Ex Parte MARQUES MOTA et al

Patent Trial and Appeal Board

Feb 27, 2019

14219058 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/219,058 03/19/2014 Filipe Manuel MARQUES MOTA
23599 7590 03/01/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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.
PET-2934 7515
EXAMINER
LOUIE, PHILIP Y
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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 FILIPE MANUEL MARQUES MOTA,
CHRISTOPHE BOUCHY, PASCAL DUCHENE,
and JOHAN MARTENS
Appeal 2018-003 848
Application 14/219,058
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of claims
1-3 and 5-17. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify IFP Energies N ouvelles as the real party in interest
(Appeal Br. 1 ).
Appeal2018-003848
Application 14/219,058
Appellants' invention is directed to a method of making fuel from a
paraffinic feed obtained from a renewable resource, such as vegetable oils or
animal fats (Spec. 1:1-10).
Claims 1, 16, and 17 are illustrative (emphasis added):
1. A hydroisomerization process of a paraffinic feed
comprising hydrocarbons containing in the range of 9 to 25
carbon atoms, wherein said paraffinic feed has been produced
from renewable resources, and excludes paraffinic feeds
obtained by a process comprising a step for upgrading by a
Fischer-Tropsch method, said process comprising
hydroisomerizing the paraffinic feed in the presence of a
catalyst, wherein the catalyst comprises at least one
hydrodehydrogenating metal selected from the group consisting
of metals from group VIB and from group VIII of the periodic
classification of the elements, alone or as a mixture, and a
support comprising at least one Nu-10 zeolite and at least one
silica-alumina, the quantity by weight of the Nu-10 zeolite
being less than the quantity by weight of the silica-alumina,
said process operating at a temperature in the range of 150°C to
500°C, at a pressure in the range of0.1 MPa to 15 MPa, at an
hourly space velocity in the range of 0.1 to 10 h-1 and in the
presence of a total quantity of hydrogen mixed with the feed
such that the hydrogen/feed ratio is in the range of 70 to 2000
Nm3 /m3 of feed,
wherein the silica-alumina in the support for said
catalyst contains a quantity of more than 5% by weight and less
than or equal to 95% by weight of silica, and
wherein said catalyst contains a binder and contains a
total quantity ofNu-10 zeolite and silica-alumina in the range
of 1.5% to 94.5% by weight with respect to the total mass of
said catalyst, or
wherein said catalyst does not contain a binder and
contains a total quantity of Nu-10 zeolite and silica-alumina of
at least 5 0% by weight with respect to the total mass of said
catalyst.
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Application 14/219,058
16. The process as claimed in claim 1, which has an iso-C16
multi-branched product yield of 3 9%.
1 7. The process as claimed in claim 1, which has a cracking
yield of 11%.
Appeal Br. 15, 17 (Claims App.).
Appellants appeal the following rejection: 2
I. Claims 1-3 and 5-17 are rejected under 35 U.S.C. § 103 as
unpatentable over McCall et al. (US 2009/0162264 Al; published
June 25, 2009, "McCall") in view ofMarcilly et al. (US 6,198,015
B 1; issued Mar. 6, 2001, "Marcilly"), Benazzi et al. (US 7,250,106
B2; issued July 31, 2007, "Benazzi"), and further view of Krishna et
al. (US 2011/0315598 Al; published Dec. 29, 2011, "Krishna") (Final
Act. 10-22).
With the exception of claims 16 and 17, Appellants do not argue any
of the dependent claims separately (Appeal Br. 3-13; Reply Br. 1-10). We
select independent claim 1 as representative. Any claim not argued
separately will stand or fall with our analysis of the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding McCall, Marcilly,
Benazzi, and Krishna are located on pages 10-22 of the Final Action dated
March 3, 2017 and pages 16-25 of the Answer dated December 28, 2017.
2 In the Final Office Action, dated March 3, 201 7, claims 16 and 17 were
rejected as: (i) failing to comply with the written description requirement
and (ii) indefinite. The Examiner has withdrawn these rejections (Ans. 14--
15).
