Ex Parte Beadle et al

Patent Trial and Appeal Board

Jan 13, 2015

10582929 (P.T.A.B. Jan. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN WAYNE BEADLE, STEPHEN HAROLD BROWN,
JOHN STEPHEN GODSMARK, and GEORGES MARIE KAREL MATHYS
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Appeal 2013-001298
Application 10/582,929
Technology Center 1700
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134 from the December 7, 2011,
decision of the Examiner finally rejecting claims 1−11, 13, 16, 18−20, and
22. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is ExxonMobil Chemical Patents Inc. (Appeal Br.
2).
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Application 10/582,929

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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a process for the conversion of
olefins in a reactor by continuously passing a feed containing water and
olefin through a catalyst bed under conversion conditions to form a
conversion product, the water content of the feed being greater during the
initial phase of the process than during the latter phase (Spec. 8). Claim 1 is
representative of the claims on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. A process for the conversion of an olefin in a
reactor, wherein the conversion is the oligomerisation of at least
one olefin selected from the group consisting of ethylene,
propylene, butenes and amylenes to produce C6 to C15 olefins,
the process comprising continuously passing a feed comprising
an olefin and water through a bed of zeolite catalyst under
conversion conditions to form a conversion product, wherein
the water content of the feed is from 450 to 800 wt ppm during
the initial phase of the process of conversion and the latter
phase of the process of conversion is from 250 to 400 wt ppm.
Appeal Br. 14.
REJECTIONS
(1) Claims 1, 5, 8, 9, 13, 18, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mathys2 in view of Garwood.3
(2) Claims 2, 3, and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mathys in view of Garwood and further in view of Edgar.4

2 Mathys et al., U.S. Patent No. 5,672,800, issued September 30, 1997.
3 Garwood et al., U.S. Patent No. 4,150,062, issued April 17, 1979.
4 Edgar et al., “Process Control,” Perry’s Chemical Engineer's Handbook,
J. Wiley & Sons, D. W. Perry and R. H. Green, eds., 7th ed., 1997.
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(3) Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mathys in view of Garwood, and further in view of Edgar and Fair.5
(4) Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mathys in view of Garwood, and further in view of Edgar and Chang.6
(5) Claims 10, 11, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mathys in view of Garwood and further in view of
Cavani.7
(6) Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mathys in view of Garwood and further in view of
Beech.8
Appellants do not make independent arguments with regards to
Rejection (3) (Appeal Br. 10). Accordingly, we do not separately address
this rejection.
Upon consideration of the evidence on this appeal record and each of
Appellant’s arguments, we find that the preponderance of evidence on this
record supports the Examiner’s rejections. Accordingly, we will sustain the
rejections for essentially those reasons expressed in the Answer. We add the
following for emphasis.

5 Fair et al., “Gas Absorption and Gas-Liquid System Design,” Perry’s
Chemical Engineer’s Handbook, J. Wiley & Sons, D. W. Perry and
R. H. Green, eds., 7th ed., 1997.
6 Chang et al., U.S. Patent No. 4,754,096, issued June 28, 1988.
7 Cavani et al., “Effect of Water in the Performance of the ‘Solid Phosphoric
Acid’ Catalyst for Alkylation of Benzene to Cumene and for
Oligomerization of Propene,” Appl. Catal. A, 97, pp. 77196 (1993).
8 Beech, Jr. et al., U.S. Patent No. 4,973,790, issued November 27, 1990.
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REJECTION (1)
The Examiner finds that Mathys discloses a process for olefin
oligomerisation which uses the olefin starting materials recited in claim 1, and
produces C5 to C20 olefins, a group of olefins which encompasses the claimed
C6 to C15 olefins (Ans. 29, citing Mathys, col. 2, ll. 7−18). The Examiner
further finds  and Appellants do not dispute  that Mathys discloses that its
olefin feed has a water content of from 0.05 to 0.25 mol%, which is estimated
to be approximately 2101060 wt ppm, which encompasses both water
content ranges described in claim 1 (Ans. 3, citing Mathys, col. 6, ll. 42−43
and Example 1). The Examiner also finds that Mathys teaches that its process
functions acceptably throughout the disclosed water content range of
210−1060 wt ppm, but does not specifically disclose operating the process
such the water content is from 450−800 wt ppm during the initial phase and
from 250−400 wt ppm during the latter phase (id.).
The Examiner finds that Garwood is also directed to an olefin
oligomerisation process which involves feeding a mixture of olefins and
water so that it contacts a zeolite catalyst (the same general catalyst used in
the Mathys process) (Ans. 3−4). The Examiner provides the following
comparison of the Mathys and Garwood processes:

