Ex Parte Ghosh et al

Patent Trial and Appeal Board

May 30, 2017

13868296 (P.T.A.B. May. 30, 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.
13/868,296 04/23/2013 Ashim Kumar Ghosh 12CHEM0034-U S -NP 3408
102091 7590 06/01/2017
Cantor Colburn LLP - SABIC Americas
20 Church Street
Hartford, CT 06103
EXAMINER
CORNO, JAMES A
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHIM KUMAR GHOSH, SCOTT STEVENSON,
MEGHANN SIMMONS, and MICHAEL MIER
Appeal 2016-002449
Application 13/868,296
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and AVELYN M. ROSS,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s decision to finally reject claims 1—
8, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 In this decision, we refer to the Specification filed April 23, 2013
(“Spec.”); the Final Office Action appealed from, dated February 27, 2015
(“Final Act.”); the Advisory Action dated May 11, 2015 (“Adv. Act.”); the
Appeal Brief dated July 27, 2015 (“App. Br.”); the Examiner’s Answer to
the Appeal Brief dated October 27, 2015 (“Ans.”); and the Reply Brief dated
December 21, 2015 (“Reply Br.”).
2 Appellants identify “SAUDI BASIC INDUSTRIES CORPORATION” as
the real party in interest. App. Br. 2.
Appeal 2016-002449
Application 13/868,296
The Claimed Invention
Appellants’ disclosure relates to a hydrocarbon aromatization catalyst
and method of preparation of the catalyst. Spec. 1; Abstract. Claim 1 is
illustrative of the claimed subject matter on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 16) (key disputed
claim language italicized and bolded):
1. A formed catalyst comprising:
a Ge-ZSM-5 zeolite;
a binder comprising silica with 1 to less than 5 wt% non­
silica oxides;
less than or equal to 0.1 wt% residual carbon;
0.4 to 1.5 wt% platinum; and
4.0 to 4.8 wt% Cs;
wherein the weight percentages are based upon a total
weight of the catalyst.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Chang etal., US 6,365,767 B1 Apr. 2,2002
(hereinafter “Chang”)
Van Crijnen-Beers et al., US 6,709,570 B1 Mar. 23, 2004
(hereinafter “VCB”)
Stevenson et al., US 2008/0255398 Al Oct. 16, 2008
(hereinafter “Stevenson”)
Otremba et al., Temperature-Programmed Desorption of n-
Propylbenzene from HNaZSM-5 and Na (Li, K, Rb, Csj ZSM-5 Type
Zeolites, React. Kinet. Catal. Lett., Vol. 51, No. 2, 481—87 (1993)
(hereinafter “Otremba”).
Vandegrift, Jr., et al., The Effect of Test Cylinder Size on the
Compressive Strength of Sulfur Capped Concrete Specimens,
2
Appeal 2016-002449
Application 13/868,296
Highway Research Center and Department of Civil Engineering at
Auburn University, IR-06-01 (August 2006) (hereinafter
“Vandegrift”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over VCB in view of Stevenson, Otremba, and Chang
(“Rejection 1”). Final Act. 3—4\ Ans. 2.
2. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over VCB in view of Stevenson, Chang, and Otremba, with
reference to Vandegrift (“Rejection 2”). Final Act. 5; Ans 4.
OPINION
Rejection 1
The Examiner determines that the combination of VCB, Stevenson,
Otremba, and Chang suggests a catalyst satisfying all of the limitations of
claim 1 and that the combination would have rendered claim 1 obvious.
Ans. 2—3.
The Examiner finds that the combination of VCB and Stevenson
suggests the majority of the limitations of claim 1, but that the combination
does not teach or suggest that the cesium is present at 4.0 to 4.8 wt%, as
recited in the claim. Ans. 3. The Examiner, however, relies on the Otremba
and Chang references for suggesting this missing limitation. Id. at 3. In
particular, the Examiner finds that Otremba teaches that alkali metal loading
rates strongly affect selectivity of ZSM-5 zeolites and Chang teaches that
cesium loading rate on ZSM-5 catalysts affect both selectivity and
3
Appeal 2016-002449
Application 13/868,296
conversion rates. Id. at 3 (citing Otremba, p. 481, Figs. 1 and 2; Chang,
Figs. 1—3).
The Examiner finds further that alkali metal loading (including
cesium loading) is recognized in the art as a result-effective variable and
concludes that:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to select the
optimum cesium loading, including values within the range of
the instant claim, since it has been held that discovering an
optimum value of a result effective variable involves only
routine skill in the art.
Ans. 3 (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
Appellants argue that the Examiner’s rejection should be reversed
because one of ordinary skill in the art would not have been motivated to
modify VCB/Stevenson’s alkane aromatization catalyst with the cesium of
Otremba and Chang. App. Br. 9-10. In particular, Appellants argue that
Otremba and Chang are directed to different catalysts applied to different
reactions and neither is directed to the aromatization of alkanes. Id. at 10.
Appellants further argue that the Examiner’s rejection fails to take into
account the “unpredictability of catalytic phenomena” and is based on
impermissible hindsight. Id. at 9 (citing In re Mercier, 515 F.2d 1161
(CCPA 1975)).
We agree with Appellants’ argument in this regard. On the record
before us, we are not persuaded that the Examiner has provided adequate
technical reasoning or identified sufficient evidence to explain why one of
skill in the art would have modified VCB/Stevenson’s catalyst with
