Ex Parte Heibel et al

Board of Patent Appeals and Interferences

Sep 9, 2009

10184363 (B.P.A.I. Sep. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ACHIM K. HEIBEL and JOSHUA A. JAMISON
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Appeal 2009-003576
Application 10/184,363
Technology Center 1700
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Decided: September 9, 2009
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 10, 12, and 13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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I. STATEMENT OF THE CASE
The invention relates to a method for expanding the operating
windows (i.e., the maximum gas and liquid flows that can be reached
without flooding) of packed columns with countercurrent flows. The
method includes passing the liquid through a flood-limiting device with
honeycombed parallel columns decreasing stepwise in hydraulic diameter
downwardly through the stack in the direction of liquid flow. (Br. 2-3.)
Claim 10 is illustrative of the subject matter on appeal:
10. A method of extending the flooding limit of a packed column
operating under countercurrent flow conditions under which a liquid
introduced into an inlet end of the column flows downwardly toward an
outlet end of the column through parallel straight channels of a honeycomb
monolith packing while a gas flows upwardly through the channels,
comprising:
passing the liquid through a flood-limiting device mounted at the inlet
end of the column, the flood-limiting device comprising a stack of
honeycomb monolith segments having parallel straight channels, the
channels decreasing stepwise in effective hydraulic diameter downwardly
through the stack in the direction of liquid flow into the inlet end of the
column.
The Examiner maintains only one rejection, namely, the rejection of
claims 10, 12, and 13 under 35 U.S.C. § 103(a) over Wible (US 2,271,671,
issued Feb. 3, 1942) in view of Yoshimatsu et al. (JP 09-000802, published
July 1, 1997)(“Yoshimatsu”)1 and Perry’s Chemical Engineers’ Handbook
(Seventh Ed., 1997, pp 14-38 to 14-54)(“Perry’s”).

1 An English language abstract and a machine translation (from Patent
Abstracts of Japan) were made of record in an Office Communication
mailed Sept. 19, 2005. A full English translation of Yoshimatsu prepared
for the USPTO by Schreiber Translations, Inc. (PTO 07-1763 January 2007)
was made of record in the Office Communication mailed May 16, 2007. We
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Since no claims are argued separately from the others, we decide this
Appeal on the basis of representative independent claim 10. 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.”).
II. Substitution of art-recognized equivalents
A. ISSUE ON APPEAL
Appellants contend that the flow characteristics of monolith packings
differ fundamentally from those of more conventional packings, and, that the
Examiner’s finding that honeycomb monoliths and random-fill materials are
art-recognized equivalents is not supported by the present record (Br. 6-7).
The Examiner responds that Appellants’ evidence does not support
Appellants’ assertion that the flow characteristics are fundamentally
different between the honeycomb monoliths and the random-fill materials
(Ans. 12). The Examiner also relies on Perry’s as evidence that “the
problems of obtaining uniform and stable distribution and redistribution of
gases and liquids in a packed column would not be unique to monolith
packings. In fact, such problems are similarly encountered in the use of the
‘more conventional packings’” and that the alternative use of one for the
other “is knowledge generally available to one of ordinary skill in the art”
(Ans. 12-13).

