Ex Parte Remias et al

Board of Patent Appeals and Interferences

Feb 23, 2010

11104122 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOSEPH E. REMIAS and EDRICK MORALES
__________

Appeal 2009-007997
Application 11/104,122
Technology Center 1600
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Decided: February 23, 2010
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-007997
Application 11/104,122

STATEMENT OF CASE
The following claims are representative.
1. A process for the preparation of titanium silicalite crystals useful
as catalyst for the production of propylene oxide which comprises forming
an aqueous solution of a silica source, a titanium source and a template,
heating the said solution to a temperature in the range of 160-230°C at the
rate not to exceed 0.3°C/min and maintaining the heated mixture at 160-
230°C for a time sufficient for the formation of titanium silicalite crystals.

2. A process for the preparation of titanium silicalite crystals useful as
catalyst for the production of propylene oxide which comprises forming an
aqueous solution of a silica source selected from the group consisting of
tetra alkyl orthosilicates, alkoxy silicates, and silica, a titanium source
selected from the group consisting of tetra alkyl orthotitanates, titanium
alkoxy compounds, and Ti(IV) coordination complexes where the ligands
include halogens, acetylacetonates or carboxylates and a quaternary
ammonium compound template, the mol ratio of template to silica source
not exceeding 0.25, heating the said solution to a temperature in the range of
160-230°C at a rate not to exceed 0.3°C/min, and maintaining the heated
mixture at 160-230°C for a time sufficient for the formation of titanium
silicalite crystals.

Cited References
Taramasso et al. US 4,410,501 Oct. 18, 1983
Grosch et al. US 6,008,389 Dec. 28, 1999
Lin et al. US 6,475,465 B2 Nov. 5, 2002
Cooker et al. ‘493 US 6,555,493 B2 Apr. 29, 2003
Cooker et al. ‘139 US 2004/0059139 A1 Mar. 25, 2004
Oguchi et al. US 6,759,540 B2 Jul. 6, 2004

Grounds of Rejection
Claims 1-8 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Grosch taken with Taramasso, Cooker ’493, Cooker ’139
in further view of Lin and Oguchi.
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Claim Interpretation
Appellants’ claims use the transitional language “comprising.”
“Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.” Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus the claims are not limited to
a single step but may encompass additional steps.

FINDINGS OF FACT
1. The Examiner finds that “Grosch et al teach the basic process as recited in
the claims. See, for example columns 1 and 2.” (Ans. 4.)
2. Taramasso teaches a process for preparing porous material comprised of
silicon and titanium oxides, with heating being commenced carefully. See,
for example, column 4 example 1. (Id.)
3. Cooker ‘493 teaches a process for producing a solid epoxidation catalyst
of noble metal and titanium zeolite, including “the concept of ramping the
temperature up at, for example, 1-5°C/min during catalyst preparation in
order to reduce metal lose [sic] during epoxidation reactions. See, for
example, column 3 lines 1-44, column 4 lines 3-18.” (Id.) Cooker ‘493 also
teaches a ramp rate of 0.5 to 10°C (Col. 3, ll. 27-29).
4. Cooker ‘139 teach a “titanium silicate preparation process in which
titanium, silicon and a template of alkylammonium in aqueous solution are
heated at a rate of 2° C/min to 150° C. See, for example, page 3 paragraphs
0023-0027.” (Ans. 4.)
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Application 11/104,122

5. Lin teaches a method for preparing a titanium-silicate molecular sieve
“using TPAOH and a temperature range of 130-200° C. See, for example,
column 2 lines l+.” (Id.)
6. Oguchi teaches the claimed mole ratios of quaternary ammonium to
silicate. See, for example column 9 lines l+.” (Id.)
7. The Examiner finds that Grosch differs from the claimed invention “in
that reaction process ramps at a temperature of 3° C/min instead of 0.3°
C/min or less.” (Ans. 4.)
8. The Examiner concludes that
[I]t would have been obvious to one of ordinary skill in the art
to modify the Grosch et a1 process to use the lower rate. One,
because Cooker et al ‘493 teaches the concept of ramping the
temperature up to 1-50 C/min to reduce metal lose [sic] during
epoxidation reactions. Two, Cooker et al ‘139 teach using a rate
of 20 C/min in a closely related process. In addition, a slow rate
of heating is characteristically employed in the chemical arts to
promote larger crystal size formation.

(Id. at 4-5.)
9. The Examiner concludes that “[t]o use somewhat differ[ent] but otherwise
analogous process conditions and techniques in closely related processes
would have been obvious to one of ordinary skill in the art as the results,
better catalyst yield, larger crystal size and more efficient use of reactant
components, would not have been unexpected and therefore unpatentable.”
(Id. at 5.)
10. The Examiner finds that “[w]ith respect to appellants' comments
regarding Grosch et al it is noted that producing larger particle catalyst is
desired in the prior art. See column 1 lines 20-24. Producing catalyst using
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Application 11/104,122

