Ex Parte 6616909 et al

Patent Trials and Appeals Board

Jan 22, 2013

90011112 - (S) (P.T.A.B. Jan. 22, 2013)

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.
90/011,112 07/26/2010 6616909 086353-0059 6455
29171 7590 11/25/2015
BATTELLE MEMORIAL INSTITUTE
ATTN: IP LEGAL SERVICES, K1-53
P.O. BOX 999
RICHLAND, WA 99352
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/25/2015 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 TRAIL AND APPEALS BOARD
____________________

Ex parte BATTELLE MEMORIAL INSTITUTE,
Patent Owner and Appellant
____________________

Appeal 2015-005944
Reexamination control 90/011,112
Patent 6,616,909 B1
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and RAE LYNN P.
GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Battelle Memorial Institute (hereinafter “Patent Owner”), the Real Party in
Interest1 of Patent 6,616,909 B1 (hereinafter the “’909 patent”), appeals under
35 U.S.C. §§ 134(b) and 306 from the Examiner’s final decision to reject claims
19, 55, and 64–72 under 35 U.S.C. § 103(a) as unpatentable over Tonkovich2 in

1 See Appellant’s Appeal Brief filed November 14, 2011 (hereinafter “App. Br.”)
at 1.
2 A.L. Tonkovich et al., “The Catalytic Partial Oxidation of Methane

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view of Schubert3 alone or further in view of Yarrington.4 App. Br. 4; Final Office
Action 7–9, mailed July 23, 2014 (hereinafter “Final”); Examiner’s Answer 2,
mailed February 26, 2015 (hereinafter “Ans.”). Claims 65–67, 69, and 72 stand
further rejected under 35 U.S.C. § 112, second paragraph, which is also being
appealed by Patent Owner. App. Br. 4; Final 5; Ans. 2. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306. An oral hearing took place on October 28,
2015. A transcript of the oral hearing will be made of record in due course.
We AFFIRM.
This reexamination proceeding was initiated from a third-party request for
ex parte reexamination filed by CompactGTL plc (Request for Ex Parte
Reexamination, filed July 26, 2010 (hereinafter “Request”)). This is the second
appeal by Patent Owner in this reexamination. The first Decision on appeal was
entered on January 22, 2013, reversing the Examiner’s rejection of claims 19 and
55. The Examiner reopened prosecution after our prior Decision. Thus, we
address the reexamination for the second time on appeal.
The ‘909 patent relates to reactors and processes that can utilize high heat
fluxes to obtain fast, steady-state reaction rates. ʼ909 patent, Abstract.

in a Microchannel Chemical Reactor,” PROCESS MINIATURIZATION: 2ND
INTERNATIONAL CONFERENCE ON MICROREACTION TECHNOLOGY, TOPICAL
CONFERENCE PREPRINTS, AICHE SPRING MEETING, NEW ORLEANS, 45–53 (1998)
(hereinafter “Tonkovich”).
3 K. Schubert et al., “Realization and Testing of Microstructure Reactors,
Micro Heat Exchangers and Micromixers for Industrial Applications in Chemical
Engineering,” PROCESS MINIATURIZATION: 2ND INTERNATIONAL CONFERENCE ON
MICROREACTION TECHNOLOGY, TOPICAL CONFERENCE PREPRINTS, AICHE SPRING
MEETING, NEW ORLEANS, 88–95 (1998) (hereinafter “Schubert”).
4 Yarrington et al., U.S. Patent 5,023,276, issued June 11, 1991 (hereinafter
“Yarrington”).
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Representative claim 19 on appeal reads as follows (with indentations added
for clarity):
19. A process for the catalytic conversion of at least one
reactant in a thermal chemical reaction, excluding deep oxidation,
comprising:
passing at least one reactant into at least one reaction chamber;
said reaction chamber comprising a catalyst that catalyzes the reaction
of said at least one reactant;
transferring heat to or from said at least one reaction chamber
from or into said at least one heat exchanger; and
obtaining at least one product from said reaction chamber;
wherein said step of transferring heat, at steady-state, transfers
at least 0.6 W of heat per cc of total reactor volume, such that, at
steady state, the, catalyst is maintained within a temperature range that
reduces the formation of at least one undesirable chemical reaction
product.
App. Br. i, Claims App’x.
Independent claim 55 is substantially similar to claim 19 but recites that
“wherein said step of transferring heat, at steady rate, transfers between about 10
and about 100 W/cc of total reactor volume.” Id.

