Ex Parte Machhammer et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11751202 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte OTTO MACHHAMMER,
KLAUS JOACHIM MULLER-ENGEL,
and
MARTIN DIETERLE,
Appellants1
____________________

Appeal 2009-013935
Application 11/751,202
Technology Center 1600
____________________

Before CAROL A. SPIEGEL, TONI R. SCHEINER, and
STEPHEN WALSH, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from an Examiner's final
rejection of all pending claims, claims 1-37 (App. Br. 2; Ans. 2). Oral
arguments were held September 16, 2010. We have jurisdiction under 35
U.S.C. § 134. We REVERSE.

1 The real party in interest is BASF SE (Appeal Brief filed 19 March 2009
("App. Br.") at 1). This decision also cites the Examiner's Answer mailed 25
June 2009 ("Ans."), and the Reply Brief filed 20 July 2009 ("Reply Br.").
2 The two-month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE" (paper
delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013935
Application 11/751,202

2
I. Statement of the Case
The subject matter on appeal is directed to a method of making
acrolein and/or acrylic acid from propane. Claim 1 is illustrative and reads
(App. Br. Claims App'x i-ii, emphasis added):
1. A process for preparing acrolein or acrylic acid or a
mixture thereof from propane, in which
A) - at least two gaseous propane-comprising feed
streams, of which at least one comprises fresh
propane, are fed to a first reaction zone A to form a
reaction gas A;
- in reaction zone A, reaction gas A is conducted
through at least one catalyst bed in which partial
heterogeneously catalyzed dehydrogenation of the
propane forms molecular hydrogen and propylene;
- without separating off said molecular hydrogen,
molecular oxygen is fed to reaction zone A and, in
reaction zone A, oxidizes at least a portion of
molecular hydrogen present in reaction gas A to
steam, and
- product gas A which comprises propylene, propane
and steam is withdrawn from reaction zone A;
B) in a first separation zone I, steam present in product
gas A is optionally removed by condensation
partly or fully by indirect and/or direct cooling of
product gas A to leave a product gas A*;
C) in a reaction zone B, product gas A or product gas
A* is used, with feeding of molecular oxygen, to
charge at least one oxidation reactor with a reaction
gas B comprising propane, propylene and
molecular oxygen, and the propylene present
therein is subjected to a heterogeneously catalyzed
partial gas phase oxidation to give a product gas B
comprising acrolein or acrylic acid or a mixture
thereof as the target product, and also unconverted
propane;
D) product gas B is conducted out of reaction zone B
and, in a second separation zone II, target product
Appeal 2009-013935
Application 11/751,202

3
present therein is removed to leave a propane-
comprising residual gas;
E) a portion of residual gas having the composition of
the residual gas is optionally recycled as a propane-
comprising feed stream into reaction zone A;
F) in a separation zone III, propane present in residual
gas which has not been recycled into reaction zone
A and from which any steam present therein
optionally has been removed beforehand partly or
fully by condensation and/or any molecular
hydrogen present therein optionally has been
removed beforehand partly or fully by means of a
separating membrane is absorbed into an organic
solvent by absorption from the residual gas to form
a propane-comprising absorbate; and
G) in a separate zone IV, the propane is removed from
the absorbate and recycled into reaction zone A as
a propane-comprising feed stream;
which comprises
oxidizing at least sufficient molecular hydrogen to steam
in reaction zone A that the amount of hydrogen oxidized to
steam in reaction zone A is at least 20 mol% of the amount of
molecular hydrogen formed in reaction zone A.

Claim 2 requires that at least some of the heat energy generated by the
oxidation of molecular hydrogen in reaction zone A be used to heat gaseous
feed streams fed to reaction zone A by indirect heat exchange with reaction
gas A or product gas A or reaction gas A and product gas A as heat carriers.
Claim 6 requires that the amount of hydrogen oxidized to steam in reaction
zone A in the process of claim 1 or 2 is from 30 to 70 mol% of the amount
of molecular hydrogen formed in reaction zone A. Claim 15 requires the
following working pressure P relationships at the entrance into the particular
zones in the process of claim 1 or 2:
Preaction zone A > Pseparation zone I > Preaction zone B > Pseparation zone II <
Pseparation zone III > Pseparation zone IV > Preaction zone A.
Appeal 2009-013935
Application 11/751,202

