Ex Parte Petzoldt et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10934525 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOCHEN PETZOLDT,
KLAUS JOACHIM MUELLER-ENGEL, and
SIGNE UNVERRICHT
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Appeal 2009-012228
Application 10/934,525
Technology Center 1700
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Heard: 15 April 2010
Decided: April 28, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012228
Application 10/934,525

2
A. Introduction1, 2
Jochen Petzoldt, Klaus Joachim Mueller-Engel, and Signe Unverricht
(“Petzoldt”) timely appeal under 35 U.S.C. § 134(a) from the rejection3 of
claims 1-3, 5-27, and 29-33.4 We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
The subject matter on appeal relates to unsupported ring-shaped
catalysts said to be useful for the partial oxidation of propene to the
unsaturated aldehyde acrolein (propenal, CH2=CHCHO), and of isobutene,
tert-butanol, or tert-butyl methyl ether to methacrolein (CH2=C(CH3)CHO).
(Spec. 2:25-28.) (Meth)acrolein is an important intermediate in the
production of (meth)acrylic acid. Processes for making the claimed catalysts
are also claimed. The catalysts are said to provide increased activity and
selectivity over prior art catalysts. (Id.) The improvements are said to be
due to a previously unrecognized optimum relation between the side crush
strength of the catalyst precursor and the ultimate catalyst activity. (Id.
at 3:14-21.) Moreover, in contrast to prior art catalysts, the proportion of

1 Application 10/934,525, Preparation of Annular Unsupported Catalysts,
filed 7 September 2004, claiming the benefit of a provisional application
filed 22 September 2003 and a German Application filed
22 September 2003. The specification is referred to as the
“525 Specification,” and is cited as “Spec.” The real party in interest is
listed as BASF SE. (Appeal Brief, filed 23 October 2008 (“Br.”), 1.)
2 Heard 15 April 2010. The Official Transcript, which was not available
when this Opinion was entered, will be made of record.
3 Office action mailed 7 August 2008 (“Office Action”; cited as “OA”).
Although the rejection is not final, at least one claim has been twice rejected.
4 Claim 28 has been withdrawn from consideration. (OA 1.)
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Application 10/934,525

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pores having diameters ≥ 1 μm is said to generally play “only a minor role
in annular unsupported catalysts obtained in accordance with the invention.”
(Id. at 13, ll. 4-7.)
Representative Claim 1 is reproduced in most relevant part from the
Claims Appendix to the Principal Brief on Appeal:
1. A process for preparing
an annular unsupported catalyst having at least one
member selected from the group consisting of a
curved and uncurved top surface thereof,
whose active composition has a stoichiometry of the
general formula I
Mo12BiaFebX1cX2dX3eX4fOn (I)
where
* * *
or a stoichiometry of the general formula II
[Y1a′Y2b′Ox′]p[Y3c′Y4d′Y5e′Y6f′Y7g′Y2h′Oy′]q (II)
where
* * *
and whose annular geometry, without taking into
account any existing curvature of the top surface, has
a length L of from 2 to 11 mm,
an external diameter E of from 2 to 11 mm and
a wall thickness W of from 0.75 mm to 1.75 mm,
comprising
generating a finely divided shapeable mixture from
sources of the elemental constituents of the active
composition and, optionally after adding at least one
member selected from the group consisting of shaping and
reinforcing assistants,
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Application 10/934,525

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compressing this mixture to form annular shaped
unsupported catalyst precursor bodies whose top surfaces
are at least one member selected from the group consisting
of curved and uncurved, and
converting these to the annular unsupported catalysts by
thermally treating at elevated temperature, wherein
the side crushing strength of the annular shaped
unsupported catalyst precursor bodies is
≥ 12 N and ≤ 23 N, and wherein
the annular geometry additionally fulfills the
condition
L/E = from 0.3 to 0.7.
(Br., Claims App. i-iii; indentation and paragraphing added; the
compositional limitations are not disputed in the rejections of record,
and are therefore not reproduced here.)
Claim 20 covers an unsupported annular catalyst having the
compositions recited in Formulas I or II, and the geometric properties,
but NOT the side-crushing strength properties or the method of
making steps recited in claim 1, and adds the further limitations:
wherein the specific surface area S is from 5 to 20 m2/g and
the total pore volume V is from 0.1 to 1 cm3/g,
the different pore diameters contributing to V as follows:
pores having a diameter in the range from
< 0.03 μm: ≤ 5% by volume;
pores having a diameter in the range from
≥ 0.03 to ≤ 0.1 μm: ≤ 25% by volume;
pores having a diameter in the range from
> 0.1 to < 1 μm: ≥ 70% by volume and
pores having a diameter in the range from
≥ 1 to ≤ 10 μm: ≤ 10% by volume.
(Br., Claims App. viii, indentation and paragraphing added.)
Appeal 2009-012228
Application 10/934,525