II. INDEFINITENESS REJECTION
The Examiner determined that claims 65, 66, 69, and 72 are indefinite under
35 U.S.C. § 112, second paragraph. Final 5. Claims 65 and 66 recite that the “step
of transferring heat” recited in the independent claims “refers to heat transferred
across a wall that is between said reaction chamber and said at least one heat
exchanger.” The Examiner finds that independent claims 19 and 55, from which
claims 65 and 66 depend, respectively, recite “at least one reaction chamber” and
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“at least one heat exchanger,” which encompasses the presence of more than one
reaction chamber and more than one heat exchanger. Id. The Examiner states that
“claims 65 and 66, as claimed, do not provide any spatial relationship of the
claimed wall in relation to the location of multiple reaction chambers and multiple
heat exchangers.” Ans. 3. The Examiner also determined that it is unclear if the
recited “wall” includes an additional structure between the chambers or if the
chambers are sharing a wall through which the heat is transferred. Final 6; Ans. 3.
Patent Owner argues that a spatial relationship is expressly defined by the
claim language, namely “a wall disposed between the reaction chamber and the
heat exchanger.” App. Br. 5. Patent Owner states that the “claims do not exclude
the possibility of additional structure between the chambers” and that “breadth of a
claim is not a proper ground for a rejection under 35 U.S.C. § 112, Second
paragraph.” Id.
“The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification. If the claims read
in light of the specification reasonably apprise those skilled in the art of the scope
of the invention, § 112 demands no more.” Miles Lab., Inc. v. Shandon, Inc., 997
F.2d 870, 875 (Fed. Cir. 1993); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)
(the indefiniteness inquiry asks whether the claims “circumscribe a particular area
with a reasonable degree of precision and particularity”).
The claims of the ’909 patent are directed to a catalytic conversion process.
The only explicit structures required by the claims are “at least one reaction
chamber” comprising a catalyst, “at least one heat exchanger,” and “a wall that is
between said reaction chamber and said at least one heat exchanger.” The claim is
silent as to a specific structure of the chamber, exchanger, and wall except that the
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wall is positioned therebetween. We agree with the Patent Owner that, with
respect to structure, the claim is broad such that a variety of structures will meet
the limitations of the claims. However, “breadth is not indefiniteness.” In re
Gardner, 427 F.2d 786, 788 (CCPA 1970).
Different arrangements of the claimed structures are encompassed by the
claim. For example, the claimed arrangement may include a reaction chamber and
a heat exchanger that share a single wall, an adjacent reaction chamber and heat
exchanger with separate exterior walls for both, or one or more additional walls
positioned between exterior walls of a reaction chamber and a heat exchanger. In
each arrangement, one reactor and one heat exchanger are present, and heat is
transferred “across a wall” between them. We find it of no moment that the
independent claims are open to the addition of more reactors and more heat
exchangers, provided that during the process heat is transferred across a wall
between at least one reactor and at least one exchanger. We find no requirement
that all reactors or all exchangers have such a wall, because the claims require only
“a wall.” “As a general rule, the words ‘a’ or ‘an’ in a patent claim carry the
meaning of ‘one or more.’” TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d
1290, 1303 (Fed. Cir. 2008).
Accordingly, we reverse the Examiner’s rejection of claims 65, 66, 69, and
72 under 35 U.S.C. § 112, second paragraph, as being indefinite.