4

A. Obviousness under § 103
The Examiner rejected claims 1-37 as unpatentable under 35 U.S.C.
§ 103(a) over Dieterle3 in view of Hefner4 and Machhammer5 (Ans. 3-6).
Citing paragraphs 0001-0007 of Dieterle, the Examiner found that
Dieterle taught the claimed method but for "fail[ing] to explicitly teach the
step wherein molecular oxygen is fed to reaction zone A and, in reaction
zone A, oxidizes at least a portion of molecular hydrogen present in reaction
gas A to steam" (Ans. 5). The Examiner found that this step "is common in
the prior art," and relied on Hefner, which the Examiner found "discusses
the addition of oxygen to a dehydrogenation mixture during an
acrolein/acrylic acid process, and cites numerous other prior art references
that disclose this step, see column 6, lines 50+" (id.). The Examiner further
finds that "the addition of oxygen to generate steam is known, see, for
example, paragraphs 0200+ of Dieterle, and therefore prima facie obvious"
(id. at 6). The Examiner relies on Machhammer as "teach[ing] removal of
propane from a residual stream by absorption, see column 14, lines 33+" and
"emphasizes that Machhammer realizes the importance of clearing hydrogen,
see column 10, lines 44+" (id.).

3 US Patent Application Publication 2006/0004229 A1, Preparation of
Acrylic Acid by Heterogeneously Catalyzed Partial Gas Phase Oxidation of
Propylene, published 5 January 2006 by Dieterle et al. ("Dieterle").
4 US Patent 5,705,684, Preparation of Acrolein, Acrylic Acid or a Mixture
Thereof From Propane, issued 6 January 1998 to Hefner et al. ("Hefner").
5 US Patent 6,781,017 B2, Method for the Production of Acrolein or Acrylic
Acid or the Mixture Thereof from Propane, issued 24 August 2004 to
Machhammer et al. ("Machhammer").
Appeal 2009-013935
Application 11/751,202

5
Appellants argue that
none of the applied prior art discloses or suggests reacting any
portion of molecular hydrogen formed during a partial
heterogeneously catalyzed dehydrogenation of propane, with
molecular oxygen to form steam, prior to subjecting the
mixture of propane, propylene and steam so formed to
heterogeneously catalyzed partial gas phase oxidation in the
presence of additional molecular oxygen to give acrolein
and/or acrylic acid, let alone that portion of molecular
hydrogen that is at least 20 mol% of the amount of molecular
hydrogen formed during the partial heterogeneously catalyzed
dehydrogenation (App. Br. 12-13, original emphasis).

Appellants emphasize that the "dehydrogenation in zone A has to be a
heterogeneously catalyzed dehydrogenation, and not an
oxydehydrogenation" (id. at 9). Appellants specifically argue that while
Hefner discloses many methods to increase dehydrogenation conversion,
Hefner does not disclose which methods would be applicable in conjunction
with what other method steps (id. at 11). Appellants further argue that
Hefner also discloses "that the propane in reaction gas B should be
accompanied by not more than 5% by volume … of constituents other than
C1-C3, hydrogen and oxygen" (id.) and separating hydrogen and water off
by fractional condensation prior to feeding the resulting mixture to an
oxidation reactor (id.). Appellants also argue that the method of claim 6 is
advantageous in terms of heat budget and catalyst lifetime and that the
applied prior art neither discloses nor suggests the working pressure
relationships recited in claim 15 (id. at 13).
Thus, the dispositive issues are whether the applied prior art teaches
or suggests every step of the claimed invention as recited in claims 1, 6, and
Appeal 2009-013935
Application 11/751,202

