Ex Parte Butler et al

Board of Patent Appeals and Interferences

Aug 6, 1997

07932415 (B.P.A.I. Aug. 6, 1997)

- 1 -
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.

Paper No. 12

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte JAMES R. BUTLER and KEVIN P. KELLY

____________

Appeal No. 94-4210
Application 07/932,4151

____________

ON BRIEF

____________

Before WINTERS, DOWNEY, and GRON, Administrative Patent Judges.

GRON, Administrative Patent Judge.

DECISION ON APPEAL UNDER 35 U.S.C.  134

1 Application for patent filed August 19, 1992. According
to appellants, this application is a continuation of Application
07/593,706, filed October 4, 1990, now abandoned.
Appeal No. 94-4210
Application 07/932,415

- 2 -
This is an appeal of an examiner's final rejections2 of
Claims 10-14, all claims pending in this application.
Introduction
Claims 10 and 13 stand rejected under 35 U.S.C.  112,
second paragraph. Claims 12-13 stand rejected under 35 U.S.C.
 102(b) as described by Gross3. Claim 14 stands rejected under
35 U.S.C.  103 as unpatentable over Gross in view of Carney4.
Claim 10 stands rejected under 35 U.S.C.  102(b) as described by
Wertheim5. Claim 11 stands rejected under 35 U.S.C.  103 as
unpatentable over Wertheim. Claims 10-12 and 14 are rejected for
obviousness-type double patenting of Claims 1-5 of Butler6.
Claims 10 and 12 are representative of the claimed subject
matter and read:

2 The examiner objects (1) to appellants' declaration
because it purportedly does not comply with 37 CFR  1.63(b)(1)
and 1.33(a), and (2) to the specification because the status of
the parent application is not current. We remind appellants and the
examiner that the Board of Patent Appeals and Interferences (Board)
lacks jurisdiction under 35 U.S.C.  134 to review informal
requirements. See In re Hengehold, 440 F.2d 1395, 1404, 169 USPQ 473,
479 (CCPA 1971).
3 Gross, H.W., et al., U.S. 3,468,641, patented
September 23, 1969
4 Carney, R.W., et al., U.S. 3,291,839, patented
December 13, 1966
5 Wertheim, Ronald J., et al., U.S. 4,816,353, patented
March 28, 1989
6 Butler, James R., et al., U.S. 5,156,816, patented
October 20, 1992
Appeal No. 94-4210
Application 07/932,415

- 3 -
10. A system for the selective reduction of phenylacetylene
to styrene in a styrene stream contaminated with
phenylacetylene, said system comprising:

a single reactor vessel having a flow inlet at one end
and a flow outlet at the other end;

a first reduction catalyst bed in said reactor vessel
near the flow inlet;

a hydrogen injector upstream of said first catalyst bed
arranged to inject hydrogen into said styrene
stream;

a second reduction catalyst bed in said reactor vessel
downstream from said first catalyst bed and near
said flow outlet; and

a second hydrogen injector in said reactor vessel
between said two catalyst beds.

12. A system for the reduction of phenylacetylene in
styrene, said system comprising:

a first reactor vessel having a flow inlet, a flow
outlet, and a reduction catalyst bed therein;

a second reactor vessel having a flow inlet
communicating with the flow outlet of said first
vessel, and further having a reduction catalyst
bed therein;

a first hydrogen injector for injecting hydrogen into
said first reactor vessel upstream of said
catalyst bed therein; and

a second hydrogen injector for injecting hydrogen into
said second reactor vessel upstream of said
catalyst bed therein.
Discussion
While the examiner has rejected Claims 10 and 13 under
35 U.S.C.  112, second paragraph, the examiner does not explain
why persons having ordinary skill in the art would have had
Appeal No. 94-4210
Application 07/932,415

- 4 -
difficulty understanding the metes and bounds of the claimed
subject matter. We do not see the problem. Therefore, we
reverse the rejections under 35 U.S.C.  112, second paragraph.
We affirm the examiner's rejection of the dual reactor
vessel system of Claim 12 under 35 U.S.C.  102(b) over the dual
reactor system described by Gross. Gross describes a system for
catalytic splitting of liquid hydrocarbons which reasonably
appears to be identical to a system defined by appellants'
Claim 12. Referring to Gross' drawing, there is depicted a
system comprising:
(1) a first reactor vessel 4 having a flow inlet 3, a flow
outlet 6, and a catalyst bed 5 therein which contains nickel or
cobalt (Gross, col. 5, lines 1-10, and col. 4, lines 19-25);
(2) a second reactor vessel 9 having a flow inlet 7
communicating with the flow outlet 6 of the first reactor
vessel 4, and having a catalyst charge 107 which may be the same
as that forming the catalyst bed 5 of reactor vessel 4 (Gross,
col. 6, lines 1-6);
(3) a first conduit 1 for supplying a hydrocarbon fluid