III. REJECTION BASED ON TANKOVICH AND SCHUBERT
Claims 19, 55, and 64–70 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tonkovich in view of Schubert.
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The Examiner finds that Tonkovich teaches a partial oxidation process in
microchannel reactors using a rhodium-based catalyst with generated heat rapidly
removed from the system using highly efficient embedded microchannel heat
exchangers, meeting most of the requirements of the claimed process. Final 7
(citing Tonkovich 45).
The Examiner recognizes that Tonkovich does not disclose the amount of
heat transfer based on reactor volume as recited in the claims. Id. However, the
Examiner relies on a disclosure in Schubert of microstructure reactors/heat
exchangers in a cross flow design, including a cross flow reactor/exchanger
capable of transferring “up to 200 kW” in a cube with 3cm sides. Final 8 (citing
Schubert 89 and Figure 1). The Examiner calculates that this would be 7,407 W/cc
of total reactor volume (i.e., 200,000 W/(3 cm)(3 cm)(3 cm)). Id. Schubert also
describes a cross flow reactor/exchanger capable of transferring up to 20 kw
(20,000 W) in a 1 cubic centimeter cube. Id. The Examiner concludes that it
would have been obvious for one skilled in the art at the time of the invention to
use a microchannel reactor for a catalytic conversion (e.g. partial oxidation) as
taught by Tonkovich and transfer the claimed heat transfer per volume as taught by
Schubert “so as to maintain the reactor catalyst within a desired temperature range
and reduce the formation of undesirable by-products.” Id. The Examiner further
explains that, because Schubert shows that volumetric heat flux rates far above the
value claimed “are obtainable in microreactors/micro-heat exchangers” and
“experiments on chemical reactions within microstructures have been tested
successfully with heterogeneously catalyzed reactions . . . one of ordinary skill in
the art at the time of the invention would try to improve/optimize the process and
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reactor of TONKOVICH by improving the heat transfer as taught by
SCHUBERT.” Ans. 6.
The issue on appeal is: Whether the evidence supports the Examiner’s
conclusion that a method of performing a catalytic reaction with the claimed heat
transfer rate per cubic centimeter of total reactor volume would have been obvious
to one of ordinary skill in the art having the teachings of Tonkovich and Schubert?
Findings of Fact
FF1. The ’909 patent expressly defines total reactor volume as “the sum of
the volume of the reaction chamber(s) and heat exchanger chamber(s) including
the volume of chamber walls.” ’909 patent, col. 3, ll. 40–42.
FF2. The ’909 patent defines volumetric heat flux as the amount of heat
transferred (in watts) divided by “the sum of the volume of the reaction chamber(s)
and heat exchanger chambers(s) including the volume of chamber walls.”
’909 patent, col. 3, ll. 40–42. The ’909 patent states that “[r]eactors and methods
of the present invention can be characterized by various properties that they
exhibit. Heat flux is a particular important characteristic in the present invention.”
’909 patent, col. 11, ll. 44–45. According to the ’909 patent, the volumetric heat
flux of a particular reactor is calculated by first determining the amount of
conversion and estimating the necessary energy to reach such conversion, and
dividing that conversion by the reactor volume. See ’909, col. 16, l. 23 to col. 17,
l. 37 (“A microchannel isooctane steam reformer was built, with a total volume of
roughly 30 cubic centimeters . . . . The reactor was able to reach isooctane
conversions ranging from 86.5% to 95%, thus requiring roughly 300 W of thermal
energy . . . . The volumetric heat flux of the reactor was roughly 10W/cc . . . .
Under these conditions, nearly 500 W of thermal energy were required to convert
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roughly 75% of the inlet isooctane stream set at 5.04 mL/min. This device
demonstrated a volumetric heat flux greater than 16 W/cc [500 W/30 cc = 16.667
W/cc].”).
FF3. Tonkovich describes a using microchannel reactors for “fast
endothermic reactions, including methane partial oxidation (POx) to synthesis gas”
Tonkovich 45, 1st ¶; see also id. at 46, 3rd full ¶ (“rapid heat and mass exchange”);
46, last full ¶ (“microchannel reactors for fast exothermic reactions.”).
FF4. Tonkovich teaches that “POx processes are fast exothermic reactions
that can benefit from microchannel reactors because the generated heat can be
rapidly removed from the system using highly efficient embedded microchannel
heat exchangers.” According to Tonkovich, this microchannel process avoids
“[h]ot spots and the potential for thermal runaway [present] in conventional
catalytic systems.” Id., last full ¶.
