Marosi, In re
| Citation | 710 F.2d 799,218 USPQ 289 |
| Decision Date | 22 June 1983 |
| Docket Number | No. 83-544,83-544 |
| Parties | In re Laszlo MAROSI, Joachim Stabenow, and Matthias Schwarzmann. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Herbert B. Keil, Washington, D.C., argued for appellants. With him on the brief was William M. Blackstone, Washington, D.C.
Fred E. McKelvey, Washington, D.C., argued for appellee. With him on the brief was Joseph F. Nakamura, Sol., Harris A. Pitlick, Washington, D.C., of counsel.
Before MILLER, Circuit Judge, SKELTON, Senior Circuit Judge, and SMITH, Circuit Judge.
This appeal is from the decision of the United States Patent and Trademark Office ("PTO") Board of Appeals ("board") affirming the examiner's rejection of appellants' claims 2-4, 11, 13, 15, 16, and 18-20, for anticipation, , or obviousness, , and indefiniteness, , second paragraph. We affirm in part and reverse in part.
Appellants claim a process for making zeolitic compounds. The various natural and synthetic zeolites are characterized by a microporous structure (with pores of approximately molecular dimensions) and are useful as ion exchange materials, molecular sieves, and catalysts. Zeolitic compounds are, perhaps, most valuable for their catalytic properties and are widely used in industrial processes such as the catalytic "cracking" of heavy (long-molecule) crude oil to produce lighter (shorter-molecule) fractions, such as gasoline. The number of prior cases involving zeolites is evidence of their commercial importance.
Typical prior art processes for synthesizing zeolitic compounds require the presence of alkali metal (added by use of sodium oxide--Na2 O), which must be removed from the resulting zeolite to make it suitable for use as a catalyst for certain processes (including cracking crude oil). (CCPA 1977), involving a process for stabilizing zeolites from which sodium cations had been removed by ion exchange.
Appellants' process does not require use of alkali metal in synthesizing zeolitic compounds, thereby eliminating the need for an ion-exchange step to remove the alkali metal from the resulting zeolite. Independent claim 18, from which the other appealed claims depend, is illustrative:
A process for the manufacture of a nitrogen-containing crystalline metal silicate having a zeolite structure which comprises:
adding a metal oxide, metal hydroxide, metal sulfate, metal nitrate or hydrated metal oxide and a silicon dioxide source that is essentially free of alkali metal to a 5 to 90% strength aqueous solution of stirring the mixture to form a homogeneous gel; and thereafter heating the gel to form the crystalline metal silicate; wherein said metal is selected from the group consisting of aluminum, boron, arsenic, antimony, vanadium, iron and chromium, and
hexamethylenediamine to form a mixture that is essentially free of alkali metal;
whereby said crystalline metal silicate is essentially free of alkali metal.
Product claims 4, 15, and 16 are directed to a zeolite manufactured by the claimed process.
The sole reference relied upon by the examiner and the board is United States Patent No. 4,139,600 to Rollmann et al., entitled "Synthesis of Zeolite ZSM-5." Rollmann et al. teach a process for making a synthetic zeolite that, in its "as synthesized" form, has "extremely low sodium content and the same crystal structure as conventionally synthesized ZSM-5." The Rollmann et al. process requires, as an essential ingredient, an alkali metal. The reference states:
In the present method of preparing a ZSM-5 crystalline aluminosilicate zeolite, a reaction mixture is prepared comprising sources of alkali metal, alumina, silica, organic nitrogen-containing cations, and water.
The mole ratio in the reaction mixture of alkali metal to silica, SiO2 (the most plentiful component, besides water, by at least an order of magnitude), is: Broad--0.01-3.0; Preferred--0.1-2.0; Particularly Preferred--0.2-1.0. (Appellants' calculations that a mole ratio of 0.01 corresponds to 3,819 parts per million ("ppm") alkali metal are not contested.) Although the reference states that the zeolite, as synthesized, can be used "for a number of hydrocarbon conversion reactions" (which are not further specified), it then sets forth a detailed procedure for removing the "alkali metal, e.g. sodium, ions" from the zeolite through the use of conventional ion exchange techniques. The catalytic activity of the resulting ion-exchanged, alkali metal-free zeolite is described, thus:
The hereby prepared zeolite ZSM-5 may be used in a wide variety of organic compound, e.g. hydrocarbon compounds and oxygenates such as methanol, conversion processes. Such processes include, for example, alkylation of aromatics with olefins, aromatization of normally gaseous olefins and paraffins, aromatization of normally liquid low molecular weight paraffins and olefins, isomerization of aromatics, paraffins and olefins, disproportionation of aromatics, transalkylation of aromatics, oligomerization of olefins and cracking and hydrocracking.
All of the examples in the Rollmann et al. specification use, as the source of silica, sodium silicate having 27.8% silica and 8.42% (or 84,200 ppm) sodium oxide, Na2 O.
Appellants rely solely on the absence of sodium in their starting materials to distinguish over Rollmann et al.
The board held that the claim limitation, "essentially free of alkali metal," does not satisfy the requirement of , second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The board explained:
We are well aware that the terminology employed in a claim does not stand alone but must be viewed in the light of the disclosure. However, even when the claims are read in this manner, we fail to find any disclosure in the specification that would tend to indicate just how much alkali metal could be present and still remain within the limitations set forth. Under ordinary circumstances, the disputed phrase would not form a significant part of the claimed subject matter; however, in the present case, it is the determining factor that appellants rely upon to distinguish over the applied prior art. Appellants argue that the compositions Because it did not consider that the limitation "essentially free of alkali metal" distinguished over what Rollmann et al. described as "extremely low sodium content," the board affirmed...
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