of
carbon dioxide, carbon monoxide, hydrogen, and water derived
from the high temperature catalytic water gas shift reaction of
carbon monoxide and water;
wherein the reaction consists essentially of converting the
carbon monoxide and water in said gas mixture to carbon
dioxide and hydrogen,
wherein the water gas shift catalyst comprises from about
5 to about 75 weight % copper oxide, from about 5 to about 70
weight % zinc oxide, and from about 5 to about 50 weight %
alumina component prepared from a dispersible alumina, in
which the dispersible alumina forms a suspension, wherein
the percentage of alumina particles of less than 1 micron in
size in water after peptizing at a pH from about 2 to about 5
has [sic, is] 40 % or greater, and
wherein the alumina component is not prepared from
an aluminum salt.
2
Appeal 2015-004496
Application 12/650,110
REJECTION ON APPEAL
The Examiner rejected claims 1—19 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Cai et al. (hereinafter “Cai”)3 and Schneider et al.
(hereinafter “Schneider”)4 (Ans. 2—9; Final Act. 4—7).
DISCUSSION
The Appellants argue claims 1—19 together as a single group.
Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this
rule, claims 2—19 stand or fall with claim 1.
The Examiner found that Cai describes every limitation recited in
claim 1 except that the disclosed alumina in the water gas shift catalyst is not
described as “a dispersible alumina that forms a suspension, wherein the
percentage of alumina particles of less than 1 micron in size in water after
peptizing at a pH of 2 to 5 that is 40% or greater and wherein the alumina
component is not prepared from an aluminum salt” (Ans. 2—3). The
Examiner found, however, that “Schneider teaches a catalyst for CO
conversion comprising CuO, ZnO, and [AI2O3] where colloidally dispersed
o o
alumina having particle size[s] of 1000 A to 10000A (i.e., where 100% of
the alumina is 0.1 to 1 micron in size) [are] peptized in nitric acid” {id. at 3—
4) (internal citation omitted). The Examiner further found that although
Schneider’s disclosure relates to a methanol synthesis catalyst rather than a
water gas shift catalyst, the collective prior art teachings would have
suggested that Schneider’s catalyst, when used in a water gas shift reaction,
would provide the advantages disclosed in Schneider—i.e., increase activity
3 US 6,627,572 Bl, issued September 30, 2003.
4 US 4,535,071, issued August 13, 1985.
3
Appeal 2015-004496
Application 12/650,110
and improve thermal stability (id. at 4). Based on these findings, the
Examiner concluded (id.):
It would have been obvious to one of ordinary skill in the art at
the time of the invention to perform the method as taught by
Cai, with a Cu0/Zn0/A1203 catalyst with alumina component
prepared from the colloidally dispersed alumina having particle
size between 0.1 to 1 micron, as taught by Schneider, to
improve the activity by increasing the internal diffusion through
the pores and improve the thermal stability of the catalyst.
The Appellants do not dispute the Examiner’s finding that Schneider
discloses a catalyst that is structurally indistinguishable from that specified
in the disputed limitations highlighted above in reproduced claim 1 (Br. 5—
9). Instead, the Appellants argue that Cai describes a different water gas
shift catalyst in which aluminum is intercalated in hydrotalcite and, in view
of the demonstrated unpredictability of catalyst activity, Cai and Schneider
cannot properly be combined (id. at 8). Specifically, the Appellants contend
that whereas “[t]he instantly claimed invention provides a solution to the
problem of providing an improved low temperature water gas shift reaction”
(id.), Cai pertains to a different low temperature water gas shift catalyst and
Schneider provides a solution for a different problem—namely, methanol
production (id. at 9). Therefore, according to the Appellants, a person
having ordinary skill in the art would not have combined “the teachings of
these two references as they apply to two very different processes” (id.). In
support, the Appellants rely on Godfrey C. Chinchen et al., “Promotion of
Methanol Synthesis and the Water-gas Shift Reactions by Adsorbed Oxygen
on Supported Copper Catalysts,” 83 J. Chem. Soc., Faraday Trans. 1, 2193—
2212 (1987) (hereinafter “Chinchen”), as evidence showing that “methods
4
Appeal 2015-004496
Application 12/650,110
for forming methanol and water gas shift reaction have two different
reaction mechanisms” (id.).
