Ex Parte Merrill

Board of Patent Appeals and Interferences

Mar 29, 2011

10793005 (B.P.A.I. Mar. 29, 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.
10/793,005 03/04/2004 James T. Merrill COS-849 Div
(API-1102D)
6096
25264 7590 03/29/2011
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
03/29/2011 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 JAMES T. MERRILL
____________

Appeal 2010-005784
Application 10/793,005
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and,
MICHAEL P. COLAIANNI Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-9 and 22-30. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Claims 1, 6, 7, and 26 are representative of the subject matter on
appeal and are set forth below:
1. A system for decreasing the level of a contaminant in
a crude styrene feedstock, the system comprising:
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a) a crude styrene supply comprising an initial level of a
phenylacetylene contaminant, a crude styrene input stream, and
a crude styrene output stream, wherein said crude styrene input
stream is arranged to receive crude styrene from an
ethylbenzene dehydrogenation unit, wherein said crude styrene
is produced by dehydrogenation of ethylbenzene in said
dehydrogenation unit;
b) a first hydrogen source arranged to inject a first
portion of hydrogen into the crude styrene output stream to
produce stream B;
c) a first catalyst bed arranged to receive stream B,
wherein the first catalyst bed comprises a first catalyst bed
output stream, wherein the first catalyst bed comprises a first
catalyst having from about 0.01 to less than 0.3 weight percent
palladium supported on theta alumina, and wherein said first
catalyst bed output stream comprises a level of a
phenylacetylene contaminant that is less than said initial level.
6. The system of claim 4 wherein said second catalyst
bed comprises a second catalyst comprising from about 0.01 to
less than 0.3 weight percent palladium.
7. The system of claim 6 wherein said first and second
catalysts each comprise from about 0.03 to about 0.05 weight
percent palladium.
26. The system of claim 6 wherein said second catalyst
is dispersed on a calcium aluminate carrier.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Irvine et al. US 4,329,530 May 11, 1982
Butler et al. US 5,156,816 Oct. 20, 1992
Meyer et al. US 6,437,206 B1 Aug. 20, 2002

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THE REJECTIONS
1. Claims 1-6, 8, 9, and 27-30 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Butler.
2. Claims 1-4, 6, 7, and 22-25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Butler in view of Meyer.
3. Claims 1-6 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Butler in view of Meyer and Irvine.
ISSUES AND ANALYSIS
(with Findings of Fact and Principles of Law)

We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellant for these rejections. We add the following for emphasis
only.
As an initial matter, for each of the rejections, to the extent that
Appellant has presented substantive arguments for the separate patentability
of any individual claims on appeal, we will address them separately
consistent with 37 C.F.R. § 41.37(c)(1)(vii).

Rejection 1

Claims 1 and 6
Issue: Did the Examiner err in determining that Butler’s teaching of
“about 0.3%” or “approximately 0.3%” anticipates and/or would have
rendered obvious the claimed amount of “from about 0.01 to less than 0.3”
recited in claims 1 and 6?
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We answer this question in the negative and AFFIRM.
Appellant argues that the teaching of “about 0.3%” or “approximately
0.3%” of Butler (col. 3, ll. 55-56, col. 6, ll. 3-5) does not anticipate or make
obvious the claimed amount of “from about 0.01 to less than 0.3” recited in
claims 1 and 6. Br. 3-4. Reply Br. 1-2. Appellant argues that Butler’s
teaching (col. 6, ll. 22-23) that the “[m]etal contents exceeding 1% and even
5% could possibly be utilized” in the invention of Butler is a showing that
Butler would not lead one skilled in the art to interpret “about” 0.3 wt% to
extend to values below 0.3 wt%. Reply Br. 2. We are not convinced by
these arguments for the following reasons.
A fair reading of the teaching of Butler that the “[m]etal contents
exceeding 1% and even 5% could possibly be utilized” at column 6, ll. 22-23
is another embodiment, in addition to the embodiment of “about 0.3%” or
“approximately 0.3%”. Thus, coupled with the axiom that a reference is
relevant for all it contains, we are unpersuaded by Appellant’s arguments.
“They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397
F.2d 1006, 1009 (CCPA 1968)).
Hence, we agree with the Examiner’s position that the teachings of
Butler of “about 0.3%” or “approximately 0.3%” (col. 3, ll. 55-56, col. 6, ll.
3-5) anticipate and/or would have rendered obvious the claimed range of
“from about 0.01 to less than 0.3”. The claim construction of the term
“about 1:5” was held to mean “approximately 1:5, encompassing a range of
ratios no greater than 1:3.6 to 1:7.1”. Ortho-McNeil Pharm., Inc. v. Caraco
Pharm. Labs., Ltd., 476 F.3d 1321, 1328 (Fed. Cir. 2007).
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In the instant case, the narrow range of “about 0.3%” or
“approximately 0.3%” disclosed by Butler is a disclosure of “sufficient
specificity” to constitute anticipation. Compare Atofina v. Great Lakes
Chem. Corp., 441 F.3d 991, 999. (Fed. Cir. 2006). Also, a “claimed
invention is rendered prima facie obvious by the teachings of a prior art
reference that discloses a range that touches the range recited in the claim.”
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In re Malagari,
499 F.2d 1297, 1303 (CCPA 1974)); see also In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[I]t is not inventive to discover the optimum or workable
ranges by routine experimentation.”).
In view of the above, we affirm Rejection 1.

