Ex Parte Avenier et al

Patent Trial and Appeal Board

Jan 25, 2017

13381281 (P.T.A.B. Jan. 25, 2017)

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.
13/381,281 03/30/2012 Priscilla Avenier PET-2744 8768
23599 7590 01/27/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
SWAIN, MELISSA STALDER
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
Appeal 2016-000414
Application 13/381,281
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRISCILLA AVENIER, SYLVIE LACOMBE, and
HERVE CAUFFRIEZ
Appeal 2016-000414
Application 13/381,281
Technology Center 1700
Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and
AVELYN M. ROSS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—9 and 11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of this appeal relates to “improved catalytic
formulations based on at least one metal from the platinum group for use in
1 This decision makes reference to the Specification filed Dec. 28, 2011
(“Spec.”), the Final Office Action mailed Nov. 24, 2014 (“Final Act.”), the
Appeal Brief filed Apr. 23, 2015 (“App. Br.”), the Examiner’s Answer
mailed Aug. 6, 2015 (“Ans.”), and the Reply Brief filed Oct. 6, 2015
(“Reply Br.”).
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[hydrocarbon] conversion, as well as their mode of preparation.” Spec. 1:7—
10. Claim 1 is illustrative (disputed element italicized):
1. A process for preparing a catalyst comprising at least one
metal M that is a platinum group metal, tin, a phosphorus
promoter, a halogenated compound, an alumina porous
support and at least one promoter XI that is gallium,
indium, or antimony, said process comprising:
a) introducing the promoter or promoters XI and phosphorus to
a prepared sol of alumina then shaping the support;
b) introducing tin during introduction of the promoter or
promoters XI, and phosphorous during a) to a prepared
sol of alumina a) and b) being simultaneous',
c) drying a product obtained from b);
d) calcining a product obtained in c) at a temperature of 350°C
to 650°C;
e) depositing at least one platinum group metal M on a product
obtained in d);
f) drying a product of e) in a stream of neutral gas or a stream of
gas containing oxygen, at a moderate temperature not
exceeding 150°C;
g) calcining a product obtained in f) at a temperature of 350°C
to 650°C.
The Examiner maintains,2 and Appellants3 appeal, the rejection of
claims 1—9 and 11 under 35 U.S.C. § 103(a) as unpatentable over Le Goff.4
Ans. 2; App. Br. 2. Appellants argue the subject matter of independent
2 The status of claim 12 is that it is either withdrawn (Final Act. 1) or
cancelled (App. Br. 2). In any event, claim 12, which was subject to
restriction (Final Act. 2), is not before us in this appeal.
3 Appellants identity the real party in interest as IFP Energies Nouvelles.
App. Br. 1.
4 Fe Goff et al., WO 2008/087273 A2 (pub. July 24, 2008) (“Fe Goff’).
Citations herein are to corresponding US 8,148,288 B2 (iss. Apr. 3, 2012).
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claim 1, and rely on those same arguments for claims 2—9 and 11. App. Br.
2—6. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 2—9 and 11 will
stand or fall together with claim 1 on which they depend.
ANALYSIS
The dispositive issues for this appeal are (1) whether the Examiner
erred in finding that Le Goff groups together phosphorous and promoters
that contain tin, gallium, or indium, suggesting that phosphorous is itself
another promoter and treated like the other promoters when it teaches that
extra promoters can be added together, and (2) whether the Examiner erred
in finding that Appellants’ evidence of secondary considerations is
insufficient to establish unexpected results. Ans. 4—6; Final Act. 2—3, 5.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejection.
It is the Examiner’s position that Le Goff suggests the subject matter
of claims 1—9 and 11 for the reasons stated on page 2-4 of the Final Action
and pages 2-4 of the Answer.
In the Appeal Brief, Appellants argue that the Examiner erred in
finding that Le Goff suggests “a process wherein a second promoter . . . plus
phosphorous and tin are introduced simultaneously to a prepared sol of
alumina, prior to Pt group metal.” App. Br. 3. Appellants contend that
“[t]he introduction of phosphorous is not described with specific detail in
LeGoff, there is no reference as to what stage the [phosphorous] is added
and there are no examples which disclose the introduction of (optional)
phosphorous, much less simultaneously with tin and patentees’ promoter XI
in the process of preparation.” Id. According to Appellants, because
“LeGoff teaches no preference for any incorporation technique, [it] thus
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teach[es] that they all are equivalent.” Id. Appellants contend that their
proffered evidence of unexpected results disproves such equivalence. Id.