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The Examiner has maintained the following grounds of rejection:5
A. Claims 1-3, 5, 8-19, 27, and 33 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Tenten6 and Shiozaki.7
B. Claims 6 and 7 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Tenten, Shiozaki, and Felder.8
C. Claims 20-25 and 29-31 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Tenten, Shiozaki, and Kawajiri.9
D. Claims 26 and 32 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Tenten, Shiozaki, Kawajiri, and Yunoki.10

5 Examiner’s Answer mailed 26 January 2009. (“Ans.”) The Examiner has
withdrawn a rejection of claims 1, 20, and 27 under 35 U.S.C. § 112(2).
(Ans. 3).
6 Andreas Tenten et al., WO01/36364 (2001). The Examiner has relied,
without objection, on Andreas Tenten et al., Method for Carrying Out the
Catalytic Gas Phase Oxidation of Propene to Form Acrylic Acid, U.S.
Patent 6,740,779 B1 (25 May 2004), which was filed as the National Stage
of the corresponding PCT application. Tenten is assigned to BASF and
shares two inventors with the 525 Application.
7 Ken Shiozaki et al, Cylindrical Molded Catalyst, U.S. Patent 4,366,093
(1982).
8 Raimund Felder et al., Heterogenically Catalyzed Gas-Phase Partial
Oxidation Method for Precursor Compounds of (Meth)Acrylic Acid, U.S.
Patent Application Publication US 2004/0054222 A1 (18 March 2004),
based on a PCT application filed 12 January 2002. Felder is assigned to
BASF and shares two common inventors with the 525 Application.
9 Tatsuya Kawajiri et al., Catalyst for Oxidation of Acrolein and Process for
Preparation Thereof, U.S. Patent 4,892,856 (1990).
10 Hiromi Yunoki, Catalyst for the Synthesis of Unsaturated Aldehyde,
EP 1 340 538 A1 (3 September 2003).
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E. Claims 20-22 stand rejected under provisional
obviousness-type double patenting over claims 1
and 11-15 of Petzoldt 57311 combined with the teachings
of Tenten and Shiozaki.
Petzoldt does not dispute the Examiner’s finding that Tenten discloses
catalysts having compositions within or overlapping those recited in the
rejected claims. Regarding Rejections A and B, Petzoldt argues that neither
Tenten nor Shiozaki disclose or suggest anything regarding the side crushing
strength or the existence of an optimum range of side crushing strength that
correlates with the best catalyst performance. (Br. 12, paras. 3-4. 13, 3d full
para.) Petzoldt argues further that the Examiner erred in finding that Tenten
discloses making the same catalyst by the same process. (Br. 13, 4th full
para.; cf. OA para. bridging 8-9; Ans., para. bridging 8-9.) In Petzoldt’s
view, the additional references Shiozaki, Felder, Kawajiri, and Yunoki do
not remedy the deficiencies of Tenten or Shiozaki, and thus cannot render
the claimed subject matter obvious. Petzoldt argues further that the
Examiner erred in concluding that the side crush strength is inherent in
Tenten. (Id.) Regarding Rejections C and D, Petzoldt argues further that the
Examiner erred in holding that the pore size distribution recited in claim 20
would have been an obvious optimization. (Id. at 17-18.) Regarding
Rejection E, Petzoldt argues further that the Examiner improperly relied on

