Ex Parte Becker et alDownload PDFPatent Trial and Appeal BoardSep 27, 201613088627 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/088,627 04/18/2011 123223 7590 09/29/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Michael Becker 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 074048-0044-US (287483) 8856 EXAMINER STEIN, MICHELLE ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 09/29/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL BECKER, AXEL SALDEN, BIANCA STACK, JOCHEM HENKELMANN, STEFFEN SPRINGMANN, FREDERIK VANLAAR, WILHELM RUPPEL, PETER RESCH, and MICHAEL BENDER Appeal2015-005035 Application 13/088,627 Technology Center 1700 Before: CATHERINE Q. TIMM, DONNA M. PRAISS, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION1 ON APPEAL Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 5-18, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b ). 1 In our Decision below, we refer to the Specification filed April 18, 2011 (Spec.), the Final Office Action appealed from mailed April 24, 2014 (Final Act.), the Appeal Brief filed November 24, 2014 (Appeal Br.), the Examiner's Answer mailed February 4, 2015 (Ans.), and the Reply Brief filed April 6, 2015 (Reply Br.). 2 Appellants identify the real party in interest as BASF SE. Appeal Br. 2. Appeal2015-005035 Application 13/088,627 We AFFIRM. STATEMENT OF CASE The claims are directed to a process for reacting an aromatic hydrocarbon in the presence of hydrogen. Spec. 1. Appellants explain that a primary object of the present invention [is] to provide a process for hydrogenating aromatic hydrocarbons or mixtures thereof which comprise aromatic sulfur compounds to the corresponding cycloaliphatics or mixtures thereof, in particular benzene to obtain cyclohexane, and which enables cycloaliphatics, or the mixtures thereof, to be obtained with very high selectivity and space-time yield. Id. at 3-4. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A process comprising: providing a starting material compnsmg one or more aromatic hydrocarbons, and having an aromatic sulfur compound content and a total sulfur content; reducing the aromatic sulfur compound content to :S 70 ppb and the total sulfur content to :S 200 ppb in the starting material in the presence of a desulfurizing agent comprising copper and zinc in an atomic ratio of 1 :0.3 to 1: 10, wherein the desulfurizing agent comprises from 3 8 to 41 % by weight of copper oxide, from 3 8 to 41 % by weight of zinc oxide, and from 18 to 24% by weight of aluminum oxide, and wherein the desulfurization is carried out within a temperature range of from 40 to 200°c; and hydrogenating the one or more aromatic hydrocarbons in the presence of a supported ruthenium catalyst and hydrogen and further comprising a catalyst regeneration, the catalyst regeneration comprising flushing the supported ruthenium catalyst with an inert gas such that the supported ruthenium catalyst regains at least a portion of its catalytic activity. Claims Appendix at Appeal Br. 12. 2 Appeal2015-005035 Application 13/088,627 REJECTIONS The Examiner maintains the following rejections: A. Claims 1, 5-10, 12-13, 16-18, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Inwood3 in view ofDrake4 and Masuda. 5 Final Act. 3. B. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Inwood and Drake and Masuda (as applied to claim 1) and in further view of Kallenbach. 6 Id. at 8. C. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Inwood and Drake and Masuda (as applied to claim 1) and further in view of Stochniol. 7 Id. Appellants seek review of Rejections A-C. Appeal Br. 4. Appellants present argument directed to independent claim 1 and provide no additional argument as to claims 5-18, 21, and 22 separate from what is argued for claim 1. Appeal Br. 10-11. We focus our discussion below on claim 1 to resolve the issues on appeal. 3 Texas V. Inwood, US 3,691,060, issued September 12, 1972 (hereinafter "Inwood") 4 Charles A. Drake, US 4,331,557, issued May 25, 1982 (hereinafter "Drake"). 5 Masuda et al., US 6,042,798, issued March 28, 2000 (hereinafter "Masuda"). 6 Lyle R. Kallenbach, US 2002/0188161 Al, published December 12, 2002 (hereinafter "Kallenbach"). 7 Stochniol et al., US 2004/0034252 Al, published February 19, 2004 (hereinafter "Stochniol"). 