Ex parte SENN et al.

Board of Patent Appeals and Interferences

Feb 28, 2000

08314471 (B.P.A.I. Feb. 28, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DWAYNE R. SENN, LYLE R. KALLENBACH
and BRENT J. BERTUS
____________
Appeal No. 1996-3423
Application No. 08/314,471
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH and LORIN,
Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
final rejection of claims 31, 32, 34, 37-39 and 46-51,
all the claims pending in the application.

There are two independent claims, 37 and 46. Claim
Appeal No. 1996-3423
Serial No. 08/314,471
2
46 distinguishes over claim 37 in, for example, limiting
the contact of the zeolite-containing catalytic cracking
catalyst with zirconium, antimony and boron compounds to
a time prior to the process for catalytically cracking a
hydrocarbon-containing oil. Claim 37 is representative:
37. In a process for catalytically cracking a
hydrocarbon-containing oil feed, which contains in excess
of about 0.01 ppm nickel and in excess of about 0.01 ppm
vanadium and has an initial boiling point of at least
about 400 F, substantially in the absence of added0
hydrogen gas, in the presence of a zeolite-containing
catalytic cracking catalyst in a catalytic cracking zone
at a temperature in the range of about 800-1200 F, wherein0
at least one zirconium compound and at least one antimony
compound are added to said oil feed to as to provide a
concentratiom of about 0.1-5,000 ppm added zirconium and
about 0.1-5,000 ppm added antimony in said oil feed and
to incorporate at least about 0.01 weight-% zirconium and
at least about 0.01 weight-% antimony into said catalytic
cracking catalyst in said catalytic cracking zone,
the improvement which comprises additionally adding
at least one boron compound to said oil feed so as to
provide a concentration of about 0.1-5,000 ppm added
boron in said oil feed and to additionally incorporate at
least about 0.005 weight-% boron into said catalytic
cracking catalyst in said catalytic cracking zone,
thereby causing an increase of the combined yield of
gasoline and light cycle oil produced in said process.
The references relied upon by the examiner are:
Singleton 4,192,770 Mar. 11,
1980
Hettinger, Jr. 4,424,116 Jan. 3, 1984

