Ex Parte Altwasser et al

Patent Trial and Appeal Board

Jun 21, 2017

13052140 (P.T.A.B. Jun. 21, 2017)

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.
13/052,140 03/21/2011 Stefan Altwasser 074012-0169-US (286422) 5971
123223 7590 06/23/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
CORNO, JAMES A
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
06/23/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN ALTWASSER, CHRISTINE DEIBLER,
ANDREY KARPOV, CORNELIA KATHARINA DOBNER,
BASTIAN EWALD, FRANK ROSOWSKI, and HAGEN WILMER
Appeal 2016-004336
Application 13/052,1401
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 12-19 and 24-29 in the above-identified
application.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is BASF SE. See Appeal
Brief 1, Oct. 8, 2015 [hereinafter Appeal Br.].
2 Final Office Action, Apr. 29, 2015 [hereinafter Final Action]; Examiner’s
Answer, Jan. 25, 2016 [hereinafter Answer],
Appeal 2016-004336
Application 13/052,140
BACKGROUND
Appellants’ invention “relates to a catalyst for gas phase oxidations,
which comprises an inert support and a catalytically active material which
comprises vanadium oxide and titanium dioxide and has been applied
thereto.” Spec.3 1:3-5.
Independent claim 12 is representative:
12. A catalyst for gas phase oxidation comprising an inert
support and a catalytically active material which comprises
vanadium oxide and titanium dioxide and has been applied
thereto, wherein the titanium dioxide has a content of sulfur
compounds, calculated as S, of less than 1000 ppm and a
content of calcium compounds, calculated as Ca, of less than
100 ppm.
Appeal Br. 26. Claim 27 is also independent. See id. at 27.
In the Examiner’s sole pending rejection,4 claims 12-19 and 24-29
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Guckel5 in
view of Soloducha.6 See Final Action 24-29.
Appellants argue claims 12-19 and 24-29 as a group. See Appeal Br.
23-25. Appellants also separately raise pertinent factual issues regarding
claim 17, which also relate to claim 27. See Appeal Br. 14-15; Answer 6-7.7
3 Specification, Mar. 21, 2011 [hereinafter Spec.]
4 The Examiner has withdrawn five other rejections under 35 U.S.C.
§ 102(b) or 103(a). See Answer 6.
5 Guckel et al., WO 2007/134849 A1 (published Nov. 29, 2007). Citations
to Guckel are to U.S. national stage application US 2009/0312562 Al
(published Dec. 17, 2009). See Final Action 24.
6 Soloducha, US 3,368,870 (issued Feb. 13, 1968).
7 Regarding the pending rejection over Guckel in view of Soloducha,
Appellants incorporate their “stated positions as to the findings of Guckel
and Soloducha” from their discussion of the other rejections. Appeal Br. 23.
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Appeal 2016-004336
Application 13/052,140
Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv), we limit our
discussion to claims 12 and 17. Claims 13-16, 18, 19, 24-26, 28, and 29
stand or fall with claim 12, and claim 27 stands or falls with claim 17.
DISCUSSION
The Examiner finds that Guckel teaches a gas phase oxidation catalyst
with an inert support, a catalytically active material comprising vanadium
oxide and titanium oxide, where the titanium dioxide has a sulfur
concentration as low as 140 ppm. See Final Action 24-25 (citing Guckel
23, 102-05). The Examiner also finds that “Guckel’s titanium dioxide
does not contain any calcium.” Id. at 25 (citing Guckel 104-05). Thus,
the Examiner determines that it would have been obvious to use no calcium
in the catalyst disclosed by Guckel. See id. In addition, the Examiner finds
that Soloducha teaches titanium dioxide with calcium in the range of 30^400
ppm. Id. at 25-26. The Examiner determines that a person of ordinary skill
in the art would have been motivated to use titanium dioxide with the
calcium impurity within the range disclosed by Soloducha because this
calcium range “is produced in the titanium dioxide processing and generally
considered the purity of the titanium dioxide.” Id. at 26.
Appellants agree with the Examiner that Guckel “recognizes the
potential advantages in catalytic selectivity for oxidation catalysts based on
titanium dioxide/vanadium dioxide with relatively low sulfur contents.”
Appeal Br. 2; see also Reply Br. 2. However, Appellants argue that Guckel
does not teach the absence of calcium, and Appellants present declaratory
evidence that all titanium ore sources (including the ore identified by
Soloducha) have small amounts of calcium. Appeal Br. 24 (Citing Diana
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Appeal 2016-004336
Application 13/052,140
Carolina Galeano Nunez Decl. 9-10, Apr. 17, 2015). Instead, Appellants
argue that Guckel simply omitted calcium “as an elemental trace metal of
interest for titanium oxidation catalysts.” Appeal Br. 9, 24; see also Reply
Br. 2, 6-7.
We do not find this argument persuasive of reversible error in the
Examiner’s rejection. To the extent that calcium is present in the Guckel
catalyst, Guckel does not recognize calcium as a component of interest in the
catalyst, and it would have been obvious for a person of ordinary skill in the
art to purify the catalyst to remove such impurities or inessential
components.
[A]n applicant “is not entitled to a patent on [an] article which
after being produced has a greater degree of purity than the prod­
uct produced by former methods” unless the purification results
in “properties and characteristics which were different in kind
from those of the known product rather than in degree.”
Aventis Pharma Deutschland GmbHv. Lupin, Ltd., 499 F.3d 1293, 1301-02
(Fed. Cir. 2007) (quoting In reMerz, 25 C.C.P.A. 1314, 97 F.2d 599, 601
(1938)). While Appellants allege that a low sulfur, low calcium catalyst
exhibits improved yield, see Appeal Br. 18, 21; Galeano Nunez Decl. 12-