3 Appeal2015-005035 Application 13/088,627 OPINION The Examiner rejects claim 1, among others, as being unpatentable over Inwood in view of Drake and Masuda. Final Act. 3. The Examiner finds that Inwood teaches a method of treating an aromatic hydrocarbon stream which contains sulfur compounds by hydrofining the feedstock to remove sulfur and then performing hydrogenation with a ruthenium catalyst. Id. at 4. The Examiner acknowledges that Inwood fails to teach regenerating the ruthenium catalyst as well as the specified Cu/Zn/ Al desulfurization agent in the same ratio and at the same temperature as claimed. Id. However, the Examiner finds that Drake teaches a process for regenerating a ruthenium catalyst for use in hydrogenation reactions and reasons that the skilled artisan would have been motivated to combine Drake and Inwood "for the benefit of being able to reuse the catalyst and saving costs." Id. The Examiner further finds that "Masuda teaches desulfurization of the aromatic hydrocarbon feed by use of a copper oxide, zinc oxide and aluminum oxide desulfurization agent wherein the ratio of copper:zinc:aluminum is 1:0.3-10:0.5-2 (column 3, lines 20-40) at temperatures of 70-350°C (column 4, lines 46-57)" and achieves a reduction in sulfur content in the claimed range. Id. at 5. The Examiner explains that an ordinary person having skill in the art would have had reason to substitute the desulfurization step of Inwood with Masuda's desulfurization catalyst and temperature because of the "extremely excellent" desulfurization agent of Masuda that eliminates the need for a cooling step. Id. Appellants first argue that "a person of ordinary skill in the art would have no reason to look to the disclosure of Matsuda [sic], as the reaction differs from that of the instant claims." Appeal Br. 6. Specifically, 4 Appeal2015-005035 Application 13/088,627 Appellants contend that, contrary to the Examiner's finding, Masuda is directed to treating gaseous aliphatic hydrocarbons where the instant invention is directed to utilizing liquid aromatic hydrocarbons. Id. at 7; see also Reply Br. 4. As a result, Appellants urge that the person skilled in the art would not have understood that the Masuda desulfurization agent would work in the claimed feedstock. Appeal Br. 7. Appellants direct attention to their evidentiary submission which explains that the reactivity of desulfurization agents depends on the nature of the feedstock. Id. Compounds with lower boiling fractions, such as paraffins, desulfurize more readily than compounds with higher boiling fractions, such as aromatics. Id. Therefore, a person of ordinary skill in the art, knowing that aromatic species are much less reactive, "would not find [sic, have found] it obvious to transfer a desulfurization catalyst designed for desulfurization of gaseous unsaturated hydrocarbons to a process wherein liquid aromatic hydrocarbons are to be desulfurized." Id. at 8. Appellants' arguments are not persuasive of reversible error. The crux of Appellants' argument is that because Masuda does not teach an aromatic hydrocarbon feedstock, the ordinarily skilled artisan would not have considered using the desulfurization agent of Masuda with any reasonable expectation of success. Id. at 7. But, Masuda expressly states that the "[h ]ydrocarbon materials used in the invention are not particularly limited," and "may be preferably used in removal of sulfur compounds contained in naphtha or gasoline having high contents of ethylene, propylene, and butane, hexane, and unsaturated hydrocarbon." Masuda, col. 5, 11. 9-20 (emphasis added). The Examiner finds that naphtha and gasoline "are liquid hydrocarbons, which contain aromatics." Final Act. 10. 5 Appeal2015-005035 Application 13/088,627 Appellants do not specifically contest the Examiner's finding that naphtha and gasoline contain aromatic compounds, rather, Appellants state "there is no mention in Masuda of aromatic hydrocarbons, and potential hydrocarbons listed are all non-aromatic." Appeal Br. 7. While true that Masuda may not employ the word "aromatic," we find that two hydrocarbons listed -gasoline and naphtha-contain aromatics. Moreover, the breadth of Appellants' claim, i.e., reciting "a starting material comprising one or more aromatic hydrocarbons," does not require that only aromatic hydrocarbons are present. Claims Appendix at Appeal Br. 12. To begin, Appellants do not specify the purity of the aromatic hydrocarbons in the starting material. And, by utilizing the open-ended transitional word, "comprising," Appellants signal unrecited substances also may be present in the starting material. MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1383 (Fed. Cir. 2012) ("Open claim language, such as the word 'comprising' as a transition from the preamble to the body of a claim, 'signals that the entire claim is presumptively open- ended. "'(citing Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005)). This is consistent with Appellants' Specification which explains that the aromatic feedstock may include impurities, other than sulfur-containing species, in amounts up to 2%. Spec. 4, 1. 