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Application 14/219,058
The Examiner finds that McCall discloses or suggests each step and
element of the claimed hydroisomerization process, with the exception that
McCall is silent with respect to, inter alia, a support comprising at least one
Nu-10 zeolite and at least one silica-alumina (Final Act. 10-11). The
Examiner further finds that McCall does not disclose or suggest that the
quantity by weight of the Nu- IO zeolite is less than the quantity by weight of
the silica-alumina within this support (id. at 11 ).
The Examiner, however, finds that Marcilly discloses at least one
molecular sieve, such as Nu- I 0, and a matrix, such as silica-alumina (id. at
12 (citing Marcilly 3:34--37; 5:57---60)). The Examiner further finds that
Marcilly discloses that the molecular sieve and matrix form a
mixture[,] which is considered a support .... Marcilly further
discloses that the content of molecular sieve (e.g.[,] Nu- I 0) in
the mixture (i.e.[,] molecular sieve + matrix) is generally in the
range of 0.5% to 99.9% and preferably in the range of 20% to
70%, by weight .... This indicates that the quantity by weight
of Nu-10 zeolite may be less than the quantity by weight of
silica-alumina when the molecular sieve content is less than
5 0%, and Marcilly is therefore considered to reasonably
disclose a range of Nu-10 content that overlaps the claimed
limitation of the quantity by weight of Nu-10 zeolite being less
than the quantity by weight of silica-alumina.
(Final Act. 12 (citing Marcilly 5:52-58; 6:48-59) (emphasis added).
Appellants argue that the Examiner has not established a prima facie
case of obviousness (Appeal Br. 9). In particular, Appellants argue that
Marcilly's catalytic activity stems from the molecular sieve having Nu-I 0,
but that silica-alumina is merely a matrix for shaping (id. ( citing Marcilly
3:7-9; 3:34--44; 5:59---60)). Thus, Appellants assert that Marcilly does not
teach or suggest that "[s]ilica-alumina is provided as a molecular sieve
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Application 14/219,058
component in an amount of greater than 50% or is even present as the active
phase as in the catalysts at all" (Appeal Br. 9) ( emphasis added).
Appellants' arguments are not persuasive because claim 1 does not
exclude the support from the catalyst. Rather, the claimed catalyst
comprises at least one hydrodehydrogenating metal and a support.
Appellants' Specification describes "a fixed bed catalyst ... comprising a
hydrodehydrogenating function and an amorphous support" (Spec. 8: 8-9
(emphasis added); see also id. at 8:13-15).
Having determined that claim 1 encompasses a catalyst comprising a
silica-alumina support, we note that Marcilly explicitly discloses that "the
term 'support' means the molecular sieve [having Nu-1 Oj+matrix mixture"
and that such a matrix may include "amorphous silica-aluminas" (Marcilly
5:57-58; see also id. at 3:34--37) (emphasis added).
We, therefore, agree with the Examiner that Marcilly teaches or
suggests the claimed catalyst comprising a support, which further comprises
at least one Nu-10 zeolite and at least one silica-alumina (see Ans. 22-23).
On these facts, Appellants have not identified reversible error in the
Examiner's finding that Marcilly reasonably discloses a range ofNu-10
content that overlaps the claimed limitation of the quantity by weight ofNu-
10 zeolite being less than the quantity by weight of silica-alumina (see id.).
On the other hand, Appellants argue that the Examiner's Answer
"continues to rely upon mere generic overlap" in Marcilly (Reply Br. 7).
We, however, agree with the Examiner that Marcilly's disclosure of
compositions containing components in amounts that overlap the range of
Nu- IO recited in claim 1 are sufficient to have rendered the claimed subject
matter obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
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Application 14/219,058
(holding that a prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art).
When the Examiner establishes a prima facie case of obviousness,
"[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole." In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) ( en bane). Thus, "the burden of showing unexpected results rests
on [the party] who asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). For the reasons below, Appellants have not met their burden of
showing unexpected results.