FF5. Tonkovich states that “[r]apid heat production from the exothermic
reaction is quickly removed through a microchannel heat exchanger to quench the
desired reaction products. In addition, these processes are run under near
isothermal conditions to prevent hot spots, thermal runaway and possible
explosions.” Id. at 46, 2nd ¶.
FF6. Tonkovich states that “[c]hannel dimension optimization is a function
of heat removal rates, reaction kinetics, and pressure drop requirements.” Id.,
last ¶.
FF7. The microchannel testing was completed using a mesoporous silica
powder impregnated with a rhodium nitrate solution. Id., last ¶.
FF8. Tonkovich is a reaction study that describes “preliminary experiments
. . . to determine how suitable microchannel reactors are for fast exothermic
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reactions.” Id. at 50–51. However, Tonkovich teaches that a “robust catalyst with
engineered microstructures is required for scale-up to achieve high production
throughputs.” Id. at 51, last ¶. Tonkovich also teaches that “[t]he integration of
rapid heat removal is also needed in new reactor designs to prevent hot spots and
thermal runaway as the heat formation rate increases with throughput.” Id.
FF9. Schubert teaches that “temperature-controlled microstructure reactors
and micro heat exchangers are being fabricated in various sizes for cross flow and
counter flow operations.” Schubert 89, 1st ¶.
FF10. Schubert describes achieving up to approximately 20,000 W/cc of
power for a 1 cubic centimeter device and up to approximately 7,480 W/cc of
power for a 27 cubic centimeter device when “[u]sing hot and cold water as test
fluids.” Id., 2nd ¶. Schubert describes these results to “exceed those of
conventional reactors or heat exchangers considerably.” Id.
FF11. Schubert shows the results of thermal tests that “measured thermal
power as a function of the mass flow.” Id. at 92, Figure 2 and caption. The results
demonstrate that power increases as water mass flow per passage increases and as
hydraulic diameters decrease. Id. These tests were performed using water as a test
fluid. Id.
FF12. Schubert teaches that the heat transfer coefficient increases for a
given throughput when reducing the hydraulic diameter of the microchannels.
Id. at 89, second to last ¶, and at 93, Fig. 3 legend. Schubert also teaches that
designs can be further optimized with respect to microchannel size, pressure drops
and temperature differences. Id. at 89, last ¶.
FF13. Schubert further describes similar microstructure reactor experiments
with chemical reactors, including one that “was tested successfully with a
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heterogeneously catalyzed gasphase reaction” and another that showed
“[p]romising results.” Id. at 90, ¶ 1–4 and references cited therein.
Analysis
Patent Owner argues that the basis for the Examiner’s combination, notably
“desired temperature range and reduced formation of undesirable side
reactions/products” comes from the ’909 patent, and not the prior art.
PO App. Br. 10.
Initially, we disagree with Patent Owner that the teachings of Tonkovich do
not suggest improved heat exchange to achieve particular reaction temperatures
and avoid side reactions. Tonkovich teaches that “fast processing rates favor non-
equilibrium chemistry and high product selectivity.” Tonkovich 45, 1st ¶.
Specifically, Tonkovich teaches that millisecond reaction times in partial oxidation
reactions had “extremely high synthesis gas yields” and inhibited “combustion
products and coke.” Id. 46, 1st ¶. Tonkovich further teaches that millisecond
reaction times require “the rapid thermal quenching that results from integrated
microchemical heat exchangers . . . [that] quench the desired reaction products.”
Id., second ¶. In other words, the skilled artisan would have understood from
Tonkovich that rapid heat exchange is necessary in order to obtain the millisecond
reaction times needed for high product yield with little side reactions that form
“combustion products and coke.” Thus, Tonkovich’s teachings are consistent with
the Examiner’s reasons for combining the references for improved heat exchange.
Moreover, the Examiner expressly stated that “one of ordinary skill in the art
at the time of the invention would try to improve/optimize the process and reactor
of TONKOVICH by improving the heat transfer as taught by SCHUBERT.”
Ans. 6. Improving heat transfer in partial oxidation reactions is expressly taught
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by the Tonkovich reference. See FF4, FF5, and FF8. Patent Owner has not
persuasively demonstrated error in the Examiner’s determination that the skilled
artisan would have looked to the teachings of Schubert to have optimized heat
exchange in performing the reaction described in Tonkovich.
Patent Owner argues that there is no evidence to support a finding that
