Ex Parte RYU

Board of Patent Appeals and Interferences

Oct 17, 2002

09388056 (B.P.A.I. Oct. 17, 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for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte J. YONG RYU
____________
Appeal No. 2001-2490
Application No. 09/388,056
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and KRATZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 12 through 14, which are the only claims
remaining in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a
process for the removal of carbonyl compounds, comprising at least
aldehydes or ketones, from a hydrocarbon feedstream by contacting
the feedstream with an acidic material at a temperature high enough
to cause the reaction of the carbonyl compounds upon contact with
Appeal No. 2001-2490
Application No. 09/388,056
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the acidic material, with adsorption of at least some part of the
reaction products on the acidic material (Brief, pages 2-3).
Illustrative independent claim 12 is reproduced below:
12. A process for the removal of carbonyl compounds
from hydrocarbons comprising feeding a hydrocarbon stream
containing less than 0.1 weight percent carbonyl compounds
comprising at least aldehydes or ketones through a bed of
particulate acidic material at a temperature in the range of 100 to
400
C under conditions of pressure and residence time to result in
reaction of said carbonyl compounds to produce reaction products
and the deposition of said reaction products on said acidic
material.
The examiner has relied upon the following references as
evidence to support the rejections on appeal:
Holiday 3,453,343 July 1, 1969
Hupp et al. (Hupp) 4,117,021 Sep. 26, 1978
The claims on appeal stand rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a)
as unpatentable over Hupp (Answer, page 3). Claims 12 and 14 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Holiday
(Answer, page 4). We reverse the examiner’s rejections on appeal
essentially for the reasons stated in the Brief and Reply Brief, as
well as the reasons set forth below.
Appeal No. 2001-2490
Application No. 09/388,056
3
OPINION
A. The Rejections over Hupp
The examiner finds that Hupp discloses a process of removing
carbonyl compounds, such as ketones and aldehydes, from a
hydrocarbon mixture by contacting the mixture with a catalyst such
as clays, alumina, and silica-alumina, under conditions such as to
convert the carbonyl compounds into water (Answer, page 3). The
examiner recognizes that Hupp is “silent” with regard to two
limitations of claim 12 on appeal, namely the limitations that the
carbonyl compounds are contacted with a bed of particulate acidic
material and that the reaction products are deposited on said
acidic material (id.). However, the examiner maintains that the
catalysts of Hupp “would inherently be acidic materials” since
appellant discloses that alumina, silica-alumina and clays are
among the acidic catalysts useful in the claimed process (id.,
citing the specification, page 4, ll. 4-13). Furthermore, it is
the examiner’s position that, since Hupp is silent as to the
removal of water from the purification zone, water “would
inherently be deposited on the catalyst.” Id.
The examiner, when relying upon the theory of inherency, must
provide a basis in fact and/or technical reasoning to reasonably
support a determination that the allegedly inherent characteristic
Appeal No. 2001-2490
Application No. 09/388,056
4
necessarily flows from the teachings of the prior art. “Inherency,
however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981). On this record, we determine
that the examiner has not provided a basis in fact or technical
reasoning to support a determination of inherency.
As correctly argued by appellant (Reply Brief, pages 1-2), the
examiner has not established that there is an absolute certainty
that the catalyst of Hupp is acidic. Hupp discloses that alumina,
silica-alumina, and clays are useful as a carrier for certain
specified catalysts (col. 2, ll. 56-68). The entire “supported
metal oxide catalyst” functions as a purification agent by aiding
in the removal of the carbonyl compounds (Hupp, col. 3, ll. 1-4).
Accordingly, the examiner has not presented any convincing evidence
or reasoning to support the position that all of the catalyst
support materials taught by Hupp would have necessarily been
acidic. Appellant’s disclosure only relates to certain specific
catalysts within the genus of alumina, silica-alumina and clays
that are acidic (specification, page 4, ll. 4-13).
Again as correctly argued by appellant (Reply Brief, page 2),
the examiner has not established with certainty that the water
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produced during the purification would have been deposited on the