6
15 and whether the Examiner has articulated a reason that would have
prompted one of ordinary in the art to combine the steps as claimed.
B. Non-statutory obviousness-type double patenting
The Examiner rejected claims 1-6 and 8 as unpatentable on the ground
of nonstatutory obviousness-type double patenting over each of the
following: (provisionally) claims 1-41 of copending Application 11/131,256
in view of Hefner; claims 1-52 [sic, 1-51] of Application 10/465,656, now
US Patent 7,326,802,6 in view of Hefner; claims 1-24 of Application
11/505,800, now US Patent 7,524,987,7 in view of Hefner; and, claims 1-53
[sic, 1-45] of Application 11/131,261, now US Patent 7,592,483 B2,8 in
view of Hefner (Ans. 7-8).
As an initial matter, it is premature to address the Examiner's
nonstatutory obviousness-type double patenting ("ODP") rejection of claims
1-6 and 8 over claims 1-41 of copending Application 11/131,256 because it
is a provisional rejection. Thus, we address only the mature ODP rejections
based on the issued claims of the 802, 987, and 483 patents and Hefner.
As to all three ODP rejections, it is the Examiner's position that
[a]lthough the conflicting claims fail to explicitly recite the
step wherein molecular oxygen is fed to reaction zone A and,

6 US Patent 7,326,802 B2, Preparation of at least One Partial Oxidation
and/or Ammoxidation Product of Propylene, 51 claims issued 5 February
2008, to Hechler et al. ("Patent 802").
7 US Patent 7,524,987 B2, Process for Preparing Acrolein or Acrylic Acid or
a Mixture Thereof from Propane, 24 claims issued 28 April 2009 to
Machhammer et al. ("Patent 987").
8 US Patent 7,592,483 B2, Preparation of Acrolein or Acrylic Acid or a
Mixture Thereof by Heterogeneously Catalyzed Partial Gas Phase
Oxidation of Propylene, 45 claims issued 22 September 2009 to Dieterle et
al. ("Patent 483").
Appeal 2009-013935
Application 11/751,202

7
in reaction zone A, oxidizes at least a portion of molecular
hydrogen present in reaction gas A to steam, see step A, this
step is common in the prior art and it [is] for this proposition
that the examiner joins Hefner, which discusses the addition of
oxygen to a dehydrogenation mixture during an
acrolein/acrylic acid process, and cites numerous other prior art
references that disclose this step, see column 6, lines 50+.
Accordingly, the step of adding [sic, oxidizing?] molecular
hydrogen present in a dehydrogenation reaction gas to steam is
well within the purview of those of ordinary skill for the
purpose of removing hydrogen from a reaction gas to be used
for the partial oxidation of propylene. [Id. at 7-8.]

Appellants argue that there are additional differences between the
presently-claimed invention and the invention claimed in the 802, 987, and
483 patents which the Examiner relies on Hefner to remedy; and, reiterates
the argued deficiencies in Hefner stated above (App. Br. 16-17, 18, 20).
Thus, the dispositive issues are whether the claims of the 802, 987, or
483 patent, each in view of Hefner, teach or suggest every step of the
claimed invention as recited in claims 1 and 6, and whether the Examiner
has articulated a reason that would have prompted one of ordinary in the art
to combine the steps as claimed.
II. Findings of Fact
The following findings of fact ("FF") are supported by a
preponderance of the evidence of record.
[1] Dieterle discusses the differences between dehydrogenation and
oxydehydrogenation, i.e.,
[i]n contrast to the exothermic, homogeneous or
heterogeneously catalyzed oxydehydrogenation
which is forced by the presence of oxygen and in
which free hydrogen is neither formed as an
intermediate (the hydrogen pulled from the
Appeal 2009-013935
Application 11/751,202

8
propane to be dehydrogenated is pulled out
directly as water (H2O)) nor is detectable, a
heterogeneously catalyzed dehydrogenation refers
to a ("conventional") dehydrogenation whose
thermal character, in contrast to the
oxydehydrogenation, is endothermic (an
exothermic hydrogen combustion may be included
in the heterogeneously catalyzed dehydrogenation
as a subsequent step) and in which free molecular
hydrogen is formed at least as an intermediate.
This generally requires different reaction
conditions and different catalysts from the
oxydehydrogenation. [Dieterle 6 ¶ 82.]

