Ex Parte Lopez-Sanchez et al

Patent Trial and Appeal Board

Sep 25, 2017

13393560 (P.T.A.B. Sep. 25, 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.
13/393,560 03/01/2012 Jose Antoniol Lopez-Sanchez 68414-US-PCT 1042
109 7590 09/27/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
WRIGHT, SONYA N
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE ANTONIOL LOPEZ-SANCHEZ,
NIKOLAOS DIMITRATOS, ROBERT L. JENKINS,
ALBERT F. CARLEY, DAVID J. WILLOCK, STUART H. TAYLOR,
GRAHAM JOHN, and MOHD HASBI AB. RAHIM1
Appeal 2015-007164
Application 13/393,560
Technology Center 1600
Before TAWEN CHANG, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
process for the production of an alcohol, which have been rejected as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as University College Cardiff
Consultants Limited and Dow Global Technologies LLC. (Appeal Br. 2.)
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STATEMENT OF THE CASE
According to the Specification, activation and oxidation of lower
alkanes into useful oxygenates has long been of interest because lower
alkanes are the main constituents of natural gas, which is inexpensive and
abundant. (Spec. 1.) Further according to the Specification, “activation of
lower alkanes usually requires severe conditions using heterogeneous
catalysts (high temperature > 500 -C and potentially pressure) because of
their chemical inertness,” but “under these reaction conditions the . . .
oxygenated products are not stable and the significant formation of carbon
oxides (CO and CO2) is usually observed at relevant conversions.” (Id.)
The Specification states that, “[therefore, it is . . . desirable to work at
milder conditions” and that “[one] solution for the activation of methane at
lower reaction temperatures is to work in the liquid phase instead of the gas
phase.” (Id.) The invention further relates to “processes and catalysts that
convert Ci-C8 hydrocarbons to a corresponding alcohol, such as methane to
methanol, using a supported heterogeneous gold catalyst.” (Id.)
Claims 1, 4—8, and 10—15 are on appeal. Claim 1 is illustrative and
reproduced below:
1. A process for the production of an alcohol, comprising:
contacting hydrogen peroxide and a C1-C8 hydrocarbon in the
presence of a heterogeneous catalyst in a liquid solution at a
temperature within a range of from 30C to 90C and at a total
system pressure of from 1 atmosphere to 140 atmospheres to
convert the C1-C8 hydrocarbon to a corresponding C1-C8
alcohol, wherein the heterogeneous catalyst comprises gold on a
solid support that is composed of carbon, titania, ceria, iron
oxide, copper oxide, silica, alumina, or a combination thereof.
(Appeal Br. 8 (Claims App.).)
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The Examiner rejects claims 1, 4—8, and 10—15 under pre-AIA 35
U.S.C. § 102(b) as anticipated by Shan.2 (Ans. 2.)
DISCUSSION
Issue
The Examiner finds that Shan teaches a process for producing
alcoholic derivatives by oxidizing alkanes with hydrogen peroxide, wherein
“[t]he catalyst can be gold on a solid support,” “[t]he temperature is zero
degrees Celsius to 200 degrees Celsius,” and “[t]he pressure is 1 bar to 30
bars.” (Ans. 2.) Appellants contend that Shan is not an enabling
anticipatory reference because a skilled artisan reading Shan would need to
make “[a] myriad of choices . . . from among the many choices available
within the bounds of [Shan], with very little guidance in making most of the
choices.” (Appeal Br. 4.)
Appellants do not separately argue claims 4—7 and 10—15. We thus
limit our analysis to claims 1 and 8 as representative. 37 C.F.R.
§ 41,37(c)(l)(iv). The issue with respect to this rejection is whether a
preponderance of the evidence of record supports the Examiner’s finding
that Shan anticipates claims 1 and 8.
Findings of Fact
1. Shan teaches “selective oxidation of hydrocarbons and other
organic compounds” using a three-dimensional, stable, mesoporous
inorganic oxide material and “at least one catalytically active metal selected
2 Shan et al., US 2005/0187410 Al, published Aug. 25, 2005.
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from the group consisting of one or more transition metal and one or more
noble metal.” (Shan Abstract; id. H 3, 9, 17.)