9 We note that the Answer does not include page numbers. For ease of
reference, we have assigned page numbers to the Answer, with the title page
being assigned page 1.
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(Ans. 14, citing (Mathys, col. 2, ll. 8−9, 43, 60, and col. 7, ll. 14−16, and
Garwood, Abstract, col. 2, l. 17, and col. 9, ll. 37−44). The Examiner
further finds that Garwood teaches that by lowering the concentration of
water in its olefin feed over time, the aging trend of its catalyst is reversed
(Ans. 4, citing Garwood, col. 15, ll. 11−15, and Example 6).
The Examiner concludes that it would have been obvious to modify
the Mathys process to lower the concentration of water in the olefin feed
after the process was initiated because Garwood teaches that doing so
extends the life of the catalyst, and that choosing the specific water
concentrations recited in the claim would have been process optimization
within the skill of one of skill in the art (Ans. 4−5).
Appellants make several arguments urging reversal of the rejection.
First, Appellants argue that Mathys teaches using a constant water
concentration in the feed, and that there would be no reason to modify the
Mathys process to lower the water concentration during the process (Appeal
Br. 5−6). However, as noted by the Examiner, Mathys does not teach using
a constant water concentration (Ans. 13). We agree with the Examiner that
Mathys teaches that a range of water concentrations produces satisfactory
results, and is silent with respect to whether the concentration may be
changed during the process. Moreover, the Examiner has provided a
reasonable explanation of why a person of skill in the art would have been
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motivated to lower the water concentration during the process (Garwood
teaches that doing so extends the life of the catalyst).
Second, Appellants argue that Garwood and Mathys are not properly
combined because (a) Garwood’s process uses a much higher water
concentration in its feed, than the Mathys’ process, and (b) Garwood is
directed to a vapor phase conversion process, while Mathys is directed to a
liquid phase conversion process (Appeal Br. 6−7). These arguments are not
persuasive because, as detailed by the Examiner and reproduced above, the
process conditions for the two prior art processes have many similarities,
including temperature, pressure, starting materials, and catalyst. The
Examiner finds  and Appellants do not challenge  that the process
conditions disclosed by Mathys (low pressure, high temperature, and light
C2 olefins) would reasonably be expected to produce a vapor phase (Ans.
14). With regards to the difference in water concentrations between the
Mathys and Garwood processes, we agree with the Examiner that because
the two processes use the same catalyst (and water serves the same function
in both processes), a person of skill in the art would reasonably seek to
combine their teachings. The rejection does not rely on incorporating
Garwood’s high water concentrations into Mathys’s process. Instead, the
rejection relies on incorporating into the Mathys process Garwood’s
teaching that lowering water concentration during the process increases
catalyst life.
Third, Appellants challenge the Examiner’s finding that Garwood
teaches that lowering the water concentration during the process increases
catalyst life (Reply Br. 2−3). Appellants argue that the reported decrease in
water concentration relied upon by the Examiner is “likely” due simply to
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evaporation of the water at high temperatures (Reply Br. 2). Appellants also
argue that the specific statement in Garwood cited by the Examiner  “[o]n
the twelfth day the mole ratio of H2O/C3= was decreased from 3/1 to 2/1
(Table 5), resulting in an increase in the hot spot from 741° to 753° F. and a
slight reversal of the small aging trend in product composition10”  refers to
“a comprehensive comparison of a feed stream with a co-fed water versus a
feed stream without co-fed water” (id. at 3). Neither argument is persuasive.
Regardless of the reason for the drop in water concentration, Garwood
reports the drop, and specifically states that the decrease in the water
concentration “results” in a slight reversal of the small aging trend in
product composition.
Based on the evidence of record, we determine that Appellants have
not shown reversible error in Rejection (1).