[2] Dieterle discloses a process for preparing acrylic acid by
a) in a first reaction stage, subjecting
propane to a homogeneous and/or a
heterogeneously catalyzed dehydrogenation and/or
oxydehydrogenation in the presence of and/or with
exclusion of oxygen to obtain a product gas mixture
1 comprising propane and propylene, and
b) if appropriate removing and/or converting
to other compounds a portion of the constituents,
other than propane and propylene, present in the
product gas mixture 1 formed in the first reaction
stage to obtain a product gas mixture 1' from
product gas mixture 1, and
c) subjecting product gas mixture 1 and/or
product gas mixture 1', as a constituent of a starting
reaction gas mixture 2 which comprises molecular
oxygen and propylene in a molar O2:C3H6 ratio of
≥1, to a heterogeneously catalyzed partial gas phase
oxidation of propylene present in product gas
mixture 1 and/or product gas mixture 1' to acrolein
in a second reaction stage charged with a fixed
catalyst bed 2 whose catalysts have at least one
multimetal oxide comprising the elements Mo, Fe
and Bi as an active composition to obtain a product
gas mixture 2, and
Appeal 2009-013935
Application 11/751,202

9
d) if appropriate lowering the temperature of
the product gas mixture 2 leaving the second
reaction stage by indirect and/or direct cooling and
if appropriate adding molecular oxygen and/or inert
gas to product gas mixture 2, and
e) then subjecting it, as a starting reaction
gas mixture 3 which comprises acrolein, molecular
oxygen and at least one inert gas and comprises
molecular oxygen and acrolein in a molar O2:C3H4O
ratio of ≥0.5, to a heterogeneously catalyzed partial
gas phase oxidation of acrolein present in starting
reaction gas mixture 3 to acrylic acid in a third
reaction stage charged with a fixed catalyst bed 3
whose catalysts have at least one multimetal oxide
comprising the elements Mo and V as an active
composition to obtain a product gas mixture 3, and
f) removing acrylic acid in a separating zone
A from product gas mixture 3 and recycling at least
the unconverted propane and propylene present in
product gas mixture 3 to an extent of in each case at
least 80 mol% based on the particular amount
present in product gas mixture 3 into at least the
first of the three reaction stages (id. at 1, ¶¶ 1-7).

[3] Dieterle discloses removing propane and propylene by absorption
with subsequent desorption and/or stripping (id. at 5, ¶ 69).
[4] According to Dieterle, when the first reaction stage is an
oxydehydrogenation, the source of molecular oxygen may be air, pure
molecular oxygen, molecular oxygen-enriched air, or nitrogen oxides
(id. at 8, ¶ 157).
[5] Hefner discloses a process for preparing acrolein and/or acrylic acid
product from propane, wherein (i) propane is partially dehydrogenated
to propylene in a first stage, (ii) the resulting product gas mixture,
after separating off hydrogen and water vapor, is used as a feed to an
Appeal 2009-013935
Application 11/751,202

10
oxidation reactor, using pure oxygen as the oxygen source, to produce
a target mixture containing acrolein and/or acrylic acid, and (iii)
separating acrolein and/or acrylic acid from the target mixture (Hefner
1:5-24).
[6] According to Hefner, "[o]ne hydrogen molecule is produced as [a]
byproduct for each propylene molecule formed" (id. at 6:37-38) and
conversion to propylene can be increased "by taking hydrogen out of
the equilibrium by chemical means. The simplest method is the
addition of oxygen to the reaction mixture. This is then referred to as
oxidative dehydrogenation in which water vapor is formed as
byproduct as a result of the reaction of the oxygen with hydrogen" (id.
at 6:50-56, emphasis added).
[7] Further according to Hefner, the feed for the oxidation reactor "should
contain, based on propane present therein, not more than 5% by
volume of constituents other than propane, propylene, ethane,
methane and molecular oxygen" (id. at 7:11-17).
[8] Machhammer discloses a process for preparing acrolein and/or acrylic
acid from propane, wherein (i) propane is subjected to a partial
dehydrogenation under heterogeneous catalysis to form a first product
gas mixture A containing molecular hydrogen, propylene, and
unconverted propane in stage A, (ii) at least a portion of the molecular
hydrogen is separated off from product gas mixture A, (iii) the
resulting gas mixture is used as a feed to an oxidation reactor with
molecular oxygen to produce a target mixture containing acrolein
and/or acrylic acid in stage B, and (iv) separating acrolein and/or
Appeal 2009-013935
Application 11/751,202

