10943756 (B.P.A.I. Jun. 18, 2012)

Ex Parte Bhan

Board of Patent Appeals and InterferencesJun 18, 2012

10943756 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/943,756 09/17/2004 Opinder Kishan Bhan TH2685 (US) 1966 23632 7590 06/19/2012 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 772522463 EXAMINER SMITH, JENNIFER A ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 06/19/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte OPINDER KISHAN BHAN __________ Appeal 2010-006536 Application 10/943,756 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006536 Application 10/943,756 2 A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 25-36 and 40-52. Claims 1-24 and 37-39 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal is directed to a hydrodesulfurization catalyst composition. The catalyst composition of the present invention comprises a shaped support that comprises, prior to impregnation and calcination, at least 90 weight percent gamma-alumina. The shaped support is prepared by heat treating an aluminum hydroxide starting material. Independent claims 25, 31, and 36 recite that heat treating is carried out at a temperature within the range of from 850 ºF to about 950 ºF. The support is subsequently impregnated with a catalytic component and calcined. Claim 31, reproduced below, is illustrative of the subject matter on appeal. 31. A catalyst composition suitable for use in the hydrodesulfurization of a middle distillate feedstock having a concentration of sulfur to yield an ultra low sulfur middle distillate product, said catalyst composition comprises: a calcined impregnated shaped support, wherein said shaped support of said impregnated shaped support is prepared by heat treating an aluminum hydroxide starting material at a temperature within the range of from about 850 ºF to about 950 ºF and comprises, prior to its impregnation and calcination, at least 90 weight percent alumina that is in the crystalline transitional phase of gamma-alumina, less than 5 weight percent alumina that is in the crystalline transitional phase of delta-alumina, and less than 5 weight percent alumina that is in the crystalline transitional phase other than gamma-alumina and delta-alumina, and wherein said shaped support has incorporated Appeal 2010-006536 Application 10/943,756 3 therein a hydrogenation catalytic component thereby providing said impregnated shaped support, and wherein said impregnated shaped support is calcined at a temperature from about 870 ºF to about 1000 ºF. App. Br., Claims Appendix (emphasis added).1 The sole rejection on appeal is the rejection of claims 25-36 and 40-52 under 35 U.S.C. § 103(a) as unpatentable over Simpson2 in view of Chopin.3 B. DISCUSSION The claims on appeal are written in product-by-process format. Therefore, the patentability of the claimed catalyst composition is based on the composition, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.”). The Examiner finds Simpson discloses a hydroprocessing catalyst that is useful for the hydrodesulfurization of hydrocarbons. The Examiner finds, and the Appellant does not dispute, that the support consists essentially of gamma-alumina. Ans. 34; App. Br. 6. The support is prepared from an alumina gel which is pre- calcined at a temperature above 900ºF to convert the alumina gel to gamma alumina. Simpson, col. 6, ll. 3-7. The support is subsequently impregnated with a catalytic component and calcined at a temperature from about 700ºF to about 1400ºF to convert the active metals to their oxide forms. Simpson, col. 7, ll. 27-31. 1 Appeal Brief dated July 22, 2009. 2 US 4,879,265 issued November 7, 1989. 3 US 4,891,350 issued January 2, 1990. 4 Examiner’s Answer dated September 21, 2009. Appeal 2010-006536 Application 10/943,756 4 The Examiner finds, and the Appellant does not dispute, that the temperature ranges disclosed in Simpson overlap the claimed ranges. Ans. 13; see also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“even a slight overlap in range establishes a prima facie case of obviousness”). The Examiner recognizes the gamma-alumina support of Simpson is prepared from an alumina gel rather than aluminum hydroxide as recited in the claims on appeal. However, the Examiner contends that “the method of preparing the catalyst (formed from aluminum hydroxide) does not distinguish the claimed invention from the prior art.” Ans. 13 (citing In re Marosi, 710 F.2d 799 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985)). Based on the foregoing, we conclude that the Examiner set forth a prima facie case of obviousness, and the burden properly shifted to the Appellant to present evidence demonstrating that any differences between the claimed catalyst composition and the catalyst composition disclosed in Simpson would not have been obvious. In re Marosi, 710 F.2d 799, 803 (CCPA 1983); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In response, the Appellant focuses on the catalyst composition recited in claims 31 and 52. In particular, the Appellant contends: [A]ny argument for prima facie obviousness based on an overlap in temperature ranges, is rebutted by the showing in Example 4 and Fig. 5 of the criticality of the claimed temperature ranges, which together with the use of an aluminum oxide starting material, results in a catalyst having surprisingly good middle distillate desulfurization activity. App. Br. 7 (emphasis added). Appeal 2010-006536 Application 10/943,756 5 To overcome a prima facie case of obviousness, the Appellant “must show that the [claimed] 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). Unexpected results must be established by factual evidence. Attorney argument does not suffice. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir, 1997) (attorney argument is not the kind of factual evidence that is required to rebut a prima facie case of obviousness); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994) (“Mere argument or conclusory statements in the specification does not suffice.”). In this case, the Appellant argues the results reported in Example 4 and Fig. 5 are “surprisingly good.” App. Br. 7; see also Reply Br. 3 (arguing that the results reported in Example 4 and Fig. 5 are “surprising and unexpected”).5 However the Specification merely describes the catalysts in Example 4 as “the best performing catalysts.” Spec. 21, ll. 18-23. To the extent that the claimed catalysts exhibit better or improved results, a mere improvement is not sufficient to establish that the results are “surprising” or “unexpected.” See Geisler, 116 F.3d at 1470 (there is nothing in the application to support the claim that the test results were “unexpectedly good”); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of “unexpected results” to be probative evidence of non- obviousness, the applicant must establish that the difference between the results obtained through the claimed invention and those of the prior art would not have been expected by one skilled in the art at the time of invention). In sum, the preponderance of the evidence supports the Examiner’s conclusion of obviousness as to claims 31 and 52. Claims 32-35 depend, either 5 Reply Brief dated November 19, 2009. Appeal 2010-006536 Application 10/943,756 6 directly or indirectly, from claim 31. Thus, the § 103(a) rejection of claims 31-35 and 52 is affirmed. As for the remaining claims on appeal, i.e., claims 25-30, 36, and 40-51, the scope of these claims is not limited to the catalyst compositions described in Example 4 and Fig. 5.6 For example, independent claims 40 and 46 do not recite a first heat treating temperature or a second calcining temperature as disclosed in Example 4, and independent claims 25 and 36 do not recite a second calcining temperature as disclosed in Example 4. Therefore, the § 103(a) rejection of claims 25-30 and 40-51 is also affirmed. C. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cam 6 In the Appeal Brief and the Reply Brief, the Appellant separately discusses the teachings of Chopin. See App. Br. 8-10; Reply Br. 3-4. The Examiner relies on Chopin as teaching the use of aluminum hydroxide in a catalyst. It is not necessary to address the teachings of Chopin because aluminum hydroxide is a starting material in the product-by-process claims on appeal and there is no evidence on this record that aluminum hydroxide alone results in an unobvious difference between the claimed catalyst composition and the catalyst composition disclosed in Simpson.