Ex parte Schmidt et al.

Board of Patent Appeals and Interferences

Dec 26, 2001

08636816 (B.P.A.I. Dec. 26, 2001)

It is stated in the Brief, page 2 that, “THE APPEAL OF CLAIM 2 IS HEREBY WITHDRAWN.”1
Accordingly, we vacate the appeal of claim 2.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LANNY D. SCHMIDT
and
MARYLIN HUFF
____________

Appeal No. 1998-1567
Application No. 08/636,816
____________

ON BRIEF
____________
Before WARREN, OWENS, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1, 3 and 9 through 20, which are all the claims pending in this
case.1
THE INVENTION
The invention is directed to a process for the production of a mono-olefin from
Appeal No. 1998-1567 2
Application No. 08/636,816
gaseous hydrocarbons utilizing a platinum catalyst. The catalyst consists essentially of 2 to
90% by weight platinum on a ceramic monolith consisting of specific components.
Additional limitations are forth in the following illustrative claim.
THE CLAIM
Claim 1 is illustrative of appellants’ invention and is reproduced below:
1. A process for the production of a mono-olefin from a gaseous paraffinic
hydrocarbon having at least two carbon atoms or mixtures thereof comprising
reacting said hydrocarbons and molecular oxygen in the presence of a platinum
catalyst consisting essentially of 2 to 90 wt. % platinum on a ceramic foam
monolith consisting of the oxides of Zr, Ca, Mg, Hf, Ti or mixtures thereof.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Hazbun 4,827,071 May 2,
1989
Warren 5,073,657 Dec. 17,
1991
Font Freide et al. (Font Freide) 5,105,052 Apr. 14,
1992

THE REJECTION

Claims 1, 3 and 9 through 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Font Freide in view of Warren or Hazbun.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the appellants that the rejection of claims 1, 3 and 9
Appeal No. 1998-1567 3
Application No. 08/636,816
through 20 under 35 U.S.C. § 103(a) is not well founded. Accordingly, we reverse this
rejection.
Appeal No. 1998-1567 4
Application No. 08/636,816
The Rejection under § 103(a)
It is the position of the examiner that although, “the claims on appeal contain
higher pt [sic, Pt] amounts than those in Font Fredie [sic, Freide], given that the same
components are disclosed in the reference the optimization of the metal loadings so as to
obtain the best dehydrogenation results is not believed to define a patentable
distinction.” See Answer, page 5. We disagree.
We find that Font Freide is directed to a process for the production of, “mono-
olefins by the catalytic oxidative dehydrogenation of gaseous paraffinic hydrocarbons
having 2 or more carbon atoms.” See column 1, lines 7-12. We find that the process is
performed in the presence of oxygen containing gas such as oxygen or air. See column
2, lines 10-11. We find that a catalyst capable of supporting combustion beyond the
normal fuel limit of flammability is employed. See column 2, lines 29-30. A range of
support materials for the catalyst includes cordierite, mullite with alumina being the
preferred support. See column 2, lines 29-50. Furthermore, the support material is
preferably in the form of a monolith as required by the claimed subject matter. See
column 2, lines 35-39.
The catalyst of Font Freide however, differs from that of the claimed subject
matter. The catalyst may be prepared by impregnating the support with a solution of a
soluble compound of platinum. See column 2, lines 48-50. The patentee discloses that
by using a simple soaking method it is difficult to achieve greater than 0.15% metal
Appeal No. 1998-1567 5
Application No. 08/636,816
loadings. See column 2, lines 54-56. Although Font Freide discloses that in certain
circumstances “higher loadings may be desirable,” and that they, “may be achieved by
wash coating the monolith prior to immersion in the solution,” column 2, lines 54-63,
there is no specific disclosure as to the amount of platinum catalyst that may be deposited
on the ceramic monolith substrate.
We further find that Example 1 discloses a platinum loading of 0.1% by weight,
and Example 3 discloses a loading factor of 0.5% by weight for Pt/Pd. Example 3
however, fails to disclose the amount of either Pt or Pd present in the catalyst and in any
event the catalyst composition does not fall within the scope of the claimed subject matter
of claim 1 which recites, “a platinum catalyst consisting essentially of 2 to 90 wt. %
platinum.” We accordingly conclude that the amount of platinum disclosed by Font
Freide is not within the scope of the claimed subject matter.
Based upon the above findings and analysis, we further determine that there is no
suggestion or motivation to increase the amount of platinum loaded onto a monolithic
ceramic substrate by a factor of almost 15 times in order to achieve the minimum amount
of the catalyst required by the claimed subject matter. In this respect we agree with
appellants’ position that optimization of a result oriented variable is generally within a
range disclosed by the reference of record. See Brief, page 5.
Furthermore, we disagree with the conclusion of the examiner that the references
of Warren and Hazbun may be combined with the primary references of record. We find
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Application No. 08/636,816
that Warren is directed to the oxidative coupling of lower alkanes to produce heavier
hydrocarbons in contrast with the dehydrogenation catalytic reaction of Font Freide. See
column 4, lines 46-50. Furthermore, the large variety of oxidative coupling catalysts,
supports and shapes disclosed at column 6, line 48 to column 7, line 33 contain an
oxidative coupling catalyst, Table I, outside the scope of the claimed subject matter and
directed to a different and distinct catalytic reaction. Accordingly, contrary to the
examiner’s position, we conclude that there is no reason to equate the catalysts of
Warren with those of the primary reference.
Hazbun is even further removed from the catalyst of the primary reference in that
it is directed to conducting catalytic ceramic membranes. See column 1, lines 10-12.
Hazbun further discloses two layer conducting catalytic ceramic membranes and the use
of these membranes in hydrocarbon conversion processes. See column 2, lines 57-65.
Moreover, the product of the catalytic reaction is in one wherein hydrocarbons are
coupled to form olefins and diolefins and ethylene and propylene are oxidized to form
ethylene oxide, propylene oxide, aldehydes, acids and anhydrides and other organic
materials contrary to the disclosure of Font Freide directed to a catalytic dehydrogenation
reaction. Accordingly, we conclude that there is no reason to equate the catalysts of
Hazbun with those of the primary reference.
Finally, we recognize the protest submitted on October 29, 1997, Paper No. 25.
We note however, that there is no rejection before us based on the references submitted
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Application No. 08/636,816
by the protester. Furthermore, for the reasons discussed supra, it is evident that no
further rejection would be appropriate.
DECISION
The rejection of claims 1, 3 and 9 through 20 under 35 U.S.C. § 103(a) as
being unpatentable over Font Freide in view of Warren or Hazbun is reversed.
The decision of the examiner is reversed.
REVERSED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge
)
Appeal No. 1998-1567 8
Application No. 08/636,816
PL:hh
ANN M. MUETING
MUETING, RAASCH & GEBHARDT, P.A.
P. O. BOX 581415
MINNEAPOLIS, MN 554581415