11 Jochen Petzoldt and Klaus Joachim Mueller-Engel, Heterogeneous
Catalyst for the Preparation of Acrolein by Partial Gas Phase Oxidation of
Propene, application 11/627,573, filed 26 January 2007 as a division of an
application filed 28 October 1994.
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the reference specification in holding the appealed claims obvious in view of
the reference claims. (Reply12 para. bridging 4-5.)
The Examiner maintains that because “Tenten discloses the same
catalyst and catalyst precursor bodies as the instant application, produced by
the same process (Tenten, column 5, lines 47-61; column 6, lines 14-50; and
column 16, l. 20-53) as the instant application” (OA 8-9, ¶ 18), “the catalyst
and catalyst precursor bodies of Tenten would inherently have the same
crushing strength as taught by the instant application” (id.). The burden,
argues the Examiner, is on Petzoldt to prove otherwise. (Id.) The Examiner
responds further that the additional references were not relied on to cure the
alleged deficiencies of Tenten or Shiozaki. (Ans. 21, 23, 32.) In particular,
the Examiner argues, although Kawajiri does not disclose any particular
distribution of pore sizes, as required by claim 20, Kawajiri illustrates the
importance of pore diameter distributions. Therefore, according to the
Examiner, optimization of that parameter would have been a matter of
routine. (Ans. 23.)
Petzoldt responds that the Examiner has failed to show that the prior
art was aware that the side-crushing strength of the catalyst precursor was a
result-effective variable, and that optimization of an unrecognized variable
cannot be the basis of obviousness. (Reply, 2-3.) Similarly, Petzoldt argues
that Kawajiri discloses a “significantly different pore diameter distribution
(id. at 4), and thus does not provide guidance for optimizing to the range
recited in claim 20.

12 Reply Brief filed 24 February 2009 (“Reply”).
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The dispositive issue with respect to Rejections A, B, and E is
whether the Examiner has established an adequate basis to conclude that the
side crush strength of the catalyst precursor recited in the claims is an
inherent property, such that it would have been obvious to mold the prior art
precursors to obtain catalysts having the recited geometrical properties.
The dispositive issue with respect to Rejections C and D is whether
the Examiner established an adequate basis to conclude that a person having
ordinary skill in the art would have recognized that the pore size diameter
distribution was a result-effective variable that should be optimized to
achieve the pore size distribution recited in the claims.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Although optimization of a variable known to be result-effective is
generally prima facie obvious, as the predecessor to our reviewing court
explained over thirty years ago, “[w]e have found exceptions to this rule
[In re Aller, 220 F.2d 454 (CCPA 1955)] in cases where the results of
optimizing a variable, which was known to be result effective, were
unexpectedly good. . . . This case, in which the parameter optimized was
not recognized to be a result-effective variable, is another exception.”
Application of Antonie, 559 F.2d 618, 620 (CCPA 1977).
Petzoldt does not dispute the Examiner’s findings that Tenten, Felder,
and Petzoldt 573 disclose similar annular unsupported catalysts having
overlapping compositions and similar functions. Regarding Rejection A,
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however, as Petzoldt points out, the Examiner has not identified any
evidence in Tenten indicating that the catalyst precursor side crush strength
was recognized as a parameter that could be varied to modulate any process
parameter. Indeed, the Examiner has not identified such evidence in any of
the applied references.
Nor has the Examiner explained why the crush strength would have
been inherent in the propene oxidation catalyst precursors disclosed by
Tenten. The Examiner has not shown that Tenten employs compaction
conditions useful for producing the recited crush strength, or compaction
conditions identical or substantially identical to those used by Appellants.
Even Felder, as pointed out in the 525 Specification (Spec. 2, l. 41-3, l. 2),
mentions only that the side crush strength of a precursor ring was
about 10 N, which is below the range of 12-23 N recited in the appealed
claims. The Examiner has not indicated what teachings in Felder might have
led a person having ordinary skill in the art to produce catalyst precursors
taught by Tenten having the recited crush strength. It is not sufficient that a
person having ordinary skill in the art could have made the discovery
underlying the claimed process. Rather, it must be shown that such a person
would have been led to that discovery using only ordinary creativity. The
Examiner has failed to make that showing.
Accordingly Rejection A is REVERSED.
Similarly, regarding Rejection C, it is not enough merely to observe
that the prior art recognized that pore-size diameter plays a role in a related
catalytic process. Rather, it must be shown, for example, that the prior art
would have suggested the recited pore size to be desirable to obtain some
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Application 10/934,525