2. Shan teaches that the starting material for its inorganic oxide
support may comprise
one or more inorganic oxides such as silicon oxide or aluminum
oxide, with or without additional metal oxides. The silicon or
aluminum atoms may be replaced in part by catalytically active
transition metal atoms such as titanium, vanadium, copper,
zirconium, manganese, zinc, chromium, molybdenum, tungsten,
nickel, cobalt and iron and the like.
{Id. ^21; see also id. at claims 2 & 22 (same listed group of transition
metals), claim 6 (titanium), claim 10, 11, & 17 (silicon oxide or aluminum
oxide); claim 42 (titanium, vanadium or chromium), 120 (preferred silica-
containing catalyst support).) Shan teaches that the manufacturing process
for its inorganic oxide support results in “transition metals homogeneously
coat[ing] the internal surfaces of the mesopores.” (Id. 126.)
3. Shan teaches that “[t]he inorganic oxide support, with or
without transitional metal, can be further modified by incorporation therein
of a catalytically effective amount of one or more noble metals such as gold
(Au), silver (Ag), platinum (Pt), palladium (Pd), iridium (Ir), rhodium (Rh),
ruthenium (Ru), rhenium (Re) or osmium (Os).” (Id. ]f27; see also id. at
claims 3, 26, & 43 (same listed group of noble metals), claims 4 & 29 (gold
or silver).)
4. Shan teaches that its catalyst can be used in selective oxidation
processes including
[pjartial oxidation of alkanes to produce ketonic or alcoholic
derivatives. Suitable alkanes include propane, butane, pentane,
cyclohexane, and the like. Suitable oxidizing agents can include
oxygen, oxygen-containing gas, hydrogen peroxide, nitrogen
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oxides, organic hydroperoxides, and organic per-acids. . . .
Alcohol production normally is carried out at a temperature of
from about 60° C. to about 450° under a pressure of up to about
60 bars. The reaction can be carried out in the gas phase, liquid
phase, or mixed phases.
(Id. 132; see id. at claims 36 & 37.)
Analysis
Except as otherwise noted, we adopt the Examiner’s findings of fact
and reasoning regarding the scope and content of the prior art (Final Act. 2—
3; Ans. 2—5; FF1—FF4) and agree with the Examiner that claims 1 and 8 are
anticipated by Shan. We address Appellants’ arguments below.
Claim 1
Appellants contend that Shan does not anticipate claim 1 because “a
skilled artisan who has [Shan] in hand must make several choices with
minimal guidance, if any, from [Shan]” to arrive at the claimed invention.
(Appeal Br. 4.) Appellants first contend that “the skilled artisan must select
which process among . . . named processes merits attention,” because Shan
discloses “[p]artial oxidation of alkanes to produce alcoholic derivatives” as
only of several processes for which its catalytic material is useful. (Id.;
Reply Br. 3.)
We are not persuaded. Disclosing multiple embodiments does not
preclude a reference from anticipating a claimed invention that would
otherwise be anticipated by any particular one of the embodiments.3 “The
3 Appellants argue for the first time in the Reply Brief that Shan teaches
away from using its catalyst to produce an alcohol, because Shan teaches
that “its catalyst would serve to both convert the alkane to an alcohol. . . and
then the alcohol to an aldehyde . . . .” (Reply Br. 3 4.) Appellants have not
explained why they could not have raised this argument in the Appeal Brief,
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law of anticipation does not require that the reference ‘teach’ what the
subject [application] teaches. Assuming that a reference is properly ‘prior
art,’ it is only necessary that the claims under attack . . . ‘read on’ something
disclosed in the reference, i.e., all limitations of the claim are found in the
reference.” Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983). Regarding Appellants’ argument that the prior art presents too many
choices, a disclosure that allows one skilled in the art to “at once envisage
each member of [a] limited class” describes each member of the class “as if
[the reference] had drawn each structural formula or had written each
name.” In re Petering, 301 F.2d 676, 681—82 (CCPA 1962) (disclosure of
small genus, e.g., 20 members, can anticipate claim directed to any single
member of the genus). Also, “a presumption arises that both the claimed
and unclaimed disclosures in a prior art patent are enabled.” Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003).
