Ex Parte Hatagishi

Patent Trial and Appeal Board

Jun 16, 2017

13055611 (P.T.A.B. Jun. 16, 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.
13/055,611 01/24/2011 Takuya Hatagishi 081909-0133 6692
22428 7590 06/20/2017
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
LOUIE, PHILIP Y
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUYA HATAGISHI
Appeal 2016-000436
Application 13/055,611
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 and 3—7. A hearing was held on
June 13, 2017.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 In this decision, we refer to Appellant’s Specification filed January 24,
2011 (“Spec.”), the Final Office Action mailed July 2, 2014 (“Final Act.”),
the Appeal Brief filed March 16, 2015 (“Appeal Br.”), the Examiner’s
Answer mailed August 11, 2015 (“Ans.”), and the Reply Brief filed
October 9, 2015 (“Reply Br.”).
2 Appellant identifies the real party in interest as Meidensha Corporation.
Appeal Br. 1.
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal 2016-000436
Application 13/055,611
Claims 1 and 3, reproduced below, are illustrative of the claims on
appeal.
1. A method for producing an aromatic compound by a catalytic
reaction using a lower hydrocarbon as a raw material, the
method comprising:
subjecting a carbonized catalyst having a temperature of
700 °C or higher to an increasing temperature, until a catalytic
reaction temperature is reached, under an atmosphere of a
non-oxidizing gas, the atmosphere excluding hydrocarbon
gas; and
then bringing the carbonized catalyst in contact with a gas
containing a lower hydrocarbon to produce an aromatic
compound.
3. A method for producing an aromatic compound by a catalytic
reaction using a lower hydrocarbon as a raw material, the
method comprising:
subjecting a carbonized, molybdenum-containing catalyst
having a temperature of 700 °C or higher to an increasing
temperature, until a catalytic reaction temperature is reached,
under an atmosphere of a non-oxidizing gas, the atmosphere
excluding hydrocarbon gas; and
then bringing the carbonized, molybdenum-containing
catalyst in contact with a gas containing a lower hydrocarbon
to produce an aromatic compound,
wherein the carbonized, molybdenum-containing catalyst
is prepared by supporting molybdenum or a molybdenum
compound on a metallosilicate and then conducting a
carbonization treatment.
Appeal Br. 15 (Claims Appendix).
DISCUSSION
The Examiner maintains the rejection of claims 1 and 3—7 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Ichikawa et al. (US 6,239,057
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Application 13/055,611
Bl, issued May 29, 2001, hereinafter “Ichikawa”). Final Act. 7—11; Ans. 2—
6.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)). After considering
each of Appellant’s contentions, we are not persuaded that Appellant
identifies reversible error in the Examiner’s rejection. Thus, we affirm the
Examiner’s rejection for the reasons expressed in the Final Office Action,
the Answer, and below.
Claims 1, 3, 4 and 74
In regards to claim 1, the Examiner finds that Ichikawa discloses a
method for producing an aromatic compound using a lower hydrocarbon as a
raw material (Ichikawa 2:28—32) comprising: (a) activating a calcined
catalyst by subjecting the catalyst to a treatment with a hydrogen and/or
methane gas, at the temperature of about 100°C to about 800°C for a time of
about 0.5 hours to about 100 hours {id. at 3:44-47); (b) placing the catalyst
in a reactor and heating the reactor and catalyst until it reaches a reaction
temperature, as for example 700°C (id. at 6:33—35); (c) then bringing the
catalyst in contact with a gas to produce an aromatic compound (id. at 6:35—
41, 4:6—24). Final Act. 7.
4 Appellant does not present any separate arguments for patentability of
dependent claims 4 and 7. Thus, each of claims 4 and 7 will stand or fall
with the independent claim from it depends.
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Application 13/055,611
Although Ichikawa does not explicitly disclose that its catalyst is
carbonized, the Examiner finds that “activating” the calcined catalyst as
described in Ichikawa would be equivalent to the carbonization treatment
described in Appellant’s Specification. Final Act. 6—7; Ans. 6—7; see also
Spec. 129 (describing a carbonization treatment as subjecting a
molybdenum-containing catalyst to treatment with a mixed gas of methane
and hydrogen at temperatures from 600° C to 750° C).
