Ex Parte Routier et al

Patent Trials and Appeals Board

Sep 18, 2013

12097267 - (D) (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/097,267 06/13/2008 Arold Marcel Albert Routier TS1418US 9460
23632 7590 09/18/2013
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
ZIMMER, ANTHONY J
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
09/18/2013 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 AROLD M.A. ROUTIER, FRANCISCUS J.M. SCHRAUWEN,
and GERARDUS P. NIESEN
____________

Appeal 2012-008061
Application 12/097,267
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-008061
Application 12/097,267

2

STATEMENT OF THE CASE
Appellants1 seek review, under 35 U.S.C. § 134(a), of the final
rejections of claims 1-8. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ invention relates to a catalyst body comprising a Fischer-
Tropsch catalyst or catalyst precursor with a porous body, which is suitable
for use in a slurry reactor. App. Br. 2.
Claim 1 is representative of the subject matter on appeal, and recites:
1. A catalyst body comprising a Fischer-Tropsch catalyst or
catalyst precursor and a porous body suitable for use in a slurry
reactor, said porous body being between 1-50 mm in size, the
catalyst body having an internal voidage between 50-95%.

REJECTIONS
The following grounds of rejection are before us on appeal:2
Claims 1-8 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Applicants regard as the invention.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arcuri (US 6,262,131 B1, issued July 17, 2001).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Arcuri in view of Calis (US 2005/0228059 A1, published Oct. 13, 2005).

1 The real party in interest is listed as Shell Oil Company. App. Br. 2.
2 The objection to claim 6 under 37 C.F.R. § 1.75(c) as being of improper
dependent form has been withdrawn by the Examiner. Ans. 4.
Appeal 2012-008061
Application 12/097,267

3

Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Arcuri in view of Hoek (US 2005/0130837 A1, published June 16, 2005).

ISSUES
Did the Examiner reversibly err in concluding that the recitation that
the porous body is “suitable for use in a slurry reactor” renders claims 1-8
indefinite?
Did the Examiner reversibly err in concluding that the teachings in
Arcuri would have rendered claim 1 obvious?

ANALYSIS
The rejection of claims 1-8 as indefinite
The Examiner’s findings and conclusions regarding the 35 U.S.C.
§ 112 rejection are located on pages 5 and 7-8 of the Answer. The Examiner
concludes that it is not possible to ascertain the scope of the claims because
“suitable for use in a slurry reactor” is not defined in the claims or the
Specification. Ans. 5,7. According to the Examiner, the Specification “does
not attribute any specific properties to the phrase or make it clear what
properties would and what properties would not render a catalyst suitable for
use in a slurry reactor”. Id. at 8.
Appellants argue that catalysts that are suitable for use in a slurry
reactor are described in the Specification. See Spec. 5:4-6:5 and 9:5-13.
Appellants also assert that, “in view of those teachings, it is within the skill
of one of ordinary skill in the art to determine the characteristics of a
suitable catalyst.” App. Br. 3. The Examiner responds that the parts of the
Specification cited by Appellants “[a]t best . . . describe preferred
Appeal 2012-008061
Application 12/097,267

4

properties” and that “it is unclear whether or not the preferred properties
would be required for the catalyst to be suitable for use in a slurry reactor.”
Ans. 8.
The Examiner has not established that the phrase “suitable for use in a
slurry reactor” is indefinite from the perspective of one of ordinary skill in
the art. As an initial matter, there is no support in the Specification for the
Examiner’s assertion that the catalyst properties disclosed on pages 5-6 and
9 of the Specification are “preferred properties.” Spec. 5:4-6:5 and 9:5-13.
Furthermore, the Examiner has not provided any technical reasoning or
evidence that shows that a person having ordinary skill in the art would not
understand what makes a catalyst “suitable for use in a slurry reactor.” The
Examiner’s unsupported assertions are not sufficient to make a prima facie
case of indefiniteness under 35 U.S.C. § 112, second paragraph. Because
the Examiner failed to establish indefiniteness of the term “suitable for use
in a slurry reactor,” we reverse the Examiner’s rejection based on § 112,
second paragraph.

The rejections of claims 1-4 and 6-8 as unpatentable over Arcuri, the
rejection of claim 5 as unpatentable over Arcuri and Calis, and the rejection
of claim 8 as unpatentable over Arcuri and Hoek
The Examiner’s findings and conclusions regarding Arcuri are located
on pages 5-7 and 9-10 of the Answer. The Examiner finds that Arcuri
teaches a Fischer-Tropsch catalyst comprising a catalyst metal disposed on a
porous catalyst body, where “[s]aid catalyst body has a void ratio greater
than 0.6 . . . and a size of from 50 microns (0.05 mm) to more than a few
inches (2 inches = 50.8 mm) with examples in this range.” Ans. 5. The
Appeal 2012-008061
Application 12/097,267