7 Gross states at column 4, lines 51-57:

The aftersplitting may be promoted by the same
cobalt- or nickel-containing catalyst which is also
used in the main reactor. This catalyst may contain,
e.g., 20-40% cobalt or nickel on a support of magnesium
silicate or alumina. It has been found desirable to add
chromium, platinum, palladium or tungsten as stabilizers
to these catalysts.
Appeal No. 94-4210
Application 07/932,415

- 5 -
(gasoline) into flow inlet 3 of the first reactor vessel (Gross,
col. 5, line 2);
(4) a second conduit 2 for introducing a gas (steam) into
flow inlet 3 of the first reactor vessel upstream of catalyst
bed 5 therein (Gross, col. 5, line 1); and
(5) a third conduit 8, for introducing a gas (air) into
flow inlet 7 of the second reactor vessel 9 upstream of catalyst
bed 10 therein (Gross, col. 6, lines 25-29).
If the catalyst Gross describes is a reduction catalyst
capable of "reduction of phenylacetylene in styrene," as is
required of the Claim 12 system, Gross reasonably appears to
describe a system having each and every structural and chemical
element of the system appellants claim. We not only find that
the catalyst forming Gross' catalyst bed is a reduction catalyst,
e.g., it facilitates "hydrogenating splitting of hydrocarbons,"
Gross' catalyst reasonably appears to be chemically and
physically the same as the reduction catalysts described in
appellants' specification (Specification, page 12, first full ).
In short, Gross reasonably appears to describe a reduction
system identical to a system defined by appellants' Claim 12.
While we do not doubt that "the intended use and specified
use in the claims can distinguish claim structure over prior art
structure" (Appellants' Brief, page 7, lines 8-9), the functional
language of Claim 12 does not appear to distinguish the system
Appeal No. 94-4210
Application 07/932,415

- 6 -
Gross describes from the system defined by Claim 12, i.e., the
preamble here is not "necessary to give life, meaning, and
vitality to the claims." Kropa v. Robie, 187 F.2d 150, 152,
88 USPQ 478, 481 (CCPA 1951). Here, as in Kropa v. Robie
at 151-152, 88 USPQ at 480-481:
. . . the preamble has been denied the effect of a
limitation where the claim . . . was drawn to a
structure and the portion of the claim following the
preamble was a self-contained description of the
structure not depending for completeness upon the
introductory clause; or where the claim . . . was
drawn to a product and the introductory clause merely
recited a property inherent in the old composition
defined by the remaining part of the claim. In those
cases, the claim . . . apart from the introductory
clause completely defined the subject matter, and the
preamble merely stated a purpose or intended use of
that subject matter.
Accord, In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644
(CCPA 1974).
However, we reverse the examiner's rejection of Claim 13
under 35 U.S.C.  102(b) over Gross. As we interpret appellants'
Claim 13, the system requires four conduits: (1) a first conduit
for supplying fluid feedstock into the flow inlet of the first
reactor vessel, (2) a second conduit for introducing gas into the
flow inlet of the first reactor vessel upstream of its catalyst
bed, (3) a third conduit for introducing a gas into the flow
inlet of the second reactor vessel upstream of its catalyst bed,
and (4) a fourth conduit associated with at least one of the gas
conduits for introducing diluent to the gas prior to its
Appeal No. 94-4210
Application 07/932,415

- 7 -
introduction into a reactor vessel. While we agree with the
examiner that it is irrelevant to the patentability of the
claimed system whether the conduits of Gross's system introduce
hydrogen or diluent or any other gas or fluid (Examiner's Answer,
pages 4-5, bridging ), we find that the number of conduits
introducing material into the reactors of the system defined by
appellants' Claim 13 exceeds by one the number of conduits
introducing material into the reactors of the system described by
Gross.
On the other hand, we affirm the examiner's rejection of
Claim 14 under 35 U.S.C.  103 as unpatentable over Gross in view
of Carney. Appellant argues that the rejection of Claim 14
(Appellants' Brief, page 7):
based upon the combination of Gross . . . and Carney . . .
fails for the reasons stated . . . with respect to Gross
. . . that [Gross is] . . . directed to structures for
hydrocracking straight-chain hydrocarbons and [has] . . .
nothing to do with purification of monomer feedstock prior
to polymerization, such as phenylacetylene reduction in
styrene monomer.
As stated above, we find that Gross describes each and every
physical and chemical limitation of the system defined by
appellants' Claim 12. Moreover, we also find that the
introduction of steam and/or gas via conduits 2 and 8 into main
feedstock flow inlets 3 and 7 in Gross' system inherently acts to
statically mix the fluids in the inlets of the respective reactor
vessels of the system. Furthermore, we hold that placement of
Appeal No. 94-4210
Application 07/932,415

- 8 -
venturi aspirators or eductors at the junctions of feedstock
conduit 1 with steam conduit 2 and/or air conduit 8 with flow
inlet 7 in Gross' system would have been obvious to a person
having ordinary skill in the art for more effective mixing of the
steam, fluid and/or gas mixtures introduced into either of the
reactor vessels of Gross' system. We find that persons having
ordinary skill in the art reasonably would have expected that
implementation of the venturi aspirators or eductors of Carney's
catalytic reaction system to mix steam with reactant fluid in
Gross' system would similarly improve the efficiency of Gross'
catalytic reactor system (Carney, col. 2, lines 43 to 54).
However, we agree with appellants that the examiner's
rejections of Claim 10 under 35 U.S.C.  102(b) over Wertheim's
disclosure and Claim 11 under 35 U.S.C.  103 in view of
Wertheim's teaching itself are untenable. Material findings of
fact by the examiner with regard to the system Wertheim describes
are clearly erroneous. The examiner clearly errs in finding that
(Examiner's Answer, page 5,  6; emphasis added):
Wertheim et al disclose a system which the
examiner compares to the left reactor vessel 12, which
has a flow inlet 16 and a flow outlet 18, a first
reduction catalyst 40 near the flow inlet 16, a first
gas injector 14 upstream of said first catalyst bed, a
second reduction catalyst 94 downstream of the first
catalyst bed 40 and near the flow outlet 18, and a
second gas injector 20 between the two catalyst beds.
To the contrary, Wertheim teaches (Wertheim, col. 5, lines 39-50)
that valve 30 for steam and hydrocarbon feedstock flow inlet 14
Appeal No. 94-4210
Application 07/932,415

- 9 -
and valve 38 for flow outlet 18 are open when valve 32 for gas
inlet 20, valve 34 for flow inlet 22 and valve 36 for flow outlet
16 are all closed. Note particularly that 16 is a flow outlet,
not an inlet as the examiner finds. Thus, valve 30 is open when
valves 32 and 36 are closed, and valve 30 is closed when valves
32 and 36 are opened. Accordingly, Wertheim does not describe
all the elements of appellants' Claim 10 system, i.e., a single
reactor vessel having a feedstock flow inlet, a first catalyst
bed near the feedstock flow inlet, a gas inlet upstream of the
first catalyst bed arranged to inject gas into the feedstock
flow, a second catalyst bed downstream of the first catalyst bed,
and a gas inlet between the first and second catalyst beds.
Thus, we reverse the examiner's rejections of Claim 10 under 35
U.S.C  102(b) over Wertheim and Claim 11 under 35 U.S.C.  103
in view of Wertheim's teaching alone.
Claims 10-12 and 14 stand rejected for obviousness-type
double patenting of Claims 1-5 of Butler. Rather than argue the
merits of the examiner's rejection, appellants indicate that they
(Appellants' Brief, page 8, lines 1-4):
attempted to file a terminal disclaimer to overcome
this rejection during prosecution of this case, but the
terminal disclaimer was rejected by the examiner.
Appellants would still be willing to file a proper
terminal disclaimer given sufficient guidance as to
what the Examiner feels should be required in such a
document.
Under 35 U.S.C.  134, the Board reviews rejections of claims
Appeal No. 94-4210
Application 07/932,415

- 10 -
for propriety. The propriety of the obviousness-type double
patenting rejection in this case is not contested. Therefore,
we affirm the examiner's rejection pro forma. Whether the PTO's
refusal to accept appellants' efforts to disclaim any patent
rights to the subject matter claimed in this case which would
extend beyond the patent term of U.S. 5,156,816 was proper is a
petitionable matter for the Commissioner to resolve. See In re
Hengehold, 440 F.2d at 1404, 169 USPQ at 479.
Conclusion
1. The rejections of Claims 10 and 13 under 35 U.S.C.  112,
second paragraph, are reversed.
2. The rejection of Claim 12 under 35 U.S.C.  102(b) as
described by Gross is affirmed.
3. The rejection of Claim 13 under 35 U.S.C.  102(b) as
described by Gross is reversed.
4. The rejection of Claim 14 under 35 U.S.C.  103 as
unpatentable over Gross in view of Carney is affirmed.
5. The rejection of Claim 10 under 35 U.S.C.  102(b) as
described by Wertheim is reversed.
6. The rejection of Claim 11 under 35 U.S.C.  103 as
unpatentable over Wertheim is reversed.
7. The rejection of Claims 10-12 and 14 for obviousness-type
double patenting of Claims 1-5 of Butler is affirmed.
Appeal No. 94-4210
Application 07/932,415

- 11 -
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
 1.136(a).
AFFIRMED-IN-PART

Sherman D. Winters )
Administrative Patent Judge )
)
)
)
Mary F. Downey ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Teddy S. Gron )
Administrative Patent Judge )
Appeal No. 94-0984
Application 07/750,109

-12-
Appeal No. 94-4210
Application 07/932,415

Michael J. Caddell
Fina Technology Inc.
P.O. Box 410
Dallas, TX 75221