optimization of the partial oxidation process of Tonkovich “would not have
inherently resulted in the claimed level of volumetric heat flux.” PO App. Br. 11–
13. Similarly, Patent Owner contends that Tonkovich did not enable the skilled
artisan to make the claimed invention. PO App. Br. 11 (citing the Tonkovich Decl.
¶¶ 9–11).
Rejections based on § 103(a) must rest on a factual basis without hindsight
reconstruction of the invention from the prior art. In re Warner, 379 F.2d 1011,
1016–17 (CCPA 1967) (A rejection based on section 103 must have “the necessary
factual basis to support the conclusion that it would have been obvious to one of
ordinary skill to bring the elements together.”); In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”).
We agree with the Examiner that performing a catalytic reaction with the
claimed volumetric heat flux would have been obvious to one of ordinary skill in
the art at the time of the invention because it would have been obvious to optimize
the reactor and reactor conditions described in Tonkovich (FF6) using the heat
exchanging techniques described in Schubert, such as a cross- or counter-flow
design (FF9), increase in mass flow per passage (FF11), decrease in hydraulic
diameters (FF11 and FF12), and knowledge of needed pressure drops and
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temperatures (FF12), to provide for ideal thermal conditions for the catalytic
reaction described in Tonkovich. FF3, FF4, and FF7. There is sufficient evidence
in the record to suggest that these variables were known in the art to be result
effective (FF5, FF10 and FF11) and, accordingly, optimizing these variables would
have been within the routine skill of the ordinary artisan involved with reactor
design for highly exothermal catalytic reactions. In doing so, one would arrive at
an optimal reactor design. Patent Owner does not persuasively dispute these
findings.
Volumetric heat transfer rate is an inherent property of a particular reactor
design. FF2. Accordingly, arriving at an optimal volumetric heat transfer would
be inherent in the optimization of reactor/heat exchanger designs in accordance
with the teachings of Tonkovich and Schubert.
Further, from the teachings of Tonkovich, the skilled artisan would have
prepared a rhodium-catalyzed partial oxidation reactor with a reactor and heat
exchanger microstructure. FF3, FF4, and FF7. Although Tonkovich does not
describe the precise volumetric heat flux, Tonkovich does describe “channel
dimension optimization” based on “heat removal rates, reaction kinetics, and
pressure drop requirements.” FF6. Tonkovich further teaches that “integration of
rapid heat removal is also needed . . . to prevent hot spots and thermal runaway as
the heat formation rate increases with throughput.” FF8. Thus, the skilled artisan
would optimize the reactor design and operating conditions, using the insight for
increasing heat exchange provided by Schubert, to arrive at a structure with
optimal heat transfer for the partial oxidation reaction of Tonkovich. The
teachings of Tonkovich and Schubert indicate that such optimization is within the
skill of the ordinary artisan. An optimal reactor design would necessarily have an
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inherent volumetric heat transfer rate. FF2. While there is no evidence to suggest
that this optimized volumetric heat transfer rate would be greater than 0.6 W/cc or
between 10 and 100 W/cc as recited in the claims, the very high volumetric heat
exchange rates shown in Schubert (FF10) suggests that volumetric heat exchange
greater than the 0.01 W/cc of Tonkovich (Tonkovich Decl. ¶ 6) can be achieved.
Final 8. Thus, it is reasonable to conclude that optimization of the reactor, taking
into account the heat exchange factors described in Tonkovich and Schubert,
would arrive at a structure having a volumetric heat flux within the recited ranges.
With respect to the specific heat transfer values recited in the claims,5 the
Examiner’s reasoning that the choice of a specific heat transfer rate would be
routine optimization to “maintain the reactor catalyst within a desired temperature
range and reduce the formation of undesirable by-products” (Final 8; see also RAN
5–6) is supported by a preponderance of the evidence as discussed above.
Thus, the burden shifts to the Patent Owner to demonstrate that the claimed
ranges of volumetric heat flux are critical to the claimed invention, namely that the
recited volumetric heat flux represent more than the inherent volumetric heat flux
of an optimized reactor design as described in Tonkovich and Schubert. Patent
Owner directs us to no evidence of the criticality of the recited volumetric heat flux
ranges.
Patent Owner contends that “a simple heat exchange between cold and hot
water does not apply to the factors for optimizing chemical/catalyst interactions