5

Examiner concludes that the catalyst disclosed in Arcuri “has significantly
overlapping ranges” with the claimed catalyst, rendering the claims prima
facie obvious. Id. The Examiner also finds that due to the overlapping
ranges, it would have been obvious that the Arcuri catalysts would also be
suitable for use in a slurry reactor. Id. at 5-6. Appellants respond that
“while there may be some overlap in the ranges of the parameters of the
supports, the resulting catalyst bodies have entirely different characteristics”
and that the “selection of the proper material, shape, size and internal
voidage determine the final characteristics of the catalyst and determine their
suitable uses.” App. Br. 3-4.
Appellants further emphasize that Arcuri discloses stationary Fischer-
Tropsch catalysts. Id. at 3. Appellants argue that the claimed invention is
limited to catalyst bodies that are suitable for use in a slurry reactor. Id.
Appellants further state that “[a] person of skill in the art seeking to develop
a catalyst for use in a slurry reactor would not follow the teachings of Arcuri
that are directed to a stationary catalyst.” App. Br. 4. The Examiner
responds that there is no indication that the catalysts taught in Arcuri are not
suitable for use in slurry reactors, despite its preference for stationary use.
Ans. 9.
Appellants’ arguments are not convincing. As found by the
Examiner, Arcuri discloses a porous catalyst body with a size of from 50
microns (0.05 mm) to more than a few inches (2 inches=50.88 mm) and an
internal voidage of greater than 60%. Id. at 5. Appellants’ claims recite a
porous body “being between 1-50 mm in size” and “having an internal
voidage between 50-95%.” Claim 1. We note that “[a] prima facie case of
obviousness typically exists when the ranges of a claimed composition
Appeal 2012-008061
Application 12/097,267

6

overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003). Even a slight overlap in range establishes a prima
facie case of obviousness. See, e.g., In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (acknowledging that a claimed invention was rendered
prima facie obvious by a prior art reference that disclosed a range (50-100
Angstroms) that overlapped the claimed range (100-600 Angstrom)); In re
Woodruff, 919 F.2d 1575, 1578 (CCPA 1990) (a claimed invention was
rendered obvious by a prior reference that disclosed a range (“about 1-5%”
carbon monoxide) that abutted the claimed range (“more than 5% to about
25%” carbon monoxide)).
We are not persuaded by Appellants’ unsupported contention that “[a]
person of skill in the art seeking to develop a catalyst for use in a slurry
reactor would not follow the teachings of Arcuri that are directed to a
stationary catalyst.” App. Br. 4. Moreover, although Appellants assert that
“there may be some overlap in ranges of the parameters of the supports, the
resulting catalyst bodies have entirely different characteristics”, they do not
point to any evidence supporting that assertion or explain the significance of
these different characteristics, nor have they provided any evidence that the
catalyst bodies disclosed in Arcuri are not suitable for use in a slurry reactor.
Id. at 3. Contrary to Appellants’ arguments, Arcuri does indicate that the
catalysts described therein can be used in slurry reactors:
The structured catalyst stands in contrast to what is possible for
slurry catalyst systems. In the slurry case, the loading is limited
by the slurry viscosity, which becomes very high for high
loadings of small catalyst particle sizes, typically less than 25
volume percent for 50 mm particles and more importantly less
than 20 vol. % for 10 mm particles. When the concentration in
the slurry is increased, you reach a point where the viscosity
Appeal 2012-008061
Application 12/097,267

7

becomes very high and gas bubble size increases to the point
where mass transfer limitations occurs [sic]. In contrast, the
structured catalyst can be loaded into a reactor as full as
physically possible and viscosity of the liquid matrix will not
change—it is still liquid with a fairly low viscosity.

Arcuri, col. 9, ll. 39-51. Appellants do not argue, and Arcuri does not
teach, that the limited loading that accompanies the use of 10 mm and
50 mm size particles makes catalyst particles of that size unsuitable
for use in a slurry reactor. Thus, as Appellants have not pointed out
how the Examiner’s findings are in error, we affirm the rejection of
claims 1-4 and 6-8 as being unpatentable over Arcuri.
Because Appellants are relying on the same arguments to overcome
the rejection of claim 5 as being unpatentable over Arcuri in view of Calis
(App. Br. 4) and claim 8 as being unpatentable over Arcuri in view of Hoek
(id.), we also affirm the rejections of claim 5 and claim 8.
DECISION
We REVERSE the rejections of claims 1-8 under 35 U.S.C. § 112,
second paragraph, as indefinite;
We AFFIRM the rejections of claims 1-4 and 6-8 under 35 U.S.C.
§ 103(a) as unpatentable over Arcuri.
We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Arcuri in view of Calis.
We AFFIRM the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Arcuri in view of Hoek.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
Appeal 2012-008061
Application 12/097,267

8

AFFIRMED

bar