The Examiner acknowledges that Ichikawa does not explicitly
disclose subjecting a carbonized catalyst having a temperature of 700°C or
higher to an increasing temperature until a catalytic reaction temperature is
reached under an atmosphere of non-oxidizing gas. Final Act. 8. The
Examiner, however, finds that Example 14 of Ichikawa discloses that a
catalyst is placed in the reactor and the reactor is heated to a temperature of
700°C and flushed with helium at which time a feed gas of pure methane or
methane plus CO and/or CO2 is introduced. Id., citing Ichikawa 6:33—41
(Example 14). The Examiner finds that the “heating and flushing with
helium” is conducted simultaneously. Final Act. 8. The Examiner
determines that one of ordinary skill in the art would have been motivated,
based on Ichikawa’s disclosure, to subject Ichikawa’s catalyst to a non­
oxidizing atmosphere as a result of flushing the reactor with helium while
heating the reactor until it reaches the temperature of 700°C, absent any
evidence to the contrary. Id. The Examiner acknowledges that the examples
only disclose heating to a temperature of 700°C, but finds that the examples
are only some embodiments taught by Ichikawa’s broader disclosure. Id.
Specifically, the Examiner finds that Ichikawa teaches that the process can
be carried out preferably at a temperature of about 450°C to about 900°C
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Application 13/055,611
(Ichikawa 4:12—13) and that the treatment of the calcined catalyst is at a
temperature of about 100°C to about 800°C (id. at 3:44-47). Final Act. 9.
The Examiner finds that one of ordinary skill in the art would have
reasonably understood based on Ichikawa’s entire disclosure that, for
example, the treatment step may occur at a temperature of 700°C or higher
and that the catalyst may then be heated to a reaction temperature higher
than the treatment temperature from above 700°C or higher to about 900°C.
Id. The Examiner then concludes that if Ichikawa’s process were performed
at temperatures taught by the broader disclosure, the invention of Ichikawa
would read upon the claimed invention. Final Act. 10.
In addition to the findings discussed above, with regard to claim 3, the
Examiner finds Ichikawa discloses a catalyst prepared by supporting
molybdenum or a molybdenum compound on a metallosilicate (e.g.
metallosilicate zeolites) (Ichikawa 2:50—51, 2:62—65; Example 13; claim 1).
Final Act. 8.
Appellant argues that Ichikawa does not disclose, teach, or suggest,
that the catalyst is carbonized, as recited in claim 1. Appeal Br. 6—7. In
addition, Appellant argues that Ichikawa does not disclose, teach, or suggest
a carbonized molybdenum-containing catalyst, as recited in claim 3. Id.
Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection of claims 1 or 3. Ichikawa teaches or suggests
molybdenum-containing catalysts, including molybdenum-containing
catalysts on a metallosilicate. Ichikawa 2:50-51 and 2:62—65. Although
none of examples 1—12 of Ichikawa disclose that the catalyst is carbonized,
the broader disclosure of Ichikawa teaches activating a calcined catalyst by
subjecting the catalyst to a treatment with a hydrogen and/or methane gas, at
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the temperature of about 100°C to about 800°C for a time of about 0.5 hours
to about 100 hours. Ichikawa 3:44-47. As the Examiner points out, this
disclosure teaches three embodiments of activating the catalyst: (1) with
hydrogen alone, (2) with methane alone, and (3) with a combination of
hydrogen and methane. Ans. 6. Thus, a preponderance of the evidence
supports the Examiner’s finding that one of ordinary skill in the art would
have understood that at least embodiment (3) of activating the catalyst taught
by Ichikawa would have resulted in carbonization of the catalyst, for
example, a molybdenum-containing catalyst, because carbonization occurs
when catalysts are heated to temperatures of about 700 -C in the presence of
a mixed gas of methane and hydrogen. Compare Ichikawa 3:44-47 with
Spec. 20, 29.
Appellant argues that even if Ichikawa discloses a carbonized catalyst,
Ichikawa still fails to disclose, teach, or suggest “subjecting a carbonized
catalyst having a temperature of 700°C or higher to an increasing
temperature, until a catalytic reaction temperature is reached, under an
atmosphere of a non-oxidizing gas, the atmosphere excluding hydrocarbon
gas,” as recited in independent claim 1, and “subjecting a carbonized,
molybdenum-containing catalyst having a temperature of 700°C or higher to
an increasing temperature, until a catalytic reaction temperature is reached,
under an atmosphere of a non-oxidizing gas, the atmosphere excluding
hydrocarbon gas,” as recited in independent claim 3. Appeal Br. 7—11.
