Ex parte CHITNIS et al.

Board of Patent Appeals and Interferences

Sep 17, 1998

08091428 (B.P.A.I. Sep. 17, 1998)

Application for patent filed July 15, 1993. According1
to appellants, this application is a division of Application
07/918,772, filed July 27, 1992, now U.S. Patent No.
5,258,341, issued November 2, 1993; which is a continuation of
Application 07/636,834, filed January 2, 1991, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GIRISH K. CHITNIS and
JOCELYN A. KOWALSKI
__________
Appeal No. 96-2479
Application 08/091,4281
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and OWENS, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2479
Application No. 08/091,428
2
This is a decision on an appeal from the refusal of the
examiner to allow claims 1 and 3 through 10 as amended
subsequent to the final rejection. These are all of the
claims remaining in the application.
The subject matter on appeal relates to a process for
cracking a gas oil comprising contacting the gas oil under
sufficient cracking conditions with a catalyst comprising
yttrium containing ultrastable zeolite Y wherein the catalyst
contains no intentionally added rare earth ions and wherein
the zeolite Y contains no more than about 0.02 weight percent
of rare earth elements. This appealed subject matter is
adequately illustrated by independent claim 1 which reads as
follows:
1. A process for cracking a gas oil, said process
comprising contacting said gas oil under sufficient cracking
conditions with a catalyst comprising yttrium containing
ultrastable zeolite Y, said zeolite Y being essentially free
of rare earth ions, wherein said cracking conditions include a
temperature of from about 300EC to about 700EC, a pressure of
from about 0.1 atmosphere (bar) to about 30 atmospheres and a
weight hourly space velocity of from about 0.1 to about 20,
wherein said catalyst contains at least 0.1 wt % yttrium,
wherein said catalyst contains no intentionally added rare
earth ions, and wherein said zeolite Y contains no more than
about 0.02 wt % of rare earth elements as measured by
elemental analysis.
The references relied upon by the examiner as evidence of
Appeal No. 96-2479
Application No. 08/091,428
As correctly indicated by the appellants, a standard2
definition of "rare earth" reflects that yttrium in fact is
"not a rare earth element, [but] is found associated with the
rare earths and is only separated with difficulty" (Hawley's
Condensed Chemical Dictionary, 11th ed.)
3
obviousness are:
Gladrow et al. 4,287,048 Sep. 1, 1981
(Gladrow '048)
Gladrow et al. 4,289,606 Sep. 15, 1981
(Gladrow '606)
The claims on appeal are rejected under 35 U.S.C. § 103
as being unpatentable over Gladrow '048 or Gladrow '606.
We cannot sustain this rejection.
Each of the Gladrow patents teaches a catalytic cracking
process which employs a catalyst comprising ultrastable
zeolite Y which is disclosed as being substantially free of
rare earth metals including yttrium. According to Gladrow,2
substantially rare earth free means that the rare earth metal
content of the zeolite will be less than about 1 weight
percent. In these respects, see lines 54 through 64 in column
2 of Gladrow '048 and lines 52 through 62 in column 2 of
Gladrow '606.
It is the examiner's basic position that "the catalyst
Appeal No. 96-2479
Application No. 08/091,428
Our position on this matter is reinforced by the3
previously noted definition of "rare earth" which evinces that
yttrium is only separated with difficulty from rare earths.
4
teaching[s] of the [Gladrow] patents overlap the teachings
instantly claimed" (answer, page 3). We recognize that each
of these references teaches a cracking catalyst comprising
ultrastable zeolite Y which may contain up to about 1 weight
percent of yttrium. However, there is simply no basis for
concluding that Gladrow's catalyst necessarily and inherently
contains yttrium and rare earth elements within the weight
percent ranges defined by appealed claim 1, namely, at least
0.1 weight percent yttrium and no more than about 0.02 weight
percent of rare earth elements.
Stated otherwise, the record before us reflects that the
aforementioned weight percent ranges defined by the
appellants' independent claim would be achieved only by the
deliberate manipulation of the yttrium content and the rare
earth elements content of Gladrow's catalyst (rather than by
the necessary and inherent presence of yttrium and rare earth
impurities that may coexist with this catalyst). As3
correctly observed by the appellants and not contested by the
Appeal No. 96-2479
Application No. 08/091,428
5
examiner, the Gladrow patents contain no teaching or
suggestion of such manipulation.
In light of the foregoing, we cannot sustain the
examiner's section 103 rejection of claims 1 and 3 through 10
as being unpatentable over Gladrow '048 or Gladrow '606.
Appeal No. 96-2479
Application No. 08/091,428
6
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
tdc
Appeal No. 96-2479
Application No. 08/091,428
7
Alexander J. Mc Killop
Mobil Oil Corporation
Office of Patent Counsel
3225 Gallows Road
Fairfax, VA 22037