Ex Parte Podrebarac

Board of Patent Appeals and Interferences

Jun 28, 2002

09035174 (B.P.A.I. Jun. 28, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY G. PODREBARAC
_____________
Appeal No. 2001-2151
Application No. 09/035,174
______________
ON BRIEF
_______________
Before CAROFF, GARRIS, and NAGUMO, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 1-7. Claims 8-34 stand withdrawn from
consideration by the examiner, pursuant to the provisions of
37 CFR § 1.142(b), as being drawn to non-elected inventions (see
Paper Nos. 4 and 8). Appellant’s protestations to the contrary
notwithstanding, this action by the examiner is a petitionable
matter rather than being a matter for consideration on appeal.
Accordingly, claims 8-34 are not before us for consideration.
Appeal No. 2001-2151
Application No. 09/035,174
2
Appellant has elected to prosecute the invention described
in section “A” of claim 1 as a species of the generic metathesis
process encompassed by the claim. The elected invention relates
to the production of propylene from the metathesis of 2-butene
and ethylene in a distillation column reactor containing a fixed
bed of metathesis catalyst.
Appellant acknowledges on page 4 of his brief that elected
claims 1-7 stand or fall together for purposes of this appeal.
Accordingly, we focus our attention on section “A” of claim
1 which reads as follows:
(A) the production of propylene from the metathesis of
2-butene and ethylene comprising the steps of:
(a) feeding a first stream comprising ethylene to a
distillation column reactor containing a fixed bed
of metathesis catalyst,
(b) feeding a second stream comprising 2-butene to said
distillation column reactor,
(c) concurrently in said distillation column reactor

(i) contacting said 2-butene and said ethylene
with said fixed bed metathesis catalyst so as
to react at least a portion of said ethylene
with at least a portion of said 2-butene to
produce propylene and create a reaction
mixture containing unreacted 2-butene,
unreacted ethylene and propylene product;
(ii) separating the unreacted ethylene and
propylene product from the unreacted 2-butene
by fractional distillation and
Appeal No. 2001-2151
Application No. 09/035,174
3
(iii) azeotropically removing water present in said
first and second streams
and
(d) removing the unreacted ethylene and propylene
product from said distillation column reactor as
overheads product[.]
The following references are relied upon by the examiner as
representative of the prior art:
Chauvin et al. (Chauvin) 4,795,734 Jan. 3, 1989
Slaugh 5,030,784 Jul. 9, 1991
Palmer et al. (Palmer) 5,235,102 Aug. 10, 1993
The following rejections are before us for consideration:
I. Claims 1-7 stand rejected under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
II. Claims 1-7 also stand rejected under 35 U.S.C. § 103 for
obviousness over either Slaugh or Chauvin, each taken in view of
Palmer.
Based on the record before us, we are compelled to reverse
each of the rejections at issue for the following reasons.
With regard to the rejection under 35 U.S.C. § 112, the
examiner opines that there is no antecedent basis in the claim
for “azeotropically removing water present in said first and
second streams” because, according to the examiner, appellant
does not affirmatively claim the presence of water in any of the
Appeal No. 2001-2151
Application No. 09/035,174
4
two feeds. As we construe the claim, according to the plain
meaning of its terms, there is no need for any antecedent basis
for water being present in the two recited feed streams since an
affirmative recitation of that feature is included in the
azeotropic removal step itself. In other words, the claim
requires, as a mandatory step, that water be azeotropically
removed in the distillation column reactor and that the water to
be removed is “present in said first and second streams.”
For the foregoing reason, the 35 U.S.C. § 112 rejection is
reversed.
Consistent with our holding above, we find that none of the
cited prior art references teach or suggest the azeotropic
removal of water in a metathesis distillation column reactor
which is fed by a first stream of ethylene and a second stream of
2-butene, where each stream contains water. If anything, Chauvin
(col. 3, ll. 15-20) evidences that in the prior art it was
preferable to conduct the metathesis reaction in question in the
absence of moisture by using reactant streams which have been
pre-dried.
Appeal No. 2001-2151
Application No. 09/035,174
5
Thus, whether or not it would have been prima facie obvious
to conduct the subject metathesis reaction in a distillation
column reactor, the prior art provides no motivation to do so
under conditions where water is present in the feed streams and
is azeotropically removed in the column.
For the foregoing reasons, the decision of the examiner is
reversed as to each of the rejections before us.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MARK NAGUMO )
Administrative Patent Judge )
MLC:hh
Appeal No. 2001-2151
Application No. 09/035,174
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KENNETH H. JOHNSON
P.O. BOX 630708
HOUSTON, TX 77263