29-5, 1. 16. Second, Appellants urge that one skilled in the art would similarly understand that the conditions for desulfurization would also change as a result of the differences in feedstock makeup. Appeal Br. 8. Appellants argue that the Examiner's reliance on Masuda's desulfurization temperature of 70 to 350°C is in error because Masuda is directed to gaseous non- aromatic compounds. Id. Appellants explain that Inwood, teaching 6 Appeal2015-005035 Application 13/088,627 desulfurization of aromatic hydrocarbons like those claimed, discloses much higher desulfurization temperatures. Id. Therefore, says Appellants, [ t ]here is nothing from which a person of ordinary skill in the art would have had a reasonable expectation of success in performing the "hydrofining" step in Inwood with a lower temperature, and the differing natures of the feedstocks would be understood by a person of ordinary skill in the art to have different conditions. Id. at 8-9. For the reasons discussed above-i.e., an aromatic feedstock is indeed present (see supra pp. 5-6)-Appellants' arguments are unpersuasive of reversible error. Appellants also contend that "[t]he Examiner's rejection is the result of an improper degree of hindsight, with any potential reasoning available by way of the Appellants' disclosure." Appeal Br. 9. Appellants assert that "[t]here is nothing in Masuda which would lead a person of ordinary skill in the art to the suggestion that the catalysts described therein could be used for reducing aromatic sulfur content in streams of aromatic hydrocarbons." Id. For the same reasons discussed above (see supra pp. 5-6), Appellants' argument fails to identify reversible error by the Examiner. Next, Appellants argue that they have "surprisingly found" the claimed process leads to outstanding conversion rates, while minimizing unwanted side products and that it is possible to operate at a lower temperature thus decreasing costs. Appeal Br. 9-10 (citing Spec. 29-53). Appellants' citation to the Specification encompasses examples al -a5 and b l-b7 of the desulfurization of aromatic hydrocarbon as well as examples c, 1, 2, and 3 relating to the regeneration and production of the ruthenium catalyst. Spec. 29-53. 7 Appeal2015-005035 Application 13/088,627 In the absence of a more detailed explanation, we are not convinced of reversible error on the part of the Examiner. The burden rests with Appellants to establish (1) that any alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants identify no comparisons within the Specification or the art of record to support a finding of unexpected results. See Appeal Brief 9-10. Moreover the Examiner finds, "Masuda also teaches the same desulfurization agent as claimed, as well as extremely excellent desulfurization performance (column 5, lines 30-45). Masuda teaches reducing sulfur content to levels of 0.1 ppm or less (see examples 2-4), which are the same as indicated in Appellant's instant specification." Ans. 11. Lastly, and for the first time in their Reply Brief, Appellants present additional arguments including: ( 1) that because of the differences in Inwood and instant claim 1, "several technical effects result such that alteration to arrive at the claimed invention would not have been obvious" (Reply Br. 3--4); (2) that in light of Inwood, "the person of ordinary skill in the art would be lead away from the catalyst used in the claims in favor of other catalysts" (id. at 4 and 5); (3) that Masuda does not suggest regeneration of the hydrogenation catalyst (id. at 4); and (4) that "Drake also relates to a different technical field compared to Inwood or the instantly claimed invention" and as a result, "there would have been no expectation of success in applying the catalysts of Drake in the instantly claimed process." 8 Appeal2015-005035 Application 13/088,627 Id. at 4-5. Appellants have not explained, nor is it apparent, that these arguments were necessitated by the Examiner's Answer or could not have been presented in the principal brief. These arguments are untimely and we will not reach arguments presented for the first time in a reply brief in the absence of good cause. 37 C.F.R. § 41.4l(b)(2). CONCLUSION The Examiner did not err in rejecting claims 1, 5-18, and 21-22. DECISION For the above reasons, the Examiner's rejection of claims 1, 5-18, 21, and 22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 9 Copy with citationCopy as parenthetical citation