Ex Parte Matusz

Patent Trial and Appeal Board

Mar 22, 2016

12116905 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/116,905 05/07/2008 Marek Matusz
23632 7590 03/24/2016
SHELL OIL COMPANY
PO BOX 2463
HOUSTON, TX 77252-2463
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.
TH3262 (US) 7988
EXAMINER
KOSACK, JOSEPH R
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAREK MATUSZ
Appeal2013-010123
Application 12/116,905
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
catalyst for the epoxidation of an olefin. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellant identifies the Real Party in Interest as Shell Oil
Company (see Br. 2).
Appeal2013-010123
Application 12/116,905
Statement of the Case
Background
"In olefin epoxidation, a feed containing an olefin and oxygen is
contacted with a catalyst under epoxidation conditions" (Spec. 1 ). "Olefin
epoxidation catalysts typically comprise a silver component, usually with
one or more additional elements deposited therewith, on a carrier" (Spec. 1 ).
The Claims
Claims 1-5 and 7-16 are on appeal. Independent claim 1 is
representative and reads as follows:
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
quantity of the rhenium promoter deposited on the carrier is
greater than 1 mmole/kg, relative to the weight of the catalyst;
the first co-promoter is selected from the group
consisting of sulfur, phosphorus, boron, and mixtures thereof;
the second co-promoter is selected from the group
consisting of tungsten, molybdenum, chromium, and mixtures
thereof; and
the total quantity of the first co-promoter and the second
co-promoter deposited on the carrier is at most 3.8 mmole/kg,
relative to the weight of the catalyst.
The Issue
The Examiner rejected claims 1-5 and 7-16 under 35 U.S.C. § 103(a)
as obvious over Lauritzen2 (Ans. 5).
The Examiner finds that:
Lauritzen teaches a catalyst in which the silver content is 14 7
g/kg, rhenium is present in the quantity of 1 mmol/kg, sulfur is
a first promoter in the quantity of 1 mmol/kg, tungsten is the
2 Lauritzen, US 4,766,105, issued Aug. 23, 1988.
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Application 12/116,905
second promoter in the quantity of 1 mmol/kg, and potassium is
present in an amount of 2 mmol/kg, with cesium also present in
the catalyst.
(Ans. 5). The Examiner finds that "Lauritzen teaches in additional examples
that the quantity of rhenium can be increased to 2 mmol/kg." (Ans. 5).
The Examiner finds that because "the general conditions for the
catalyst are known in the art by virtue of the teachings above, the person of
ordinary skill would be motivated to optimize the concentrations of the
promoters in the catalyst in a routine matter to arrive at the instantly claimed
invention" (Ans. 5).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner's conclusion
that Lauritzen renders obvious an olefin catalyst "wherein the quantity of the
rhenium promoter deposited on the carrier is greater than 1 mmole/kg" as
required by claim 1 ?
(ii) If so, has Appellant provided evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Lauritzen teaches
a catalyst for the production of ethylene oxide from ethylene
and molecular oxygen in the vapor phase which catalyst
comprises a catalytically effective amount of silver, a
promoting amount of alkali metal, a promoting amount of
rhenium and a promoting amount of a rhenium co-promoter
selected from sulfur, molybdenum, tungsten, chromium and
mixtures thereof supported on a porous, refractory support.
(Lauritzen, col. 1, 1. 66 to col. 2, 1. 6)
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Application 12/116,905
2. Lauritzen teaches that in "a preferred embodiment ... the
rhenium is present in an amount ranging from about 0.2 to about 5
millimoles of rhenium per kilogram of total catalyst" (Lauritzen, col. 2, 11.
6-12).
3. Figure 1 of Lauritzen is reproduced below:
FIG.I
~ IO() )IX) 300 400 500 60!l
Cs fppmw.I ~· ·
Figure 1 of Lauritzen depicts
the beneficial effects of rhenium plus sulfur which are indicated
by the highlighted area between the two curves A and C to the
right of their crossover point. It can be seen from the Figure that
the use of rhenium plus sulfur provides not only an increase in
the absolute value of the initial selectivity obtained at optimum
cesium concentration, but also a significantly improved initial
selectivity of the catalyst at high cesium concentrations e.g.,
300 ppm cesium and over when compared to catalysts
containing no rhenium.
(Lauritzen, col. 21, 11. 19--28).
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Application 12/116,905
4. Table 7 of Lauritzen is reproduced, in part, below:
TABLE7
EFFECT OF VARIOUS RHENIUM CO-PROMOTERS ON CATALYST PERFORMANCE
Co-Pwmctet
Re T11tget(ltl Re Element,
Alkali metal(~) Ltvcl, Co·promote1» Target ·Level,
E:1.periment No. %wAg ppmw ppmw (/o' 9\n 26~ ..
D') TH 6.4 1~ ·) .1.t..· J.6 %.7 2.{~l
E'''l rn UJ j7) ,.,. l~ ..:..,:.: 89.5 ~··1 .:.t: .
