Ex Parte Birke et al

Board of Patent Appeals and Interferences

Oct 2, 2009

10937591 (B.P.A.I. Oct. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER BIRKE, HANS-DIETER NEUBAUER,
and DOLF VAN DER ZEIJDEN
____________

Appeal 2009-003651
Application 10/937,591
Technology Center 1700
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Decided: October 2, 2009
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
CHUNG K. PAK, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10. Claim 1 is
illustrative:
1. A particulate catalyst containing at least one pyrophoric
metal in reduced form, a metal oxide carrier and paraffin wax,
wherein the catalyst particles have a pore volume in the range
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of from 0.2 to 0.8 cm3/g and the paraffin wax is present in an
amount in the range of from 30 to 95 vol%, basis the pore
volume of the catalyst particles, and wherein said paraffin wax
is gently mixed with said catalyst particles for a time sufficient
to absorb substantially the whole amount of paraffin wax into
the pores of said catalyst particles.

The Examiner relies upon the following references as evidence of
obviousness:
Kozlowski 3,453,217 July 1, 1969
Darcissac 6,294,498 Sept. 25, 2001

Appellants’ claimed invention is directed to a particulate catalyst
containing a pyrophoric metal in reduced form, a metal oxide carrier and
paraffin wax. The catalyst particles have the recited pore volume, and the
claims are written in product-by-process format, reciting that the wax is
gently mixed with the catalyst particles for a sufficient time to absorb
substantially the whole amount of the wax into the pores.
Appealed claims 1-10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Darcissac in view of Kozlowski.
Appellants submit separate arguments only for claims 9 and 10.
Accordingly, claims 2-8 stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of §103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
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The appealed claims are written in product-by-process format and,
therefore, certain principles of patent jurisprudence apply. It is axiomatic
that the patentability of a product does not depend on its method of
production. In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969). When the
prior art discloses a product which reasonably appears to be either identical
with or only slightly different than a product claimed in a product-by-
process claim, a rejection based on either § 102 or § 103 of the statute is
eminently fair and acceptable. As a practical matter, the USPTO is not
equipped to manufacture products by the myriad of processes put before it
and then obtain prior art products and make physical comparisons therewith.
In re Brown, 459 F.2d 531, 535 (CCPA 1972). If the product in a product-
by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a
different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
In the present case, there is no dispute that Darcissac, citing
Kozlowski, evidences that it was known in the art to, like Appellants,
impregnate porous catalyst particles with paraffin wax. As pointed out by
the Examiner, Kozlowski expressly teaches that a substantial portion of the
catalyst’s pores may be filled with the paraffin wax (See col. 3, ll. 6-17).
Kozlowski also teaches that the amount of wax impregnated in the pores can
be controlled by controlling the amount of time the particles are immersed in
the wax. (See col. 4, ll. 23-35). Accordingly, based on the disclosures of
Darcissac and Kozlowski, the burden is on Appellants to establish an
unobvious, patentable distinction between catalyst particles within the scope
of the appealed claims, which absorb substantially the whole amount of wax,
and the catalyst particles fairly taught by the prior art, wherein a substantial
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portion of the pores are filled or partially filled with the wax. No such
evidence, however, has been proffered by Appellants.
Appellants contend that the immersion impregnation process of
Kozlowski is different from the process used by Appellants which entails
gently mixing the catalyst particles in molten wax. However, Appellants
have not presented the requisite evidentiary support for the argument that
wax-impregnated catalytic particles produced by gently mixing the particles
in molten wax are different in any way than catalyst particles produced by
the Kozlowski method of immersing the particles in molten wax to partially
or entirely impregnate the pores. While Appellants maintain that the
particulate catalysts of the claimed invention are “protected from undue
oxidation, have excellent flow properties and do not tend to cake or clog”
(Reply Br. 2, second para.), Appellants have proffered no comparative data
contrasting the particles encompassed by the appealed claims and the
particles produced by the Kozlowski method. It is well settled that counsel’s
arguments in the brief are no substitute for objective evidence. Nor have
Appellants demonstrated any difference between the claimed catalyst
particles and the Kozlowski particles with respect to a surface coating of
wax.
Concerning claims 9 and 10 which call for the wax containing an
organic sulfur compound, Appellants acknowledge that Darcissac teaches
that the catalyst particles may be presulfurated with organic sulfur
compounds, and we agree with the Examiner that it would have been a
matter of obviousness for one of ordinary skill in the art to introduce the
organic sulfur compounds via impregnation with the paraffin wax.
Appellants have demonstrated no particular, nonobvious advantage
associated with delivering the organic sulfur compound with the
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impregnated wax for effecting the known reaction of the organic sulfur
compound with the catalytic metal (See page 6 of Specification, first para.).
The combination of two known steps into one step, namely, introducing an
organic sulfur compound in paraffin wax to the catalytic particles, would
have been an obvious matter of expediency for one of ordinary skill in the
art.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

kmm

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