acidic material. As a technical matter, appellant asserts that it
would have been more likely that water produced would have boiled
away at the temperatures of the purification (id.). Contrary to
the examiner’s position that Hupp is silent as to the presence of
water in the purification zone effluent (Answer, page 3), Hupp
specifically teaches that the “product leaving the purification
reactor contains ... a small amount of water” (col. 4, ll. 7-11).
Accordingly, we determine that the examiner has not presented any
convincing evidence or reasoning to establish the inherency of
water depositing on the acidic material during the purification.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has failed to establish
a prima facie case of anticipation or obviousness in view of the
reference evidence. Therefore we reverse the rejection of claims
12-14 under 35 U.S.C. § 102(b)/35 U.S.C. § 103(a) over Hupp.
B. The Rejection over Holiday
The examiner finds that Holiday discloses a process of
removing aldehydes contained in a hydrocarbon stream by contacting
the mixture with a spent alumina-silica catalyst under conditions
where the aldehyde will be converted into water and carbon, which
carbon is deposited on the catalyst (Answer, page 4). The examiner
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recognizes that the “only difference” between the disclosure of
Holiday and the claimed process is the operating temperature,
namely Holiday operates at 50-150 °F. while the claimed operating
temperature is 100 to 400 °C. (212 to 752 °F.). Id. The examiner
states that “it is well-known that the temperature of chemical
reaction process must be selected to optimize the process.” Id.
The examiner cites several cases for the holding that “where the
general conditions of the claimed [invention] are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.” Id.
As correctly argued by appellant (Reply Brief, pages 3-4),
the cases and holding cited by the examiner are restricted to the
obviousness of finding optimum ranges within general ranges known
in the prior art. The examiner admits this from the quote above,
namely that “where the general conditions of the claimed
[invention] are disclosed in the prior art....” On this record,
the only condition disclosed by the prior art of Holiday is an
operating temperature of 50 to 150 °F. (col. 2, ll. 41-42). The
claimed operating temperature is not close to this range of Holiday
(212 to 752 °F.). Therefore the examiner has not established, by
convincing evidence or reasoning, why it would have been obvious to
Appeal No. 2001-2490
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use operating temperatures so much outside the range taught by
Holiday.
Furthermore, the examiner acknowledges that Holiday is
“silent” about the acidity of the alumina-silica catalyst but
argues that it “would inherently be an acidic material” since
appellant discloses such materials as acidic (Answer, page 5,
citing the specification, page 4, ll. 4-13). Holiday teaches
that the purification zone catalyst is a deactivated or “spent”
catalyst, i.e., a catalyst rendered inactive for the polymerization
of butene-1 or isobutene (col. 1, ll. 40-49; col. 1, l. 64-col. 2,
l. 2). The examiner states that appellant has not demonstrated by
evidence that the inactive catalyst of Holiday would not be acidic
(Answer, page 6). However, the initial burden of establishing that
the spent catalyst of Holiday would have necessarily been acidic
rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Oelrich, supra. As
discussed above, reference to appellant’s specification does not
provide sufficient evidence that all aluminas, silica-aluminas, and
clays are acidic, much less any evidence regarding the inactive or
spent catalysts of Holiday.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has failed to establish
Appeal No. 2001-2490
Application No. 09/388,056
1Since we determine that no prima facie case of obviousness
exists on this record, we need not consider appellant’s rebuttal
evidence (U.S. Patent No. 5,043,523, issued Aug. 27, 1991, cited
on page 7 of the Brief). See In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987).
8
a prima facie case of obviousness in view of the reference
evidence.1 Therefore we reverse the examiner’s rejection of claims
12 and 14 under 35 U.S.C. § 103(a) over Holiday.
C. Summary
The rejections of claims 12-14 under 35 U.S.C. § 102(b)/
§ 103(a) over Hupp are reversed. The rejection of claims 12 and 14
under 35 U.S.C. § 103(a) over Holiday is reversed.
Appeal No. 2001-2490
Application No. 09/388,056
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The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2001-2490
Application No. 09/388,056
10
KENNETH H. JOHNSON
P. O. BOX 630708
HOUSTON, TX 77263