Appellants argue that the isomerization performance obtained using
Catalyst C3 provides unexpected results and, thus, rebuts any established
prima facie case of obviousness (Appeal Br. 3-5; see Spec. 29; Table 1).
There is no dispute that claims 16 and 1 7 are directed to the product yield
and cracking yield, respectively, obtained by a single Catalyst C3 having a
6% Nu- IO amount based on the weight of Nu- IO and silica-alumina (Adv.
Act. 2; see Spec. 29; Table 1 ).
The Examiner finds, however, that these results are not probative
evidence of unexpected results because: (i) they are not commensurate in
scope with the claims, (ii) there is no comparison of the claimed process to
the closest prior art, and (iii) there is an insufficient number of tests within
and outside of the claimed range to show its criticality (Adv. Act. 2).
Appellants respond by asserting that the Examiner made three
reversible errors in finding that the proffered evidence was not a proper
showing of unexpected results (Appeal Br. 5-9).
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Application 14/219,058
First, Appellants contend that because claims 16 and 17 require the
presence of the purported unexpected properties, the Examiner erred in
requiring that Appellants "provide evidence of exactly which N[ u ]-10 values
within the range defined in claim 1 result in either an iso-C[ 16] multi-
branched product yield of 39% or a cracking yield of 11 %" (id. at 6).
Appellants' argument is not persuasive.
As the Examiner determined, claim 1 encompasses catalysts
comprising Nu- IO amounts from greater than 0% to less than 50% based on
the weight ofNu-10 and silica-alumina (see Ans. 16; 22-23). Based on this
reasoned claim construction, we agree with the Examiner that claims 1, 16,
and 17 are not limited to a catalyst having a 6% Nu- IO amount based on the
weight ofNu-10 and silica-alumina. Thus, Appellants have not shown that
the results recited in claims 16 and 17 are achievable using all catalysts
having Nu-10 amounts throughout the range recited in claim 1 (Adv. Act. 2).
As the Examiner finds, it is not clear whether a catalyst having 49% Nu- I 0
would have a similar product yield and cracking yield as Catalyst C3, having
6% Nu- IO (id.). Therefore, the performance results obtained by Catalyst C3
are not commensurate in scope with the claims.
Second, Appellants argue that the Examiner erred in concluding that
because
the prior art combination discloses a similar process of
hydroisomerization of a feed comprising hydrocarbons
containing in the range of 9 to 25 carbon atoms, under
overlapping conditions, in the presence of a similar catalyst as
claimed, it follows that with the same feed, similar conditions
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and similar catalyst, the two processes would function the same
and obtain similar results, absent evidence to the contrary.
(Adv. Act. 2; see Appeal Br. 6). Appellants further argue that the
Examiner's analysis leading to the conclusion that "the resulting process
wou[l]d necessarily (inherently) result in a product having the same
properties as the claims" was "specifically overturned" in Honeywell
International, Inc. v. Mexichem Amanco Holding S.A., 865 F.3d 1348 (Fed.
Cir. 2017) (Appeal Br. 6, 7).
Appellants' arguments are not persuasive.
As set forth above, a prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art. See Peterson, 315 F.3d at 1329. Our review of Honeywell, 865
F .3d 1348 finds that overlapping ranges of a claimed composition were not
at issue in that case, nor did the Honeywell Court specifically overturn the
holding in Peterson. We, therefore, agree with the Examiner that
Honeywell's facts "are not the same as the instant case and therefore the
analysis of the decision is not precedential to the facts of the instant case"
(Ans. 20; see generally id. at 20-21 ).
Third, Appellants argue that the Examiner erred in finding that
Appellants have not tested the closest prior art embodiment (Appeal Br. 8;
citing MPEP § 716.02(e)(III) and In re Geiger, 815 F.2d 686, 689 (Fed. Cir.
1987) ). As evidence of such testing, Appellants point to the product and
cracking yields obtained using Catalyst C4 (Appeal Br. 4, 8; see Declaration
of Jean-Pierre Burzynski under 37 C.F.R. § 1.132, Table 1 '; see also
Marcilly 7 :44--45 Example 1 ).