11
acrylic acid from the target mixture and unconverted propane in the
target mixture is recycled to stage A (Machhammer 1:5:29).
[9] According to Machhammer, at least a part of the hydrogen contained
in product gas mixture A can be separated by passing product gas
mixture A over a membrane which is permeable only to the molecular
hydrogen, by partial condensation, adsorption and/or rectification
(preferably under pressure) (id. at 10:25-42).
[10] Further according to Machhammer, at least 10 and up to about 75
mol% of the total amount of the molecular hydrogen contained in
product gas mixture A is separated off before the resulting gas
mixture is used a feed to the oxidation reactor (id. at 10:43-49).
[11] Machhammer also teaches that propane and propylene may be
separated from the target mixture by absorption with subsequent
desorption and/or stripping, by adsorption, by rectification and partial
condensation, and by fractional distillation (id. at 14:33-51).
[12] The 802 patent issued with one independent claim which reads:
1. A process for preparing at least one partial
oxidation product of propylene selected from the
group consisting of acrolein, acrylic acid and
propylene oxide, said process comprising:
a) subjecting crude propane to at least
one reaction selected from the group consisting of a
homogeneous dehydrogenation, a heterogeneously
catalyzed dehydrogenation, a homogeneous
oxydehydrogenation, wherein the reaction(s) is/are
carried out under at least one condition selected
from the group consisting of 1) in the presence of
oxygen and 2) with the exclusion of oxygen, and a
heterogeneously catalyzed oxydehydrogenation, to
obtain a gas mixture 1 comprising propane and
propylene,
Appeal 2009-013935
Application 11/751,202

12
b) optionally removing, converting to by-
products, or both removing and converting to by-
products, a portion of the constituents other than
propane and propylene from all of or part of the gas
mixture 1 to obtain a gas mixture 1' comprising
propane, propylene and compounds other than
oxygen, propane and propylene, and
c) subjecting a gas mixture 2 comprising
the gas mixture 1, the gas mixture 1', or the gas
mixture 1' and the remainder of gas mixture 1, to a
heterogeneously catalyzed gas phase partial
oxidation of the propylene contained in the gas
mixture 1, the gas mixture 1', or the gas mixture 1'
and the remainder of gas mixture 1,
wherein the total content of C4-hydrocarbons
of the gas mixture 2 is ≤ 3% by volume.

[13] The 987 patent issued with one independent claim which reads:
1. A process for preparing acrolein, or acrylic
acid or a mixture thereof from propane, in which
A) at least two gaseous feed streams comprising
propane, at least one of which comprises fresh
propane, are fed to a first reaction zone A to form a
reaction gas A,
in reaction zone A, reaction gas A is
conducted through at least one catalyst bed in which
partial heterogeneously catalyzed dehydrogenation
of the propane forms molecular hydrogen and
propylene,
molecular oxygen which oxidizes molecular
hydrogen present in reaction gas A in reaction zone
A to steam is fed to reaction zone A, and
product gas A which comprises molecular
hydrogen, steam, propylene and propane is
withdrawn from reaction zone A,
B) in a reaction zone B, the product gas A
withdrawn from reaction zone A, with feeding of
molecular oxygen, is used to charge at least one
oxidation reactor with a reaction gas B comprising
Appeal 2009-013935
Application 11/751,202

13
molecular hydrogen, steam, propane, propylene
and molecular oxygen, and the propylene present
therein is subjected to heterogeneously catalyzed
partial gas phase oxidation to give a product gas B
comprising acrolein, or acrylic acid or a mixture
thereof as a target product, unconverted propane,
molecular hydrogen, steam, carbon dioxide as a by-
product, and also other secondary components
having lower and higher boiling points than water,
C) product gas B is conducted out of reaction
zone B, and target product, water and secondary
components having a higher boiling point than
water present therein are removed therefrom in a
first separation zone I to leave a residual gas I
which comprises unconverted propane, carbon
dioxide, molecular hydrogen, secondary
components having a lower boiling point than water
and any propylene unconverted in reaction zone B
and any unconverted molecular oxygen,
D) as an aftertreatment measure I, carbon
dioxide present in residual gas I is scrubbed out and
any water still present in residual gas I is optionally
condensed out in a second separation zone II,
as an aftertreatment measure 2, a portion of
residual gas I is discharged,
optionally, as an aftertreatment measure 3,
molecular hydrogen present in residual gas I is
removed by means of a separating membrane in a
third separation zone III and
optionally, as an aftertreatment measure 4,
any molecular oxygen present in residual gas I is
reduced chemically,
the sequence of use of aftertreatment
measures 1 to 4 being as desired, and
E) aftertreated residual gas I which comprises
unconverted propane and remains after use of
aftertreatment measures 1 and 2 and, optionally 3
and/or 4 is recycled into reaction zone A as at least
one of the two feed streams comprising propane,
Appeal 2009-013935
Application 11/751,202

