Ex Parte Schliephake et alDownload PDFPatent Trial and Appeal BoardSep 4, 201412130116 (P.T.A.B. Sep. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VOLKER SCHLIEPHAKE, KLAUS BOTT, ROLF-DIETER BECHER, KLAUS JOACHIM MULLER-ENGEL, JOCHEN PETZOLDT, ULRICH CREMER, and ANDREAS RAICHLE ____________ Appeal1 2012-010269 Application2 12/130,116 Technology Center 1600 ____________ Before DONALD E. ADAMS, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to recharging reaction tubes in a tube bundle reactor wherein the film deposited in the reaction tube it cleaned away with a brush. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm but designate the affirmance as a new ground of rejection. 1 The record includes a transcript of the oral hearing held on Aug. 5, 2014. 2 Appellants identify BASF SE, Ludwigshafen, Germany as the Real Party in Interest. (App. Br. 1.) Appeal 2012-010269 Application 12/130,116 2 STATEMENT OF THE CASE The Specification recognizes that sandblasting “is a very effective method [of cleaning tubes] which is capable of removing especially persistent deposit on the inner wall of the reaction tubes” (Spec. 6, ll. 19-21). However, the Specification also recognizes that this procedure is “comparatively costly and inconvenient (considerable amounts of sand are required, and subsequently have to be disposed of) and [also] has a comparatively abrasive effect.” (Spec. 6, ll. 13-19). Claims 1-5 and 8-12 are on appeal, and are reproduced in the Claims Appendix of the Appeal Brief. The Examiner has rejected claims 1-5 and 8-12 under 35 U.S.C. § 103(a) over Yada3 in view of Van Der Schee.4 The issue is: Does the evidence of record support the Examiner’s conclusion that using a brush to clean tubes as recited in the claim 1 is obvious? Findings of Fact FF 1. Yada disclosed using a multi-tube heat exchange reactor for an acrolein to acrylic acid conversion using a molybdenum (MO) catalyst (Yada col. 23, ll. 30-68; see also Ans. 7). Yada disclosed “removing and re- packing the catalyst packed, for a reaction tube having a pressure loss higher than the average pressure loss of the reaction tubes.” (Yada, Abstract; see also Ans. 5-8.) 3 Yada et al., US 7,528,281 B2, issued May 5, 2009. 4 Van der Schee et al., WO 98/02239, published Jan. 1998. Appeal 2012-010269 Application 12/130,116 3 FF 2. Van der Schee disclosed recharging of the catalyst in an acrylic acid tube reactor (Van der Schee 1: ll. 14-15.). “From time to time, the particles in these tubes must be replaced or removed, whereby the tubes thus need to be emptied.” (Id. at ll. 16-18; see also Ans. 8.) FF 3. Van der Schee removes the catalyst from the reaction tube using at least two tubes. A “first pipe [is attached] to one end of each tube to be emptied and by introducing a second, inner pipe in the tube through the first pipe, whereby gas under pressure is injected in the tube via one of the pipes in order to detach the particles, and whereby the detached particles are extracted via another pipe.” (Van der Schee 1: l. 30 to 2: l. 2.) FF 4. Van der Schee disclosed “[a]fter the emptying, the end of the tubes situated opposite the end onto which the pipe is connected can be cleared, and these tubes can be further cleaned by pushing brushes through them.” (Van der Schee 2: ll. 30-33.) “[T]he bottom end of the tube 1 to be cleaned is opened, after which one or several special scrubbing brushes are pushed through said tube once or several times by means of compressed air.” (Van der Schee 6: ll. 18-21; see also Ans.8.) Van der Schee also recognizes that “the additional cleaning in the above-described manner is advantageous, rapid and safe, since the conventional blasting of the tubes is time- consuming and expensive and can moreover damage the tubes.” (Van der Schee 6: l. 34 to 7: l. 4.) Principle of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As expressly Appeal 2012-010269 Application 12/130,116 4 recognized in KSR, any art recognized need or problem can provide a reason for combining claim elements. Id. Analysis Appellants contend that “Yada does not teach brushing the tubes to remove the molybdenum oxide nor the type of brush used.” (App. Br. 5-6). Appellants contend that the combination suggested by the Examiner is based on “improper hindsight” because the link between the references is based on a “clear misunderstanding of the salient teachings in the cited art” (id. at 7-8). According to Appellants, “Van der Schee only teaches to apply a brushing ‘after’ the tube inside has been blasted by Van der Schee’s very specific emptying method. . . . [T]his blasting process is so powerful as to remove corroded layers.” (id. at 8.) Indeed, Appellants contend that “[r]emoval of dust particles formed during removal of a layer by blasting as in Van der Schee is not removing a layer (or solid film as recited in Claim 1) itself.” (id. at 9.) Claim interpretation is at the heart of patent examination because a claim cannot be compared to the prior art before its scope is properly ascertained. In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1146 (Fed. Cir. 2012)). In this case, the issue is directed to the limitation of claim 1 reciting “a solid film (solid deposit) which comprises molybdenum oxide and/or molybdenum oxide hydrate and has been deposited on their inner wall [of a reaction tube] is brushed away at least partly with the aid of a brush.” The Specification explains that after the withdrawal of the catalyst from the tube and before the insertion of new catalyst, the oxide and hydrate deposits are brushed away from tube with the aid of a brush (Spec. 7: ll. 20-27). The Appeal 2012-010269 Application 12/130,116 5 Specification also provides that “[t]hese films, though, have an only comparatively restricted adhesion capacity on the reaction tube inner surface and can therefore be at least partly or completely removed (brushed away) by conventional brushing in