13; Spec. 14:17-31, this is a difference in degree, and Appellants do not
point to evidence that the reduced calcium results in properties or
characteristics that differ in kind from the prior art.8
8 Although not specifically argued by Appellants, the Examiner has
persuasively shown that this improvement in yield is insufficient evidence of
patentability on the ground of unexpected results. See Answer 6. We also
note that Appellants have not shown that a person of ordinary skill in the art
would not have expected this yield improvement. See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972).
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Appeal 2016-004336
Application 13/052,140
In addition, we note that according to the Specification,
EP 0539878 A2 “states that the secondary Fe, Zn, Al, Mn, Cr, Ca, and Pb
components in the titanium dioxide are not disruptive, provided that the total
amount thereof is not more than 0.5% by weight (as the metal oxide), based
on the amount of the titanium dioxide.” Spec. 2:4-7. Thus, the
Specification indicates that in prior work, calcium was among the potential
contaminants of concern in titanium dioxide catalysts, where the content was
kept below a certain level so as not to be disruptive. In light of this, a person
of ordinary skill in the art would have had reason to optimize the calcium
level in a catalyst containing titanium as an active material. See In re
Boesch, 617 F.2d, 272, 216 (CCPA 1980) (“[DJiscovery of an optimum value
of a result effective variable ... is ordinarily within the skill of the art.”)
Appellants also argue that Soloducha teaches just one titanium oxide
composition used for pigments, and that the Examiner has not established
why a skilled artisan would use Soloducha’s calcium concentration for the
production of a catalyst. See Reply Br. 3-4. Appellants further argue that
“though Soloducha teaches a titanium dioxide [catalyst] with the recited
content of calcium can be prepared, Soloducha produces this oxide with
washings of sulfuric acid.” Appeal Br. 23; see also id. at 17. Yet, Appellants
argue, “Guckel teaches a person of ordinary skill in the art of oxidation
catalysts with titanium oxide needs to stay away from sulfuric acid.” Id. at
23; see also id. at 17; Reply Br. 5-6. According to Appellants, the Examiner
has not established how the teachings of Guckel and Soloducha would have
been combined to produce a catalyst with both low calcium and low sulfur.
See Appeal Br. 17, 23; Reply Br. 5-6.
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Application 13/052,140
We do not find these arguments persuasive of reversible error. The
Examiner cites Soloducha for its teaching that calcium is a known
contaminant of titanium oxide and that it was known in the art to reduce the
amount of this impurity to less than 100 ppm. See Final Action 25-26; see
also Answer 7. We also note, as Appellants acknowledge, see Appeal Br. 8,
that according to Guckel, the low sulfur catalyst may be prepared from either
low sulfur raw materials, or “[alternatively, it is also possible to proceed
from TiCE materials having a relatively high sulphur . . . content, and to
establish the range required in accordance with the invention by a suitable
washing.” Guckel ^ 19. Thus, Appellants have not persuaded us that there
is any contradiction in using a high-sulfur process to produce a titanium
dioxide material for use in the process disclosed by Guckel.
For the above reasons, Appellants have not persuaded us of reversible
error in the Examiner’s rejection of claim 12. Thus, we affirm the
Examiner’s rejection of claims 12-16, 18, 19, 24-26, 28, and 29.
Claim 17 requires that “at least a portion of the titanium dioxide has
been treated with an aqueous medium under hydrothermal conditions.”
Appeal Br. 26. The Examiner determines that claim 17 recites a product-by­
process limitation, and finds that the resulting product is not structurally
distinguishable from the prior art. See id.; see also Answer 7 (“Appellant
has presented no evidence that the resulting catalyst is any different than one
produced, for example, by leaching at temperatures below 80 °C or 1
atmosphere, or by the use of high-purity precursors.”).
Appellants argue that claim 17 does not recite a product-by-process
limitation, because it “actually defines the recited titanium oxide in terms of
its physical nature.” Appeal Br. 14. According to Appellants, the
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Application 13/052,140
Specification shows that a hydrothermal treatment was successful in
reducing sulfur and calcium concentrations in titanium oxide. See id. at 15
(sulfur reduced from 2400 ppm to 360 ppm, and calcium reduced from 240
ppm to 70 ppm). We do not find this argument persuasive of reversible
error, because the Examiner has shown that the prior art teaches a catalyst
that is substantially the same as the catalyst resulting from a hydrothermal
treatment according to the Specification. This is sufficient to establish a
prima facie case of obviousness with respect to claim 17. See In re
Fessmann, 489 F.2d 742, 744 (CCPA 1974) (“The Patent Office bears a
lesser burden of proof in making out a case of prima facie obviousness for
product-by-process claims because of their peculiar nature” than when a
product is claimed in the conventional fashion.) The burden has therefore
shifted to Appellants “to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.” In re
Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985). Because Appellants have not
persuasively made this showing, we affirm the Examiner’s rejection of claim
17. For the same reasons and the reasons expressed above with respect to
claim 12, we also affirm the Examiner’s rejection of claim 27.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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