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result, and that persons having ordinary skill in the art would have known
how to achieve that pore size. Or, perhaps, that the recited pore size would
have been a necessary and inevitable result of an obvious modification of a
prior art process.
The Examiner has not come forward with evidence and argument for
any such case of obviousness. Indeed, Kawajiri, which is concerned with
catalysts that oxidize acrolein to acrylic acid, teaches that “industrially-
excellent catalysts can be obtained only when the catalysts are imparted with
properties resulting from the combination of three factors of catalyst surface
area, pore volume and pore diameter distribution.” (Kawajiri, col. 2, ll. 2-6.)
Kawajiri teaches further that various methods of forming unsupported
catalysts, including extrusion and pill-forming, “in some batches give
catalysts which do not have the surface area, pore volume and pore
distribution specified by this invention, . . . these other forming methods are
inferior to the centrifugal flow coating method.” (Id. at col. 8, ll. 37-44.)
Thus, the preponderance of the evidence of record indicates that the pore-
size diameter, distribution, and other geometric properties of unsupported
catalyst particles are not inevitable or inherent properties of a generalized
method of catalyst particle formation. Rather, as Petzoldt argues (BR., para.
bridging 13-14), “depending upon the pressure used in the compaction step,
the physical properties of the compacted product will differ.”
Moreover, Kawajiri teaches that “if there is not a distribution in which
the pores are also distributed in two ranges of from 1.0 to less than 10.0 μm
and from 10.0 to 100 μm, it is not possible to obtain enhancement of the
performance” of the catalyst. (Kawajiri, col. 2, l. 68, to col. 3, l.3.) Thus,
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the pore size distribution taught by Kawajiri is most concerned with pore
sizes greater than 1μm in diameter, which Appellants have found play “only
a minor role in annular unsupported catalysts obtained in accordance with
the invention.” (Spec. 13, ll. 4-7.) As the Examiner appears to have
recognized (Ans. 23), the pore size distributions taught by Kawajiri are
outside the range recited for the claimed catalysts.
Thus, Kawajiri does not cure the deficiencies of Tenten and Shiozaki
with respect to the pore size distribution recited in claim 20. We therefore
REVERSE Rejection C.
In Rejections B and D, the Examiner candidly states that the
additional references are not relied on to bolster the prima facie case against
the independent claims. Nor is it evident on the face of the other documents
that such disclosures are present. Accordingly, we REVERSE Rejections B
and D.
At this juncture, we observe that there are no outstanding rejections of
the appealed claims but for the provisional obviousness-type double
patenting rejection (“PODP”) over certain claims of the later-filed copending
Petzoldt 573 application, which is under final rejection as of the date of this
Decision. USPTO policy under these circumstances, as enunciated in the
Manual of Patent Examining Procedure, is to withdraw the provisional
rejection “and permit the earlier-filed application to issue as a patent without
a terminal disclaimer.” MPEP § 804.I.B.1, 8th ed., Rev. 5 (August 2006).
The issue of obviousness-type double patenting should in such cases be
resolved in the later-filed copending application. (Id.) Under these
circumstances, our Decision on the PODP is purely advisory.
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To clarify the record, however, we note that we have rejected as
unsupported the Examiner’s conclusion (OA 15; Ans. 15) that Tenten and
Shiozaki teach that properties such as total pore volume and specific surface
area would be inherent in this class of catalysts. In this rejection, the
Examiner has not shown that the preponderance of the evidence supports the
conclusion that “the catalyst of application No. 11/6237572 produced by the
process of Tenten would be highly expected to have the pore diameter
distribution as that taught by the instant application” (Ans., para.
bridging 33-34).
Accordingly, we REVERSE the Examiner’s rejection based on
obviousness-type double patenting.
C. Order
We REVERSE the rejection of claims 1-3, 5, 8-19, 27, and 33 under
35 U.S.C. § 103(a) in view of the combined teachings of Tenten and
Shiozaki.
We REVERSE the rejection of claims 6 and 7 under
35 U.S.C. § 103(a) in view of the combined teachings of Tenten, Shiozaki,
and Felder.
We REVERSE the rejection of claims 20-25 and 29-31 under
35 U.S.C. § 103(a) in view of the combined teachings of Tenten, Shiozaki,
and Kawajiri.
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We REVERSE the rejection of claims 26 and 32 under
35 U.S.C. § 103(a) in view of the combined teachings of Tenten, Shiozaki,
Kawajiri, and Yunoki.
We REVERSE the rejection of claims 20-22 under provisional
obviousness-type double patenting over claims 1 and 11-15 of Petzoldt 573
combined with the teachings of Tenten and Shiozaki.
REVERSED

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