Marek MatuszDownload PDFPatent Trials and Appeals BoardJul 26, 201912116905 - (D) (P.T.A.B. Jul. 26, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/116,905 05/07/2008 Marek Matusz TH3262 (US) 7988 23632 7590 07/26/2019 SHELL OIL COMPANY P O BOX 576 HOUSTON, TX 77001-0576 EXAMINER KOSACK, JOSEPH R ART UNIT PAPER NUMBER 1626 NOTIFICATION DATE DELIVERY MODE 07/26/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Shelldocketing@cpaglobal.com USPatents@Shell.com shellusdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MAREK MATUSZ __________ Appeal 2018-002067 Application 12/116,905 Technology Center 1600 __________ Before DONALD E. ADAMS, ERIC B. GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1,2,3 under 35 U.S.C. § 134 involving claims to a catalyst for the epoxidation of an olefin. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies the Real Party in Interest as Shell Oil Company (App. Br. 2). 2 We have considered the Specification of May 7, 2008 (“Spec.”); Final Office Action of Jan. 6, 2017 (“Final Action”); Appeal Brief of Aug. 7, 2017 (“App. Br.”); and Examiner’s Answer of Oct. 3, 2017 (“Ans.”). 3 This application was subject to a previous appeal, 2013-010123, in which an obviousness rejection was affirmed (see Final Act. 3). Appeal 2018-002067 Application 12/116,905 2 Statement of the Case Background “In olefin epoxidation, a feed containing an olefin and oxygen is contacted with a catalyst under epoxidation conditions” (Spec. 1). “Olefin epoxidation catalysts typically comprise a silver component, usually with one or more additional elements deposited therewith, on a carrier” (Spec. 1). The Claims Claims 1–5 and 7–16 are on appeal. Claim 1 is the sole independent claim, is representative and reads as follows: 1. A catalyst for the epoxidation of an olefin comprising a carrier and, deposited on the carrier, silver, a rhenium promoter, a first co-promoter, and a second co-promoter; wherein the quantity of the rhenium promoter deposited on the carrier is at least 2 mmole/kg, relative to the weight of the catalyst; the first co-promoter is selected from the group consisting of sulfur, phosphorus, boron, and mixtures thereof; the second co-promoter is selected from the group consisting of tungsten, molybdenum, chromium, and mixtures thereof; and the total quantity of the first co-promoter and the second co-promoter deposited on the carrier is at most 3.8 mmole/kg, relative to the weight of the catalyst. The Rejection The Examiner rejected claims 1–5 and 7–16 under 35 U.S.C. § 103(a) as obvious over Lauritzen4 (Final Act. 2–6). 4 Lauritzen, US 4,766,105, issued Aug. 23, 1988. Appeal 2018-002067 Application 12/116,905 3 The Examiner finds that: Lauritzen teaches a catalyst in which the silver content is 147 g/kg, rhenium is present in the quantity of 1 mmol/kg, sulfur is a first promoter in the quantity of 1 mmol/kg, tungsten is the second promoter in the quantity of 1 mmol/kg, and potassium is present in an amount of 2 mmol/kg, with cesium also present in the catalyst. (Final Act. 4). The Examiner finds that “Lauritzen teaches in additional examples that the quantity of rhenium can be increased to 2 mmol/kg” (Final Act. 4). The Examiner finds that because “the general conditions for the catalyst are known in the art by virtue of the teachings above, the person of ordinary skill would be motivated to optimize the concentrations of the promoters in the catalyst in a routine matter to arrive at the instantly claimed invention” (Final Act. 5). The issues with respect to this rejection are: (i) Does the evidence of record support the Examiner’s conclusion that Lauritzen renders obvious an olefin catalyst “wherein the quantity of the rhenium promoter deposited on the carrier is at least 2 mmole/kg” as required by claim 1? (ii) If so, has Appellant provided evidence of secondary considerations, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness? Findings of Fact 1. Lauritzen teaches a catalyst for the production of ethylene oxide from ethylene and molecular oxygen in the vapor phase which catalyst comprises a catalytically effective amount of silver, a Appeal 2018-002067 Application 12/116,905 4 promoting amount of alkali metal, a promoting amount of rhenium and a promoting amount of a rhenium co-promoter selected from sulfur, molybdenum, tungsten, chromium and mixtures thereof supported on a porous, refractory support. (Lauritzen 1:66 to 2:6) 2. Lauritzen teaches that in “a preferred embodiment . . . the rhenium is present in an amount ranging from about 0.2 to about 5 millimoles of rhenium per kilogram of total catalyst” (Lauritzen 2:6–12). 