Ex Parte Raichle et al

Patent Trial and Appeal Board

Jun 18, 2013

12015741 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANDREAS RAICHLE, FRANK ROSOWSKI,
SABINE HUBER, ULRICH CREMER,
STEFAN ALTWASSER, and KLAUS JOACHIM MUELLER-ENGEL
__________

Appeal 2011-011351
Application 12/015,741
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 The Real Party in Interest is BASF SE (App. Br. 1).
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STATEMENT OF THE CASE
Claims 1 and 21 are representative of the claims on appeal, and read
as follows:
1. A process for preparing shaped catalyst bodies whose active
composition is a multielement oxide, in which a finely divided precursor
mixture which comprises added graphite as a finely divided shaping
assistant is shaped to the desired geometry and the resulting shaped catalyst
precursor bodies are treated thermally at elevated temperature to obtain the
shaped catalyst bodies whose active composition is a multielement oxide,
wherein
a) for the specific surface area OG of the finely divided graphite:
0.5m2/g < OG < 5 m2/g
and
b) for the particle diameter d50 of the finely divided graphite:
40 μm < d50 < 200 μm

21. A shaped catalyst body obtainable by a process according to claim 1.

The following ground of rejection is before us for review:
Claims 1-29 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Petzoldt2 and Teshigahara3 (Ans. 6).

ISSUE
Does the preponderance of the evidence support the Examiner’s
conclusion that the combination of Petzoldt and Teshigahara renders the
claimed process obvious?

2 Petzoldt et al., US 2005/0065371 A1, published Mar. 24, 2005.
3 Teshigahara et al., US 2005/0131253 A1, issued June 16, 2005.
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FINDINGS OF FACT
FF1. The Examiner finds that Petzoldt teaches a process for preparing a
catalyst composition containing graphite (Ans. 6).
FF2. The Examiner further finds that Petzoldt teaches the use of graphite as
a shaping assistant, i.e., as a lubricant (id. at 7 (quoting Petzoldt, p. 3, ¶88)).
FF3. The Examiner also finds that Petzoldt teaches that the graphite has a
BET surface area, that is, a specific surface area, of 6 to 13 m2/g (Ans. 8
(citing Petzoldt, p. 10, ¶ 205)).
FF4. The Examiner notes that the specific surface area taught by Petzoldt
differs from the claimed range (Ans. 8).
FF5. The Examiner also finds that the d50 is unspecified by Petzoldt (id.).
FF6. Petzoldt is drawn to a process of preparing annular unsupported
catalysts (Petzoldt, p. 1, ¶1).
FF7. Petzoldt teaches that materials, such as graphite, are a “[u]seful
shaping assistant (lubricant)” (id. at 3, ¶ 88). The shaping assistants are then
decomposed or combusted, so that the catalyst is obtained free of shaping
assistant (id. at 3, ¶ 89).
FF8. Specifically, Petzoldt teaches:
A favorable lubricant for such an intermediate
compaction (and likewise for the final shaping) has been found
to be finely divided graphite from Timcal AG (San Antonio,
US) of the TIMREX P44 type, or T44 graphite powder from
Lonza, CH-5643 Sins (sieve analysis or laser diffraction: min.
50% by weight <24 μm, max. 10% by weight >24 μm and <48
μm, max. 5% by weight >48 μm, BET surface area: from 6 to
13 m2/g). After the completed intermediate compaction, it
functions simultaneously as a lubricant in the actual ring
shaping (and may, if required, additionally be supplemented as
described above). It is found to be favorable when the ash
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residue of the graphite used (calcining at 815° C. under air) is ≤
0.1% by weight.

(Id. at 4-5, ¶103.)
FF9. The Examiner relies on Teshigahara for teaching the use of graphite
particles having an average particle diameter, d50, of 10 to 50 μm (Ans. 9).
FF10. Teshigahara is drawn to a process of producing a composite oxide
catalysts (Teshigahara, p. 1, ¶ 1).
FF11. Specifically, Teshigahara teaches:
(1) A process for producing a composite oxide catalyst to
be used for gas phase oxidation of an olefin or unsaturated
aldehyde with molecular oxygen to produce the corresponding
aldehyde and/or unsaturated carboxylic acid, which comprises a
step of molding a catalyst component containing powder and a
step of calcining a molded product obtained in the molding
step, wherein: the molding step is a step wherein graphite
particles having an average particle diameter D50 of from 10 to
50 μm and having a combustion initiating temperature in a
differential thermogravimetric analysis higher by at least 50° C.
than the calcination temperature in the next calcination step, are
added to the catalyst component-containing powder in an
amount of from 0.5 to 10 wt %, based on the powder, followed
by molding, and the calcination step is a step wherein the
calcination is carried out at a temperature of at least 250° C. and
lower by at least 50° C. than the combustion initiating
temperature of the graphite particles.

