Ex Parte Francis et al

Patent Trial and Appeal Board

Jul 20, 2017

13345041 (P.T.A.B. Jul. 20, 2017)

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.
13/345,041 01/06/2012 Jeremy FRANCIS PET-2746 8721
23599 7590 07/24/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY FRANCIS, LAURENT SIMON,
EMMANUELLE GUILLON, NICOLAS BATS,
AVELINO CORMA, and CHRISTOPHE PICHON1
Appeal 2016-008143
Application 13/345,041
Technology Center 1700
Before: JAMES C. HOUSEL, AVELYN M. ROSS, and
JANE E. INGLESE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as IFP Energies Nouvelles, the
assignee of the instant application. Appeal Br. 1.
2 In our Decision we refer to the Specification (“Spec.”) filed January 6,
2012, the Final Office Action (“Final Act.”) dated April 23, 2015, the
Appeal Brief (“Appeal Br.”) filed December 22, 2015, the Examiner’s
Answer (“Ans.”) dated June 28, 2016, and the Reply Brief (“Reply Br.”)
filed August 26, 2016.
Appeal 2016-008143
Application 13/345,041
STATEMENT OF THE CASE
The subject matter on appeal relates to hydrocracking process using a
zeolite catalyst containing two distinct hydrogenating active phases. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A process for the preparation of a catalyst comprising at
least one hydro-dehydrogenating element of group VIB or non­
precious group VIII of the periodic table, used alone or mixed,
and a support comprising at least one porous mineral matrix and
at least one dealuminated USY zeolite, said process comprising:
a) preparation of a dealuminated zeolite having an overall
silicon-to-aluminium atomic ratio comprised between 2.5 and
10, a fraction by weight of extra-network aluminium atom
greater than 10% relative to the total mass of the aluminium
present in the zeolite, a mesopore volume measured by nitrogen
porosimetry greater than 0.07 ml.g"1, and a crystal parameter ao
of the elemental mesh greater than 24.28 A,
b) deposition on said dealuminated zeolite of element
nickel in a quantity comprised between 0.5 and 3% by weight
relative to the total mass of the zeolite
c) shaping a mixture of zeolite impregnated with nickel
obtained in (b) with a porous mineral matrix in order to obtain
the support;
d) introduction of at least one hydro-dehydrogenating
element on the matrix by at least one of the following methods:
- addition of at least one compound of said element
during the shaping so as to introduce at least part of
said element,
- impregnation of the support with at least one
compound of said element;
e) drying and calcination of the final product obtained.
Appeal Br. 6 (Claims App’x) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
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Application 13/345,041
A. Claims 1—7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Simon3. Final Act. 3.
B. Claims 1—7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Guillon.4 Id. at 5.
Appellants request reversal of Rejections A—B. Appellants argue all
claims together and do not separately argue any one claim. See Appeal
Br.2^4. Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 1 (Rejections A and B), and all
other claims stand or fall together with claim 1.
OPINION
Rejection A — Obviousness (claims 1—7)
The Examiner rejects claim 1—7 as obvious over Simon. Final Act. 3.
The Examiner finds that Simon teaches a process for preparing a catalyst
including many of the claim limitations. Id. at 7—A. The Examiner
acknowledges that “Simon does not explicitly disclose wherein nickel is
deposited on the zeolite prior to shaping of a mixture of the nickel-
impregnated zeolite and porous mineral matrix material to obtain the
support.” Id. at 4. But, the Examiner explains that any order of process
steps, in the absence of new and unexpected results, is prima facie obvious.
Id. Moreover, the Examiner finds that “Simon clearly explains that the
3 Simon et al., US 2011/0108459 Al, published May 12, 2011; (“Simon”).
4 Simon et al., US 2011/0108460 Al, published May 12, 2011 (“Guillon”).
The Examiner adopts “Guillon,” the second named inventor in the ‘460 case,
because both the ’459 Application and the ’460 Application share a common
first inventor, i.e., Simon. For the sake of consistency, we adopt the same
naming convention used by the Examiner.
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Application 13/345,041
Group VIII elements ‘can[] be introduced [. . .] at any stage of preparation,
during synthesis of the matrix, preferably during forming of the support, [. .
. ] by any method known to a person skilled in the art.” Id. (quoting Simon |
93). Therefore, the Examiner reasons that the person skilled in the art at the
time “would readily recognize the possibility and suitability for depositing
nickel on the zeolite prior to shaping of the nickel-impregnated zeolite and
porous mineral matrix to obtain the support.” Id. at 4—5.
Appellants argue that “Simon does not disclose a process such as that
of the claimed invention in which a first layer of nickel is deposited on the
zeolite prior to the mixing of the said zeolite and the porous mineral matrix,
said layer of nickel metal being always present.” Appeal Br. 3. Rather,
Appellants contend Simon teaches addition of nickel during the mixing of
the already-prepared zeolite with the alumina support and not prior to
shaping. Id. Appellants explain that the order of process steps as claimed
results in a very different catalyst than described in Simon. Id. According
to Appellants, in Simon, the nickel will be present in the support and not