5 The “law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims…in
such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results relative to
the prior art range.” In re Woodruff, 919 F.2d 1575, 1578(Fed. Cir. 1990).
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and is irrelevant to the catalytic partial oxidation of methane.” PO App. Br. 9.
Patent Owner argues that such a simple heat exchange does not account for other
factors (“catalytic packing; pressure drop,” etc.) that the skilled artisan would have
considered in catalyzed thermal chemical reactions and would be reflected in the
skilled worker’s selection of volumetric heat flux. Id. (citing the Tonkovich Decl.
¶¶ 9–10).
It is of no moment that Schubert describes improving heat exchange in
reactors by testing the heat exchange with cold and hot water. The Examiner is
relying on the teachings of Schubert as evidence that reactor heat exchange can be
improved and optimized over that described in Tonkovich, which is further
supported by the teachings of Tonkovich of reaction optimization. FF8. Schubert
further expressly states that microchannel reactors demonstrating improved heat
exchanged were successfully used in heterogeneously catalyzed gas phase
reactions. FF13. Thus, a preponderance of the evidence supports the conclusion
that the skilled artisan would have been capable of improving and optimizing heat
exchange in the catalytic process described by Tonkovich. The concept of
improving and optimizing heat exchange is known in the art, but the skilled artisan
is not limited to the precise embodiment described in either Tonkovich or
Schubert. “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary reference
. . . . Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425
(CCPA 1981). “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421.
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The claims of the ’909 patent are directed to a process for a generic catalytic
reaction. The only structural requirements recited in claim 19, for example, are to
the presence of a reactor, a catalyst, and a heat exchanger. Patent Owner’s
arguments that are substantially directed to the particular reactor/exchanger
described in Tonkovich and the particular reactor/exchanger described in Schubert
are not persuasive. As indicated above, reaction variables, such as pressure drop,
mass flow per passage, and even particular channel lengths and dimensions, were
known in the art at the time of the invention to be result effective variables, and
thus, were obvious to optimize by the skilled artisan using routine experimentation.
FF 5, FF10, FF11, and FF12. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Patent Owner argues that claim 55 is separately patentable because of its
more narrowly recited volumetric heat flux. PO App. Br. 13. For the reasons
discussed above, Patent Owner’s arguments are not persuasive. It would have
been obvious to optimize the volumetric heat flux and Patent Owner has not shown
that the resulting volumetric heat flux is critical or otherwise nonobvious, for
example, based on secondary considerations. Woodruff, 919 F.2d at 1578.
Patent Owner also contends that claims 67–70 are separately patentable.
PO App. Br. 13–14. Claims 67–70 recite that the “chemical reaction comprises
hydrocarbon steam reforming.” Patent Owner argues that steam reforming is “a
much slower reaction than partial oxidation” and that “there is no proper scientific
basis for applying the residence time for a partial oxidation reaction to a
hydrocarbon steam reforming reaction.” PO App. Br. 14. However, the claims are
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not directed to any particular residence time. Because the reactor can be optimized
for residence time, as taught by Tonkovich (FF8; Tonkovich 50, 4th full ¶; 51), it is
of no moment that the residence times of one oxidation reaction are different than
another oxidation reaction. The Examiner finds that “[t]he reaction mechanisms of
steam reforming provide for partial oxidation reactions. While steam reforming
and partial oxidation are recognized as different reactions, both are extremely well
known processes for the conversion of methane to synthesis gas.” Ans. 7.
Accordingly, Patent Owner has shown no persuasive evidence of error in the
Examiner’s conclusion that a steam reforming process would have been obvious to
one of ordinary skill in art based on the teachings of Tonkovich and Schubert.

