Ex Parte Saihata

Patent Trial and Appeal Board

Jun 14, 2016

12377961 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/377,961 02/18/2009
23373 7590 06/16/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Meiko Saihata
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql 11798 1011
EXAMINER
KEYS,ROSALYNDANN
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEIKO SAIHATA
Appeal2014-003194
Application 12/3 77 ,961
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 1-9 (see Reply
Br. 2). Examiner entered a rejection under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Appellant discloses "a process for production of a catalyst for alkenyl
acetate production" (Spec. 1 ). Claim 1 is representative and reproduced in
the Claims Appendix of Appellant's Brief.
1 Appellant identifies the Real Party in Interest as "Showa Denko K.K."
(App. Br. 2).
Appeal2014-003194
Application 12/377 ,961
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kronig2 and Klass. 3
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Kronig discloses a process for the preparation of a catalyst suitable
for the production of vinyl esters (Kronig 8: 7-8; cf Appellant's claim 1 ("A
process for production of a catalyst for alkenyl acetate production")).
FF 2. Kronig's process comprises the treatment of a "catalyst support []
simultaneously or successively, with or without intermediate drying, with a
solution A and a solution B" (Kronig 1: 59-62; see also id. at 8: 14--16
(impregnating a catalyst support "with a solution Band then with a solution
A"); see Spec. 6 (Appellant places "no particular restrictions on the carrier
used for the invention")).
FF 3. Kronig's solution B may be sodium hydroxide (Kronig 8: 43--46; see
Appellant's claim 1 ("the process comprises: 1. a step of impregnating a
carrier with an alkali solution"); see Spec. 8 (Appellant's alkali solution may
preferably be "sodium hydroxide")).
FF 4. Kronig's "solution A contain[s] dissolved salts of palladium and
gold" (Kronig 8: 16-17; see Appellant's claim 1 (A process that comprises
"2. a successive step[,] without drying[,] of further impregnating the carrier
by contact with a solution A comprising at least a compound containing
2 Kronig et al., US 3,775,342, issued Nov. 27, 1973.
3 Klass, US 4,057,575, issued Nov. 8, 1977.
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Appeal2014-003194
Application 12/377 ,961
palladium ... and a compound containing a Group 11 element"); see
Appellant's Spec. 4 (the "Group 11 element is gold or copper")).
FF 5. Kronig discloses that the "impregnating of the catalyst support with
[] solutions [A and BJ is effected in quantities of solutions A and B which
correspond to from 10 to 110% of the absorptive capacity of the catalyst
support for these solutions" (Kronig 8: 22-26; see id. at 1: 69-71; cf
Appellant's claim 1:
the process being characterized in that ... the total amount of
the alkali solution and solution A[, i.e., a solution comprising at
least a compound containing palladium and gold,] is a mass of
at least 1.5 times and no greater than 8.0 times the amount of
water absorption of the carrier.
FF 6. Kronig's Example 2, exemplifies the preparation of a catalyst
wherein one litre of a silicic acid support with an absorptive capacity of 400
ml of water per litre "was impregnated with 400 ml. of an aqueous solution
containing ... NaOH[,] dried [and then] impregnated with 380 ml. of an
aqueous solution ofNa2PdCl4 and HAuCl4," which, as Examiner explains,
results in a "mass of alkali solution and [Appellant's] solution A ... [that]
fall[s] within the claimed range of at least 1.5 to no greater than 8.0 times"
(see Kronig 4: 2-3 and 35--40; Ans. 4).
FF 7. Examiner recognizes, however, that, in contrast to Appellant's
claimed invention, Kronig's Example 2 comprises a drying step between the
steps of impregnating the catalyst support with NaOH and an aqueous
solution ofNa2PdC14 and HAuC14, but finds that Kronig discloses a catalyst
preparation method that can be performed in the presence or absence of a
drying step (see Kronig 4: 35--40; Ans. 4).
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Appeal2014-003194
Application 12/377 ,961
FF 8. Examiner finds that Kronig "fail[s] to teach preparing allyl acetate
using propylene" and relies on Klass to "teach that it is known to prepare
unsaturated esters by contacting an olefin with an organic acid in the
presence of a Group VII noble metal and a redox agent" (Ans. 4--5).
FF 9. Appellant's Example 1 and Comparative Example 4 differ only in
the presence of a drying step between the steps of impregnating the catalyst
support with: (1) an alkali solution and (2) an aqueous solution of Na2PdC14
and HAuCl4 (see Spec. 20-21; cf id. at 26-27).
FF 10. Appellant's Table 2 is reproduced below:
E:<.i>:rn:pl~
Comp,
E.x:.
!~tt&:p
Q:t:~t
"'l
Vi:ny.l
a.c:etl'lution
:tat lo
(~.sis
i!lqUiY
P.. 1 705
CatB.lyist E;xample.
a 2
.~~--""~~ -~-· ~~-~---~
Catalyst CQmp .
. J E.~. 4
Appellant's Table 2 tabulates "[t]he initial activity evaluation results for the
catalyst[ s ]" disclosed in Examples 1, 2, and comparative Example 4 (Spec.
31-32).
ANALYSIS
Based on the combination of Kronig and Klass, Examiner concludes
that, at the time Appellant's invention was made, it would have been prima
facie obvious to substitute propylene for ethylene in Kronig' s process "since
Klass has shown that one can successfully prepare unsaturated esters by
contacting an olefin with an organic acid in the presence of a Group VII
noble metal and a redox agent" (Ans. 5).
4
Appeal2014-003194
Application 12/377 ,961
Appellant contends that "Kronig only generally discloses that the
catalyst support can be either simultaneously or successively treated with
solution A and B, and that the drying step may or may not be present" (App.
Br. 8). "In other words," Appellant contends," "Kronig does not recognize
the criticality of either (a) the order of the impregnation steps or (b) the
absence of the drying step, as shown in the present application" (id.).
"Specifically, [Appellant's Specification establishes that] the vinyl acetate
activity was 705 g/L-cat in Example 1 ... , in which drying was not carried
out, while it was 24 7 g/L-cat in Comparative Example 4 in which drying
was carried out" (App. Br. 5; FF 9--10; cf FF 1-7). Stated differently, the
absence of a drying step between the steps of impregnating the catalyst
support with NaOH and an aqueous solution ofNa2PdCl4 and HAuCl4,
results in an "unexpected increase improvement in the properties of the
resulting catalyst, at least in terms of vinyl acetate activity" (App. Br. 7-8).
Examiner's reliance on Klass to suggest the preparation of allyl acetate using
propylene in Kronig's process fails to make up for the foregoing deficiency
in Kronig (App. Br. 8).
We recognize, but are not persuaded by, Examiner's assertion that
Appellant's comparative examples, upon which they base their unexpected
results "is not persuasive because it is not a comparison with the closest
prior art of record, i.e., Kronig" (Ans. 7). Notwithstanding Examiner's
contention to the contrary, Appellant's unexpected result is based upon a
comparison of their claimed invention to a process that is closer to their
claimed invention than Examiner's prior art (see FF 9--10; Reply Br. 4
("Comparative Example 4 is a closer comparison to working Examples 1
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Appeal2014-003194
Application 12/377 ,961
and 2 than the examples of Kronig, because the only difference between
these examples is the absence of the drying step"); cf FF 1-8).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1-9 under
35 U.S.C. § 103(a) as unpatentable over the combination ofKronig and
Klass is reversed.
REVERSED
6