within the zeolite, and therefore, “Simon doesn’t teach a catalyst having two
distinct hydrogenating phases[.]” Id. Appellants also dispute the
Examiner’s reading of Simon that the deposition of Group VIII elements
may broadly occur “at any stage of preparation” of the catalyst and insist
instead that “at any stage of preparation” means “in any stage” during the
formation of the matrix. Id.
Appellants’ arguments are persuasive of reversible error by the
Examiner. As a general matter, the selection of any order for performing
known process steps is prima facie obvious due to a reasonable expectation
of obtaining the same outcome. See In re Burhans, 154 F.2d 690, 692
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Application 13/345,041
(CCPA 1946) (“There is no merit in the point here in the absence of any
proof in the record that the order of performing the steps produces any new
and unexpected results.”); In re Gibson, 39 F.2d 975, 976 (CCPA 1930)
(selection of any order of mixing ingredients is prima facie obvious.).
However, Gibson and Burhans are applicable to situations where one of
ordinary skill in the art would have reasonably expected from the steps
described in the applied prior art that changing the order of steps would
produce substantially the same result.
In the present case, claim 1 requires deposition of nickel on the zeolite
in step (b) and then separately requires introduction of a hydro-
dehydrogenating element on the catalyst matrix in step (d). Appeal Br. 6
(Claims App’x). This process results in a catalyst comprising two distinct
hydrogenating phases, “one made up of nickel and deposited on the zeolite
and the other made up of nickel and molybdenum and deposited on the
alumina oxide matrix.” Spec. 37. The Specification illustrates these two
distinct phases at Table 2. Id. at 38—39 (showing nickel present on the
zeolite as well as the alumina). In contrast, Simon teaches group VIII
elements may be introduced during the synthesis of the matrix. Simon ]f]f
93—96. And, Simon fails to teach the addition of nickel during the
preparation of the zeolite. See generally id. ]Hf 32—78. Thus, in contrast to
the process of claim 1, Simon’s process would not produce two distinct
hydrogenating phases. Moreover, the Examiner’s statement that “Simon
provides for . . . [the] addition of a portion of the catalyst metals at one stage
of catalyst preparation with the remaining portion of catalyst metals added at
one or more other states of catalyst preparation” (See Ans. 10) is conclusory
and unsupported by the disclosure of Simon.
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Application 13/345,041
We also agree with Appellants that the Examiner’s interpretation of
paragraph 93 is mistaken. See e.g., Appeal Br. 3; Reply Br. 2. The context
of paragraph 93 makes clear that the addition of group VIII elements occurs
at any stage during the synthesis of the matrix. In particular, Simon explains
The group VIB elements and/or the non-precious group VIII
elements . . . can optionally be introduced, wholly or partly, at
any stage of preparation, during synthesis of the matrix,
preferably during forming of the support, or very preferably after
forming of the support by any method known to a person skilled
in the art. They can be introduced after forming of the support,
either after or before drying and calcination of the support.
[Simon 193 (emphasis added)].
According to a preferred embodiment of the present invention,
some or all of the elements of groups VIB and/or
non-precious group VIII elements . . . can be introduced during
forming of the support, for example during the stage of mixing of
the modified zeolite with a wet alumina gel. [Id. 194 (emphasis
added)].
Therefore, the Examiner has not met the initial burden of showing that
the claimed subject matter would have beenprima facie obvious over the
prior art of record. On this record, we do not sustain the Examiner’s
rejection of claims 1—7 under § 103(a) over Simon.
Rejection B— Obviousness (claims 1—7)
The Examiner additionally rejects claim 1 as obvious over Guillon.
Final Act. 5. Similar to the Examiner’s findings with respect to Simon, the
Examiner finds that Guillon teaches all aspects of claim 1 except that
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Application 13/345,041
Guillon fails to teach depositing nickel on the zeolite prior to shaping the
mixture. Final Act. 5—6.
Appellants argue that “[a]s in Simon, Guillon discloses preparation of
dealuminated zeolite in paragraph[s] [0061-0102], then mixture of the
zeolite with the matrix as it is shaped (paragraph [0111 ]—paragraph [0116])
and then introduction of active catalyst metals (paragraph [0117]). Appeal
Br. 4. Therefore, Appellants urge that Guillon fails to teach the instant
invention.
For the reasons discussed above as to the Examiner’s obviousness
rejection based on Simon (see supra p. 5—6), we are not persuaded that the
Examiner has adequately explained why the process recited in the rejected
claims would have been obvious in view of Guillon. We, therefore, cannot
sustain the Examiner’s rejection of claims 1—7 in view of Guillon.
CONCLUSION
Appellants have shown reversible error in the Examiner’s rejection of
claims 1—7 under 35 U.S.C. § 103(a) as being unpatentable over Simon.
Appellants have shown reversible error in the Examiner’s rejection of
claims 1—7 under 35 U.S.C. § 103(a) as being unpatentable over Guillon.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—7 are
reversed.
REVERSED
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