Ex Parte Wolf et alDownload PDFPatent Trial and Appeal BoardSep 23, 201311752403 (P.T.A.B. Sep. 23, 2013) Copy Citation 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. 11/752,403 05/23/2007 Aurel Wolf 14069*106 (BMS 06 1 079) 3704 23416 7590 09/23/2013 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP P O BOX 2207 WILMINGTON, DE 19899-2207 EXAMINER NGUYEN, NGOC YEN M ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 09/23/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AUREL WOLF, LESLAW MLECZKO, OLIVER FELIX-KARL SCHLUTER, and STEPHAN SCHUBERT ____________ Appeal 2012-007194 Application 11/752,403 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and CHARLES F. WARREN, Administrative Patent Judges. PAK, Administrative Patent Judge DECISION ON APPEAL The named inventors (hereinafter “Appellants”)1 appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 14.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). 1 Appellants identify the real party in interest as Bayer Material Science AG. (See Appeal Brief filed September 19, 2011 (“App. Br.”) at 1.) 2 Claims 15 through 24, the other pending claims in the above-identified application, stand withdrawn from consideration by the Examiner as being drawn to a nonelected invention. (Final Office Action mailed February 16, 2011 (“FA”) at 1-2.) Appellants incorrectly state that claims 15 through 24 were finally rejected, but were not appealed. (App. Br. 2.) Appeal 2012-007194 Application 11/752,403 2 STATEMENT OF THE CASE The subject matter on appeal is directed to “a process comprising: reacting hydrogen chloride with oxygen in a gas phase oxidation in the presence of a catalyst, said catalyst comprising tin dioxide and a halogen- containing ruthenium compound.” (Spec. 4, ¶ [0011].) Preferably, tin dioxide is in the rutile structure. (Spec. 5, ¶ [0021].) The halogen- containing ruthenium compound is defined as “a compound in which a halogen is bonded in ionic to polarized covalent form to a ruthenium atom” and embraces compositions having a general formula RuOxCly (Spec. 5, ¶¶ [0022] and [0024].) The halogen is preferably chosen from the group consisting of chlorine, bromine, and iodine. (Spec. 5, ¶ [0023].) According to page 4, paragraph [0019], of the Specification: As used herein, the singular terms “a” and “the” are synonymous and used interchangeably with “one or more.” Accordingly, for example, reference to “a compound” herein or in the appended claims can refer to a single compound or more than one compound. Additionally, all numerical values, unless otherwise specifically noted, are understood to be modified by the word “about.” Details of the appealed subject mattered are recited in representative claim 13 reproduced from the Claims Appendix to the Appeal Brief as shown below: 1. A process comprising: reacting hydrogen chloride with oxygen in a gas phase oxidation in the presence of a catalyst, said catalyst comprising a catalytically active component comprising a halogen-containing ruthenium compound, supported on a catalyst carrier comprising tin dioxide. 3 For purposes of this appeal, we limit our discussion to argued claim 1 consistent with 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-007194 Application 11/752,403 3 (App. Br. 8 (Claims App’x)(Emphasis added)). Appellants seek review of the following grounds of rejection maintained by the Examiner in the Examiner’s Answer mailed January 4, 2012 (“Ans.”): (1) Claims 1 through 12 and 14 under 35 U.S.C. § 103(a) as unpatentable over Hibi4 and optionallyAbekawa;5 and (2) Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Hibi, optional Abekawa, and Walsdorff.6 (See App. Br. 2.) FACT FINDINGS, PRINCIPLES OF LAW, ANALYSES, and CONCLUSIONS I. Rejection (1) Appellants do not question the Examiner’s finding that Hibi discloses a process for producing chlorine by reacting hydrogen chloride with oxygen in a gas phase oxidation in the presence of a catalyst containing a halogen- containing ruthenium compound or ruthenium oxide as component (A) and rutile tin dioxide as component (B). (Compare Ans. 5-6 with App. Br. 3-6.) Instead, Appellants contend that one of ordinary skill in the art would not have been led to employ tin dioxide as a catalyst carrier material from the teachings of Hibi alone or in combination with the teachings of Abekawa. 4 U.S. Patent 6,852,667 B2 issued to Hibi et al. on February 8, 2005 (“Hibi”). 5 U.S. Patent 5,908,607 issued to Abekawa et al. on June 1, 1999 (“Abekawa”). 