Rejection 2
Claim 7
Issue: Did the Examiner err in determining that there is a reasonable
expectation of success in replacing the catalyst of Butler with the catalyst of
Meyer?
We answer this question in the negative and AFFIRM.
Claim 7 recites that the first and second catalyst each comprise from
“about 0.03 to about 0.05 weight percent palladium”.
The Examiner relies upon the combination of Butler, as discussed
above, in view of Meyer, for suggesting the range recited in claim 7. We
refer to the Examiner’s statement of the rejection as set forth on pages 7-8 of
the Answer in this regard.
Appellant argues that Meyer is specific to a catalyst on a carrier
characterized by a specific X-ray diffraction pattern and that one skilled in
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the art would not look to Meyer because Meyer uses a different support than
Butler. Appellant also argues that one would not only substitute the support
from Meyer in Butler; rather both the catalyst and support. Br. 4.
In response, the Examiner states that both Butler and Meyer disclose
the use of alumina supports. Butler, col. 6, ll. 2-6, Meyer col. 5, l. 12. The
Examiner also explains that his rejection “is based on the substitution of
Meyer’s catalyst with lower palladium loading for the catalyst used by
Butler (see rejection supra, page 7 at paragraph 12)”. Ans. 10-11. In his
rejection, the Examiner states that one skilled in the art “would have had a
reasonable expectation of success in using the catalyst of Meyer in the
process of Butler because Meyer explicitly discloses the use of his catalyst
for the selective hydrogenation of phenylacetylene to styrene”. Ans. 8.
In reply, Appellant argues that Meyer’s catalyst utilizes specific
supports, including alpha alumina, not theta alumina, as in Butler. Appellant
argues that Meyer is based upon specific conditions of the support material,
such conditions not being met by a theta alumina catalyst. Reply Br. 2.
We are not convinced by Appellant’s arguments for the following
reasons.
Meyer recognizes that it is possible to influence the properties of the
catalyst used by means of the type of support selected. Meyer, col. 3, ll. 29-
34. Meyer describes the support used in the invention of Meyer at column 5,
ll. 12-28.
While Appellant asserts that the catalyst and support of Meyer are
such that the conditions would not be met by use of a theta alumina support,
or that one would not separate the catalyst from the support, we are not
convinced that one skilled in the art would not have looked to the teachings
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of Meyer to implement the catalyst into Butler as proposed by the Examiner
in his rejection. As stated, supra, Meyer recognizes that it is possible to
influence properties of the catalyst used by means of the type of support
selected. Hence, the art recognizes that the selection of the support is a
result effective variable.1 In light of the fact that the art recognizes the
selection of the support as a result-effective variable, we are not convinced
that the Examiner erred in concluding that there is a reasonable likelihood of
success in replacing the catalyst of Butler with the catalyst of Meyer for the
reasons stated by the Examiner (Ans. 8). Obviousness does not require
absolute predictability, but a reasonable expectation of success. In re
Clinton, 527 F.2d 1226, 1228-1229 (CCPA 1976). Importantly, Appellant
has not shown any criticality in connection with his claimed combination of
catalyst and support.
In view of the above, we therefore affirm Rejection 2.

1 A particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620
(CCPA 1977); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery
of an optimum value of a result effective variable . . . is ordinarily within the
skill of the art.”); see also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”).
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Rejection 3
Claim 26
Issue: Did the Examiner err in determining that it would have been
obvious to have substituted the theta alumina carrier of Butler with a
calcium aluminate carrier?
We answer this question in the negative and AFFIRM.
Claim 26 recites that the second catalyst is dispersed on a calcium
aluminate carrier.
It is the Examiner’s position that a calcium aluminate carrier is an art-
recognized substitute for alumina for the purpose of supporting palladium
catalysts for use in selective hydrogenation reactions. Meyer, col. 5, line 12;
col. 6, ll. 42-47; and col. 9, ll. 37-40. Irvine, col. 1, ll. 6-9, 15-17, and 67-68;
and col. 2, ll. 1-16. Ans. 8.
Appellant asserts that it would not have been obvious “to selectively
combine only the palladium level teaching of Irvine with the teachings of
Butler to form the claimed process”. Br. 5. Appellant asserts that Irvine is
directed to a gas phase ethylene process whereas Butler is directed to a
liquid styrene feedstock.
However, on page 12 of the Answer, the Examiner correctly responds
and states:
Irvine is not limited to a gas phase ethylene process. Rather,
Irvine discloses that his process may be used in various
hydrogenation processes, such as in the formation of propylene
from methyl acetylene and the formation of butadiene from
vinyl acetylene (see Irvine, column 1, lines 15-24). Moreover,
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Irvine explicitly notes that the selective hydrogenation may take
place in liquid phase (see Irvine, column 6, lines 31-37).
Appellant then argues, on page 5 of the Brief, that if one were to
combine the teachings of Irvine with the teachings of Butler, one would
replace the entire catalyst (including palladium and support) and not just a
specific aspect of the catalyst, which would result in a process differing from
that claimed.
In response, the Examiner states that Meyer is cited for teaching a
lower palladium level catalyst as being effective to carry out the same
reaction as Butler, while Irvine is cited as evidence that calcium aluminate is
useful for the purpose of supporting palladium catalysts for use in selective
hydrogenation reactions. Ans. 11-12. We add that, as stated, supra, Meyer
recognizes that it is possible to influence properties of the catalyst used by
means of the type of support selected. Hence, the art recognizes that the
selection of the support is a result effective variable. Absent evidence of
unexpected results, as in the instant case, we are not convinced that the
Examiner erred in concluding that it would have been obvious to have
replaced the alumina catalyst of Butler and Meyer with the calcium
aluminate carrier of Irvine for the reasons stated by the Examiner.
In view of the above, we affirm Rejection 3.
CONCLUSIONS OF LAW AND DECISION
Each rejection 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
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