Appellants also contend that “the example in LeGoff closest to the present
claims is example 6” although “no phosphorous is employed” in Le Goffs
example 6. Id. In addition, Appellants argue that comparative catalysts K,
J, and P “show a lower selectivity (the yield of C5+ and aromatic
compounds is smaller) and [] less stability (higher amounts of coke)”
compared to catalysts H and L. Id. at 4—5 (citing “Tables 2, 3 and 4 in the
specification and declaration”).5 Appellants assert that this level of
improvement is significant if scaled to a monthly production of C5+
reformate and that such small changes in yield are impressive results to one
of ordinary skill in the art in view of Lapinski6 showing such small changes
in Figures 1 and 2. Id. at 5.
The Examiner responds that
due to the way that the LeGoff prior art is written where
phosphorus is discussed with the other promoters, it is implied
that phosphorus is itself another promotor or treated like the
other promotors. Therefore, one of ordinary skill in the art at
the time of the invention would be logically led to add the
phosphorus at the same time as another promotor with an
expectation of success.
Ans. 4—5; Final Act. 2—3 (citing Le Goff 2:33—59, 6:9-13). Regarding the
argument about a monthly yield of reformate, the Examiner responds that
5 Table 2 in the Specification (Spec. 15) includes catalyst H, but not catalysts
K, J, P, or L. The Declaration of Jean-Pierre Burzynski, dated Sept. 23,
2014, (“Burzynski Deck”) describes the preparation of catalysts J through N
and lists those catalysts in Table 3 along with catalysts D and H. Neither the
Specification nor the Burzynski Decl. include a Table 4.
6 Lapinski et al., US 8,758,599 B2 (iss. June 24, 2014) (“Lapinski”).
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this is merely a theoretical attorney argument and “does not necessarily
indicate a significant unexpected result when dealing with the product on a
large scale.” Id. at 6. The Examiner finds that “a scientific explanation [is
needed] as to why a .3% difference yield of C5+ would be significant or
even unexpected as an additional promoter is also used.” Id.
In the Reply Brief, Appellants argue that one of ordinary skill in the
art would expect a lower catalytic activity when phosphorous is introduced
into the alumina sol rather than by impregnation due to the phosphorous (P)
being “homogeneously distributed throughout the support” by the former
instead of being “more concentrated on the surface of the support leading
[to] a higher concentration of P in the outer shell of the support” in the latter
situation. Reply Br. 2. According to Appellants, “the conventional
procedure in the art is to introduce P with Pt, and . . . incorporation would be
after the support is formed from the sol.” Id. Appellants contend that
introducing “three promoters (Sn, In, and P)” simultaneously into the
support produces a synergistic effect that is not “foreseeable for the person
skilled in the art, nor it is derivable [from] LeGoff.” Id. (citing Example 6 of
Le Goff as introducing in the support P and Sn but not In). Appellants assert
that catalyst K is prepared the same as catalyst H with the exception that “P
is not introduced together with Sn and In but by a later impregnation
together with Pt” and the result is that catalyst H “shows a higher C5+ yield
and a lower coke formation than catalyst K.” Id. at 3. Appellants further
contend that a small change of 0.3% increase in yield is significant in view
of Antos7 which reports increases of the C5+ yield for Pt-Re and Pt-Sn
catalysts as 1 wt%, 0.6 wt%, and 0.5—0.7 wt%. Id. at 3^4.
7 G. Antos et al., Catalytic Naphtha Reforming, 2nd ed. 339-344 (“Antos”).
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We are not convinced that the Examiner reversibly erred in rejecting
claim 1 as unpatentable over Le Goff for the reasons stated by the Examiner
in the Final Action and Answer. Ans. 2—6; Final Act. 2—5. We add the
following primarily for emphasis.
Appellants’ arguments are not persuasive of error for a number of
reasons. First, Appellants’ argument that Example 6 of Fe Goff does not
include phosphorous and differs in performance compared to catalyst H is
unpersuasive because “a reference is not limited to the disclosure of specific
working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation
omitted). Rather, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”).
Second, Appellants’ argument that a difference of 0.3 wt% is
significant and unexpected is not supported by the record. Neither the
Specification nor the Burzynski Declaration characterizes the differences as
significant or unexpected. The Burzynski Declaration refers to the
differences as being “better” and “higher.” The Specification characterizes
the catalytic performance as “improved.” Spec. 3:26. Not only does the
Antos reference disclose differences or improvements in catalytic
performance in excess of the 0.3 wt% shown by Appellants on this record,
but the portion of Antos to which Appellants direct us similarly does not
characterize the difference, even at Antos’s greater magnitude, as significant
or unexpected. Antos 339.