Appeal No. 1996-3423
Serial No. 08/314,471
Ex parte Jepson, 1917 Dec. Comm’r Pats. 62 (Comm’r Pats. 1917).1
3
Boston 4,495,064 Jan. 22, 1985
Senn 5,378,349 Jan.
3, 1995
The rejections are:
Claims 31, 32, 34, 37-39 and 46-51 are rejected
under 35 U.S.C. § 103 as being unpatentable over Senn in
view of Singleton.
Claims 31, 32, 34, 37-39 and 46-51 are rejected
under 35 U.S.C. § 103 as being unpatentable over
Hettinger in view of Singleton and Boston.
Decision
In rendering our decision, we have considered the
entire specification and record.
Claims 31, 32, 34, 37-39 and 46-51 are rejected
under 35 U.S.C. § 103 as being unpatentable over Senn in
view of Singleton.
We begin our review of this rejection by analyzing
representative claim 37.
The claim is in Jepson -type format. As such,1
"appellants impliedly admit that the subject matter
recited in combination in the preamble (i.e., up to ‘the
improvement being’) is old in the art," In re Ehrreich,
Appeal No. 1996-3423
Serial No. 08/314,471
"The preamble states what is taught by a single reference (Senn; US2
Patent 5,378,349; cited to the USPTO)." Brief, sentence bridging pp. 3-
4.
4
590 F.2d 902, 909, 200 USPQ 504, 510 (CCPA 1979). In
fact, appellants explicitly admit that the subject matter2
of the preamble is taught in Senn, the primary reference.
That subject matter is:
a process for catalytically cracking a hydrocarbon-
containing oil feed in the presence of a zeolite
catalyst;
in which the oil feed contains nickel and vanadium; and,
in which antimony and zirconium compounds are added to
the oil feed in order to incorporate a certain amount
of these metals into the zeolite catalyst.
In accordance with the "improvement"-portion of the
claim, a boron compound is additionally introduced to the
oil feed so that a certain amount of it is incorporated
in the zeolite catalyst.
At the end of the claim we find another important
limitation: "thereby causing an increase of the combined
yield of gasoline and light cycle oil produced in said
process." This is something the prima facie case of
Appeal No. 1996-3423
Serial No. 08/314,471
"... all factual differences which may be properly noted in any3
portion of a claim must be included within the basis for comparison with
the prior art if we are to properly evaluate the differences between the
invention defined in a claim and the teachings of a reference. The
command of 35 U.S.C. ' 103 is to compare the invention as a whole with
the prior art. Absent a failure of the applicant to comply with 35
U.S.C. ' 112, we think every portion of the appealed claims must be
considered in determining the invention as a whole in arriving at our
decision as to obviousness required by a rejection under section 103."
In re Duva, 387 F.2d 402, 407, 156 USPQ 90, 94 (CCPA 1967).
5
obviousness must also address. The claimed process is3
directed not to any objective but to a particular one,
that is, to increasing the combined yield of gasoline and
light cycle oil. This necessarily means that appellants
are limiting the scope of the claim to obtain this
result. Since all the claims on appeal contain this
limitation, it is dispositive of the prima facie case of
obviousness for all the claims.
The claimed method, therefore, in simplified terms,
calls for improving the catalytic cracking process of a
known oil feed containing nickel, vanadium, antimony and
zirconium, by adding boron "thereby causing an increase
of the combined yield of gasoline and light cycle oil
produced in said process.” It is with this construction
of the claim in mind that we now analyze the rejection
for obviousness.
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6
The rejection is over Senn in view of Singleton.
Singleton, according to the examiner, "discloses that
boron compounds may be used to passivate zeolite-
containing catalytic cracking catalysts" (examiner's
answer, p. 4). Based on this, the examiner concludes:
It would have been obvious to one having ordinary
skill in the art at the time the invention was made to
have modified the cracking process of Senn by
incorporating a boron compound into the catalyst as
suggested by Singleton because boron, antimony, and
zirconium compounds are known to passivate cracking
catalysts and a person of ordinary skill in the art
would expect a mixture of compounds to passivate a
catalyst in an additive or cumulative manner.
Examiner's answer, p. 5. We note that increasing the
combined yield of gasoline and light cycle oil is not
mentioned in the body of the rejection. As we have
discussed, this is a limitation in the claim. As such, a
prima facie case of obviousness must explain why it would
have been obvious to one with ordinary skill in the art
looking at Senn and Singleton to employ the boron,
zirconium and antimony passivating agents in a manner
which would increase the combined yield of gasoline and
light cycle oil. We do note however that examiner does
address this issue in the rebuttal to appellants'
arguments in the brief.
Appeal No. 1996-3423
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Appellants' arguments raise the very issue of
whether the prior art suggests employing the boron,
zirconium and antimony passivating agents to increase the
combined yield of gasoline and light cycle oil.
Appellants focus on the fact that the claimed process
employs a three-component passivating agent, i.e., boron,
zirconium and antimony, in contrast to Singleton's
single-component passivating agent (i.e., boron) and
that, relying on Tables I (p. 15) and II (p. 18) of the
specification, it produces an unexpected increase in
combined yield of gasoline and light cycle oil as
compared to the process using boron alone, as in
Singleton, or any two of the boron, zirconium and
antimony passivating agents of Senn and Singleton (brief,
pp. 4-5).
Examiner rebuts appellants' arguments on the grounds
that Singleton indicates that gasoline yields increase
with the addition of boron, citing column 4, lines 59-65
and column 7, lines 24-31 as well as Table 1 of column 6.
Furthermore, "it appears as if the Singleton gasoline
product encompasses at least a substantial portion of the
claimed combined gasoline and light cycle oil product"
Appeal No. 1996-3423
Serial No. 08/314,471
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(examiner's answer, p. 8). In other words, examiner
takes the position that, in view of Singleton, an