have considered the English documents. References to “Yoshimatsu” in this
Decision are to the full English translation.
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An issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants shown that the Examiner reversibly erred in
finding that one of ordinary skill in the art would have substituted
honeycombed monolith structures for the random-fill packing materials in
the packed column taught by Wible?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Yoshimatsu teaches that morphologically irregular fillers such
as Raschig rings, Teralet, etc., and morphologically regular fillers such as
Melapack (manufactured by Sulzer Co.) are both known in the art and
commercially available for use as fillers in filling columns (Yoshimatsu,
¶ 2).
2. Perry’s teaches that many commercially available packings
possess different advantages with respect to cost, surface availability,
interface regeneration, pressure drop, weight, and corrosion resistance and
indicates two categories of packed columns including random, or dumped,
packings and ordered, or structured packings (Perry’s 14-39, col. 2).
3. Perry’s indicates that data are equally available for random and
ordered packing materials for the purpose of estimating pressure drop, liquid
holdup, interfacial area, mass transfer, efficiency, etc., of the packings
within the column (see generally Perry’s).
4. Yoshimatsu teaches using honeycombed monoliths of different
cell sizes for introducing a smooth downward liquid flow which reduces
pressure loss proliferation and allows for a broad operating range
(Yoshimatsu, ¶¶ 16-17).
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5. Appellants’ Specification indicates that the invention is not
limited to structured packings and includes conventional (i.e., random-fill)
packings (Spec. ¶¶ 23 and 36). Appellants define “the effective channel
hydraulic diameter” for “other packed bed designs” (i.e., random-fill
packings) as “the characteristic hydraulic length dimensions of the tortuous
flow path” (Spec. ¶ 8).
6. Appellants’ evidence references only obtaining good fluid
distribution in monolith reactors and does not in any way distinguish
monolith packings from random-fill packings (Br. 7, according to
Appellants, Irandoust et al. “The Use of Monolithic Catalysts for Three-
Phase Reactions,” Structured Catalysts and Reactors, pp. 244 and 262
(1998)).
C. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982); see also KSR, 550 U.S. at 417 (“If a person of ordinary skill
can implement a predictable variation, §103 likely bars its patentability.”).
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D. ANALYSIS
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness. We agree with the Examiner that the
teachings of Yoshimatsu and Perry’s present sufficient evidence that one of
ordinary skill in the art would have considered honeycomb monoliths and
random-fill packing materials to be interchangeable packings for a packed
column (FF 1-3). Substituting a honeycomb monoliths for random-fill
packings so as to create voids of different sizes as taught by Wible would
have been no more than the use of a familiar element (honeycomb
monoliths) according to its known function (packed column packing
materials). Yoshimatsu provides even further evidence that honeycomb
monoliths having different cell sizes were known in the art (FF 4).
We also agree with the Examiner that, so long as one of ordinary skill
in the art would have considered both materials suitable for filling a packed
column, it is not necessary for a determination of obviousness that the
honeycomb monolith and the random-fill material, in fact, function
identically with respect to the distribution of gases and liquids within the
column. Perry’s indicates that one of ordinary skill in the art would have
equal access to the necessary data to consider the liquid and gas distributions
of either random or ordered packings (FF 3). Further, established
differences between the packing materials, if any (see FF 3), do not negate
the fact that one of ordinary skill in the art would have understood that either
material would adequately function as packing materials for a packed
column.
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Appellants have not shown that using honeycomb monoliths would
result in a substantial or unexpected advantage over random-fill materials
having channels decreasing stepwise in effective hydraulic diameter, as
taught by Wible, so as to render the combination unobvious. To the
contrary, Appellants’ Specification suggests that either type of packing
material is suitable for use in the inventive method (FF 5). Accordingly,
Appellants have not shown that the Examiner reversibly erred in finding that
one of ordinary skill in the art would have substituted honeycombed
monolith structures for the random-fill packing materials taught by Wible.
III. Additional arguments
Appellants’ additional arguments include: (a) that the object of Wible
is not the same as the present invention (Br. 5), (b) that Yoshimatsu does not
teach an inlet stack of monolith segments, as required by claim 10 (Br. 6),
and (c) that Yoshimatsu does not clearly disclose honeycombs of differing
channel size (Br. 6). We find these additional contentions unpersuasive
because they fail to address the precise rejection of the Examiner. For
example, the Examiner’s rejection relies on Wible, rather than Yoshimatsu,
to teach an inlet stack of channels decreasing stepwise in effective hydraulic
diameter in the direction of liquid flow (i.e., using channels with different
sizes). Further, we agree with the Examiner’s findings that Yoshimatsu
teaches honeycombs of differing cell size (FF 4).
Even if Wible and the present invention are directed toward different
purposes, it is of no moment if the Examiner has established a prima facie
case of obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)
(“[T]he motivation in the prior art to combine the references does not have
to be identical to that of the applicant to establish obviousness.”).
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Additionally, we find that Wible is directed to exactly the same problem as
the present invention, namely, increasing efficiency without flooding (see
e.g., Wible, col. 1, l. 49 to col. 2, l. 2).
Accordingly, Appellants’ additional arguments fail to demonstrate any
Examiner error in establishing a prima facie case of obviousness and fail to
adequately rebut the Examiner’s conclusion of obviousness.
IV. CONCLUSION
For the reasons discussed above, we sustain the Examiner’s rejection
of claims 10, 12, and 13 under 35 U.S.C. § 103(a) over Wible in view of
Yoshimatsu and Perry’s.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).

AFFIRMED

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