14
wherein an amount M of molecular hydrogen
which is at least 5 mol% but not more than 95
mol% of the total amount of molecular hydrogen
produced in reaction zone A and, optionally, fed to
reaction zone A is oxidized to steam in reaction
zone A.

[14] Claim 3 of the 987 patent reads: "The process according to claim 1,
wherein an amount M of molecular hydrogen which is at least 20
mol % but not more than 80 mol % of the total amount of molecular
hydrogen produced in reaction zone A and, optionally, fed to reaction
zone A is oxidized to steam in reaction zone A."
[15] The 483 patent issued with one independent claim which reads:
1. A process for preparing acrolein or acrylic
acid or a mixture thereof by heterogeneously
catalyzed partial gas phase oxidation of propylene,
in which a starting reaction gas mixture 2 which
comprises the propylene and molecular oxygen
reactants and inert molecular nitrogen and propane
diluent gases and is conducted at elevated
temperature[s] through a fixed catalyst bed whose
active composition is at least one multimetal oxide
comprising the elements Mo, Fe and Bi, wherein
starting reaction gas mixture 2, based on its total
volume has the following contents:

with the proviso that the molar ratio V1 of
propane present in starting reaction gas mixture 2 to
propylene present in starting reaction gas mixture 2
is from 1.5 to 2.2, the molar ratio V2 of molecular
nitrogen present in starting reaction gas mixture 2 to
molecular oxygen present in starting reaction gas
mixture 2 is from 3.5 to 4.5 and the molar ratio V3
of molecular oxygen present in starting reaction gas
Appeal 2009-013935
Application 11/751,202

15
mixture 2 to propylene present in starting reaction
gas mixture 2 is from 1.5 to 2.14.

III. Discussion
A. Legal principles
"The test of obviousness vel non is statutory. It requires that one
compare the claim's 'subject matter as a whole' with the prior art 'to which
said subject matter pertains.' 35 U.S.C. § 103. The inquiry is thus highly
fact-specific by design. This is so 'whether the invention be a process for
making or a process of using, or some other process.'" In re Brouwer, 77
F.3d 422, 425 (Fed. Cir. 1996). "[T]he Examiner bears the burden of
establishing a prima facie case of obviousness based upon the prior art." In
re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). Furthermore, obviousness
requires a suggestion of all limitations in a claim. In re Royka, 490 F.2d 981,
985 (CCPA 1974). "[A] patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art." KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Hence, “there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
"[O]bviousness-type double patenting . . . is a judicially-created
doctrine that seeks to prevent the applicant from expanding the grant of the
patent right beyond the limits prescribed in Title 35." In re Dembiczak, 175
F.3d 994, 1001 (Fed. Cir. 1999). "The rule against 'double patenting' . . . is
to prevent unjustified timewise extension of the right to exclude granted by a
patent no matter how the extension is brought about." In re Schneller, 397
F.2d 350, 354 (CCPA 1968). The Longi court characterized an obviousness-
Appeal 2009-013935
Application 11/751,202

16
type double patenting rejection as “analogous” to a § 103 rejection. In re
Longi, 759 F.2d 887, 892 n.4 (Fed. Cir. 1985).
B. Analysis
1. Obviousness rejection under § 103 over Dieterle in view
of Hefner and Machhammer

