Ex Parte HENNIGAN

Patent Trials and Appeals Board

May 2, 2019

14773399 - (D) (P.T.A.B. May. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/773,399 09/08/2015 Sean Anthony HENNIGAN
20306 7590 05/02/2019
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
18-1123-WO-US 5862
EXAMINER
ADZAMLI, KOFI
ART UNIT PAPER NUMBER
1622
MAIL DATE DELIVERY MODE
05/02/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN ANTHONY HENNIGAN
Appeal2018-008160
Application 14/773,399
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner's rejection. (Appeal Brief filed February 21, 2018 ("App. Br.")
6.)
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter
a new ground of rejection.
1 Appellant identifies the real party in interest as BP Chemicals Limited.
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Application 14/773,399
The Examiner rejected claims 15-30 under 35 U.S.C. § 102(a)(l) as
anticipated by Kline. 2 (Final Office Action, mailed March 23, 2017 ("Final
Act.") 2-10.)
Appellant's Specification provides a continuous process for the co-
production of acetic acid and acetic anhydride. (See Specification ("Spec.")
1 :3--4.) The process may include withdrawing a liquid mixture of acetic
anhydride and acetic acid from a reactor and introducing the mixture into a
flash separation zone to produce a vapor fraction and a liquid fraction, each
containing acetic anhydride and acetic acid. (See Spec. 1: 10-15.) Because
acetic anhydride has a higher boiling point than acetic acid, recovering
"acetic anhydride in preference to acetic acid remains difficult." (Spec.
1: 1 7-19.) "It has now been observed that the presence of at least one Group
IA or IIA metal salt in liquid reaction compositions for the co-production of
acetic acid and acetic anhydride has the effect of enhancing the volatility of
acetic anhydride relative to acetic acid," thus increasing the amount of acetic
anhydride in the vapor fraction. (Spec. 6:31-7:7.)
Appellant argues against the rejection of independent claim 15, but
does not present separate arguments for the patentability of any of the claims
that depend on claim 15. We focus on claim 15 in our review. See 37
C.F.R. § 4I.37(c)(iv). 3
2 Kline et al., EP 2029514 Bl, first published April 3, 2009.
3 The cover page of the Final Office Action indicates that claims 15-30, all
of Appellant's pending claims, are finally rejected and the Examiner
confirms that claims 15-30 are rejected (see Final Act. 10). Even though
elsewhere the Examiner indicates that only claims 15-28 are anticipated
under 35 U.S.C. § 102 (see Ans. 10), we consider the rejection of claims 15-
30 to be appealed even though Appellant characterizes the rejection as being
of claims 15-28 and does not address claims 29 and 30 in his arguments.
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Appellant's claim 15 recites:
A continuous process for the co-production of acetic acid
and acetic anhydride which comprises the steps of:
(a) contacting in a reaction zone carbon monoxide with a
liquid reaction composition comprising methyl acetate,
dimethyl ether or a mixture thereof, a Group VIII metal
catalyst, methyl iodide, acetic acid, acetic anhydride, water in a
concentration of 0.1 wt% or less;
(b) withdrawing liquid reaction composition from the
reaction zone and introducing at least a portion of the
withdrawn liquid reaction composition into a flash separation
zone; and
( c) removing from the flash separation zone a vapour
fraction comprising acetic anhydride, acetic acid and methyl
iodide and a liquid fraction comprising acetic anhydride, and
Group VIII metal catalyst;
wherein at least one of the liquid reaction composition
and the withdrawn liquid reaction composition introduced into
the flash separation zone comprises at least one metal salt
selected from salts of Group IA and Group IIA metals and the
molar ratio of acetic acid to acetic anhydride in the vapour
fraction removed from the flash separation zone is maintained
at greater than or equal to 1.
(App. Br. 14.)