Appellants next contend that, even if the skilled artisan chooses to use
Shan’s catalytic material to oxidize alkanes to make an alcohol, the skilled
artisan must still make choices with respect to catalyst compositions and
and the arguments are thus waived. 37 C.F.R. § 41.41(b)(2)); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (arguments
not timely presented in the principal Brief will not be considered in a Reply,
absent a showing of good cause why the argument could not have been
presented in the principal Brief). In any event, we are not persuaded. Shan
explicitly states that its catalyst can be employed to partially oxidize alkanes
to produce alcoholic derivatives. (FF4.) Appellants have provided no
persuasive evidence why this disclosure is non-enabling — e.g., why a skilled
artisan would not be able to control reaction parameters to selectively
produce alcoholic derivatives rather than further oxidizing the alcohol
derivative products. “Attorneys’ argument is no substitute for evidence.”
Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
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process conditions. (Appeal Br. 4.) Appellants point out that (1) claim 1
specifies that the reaction occurs in liquid phase while Shan does not
indicate a preference between gas, liquid, or mixed phases; (2) claim 1
specifies a reaction temperature of 30 -C to 90 -C while Shan teaches a
temperature of 60 -C to 450 -C and “provides no guidance as to the lower
temperature range being preferred”; and (3) claim 1 specifies pressure of
from 1 atm to 140 atm, or 101.3 KPa to 14,182 KPa, while Shan provides
for pressure of up to 60 bars, or 6,000 KPa. {Id. at 4—5.)
We are not persuaded. We agree with Appellants that prior art
reaction temperature or pressure ranges that overlap the claimed ranges do
not necessarily anticipate. Atofina v. Great Lakes Chem. Corp., 441 F.3d
991, 998—1000 (Fed. Cir. 2006) (finding prior art disclosure of temperature
range of 150 to 350 °C and oxygen to methylene chloride molar ratios of
0.001 percent to 1.0 percent did not anticipate claimed temperature range of
330 to 450 °C and molar ratios of 0.1 percent to 5.0 percent). Instead, the
relevant issue is whether “the prior art. . . describes the claimed range with
sufficient specificity such that a reasonable fact finder could conclude that
there is no reasonable difference in how the invention operates over the
ranges.” Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865, 869 (Fed.
Cir. 2015). We find that Appellants here, like the appellant in Ineos, have
not persuasively argued that the claimed temperature and pressure ranges are
“critical to the operability of the invention.” Id.
Appellants argue that “[i]t is well known in the art that a catalyst
which works for one process under one set of conditions does not mean that
it will work under a different set of conditions or a different process.”
(Reply Br. 4.) Appellants’ attorney argument regarding generic catalysts
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and processes, however, cannot substitute for evidence that the claimed
process for producing alcohol would work differently over the temperature
and pressure ranges disclosed in Shan as compared to the claimed ranges.
Johnston, 885 F.2d at 1581. Appellants also argue that “Table 1 of the
[Specification] shows the greatest amount of methanol and the greatest
percent selectivity to methanol at a temperature of 50 °C and a pressure of
60 atmosphere (607.8 KPa).” (Appeal Br. 4—5 (citation omitted).)
Appellants’ claims, however, are not limited to the reaction temperature and
pressure of 50 °C and 60 atmosphere. Finally, while Appellants did not
specifically point to this disclosure, we note that the Specification does state
that at high temperatures of > 500 -C oxygenated products are not stable.
(Spec. 1.) The temperature range disclosed in Shan, however, similarly does
not exceed 500 -C.
With respect to the pressure range, Appellants only argue that “most
of the pressure range in pending Claim 1 lies outside and above (higher) than
the range used by [Shan].” (Appeal Br. 5.) The fact the claimed pressure
range (101.3 KPa to 14,128 KPa) is broader than and almost encompasses
the range disclosed in Shan (up to 6,000 KPa) does not suggest that the
claimed reaction would operate differently within the prior art range when
compared to the claimed range, and in fact the opposite. Titanium Metals
Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (holding
that “when, as by a recitation of ranges or otherwise, a claim covers several
compositions, the claim is ‘anticipated’ if one of them is in the prior art”).
Appellants contend that Shan does not contain any examples of
alcohol production. (Appeal Br. 5.) We are not persuaded. Shan discloses
that its catalyst may be used in selective oxidation processes including
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partial oxidation of alkanes to produce alcoholic derivatives. (FF4.) “[A]
prior art reference is relevant for all that it teaches to those of ordinary skill
in the art,” not simply what is described in the examples. In re Fritch, 972
F.2d 1260, 1264 (Fed. Cir. 1992).
