Ex Parte Naeemi et al

Patent Trial and Appeal Board

Nov 28, 2016

12610322 (P.T.A.B. Nov. 28, 2016)

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.
12/610,322 11/01/2009 Esmaeel Naeemi ASEM-10 1194
34395 7590 11/30/2016
OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
EXAMINER
SLIFKA, COLIN W
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESMAEEL NAEEMI, MANGESH BORE,
DAVID G. O'CONNER, and ROBERT NELSON
Appeal 2015-006286
Application 12/610,3221
Technology Center 1700
Before: MARKNAGUMO, CHRISTOPHER C. KENNEDY, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
12—15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Asemblon, Inc. Appeal Br.
1.
2 In our Decision below we refer to the Specification filed November 1,
2009 (as amended June 19, 2013) (Spec.), the Final Office Action mailed
February 12, 2014 (Final Act.), the Appeal Brief filed January 21, 2015
(Appeal Br.), the Examiner’s Answer mailed April 2, 2015 (Ans.), and the
Reply Brief filed June 8, 2015 (Reply Br.).
Appeal 2015-006286
Application 12/610,322
STATEMENT OF CASE
The claims are directed to a process for recovery of usable hydrogen
from a dehydrogenation reaction. Spec. 1. Claim 12, reproduced below, is
illustrative of the claimed subject matter:
12. A process for the delivery of hydrogen from an organic
compound capable of reversible hydrogenation/dehydrogenation
wherein the organic compound is initially in its hydrogenated
form and subsequently catalytically dehydrogenated under
dehydrogenation conditions in a reactor forming hydrogen and
byproduct dehydrogenated organic compound, comprising:
(a) introducing the organic compound capable of
reversible hydrogenation/dehydrogenation in liquid form to a
microchannel reactor incorporating a dehydrogenation catalyst;
(b) vaporizing the organic compound in a vaporizer;
(c) effecting dehydrogenation of the organic compound
(d) recovering a reaction product comprised of a
byproduct dehydrogenated organic compound and gaseous
hydrogen; and
(e) separating and recovering the reaction product
comprised of the dehydrogenated organic compound and
gaseous hydrogen into a gaseous hydrogen fraction and liquid
phase byproduct dehydrogenated organic compound.
Claims Appendix at Appeal Br. 36.
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ratner3 in view of Forquy4 and
Tonkovich.5 Final Act. 2.
3 Ratner et al., US 7,186,396 B2, issued March 6, 2007 (“Ratner”).
4 Forquy et al., US 5,166,362, issued November 24, 1992 (“Forquy”).
5 Tonkovich et al., US 6,616,909 Bl, issued September 9, 2003
(“Tonkovich”).
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Appeal 2015-006286
Application 12/610,322
B. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ratner in view of Forquy and
Tonkovich, and further in view of TeGotenhuis.6 Id. at 5.
Appellants seek our review of the Examiner’s rejections of claims 12—
15 (Rejections A and B). As will be seen, we need discuss only claim 12,
the sole independent claim, to resolve all issues on appeal.
OPINION
The Examiner rejects claim 12 as obvious in view of Ratner, Forquy
and Tonkovich. Final Act. 2. The Examiner finds that “Ratner discloses a
method for hydrogen storage and delivery (title), wherein hydrogen
production compounds, such as organothiol compounds, are reacted with a
reactive metal substrate to produce hydrogen gas (abstract).” Id. The
Examiner also finds that Ratner teaches that one exemplary embodiment of
the thiol compound is tetrahydrothiophene (THT), an unsubstituted cyclic
thioether. Id. at 3. The Examiner finds that the method of Ratner results in
hydrogen and spent compounds that can be rehydrogenated and reused for
additional hydrogen production. Id. The Examiner acknowledges that
Ratner does not teach that the organic compounds are subject to vaporization
prior to dehydrogenation but finds that Forquy teaches dehydrogenation of
THT by passing a gaseous stream over a catalyst. Id. The Examiner
reasons that it would have been obvious to the person skilled in the art to
utilize the gas feed of Forquy “as Forquy explicitly teaches that such a
reaction will effectively dehydrogenate THT.” Id. at 4. The Examiner
6 TeGrotenhuis et al., US 2003/0180216 Al, published September 25, 2003
(“TeGrotenhuis”).
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Appeal 2015-006286
Application 12/610,322
further reasons that is would have been obvious “to utilize an additional
apparatus to manipulate either the temperature and/or pressure of the THT of
Ratner, as combined with Forquy, in order to achieve the gaseous state of
said THT. Such an apparatus is considered to constitute a vaporizer.” Id.
And while neither Ratner nor Forquy “describe^ [the] detail[s] of the reactor
itself[,] Tonkovich teaches general methods and apparatus for obtaining
enhanced production rate of thermal chemical reactions (title), which utilize
microchannel reactors (abstract).” Id.
Appellants present multiple arguments in opposition to the
Examiner’s rejections, including that neither Ratner nor Forquy teach a
vaporizer and there is no teaching or suggestion “that Forquy’s gas-phase
processing and catalyst could be used in Ratner’s disclosed apparatus
[utilizing a liquid feed] . . . and no scientific reason for assuming or
proposing any way to import any teaching of Forquy into Ratner’s process
and apparatus.” Appeal Br. 17—18. Because we find these arguments
persuasive, we need not address the remainder of Appellants’ arguments.7
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In
the absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. In re
1 It is Appellants’ burden to show by a preponderance of the evidence
harmful error in the Examiner’s rejection. Here, the nature and extent of
Appellants’ ad hominem attacks nearly obscure those arguments having
technical merit. See e.g., Appeal Br. 9, 18, 19, 20, 25, 28, and 33; Ans. 5
and 6.
4
Appeal 2015-006286
Application 12/610,322
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
In this instance, we find first that the preponderance of the evidence
supports Appellants’ argument that neither Ratner nor Forquy expressly
teaches use of a vaporizer. Moreover, we find that the Examiner has not
articulated a reason why one of ordinary skill in the art would have been led
to modify the reactor of Ratner to add a vaporizer that converts Ratner’s
liquid feed into a gaseous feed, like that of Forquy. The Examiner’s
rationale that a person skilled in the art would find such modification
obvious because “Forquy explicitly teaches that such a reaction [in a gaseous
state] will effectively dehydrogenate THT” (Final Act. 4), in essence reasons
that because a gas feed works in one reactor (e.g., Forquy), it can be
substituted for a liquid feed in another reactor (e.g., Ratner). Such reasoning
falls short of providing a reason to utilize a gas feed and similarly fails to
show why the skilled artisan would have reasonably expected success in the
proposed modification of Ratner’s reactor. In re Vaeck, 947 F.2d 488, 493
(Fed. Cir. 1991) (“Both the suggestion and the reasonable expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”).
The Examiner's additional findings regarding claims 13—15 do not
address the deficiencies identified above. In view of the foregoing, we are
constrained to reverse the rejections of each of the claims.
CONCLUSION
The Examiner reversibly erred in rejecting claims 12—15 as
unpatentable over of Ratner, Forquy, and Tonkovich, and further in view of
TeGrotenhuis, as applied to claims 14 and 15.
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Appeal 2015-006286
Application 12/610,322
DECISION
For the above reasons, the Examiner’s rejection of claims 12—15 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
REVERSED
6