Ex Parte Dath et al

Board of Patent Appeals and Interferences

Jul 1, 2011

10524640 (B.P.A.I. Jul. 1, 2011)

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.
10/524,640 05/30/2006 Jean-Pierre Dath F-857 (31223.00074) 1992
25264 7590 07/05/2011
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
BULLOCK, IN SUK C
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
07/05/2011 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 JEAN-PIERRE DATH and WALTER VERMEIREN
________________

Appeal 2010-005200
Application 10/524,640
Technology Center 1700
________________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-7 and 11-22 under 35 U.S.C. §103(a) as
unpatentable over Kaeding (US 4,849,573, issued Jul. 18, 1989) in view of
Fina (EP 0 921 181 A1, published Jun. 9, 1999).2, 3 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Final Office Action mailed Mar. 4, 2009 (“Final”).
2 Appeal Brief filed Jul. 25, 2009 (“App. Br.”).
Appeal 2010-005200
Application 10/524,640

2
We AFFIRM.
Appellants do not present separate arguments in support of any
individual claims or claim groupings. (See generally, App. Br. 3-4.)
Accordingly, we decide the appeal as to all claims on the basis of
representative claim 1, which is reproduced below from the Claims
Appendix to the Appeal Brief, see 37 C.F.R. § 41.37(c)(1)(vii) (“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”):
1. A process for converting a carbon containing feedstock to provide
an effluent containing light olefins, the process comprising passing a
feedstock containing carbon containing compounds consisting essentially of
C1 to C6 aliphatic hetero compounds selected from the group consisting of
alcohols, ethers, carbonyl compounds and mixtures thereof and containing
steam in an amount up to 80 weight % of said feedstock, through a reactor
containing a crystalline silicate catalyst to produce an effluent including
propylene which is recovered from the reactor, wherein the crystalline
silicate catalyst is pretreated by subjecting said catalyst to steaming to de-
aluminate said catalyst and is selected from at least one of an MFI crystalline
silicate having a silicon/aluminum atomic ratio within the range of 250 to
500 and an MEL crystalline silicate having a silicon/aluminum atomic ratio
within the range of 150 to 800.

Upon consideration of Appellants’ arguments, we determine that the
sole issue on appeal is: Are the facts and reasons relied on by the Examiner

3 Appellants have identified this appeal as related to subsequently filed
Appeal No. 2010-002879 (SN 10/569,240). (See Decision on Appeal (No.
2010-002879), n.3.)
Appeal 2010-005200
Application 10/524,640

3
sufficient to establish that Kaeding discloses or suggests a process which
utilizes a catalyst as recited in appealed claim 1? (See App. Br. 3-4.)4
The Examiner’s obviousness determination as to independent claims 1
and 15 is based on the following findings of fact:
Kaeding discloses a process for converting a feed
comprising alcohol (such as methanol), ether (such as
dimethyl ether), and diluent steam to light olefins (ethylene,
propylene, butene) over a zeolite catalyst such as ZSM-5
(MFI) and ZSM-11 (MEL). The zeolite catalyst has a silica
to alumina mole ratio of at least 140, preferably 298 to 2000.

(Ans.5 4 (internal citations omitted).) These ranges overlap
Appellants’ claimed ranges. (Id.) Kaeding discloses “[n]atural zeolites may
be converted to the desired type of zeolite catalyst by treatments including
steaming and alumina extraction.” (Id. (citations omitted).)
Appellants do not dispute the aforementioned findings of fact, and we
find them to be supported by the disclosure in Kaeding cited by the
Examiner on page 3 of the Final and page 4 of the Answer.

4 The arguments in Appellants’ Reply Brief (filed Dec. 7, 2009) are not
directed to new issues raised by the Examiner in the Answer (see Final 3-4
(explaining that Kaeding’s silica to alumina mole ratios overlap with
Appellants’ claimed ranges)), and there has been no explanation as to why
these arguments were not raised in the Appeal Brief. Therefore, the
arguments in the Reply Brief have been waived. See
37 C.F.R. § 41.37(c)(1)(vii) (second sentence); In re Hyatt, 211 F.3d 1367,
1373 (Fed. Cir. 2000) (explaining that an argument not first raised in the
brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d
1834 (BPAI 2010) (explaining that arguments and evidence not timely
presented in the principal Brief, will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief).
5 Examiner’s Answer mailed Oct. 5, 2009.
Appeal 2010-005200
Application 10/524,640

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Appellants argue “[t]he references of record do not provide a
motivation to replace the catalyst in Kaeding (for a methanol to propylene
conversion process) with the catalyst of Fina (used for a C4+ olefin
conversion process to propylene).” (App. Br. 4.) Appellants further assert
“that the teachings of Fina lack a firm basis to predict the effect of the
proposed interchange and therefore cannot reasonably be combined to render
the claims of the present application obvious.” (Id. (internal citation
omitted).)
As explained in the Examiner’s Response to Argument (Ans. 5-6),
Appellants’ arguments are not persuasive of error in the Examiner’s
obviousness determination because they do not address the facts and reasons
relied on by the Examiner in rejecting claim 1 (as well as independent claim
15). Specifically, the Examiner’s obviousness determination is based on
findings that Kaeding suggests a process using a catalyst as claimed. (Ans. 6
(“[T]here is no need to replace the catalyst in Kaeding with the catalyst in
Fina.”).) “Fina [was] relied upon solely to substantiate the details of making
the catalysts to obtain catalysts having desired property, i.e., silica to
alumina molar ratio, in the Kaeding process.” (Id.) In other words,
Appellants have not explained why the Examiner erred in concluding that
one of ordinary skill in the art would have found the invention as recited in
claims 1 (and claim 15) obvious in view of the teachings of Kaeding alone.
In our view, the Examiner’s fact finding and reasoning is sufficient to
establish a prima facie case of obviousness as to independent claims 1 and
15 (Ans. 4 and sentence bridging 5-6 (noting that overlapping ranges are
prima facie evidence of obviousness)). See also, In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
Appeal 2010-005200
Application 10/524,640

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1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium
Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Because
Appellants have not shown error in this fact finding and reasoning, we
sustain the rejection of claims 1-7 and 11-22 under 35 U.S.C. §103(a) as
unpatentable over Kaeding in view of Fina.

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).
AFFIRMED

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