Ex Parte Pinkos et alDownload PDFBoard of Patent Appeals and InterferencesOct 26, 201110513040 (B.P.A.I. Oct. 26, 2011) Copy Citation 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 Appeal 2011-004657 Application 10/513,040 2 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. Appeal 2011-004657 Application 10/513,040 3 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). Appeal 2011-004657 Application 10/513,040 4 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 Appeal 2011-004657 Application 10/513,040 5 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 Appeal 2011-004657 Application 10/513,040 6 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 cdc Copy with citationCopy as parenthetical citation