The Examiner finds, however, that in testing Catalyst C4, Appellants
elected to show a comparison of a catalyst containing 60% Nu- I 0, which
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falls outside the claimed range (Adv. Act. 2). As set forth above, Marcilly
suggests preferable amounts of20-70% Nu-10, which overlaps the claim 1 's
limitation of Nu- IO amounts from greater than 0% to less than 50% based on
the weight ofNu-10 and silica-alumina (Final Act. 12 (citing Marcilly 5:52-
56)). Thus, the Examiner finds that Appellants did not show a comparison
ranging from 20% to less than 50% Nu-10, which falls within Marcilly's
suggested amounts and within the claimed process (Adv. Act. 2). The
Examiner, therefore, finds that "App[ ell]ant has not compared the closest
prior art" (id.).
In response, Appellants argue that "[ t ]he correct standard for
determining the closest prior art in an unexpected results analysis" is actual
testing of the closest prior art embodiment (Reply Br. 8). According to
Appellants, "the closest prior art embodiment is one that actually exists in
the prior art as opposed to a hypothetical embodiment imagined or
constructed in a rejection in view of the teachings of the prior art" (id.)
( emphasis added). Appellants assert that testing of Marcilly' s embodiment
Catalyst C4, having 60% Nu- I 0, adequately demonstrates a comparison with
the closest prior art.
We find these arguments unpersuasive of reversible error because
Appellants' argument is premised on an incorrect statement of law. Our
review of both MPEP § 716.02(e)(III) and In re Geiger, 815 F.2d at 689
finds that there is no requirement for testing the closest prior art
embodiment. Therefore, Appellants have not proffered any evidence to
show that the claimed subject matter imparts unexpected results relative to
the range disclosed in the closest prior art. See Peterson, 315 F.3d at 1330
("In general, an applicant may overcome a prima facie case of obviousness
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by establishing 'that the [ claimed] range is critical, generally by showing the
claimed range achieves unexpected results relative to the prior art range'"
(emphasis added) (quoting In re Woodruff, 919 F.2d 1575, 1577-78 (Fed.
Cir. 1990))). 3
Furthermore, it is not clear whether a catalyst having 49% Nu- I 0
would have a similar product yield and cracking yield as Catalyst C3, having
6% Nu- I 0, and Catalyst C4, having 60% Nu- IO (see Adv. Act. 2). We, thus,
agree with the Examiner that there is an insufficient number of tests within
and outside of the claimed Nu- IO range to show its criticality.
Therefore, Appellants' arguments fail to identify reversible error in
the Examiner's analysis of the proffered showing of unexpected results.
On this record, we find that the preponderance of the evidence favors
the Examiner's obviousness conclusion with regard to claims 1, 16, and 17.
Accordingly, we affirm the Examiner's§ 103 rejection of claims 1-3
and 5-17. 37 C.F.R. § 4I.37(c)(l)(iv).
3 We note the Examiner finds that because "Marcilly discloses Nu-10
amounts less than 50%, ... a closer prior art embodiment than 60% would
be a value less than 50%" (Ans. 21) ( emphasis added). Appellants
persuasively argue that that "there is no embodiment in Marcilly which
discloses this less than 50% embodiment which the Examiner's Answer
incorrectly identifies as the 'closest prior art embodiment."' (Reply Br. 6).
We, however, view the Examiner's inclusion of the term "embodiment" as
harmless error (see Ans. 21 ). As set forth above, Appellants have not
identified any persuasive authority for the proposition that only prior art
embodiments must be tested to demonstrate unexpected results from the
claimed hydroisomerization process. See In re Fritch, 972 F.2d 1260, 1264
(Fed. Cir. 1992) ("It is well settled that a prior art reference is relevant for all
that it teaches to those of ordinary skill in the art," including disclosed
ranges).
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Application 14/219,058
DECISION
The Examiner's decision 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)(l )(iv).
ORDER
AFFIRMED
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