6 U.S. Patent Application Publication 2004/0052718 A1published in the name of Walsdorff et al. on March 18, 2004 (“Walsdorff”). Appeal 2012-007194 Application 11/752,403 4 (App. Br. 3-5). Appellants also contend that any inference of obviousness established by teachings of Hibi, with or without the teachings of Abekawa, “is sufficiently rebutted by the evidence of significant and unexpected improvement provided in Appellants’ Specification.” (App. Br. 3 and 6.) Thus, the critical questions raised here are: (1) Did the Examiner err in determining that one of ordinary skill in the art, armed with the teachings of Hibi, with or without the teachings of Abekawa, would have been led to employ rutile tin dioxide as part of a catalyst carrier used for supporting a halogen-containing ruthenium compound as required by claim 1 in the gas phase oxidation process taught by Hibi? (2) Did the Examiner err in determining that Appellants have not demonstrated that the showing in the Specification is sufficient to outweigh the evidence of obviousness reflected in the teachings of Hibi, with or without the teachings of Abekawa? On this record, we answer these questions in the negative substantially for the reasons set forth by the Examiner in the Answer. We add the following primarily for emphasis and completeness. As is apparent from the record, there is no dispute that Hibi teaches that component B of the catalyst is preferably selected from “α-alumina, rutile tin dioxide, rutile titanium oxide, silicon nitride and silicon carbide” and is present in an amount not less than 10%, preferably not less than 20%, by weight (inclusive of an amount of 99% by weight) of the catalyst. (Compare Ans. 5-6 with App. Br. 3-6; see also Hibi, col. 21, ll. 13-15 and 25-27.) Although not all the preferred components listed as component B in Appeal 2012-007194 Application 11/752,403 5 Hibi are also identified as a catalyst carrier as argued by Appellants, the fact remains that Hibi teaches that any component B, like any catalyst carrier listed, can be used to support component A identified as, for example, ruthenium oxide or a halogen-containing ruthenium compound as correctly found by the Examiner in the Answer. (See also Hibi, col. 20, l. 49 to col. 21, l. 34, col. 21, ll. 63-64, col. 22, ll. 56-58, and col. 23, ll. 1-8.) In particular, Hibi teaches (col. 20, ll. 49-57) that In the view of the catalyst activity, it is preferable that a component (A) [(e.g., ruthenium oxide or a halogen-containing ruthenium compound)] is a component supported on the catalyst carrier component or a component B. For example, in the case of a component (A) is an expensive noble metal compound such as ruthenium, large effects can be realized in the cost of the catalyst by supporting a component (A) on the catalyst carrier component or the component (B) because the catalyst activity increases by supporting a small amount of noble metal. Hibi also teaches that when zirconium oxide is used as a catalyst carrier, “the catalyst carrier component includes a part of component (B).” (Hibi, col. 21, ll. 63-64.) Further, Hibi teaches preparing its catalyst by mixing a catalyst carrier component with a component (B), molding and calcining the mixture of the catalyst carrier component and component (B), and supporting a component (A) on the molded and calcined mixture of the carrier component and component (B). (Hibi, col. 23, ll. 1-8.) Given the above teachings, we find no reversible error in the Examiner’s determination that one of ordinary skill in the art, armed with the teachings of Hibi, with or without the teachings of Abekawa, would have Appeal 2012-007194 Application 11/752,403 6 been led to employ rutile tin dioxide as part of a catalyst carrier7 used for supporting a halogen-containing ruthenium compound as required by claim 1, with a reasonable expectation of successfully using it in the gas phase oxidation process taught by Hibi. Appellants contend that they “surprisingly found that the use of a catalyst comprising a halogen-containing compound supported on tin dioxide in the oxidation hydrogen chloride provides unexpectedly better chlorine production that [(sic, than)] known catalyst systems such as the ruthenium oxide supported on titanium oxide of Hibi.” (App. Br. 6.) In support of this contention, Appellants refer to Table 1, in particular Examples 2 and 4 in Table 1, at page 16 of the Specification to show that the claimed subject matter as a whole imparts unexpected results relative to the closest prior art, Hibi. (Id.) On this record, Appellants’ reliance on the showing in Table 1 at page 16 of the Specification fails to demonstrate that the claimed invention as a whole imparts unexpected results relative to the closest prior art, namely the embodiments exemplified in Hibi. As correctly found by the Examiner at page 11 of the Answer, Appellants have not compared the claimed subject matter with the closest prior art, namely ruthenium oxide supported on rutile titanium oxide exemplified and taught by Hibi. In this regard, we note that Hibi teaches using rutile titanium oxide, rather than titanium oxide, as a support for ruthenium component to enhance the production of chlorine. 