(Id. at 1, ¶ 16.)
FF12. Teshigahara teaches that the graphite functions as a lubricant, and that
a sufficient amount need be used to prevent creaking, which can damage the
molding machine (id. at 3, ¶ 39). The use of graphite also reduces the need
to disassemble and clean the molding machine (id.). Teshigahara teaches
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further that if too much graphite is used, the strength of the catalyst tends to
be low (id.).
FF13. According to the Examiner, even though the specific surface area
taught by Petzoldt (6 to 13 m2/g) and the claimed specific surface area (0.5-5
m2/g) do not overlap, they are “close enough that one skilled in the art would
have expected them to have a similar reaction condition in the absence of an
unexpected result” (Ans. 12-13).
FF14. The Examiner further concludes:
The specific surface area and particle diameter d90 [sic] are
well-understood by those of ordinary skill in the art to be result-
effective variables, especially when attempting to control the
catalytic reaction process by selecting the optimum specific
surface area range and particle diameter d90 [sic] range; in
addition, the case law states that the selection of particle size is
not a patentable modification in the absence of unobvious
results….. Therefore, it would have been obvious to the skilled
artisan in the art to be motivated to control the optimum
specific surface area by routine experimentation in the prior art
process in order to optimize the preparation of the shaped
catalyst bodies for the oxidation process.

(Ans. 13.)

ANALYSIS
Appellants argue that the Petzoldt teaches the use of graphite having a
specific surface area (BET) of 6 to 13 m2/g, and in the working examples,
have a d50 of 19.3 μm, wherein the particles are used as a lubricant, that is,
the graphite is used to reduce the mechanical wear on shaping materials
(App. Br. 4). Appellants further assert that while Teshigahara relates to a
process for preparing shaped catalyst bodies based on multielement oxides
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using finely divided graphite, wherein the graphite has a d50 from 10 to
50 μm, the essential property of the finely divided graphite is its
“‘combustion initiating temperature’” (id. (citing Teshigahara, p. 2, ll. 31-
36)).
Appellants thus argue that the prior art did not recognize that the
“combination of OG and d50 of graphite, let alone either feature, is a result-
effective variable for affecting the selectivity of a target product in partial
gas phase oxidations of organic starting compounds heterogeneously
catalyzed by catalysts formed using such graphite as a shaping assistant” (id.
at 6).
The Examiner responds that it is well known that the surface area of a
spherical graphite (A) is closely related to the d50 because of the relationship
A=π(d50)2 (Ans. 16). Thus, according to the Examiner, “the diameter of the
graphite particle is directly proportional to how much the surface of the
graphite can have for its given volume” (id.).
According to Appellants, however, “there is no relationship between
OG and diameter d50. Indeed, the Examiner has confused the surface area of
only the outside of a sphere, and specific surface area, which measures
surface area that includes internal surface area of pores” (Reply Br. 3).
We agree with the Appellants that the preponderance of the evidence
of record does not support the Examiner’s conclusion of obviousness. Both
Petzoldt and Teshigahara use graphite as a lubricant (see FFs 8 and 12).
While Petzoldt reports the specific surface area of the graphite used, it does
not disclose that the specific surface area of the graphite is important to any
particular property of the use of graphite as a lubricant. Similarly,
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Teshigahara teaches that the graphite particles have an average particle
diameter d50 of from 10 to 50 μm, but do not disclose any relationship of the
average particle diameter d50 to the lubricating properties of the graphite.
Thus, neither reference teaches that the specific surface area or the d50 are
result effective variables, and the Examiner has not provided any evidence
or scientific reasoning as to why the ordinary artisan would consider them to
be result-effective variables. Our reviewing court’s predecessor has held
that a variable must be art-recognized as result-effective before it can be
deemed to be subject to routine optimization. In re Antonie, 559 F.2d 618,
620 (CCPA 1977).
Moreover, as argued by Appellants, the Examiner has not provided
any reasoning as to why the ordinary artisan would have optimized the
specific surface area and d50 together. While the Examiner has asserted they
are related by the relationship the relationship A=π(d50)2, as noted by
Appellants, that relationship relates to surface area and not specific surface
area, which includes the internal surface area of the pores.
We thus conclude that the Examiner has not established that the
combination of Petzoldt and Teshigahara renders the claimed process
patentable. We also note that the Examiner did not separately address the
product-by-process claim, that is, claim 21. We thus reverse the rejection as
to all of the claims.

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CONCLUSION OF LAW
We conclude that the preponderance of the evidence does not support
the Examiner’s conclusion that the combination of Petzoldt and Teshigahara
renders the claimed process obvious.

SUMMARY
We reverse the rejection of claims 1-29 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Petzoldt and Teshigahara.

REVERSED

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