Ex Parte Pinkos et al

Board of Patent Appeals and Interferences

Oct 26, 2011

10513040 (B.P.A.I. Oct. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLF PINKOS, ROLF-HATMUTH FISCHER,
MARKUS ROSCH, NILS BOTTKE, STEPHAN SCHLITTER,
MICHAEL HESSE, ALEXANDER WECK, GUNTHER WINDECKER,
and GUNNAR HEYDRICH
____________

Appeal 2011-004657
Application 10/513,040
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-15 (App. Br. 2).
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a process for preparing unsubstituted or C1-
C4-alkyl-substituted gamma-butyrolactone by catalytic hydrogenation of
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maleic acid and/or its derivatives in the presence of chromium-free catalyst.
The claims are not separately argued and therefore stand or fall together.
37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and is reproduced in
the “CLAIMS APPENDIX” of Appellants‟ Brief (App. Br. 13).
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Castiglioni
1
and Budge.
2

We affirm.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Castiglioni teaches “a process for preparing gamma-butyrolactone by
maleic acid hydrogenation using a copper zinc catalyst” (Ans. 4; App. Br.
5).
FF 2. An object of Castiglioni‟s invention is to utilize a chromium-free
catalyst in the process (Castiglioni 2: 25-29; App. Br. 5-6).
FF 3. Castiglioni suggests a catalyst, wherein “[t]he content of Copper as
CuO is 50-90 wt% and Zinc as ZnO is 10-50 wt%” (id. at 3: 4; App. Br. 6).
FF 4. Castiglioni suggests that “[t]he catalyst composition may further
contain inert components, such as tableting aids or inert fillers” (id. at 3: 6-7;
Ans. 5 (“Castiglioni et al[.] does teach using catalyst support material”);
App. Br. 6).
FF 5. Castiglioni suggests that “the catalyst can be [optionally] packed
between two layers of an essentially inert support material, possibly with the

1
Castiglioni et al., WO 99/35139, published July 15, 1999.
2
John R. Budge, EP 0 404 408 A1, published December 27, 1990.
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same size and shape of the catalyst. Suitable examples of essentially inert
support materials include silica, alumina, silica-alumina compound (e.g.,
mullite), silicon carbide, steatite and titania” (Castiglioni 3: 28 - 4: 2
(emphasis added); Ans. 5 (“Castiglioni et al[.] does teach using catalyst
support material”); App. Br. 6).
FF 6. Budge teaches a “process for preparing gamma-butyrolactone by
maleic acid hydrogenation using a catalyst . . . compris[ing], for example,
copper oxide (40-90%) and 0% of one metal or metal compound from
groups 1 and 2 and/or rare earth metals” (Ans. 4; App. Br. 6).
FF 7. Budge teaches the use of a catalytically active oxide of the general
formula Cu1ZnbAlcMdOx and that “an excellent catalyst” with this
formulation “may be produced with no chromium” (Budge 4: 1-4 and 26-28;
see also App. Br. 6).
FF 8. An objective of Budge‟s “invention is a fixed bed catalyst which
would favor gamma-butyrolactone production” (Budge 2: 29-30).
FF 9. Budge teaches that “[t]he use of supports for catalysts is well known
in the art. In a traditional sense, the support is normally considered to be a
very small particle that provides a base for the active catalytic material”
(Budge 2: 31-33).
FF 10. The supported catalysts of Budge‟s invention differ from the
foregoing traditional supports for catalysts (see FF 9), wherein “the catalytic
material is coated onto a massive support, and a nonhomogeneous catalyst
composition is obtained” (Budge 2: 33-36).
FF 11. Examples 3 and 4 of Budge illustrate the use of a catalyst comprising
chromium (Budge 7: 56 - 8: 42).
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FF 12. Budge reports that the data illustrated in the Examples
clearly demonstrates the superiority of the coated form of the
catalyst for production of high yields of both GBL and TNF
with lower SAH co-production. Further the results shown in
the table do not necessarily represent the optimum catalyst
performance. Further improvements in performance may still
be possible through adjustment of the process variables within
the following ranges: Temperature 230-290° C, Pressure 1-80
atms., GHSV 10,000-100,000h
-1
and MAN LHSV=0.1-5h
-1
.

(Budge 8: 43-47.)
ANALYSIS
We are not persuaded by Appellants‟ contentions regarding Budge‟s
exemplification of a catalyst that comprises chromium (App. Br. 7). While
it is true that Budge suggests a catalyst that optionally comprises chromium,
Budge also expressly suggests that “an excellent catalyst” falling within the
scope of Budge‟s formulation “may be produced with no chromium” (Cf.
Ans. 6 (optionally chromium) and FF 7). Since a reference teaching is not
limited to its illustrative examples and Budge suggests “excellent”
chromium-free catalysts (FF 7), we are not persuaded by Appellants‟
contentions regarding Budge‟s examples (App. Br. 8).
We recognize Appellants‟ analysis of the results of Budge‟s
illustrative examples (App. Br. 8). We also recognize Budge‟s disclosure
that these results “do not necessarily represent the optimum catalyst
performance” (FF 12). Notwithstanding Budge‟s express statements
regarding the results of their illustrative examples, Appellants‟ contend that
the amount of succinic anhydride by-product reported by Budge differs from
that in Castiglioni (App. Br. 8). Appellants do not, however, provide
persuasive evidence or argument to support a conclusion that a person of
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ordinary skill in this art would not have reasonably expected the amount of
succinic anhydride by-product produced in Budge to be the same or similar
to those of Castiglioni, when the catalyst performance of Budge‟s process is
optimized and one of Budge‟s “excellent” chromium-free catalysts is
utilized.
Appellants contend that claim 1 requires the catalyst to be “employed
in the form of shaped bodies which are obtained, e.g., [(i)] by combining all
of the constituents comprised in the catalyst and subsequently shaping the
combination of constituents, or [(ii)] by „applying‟ the active component to a
catalyst support” (App. Br. 8). Appellants contend that the Examiner‟s
reliance on Budge to suggest the application of a catalyst to a support
material “is not deemed to be suitable to motivate a person of ordinary skill
in the art to modify the catalysts of Castiglioni et al. to include a support
material,” because Budge‟s illustrative examples reveal “that the use of
catalyst particles with and without an incorporated catalyst support yields
large amounts of succinic anhydride . . . as a by-product” (id. at 10-11). We
are not persuaded for the reasons set forth above with regarding Appellants‟
contentions relating to Budge‟s illustrative examples and results.
Lastly, we are not persuaded by Appellants‟ contention that “the
presence of . . . support material is clearly detrimental with regard to the
formation of the undesirable by-product succinic anhydride” (id. at 11). For
the reasons set forth above, the evidence of record fails to support this
conclusion. Further, to the extent that Appellants are of the opinion that
Castiglioni fails to suggest a shaped catalyst that comprises a support
material, we disagree. Castiglioni expressly suggests a catalyst that may
comprise filler material (e.g., support material) (FF 4). In addition
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Castiglioni suggests a shaped catalyst (see FF 5 (“the catalyst can be
[optionally] packed between two layers of an essentially inert support
material, possibly with the same size and shape of the catalyst” (emphasis
added))). When the teachings of Castiglioni are considered as a whole,
Castiglioni suggests a shaped catalyst that comprises support material.
Accordingly, we disagree with Appellants‟ contentions that “more than
routine experimentation and optimization is required . . . under th[e]se
circumstances” (App. Br. 11).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Castiglioni and Budge. Because they
are not separately argued, claims 2-15 fall together with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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