an entirely satisfactory manner” (Spec. 8: ll. 2-4). Thus, the Specification indicates that the removal of the film in a reaction tube requires only conventional brushing. Furthermore, as conceded during the oral hearing,5 there nothing in the claim language that excludes other film removal steps. Specifically, the claim provides that the film “deposited on their inner wall is brushed away at least partly with the aid of a brush.” Because the brushing step only needs to remove part of the film deposit, this indicates that other processes can also be used to remove the film. Here, neither the claim nor the Specification limit how much of the film must be removed with the aid of a brush. Accordingly, we interpret that any brushing applied to a used or partially cleaned reaction tube will meet the claim limitation of “brushed away at least partly with the aid of a brush.” While we are fully aware that hindsight bias often plagues determinations of obviousness. Graham v. John Deere Co., 383 U.S. 1, 36 (1966). In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR 550 U.S. at 417. The Examiner finds, and Appellants do not rebut, that Yada discloses the use of a Mo-catalyst in a tube reactor for use in an acrolein to acrylic acid 5 “[T]he claim certainly doesn’t exclude an additional either previous or subsequent claimed step.” (Hearing Transcript 5.) Appeal 2012-010269 Application 12/130,116 6 conversion (FF1; see also Ans. 6-7; Hearing Transcript 2-3). Van Der Schee also discloses reaction tubes used in acrylic acid reactions (Van der Schee 1: ll. 14-15). Here, Yada not only teaches an acrolein to acrylic acid conversion, the reference also teaches the re-packing of catalyst in the reactor tubes once the tubes experience pressure loss (FF 2; see also Ans. 9- 10). The Examiner acknowledges that Yada does not disclose a particular cleaning step in between the re-packing of the catalyst (Ans. 7-8). The Examiner relies on Van Der Schee for teaching “the method for emptying the tubes of a tube reactor filled with catalyst particles when there is a need for removing those particles in the tubes” (Ans. 8; see also FF 2 & 3). Van Der Schee discloses that after the removing of the used catalyst from the tube using a combination of air pressure and vacuum, the “tubes can be further cleaned by pushing brushes through them” (FF 4). Simply put, Van Der Schee has three steps in the tube cleaning process the first is the removal of used catalyst using the air pressure pipe and vacuum, the second is the cleaning step with the brush and the third step is the removal of any residual dust from the tube using air pressure. Thus, Van Der Schee recognizes that the removal of used catalyst using the combination of air pressure and vacuum may not be sufficient to fully clean the tubes. We find no error with the Examiner’s reliance on the tube cleaning methods as disclosed in Yada and Van Der Schee. Appellants have not explained how the use of a brush over a surface would not achieve the predictable function for cleaning, especially since according to the claims only some of the film needs to be removed by the aid of a brush. Appellants contend that “[d]ust is not the same as a solid film and thus brushing dust as in Van Der Schee has nothing to do with removing a solid Appeal 2012-010269 Application 12/130,116 7 film in the manner that is claimed” (Reply Br. 3). We are not persuaded by Appellants’ contention that the brushing step is used to remove residual dust left over from the blasting and vacuuming step because Van Der Schee specifically states that “one or several special scrubbing brushes are pushed through said tube once or several times by means of compressed air,” thus indicating that the scrubbing brushes play a role along with the compressed air in cleaning the tubes (FF4). Furthermore, Van der Schee recognizes that their cleaning method “is advantageous, rapid and safe, since the conventional blasting of the tubes is time-consuming and expensive and can moreover damage the tubes” (Van der Schee 7: ll. 1-5). Although we recognize that the Examiner has indicated that Van der Schee uses the “compressed air” or “brushing” in the alternative, we do not agree with the Appellants position that this amounts to a reversible error (Reply Br. 3). As discussed above, we find that the claims do not exclude other steps, such as air blasting and vacuuming. As such, we agree with the Examiner’s position that the addition of a brushing step to clean the tubes and thereby remove “at least partly with the aid of a brush” any residual film deposit in the tubes of Van der Schee’s after the bulk removal of the catalyst would be obvious. We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 1, and Appellants have not provided sufficient rebuttal evidence that on balance outweighs the evidence supporting the prima facie case. As Appellants do not argue the claims separately, claims 2-5 and 8-12 fall with claim 1. 37 C.F.R. § 41.37 (c)(1). However, because our reasoning differs from that of the Examiner, in that we recognize that Van der Schee uses a combination of “compressed air and Appeal 2012-010269 Application 12/130,116 8 vacuuming” in conjunction with “brushes,” we designate our affirmance as a new ground of rejection. SUMMARY We affirm the rejection of claims 1-5 and 8-12 under 35 U.S.C. § 103(a) over Yada in view of Van Der Schee. Because our reasoning with regard to claim 1 differs slightly from that of the Examiner, we designate our affirmance of the rejection of this claim as a new ground of rejection under 37 CFR § 41.50(b) in order to give Appellants a fair opportunity to respond. This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 CFR § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . Appeal 2012-010269 Application 12/130,116 9 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . AFFIRMED lp Copy with citationCopy as parenthetical citation