silicon and template materials within the claimed molar ration range would
overcome this problem. See, for example, column 4 example 1 lines 43-50.”
(Id.)
11. The Examiner finds that “[w]ith respect to Taramasso et al, the ratio
along with careful heating is also taught. See column 3 lines 28-31 and
column 4 lines 7-8. With respect to Cooker et al the amount of template
material in the silicalite preparation is critical. See column 2 lines 55-58.
The rate of temperature rise in the preparation to the catalyst crystals also
falls within the recited range, e.g. 0.5-10° C. See column 3 line 29.” (Ans.
5-6.)
12. Oguchi discloses the ratio between the template compound and silicon
“as being critical to high catalyst activity. See column 9 lines 21-29. The
difference between 0.3 and 0.5C° is not deemed patentably significant” (id.
at 6).
13. The Examiner concludes that, “[t]o use somewhat different but
otherwise analogous process conditions and techniques in a closely related
process would have been obvious to one of ordinary skill in the art as the
results, better catalyst yield, larger crystal size and more efficient use of
reactant components, would not have been unexpected and [is] therefore
unpatentable.” (Id.)

ISSUE
The Examiner argues that
[I]t would have been obvious to one of ordinary skill in the art
to modify the Grosch et al process to use the lower rate. One,
because Cooker et al ‘493 teaches the concept of ramping the
temperature up to 1-50 C/min to reduce metal lose [sic] during
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Application 11/104,122

epoxidation reactions. Two, Cooker et al ‘139 teach using a
rate of 20 C/min in a closely related process. In addition, a slow
rate of heating is characteristically employed in the chemical
arts to promote larger crystal size formation.

(Ans. 4-5.)
Appellants contend that 1) the cited references provide no teaching on
the ramping rate for titanium silicate. (App. Br. 7.)
The issue is: Have Appellants demonstrated error in the Examiner’s
obviousness rejection? Has the Examiner provided evidence that the cited
references teach the ramping rate for titanium silicate?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
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When evaluating claims for obviousness, “the prior art as a whole
must be considered. The teachings are to be viewed as they would have
been viewed by one of ordinary skill.” In re Hedges, 783 F.2d 1038, 1041
(Fed. Cir. 1986). Thus, “‘[i]t is impermissible within the framework of
section 103 to pick and choose from any one reference only so much of it as
will support a given position, to the exclusion of other parts necessary to the
full appreciation of what such reference fairly suggests to one of ordinary
skill in the art.’” Id. (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA
1965)).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
The Examiner argues that
[I]t would have been obvious to one of ordinary skill in the art
to modify the Grosch et al process to use the lower rate. One,
because Cooker et al ‘493 teaches the concept of ramping the
temperature up to 1-50 C/min to reduce metal lose [sic] during
epoxidation reactions. Two, Cooker et al ‘139 teach using a
rate of 20 C/min in a closely related process. In addition, a slow
rate of heating is characteristically employed in the chemical
arts to promote larger crystal size formation.

(Ans. 4-5.)
Appellants contend that 1) the cited references provide no teaching on
the ramping rate for titanium silicate; and 2) the cited references do not teach
a one-step temperature ramping process. (App. Br. 7.)
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Application 11/104,122

The Examiner finds regarding Cooker ‘493, that “[t]he difference
between 0.3 and 0.5C° is not deemed patentably significant.” (Ans. 6.) We
do not find that the Examiner has established a prima facie case of
obviousness.
According to the Specification,

A key feature is control of the tetrapropylammonium hydroxide
(TPA) to silicon component molar ratio to a value not to exceed
about 0.25, preferably not to exceed about 0.19, while at the
same time providing a low temperature ramping rate of the
reaction mixture, not to exceed about 0.3° C/min, preferably not
to exceed about 0.2° C/min. It has been found that by
following these guidelines, a TS-1 product is produced which
has high catalytic activity for the production of propylene
oxide. At the same time, due to the low TPA/SiO2 ratio, costs
associated with the expensive TPA component are maintained
at an attractively low level. A further advantage is that the
instant procedure can more readily be scaled up to the
commercial level since the slower heating or ramping rates are
generally easier to achieve on a large scale.

(Spec. 2.)
In addition, the Specification, page 3, indicates that “for the template
to SiO2 ratios lower than 0.25 smaller particle size crystals are formed as the
temperature ramp rate is decreased, whereas this trend is not observed at the
higher ratios.”
We conclude that the Examiner has not provided evidence in the prior
art of a ramping temperature rate not to exceed 0.3°C/min (claims 1 and 2),
as claimed. The only citation for a ramping rate which is close to the
0.3°C/min claim rate is the teaching in Cooker of a 0.5°C/min rate, but this
teaching refers to an entirely different reaction than the reaction claimed.
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Therefore, there is no suggestive power to modify Grosch to use this lower
ramping rate in the claimed reaction process. According to the
Specification, the ramp rate is a critical requirement for forming catalyst
crystals of the appropriate size. The Examiner has not provided an articulate
reason with rationale underpinnings for why one of ordinary skill in the art
would have used a ramp rate not to exceed 0.3°C/min. in view of the higher
ramp rates known in the art. The obviousness rejection is reversed.

CONCLUSION OF LAW
Appellants have demonstrated error in the Examiner’s obviousness
rejection.

REVERSED

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