Findings of Fact
1. Kline teaches a continuous process for the production of acetic
acid and acetic anhydride under substantially anhydrous conditions
including the steps of:
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Application 14/773,399
( 1) producing a liquid reaction mixture including methyl acetate,
methyl iodide, dissolved catalyst components, carbon monoxide,
acetic acid, and acetic anhydride;
(2) feeding a liquid carbonylation product effluent from the reaction
zone to an evaporation zone;
(3) removing a vapor product from the evaporation zone containing
methyl iodide, acetic acid, and acetic anhydride; and
( 4) removing a liquid product from the evaporation zone containing
acetic acid, acetic anhydride, and dissolved catalyst components.
(Kline ,r 6.)
2. Kline teaches the vapor fraction contains up to 40 weight
percent acetic anhydride, 15 to 50 weight percent acetic acid, 30 to 55
weight percent low boiling components, and 1 to 6 weight percent by-
products. (Kline ,r 15.)
3. Kline teaches that catalyst components typically include a
Group VIII metal ( e.g., rhodium) or metal compound and one or more
promoters. (Kline ,r,r 10-11.)
4. Kline teaches that the promoter component of the catalyst
system may be (1) an inorganic iodide salt such as lithium iodide or (2) an
inorganic compound or an organophosphorus or organonitrogen compound
which forms an iodide salt in the carbonylation zone. Preferred iodide salt
promoters include lithium and sodium iodide. (Kline ,r 12.)
5. Kline teaches that:
[t]he amount of the iodide compound promoter present in the
carbonylation zone can be varied substantially depending on a
variety of factors, especially on the particular promoter used.
For example, the concentration of lithium iodide in the reaction
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Application 14/773,399
mixture may range from 175 to 5000 ppm Li, preferably 1500
to 3700 ppm Li.
(Kline ,r 14.)
6. Kline includes an example that utilizes "the separation system
shown in Figure 3 and a liquid carbonylation product effluent obtained from
a reaction zone similar to the production system described in US 5,922,911."
(Kline ,r 22.)
7. The example of Kline teaches removing a vapor stream from
evaporator 20 via conduit 22, wherein the vapor stream contains 25 weight
percent acetic acid and 12 weight percent acetic anhydride. (See Kline ,r 23,
Table.)
8. In the example, Kline teaches removing a liquid reaction stream
from carbonylation zone 10 containing acetic anhydride, acetic acid, methyl
acetate, methyl iodide, and a mixture of catalyst and by-products. (See Kline
,r 23, Table.)
9. Kline states that "[a]ccompanying Figure 3 is a process flow
diagram depicting a variation of the processes represented by Figures 1 and
2," wherein the process includes steps of removing "liquid residue[s]
comprising "acetic acid, optionally acetic anhydride and catalyst or catalyst
components." (Kline ,r 20.)
Analysis
Anticipation over Kline
The Examiner rejected all of Appellant's pending claims under 35
U.S.C. § 102(a)(l) over Kline. (See Ans. 2-8.) According to the Examiner,
Kline discloses process steps (a}-(c) of claim 15. (See Ans. 3--4; FF 1.) The
Examiner also finds that Kline discloses catalyst components include a
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promoter, preferably a Group IA salt, such as lithium iodide. (See Ans. 6, 9-
10; FFs 3, 4.) The Examiner finds further that Kline discloses amounts of
lithium iodide in the carbonylation zone "may range from 17 5 to 5000 ppm
Li." (See Ans. 6, 10; FF 5.)
We agree with the Examiner that Kline teaches that "[t]he vapor
fraction preferably comprises up to 40% by weight acetic anhydride [ and] 15
to 50% by weight acetic acid." (See Ans. 7; see FF 2.) More specifically, as
the Examiner finds, Kline teaches a vapor fraction containing a ratio of
acetic acid to acetic anhydride of 2 .1, thus satisfying the claimed ratio of
greater than or equal to 1. (See Ans. 10; see FF 7.) We further agree with
the Examiner that the example in Kline combines the claimed features by
referring to the separation system of Figure 3, which is referenced by the
preceding paragraphs to include a liquid residue containing catalyst
components. (See Ans. 9, 11; see FFs 6-9.)