Appellants contend that Shan discloses hydrogen peroxide in a list
with a number of other oxidants and provides no guidance that would allow
a skilled artisan “to select hydrogen peroxide as an oxidant of choice in
partial oxidation of an alkane to an alcoholic derivative.” (Appeal Br. 5.)
Likewise, Appellants contend that Shan cites nine noble metals and twelve
transition metals as suitable for use in its catalytic material, and provides no
disclosure that would “guide[] a skilled artisan to use only a noble metal in
general or gold in particular as a single metal.” (Id.) Appellants contend
that Shan only specifically discloses using silicon oxide and aluminum oxide
in the mesoporous material and does not teach or suggest using carbon,
titania, ceria, iron oxide, or copper oxide as support. (Id.) Appellants argue
that “[a] specifically claimed combination of elements is not taught by a
reference which teaches broad classes of various elements from which the
practitioner must pick and choose some elements and ignore others
altogether, in order to arrive at the claimed combination.” (Reply Br. 2—3,
4.)
While we agree with Appellants that this is not simply a situation
where a prior art reference discloses a genus and the claim at issue recites a
species of that genus, we are not persuaded that this means that Shan does
not anticipate claim 1. We find Wrigley to be particularly instructive on this
point. WM. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356
(Fed. Cir. 2012). In Wrigley, the claim at issue recited a composition
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comprising among other things “about 0.1 [%] to about 10% flavoring agent
wherein the flavoring agent comprises [WS-23] and menthol.” Id. at 1359
(Fed. Cir. 2012). The prior art reference relates to oral compositions and
lists several categories of essential and optional (or nonessential)
components, where a ‘“cooling agent or combination of cooling agents’ is
. . . a ‘preferred nonessential’ component.” Id. at 1359-1360. The prior art
reference discloses WS-23 as one of three “‘particularly preferred cooling
agents’” and “also discloses menthol as one of 23 listed flavoring agents that
can be used in the claimed compositions.” Id. at 1360.
The Federal Circuit in Wrigley found that the prior art reference
anticipated the claim at issue and distinguished NetMoneyIN, Inc. v.
Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), which Appellants cite as
support. Id. at 1361. In particular, the Federal Circuit explained that, in
contrast to the reference in NetMoneyIN, which disclosed “two separate
payment protocols, each of which contained only a subset of the components
claimed in the patent at issue,” the prior art reference in Wrigley envisions
using the claimed components in a single product. Id. at 1361. The Federal
Circuit explained:
Shahidi specifically discloses WS—23 as a coolant and menthol
as a flavoring agent. The question for purposes of anticipation is
therefore whether the number of categories and components in
Shahidi was so large that the combination of WS—23 and menthol
would not be immediately apparent to one of ordinary skill in the
art. See Perriconev. Medicis Pharm. Corp., 432 F.3d 1368,1377
(Fed.Cir.2005) (distinguishing cases in which a prior art
reference discloses a genus from those in which it discloses a
number of species as part of a list).
Id.
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Here, as in Wrigley, Shan envisions using the claimed components—
hydrogen peroxide, gold, and solid support composed of, e.g., silica or
alumina—in a single process for the production of an alcohol. (FF1—FF4.)
We further find that the number of categories and components in Shan was
not so large that the combination of hydrogen peroxide, gold, and a solid
support composed of, e.g., silica and alumina, would not be immediately
apparently to a skilled artisan. Shan lists hydrogen peroxide among six
example molecule or types of molecules useful as oxidizing agent in its
process of oxidizing alkanes to alcohols. (FF4.) Likewise, gold is among
the nine examples of noble metals Shan teaches as suitable for inclusion in
its catalyst material and one of only two (along with silver) such metals
recited in Shan’s dependent claims 4 and 29. (FF3.) Finally, Shan teaches a
preferred porous silica-containing catalyst support. (FF2.)
Appellants contend that Shan provides no disclosure that would
“guide [] a skilled artisan to use only a noble metal in general or gold in
particular as a single metal.” (Appeal Br. 5.) Nothing in claim 1, however,
requires that only a noble metal be used as a catalytic material or that gold
be used as “a single metal.” In fact, claim 1 recites that the heterogeneous
catalyst comprises gold on a solid support composed of carbon and/or one or
more inorganic oxides. {Id. at 8 (Claims App.).) ‘“Comprising is a term of
art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim.’” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1345-1346 (Fed. Cir. 2003).