3. Figure 1 of Lauritzen is reproduced below: Figure 1 of Lauritzen depicts the beneficial effects of rhenium plus sulfur which are indicated by the highlighted area between the two curves A and C to the right of their crossover point. It can be seen from the Figure Appeal 2018-002067 Application 12/116,905 5 that the use of rhenium plus sulfur provides not only an increase in the absolute value of the initial selectivity obtained at optimum cesium concentration, but also a significantly improved initial selectivity of the catalyst at high cesium concentrations e.g., 300 ppm cesium and over when compared to catalysts containing no rhenium. (Lauritzen 21:19–28). 4. Table I of the Matusz Declaration5 is reproduced below: Table I shows that Catalysts A and C have a significantly higher initial selectivity than catalysts 7-24 and 7-26 of Lauritzen. Furthermore, to the extent that any such difference in initial selectivity may be attributable to the differing amount of silver present, a comparison of Catalysts A and C may be made with Comparative Catalysts G and I, which are compositionally similar in all other respects besides silver content to catalysts 7- 26 and 7-24, respectively. (Matusz Decl. ¶ 6). 5 Declaration of Marek Matusz, dated May 24, 2016. Appeal 2018-002067 Application 12/116,905 6 Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Prima facie obviousness can be rebutted by presenting evidence of secondary considerations and when such evidence is submitted, all of the evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472–73 (Fed. Cir. 1984). Analysis Prima facie obviousness Appellant does not dispute the Examiner’s determination that the claims are prima facie obvious in this appeal, so we need not address that issue. Secondary Considerations Appellant contends “[a]s discussed in a previous response and in the Declaration . . . it can be seen that the increase in initial selectivity achieved in the present invention is quite significant” (Br. 5). Appellant contends “such an improvement has practical significance in that an increase in initial selectivity of even 1 % can potentially equate to increased revenue of several millions of dollars per year for a large scale ethylene oxide plant” (Br. 5). We agree with Appellant. Relative to our previous decision, the Matusz Declaration performs a comparison to the closest prior art of Example 7-26 of Lauritzen. The Matusz Declaration, relying on Table 1 (FF 4), states “it can be seen that Catalysts A and C have a significantly higher Appeal 2018-002067 Application 12/116,905 7 initial selectivity than catalysts 7-24 and 7-26 of Lauritzen” (Matusz Decl. ¶ 6). The Matusz Declaration states neither 7-24 nor 7-26 of Lauritzen come close to achieving a comparable level of initial selectivity to that of Catalysts A and C of the present application. Likewise, neither do Comparative Catalysts G or I. Due to this substantial difference, a person having ordinary skill in the art could not have predicted such an increase in initial selectivity based upon Lauritzen. (Matusz Decl. ¶ 7). The Matusz Declaration states that “[s]uch an improvement in initial selectivity was surprising and unexpected” (Matusz Decl. ¶ 8). In addition, the Matusz Declaration states the “substantial increase in initial selectivity has practical significance as it can potentially equate to an increased revenue of several millions of dollars per year for a large scale ethylene oxide plant, depending upon the price of ethylene” (Matusz Decl. ¶ 9). In response, the Examiner has not provided any explanation as to why the result would have been expected. “[W]hen an applicant demonstrates substantially improved results, as Soni did here, and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). The Examiner has not provided any persuasive basis to question the Matusz Declaration’s comparative data and assertion that the demonstrated results were unexpected. Conclusion of Law (i) The evidence of record supports the Examiner’s conclusion that Lauritzen renders obvious an olefin catalyst “wherein the quantity of the rhenium promoter deposited on the carrier is greater than 2 mmole/kg” as required by claim 1. Appeal 2018-002067 Application 12/116,905 8 (ii) However, Appellant has provided evidence of presented evidence of secondary considerations, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness. SUMMARY In summary, we reverse the rejection of claim 1–5 and 7–16 under 35 U.S.C. § 103(a) as obvious over Lauritzen. REVERSED Copy with citationCopy as parenthetical citation