Ex Parte Wolf et al

Board of Patent Appeals and Interferences

Jul 11, 2012

11752547 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/752,547 05/23/2007 Aurel Wolf 14069*105 (BMS 06 1 080) 3941
23416 7590 07/12/2012
CONNOLLY BOVE LODGE & HUTZ, LLP
P O BOX 2207
WILMINGTON, DE 19899
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
07/12/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AUREL WOLF, JURGEN KINTRUP,
OLIVER FELIX-KARL SCHLUTER, and LESLAW MLECZKO
____________

Appeal 2011-006782
Application 11/752,547
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-12
directed to a process for the preparation of chlorine by gas phase oxidation.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A process comprising:

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(a) providing a gas phase comprising hydrogen chloride and
oxygen; and

(b) oxidizing the hydrogen chloride with the oxygen in the
presence of a catalyst comprising a catalyst carrier material comprising tin
dioxide and a catalytically active component supported on the catalyst
carrier material, the catalytically active component comprising at least one
oxygen-containing ruthenium compound.

The Examiner relies upon the following as evidence of unpatentability
(Ans. 4):1
Hibi US 6,852,667 B2 Feb. 8, 2005
The Appellants rely upon the following as evidence of patentability
(App. Br. A-3, Appendix B):
Declaration of Dr. Aurel Wolf under 37 C.F.R. § 1.132 filed Sept. 3, 2009.

THE REJECTIONS
Claims 1, 4, 7, and 10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hibi. Ans. 4. Claims 2, 3, 5, 6, 8, 9, 11, and 12 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Hibi or, in the alternative, under
§ 103(a) as obvious over Hibi. Id. at 7.

ISSUE
The following dispositive issue arises:

1 We refer to the Examiner’s Answer mailed October 27, 2010 (“Ans.”), the
Appeal Brief filed August 23, 2010 (“App. Br.”), and the Reply Brief filed
December 27, 2010 (“Reply Br.”).
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Does the Examiner err in finding that Hibi discloses, expressly or
inherently, the claimed invention, and in particular, the claim 1 limitation
requiring “a catalyst carrier material comprising tin dioxide”?
We answer the question in the affirmative and REVERSE.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claim 1 is the only independent rejected claim. Our analysis of the
above issue is dispositive of both rejections before us in this appeal.
Claim 1 relates to a process wherein, inter alia, “a catalyst carrier
material comprising tin dioxide” supports an oxygen-containing ruthenium
catalyst. The Examiner finds that Hibi expressly or inherently teaches each
limitation of the rejected claims, including this disputed limitation. Ans. 7-
8. The central dispute before us is whether Hibi in fact discloses a process
wherein tin dioxide supports, or reasonably appears to support, a ruthenium
oxide catalyst as specified in claim 1. Id. at 6, 9; App. Br. 3-7.
We agree with the Examiner that Hibi teaches “a catalyst system
(catalyst 6)” that comprises a ruthenium oxide catalyst, described as
component (A), and rutile tin dioxide, described as component (B). Id. at 5
(citing Hibi 5:33-39). The Examiner admits that Hibi further discloses a
catalyst carrier component (C), but correctly observes that Hibi “does not
require catalyst (6) to have the carrier component (C).” Id. at 8-9. On the
contrary, as the Examiner points out, Hibi teaches a “preferable example”
wherein the ruthenium catalyst is supported “on the catalyst carrier
component or the component (B).” Id. at 6 (citing Hibi 20:58-60).
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We find that Hibi discloses a list of suitable catalyst carrier
components (C) and that rutile tin dioxide is not among the compounds
included in that list. Hibi 7:50-55. We further find that Hibi discloses a list
of suitable components (B) and that rutile tin dioxide is included in that list.
Id. at 21:13-15. Component (B) in Hibi is defined as “a compound wherein
thermal conductivity of a solid phase measured by at least one point within a
range from 200 to 5000 C is not less than 4W/m. 0 C.” Id. at 5:36-39. In
other words, Hibi discloses rutile tin dioxide as a preferred thermally
conductive component (B), but is silent on whether tin dioxide can dually
serve as the catalyst carrier in the catalyst system described as catalyst (6).
Hibi 21:13-15; 21: 44-22:6.
The Examiner finds, and we agree, that the “Appellants’ claims do not
require the claimed ‘catalyst carrier material’ to have any specific surface
area.” Id. at 10. Thus, we agree with the Examiner that, even if rutile tin
dioxide does “not meet the definition of ‘catalyst carrier’” in Hibi by virtue
of the restriction that Hibi places on the surface area of the carrier material,
the reference may nonetheless anticipate or make obvious the Appellants’
claims if Hibi in fact discloses a process wherein a ruthenium oxide catalyst
reasonably appears to be supported on tin dioxide as specified in claim 1.
Id. at 10; see In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where “the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product”).
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On the present record, however, we are of the opinion that the
Examiner makes insufficient factual findings to support the rejections of
claims 1-12. Specifically, regarding the process conditions disclosed in
Hibi, the Examiner states that, “[r]egardless of how the catalyst as disclosed
in Hibi [] was made, it still comprises ruthenium oxide supported on tin
dioxide as required by the instant claims.” Id. We have reviewed the
rejection and the Examiner’s responses to the Appellants’ arguments and
conclude that this bare assertion fails to meet the Examiner’s initial burden
of making out a prima facie case of anticipation (as to claims 1-12) or
obviousness (as to claims 2, 3, 5, 6, 8, 9, 11, and 12).
Specifically, the Examiner suggests that Hibi inherently discloses
“ruthenium oxide supported on tin oxide as required by the instant claims,”
but fails to identify a disclosure in Hibi wherein rutile tin dioxide, as
component (B), is subjected to processing conditions that necessarily
produce “ruthenium oxide supported on tin oxide” as specified in claim 1.
Id. It is well-settled that inherency cannot be established by mere
possibilities or probabilities. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999). We recognize that Hibi contains just one explicit reference to tin
dioxide, Hibi 21:14, and that, among the numerous embodiments and
examples disclosed in Hibi, none explicitly includes tin dioxide. See
generally Hibi 24:51-41:36 (embodiments of preparation processes); Hibi
53:19-85:54 (Examples 1-29). We leave for the Examiner to consider,
however, whether any of the numerous embodiments and examples
disclosed in Hibi suggests a process wherein, if rutile tin dioxide is
employed as component (B), the reaction conditions are such that the tin
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dioxide reasonably appears to support a ruthenium oxide catalyst as
specified in claim 1. We reverse because the present record contains
insufficient factual findings on this point to support a prima facie case of
anticipation or obviousness.
For the above reasons, we reverse the rejection of claims 1, 4, 7, and
10 as anticipated by Hibi. We further reverse the rejection of claims 2, 3, 5,
6, 8, 9, 11, and 12 as anticipated by or obvious over Hibi.

CONCLUSION
We reverse the rejections of claims 1-12.

REVERSED

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