7 Claim 1 recites “a catalyst carrier comprising tin dioxide” which includes at least the molded mixture of a carrier component and component (B) used for supporting component (A), such as a halogen-containing ruthenium compound. Appeal 2012-007194 Application 11/752,403 7 (Compare Hibi, Example 6 containing no rutile crystal in titanium oxide at cols. 59-60 with Hibi, Example 8 containing 17% rutile crystal in titanium oxide at cols. 61-62.) Nevertheless, Appellants have not asserted, much less shown, that titanium oxide used in Example 4 of Table 1 supposedly representative of the catalyst employed by Hibi is rutile titanium oxide. (App. Br. 3-6 and Spec. 15-16.) Thus, there is no reason to believe that Appellants have compared the claimed subject matter with the closest prior art, i.e. the embodiment exemplified in Hibi. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”) Even assuming that the catalyst in Example 4 of Table 1 is representative of the catalyst taught by the closest prior art, Hibi, as asserted by Appellants, Appellants have not shown that the claimed subject matter imparts unexpected superior results relative to such catalyst in Example 4. In particular, the catalyst used in Example 1 of Table 1 designated by Appellants as “(invention)” at page 13 of the Specification and encompassed by the catalyst recited in claim 1 imparts inferior results in terms of chlorine production relative to that obtained by the catalyst used in Example 4 which according Appellants at page 6 of the Appeal Brief, is representative of the catalyst taught by Hibi. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property."). Finally, as correctly found by the Examiner at page 11 of the Answer, Appellants have not demonstrated that Example 2 in Table 1 at page 16 of the Specification relied upon as representative of the claimed subject matter Appeal 2012-007194 Application 11/752,403 8 is reasonably commensurate in scope with the degree of protection sought by the claims on appeal. While such showing is limited to using a single catalyst consisting of specific amounts of ruthenium and chloride on tin (IV) dioxide having a specific BET surface prepared in a particular manner, the claims on appeal are not so limited.8 As is apparent from the results imparted by the catalyst used in Example 1 at Table 1, one of the many other species encompassed by claim 1 on appeal, Appellants have not shown that the unexpected results allegedly achieved with the catalyst of Example 2 at Table 1 are also applicable to all of the multifarious catalysts covered by the claims on appeal. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) Accordingly, based on the totality of evidence of the record, including due consideration of Appellants’ arguments and evidence anew, we find no reversible error in the Examiner’s determination that the showing in the 8 Claim 1, for example, includes a catalyst comprising, inter alia, amounts of ruthenium and chloride materially different than those used in Example 2, halogen- containing ruthenium compounds materially different than ruthenium chloride used in Example 2, amounts and BET surfaces of tin oxides different than those used in Example 2, and a major amount of any unclaimed component not employed in Example 2. Appeal 2012-007194 Application 11/752,403 9 Specification is not sufficient to outweigh the evidence of obviousness reflected in the teachings of Hibi, with or without the teachings of Abekawa, within the meaning of 35 U.S.C. § 103(a). II. Rejection (2) Appellants rely on the same arguments advanced in connection with claim 1 above to rebut the Examiner’s rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Hibi, optional Abekawa, and Walsdorff. (App. Br. 3-6.) Specifically, Appellants only contend that “Walsdorff remedies none of the deficiencies of the Hibi reference, nor the Hibi/Abekawa combination advanced by the Examiner.” (App. Br. 5.) Accordingly, based on the reasons set forth in the Answer and above, we find no reversible error in the Examiner’s determination that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claim 13 within the meaning of 35 U.S.C. §103(a). ORDER Upon consideration of the record, and for the reasons given above and in the Answer, it is ORDERED that the Examiner’s decision rejecting the claims on appeal under 35 U.S.C. § 103(a) is AFFIRMED; and Appeal 2012-007194 Application 11/752,403 10 FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2010). AFFIRMED cam Copy with citationCopy as parenthetical citation