Application of Kronig

• Decision Date: 22 July 1976
• Docket Number: Patent Appeal No. 76-556.
• Citation: 539 F.2d 1300
• Parties: Application of Walter KRONIG and Gerhard Scharfe.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

539 F.2d 1300

Application of Walter KRONIG and Gerhard Scharfe.

Patent Appeal No. 76-556.

United States Court of Customs, and Patent Appeals.

July 22, 1976.

Burgess, Dinklage & Sprung, New York City, attorneys of record, for appellants; Peter F. Felfe, New York City, of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.

LANE, Judge.

This appeal is from the decision of the Patent and Trademark Office Board of Appeals (board) affirming the examiner's rejection of claims 1-9, 12-15, and 20-27 in appellants' application entitled "Process for the Production of Allyl Acetate."¹ We affirm.

The Invention

The rejected claims relate to a process for preparing allyl acetate in which propylene, oxygen, and acetic acid are reacted together as follows:

The process is catalyzed by a three-component catalyst (palladium metal, an iron compound, and an alkali metal compound) under specified reaction conditions. Illustrative claim 1 follows:

1. Process for the production of allyl acetate in which propylene, oxygen and acetic acid are reacted together in the gaseous phase at elevated temperature in the presence of a three component catalyst comprising, on a support, (1) palladium metal, (2) an iron catalyst selected from the group consisting of iron compounds and iron complex compounds; and (3) an alkali metal catalyst selected from the group consisting of alkali metal compounds and alkali metal complex compounds; said compounds and complex compounds being free of chlorine, bromine, iodine, sulfur and nitrogen and wherein 5 to 300 moles of water are added to the reaction per 100 moles of acetic acid.

The Examiner

In his answer, the examiner relied upon the following seven references:

                  Farbwerke Hoechst A.G
                  (hereinafter Hoechst) (British)        999,551       July 28, 1965
                  Holzrichter et al.                   3,275,680       Sept. 27, 1966
                  Yasui et al. (Canadian)                771,193       Nov. 7, 1967
                  Swift                                3,641,121       Feb. 8, 1972
                  Bryant et al.                        3,534,088       Oct. 13, 1970
                  Kronig et al. (German)               1,296,621       June 4, 1969
                  Clark et al. (British)                 975,683       Nov. 18, 1964
                

Of these, two were not used in the principal rejection of the claims under 35 U.S.C. § 103, but were employed to show specific limitations in claims 5 and 6 (Kronig et al.) and in claim 9 (Bryant et al.). Furthermore, Clark et al. was applied only "optionally." In effect, the principal rejection was based upon four references, viz., Hoechst, Holzrichter et al., Yasui et al., and Swift.

Hoechst discloses the reaction of acetic acid, olefin (e. g. ethylene or propylene) and oxygen using a three-component catalyst system. Thus, example 1 employes ethylene as the olefin and forms vinyl acetate in the presence of a palladium salt, an iron salt, and a potassium salt.² There is no example or specific description in Hoechst specifying what product forms when propylene is used as the olefin. Hoechst does not add water as recited in appellants' claims and uses a palladium salt instead of the free palladium metal recited in appellants' claims. The examiner viewed Hoechst as the closest single prior art reference. In the examiner's view, it would have been obvious to modify Hoechst by substituting free palladium metal for the palladium salt therein, since Swift teaches the interchangeability of palladium in either the salt or free metal form. Moreover, from Yasui et al., one of ordinary skill would have appreciated the advantage of using water in the process of Hoechst when free palladium metal is employed therein. Finally, allyl acetate would have been the expected product when reacting propylene over a free palladium metal catalyst, as specifically described by Holzrichter et al. In this manner, the examiner reasoned that the claimed process would have been obvious from Hoechst taken with Swift, Yasui et al., and Holzrichter et al.

The Board

The board affirmed the examiner's rejection, but limited its discussion to the Holzrichter et al., Yasui et al., and Swift patents. The board viewed Holzrichter et al. as the closest single reference, since that patent specifically discloses a process for preparing allyl acetate in which propylene, oxygen, and acetic acid are reacted together. Holzrichter et al. employ a two-component catalyst comprising palladium metal and an alkali metal compound. The reference does not add water as recited in appellants' claims and does not teach the inclusion, in the catalyst, of an iron compound as recited in appellants' claims. Nevertheless, the board relied upon Yasui et al. for their disclosure that with a metallic palladium catalyst, by-products may be avoided and yields increased by circulating aqueous acetic acid, containing a large amount of water, into the reaction system. Regarding the iron component of appellants' catalyst, the board relied upon Swift, who discloses that iron, as the free metal or in compound form, is a co-catalyst or promoter for any of the noble metals, including palladium. In view of Yasui et al. and Swift, the board reasoned that it would have been obvious to improve Holzrichter et al. by: (1) utilizing acetic acid containing a large amount of water, and (2) adding iron to the Holzrichter et al. catalyst.

OPINION

This appeal presents two issues for our consideration: (1) whether the rejection, as framed by the board, should have been designated a new ground of rejection under 37 CFR 1.196(b), and (2) whether the claimed process would have been obvious under 35 U.S.C. § 103.

Appellants urge that the ultimate criterion of whether a rejection is considered "new" in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection. We agree with this general proposition, for otherwise appellants could be deprived of the administrative due process rights established by 37 CFR 1.196(b) of the Patent and Trademark Office.³ However, under the facts of this case we disagree with appellants that the board added a new ground of rejection. The basis for the examiner's rejection was section 103 obviousness. The evidence considered by the examiner to demonstrate obviousness included, principally, the Hoechst, Holzrichter et al., Yasui et al., and Swift patents. In affirming, the board used the same basis, but, without disagreeing with the examiner's approach, limited its discussion to the evidence contained in Holzrichter et al., Yasui et al., and Swift. The board, like the examiner, relied on Holzrichter et al. as specifically describing a process for preparing allyl acetate in which propylene, oxygen, and acetic acid are reacted together. The board further relied on Yasui et al. to show water addition, as did the examiner. Finally, the board relied on Swift, as did the examiner, for its disclosure of one component of the three-component catalyst recited in appellants' claims. The basic thrust of the rejection at the examiner and board level was the same, and we believe that appellants have had fair opportunity to react to that rejection.

In support of their position that the board's rejection was "new," appellants rely on the following line of cases cited in their brief: In re Waymouth, 486 F.2d 1058, 179 USPQ 627 (CCPA 1973), modified, 489 F.2d 1297, 180 USPQ 453 (CCPA 1974); In re Eynde, 480 F.2d 1364, 178 USPQ 470 (CCPA 1973); In re Echerd, 471 F.2d 632, 176 USPQ 321 (CCPA 1973); In re Moore, 444 F.2d 572, 58 CCPA 1340, 170 USPQ 260 (1971); In re Ahlert, 424 F.2d 1088, 57...