Ex Parte Rubinstein et al

Board of Patent Appeals and Interferences

Mar 28, 2012

11357881 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/357,881 02/17/2006 Leonid Isaakovich Rubinstein TH2646 (US) 5656
23632 7590 03/28/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
03/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEONID ISAAKOVICH RUBINSTEIN
and RANDALL CLAYTON YEATES
____________

Appeal 2010-004386
Application 11/357,881
Technology Center 1700
____________

Before JEFFREY T. SMITH. BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 16-18 and 20. We have jurisdiction under 35 U.S.C. § 6.
Claim 16 is representative of the subject matter on appeal and is set
forth below:
16. A catalyst for the epoxidation of an olefin comprising a silver
component deposited on a carrier comprising alpha-alumina, wherein the
carrier is prepared by a process comprising acid digestion of aluminum.

Appeal 2010-004386
Application 11/357,881

2
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lauritzen 4,766,105 Aug. 23, 1988
THE REJECTION
Claims 16-18 and 20 are rejected under 35 U.S.C. §102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious over
Lauritzen.
ANALYSIS
As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are principally
directed to the subject matter discussed by Appellants on page 3 of the Brief,
and we select independent claim 16 as representative. Any claim not
separately argued will stand or fall with its respective independent claim.
See 37 C.F.R. § 41.37(c)(1)(vii).
We sustain the above rejection for essentially the reasons provided by
the Examiner in the Answer, and we add the following for emphasis.
According to Appellants, “[w]hile Lauritzen discloses the use of
alpha-alumina having similar water absorption and surface area properties as
the catalyst of the present invention, there is no teaching or suggestion of
preparing the carrier by acid digestion of aluminum.” Br. 3. Appellants
refer to page 5, lines 12-21 of their Specification (“unexpected
improvement”), and to Example 1 (beginning on page 24 of the
Specification) and to Comparative Example (beginning on page 29 of the
Appeal 2010-004386
Application 11/357,881

3
Specification), as evidence that the catalyst prepared according to their
claims “had better initial selectivity, better initial activity and better
stability” as compared to catalysts prepared by a different process. Id. 3.
Anticipation under 35 U.S.C. § 102 is a question of fact which is not
rebuttable by evidence of unexpectedly superior properties. See, e.g., In re
Malagari, 499 F.2d 1289, 1302 (CCPA 1974), wherein the court stated that
anticipation cannot be overcome by evidence of unexpected results or
teachings away in the art. See also In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990). With regard to the obviousness rejection, Appellants have not
explained how the Comparative Example from the Specification is
representative of the invention disclosed in Lauritzen. The burden rests with
Appellants to establish, inter alia, that the comparisons are to the disclosure
of the closest prior art. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). In the instant case, Appellants have failed to do so.
In view of the above, we affirm the rejection.
CONCLUSIONS OF LAW AND DECISION
The rejection 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)(1).
AFFIRMED

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