The method of claim 1 requires partial heterogeneously catalyzed
dehydrogenation of propane in reaction zone A of step A, which by
definition, requires the formation of free molecular hydrogen (accord FF 1).
The method of claim 1 also requires adding molecular oxygen to oxidize at
least a portion of the free molecular hydrogen formed in step A without
separating off the formed free molecular hydrogen.
As to claims 1 and 6, the method of Dieterle encompasses
heterogeneously catalyzed dehydrogenation and/or oxydehydrogenation of
propane in a first reaction zone (FF 2, step a)). However, as found by the
Examiner (Ans. 5), Dieterle does not teach adding molecular oxygen to
oxidize at least a portion of the free molecular hydrogen formed in step A
without separating off the formed free molecular hydrogen when
dehydrogenation is used in its method. Rather, Dieterle teaches adding
molecular oxygen to its first reaction zone for oxydehydrogenation (FF 1, 4).
The Examiner relies on Hefner to remedy this deficiency in Dieterle.
However, Hefner explicitly states that its method uses oxidative
dehydrogenation (FF 1, 6). The Examiner relies on Machhammer to teach
the claimed limitation of oxidizing at least 20 mol% and from 30 to 70
mol% of the free molecular hydrogen formed in step A, without separating
off the formed free molecular hydrogen, recited in claims 1 and 6. However,
Machhammer expressly teaches separating off free molecular hydrogen
Appeal 2009-013935
Application 11/751,202

17
formed in a first reaction stage with a membrane that is permeable only to
the molecular hydrogen, by partial condensation, adsorption and/or
rectification (FF 9-10). However, the Examiner cannot meet his burden of
establishing a prima facie case of obviousness, Fritch, 972 F.2d at 1265,
merely by showing that each of the elements of a claim was known in the
prior art. KSR, 550 U.S. at 418. Rather, the Examiner must articulate
reasoning with some rationale underpinning to support the legal conclusion
of obviousness. Id. Here, the Examiner has not explained how, when,
where or why one of ordinary skill in the art would have added molecular
oxygen to a conventional dehydrogenation (not oxydehydrogenation) of
propane in order to remove formed free molecular hydrogen, instead of
separating off the free molecular hydrogen as taught by Machhammer.
Obviousness requires a suggestion of all limitations in a claim. Royka, 490
F.2d at 985. Furthermore, the Examiner has provided no meaningful fact
finding or reasoned analysis addressing the working pressure relationships
between the various reaction and separation zones recited in claim 15.
Therefore, we reverse the rejection of claims 1-37 under § 103 over Dieterle,
Hefner, and Machhammer.
2. Obviousness-type double patenting rejection over claims
1-51 of the 802 patent

Claim 1 of the 802 patent encompasses a homogenous
dehydrogenation, a heterogeneously catalyzed dehydrogenation, a
homogeneous oxydehydrogenation, wherein the reaction(s) is/are carried out
under at least one condition selected from the group consisting of 1) in the
presence of oxygen and 2) with the exclusion of oxygen, and a
heterogeneously catalyzed oxydehydrogenation of propane (FF 12). The
Appeal 2009-013935
Application 11/751,202

18
Examiner again relies on Hefner to supply a teaching of adding molecular
oxygen to a heterogeneously catalyzed dehydrogenation of propane to
remove formed free molecular hydrogen (Ans. 7-8). An ODP rejection is
analogous to a § 103 rejection. Longi, 759 F.2d at 892 n.4. Therefore, we
reverse the rejection of claims 1-6 and 8 over claims 1-51 of the 802 patent
at least for reasons analogous to those given above in regard to the § 103
rejection of claims 1 and 6. In addition, the Examiner has failed to address
the mol% formed free molecular hydrogen oxidized to steam in reaction
zone A without separating off the formed free molecular hydrogen or the
manner in which unconverted propane is recycled into reaction zone A as
recited in claims 1 and 6. Notably, the Examiner relied on Machhammer in
the § 103 rejection to address these limitations, but did not provide an
explanation of these limitations in this rejection. Therefore, we reverse the
ODP rejection of claims 1-6 and 8 over claims 1-51 of the 802 patent in
view of Hefner.
3. Obviousness-type double patenting rejection over claims
1-24 of the 987 patent

