Ex parte Sanderson et al.

Board of Patent Appeals and Interferences

Sep 12, 1997

08002563 (B.P.A.I. Sep. 12, 1997)

Appeal No. 95-0277
Application 08/002,563
Application for patent filed January 11, 1993. According to 1
appellants, this application is a continuation-in-part of
application for patent 07/833,200, filed February 10, 1992, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOHN R. SANDERSON
and JOHN F. KNIFTON
______________
Appeal No. 95-0277
Application 08/002,5631
_______________
On BRIEF
_______________
Before GARRIS, PAK and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. ' 134 from the decision of
the examiner finally rejecting claims 6, 7 and 9. Claim 9 was
Appeal No. 95-0277
Application 08/002,563
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subsequently canceled by appellants, leaving only claims 6 and 7
for consideration on appeal.
The appealed claims as represented by claim 6 are drawn to the
treatment of a methyl tertiary butyl ether (MTBE) recycle stream
containing, inter alia, 40 to about 60 wt.% of methanol, tertiary
butyl alcohol, MTBE and the peroxides tertiary butyl
hydroperoxide and ditertiary butyl peroxide, by contacting the
same with a silica-supported catalyst as specified in claim 6 at
about 160E to about 180EC in order to catalytically decompose
said peroxides and to form additional MTBE.
The reference relied on by the examiner is:
Sanderson et al. (Sanderson) 4,704,482 Nov. 3,
1987
The examiner has rejected claims 6 and 7 on appeal under 35
U.S.C. ' 103 as being unpatentable over Sanderson. We reverse.
Rather than reiterate the respective positions advanced by the
examiner and appellants, we refer to the examiner’s answer and to
appellants’ brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based
thereon conclude that the examiner has not established that one
of ordinary skill in this art would have been motivated by the
teaching of Sanderson to utilize the catalysts disclosed therein
to decompose peroxides in an MTBE recycle stream which contains
MTBE and 40 to about 60 wt.% of methanol at about 160E to about
180EC with the reasonable expectation of forming MTBE in addition
to catalytically decomposing peroxides. Indeed, as a matter of
Appeal No. 95-0277
Application 08/002,563
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elementary claim construction, appealed claim 6 clearly requires
the formation of “additional” MTBE. The examiner has steadfastly
refused to consider this matter even though appellants have
pointed to this claim limitation and argued that the formation of
MTBE was an unexpected result. Accordingly, in the absence of
evidence and/or scientific reasoning establishing that one of
ordinary skill in this art would have reasonably expected the
formation of additional MTBE under the reaction conditions
specified in appealed claim 6, we are left with the inference
that Sanderson would not have suggested the claimed invention as
a whole to one of ordinary skill in this art in the absence of
appellants’ specification.
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 95-0277
Application 08/002,563
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CHARLES F. WARREN )
Administrative Patent Judge )
Jack H. Park
Texaco Development Corporation
P.O. Box 430
Bellaire, TX 77401