Ex Parte Eyman et al

Board of Patent Appeals and Interferences

Jun 9, 2009

10371188 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DARRELL P. EYMAN
and CHRISTOPHER BROOKS
____________

Appeal 2008-005627
Application 10/371,188
Technology Center 1700
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Decided:1 June 09, 2009
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Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005627
Application 10/371,188

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-20 (Final Office Action, mailed Feb. 27,
2007). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE

Claim 1, the sole independent claim, is illustrative of the subject
matter on appeal, and is reproduced from the Claims Appendix to the Appeal
Brief (“App. Br.”), filed Aug. 13, 2007:
1. A catalyst precursor comprising a support phase impregnated
with one or more elemental transition metals, wherein:

(a) the support phase is formed by dispersion of a monolayer on the
surface of a high surface area alumina support; and

(b) the monolayer comprises XOn:Y02, where (1) XOn, is a redox
active metal oxide and n is either 1.5, 2, 2.5, or 3 depending on the oxidation
number of X, and (2) YO2 is a redox inactive metal oxide.

The Examiner relies on the following evidence to establish
unpatentability (Supplemental Examiner’s Answer (“Ans.”), mailed Apr. 25,
2008).
Wood 4,748,145 May 31, 1988
Appellants request review of the rejection of claims 1-20 under 35
U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35 U.S.C. §
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Appeal 2008-005627
Application 10/371,188

103(a) as unpatentable over Wood. (App. Br. 102; Reply Brief (“Rep. Br.”),
filed May 22, 2008, 11).
ISSUE
Based on the contentions of the Examiner and the Appellants, the sole
issue presented for our review is: have Appellants shown reversible error in
the Examiner’s finding that Wood discloses a catalyst precursor wherein the
monolayer comprises both a redox active metal oxide and a redox inactive
metal oxide as claimed in claim 1?
We answer this question in the affirmative.
FINDINGS OF FACT
The Examiner finds that Wood discloses a list of eight “typical
precursor metal alkoxides.” (Ans. 4 (citing Wood, col. 4, ll. 42-45).) The
Examiner finds that the list includes tantalum and niobium oxides, which
meet the claim limitation of “redox active metal oxides,” and titanium oxide,
which meets the claim limitation of a “redox inactive metal oxide.” (Ans.
4.) The Examiner relies on Wood’s disclosure that “mixtures of the metal
alkoxides may be employed” for a finding of anticipation. (Id. (citing
Wood, col. 4, ll. 48-49).) Alternatively, the Examiner maintains that it
would have been obvious to “one of ordinary skill in the art to determine
suitable combinations of metal alkoxides to employ from the list.” (Ans. 4.)
Appellants dispute the Examiner’s finding that the claimed “redox
active metal oxide” reads on tantalum oxide or niobium oxide. (Rep. Br.
14.) According to Appellants, the Examiner’s finding is based on an

2 The Examiner has withdrawn the rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph (Ans. 2), thereby rendering moot Appellants’
request for review of this ground of rejection.
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Appeal 2008-005627
Application 10/371,188

erroneous assumption that tantalum oxide and niobium oxide have similar
properties to vanadium oxide because they are all Group VB metals. (Id.
(quoting Ans. 4).) Appellants assert that “[i]t is well known in the field of
inorganic chemistry that tantalum oxide and niobium oxide are stable
materials that are not redox active in the temperature ranges employed in
either Wood . . . or in the instant application.” (Rep. Br. 14.)
The Specification contains a list of terms and their definitions (Spec.
10-13) which includes the following:
A “redox active metal oxide” undergoes reduction and
oxidation under steam reforming conditions described
hereinafter. Redox active metal oxides include, but are not
limited to, manganese (III) oxide (Mn2O3), vanadium(V) oxide
(V2O5), cerium(IV) oxide (CeO2), molybdenum(VI) oxide
(MoO3), and oxides of the lanthanides such as praseodymium
(Pr), neodymium (Nd), gadolinium (Gd), and cerium (Ce).

* * * *

“Steam reforming” is a chemical reaction in which a fuel reacts
with water to generate hydrogen and carbon oxides. Steam
reforming reactions have been described above and examples of
such reactions are provided hereinafter.

Appellants direct us to page 7 of the Specification which describes
steam reforming
methods of making catalysts of the instant invention by
reducing related precursors through contact with a (1)
hydrocarbon feed in situ in a reactor (2) hydrogen gas-rich
stream at a temperature of between about 300° C to around
600° C (3) helium gas-rich stream at a temperature of between
about 400° C to around 800° C, or (4) CO gas-rich stream at a
temperature of between about 400° C to around 800° C.

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Appeal 2008-005627
Application 10/371,188

According to Appellants, “Nb2O5 is not redox active at temperatures below
about 900 ºC, and Ta2O5 is not redox active at temperatures below about
1200 ºC. Vanadium oxide, however, is reduced by hydrogen at
temperatures as low as 350 ºC.” (Rep. Br. 14.)
The Examiner has not asserted that Appellants’ statements are
incorrect or provided evidence to establish the contrary.
PRINCIPLES OF LAW
“[A]nticipation is a question of fact, including whether an element is
inherent in the prior art.” In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir.
2009) (citing Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d
1369, 1375 (Fed. Cir. 2006)). Obviousness is a legal question based on
underlying factual findings. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). The Examiner bears the initial burden of establishing a prima facie
case of anticipation or obviousness. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Thus, to meet this burden, the Examiner must provide
some evidentiary support for the factual findings relied upon.
In interpreting claim terms, we rely on the written description for
guidance in ascertaining the scope and meaning of the claims. Phillips v.
AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc).
ANALYSIS
The Specification defines a “redox active metal oxide” as undergoing
reduction and oxidation under steam reforming conditions. In the present
case, the Examiner found that tantalum oxide and niobium oxide met the
claim 1 limitation of a “redox active metal oxide” without any apparent
consideration of whether tantalum oxide and niobium oxide would undergo
reduction and oxidation under the steam-reforming conditions described in
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Appeal 2008-005627
Application 10/371,188

the Specification. Rather, the Examiner merely made an unsupported
assumption that tantalum and niobium oxides would be expected to have
similar redox properties to vanadium oxide. Appellants have provided a
reasoned explanation as to why this assumption is incorrect.
Accordingly, because the Examiner’s rejection is based on an
unsupported factual finding, we cannot sustain the rejection of claims 1-20
under 35 U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35
U.S.C. § 103(a) as unpatentable over Wood.
CONCLUSION
Appellants have identified reversible error in the Examiner’s finding
that Wood discloses a catalyst precursor wherein the monolayer comprises
both a redox active metal oxide and a redox inactive metal oxide as claimed
in claim 1.
The decision of the Examiner rejecting claims 1-20 is reversed.

REVERSED

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