Ex Parte Miller et al

Patent Trial and Appeal Board

Sep 5, 2013

10794932 (P.T.A.B. Sep. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFREY T. MILLER, GEORGE A. HUFF, and
BRIAN J. HENLEY
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Appeal 2012-007693
Application 10/794,932
Technology Center 1700
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Before CHUNG K. PAK, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 9, 15
through 19, 24, 31, 36, and 37. Claims 3 through 8, 13, 14, 20 through 23,
25 through 30, 32 through 35, and 38 through 63, the other claims pending
in the above-identified application, stand withdrawn from consideration by

1 Appellants identify the real party in interest as BP Corporation North
America, Inc. (See Appeal Brief filed October 26, 2011 (“App. Br.”) at 1.)
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the Examiner as being directed to a non-elected invention. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The subject matter on appeal, like the subject matter previously
considered in the decision dated January 2, 2013 on Appeal No. 2011-
005588 (Application 11/215,272) (hereinafter referred to as the “earlier
Decision”), is directed to a method of catalytically converting C9 aromatics
to xylene isomers. (Compare claim 1 on appeal with claim 1 considered at
pages 2-3 of the earlier Decision.) The appealed subject matter, unlike the
subject matter considered in the earlier Decision, limits the type of non-
sulfided catalysts employed and requires separating xylene isomers from the
resulting stream from the catalytic conversion for the purpose of recycling
the xylene isomer-lean stream to the catalytic conversion reaction for
producing xylene isomers. (Compare claim 1 on appeal with claim 1
considered at pages 2-3 of the earlier Decision.)
Details of the appealed subject matter are recited in representative
claim 1 reproduced below:
1. A method of making xylene isomers, the method comprising:
(a) contacting a C9 aromatics-comprising feed with a catalyst
comprising a non-sulfided, large-pore mordenite impregnated with a Group
VIB metal oxide under conditions suitable for converting the feed to an
intermediate product stream comprising xylene isomers;
(b) separating at least a portion of the xylene isomers from the
intermediate product stream; and,
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(c) recycling to the feed of step (a) the xylene isomers-lean
intermediate product stream obtained in step (b).
(See App. Br. 7 (Claims App’x) (Emphasis added).)
Appellants seek review of the Examiner’s rejection of claims 1, 2, 9,
15 through 19, 24, 31, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable
over U.S. Patent 4,172,813 issued to Feinstein et al. on October 30, 1979
(hereinafter referred to as “Feinstein”). (See App. Br. 2.)

DISCUSSION
Appellants argue claims 1, 2, 9, 15 through 19, 24, 31, 36, and 37
together. (See App. Br. 3-6.) Therefore, we limit our discussion to claim 1,
which we select as representative. Claims 2, 9, 15 through 19, 24, 31, 36,
and 37 stand or fall together with claim 1. (See 37 C.F.R.
§ 41.37(c)(1)(vii).)
Appellants do not dispute the Examiner finding that
Feinstein discloses a process of conversion a C9 feed into
a product containing xylenes[, inclusive of xylene isomers,
under suitable conditions] in the presence of a catalyst
containing Mordenite modified [(impregnated)] with 1 to 20
weight percent of molybdenum [(a Group VIB metal oxide)].
The product is separated so that [a] xylene containing stream
and xylene-lean streams [(the xylene isomers-lean intermediate
product stream from the conversion reaction)] are recovered.
Then, the xylene-lean stream including C9, namely
trimethylbenzenes, is recycled to the reaction zone. [(Compare
Ans. 4 with App. Br. 3-6; see also Feinstein, the abstract; col. 4,
l. 50 to col. 5, l.11, col. 6, ll. 5-15, col. 7, ll. 29-40, col. 8, ll. 10-
55, col. 9, ll. 38-52, and the sole figure).]
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Rather, Appellants only contend that Feinstein teaches employing a sulfided
catalyst, rather than a non-sulfided catalyst, in converting its C9 aromatic
containing feed to a product containing xylene isomers. (See App. Br. 3-6.)
Thus, the dispositive question is:
Did the Examiner reversibly err in finding that Feinstein teaches or
would have suggested a method “comprising…contacting a C9 aromatics-
comprising feed with a catalyst comprising non-sulfided, large pore
mordenite impregnated with a Group VI B metal oxide under conditions
suitable for converting the feed to an intermediate product comprising
xylene isomers” as required by claim 1 on appeal? On this record, we
answer this question in the negative.
As correctly found by the Examiner, Feinstein illustrates contacting a
feed containing C9 aromatics and disulfide with a non-sulfided catalyst
comprising a large pore mordenite impregnated with a Group VI B metal
oxide under conditions suitable for converting the feed to an intermediate
product comprising xylene isomers as required by claim 1. (See the Figure
in conjunction with col. 7, ll. 29-40 and col. 8, ll. 1-26.) Notwithstanding
Appellants’ arguments to the contrary at page 4 of the appeal Brief , column
4, lines 30-40, of Feinstein does not negate, but supports, the Examiner’s
finding that the catalyst taught by Feinstein need not be sulfided prior to
contacting the feed containing C9 aromatics if disulfide is mixed with the
feed stream entering the reaction zone. Claim 1, by virtue of using the
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transitional phrase “comprising” in the context of its feed stream and
method, does not exclude the presence of disulfide in the feed stream. In re
Baxter, 656 F.2d 679, 686-87 (CCPA 1981) (When a claim employs the
transitional term "comprising," it is interpreted as permitting the presence of
additional ingredients and/or steps, which are not recited.)
Moreover, as also correctly found by the Examiner, Feinstein teaches
using a catalyst in the form of Group VIb metal sulfides, oxides or mixtures
thereof on a support comprising H-mordenite in its
hydrodealkylation/transalkylation of alkylaromatics. (See col. 7, ll. 45-67.)
This disclosure of Feinstein is consistent with the language of Feinstein’s
claim 1 discussed by the Examiner at page 6 of the Answer. (See col. 12, ll.
30-45, together with col. 7, ll. 45-67.)
It follows that the Examiner did not reversibly err in finding that
Feinstein teaches or would have suggested a method “comprising …
contacting a C9 aromatics-comprising feed with a catalyst comprising non-
sulfided, large pore mordenite impregnated with a Group VI B metal oxide
under conditions suitable for converting the feed to an intermediate product
comprising xylene isomers” as required by claim 1 on appeal. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we uphold the Examiner’s rejection of claims 1, 2, 9, 15
through 19, 24, 31, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of Feinstein.

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SUMMARY
In view of the foregoing, the decision of the Examiner rejecting the
claims on appeal under 35 U.S.C. § 103(a) 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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