Appellant argues that the Examiner picks and chooses various
disclosures from Kline and therefore does not demonstrate anticipation.
(Reply Br. 3, citing Net Moneyin, Inc., v. Verisign, Inc., 545 F.3d 1359,
1370 (Fed. Cir. 2008) and In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
According to Appellant, Kline does not disclose using "a salt of a Group IA
or Group IIA metal in combination with maintaining the molar ratio of
acetic acid to acetic anhydride in the vapor fraction removed from the flash
separate zone at greater than or equal to 1." (Reply Br. 2 ( emphasis
omitted).) Appellant argues that "the Example at paragraph 0022/Table 1 is
merely a single Example" and that the more general ranges of components in
the vapor fraction result in molar ratio "of about 0.6 and higher." (See Reply
Br. 4.)
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We are not persuaded by Appellant's argument because "[i]t is well
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992).
The table in the example of Kline describes a vapor fraction from the
evaporator containing a weight ratio of acetic acid to acetic anhydride of
25: 12 or 2.1: 1. Appellant is correct that this is a weight ratio, not a molar
ratio, but considering the molecular weights of acetic acid ( 60 g/mol) and
acetic anhydride (102 g/mol), we find the molar ratio disclosed in the table is
3. 5: 1. 4 Appellant's claimed molar ratio of greater than or equal to 1
encompasses the range taught in the table. Accordingly, Kline anticipates
the claimed range. See In re Slayter, 276 F.2d 408, 411 (CCPA 1960) ("It is
well settled that a generic claim cannot be allowed to an applicant if the
prior art discloses a species falling within the claimed genus").
Appellant argues further that the Examiner is picking and choosing
lithium iodide from a broader set of promoters in the reaction conditions of
the Example, which are chosen from a broader set of molar ranges. (See
Reply Br. 4--5.) Appellant argues that "Kline sets out a long list of possible
promoters for its catalyst system," including four different types of preferred
iodide salt promoters." (Reply Br. 4). Appellant further argues "[t]he
Example of paragraph 0022/Table 1 does not describe the use of a
promoter, and so does not itself demonstrate both of these critical claim
limitations." (Id.)
We are not persuaded by Appellant's argument because "a reference
can anticipate a claim even if it does not expressly spell out all the
4 This molar ratio was presented by Appellant in the Amendment filed
December 20, 2016 at p. 11.
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limitations arranged or combined as in the claim, if a person of skill in the
art, reading the reference, would 'at once envisage' the claimed arrangement
or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
1376, 1381 (Fed. Cir. 2015). NetMoney In explains that combining distinct
parts of two separate protocols disclosed in a single reference does not
anticipate. See NetMoney In., 545 F.3d at 1371. In contrast, Kline teaches a
general process for co-producing acetic acid and acetic anhydride in the
presence of dissolved catalyst or catalyst components, including a promoter.
(See Kline FFs 1, 3, 6, 8, 9.) Kline specifically discloses preferred
promoters including lithium and sodium iodide and Kline provides specific
amounts of lithium iodide to be used as a promoter. (FFs 4 and 5.)
Appellant's own Specification cites Kline (published as WO 2007/145795)
as disclosing a "catalyst system" including "a promoter component which
may be an (1) inorganic salt, such as lithium iodide." (Spec. 1 :31-2:2.) As
to the molar ratio, Kline provides an example of a species within a broader
genus of reaction conditions. (FFs 2, 7.)