Likewise, Appellants contend that Shan only specifically discloses
using silicon oxide and aluminum oxide in the mesoporous material and
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does not teach or suggest using carbon, titania, ceria, iron oxide, or copper
oxide as support. (Appeal Br. 5.) Appellants do not explain, however, why
Shan’s mesoporous material comprising silicon oxide or aluminum oxide
does not meet the limitation of solid support that is composed of molecules
selected from, among others, silica and alumina. Furthermore, Shan in fact
suggests using titania, copper oxide, and iron oxide in a solid support. (FF2
(teaching that silicon or aluminum atoms in the inorganic oxide support may
be replaced by titanium, copper, or iron).)
Appellants argue that Shan “requires use of a particular support,” i.e.,
a mesoporous material, which is not required in claim 1. (Appeal Br. 5.)
Appellants further argue that claim 1 differs from Shan in that claim 1
requires the gold to be deposited on a solid support while Shan teaches that
the free noble metal is found in the pores of a mesoporous inorganic oxide
material. (Id. at 6.)
We remain unpersuaded. As discussed above, claim 1 uses the
transitional term “comprising”; thus, the prior art process may contain
additional elements so long as the prior art process also meets each
limitation of the claim. Amgen, 314 F.3d at 1344. As to Appellants’
argument that Shan discloses that the noble metal used in its process is found
in the pores of a mesoporous inorganic oxide material, Appellants have not
persuasively explained why noble metal particles formed in the mesopores
would not be considered to have been “deposited on a solid support.”4
4 Appellants argue that “[n]one of the catalyst supports used in the working
example section of the Application are anything other than solids. They are
not mesoporous.” (Appeal Br. 6.) “[DJuring examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
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Finally, Appellants argue that undue experimentation would be
required to arrive at the invention of claim 1 based on the minimal guidance
Shan provides. (Appeal Br. 6; see also Reply Br. 4.) Appellants argue that
catalysis is a “complex field of endeavor” and “the level of predictability in
the art is low.” (Appeal Br. 6; see also Reply Br. 4—5.) We are not
persuaded for the reasons already discussed: Shan teaches using the claimed
components—hydrogen peroxide, gold, and solid support composed of, e.g.,
silica or alumina—in a single process for the production of an alcohol, and
there appears to be no reasonable difference in how the process operates
over the claimed and prior art reaction temperature and pressure ranges.
(FF1—FF4.) No undue experimentation is required.
Claim 8
Claim 8 depends from claim 1, which requires a “heterogeneous
catalyst compris[ing] gold on a solid support that is composed of carbon,
titania, ceria, iron oxide, copper oxide, silica, alumina, or a combination
thereof,” and further recites that “the catalyst contains gold, palladium, and
copper.” (Appeal Br. 8 (Claims App.).) With respect to this claim,
Appellants argue that in Shan copper “does not combine with catalytic
metals deposited on the support.” (Id.) Appellants argue that, therefore,
there is no expression “of an alloy or combination of gold, palladium and
copper deposited on a support anywhere within the bounds of [Shan] and no
teaching or suggestion that a skilled artisan might think about such a
Appellants’ argument appears to assume that “solids” exclude mesoporous
materials. However, Appellants have not cited any persuasive evidence that
the broadest reasonable interpretation of “solid” in the claim means “non-
porous” in light of the Specification, rather than simply “not liquid or
gaseous.”
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combination.” (Id.) Appellants contend that Shan accordingly does not
anticipate or render obvious claim 8.
We are not persuaded. Nothing in claim 8 requires that copper
combines with gold and palladium in a particular way (e.g., as an alloy).
Shan teaches that its inorganic oxide support may contain copper. (FF2.)
Shan further teaches that the inorganic oxide support may be further
modified by incorporation therein of one or more noble metals including
gold and palladium. (FF3.) Accordingly, Shan teaches a catalyst containing
gold, palladium, and copper.
For the reasons above, we affirm the Examiner’s rejection of claim 1
and 8. Claims 4—7 and 10-15, which are not separately argued, fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 4—8, and 10-15.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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