EVONIK DEGUSSA GMBH et al.

Patent Trials and Appeals Board

Sep 20, 2021

2020005062 (P.T.A.B. Sep. 20, 2021)

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.
14/896,719 12/08/2015 Bernd Glöckler 7601/15080 6048
66991 7590 09/20/2021
LAW OFFICE OF MICHAEL A. SANZO, LLC
15400 CALHOUN DR.
SUITE 125
ROCKVILLE, MD 20855
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
09/20/2021 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BERND GLÖCKLER, MARTIN STEFFAN, MARTIN
STEURENTHALER, THOMAS MÜLLER, NICOLAS RIGOT, STEFFEN
KRILL, and MARTIN KÖRFER
Appeal 2020-005062
Application 14/896,719
Technology Center 1700
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–30. See Final Act. 2, 4, 5, 6, 7. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Evonik
Degussa GmbH.” Appeal Br. 2.
Appeal 2020-005062
Application 14/896,719
2
CLAIMED SUBJECT MATTER
Claims 11 and 19, reproduced below, are illustrative of the claimed
subject matter:
11. A reaction tube suitable for preparing hydrogen cyanide at
a temperature of 1000 to 1400°C by the BMA process,
comprising a cylindrical ceramic tube and a catalyst comprising
platinum applied to the inner surface of the tube, wherein the
reaction tube has fins on the inner surface which run in the
longitudinal direction of the tube, extend into the interior space
of the reaction tube and are coated with catalyst.
19. A method for preparing hydrogen cyanide by reacting
ammonia and at least one aliphatic hydrocarbon having 1 to 4
carbon atoms in the presence of a catalyst comprising platinum
at a temperature of 1000 to l400°C, wherein:
a) the reaction is carried out in at least one reaction
tube comprising a cylindrical ceramic tube and a catalyst
comprising platinum applied to the inner surface of the tube; and
b) the reaction tube has fins on the inner surface which
run in the longitudinal direction of the tube, extend into the
interior space of the reaction tube and are coated with catalyst.

Claims Appendix (Appeal Br. 14–15).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Rizzi US 2015/0151273 Al June 4, 2015
Matsumoto US 2008/0234527 Al Sept. 25, 2008
Jakobi US 2008/0014342 Al Jan. 17, 2008
Lomax US 2005/0232857 Al Oct. 20, 2005
Yokota US 2002/0085967 Al July 4, 2002
Adriaenssens WO 2006/050781 May 18, 2006
Manner AU-8-55657 /90 May 5, 1990
Wesser DE 2923596 A1 June 11, 1979

Appeal 2020-005062
Application 14/896,719
3
REJECTIONS2
Claims Rejected 35 U.S.C. § Reference(s)/Basis
11–13, 18 103 Rizzi, Yokota/Lomax
14, 16, 17 103 Rizzi, Yokota/Lomax, Jacobi/Matsumoto
15 103 Rizzi, Yokota/Lomax
11–13, 18–22, 28 103 AU ’657/WO ’7813, Rizzi
15, 24, 25, 30 103 AU ’657/WO ’781, Rizzi, DE ’596
14, 16, 17, 23,
26, 27
103 AU ’657/WO ’781, Rizzi,
Jacobi/Matsumoto

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm

2 The Final Rejection indicates that claim 29 has been rejected, but does not
specifically address it. See Office Action Summary, Disposition of Claims;
Final Act. 2–11. We believe, but are not certain, that claim 29, which
depends from claim 27, was subject to the rejection over AU 657/WO 781,
Rizzi, and Jacobi/Matsumoto. Regardless, Appellant does not separately
argue for claim 29, and, therefore, claim 29 stands or falls with claim 27 (the
claim from which it depends). Should prosecution continue, the Examiner is
encouraged to clarify the status of claim 29.
3 The Final Rejection analyzes the rejection of claims 11–13, 18–22, 28
based on “AU ‘657 or WO ‘781.” Final Act. 7. The dependent claims are
also rejected on this ground with additional references. See id. at 7, 8.
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Application 14/896,719
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the Examiner’s § 103 rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Claim 11 (Rizzi & Yokota/Lomax)4
In rejecting claim 11, the Examiner finds that all structural limitations
are known in the prior art and that a skilled artisan would have combined the
prior art teachings to arrive at the recited apparatus “because Pt is a known
and conventional catalyst.” Final Act. 3–4 (citing Yokota and Lomax).
Based on the structural identity between the recited apparatus and the prior
art, the Examiner finds that the prior art apparatus would likewise be
“suitable for preparing hydrogen cyanide at a temperature of 1000 to 1400°C
by the BMA process” as recited by claim 11. Id. at 8; see also Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“apparatus claims cover what a device is, not what a device does.”).
Appellant argues that the “preamble of claim 11 requires that reaction
tubes must have physical characteristics that enable it to carry out the
reaction stated” but does not identify what these physical characteristics are.
Appeal Br. 10. In any event, claim 11 does not recite any such physical
characteristics. Such non-existent limitations cannot serve as a basis for
patentability. Thus, the principal issue on appeal with regard to the rejection
of claim 11 is Appellant’s contention that the prior art references are
nonanalogous art. See id.