According to the Examiner, the conflicting claims in the 987 patent
"fail to explicitly recite the step wherein molecular oxygen is fed to reaction
zone A and, in reaction zone A, oxidizes at least a portion of molecular
hydrogen present in reaction gas A to steam" (Ans. 7-8). However, it would
reasonably appear that claim 1 of the 987 patent suggests, if not actually
teaches, this step (FF 13, step A)). We decline to enter a new ground of
rejection based on alternate reasoning, especially since the Examiner has
failed to address the mol% formed free molecular hydrogen oxidized to
steam in reaction zone A without separating off the formed free molecular
Appeal 2009-013935
Application 11/751,202

19
hydrogen or the manner in which unconverted propane is recycled into
reaction zone A as recited in claims 1 and 6. Notably, the Examiner relied
on Machhammer in the § 103 rejection to address these limitations, but did
not provide an explanation of these limitations in this rejection. Therefore,
we reverse the ODP rejection of claims 1-6 and 8 over claims 1-24 of the
987 patent in view of Hefner.
4. Obviousness-type double patenting rejection over claims
1-45 of the 483 patent

Claim 1 of the 483 patent recites " heterogeneously catalyzed partial
gas phase oxidation of propylene, in which a starting reaction gas mixture 2
which comprises the propylene and molecular oxygen reactants and inert
molecular nitrogen and propane diluent gases and is conducted at elevated
temperature[s] through a fixed catalyst bed" (FF 15). Thus, claim 1 of the
483 reasonably appears to recite oxydehydrogenation of propane in contrast
to the instant method claims. The Examiner again relies on Hefner to supply
a teaching of adding molecular oxygen to a heterogeneously catalyzed
dehydrogenation of propane to remove formed free molecular hydrogen
(Ans. 7-8). However, the problem is not adding molecular oxygen to the
method of claim 1 of the 483 patent, as this step is already recited. Rather,
the Examiner has failed to address the mol% formed free molecular
hydrogen oxidized to steam in reaction zone A without separating off the
formed free molecular hydrogen or the manner in which unconverted
propane is recycled into reaction zone A as recited in claims 1 and 6.
Notably, the Examiner relied on Machhammer in the § 103 rejection to
address these limitations, but did not provide an explanation of these
Appeal 2009-013935
Application 11/751,202

20
limitations in this rejection. Therefore, we reverse the ODP rejection of
claims 1-6 and 8 over claims 1-45 of the 483 patent in view of Hefner.
C. Conclusion
We reverse the rejection of claims 1-37 under § 103 over Dieterle in
view of Hefner and Machhammer. The applied prior art fails to teach or
suggest every step of the claimed invention as recited in claims 1, 6, and 15
and the Examiner has not articulated a reason that would have prompted one
of ordinary in the art to combine the steps as claimed.
We reverse the obviousness-type double patenting rejections of claims
1-6 and 8 over claims 1-51 of the 802 patent in view of Hefner, over claims
1-24 of the 987 patent in view of Hefner, and over claims 1-45 of the 483
patent in view of Hefner. The claims of the 987, 261, and/or 483 patents
each in view of Hefner fail to teach or suggest every step of the claimed
invention as recited in claims 1 and 6, and the Examiner has not articulated a
reason that would have prompted one of ordinary in the art to combine the
steps as claimed.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-37 as
unpatentable under 35 U.S.C. § 103(a) over Dieterle in view of Hefner and
Machhammer is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 1-6 and 8 as unpatentable based on nonstatutory obviousness-type
double patenting over claims 1-51 of US Patent 7,326,802 in view of Hefner
is REVERSED;
Appeal 2009-013935
Application 11/751,202

21
FURTHER ORDERED that the decision of the Examiner to reject
claims 1-6 and 8 as unpatentable based on nonstatutory obviousness-type
double patenting over claims 1-24 of US Patent 7,524,987 in view of Hefner
is REVERSED; and,
FURTHER ORDERED that the decision of the Examiner to reject
claims 1-6 and 8 as unpatentable based on nonstatutory obviousness-type
double patenting over claims 1-45 of US Patent 7,592,483 in view of Hefner
is REVERSED.
REVERSED

alw

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 Duke Street
Alexandria, VA 22314