P*) fi 5.ii r"' .' . .:'.. 2 -~ 8(),2 268
G 8*) Ai; -t. ,: )75 2 gt)_(:~
,,.
~~:
Table II depicts catalysts according to the invention and comparative
examples.
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Application 12/116,905
Principles of Law
"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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
"A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 5; FF 1--4) and agree that the claims
are rendered obvious by Lauritzen. We address Appellant's arguments
below.
Appellant contends that
it would not have been obvious to one of ordinary skill in
the art to increase the rhenium concentration of experiment
7-26 to arrive at the present invention in vie\~1 of these other
experiments. First, in experiment 7-3, no sulfur or tungsten
was present and the selectivity dropped to 81.9. This is
significantly less than the selectivity in experiment 7-26
which was 83.8.
(Br. 3).
We are not persuaded. Lauritzen teaches an overlapping rhenium
range of 0.2 to 5 mmole/kg (FF 2) and exemplifies the use of 2 µmole/g (i.e.
mmole/kg) in figure 1 (FF 3) and in examples 7-3 and 7-31 (FF 4). While
the selectivity results differed between examples 7-3, 7-26, and 7-31, so did
the components of the reaction, so the data does not teach away from the use
of more than 1 mmole/kg of rhenium in the catalyst (FF 4). Figure 1 further
demonstrates that the use of 2 mmole/kg of rhenium increases catalyst
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Application 12/116,905
selectivity when cesium levels exceed 300 ppmw, and that the addition of
sulfate further increases selectivity (FF 3).
Appellant contends that "when experiment 7 -31 is compared to
experiment 7-32 which contained only 1 mmol/kg of rhenium and 1
mmol/kg of sulfur, the selectivity was 83.8, the same as in experiment 7-26.
Accordingly, comparing 7-31 to 7-32 would suggest to one of ordinary skill
in the art that increasing the amount of rhenium would result in a decrease in
selectivity" (Br. 3).
We are not persuaded. Experiment 7-32 differs from experiment 7-31
in the alkali metal used, because it uses lithium in the place of potassium,
and also differs in the amount of silver present in the catalyst. Thus, any
minor differences in the selectivity may be due these components rather than
to the rhenium levels (FF 4 ). In addition, as the Examiner notes, "the
lithium in experiment 7-32 is added as LiB02, leading to a different catalyst
component that is not present in any of the other experiments" (Ans. 7).
Appellant contends unexpectedly discovering
that when the rhenium concentration is greater than 1
mmol/kg in combination with a first co-promoter selected
from the group consisting of sulfur, phosphorus, boron, and
mixtures thereof and a second co-promoter selected from the
group consisting of tungsten, molybdenum, chromium, and
mixtures thereof, a higher selectivity can be achieved. See
Table 2 of the present application in which catalysts A-E
which are in accordance to the invention are compared to
catalysts F through M which are comparative examples.
(Br. 2).
We find this unexpected results argument unpersuasive. None of the
examples according to the invention differ from the comparative examples
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Application 12/116,905
solely in the amount of rhenium. Even one of the closer comparisons,
Example C in Table II of the Specification differs from comparative
Example G in rhenium amount and in cesium amount, while retaining
similar selectivity values (FF 5).
In addition, none of the examples are compared to the closest prior art
of Example 7-26 of Lauritzen. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) ("when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.").
Lastly, claim 1 is drawn to any quantity of rhenium "greater than 1
mmole/kg" but the examples in Table II provide data for a single value of
rhenium 2 mmol/kg, and do not provide data for values greater than 2
mmol/kg. Therefore, the results are not commensurate in scope with the
breadth of the claims. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (Unexpected results must also be "commensurate in scope with the
degree of protection sought by the claimed subject matter.")
Conclusion of Law
(i) The evidence of record supports the Examiner's conclusion that
Lauritzen renders obvious an olefin catalyst "wherein the quantity of the
rhenium promoter deposited on the carrier is greater than 1 mmole/kg" as
required by claim 1.
(ii) Appellant has not provided evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
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Application 12/116,905
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Lauritzen. Claims 2-5 and 7-16 fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
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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