IV. REJECTION BASED ON TANKOVICH AND SCHUBERT
Claims 71 and 72 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Tonkovich in view of Schubert and Yarrington.
Claims 71 and 72 are dependent claims which recite that “the catalyst
comprises a monolith.” The Examiner finds that neither Tonkovich nor Schubert
describes using a monolith catalyst. Ans. 9. The Examiner determines that it
would have been obvious to one of ordinary skill in the art “to modify the process
of TONKOVICH and SCHUBERT and provide it with monolith catalyst with the
motivation of providing a relatively low pressure drop when compared to a packed
bed of a particulate support catalyst as taught by YARRINGTON.” Id.
The issue on appeal is: Whether the evidence supports the Examiner’s
conclusion that a method of performing the catalytic reaction of Tonkovich using
the heat exchanger of Schubert with a monolithic catalyst as described in
Yarrington would have been obvious to one of ordinary skill in the art?
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Findings of Fact
FF14. The ’909 patent teaches that a monolith catalyst is “a single
contiguous, yet porous, piece of catalyst or several continuous pieces that are
stacked together (not a bed of packed powder or pellets or a coating on the wall of
a microchannel) that can easily be inserted and extracted from a reaction chamber.”
’909 patent, col. 10, ll. 19–25. The ’909 patent states that the catalyst support is
preferably foam (particular metal foams), felts, wads and combinations thereof.
Id., col. 6, ll. 15–19; col. 8, ll. 15–17. Less preferably, porous supports may be
honeycombs, provided that the supports have a porosity of at least 5% and an
average pore size of from 1 micron to 1000 microns. Id., col. 6, ll. 9–22. The ’909
patent states a preference for a foam having open cells with “from about 20 pores
per inch (ppi) to about 3000 ppi,” with “pores per inch” being defined as “the
largest number of pores per inch (in isotropic materials the direction or the
measurement is irrelevant; however, in an isotropic materials, the measurement is
done in the direction that maximizes pore number).” Id., col. 6, ll. 23–30.
FF15. Tonkovich describes two catalyst packing configurations. In the first
configuration, the microchannels were packed with 5 wt% Rh/SiO2 catalyst
powder, and that the residence time across the packed powder was 49.3
milliseconds and a pressure drop was less than 250 Pa. Tonkovich 50, 4th full ¶. In
the second configuration, the “header volume” was packed with the same catalyst
powder. Id. 51, 1st full ¶. The second configuration has a residence time of 42
milliseconds but no particular pressure drop was reported. Id.
FF16. Tonkovich states that “The catalytic partial oxidation of methane was
tested with catalyst powders packed within part of the channel region, and then
packed in the header region. It is expected that the former will behave in a more
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isothermal manner, while the latter will mimic an adiabatic reactor.” Id. 50,
second full ¶.
FF17. Tonkovich reports the need for a “robust catalyst with engineered
microstructures is required for scale-up to achieve high production throughputs.”
Id. 51 last ¶.
FF18. The background section of Yarrington describes that using a noble
metal catalyzed monolith was known in the art for catalytic partial oxidation.
Yarrington, col. 2, ll. 35–54. In particular, a monolithic rhodium or platinum-
rhodium catalysts were known in the art as the catalyst for steam reforming
reactions. Id., col. 2, ll. 43–48.
FF19. Yarrington teaches a “honeycomb”-type monolithic carrier with “a
plurality of finely divided gas flow passages extending therethrough.” Id., col. 5,
ll. 29–35. The honeycomb’s gas flow passages are “typically sized to provide from
about 50 to 1,200, preferably 200-600 gas flow channels per square inch of face
area.” Id., col. 5, ll. 60–63.
FF20. Yarrington teaches that rhodium is a one of the “platinum group
metals” suitable for use in a catalyst. Id., col. 6, ll. 44–53; see also col. 7, ll. 17–22
and col. 8, ll. 1–12.
FF21. Yarrington teaches that “[t]he geometric configuration of a 400
cell/in2 monolithic body provides more geometric surface area exposed to the
reactant gas than does a bed of coated beads” and that “lower catalytic metal
loading can be used with the latter, as compared to metal loading on beads, to
attain equivalent results.” Id., col. 8, ll. 44–55. Yarrington further teaches that
“[t]he monolithic configuration of the catalytic partial oxidation catalyst . . .
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affords a relatively low pressure drop across it as compared to the packed bed of a
particulate support catalyst.” Id., col. 11, ll. 32–35.
FF22. Yarrington teaches that “[t]ypically, a material is selected for the
support which exhibits a low thermal coefficient of expansion good thermal shock
resistance and, though not always, low thermal conductivity.” Id., col. 5, ll. 39–43
(emphasis added).
FF23. Yarrington states the following:
The individual gas flow passages of the monolith also serve, in effect,
as individual adiabatic chambers, thus helping to reduce heat loss and
promote hydrocracking. This is particularly so when the monolithic
carrier comprises a ceramic-like material such as cordierite which
has generally better heat insulating properties than do the metal
substrates and, to this extent, the ceramic-type monolithic carriers are
preferred over the metal substrate monolithic carriers. Further, as the
monolith body becomes heated during operation, heat is transferred
back from the downstream catalytic partial oxidation to the upstream
portion of the monolith thereby preheating the entering gas in the inlet
portion and thus facilitating desired hydrocracking and oxidation
reactions.
Yarrington, col. 11, ll. 35–50 (emphasis added).
FF24. Yarrington describes an exemplary reactor vessel which is “insulated
by thermal insulating material 5 to reduce heat losses and to provide essentially a