Because all of the limitations in claim 15 are taught as part of the
general process of Kline, the relevant issue for anticipation is whether the
number of categories and components disclosed is so large the combination
of lithium iodide and a molar ratio of acetic acid to acetic anhydride greater
than or equal to 1 "would not be immediately apparent to one of ordinary
skill in the art." Kennametal, 780 F.3d at 1382. Given the Examiner's
finding that Kline consistently describes using catalyst components, e.g., a
catalyst and a promoter, of which lithium iodide is preferred, and provides
component amounts within the range recited by claim 15, we agree that one
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of ordinary skill in the art would "at once envisage" the claimed invention.
(Id.)
After consideration of Appellant's arguments, we are not persuaded
that the Examiner erred in finding the prior art anticipates Appellant's
pending claims.
New Ground of Rejection
Obviousness over Kline
We here enter a new ground of rejection for independent claim 15
under 35 U.S.C. § 103 as being rendered obvious by Kline. 5
As we explained above, Kline teaches steps (a}-(c) of the claimed
process, including the co-production of acetic acid and acetic anhydride
using a rhodium catalyst and a lithium iodide promoter. (See FFs 1, 3-5.)
Moreover, Kline generally teaches maintaining a vapor fraction containing
15 to 50 weight percent acetic acid and up to 40 weight percent acetic
anhydride. (See FFs 1, 2.) Kline provides a specific example of a vapor
fraction containing a molar ratio of acetic acid to acetic anhydride of greater
than or equal to 1. (See FF 7.) Therefore, we find Kline teaches the general
conditions of claim 15. See In re Aller, 220 F.2d 454,456 (CCPA 1955)
("[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation").
Although the Examiner does not present an obviousness rejection,
Appellant argues that "[t]he claimed process allows increased production of
5 "There is nothing inconsistent in concunent rejections for obviousness
under 35 lJ.S.C. 103 and for anticipation under 35 U.S.C. 102." In re
Bes/, 562 F.2d 1252, 1255 nA (CCP A 1977).
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acetic anhydride without requiring a corresponding increase in the
concentration of acetic anhydride in the reaction zone." (App. Br. 11.)
However, "the discovery of an optimum value of a variable in a
known process is normally obvious" except where (1) the results of
optimizing a variable were unexpectedly good or (2) the parameter
optimized was not recognized in the prior art as one that would affect the
results. In re Antonie, 559 F .2d 618, 620 (CCP A 1977). Here, we find
Kline teaches the reaction rate for preparing acetic anhydride from a reaction
mixture of methyl acetate, methyl iodide, carbon monoxide, and acetic acid
"can be increased if the catalyst system includes a promoter such as ...
lithium iodide." (Kline ,r 1.) Therefore, we find that the prior art recognizes
using a Group IA metal salt promoter would allow for the increased
production of acetic anhydride.
Appellant argues that "Kline relates to solving a different technical
problem and suggests a different solution." (App. Br. 11.)
However, "[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. What matters is the objective reach of the claim."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007). Claim 15 recites a
liquid reaction composition comprising a Group IA metal salt and vapor
fraction maintained at a molar ratio of acetic acid to acetic anhydride at
greater than or equal to 1. As discussed above, both of these parameters are
taught by Kline. See In re Arkley, 455 F.2d at 587 ("picking and choosing
may be entirely proper in the making of a 103, obviousness rejection"). "If a
person of ordinary skill can implement a predictable variation [ of a known
work],§ 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc., 550
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U.S. 398,417 (2007). Therefore, we reject independent claim 15 under 35
U.S.C. § 103 as being obvious over Kline.
We have entered a new ground of rejection for only the independent
claim and leave it to the Examiner to evaluate the obviousness of the other
claims, in view of Kline alone or with other references.
Conclusion
Upon consideration of the record and the reasons given, the rejection
of claims 15-30 under 35 U.S.C. § 102(a)(l) over Kline is sustained.
Therefore, we affirm the decision of the Examiner.
We have also entered a new ground of rejection for independent claim
15 pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides that "[a]
new ground of rejection ... shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6.
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AFFIRMED
37 C.F.R. § 4I.50(b)
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