Ex Parte Matusz

Patent Trial and Appeal Board

Sep 25, 2017

12865021 (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.
12/865,021 10/25/2010 Marek Matusz TH2905 US 9730
23632 7590 09/27/2017
SHF! T OH miUPANY
EXAMINER
P 0 BOX 576 NGUYEN, COLETTE B
HOUSTON, TX 77001-0576
ART UNIT PAPER NUMBER
1732
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):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAREK MATUSZ
Appeal 2016-008482
Application 12/865,021
Technology Center 1700
Before JULIA HEANEY, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—12 and 16—23.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to Appellant’s Specification filed July 28, 2010
(“Spec.”), the Final Office Action mailed December 2, 2014 (“Final Act.”),
the Appeal Brief filed May 1, 2015 (“Br.”), and the Examiner’s Answer
mailed September 11, 2015 (“Ans.”).
2 Appellant identifies the real party in interest as Shell Oil Company. Br. 2.
3 Claims 13—15 stand withdrawn from consideration by the Examiner
pursuant to 35 U.S.C. § 1.142(b) as being drawn to a non-elected invention.
Non-Final Office Action mailed April 8, 2013.
Appeal 2016-008482
Application 12/865,021
The subject matter on appeal is directed to an epoxidation catalyst and
a process for preparing the catalyst. Spec. 1,11. 5—8. Independent claim 1,
reproduced below from the Claims Appendix of the Appeal Brief, is
illustrative of the claims on appeal.
1. A catalyst for the epoxidation of an olefin comprising a
carrier and, deposited on the carrier, silver, a rhenium promoter,
a first co-promoter, and a second co-promoter; wherein
the molar ratio of the first co-promoter to the second co­
promoter is greater than 1 and at most 20;
the first co-promoter is selected from sulfur, phosphorus,
boron, and mixtures thereof; and
the second co-promoter is selected from tungsten,
molybdenum, chromium, and mixtures thereof.
Br. 10 (Claims Appendix).
Independent claim 12 is directed to preparing a catalyst for the
epoxidation of an olefin and includes all the same components in the same
molar ratios as the catalyst as recited in independent claim 1.
DISCUSSION
Rejection 3 — Obviousness
The Examiner maintains the rejection of claims 1—12 and 16—23 under
35 U.S.C. § 103(a) as unpatentable over Matusz et al. (US 2004/0198992
Al, published October 7, 2004) (“Matusz”) or Remus et al.
(WO 2007/095453 Al, published August 23, 2007) (“Remus”). Final
Act. 2—5.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
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Appeal 2016-008482
Application 12/865,021
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
each of Appellant’s contentions, we are not persuaded that Appellant
identifies reversible error. Thus, we sustain the Examiner’s rejections for
the reasons expressed in the Final Office Action, the Answer, and below.
The Examiner finds that Matusz discloses a catalyst for the
epoxidation of ethylene (an olefin) where the catalyst comprises a support,
and deposited on the support, a silver metal, rhenium, a co-promoter selected
from one or more of sulfur, phosphorus, and boron in an amount of 0.1 to
30 mmole/kg each (corresponding to the recited “first co-promoter”), and
one or more of rhenium, molybdenum, tungsten, and nitrate- or nitrite­
forming compounds, where tungsten, for example, may preferably be
present in an amount ranging from 0.5 to 20 mmole/kg (corresponding to the
“second co-promoter”). Final Act. 2-4; Matusz H 1, 7, 9, 27, and 38. The
Examiner finds that the molar ratios of the “first co-promoter” to the
“second co-promoter,” 0.1—30:0.5—20, overlap with the ratio of “greater than
1 and at most 20,” recited in claims 1 and 12. Final Act. 2—3.
The Examiner finds that Remus discloses a process for preparing an
epoxidation catalyst comprising a carrier with silver, a promoter component
that may be one or more of rhenium, tungsten, molybdenum, chromium, and
mixtures thereof in an amount of at least 0.01 mmole/kg to at most
50 mmole/kg (corresponding to the recited “rhenium promoter” and “second
co-promoter”), and a co-promoter component that may be one or more of
tungsten, chromium, molybdenum, sulfur, phosphorus, boron and mixtures
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Appeal 2016-008482
Application 12/865,021
thereof in an amount of at least 0.1 mmole/kg to at most 40 mmole/kg
(corresponding to the recited “first co-promoter”), deposited thereon. Final
Act. 4—5; Remus, 1,11. 7—9, and 11. 20-21, 14,11. 22—25, 15,11. 11—21, and
15,1. 31—16,1. 11. The Examiner finds that the molar ratios of the “first co­
promoter” to the “second co-promoter,” 0.1—40:0.01—50, overlap with the
ratio of “greater than 1 and at most 20,” recited in claims 1 and 12. Final
Act. 4.
First, Appellant argues that neither Matusz nor Remus provides any
teaching that would have led one of ordinary skill in the art to select the
specific combination of promoters and co-promoters with the claimed molar
ratio. Br. 4. According to Appellant, the skilled person would be left to
“pick and choose” from many possible combinations of various promoters
and co-promoters, in a broad range of amounts, with no reasonable
expectation of success whether any particular combination would improve
the performance of the catalyst compositions at all. Id.
Appellant’s argument is not persuasive of reversible error. Matusz’s
and Remus’ disclosures would have indicated to one of ordinary skill in the
art that any combination of the disclosed promoters and co-promoters, in any
of the disclosed amounts, including the combination and molar ratios recited
in Appellant’s claims, is suitable. See Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference “discloses
a multitude of effective combinations does not render any particular
formulation less obvious.”). Thus, we discern no reversible error in the
Examiner’s conclusion that the claimed catalyst and process for preparing
the catalyst would have been prima facie obvious to one of ordinary skill in
the art based on Matusz or Remus.
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Appeal 2016-008482
Application 12/865,021
Second, Appellant argues that the evidence of record, in particular the
Declaration under 37 C.F.R. § 1.132 executed by Dr. Marek Matusz on
January 15, 2014 (“Dr. Matusz’s Declaration”), provides data that
demonstrates unexpected results of the claimed catalyst. Br. 4—5.
We have reviewed Appellant’s evidence, but do not find it persuasive.
Claims 1 and 12 recite that “the molar ratio of the first co-promoter to the
second co-promoter is greater than 1 and at most 20.” The data presented in
Dr. Matusz’s Declaration demonstrates that an inventive catalyst that
includes a first co-promoter and a second co-promoter in a molar ratio of 3
or 5 has improved initial selectivity as compared to a similar catalyst that
includes the first co-promoter and the second co-promoter in a molar ratio
of 1. Dr. Matusz’s Declaration at 4 (Table 1). Dr. Matusz’s Declaration,
however, fails to include inventive examples of catalysts that include the
first co-promoter and the second co-promoter in other molar ratios within the
claimed range, e.g., a molar ratio closer to 20. On this record, Appellant has
not established that the results obtained when using a catalyst within the
scope of claims 1 and 12 that includes the first co-promoter and second co­
promoter in a molar ratio of 3 or 5 would be obtained over the entire range
of ratios covered by the claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983) (concluding that unexpected results “limited to sodium only” were not
commensurate in scope with claims to a catalyst having “‘an alkali metal’”);
see also In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Therefore, as the
Examiner finds, Appellant’s evidence fails to establish unexpected results
over the entire claimed range of “greater than 1 and at most 20” recited in
claims 1 and 12.
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Appeal 2016-008482
Application 12/865,021
DECISION
For the above reasons, the Examiner’s decision to reject claims 1—12
and 16—23 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).
AFFIRMED
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