fixed bed, adiabatic reactor.” Id., col. 12, ll. 59–62, Example 2. Yarrington further
states that “any suitable type of hydrocarbon synthesis reactor, specifically, any
known type of Fischer-Tropsch reactor, may be used in accordance with the
invention in conjunction with the autothermal reformer.” Id., col. 15, l. 67 to col.
16, l. 3.
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Analysis
Patent Owner argues that Yarrington teaches away from the use of a
monolith in combination with a process requiring a high volumetric heat flux
“because Yarrington et al. explain that the advantage of the monolith is that it
prevents heat transfer” in stating that the catalyst flow passages “serve, in effect, as
individual adiabatic chambers.” PO App. Br. 14 (citing Yarrington, col. 11, ll. 35–
38). Patent Owner argues that “Yarrington et al. describe only monolith
configurations that teach away” and “there is no suggestion of other
configurations.” Id. at 15.
We disagree with Patent Owner’s description of the teachings of Yarrington
as being so limited and disagree that Yarrington’s teaching of an adiabatic
monolithic catalyst necessarily teaches away from being combined with the
reaction process of Tonkovich.
Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to produce
the objective of applicant’s invention. However, a statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.” Syntex (USA) LLC v. Apotex, Inc., 407 F.3d
1371, 1380 (Fed. Cir. 2005) (citation deleted).
As discussed above, the claims of the ’909 patent are mostly silent regarding
a specific structure. Claims 19 and 55 merely recite a reactor comprising a catalyst
and a heat exchanger. Claims 65 and 66 further add the presence of a “wall that is
between said reaction chamber and said at least one heat exchanger.” Finally,
claims 71 and 72 recite that the catalyst is a monolith. There are no other structural
requirements for the reactor/exchanger.
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We note that Tonkovich describes a packed bed catalyst positioned in one of
two places, either in the microchannels themselves or in the “header region” of the
reaction chamber. FF15. When positioned in the channels, Tonkovich indicates
that the catalyst was expected to behave isothermally. FF16. When positioned in
the “header region,” the catalyst was expected to behave adiabatically, i.e., without
loss or gain or heat. Id. Accordingly, Tonkovich expressly teaches that the
positioning of the catalyst either within reactor channels or within a “header
region” determines whether the catalyst would have performed adiabatically or
isothermally. The skilled artisan would have recognized that the exemplary “fixed
bed, adiabatic reactor” described in Yarrington (FF24) operates similarly to the
situation where a catalyst is positioned in the header of a reactor rather than in the
microchannels thereof. Accordingly, the disclosure of a monolithic catalyst
behaving adiabatically is combinable with the disclosure in Tonkovich of a catalyst
behaving adiabatically because the claims do not define where or how the monolith
catalyst is present in the reactor chamber, and does not exclude a reactor design
where a monolithic catalyst is positioned in a header portion of a high heat
exchange microchannel reactor, as described by Tonkovich.
Yarrington discloses that monolithic catalysts were well known in the art.
FF18. Yarrington is not limited to the exemplary reactor structure described
therein but recognizes that a monolithic catalyst could be used in “any suitable type
of hydrocarbon synthesis reactors.” FF24. Thus, reliance on only the reactor
design of Example 2 is insufficient to demonstrate that Yarrington teaches away
from combining with the partial oxidation process of Tonkovich. The skilled
artisan would have considered the benefits of using a monolithic catalyst instead of
a coated bead and packed powder catalysts, as recited in Yarrington (FF21), to
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improve the reactor throughput over the packed powder catalyst taught by
Tonkovich. FF16. The skilled artisan would have had further reason to use a
monolithic catalyst as described in Yarrington based on the desire in Tonkovich for
a “robust catalyst with engineered microstructures.” FF17. The monolithic catalyst
of Yarrington meets these particular requirements. FF19. In particular,
Yarrington’s honeycomb catalytic structure is very similar to the honeycomb
catalyst described in the ’909 patent. Compare FF15 with FF18 to FF20.
Further, Yarrington includes a description of more than one type of catalyst
support, specifically acknowledging that ceramic catalyst supports have better heat
insulating properties than metal substrate monolithic carriers. FF23. Though
Yarrington prefers insulative monolithic supports for its particular reactor design
(FF22, FF23 and FF24), the skilled artisan would recognize a broader teaching in
Yarrington that the thermal conductivity of the catalytic support could be varied
depending upon the desired heat loss within a reaction by using a more thermally
conductive material as the catalyst support. FF22 and FF23. Yarrington teaches
that a catalytic support does “not always” have low thermal conductivity. FF22.
Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971);
see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away from
any of these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”).
Accordingly, Patent Owner has shown no persuasive evidence of error in the
Examiner’s conclusion that a monolithic catalyst would have been obvious to one
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of ordinary skill in art for use in the process described in Tonkovich based on the
teachings of Yarrington.
V. CONCLUSION
On the record before us, we affirm the rejection maintained by the
Examiner.

AFFIRMED

FOR PATENT OWNER:

BATTELLE MEMORIAL INSTITUTE
Attn: IP Legal Services, K1-53
P.O. Box 999
Richland, WA 99352

FOR THIRD-PARTY REQUESTER:

MCDERMOTT WILL & EMERY LLP
600 13th Street N.W.
Washington, DC 20005-3096