4 Appellant argues against the obviousness rejection of claims 11–18 over
Rizzi and Yokota/Lomax as a group with claim 11 as the representative
claim. See Appeal Br. 9–12. These claims stand or fall together with respect
to the rejection over Rizzi and Yokota/Lomax. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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Application 14/896,719
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“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658–59 (Fed. Cir. 1992).
Appellant argues that Rizzi is not in the same field of endeavor
because Rizzi’s reforming process “bears no clear relationship to the BMA
process for making hydrogen cyanide” recited in claim 11. Appeal Br. 10.
Appellant also argues that Rizzi is not reasonably pertinent “to the problem
of improving yield and space-time yield of hydrogen cyanide in a BMA
process and [is] not pertinent to the problem of preventing soot deposition
during such a reaction.” Id. at 11. Appellant argues that both Yokota and
Lomax are also nonanalogous art because they both reach reforming
processes. Id. at 12.
The Examiner responds that Appellant’s arguments – directed to the
prior art process – are not commensurate in scope with the apparatus claim
11. Ans. 13. Appellant does not respond to the Examiner’s finding and
therefore no reversible error has been identified here. See In re Clay, 966
F.2d at 658 (whether a prior art is analogous art is a question of fact).
Claims 11 & 19 (AU ’657/WO ’781 & Rizzi)5
WO ’781 specifically provides a “process for the production of
hydrogen cyanide and the reaction tube for the process” which “uses

5 Appellant argues against the obviousness rejection of claims 11–30 over
AU ’657/WO ’781 and Rizzi as a group with claims 11 and 19 as the
representative claims. See Appeal Br. 9, 12–13. These claims stand or fall
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Application 14/896,719
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internals that are in the form of helices[.]” WO ’781, pg. 1, 2 (“DE 41 28
201 describes the reaction tubes for BMAVerfahren having internals in the
form of coils with which the turbulent portion of the flow of the reaction
gases is increased.”); Final Act. 9. AU ’651 provides “gastight ceramic pipes
of alumina ceramics” which “are used for the catalytic conversion of a
mixture of methane and ammonia into hydrocyanic acid and hydrogen at
high temperatures in the BMA process.” AU ’651, pg. 1. The Examiner
finds that a skilled artisan would have combined Rizzi’s teaching of
longitudinal fins with the teaching of AU ’657 or WO ’781 because Rizzi
“teaches that longitudinal fins can be used to increase the surface area
instead of helical shape support” and “such fins would not only provide the
desired turbulence as disclosed in AU ‘657 or WO ‘781 but they would also
increase the surface for supporting the catalyst.” Final Act. 7, 9.
Appellant argues that a skilled artisan would not have combined WO
781 with Rizzi because “[t]here is no suggestion in WO ‘781 that the
reaction inserts used therein provide turbulence for a gas flow passing
through its reaction tubes.” Appeal Br. 12. Appellant, however, does not
address the Examiner’s finding based on AU ’657’s teaching of turbulence.
AU ’657, pg. 2; see also id., pg. 1 (“The invention is based on the
knowledge that, in the BMA process, improved mixing of the reaction gases
is evident from the higher yields in the reaction. This is probably due to a
disturbance of the laminar flow in the catalyst pipe.”). No reversible error
has therefore been identified.

together with respect to the rejection over AU ’657/WO ’781 and Rizzi. See
id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Appellant’s arguments that a skilled artisan, “trying to improve
hydrogen cyanide space-time yield without causing soot deposition in the
BMA process would have no motivation for modifying the reaction tubes of
WO ‘781 by adding a feature which causes an increase in turbulence”
(Appeal Br. 12) is unpersuasive first and foremost because it is unsupported
by evidence. “Attorneys’ argument is no substitute for evidence.” Johnston
v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Moreover, Appellant acknowledges that “[p]aragraph [0028] of Rizzi
discloses helical supports and internal longitudinal fins to be technical
alternatives for increasing catalyst surface.” Appeal Br. 12; see also Reply
Br. 4 (acknowledging that Rizzi “teaches that helical supports and fins are
alternatives that may be used for the same purpose”). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). “[W]hen the question is whether a patent claiming
the combination of elements of prior art is obvious,” the answer depends on
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 418. Appellant does
not argue that the use of longitudinal fins yields unpredictable results or is
beyond the ordinary skill.
Appellant’s argument that Rizzi does not teach using longitudinal fins
as advantageous over helical supports (Appeal Br. 12) is unpersuasive
because it attacks the references individually, rather than considering what
the combined references would have suggested to the person of ordinary
skill in the art which forms the basis of the rejection. “Non-obviousness
cannot be established by attacking references individually where the
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Application 14/896,719
8
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
Appellant’s argument that a skilled artisan would be discouraged from
combining Rizzi with AU ’657/WO ’781 (Appeal Br. 12–13) is unsupported
by evidence and is therefore unpersuasive. “Attorneys’ argument is no
substitute for evidence.” Johnston, 885 F.2d at 1581 (Fed. Cir. 1989). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416.
CONCLUSION
The Examiner’s obviousness rejections are affirmed.
More specifically,

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–13, 18 103 Rizzi,
Yokota/Lomax
11–13, 18
14, 16, 17 103 Rizzi,
Yokota/Lomax,
Jacobi/Matsumoto
14, 16, 17
15 103 Rizzi,
Yokota/Lomax
15
11–13, 18–
22, 28
103 AU ’657/WO ’781,
Rizzi
11–13, 18–
22, 28

15, 24, 25,
30
103 AU ’657/WO ’781,
Rizzi, DE ’596
15, 24, 25,
30

14, 16, 17,
23, 26, 27,
29
103 AU ’657/WO ’781,
Rizzi,
Jacobi/Matsumoto
14, 16, 17,
23, 26, 27,
29

Appeal 2020-005062
Application 14/896,719
9
Overall
Outcome
11–30

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED