Ex Parte Dagle et alDownload PDFPatent Trial and Appeal BoardJun 28, 201311241321 (P.T.A.B. Jun. 28, 2013) Copy Citation 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. 11/241,321 09/30/2005 Robert A. Dagle 14756 -e 6081 7590 06/28/2013 Frank S. Roseberg P.O. Box 29230 San Francisco, CA 94129 EXAMINER KEYS, ROSALYND ANN ART UNIT PAPER NUMBER 1621 MAIL DATE DELIVERY MODE 06/28/2013 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte ROBERT A. DAGLE, YONG WANG, EDDIE G. BAKER, and JIANLI HU __________ Appeal 2011-011644 Application 11/241,321 Technology Center 1600 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. SCHEINER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have requested rehearing of the decision entered January 31, 2013 (“Decision”), which affirmed the rejection of claims 28-43, 46-49, 51, and 52 (all of the pending claims) on the ground of obviousness. The request for rehearing is denied. Appeal 2011-011644 Application 11/241,321 2 DISCUSSION According to Appellants, “the Board's Decision has misapprehended or overlooked the following facts and points of law: (l)(a) the following statement that appears on the paragraph bridging pages 8 and 9 of the Decision on Appeal is factually wrong as it applies to the claimed invention” (Req. Reh‟g 2): Contact time is also a factor in selectivity and the Tonkovich patent explains that the shorter reaction time made possible by the microchannel reactor suppresses undesirable products of secondary reactions or slow parallel reactions (FF4). Therefore, we agree with the Examiner that the results shown in the Examples and Table 2 of the Specification, and discussed in Dr. Tonkovich's declaration would not have been unexpected, given the teachings of the Tonkovich patent. (Id.) Appellants contend that the newly submitted “Declaration of Mr. Robert Dagle [1] must be considered by the Board” because “[t]he Board did not accept the Examiner‟s reasoning in rejecting the Declaration of Dr. Tonkovich” 2 and instead, “rejected the “Declaration of Dr. Tonkovich because „Contact time is also a factor in selectivity.‟” (Req. Reh‟g 3.) Appellants acknowledge that “contact time is a factor in selectivity,” but contend that “the Board was incorrect to assume that reduced contact time is expected to be correlated with enhanced selectivity” (id.) because “selectivity to a desired compound will only be improved by reducing 1 Declaration of Robert A. Dagle, dated March 29, 2013, and submitted April 1, 2013, under the provisions of 37 C.F.R. § 1.132. 2 Declaration of Anna Lee Tonkovich, dated December 27, 2010, and submitted February 1, 2011, under the provisions of 37 C.F.R. § 1.132. Appeal 2011-011644 Application 11/241,321 3 contact time if the reaction rate for making the desired product exceeds the rate for making undesired products” (id. at 4). Appellants contend that the “[Dagle] Declaration is being submitted in response to the Board‟s new rationale for rejecting Dr. Tonkovich‟s conclusion that the results presented in the application established a surprising and superior result as compared to the Shikada patent and Tonkovich '909” (id.). We are not persuaded. We did not rely on a new rationale in reaching our decision. The Examiner found, in relevant part, that Tonkovich '909 disclosed “that one can obtain enhanced production rate of thermal chemical reactions by the use of microchannel reactor(s) . . . as well as suppress the formation of undesirable byproducts” (Ans. 5-6). The Examiner concluded that one of ordinary skill in the art would have been motivated “to utilize a microchannel reactor as taught by Tonkovich et al. for the thermal chemical reaction of Shikada et al. as this would allow one to produce the dimethyl ether of Shikada et al. at an enhanced production rate, while suppressing undesirable byproducts by using short contact times” (id. at 6). Indeed, the Examiner articulated this rationale several times throughout prosecution (see e.g., page 4 of the Final Rejection mailed March 25, 2010). As explained in our Decision, we were not persuaded by the arguments advanced in Appellants‟ Appeal Brief as to why one of ordinary skill in the art would not have expected the shorter contact times of the microchannel reactor to lead to the claimed levels of conversion (see App. Br. 5; Decision 7-8). The Tonkovich Declaration, on the other hand, briefly discussed slurry phase processes in general, and did not directly address what one of ordinary skill in the art would have expected from the short Appeal 2011-011644 Application 11/241,321 4 contact times typical of microchannel reactors, much less provide evidence that one would have expected less selectivity for dimethyl ether (DME). In any case, as set forth in 37 C.F.R. § 41.52 (a)(1) (as it pertains to cases in which the Notice of Appeal was filed prior to January 23, 2012), “[a]rguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section” (id.), neither of which exceptions applies in the present circumstances. This board serves as a board of review, not a de novo examination tribunal. See 35 U.S.C. 6(b) (“The [board] shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents.”). The newly submitted Dagle Declaration purports to establish that one of ordinary skill in the art would have expected shorter contact times to lead to decreased, rather than increased, DME selectivity. Appellants could have presented this evidence to the Examiner well before appeal, as the issue of the advantages of shorter contact times was raised throughout prosecution. We decline to consider new arguments on this issue at this late stage in the prosecution, much less new evidence. Appeal 2011-011644 Application 11/241,321 5 SUMMARY We have granted Appellants‟ request for rehearing to the extent that we have considered Appellants‟ arguments for consideration of new evidence after appeal. However, the request is denied with respect to admitting the Dagle Declaration, and we decline to modify our Decision in any way. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED cdc Copy with citationCopy as parenthetical citation