increase in gasoline yield would be an expected result
from adding boron to the Senn process, and, since an
increase in gasoline yield would be expected, it follows
that a similar increase in combined gasoline and light
cycle oil product would also be expected.
We have carefully reviewed examiner's and
appellants' positions. On balance, for the following
reasons, we find that the evidence weighs in favor of
appellants' position.
Assuming arguendo that Singleton, indicates that
gasoline yield is increased, we do not find that the
reference teaches or suggests that the "combined gasoline
and light cycle oil" yield will also increase. There is
nothing in the reference that tells one way or another in
what direction this yield would go. It is not true, as
examiner has reasoned, that "because the Singleton
gasoline product yield increases with the inclusion of a
boron compound in the cracking process, it would be
expected that the combined yield of gasoline and light
cycle oil would also increase" (examiner's answer, top p.
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9). There is no evidence that a direct parallel exists
between gasoline yields and yields of the combined
gasoline and light oil products. Evidence of such a
parallel is essential if one is to make the jump from an
increase in yield for gasoline to the increase in yield
for the combined gasoline/light cycle oil that the
claimed process requires.
Compounding this lack of direction is that it is not
at all clear from reading these references that even the
gasoline yield would be expected to increase. Although
examiner has directed our attention to passages in
Singleton disclosing an increase in gasoline yield due to
the incorporation of boron, a perusal of the Tables of
Singleton reveals that a more complicated set of factors
is at work. Example 5 (col. 6, line 64) appears to
contradict the cited disclosures by showing a lower
gasoline yield for a catalyst with boron than without.
Also, example 9 differs from example 10 only in that
example 10 includes boron, and yet their gasoline yields
are identical. It is difficult to tell from this
disclosure what type of yield to expect if boron is
Appeal No. 1996-3423
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10
incorporated in an even more complicated process like
that of Senn where there are two other passivating
agents. It makes it very difficult to predict the
outcome the combined gasoline/light cycle oil yield.
Our ability to predict the combined gasoline/light
cycle oil yield from the addition of boron is not made
easier by Senn, which does disclose yields of gasoline
and light cycle oil. Yields are disclosed for catalyst
additives zirconium, antimony and tungsten and
combinations of zirconium/antimony and antimony/tungsten
(see Tables I, II, and III, columns 9-12) but, again, the
increase in yield is not merely the result of combining
passivating agents. For instance, Catalyst H with 800
ppm antimony and 600 ppm zirconium (Table II) has a
combined yield of 65.8, the same yield obtained by
Catalyst A (Table I) with 4800 ppm antimony. This
suggests that the amount of a passivating agent is a
factor to be considered when seeking to obtain an
increase in the combined yield. It is this and other
factors which are embodied in the claims through the
phrase: "thereby causing an increase of the combined
yield of gasoline and light cycle oil produced in said
Appeal No. 1996-3423
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process". In our view, Senn provides no assistance in
our ability to reasonably predict the outcome of adding
Singleton's boron to its catalytic process. Such a
prediction is not made any easier by the general
unpredictability of these types of catalytic processes.
Further weighing in favor of the nonobviouness of
appellants' claimed invention is data from the
specification (Tables I and II, pp. 15 and 18,
respectively) put forward as evidence of unexpected
results. The results show an increase in gasoline/light
cycle oil yields when the claimed three-component
passivating agent is employed. It shows that, under
certain circumstances, the use of zirconium, antimony and
boron, yield higher combined gasoline/light cycle oil
yields than when each is used separately or in
combination of two passivating agents. We see nothing in
these results that would cast doubt on that conclusion
and examiner has not raised any questions about it.
Consequently, given that the claimed process is
narrowly limited to producing an increase in the combined
yield of gasoline/light cycle oil, which is neither
taught or suggested by the prior art combination nor
Appeal No. 1996-3423
Serial No. 08/314,471
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predictive from the prior art disclosures, and that there
is an uncontested showing of unexpected results from
using the claimed three-component passivating agent as a
means of increasing the combined yield of gasoline/light
cycle oil, on balance we find that the evidence weighs in
favor of a finding of nonobviousness over the prior art
combination. For this reason, the rejection is reversed.
Claims 31, 32, 34, 37-39 and 46-51 are rejected
under 35 U.S.C. § 103 as being unpatentable over
Hettinger in view of Singleton and Boston.
This rejection is similar to the first rejection and
is reversed for the same reasons. Where Senn, in the
earlier rejection taught the zirconium and antimony
passivating agents, here Hettinger teaches the zirconium
and Boston teaches the antimony agents. Singleton, as in
the other rejection, is applied to show that adding a
boron as an additional passivating agent would have been
obvious to one of ordinary skill but, as in the previous
rejection, it does not teach or suggest the claimed
increase in the combined yield of gasoline/light cycle
oil and we can not predict from their disclosures that
this will occur. The showing of unexpected results is
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equally applicable in overcoming this rejection.
Accordingly, the evidence weighs in favor of the
nonoviousness of the claimed
invention over the prior art and, as a result, the
rejection is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge )
) APPEALS AND
)
) INTERFERENCES
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
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