REJECTION (2)
The only independent argument made by Appellants with regards to
Rejection (2) is that there is no motivation to combine the disclosure of
Edgar with that of Mathys and Garwood (Appeal Br. 10). However,
Appellants provide no specific reasons to challenge the Examiner’s reasons
to make the cited combination (set forth at page 7 of the Answer).
Accordingly, Appellants’ argument is not persuasive.

REJECTIONS (4), (5), and (6)

10 Garwood, col. 15, ll. 1115.
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With regards to Rejections (4) and (5), Appellants argue that the
teachings of Chang and Cavani cannot be combined with those of Mathys
and Garwood because Chang and Cavani each teaches the use of small
amounts of water, rather than the high levels of water taught by Garwood
(Appeal Br. 11−12). However, Chang’s disclosure of the use of small
amounts of water and Cavani’s statement that use of low amounts of water
does not refute the Examiner’s rationale for combining Chang’s teachings
with those of the other references as set forth at pages 9 to 11 of the Answer.
Moreover, the primary reference  Mathys  also teaches the use of
relatively small amounts of water in the feed composition, which is
consistent with the teachings of Chang and Cavani.
With regards to Rejection (6), Appellants argue that the Beech patent
cannot be combined with the other references because it is non-analogous art
(Appeal Br. 12−13). As to whether references are properly used to reject the
claims of a pending patent application, the Federal Circuit has stated:
In order to rely on a reference as a basis for rejection of
the applicant’s invention, the reference must either be in the
field of the applicant’s endeavor or, if not, then be reasonably
pertinent to the particular problem with which the inventor
was concerned. See In re Deminski, 796 F.2d 436, 442, 230
USPQ 313, 315 (Fed.Cir.1986). . . . We have reminded
ourselves and the PTO that it is necessary to consider “the
reality of the circumstances”, In re Wood, 599 F.2d 1032, 1036,
202 USPQ 171, 174 (CCPA 1979)—in other words, common
sense—in deciding in which fields a person of ordinary skill
would reasonably be expected to look for a solution to the
problem facing the inventor.
In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (emphasis added). In
this instance, as noted by the Examiner and as is apparent from Beech’s
Abstract (“A process for oligomerizing C2 to C10 olefins obtained by
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catalytic cracking of heavy crude oil is disclosed.”), Beech is in the field of
Appellants’ endeavor, which is directed to “the oligomerisation of at least
one olefin” (claim 1). Accordingly, Beech is properly combinable with the
other cited references.

In view of the evidence and arguments of record, we determine that
Appellants have not shown error in the rejections on appeal. Accordingly,
we affirm all of the rejections.

CONCLUSION
We AFFIRM the rejection of claims 1, 5, 8, 9, 13, 18, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Mathys in view of Garwood.
We AFFIRM the rejection of claims 2, 3, and 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Mathys in view of Garwood and further
in view of Edgar.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Mathys in view of Garwood, and further in view of
Edgar and Fair.
We AFFIRM the rejection of claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Mathys in view of Garwood, and further in view of
Edgar and Chang.
We AFFIRM the rejection of claims 10, 11, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Mathys in view of Garwood
and further in view of Cavani.
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We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Mathys in view of Garwood and further in view of
Beech.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
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