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Third, Appellants’ argument that the examples show a significant and
unexpected advantage due to the claimed method is not persuasive because
Appellants do not direct us to any evidence to rebut the Examiner’s finding
that the benefit of adding phosphorous with the other promoters disclosed by
Le Goff would be expected in view of an additional promoter being added
into the support. Ans. 5. The Examiner’s finding regarding the expected
benefit of adding a promoter to improve catalytic performance therefore is
not disputed by Appellants. Moreover, the Examiner’s finding is supported
by Appellants’ comparative examples A and B wherein catalyst A includes
tin in the support while catalyst B includes both tin and indium in the
support for a C5+ yield of 88.79 wt%, which is 0.41 wt% greater than that of
catalyst A. Spec. 15 (Table 2). Based on this record, the addition of another
promoter would be expected to improve the catalytic performance.
Fourth, Appellants’ assertion of surprising and unexpected results is
unpersuasive because Appellants merely direct us to comparative examples
in the Specification and the Declaration that allegedly show less favorable
catalytic performance compared to other examples (catalysts D, H, L, and
M) that utilize phosphorous in addition to tin, indium, and/or gallium
promoters in the support. App. Br. 4—5. Such evidence is insufficient to
establish surprising results commensurate with the scope of claim 1, which
also includes antimony as a promoter. Appellants’ evidence is also
insufficient as a comparison to the closest prior art, i.e., Le Goff, which
Appellants do not dispute discloses phosphorous. App. Br. 3 (“[t]he
introduction of phosphorous is not described with specific detail in
LeGoff’). Therefore, Appellants’ selection of example 6 from Le Goff,
which does not include phosphorous, is not a comparison to the closest prior
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art. In addition, Appellants provide no evidence as to how one of ordinary
skill in the art would understand Le Goffs disclosure that “[t]he catalyst can
optionally also comprise phosphorus.” Le Goff 2:41. Therefore, the
Examiner’s finding that Le Goffs discussion of phosphorus with the other
promoters implies that “phosphorus is itself another promoter or treated like
the other promotors” stands unrebutted by Appellants. Ans. 4—5. To the
extent that Appellants’ contentions regarding the expected difference
between introducing phosphorous by impregnation versus by introduction
into the alumina sol (Reply Br. 2) is evidence that one of ordinary skill in the
art at the time of the invention would have known both means to introduce
phosphorous and would have selected impregnation instead, Appellants have
not adequately explained why it would not have been obvious for one of
ordinary skill in the art to use a known means of introducing phosphorous,
particularly in view of Le Goff’s non-limiting disclosure regarding the
introduction of phosphorous.
It is well settled that Appellant has the burden of showing unexpected
results. In re Freeman, 474 L.2d 1318, 1324 (CCPA 1973); In re Klosak,
455 L.2d 1077, 1080 (CCPA 1972). Such burden requires Appellants to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 L.2d 388, 392
(Led. Cir. 1991), and that is reasonably commensurate in scope with the
protection sought by claim 1 on appeal, In re Grasselli, 713 L.2d 731, 743
(Led. Cir. 1983); In re Clemens, 622 L.2d 1029, 1035 (CCPA 1980); In re
Hyson, 453 L.2d 764, 786 (CCPA 1972). The extent of the showing relied
upon by Appellants must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 L.3d 1339, 1344 (Led. Cir. 2005).
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Furthermore, it is only in the Appeal Brief that Appellants state that
the results are unexpected when phosphorous is introduced simultaneously
with the promoter or promoters, but such a statement by the attorney is not
enough. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining
that argument by counsel cannot take the place of evidence). Rather than
describing any surprising results with respect to the comparative examples
(catalysts A, B, and C), the Specification tabulates the catalyst performance
of each example. Spec. 15 (Table 2). Table 2 does not adequately indicate
that the results obtained would have been unexpected. Moreover, what
would have been expected also is not explicitly conveyed by the
Specification. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed.
Cir. 2007) (A proper evaluation of a showing of unexpected results
considers what properties were expected). Similarly, the Burzynski
Declaration reports the catalytic performance of catalysts D, H, J. K, L, M,
and N and describes the relative performance simply as “higher” and
“better” with no discussion of what would have been expected. Burzynski
Decl. (Example 17 last page).
ORDER
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 1—9 and 11 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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