For the reasons discussed below, the Appellants’ arguments fail to
identify a reversible error in the Examiner’s rejection. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
Cai describes a commercial (i.e., previously-known) method for
converting carbon monoxide and water to carbon dioxide and hydrogen by
performing a WGS reaction in two stages (i.e., a high temperature stage with
typical reaction temperatures of about 350-400- C and a low temperature
stage with typical reaction temperatures of about 180—240- C) (col. 1,11. 30-
43). Like the Appellants (Spec. 2,11. 1—7), Cai teaches that “the lower
temperature reactions favor more complete carbon monoxide conversion”
(col. 1,11. 43 44), which would indicate to one of ordinary skill in the art
that the low temperature stage further reacts a mixture including carbon
monoxide, water, carbon dioxide, and hydrogen obtained from the high
temperature stage. Although Cai discloses an improved low temperature
catalyst in which aluminum is intercalated in a hydrotalcite (col. 3,11. 26—
36), Cai also teaches that water gas shift catalysts commonly used in the art
include those that contain copper oxide, zinc oxide, and aluminum oxide
such as those based on about 30% to about 70% CuO, about 20% to about
50% ZnO, and about 5 to about 40% AI2O3 (col. 1,11. 63—66; col. 2,11. 13-
15). According to Cai, it was previously known in the art to react the
alumina with appropriate acids (col. 5,11. 46-48). Thus, we discern no error
in the Examiner’s findings concerning Cai’s scope and content and the
differences between Cai and claim 1 on appeal.
5
Appeal 2015-004496
Application 12/650,110
Although the Appellants are correct that Schneider’s disclosure relates
to methanol synthesis (col. 1,11. 6—11) rather than water gas shift reaction,
the catalyst described therein is undisputedly a catalyst that includes all the
chemical and structural limitations recited in the last two paragraphs of
claim 1 (Ans. 3^4; Br. 8—9). According to Schneider, the disclosed catalyst
provides “good activity” and “high thermal resistance or thermal stability”—
e.g., at methanol synthesis temperatures such as 250- C (col. 1,11. 41—44;
col. 4,1. 67—col. 5,1. 7).
Chinchen teaches that Cu/ZnO/AftCb catalysts have been used
industrially for both methanol synthesis and water gas shift reactions (p.
2193). According to Chinchen, “there has been little agreement on
fundamental aspects of the reactions” (id.) (internal footnote omitted).
Nevertheless, Chinchen does teach, inter alia, that “[different surface
intermediates are involved in methanol synthesis and the water-gas shift
reaction,” although “[t]he critical steps in both reactions occur on the copper
metal surface” (p. 2194).
Because (1) Cai indicates that catalysts based on CuO, ZnO, and
alumina were commonly used as water gas shift catalysts and (2) Chinchen
teaches that Cu/ZnO/ACCb catalysts were known to be active for both
methanol synthesis and water gas shift reactions, a person having ordinary
skill in the art would have reasonably expected Schneider’s catalyst to be
active in Cai’s water gas shift reaction. In reMayne, 104 F.3d 1339, 1343
(Fed. Cir. 1997) (“Structural relationships often provide the requisite
motivation to modify known compounds to obtain new compounds.”). See
also In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (only a reasonable
6
Appeal 2015-004496
Application 12/650,110
expectation of success—not absolute predictability—is required to establish
obviousness).
In addition, because Schneider teaches that the disclosed catalysts
exhibited improved thermal stability at reaction temperatures comparable to
those employed in Cai’s low temperature stage, a person having ordinary
skill in the art would have been prompted to use Schneider’s catalyst in
Cai’s low temperature stage in order to obtain the thermal stability benefit
disclosed in Schneider. Thus, we uphold the Examiner’s obviousness
conclusion (Ans. 4) on this basis. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.”); id. at 417 (“[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
We find no persuasive merit in the Appellants’ argument (Br. 8—9)
that Schneider is inapt because it does not address the same problem
addressed by the Appellants—i.e., “the problem of providing an improved
low temperature water gas shift reaction” {id. at 8). Although the
recognition of a problem may be a factor that favors a nonobviousness
conclusion,5 the mere fact that a prior art reference does not disclose the
same problem as the Appellants is not dispositive. KSR, 550 U.S. at 420
(“Under the correct analysis, any need or problem known in the field of
5 See, e.g., Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir.
2013).
7
Appeal 2015-004496
Application 12/650,110
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”). See also In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason for
combining prior art references need not be the same as that of the applicant).
The Appellants also rely on various teachings found in Chinchen that
methanol synthesis and water gas shift reactions are different (Br. 9). But
even if we credit Chinchen’s relied-upon teachings, it does not alter our
analysis that, in view of the collective teachings of the prior art references, a
person having ordinary skill in the art would have reasonably expected
Schneider’s methanol synthesis catalyst to be useful as a water gas shift
catalyst and that Schneider’s catalyst would provide improved thermal
stability when used in Cai’s low temperature stage.
For these reasons, we uphold the Examiner’s rejection.
SUMMARY
The Examiner’s final decision to reject claims 1—19 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)(1).
AFFIRMED
8