Appellant’s argument is not persuasive of reversible error in the
rejection of claims 1 or 3. Ichikawa discloses that a catalyst is placed in the
reactor and the reactor is heated to a temperature of 700°C and flushed with
helium at which time a feed gas of pure methane or methane plus CO and/or
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Application 13/055,611
CO2 is introduced. Ichikawa 6:33—41 (Example 14). Although Ichikawa’s
Example 14 discloses heating to a temperature of 700°C, Ichikawa’s broader
disclosure teaches that the catalyst can be heated, in the absence of oxygen,
at a temperature of about 450°C to about 900°C (Ichikawa 4:12—13) and that
the activation treatment of the calcined catalyst is at a temperature of about
100°C to about 800°C (id. at 3:44-47). Thus, based on Ichikawa’s
disclosure as a whole (the combined disclosure of Ichikawa 3:44-47, 4:12—
13, 6:3 3—41 (Example 14)), a preponderance of the evidence supports that
Examiner’s finding that one of ordinary skill in the art would have
reasonably understood that, for example, activating the catalyst (i.e.,
carbonization treatment) in Ichikawa may occur at a temperature of 700°C
or higher and that the catalyst, for example a molybdenum-containing
catalyst as taught or suggested by Ichikawa as discussed above, may then be
heated to a reaction temperature higher than the treatment temperature, for
example, from above 700°C or higher to about 900°C, under an atmosphere
of non-oxidizing gas, for example helium, which is described in Appellant’s
Specification as a non-oxidizing gas (Spec. 112), where the atmosphere
excludes hydrocarbon gas. Ans. 8.
Regarding claim 3, Appellant argues that Ichikawa does not disclose,
teach, or suggest “[prevention of the undesirable conversion of
molybdenum carbide into molybdenum oxide.” Appeal Br. 11.
Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection of claim 3. First, Appellant’s argument is not
commensurate in scope with the claims. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[Ajppellanf s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”). In addition,
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Application 13/055,611
there is a reasonable basis for finding that Ichikawa’s process would prevent
the undesirable conversion of molybdenum carbide into molybdenum oxide.
According to Appellant, the undesirable conversion of molybdenum carbide
into molybdenum oxide is prevented by “subjecting a carbonized,
molybdenum-containing catalyst having a temperature of 700°C or higher to
an increasing temperature, until a catalytic reaction temperature is reached,
under an atmosphere of a non-oxidizing gas, the atmosphere excluding
hydrocarbon gas,” as recited in claim 3. Appeal Br. 12. As discussed above,
Ichikawa teaches this “subjecting” step required by claim 3.
Appellant, relying on Atofina v. Great Lakes Chem. Corp., 441 F.3d
991 (Fed. Cir. 2006), argues for the first time in their Reply Brief that
Ichikawa does not describe the recited temperature ranges with sufficient
specificity to be anticipatory or render independent claims 1 and 3 obvious.
Reply Br. 7—10.
Appellant’s reliance on Atofina is misplaced because it involves an
anticipation rather than an obviousness rejection. In addition, Appellant’s
argument could have been presented in their Appeal Brief, but was not. As
such, we treat Appellant’s argument as unpersuasive and untimely.
37 C.F.R. § 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1474—75
(BPAI 2010) (informative) (clarifying that “the reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not” and that
“the failure to raise all issues and arguments diligently, in a timely fashion,
has consequences”).
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Application 13/055,611
Because none of Appellant’s arguments identify reversible error in the
Examiner’s rejection, we sustain the Examiner’s rejection of claims 1,3,4,
and 7.
Claims 5 and 6
Claim 5, which depends from claim 1, and claim 6, which depends
from claim 3, each requires “the step of bringing the carbonized catalyst in
contact with the gas containing the lower hydrocarbon is conducted at the
catalytic reaction temperature.”
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s rejection of claims 5 and 6. Ichikawa teaches using a catalyst
for converting low carbon number aliphatic hydrocarbons to higher carbon
number hydrocarbons. Ichikawa 2:28—32, 3:44^47. Ichikawa teaches
activating the catalyst with a hydrogen and/or methane treatment gas, i.e. a
carbonization step. Id. at 3: 44-47. Then, to convert low carbon number
aliphatic hydrocarbons to higher number hydrocarbons, Ichikawa teaches
that the activated catalyst is contacted with a gas, preferably a mixture of
methane and CO and/or CO2 at conversion conditions. Ichikawa 4:6—19. A
person of ordinary skill in the art would have reasonably understood from
Ichikawa’s disclosure that “conversion conditions” include temperatures in
which the catalytic reaction occurs (i.e., a catalytic reaction temperature).
Thus, a preponderance of the evidence supports the Examiner’s finding that
Ichikawa teaches contacting a carbonized catalyst with a gas containing a
lower hydrocarbon, i.e., methane, at a catalytic reaction temperature.
Because Appellant’s argument does not identify reversible error in the
Examiner’s rejection, we sustain the Examiner’s rejection of claims 5 and 6.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 3—7 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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