Otremba’s or Chang’s cesium to arrive at the claimed catalyst composition.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the
4
Appeal 2016-002449
Application 13/868,296
examiner bears the initial burden of establishing a prima facie case of
obviousness).
The Examiner does not adequately explain why one of ordinary skill
would have been motivated to modify or combine the teachings of the cited
references to arrive at the claimed invention. As Appellants correctly point
out (App. Br. 9), Otremba is directed to zeolites for the adsorption of n-
alkylbenzenes to increase the chain length of the alkyl group and on the
degree of exchange on adsorption and thermal desorption of n-
propylbenzene. Otremba, p. 482. Chang is directed to a method of co­
producing dialkyl carbonate and alkanediol by reacting alkylene carbonate
with alkanol in the presence of a zeolite. Chang, Abstract, col. 1,11. 4—8.
Chang teaches that heterogeneous catalysts, including zeolites containing a
stoichiometric amount of alkali or alkaline earth metal, generally
demonstrate low activity and/or selectivity and are unsatisfactory for
commercial application. Id. at col. 1,11. 48—53.
In contrast, VCB is directed to a method for preparing a catalyst
comprising a zeolite and a low acidity refractory oxide binder which is
essentially free of alumina (VCB, col. 1,11. 3—5) and Stevenson is directed to
the aromatization of alkanes using germanium-zeolite catalyst (Stevenson,
Title, Abstract, || 2, 20). Stevenson teaches that its catalyst is synthesized
from an aqueous gel containing a silica source, a germanium source, an
aluminum source and a structure directing agent and that the technique for
synthesizing the catalyst comprises converting an aqueous gel of a silica
source, a germanium source and an aluminum source to zeolite crystals by a
hydrothermal process, employing a dissolution/recrystallization mechanism.
Id. at 120.
5
Appeal 2016-002449
Application 13/868,296
Although both Stevenson and Chang each discloses catalysts that may
contain cesium, Stevenson teaches a catalyst having a cesium content of
greater than 5 wt% (Stevenson, || 39-41, Example 1), while Chang teaches
a cesium content for its catalyst of greater than 25 wt% (Chang, col. 6,11.
10—13, col. 7,1. 42—col. 8,1. 62, Tables 2 and 3); neither of which
encompasses or overlaps the claimed cesium content range of 4.0 to 4.8
wt%.
Moreover, the Examiner does not identify sufficient evidence in the
record to support the finding that a skilled artisan would have had a
reasonable expectation of success in modifying VCB/Stevenson’s catalyst
with the cesium of Otremba and Chang. In particular, the Examiner does not
meaningfully address the differences between VCB/Stevenson’s catalyst and
Otremba’s and Chang’s catalysts, including that they are directed to very
different chemical reactions and disclose very different cesium contents.
The Examiner also does not direct us to any teaching or suggestion in
the prior art regarding the technical feasibility and capability of modifying
VCB/Stevenson’s alkane aromatization catalyst based on Otremba’s and
Chang’s teachings regarding cesium contents in catalysts used for the
adsorption of n-alkylbenzenes and co-producing dialkyl carbonate and
alkanediol by reacting alkylene carbonate with alkanol, respectively; and
why one of ordinary skill in the art would have had a reasonable expectation
of success in doing so.
We are also unpersuaded that a preponderance of the evidence
supports the Examiner’s obviousness conclusion and finding that cesium
content is a result-effective variable. The Examiner’s reference to page 481
6
Appeal 2016-002449
Application 13/868,296
and Figures 1 and 2 of Otremba and Figures 1—3 of Chang, without more, is
insufficient the satisfy the Examiner’s evidentiary burden in this regard.
Further, as the Appellants correctly point out (App. Br. 10), the fact
that the cesium contents in Otremba’s or Chang’s catalysts may or may not
have an effect in the reactions of Otremba and Chang does not ipso facto
establish or suggest that one of ordinary skill would have been motivated to
arrive at the claimed cesium content in the reaction of VCB/Stevenson’s
catalyst. “The unpredictability of catalytic phenomena has been recognized .
. . [A] successful catalyzed process depends not only on the particular
catalyst that may be employed but also on the environment within which the
catalyst is accomplished.” Mercier, 515 F.2d at 1168.
We, therefore, cannot sustain the Examiner’s determination that the
combination of VCB, Stevenson, Otremba, and Chang suggests a catalyst
satisfying all of the limitations of claim 1 and that the combination would
have rendered claim 1 obvious. Because claims 2—6 each depends from
claim 1, we also cannot sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1—6 under
35 U.S.C. § 103(a) as being unpatentable over the combination of VCB,
Stevenson, Otremba, and Chang.
Rejection 2
Because claims 7 and 8 each depends from claim 1 and the foregoing
deficiencies in the Examiner’s findings and conclusions regarding the
combination of VCB, Stevenson, Otremba, and Chang are not remedied by
the Examiner’s findings regarding the additional references or combination
of references cited in support of the second ground of rejection, we also
reverse Rejection 2.
7
Appeal 2016-002449
Application 13/868,296
DECISION
The Examiner’s rejections of claims 1—8 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
8